Ex Parte Gabor et al

Patent Trial and Appeal Board

Dec 31, 2012

12048565 (P.T.A.B. Dec. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/048,565 03/14/2008 Daniel Gabor 81169037 5135
28395 7590 01/02/2013
BROOKS KUSHMAN P.C./FGTL
1000 TOWN CENTER
22ND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
FLEMING, FRITZ M
ART UNIT PAPER NUMBER
2836
MAIL DATE DELIVERY MODE
01/02/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DANIEL GABOR and DALE SCOTT CROMBEZ
____________________

Appeal 2010-008496
Application 12/048,565
Technology Center 2800
____________________

Before BRUCE R. WINSOR, JAMES B. ARPIN, and
TRENTON A. WARD, Administrative Patent Judges.

WARD, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1-18. We have jurisdiction under 35 U.S.C. §
6(b). We affirm.

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STATEMENT OF THE CASE
Appellants’ invention relates to improved systems and methods for
delivering power to an electric motor of an automotive vehicle. See Spec.,
2:19-32. Claim 1 is illustrative with certain disputed limitations italicized:
1. A system for delivering power from a power source to an
electric motor of an automotive vehicle, the electric motor
having an expected number of activation cycles for a life of the
automotive vehicle, the system comprising:
at least two electro-mechanical switches in parallel, each
of the electro-mechanical switches being configured to deliver
power from the power source to the electric motor when
activated, each of the electro-mechanical switches having a
specified number of activation cycles that defines its lifetime,
and the specified number of activation cycles for at least one of
the electro-mechanical switches being less than the expected
number of activation cycles of the electric motor; and
an electronic control module being configured to
selectively activate the at least two electro-mechanical switches
for an activation cycle of the electric motor.

THE REJECTIONS
The Examiner rejected claims 1-18 as being unpatentable under 35
U.S.C. § 103(a) over Sakata (US 2005/0231029 A1; issued Oct. 20, 2005)
and Applicants’ Admitted Prior Art (“AAPA”). Ans. 4-10.1

CONTENTIONS
The Examiner finds that Sakata teaches or suggests every recited
feature of claims 1 and 10, except that each of the electro-mechanical

1 Throughout this opinion, we refer to (1) the Appeal Brief (“App. Br.”) filed
Jan. 29, 2010; (2) the Examiner’s Answer (“Ans.”) mailed Mar. 16, 2010;
and (3) the Reply Brief (“Reply Br.”) filed May 11, 2010.
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switches has a specified number of activation cycles that define its lifetime,
and that the electric motor has an expected number of activation cycles over
a lifetime of the automobile. Ans. 6. The Examiner cites the AAPA, in
combination with Sakata, as teaching these features in concluding that
claims 1 and 10 would have been obvious. Ans. 6-8.
Appellants argue that “modifying Sakata as suggested by the
Examiner would render Sakata unsatisfactory for its intended purpose.”
App. Br. 4. Specifically, Appellants argue that “[e]ach of Sakata’s relays
appear to have an expected useable life that is at least equal to that of its
motor”; thus, the Examiner’s proposal to use relays with a useable life less
than the motor “would all but guarantee one or more failures in Sakata’s
relay system.” App. Br. 4. Additionally, Appellants argue that Sakata’s
“teaching of ‘redundancy’ does not necessarily show ‘that a relay with a
lower useable life than that of the motor can be used.’” App. Br. 5.

ISSUE
Under § 103, has the Examiner erred in rejecting claims 1 and 10 by
finding that the combination of the cited, prior art teaches that the specified
number of activation cycles for at least one of the electro-mechanical
switches is less than the expected number of activation cycles of the electric
motor?

