Ex Parte Duer et al

Patent Trial and Appeal Board

Jul 22, 2016

13010482 (P.T.A.B. Jul. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/010,482 01/20/2011
73811 7590 07/26/2016
Leydig, Voit & Mayer, Ltd.
Two Prudential Plaza, Suite 4900
180 North Stetson Avenue
Chicago, IL 60601-6731
FIRST NAMED INVENTOR
Armando A. Duer
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
P010974-0ST-ALS/268526 2808
EXAMINER
CHUNG, STEVE T
ART UNIT PAPER NUMBER
2859
NOTIFICATION DATE DELIVERY MODE
07/26/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARMANDO A. DUER and MICHAEL L. IMEL
Appeal2015-001178
Application 13/010,482
Technology Center 2800
Before KAREN M. HASTINGS, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants seek our review of the
Examiner's decision rejecting claims 1, 3-15, and 17-20. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
Claim 1 is illustrative of the claimed subject matter (emphasis added
to highlight key limitations):
1. A method for adjusting a lower charge level threshold
of an electrically-powered vehicle to allow a vehicle low on
battery charge to continue to be operated at charge levels
Appeal2015-001178
Application 13/010,482
below a level at which the vehicle would have become
inoperable absent the adjustment, the method comprising:
determining, by a processor, that the vehicle is likely to
become inoperable as a result of a battery charge level
fulfilling a condition selected from the group consisting of the
battery charge level coming within a predetermined range of a
preconfigured lower charge level threshold, the battery charge
level meeting a preconfigured lower charge level threshold, and
the battery charge level falling below a preconfigured lower
charge level threshold; and
lowering, by a processor, the lower charge level
threshold of the vehicle's battery from the preconfigured lower
charge level threshold to a second lower charge level
threshold.
Claims 15 and 20 are also independent claims that contain "analogous
features" those disputed in claim 1 (App. Br. 11; Claims Appendix).
Appellants only present substantive arguments for the Examiner's
rejection of claim 1 under 35 U.S.C. § 102(b) as being anticipated by Finger
(U.S. Patent No. 4,560,937, issued Dec. 24, 1985); and relies on these
arguments for all the other rejections (App. Br. 6-11). For a full listing of
the rejections, see the Examiner's Final Action mailed Oct. 23, 2013 (see
also App. Br. 5).
ANALYSIS
Appellants argue that the Examiner has not shown how Finger
identically discloses a method "for adjusting a lower charge level threshold
of an electrically-powered vehicle to allow a vehicle low on battery charge
to continue to be operated at charge levels below a level at which the vehicle
would have become inoperable absent the adjustment" by determining by a
processor that the vehicle is likely to become inoperable and then by a
2
Appeal2015-001178
Application 13/010,482
processor, lowering the lower charge level threshold as recited in claim 1. A
preponderance of the evidence supports Appellants' position.
Specifically, we agree with Appellants that the Examiner has taken an
unreasonably broad interpretation of the aforementioned claim limitations
when considered in light of the Specification for the reasons explained in the
briefs (see generally App. Br. 7-9; Reply Br. 4 (explaining that the claim
language does not encompass a user selecting a trade-off between battery
lifetime and battery output per charge so as to have different threshold levels
at which non-essential loads are disconnected as in Finger)). In re Am.
Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (the scope of
the claims in patent applications is not determined solely on the basis of the
claim language, but upon giving claims their broadest reasonable
construction in light of the specification as it would be interpreted by one of
ordinary skill in the art.); Phillips v. AWHCorp., 415 F.3d 1303, 1315 (Fed.
Cir. 2005) ("[T]he specification 'is always highly relevant to the claim
construction analysis. Usually, it is dispositive; it is the single best guide to
the meaning of a disputed term."' (internal citation omitted)).
On this record, the Examiner has not adequately explained how claim
1 's method encompasses Finger's method where different users may select
different threshold voltage curves depending on the user's objectives (e.g.,
Ans. 3; Finger col. 6, 11. 11-37).
As such, we cannot sustain this anticipation rejection. Net MoneyIN,
Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (a reference
must disclose all of the limitations arranged or combined in the same way as
recited in the claim to anticipate under 35 U.S.C. § 102).
3
Appeal2015-001178
Application 13/010,482
The Examiner does not appear to rely upon any of the other references
applied in the § 103 rejections to remedy the deficiency, and fails to direct us
to any evidence, or provide any reasoning, establishing that Finger renders
the claimed invention obvious. Thus, we cannot sustain the Examiner's
obviousness rejections.
Accordingly, the Examiner's § 102 and § 103 rejections are reversed.
DECISION
We reverse the Examiner's decision.
ORDER
REVERSED
4