ANALYSIS
Appellants make three arguments as to why claims 1 and 10 are not
made obvious in view of the combination of prior art cited by the Examiner.
We address Appellants’ arguments seriatim.
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First, Appellants argue that “modifying Sakata as suggested by the
Examiner would render Sakata unsatisfactory for its intended purpose.”
App. Br. 4. Specifically, Appellants argue that the “Examiner’s proposal
would all but guarantee one or more failures in Sakata’s relay system,”
because Sakata teaches that “all relays are simultaneously activated.” App.
Br. 5 (emphasis added); Reply Br. 1-2. Appellants argue that Sakata teaches
a system where all relays2 “appear to have an expected useable life that is at
least equal to that of its motor.” App. Br. 4 (citing Sakata, ¶¶ 40-41).
Although the specific embodiment in cited paragraphs 40-41 of
Sakata teaches the use of all relays simultaneously, Appellants do not
address the alternative embodiments in the portions of the Sakata relied upon
by the Examiner, which disclose sequentially driving the relays. Ans. 5-6,
12 (citing Sakata, ¶¶ 72-73, 115, 119). For example, the Examiner finds that
Sakata expressly discloses that in one embodiment “the plurality of relays
14a to 14c is sequentially driven in a predetermined order,” so that “a heat
generation amount is restricted in the plurality of relays 14a to 14c and
durability thereof improves.” Ans. 12 (citing Sakata, ¶ 115). Additionally,
the Examiner cites to the Sakata disclosure that in one embodiment the
“plurality of relays 14a to 14c are provided to add the redundancy function
to the relay circuit while detecting the disconnection abnormality in each of
the relays 14a to 14c.” Ans. 7 (citing Sakata, ¶ 119). Accordingly, Sakata

2 We note that, while the claims recite “switches,” Appellants and the
Examiner interchangeably refer to both relays and switches. See e.g., App.
Br. 4-5; Ans. 12. Furthermore, we also note that Sakata discloses a direct
relationship between the switches and the relays in that “[t]he relays 14a to
14c are turned on by turning the corresponding semiconductor switching
elements 14d to 14f on, respectively.” Sakata, ¶ 38.
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describes sequential use of multiple relays, unless a failure is detected in one
of the relays, at which time the failed relay is removed from the alternating
sequence. Ans. 8 (citing Sakata, ¶¶ 117-118). We are not persuaded by
Appellants’ arguments that the Examiner’s proposal to use switches with a
shorter usable lifetime than the motor would render Sakata unsatisfactory for
its intended purpose, because the redundancy function taught in the Sakata
system can account for switch failures. See Sakata, ¶¶ 117-119.
Second, Appellants argue that Sakata’s “teaching of ‘redundancy’
does not necessarily show ‘that a relay with a lower useable life than that of
the motor can be used.’” App. Br. 5. On this record, Appellants have not
persuasively rebutted the Examiner’s findings to show error in the rejection.
The Examiner finds that because Sakata teaches “that a failure in one relay
results in the other two relays being used,” “Sakata has shown that a relay
with a lower useable life than that of the motor can be used.” Ans. 8 (citing
Sakata, ¶¶ 117-118). As found by the Examiner, Sakata’s teachings of
redundancy in the relays “has clearly shown that the weak link of the
relay/motor combination is that of the relay, as the relays are placed in a
redundant parallel fashion, and not the motor.” Ans. 7-8. Therefore,
Appellants’ argument regarding the use of a relay with a lower useable life
than that of the motor (App. Br. 5) is, at best, merely a recognition of
another advantage that would flow naturally from the suggestion of the
Sakata prior art, and cannot be the basis of patentability. See Ex Parte
Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Int. 1985) (“The fact that
appellant has recognized another advantage which would flow naturally
from following the suggestion of the prior art cannot be the basis for
patentability when the differences would otherwise be obvious”).
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Third, Appellants argue that its “claims are not somehow directed to
happenstance or unexpected failures,” but require the electro-mechanical
switches to have a specified number of activation cycles. App. Br. 5.
Appellants argue that the term, “specified number of activation cycles,” has
a “recognized meaning among those of ordinary skill,” App. Br. 5., but
Appellants do not “provide any further explanation of what this recognized
meaning is,” Ans. 14.
We are not persuaded by the Appellants’ argument regarding
unexpected failures versus expected failures because the claims do not recite
a specific failure state. “The claim only specifies a lifetime.” Ans. 13. The
Examiner finds that it is known in AAPA that “the useable life of an electro-
mechanical switch is typically less than the expected number of activation
cycles” of a motor. Ans. 6 (emphasis added), citing Spec. 4, ll. 27-33.
Appellants do not challenge this finding with respect to AAPA.
Accordingly, we are not persuaded that the Examiner erred in rejecting
claims 1 and 10, and claims 2-9 and 11-18, which were not separately
argued with particularity.

ORDER
The Examiner’s decision rejecting claims 1-18 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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