Ex Parte Gale et al

Patent Trial and Appeal Board

Sep 6, 2016

12975926 (P.T.A.B. Sep. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/975,926 12/22/2010
28395 7590 09/08/2016
BROOKS KUSHMAN P,CJFG1L
1000 TOWN CENTER
22NDFLOOR
SOUTHFIELD, MI 48075-1238
FIRST NAMED INVENTOR
Allan Roy Gale
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.
83161425 6464
EXAMINER
KING, CURTIS J
ART UNIT PAPER NUMBER
2684
NOTIFICATION DATE DELIVERY MODE
09/08/2016 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALLAN ROY GALE, PAUL THEODORE MOMCILOVICH, and
MICHAEL W. DEGNER1
Appeal2015-006124
Application 12/975,926
Technology Center 2600
Before MICHAEL J. STRAUSS, DANIEL N. FISHMAN, and
JAMES W. DEJMEK, Administrative Patent Judges.
FISHMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 2, 6, 7, and 11-19, which constitute all the claims pending in this
application. 2 Claims 3-5 and 8-10 were cancelled. We have jurisdiction
over the remaining pending claims under 35 U.S.C. § 6(b ).
1 Appellants identify Ford Global Technologies, LLC as the real party in
interest. Appeal Brief 2.
2 In this Decision, we refer to Appellants' Appeal Brief ("App. Br.," filed
February 4, 2015); Appellants' Reply Brief ("Reply Br.," filed June 3,
2015); the Final Office Action ("Final Act.," mailed September 4, 2014); the
Examiner's Answer ("Ans.," mailed on April 3, 2015); and the original
Specification ("Spec.," filed December 22, 2010).
Appeal2015-006124
Application 12/975,926
We affirm-in-part and designate our affirmance as a new ground of
rejection pursuant to 35 C.F.R. § 41.50(b).
THE INVENTION
Appellants' invention is directed to authenticating a charge station by
determining if an electric vehicle's received energy is equal to the charge
station's supplied energy. Spec. 1.
Claims 1, 6, and 7, are exemplary of the subject matter on appeal and
are reproduced below:
1. A vehicle comprising:
a traction battery;
a battery charger configured to receive energy from a
charge station remote from the vehicle and to provide energy to
the battery; and
one or more controllers configured to initiate charging of
the battery and to notify the charge station if the power, voltage
or current measured and reported by the charge station is not
approximately equal to the power, voltage or current measured
at the battery charger.
6. A method for authenticating a charge station comprising:
establishing communications with the charge station;
requesting that the charge station supply energy to a
battery charger; and
notifying the charge station ifthe power, voltage or current
measured and reported by the charge station is not approximately
equal to the power, voltage or current measured at the battery
charger.
7. The method of claim 6 further comprising permitting the
battery charger to further receive energy from the charge station
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Application 12/975,926
if the power, voltage or current measured and reported by the
charge station is approximately equal to the power, voltage or
current measured at the battery charger.
THE REJECTIONS
Claims 1, 2, 6, 7, and 11-17 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Helnerus et al. (US 2012/0169282 Al;
July 5, 2012 (PCT filed July 21, 2010)) ("Helnerus"), Kimura et al.
(US 5,596,258; Jan. 21, 1997) ("Kimura"), and Suyama (US 5,596,261;
Jan. 21, 1997). Final Act. 2-6.
Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Helnerus, Kimura, Suyama, and Hamada et al.
(US 2010/0013301 Al; Jan. 21, 2010 (PCT filed Nov. 12, 2007))
("Hamada"). 3 Final Act. 6-7.
ANALYSIS
Claims 1, 2, and 11-19
We have reviewed the Examiner's rejections in light of Appellants'
arguments the Examiner has erred in rejecting independent claims 1, 11, and
16 under 35 U.S.C. § 103(a) as being unpatentable over Helnerus, Kimura,
and Suyama. We are persuaded by Appellants' arguments that the Examiner
erred in finding the combination of Helnerus, Kimura, and Suyama teaches
or suggests one or more controllers configured to notify a charge station "if
3 The 35 U.S.C. § 103(a) rejection cites "US 2010/0013301 Al" erroneously
referring to the publication as "Gaul." Final Act. 6. The Examiner and
Appellants correctly address the merits of the rejection of claims 18 and 19
under section 103 as referring to Hamada. Thus, we find the Examiner's
typographical error to be harmless.
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Application 12/975,926
the power, voltage or current measured and reported by the charge station is
not approximately equal to the power, voltage or current measured at the
battery charger," as recited in independent claim 1 and as similarly recited in
independent claims 11 and 16. See App. Br. 3-5; Reply Br 2-3.
The Examiner finds Kimura's vehicle determines "if there's
abnormality (such as leakage of power in the electric vehicle, battery failure,
and/or charge circuit breakage) during charging ... the vehicle controller
can notify the charge station." Ans. 4 (citing Kimura col. 10, 11. 18-30;
Figures 1, 12, and 13) (emphasis in original); see also Final Act. 3 (citing
Kimura col. 7, 11. 28---65). The Examiner further finds Suyama's vehicle,
during charging, determines if the vehicle's measured voltage or current is
not within an acceptable range. Ans. 5 (citing Suyama col. 10, 11. 36-40;
Figures 1, 2, and 8); see also Final Act. 3. The Examiner finds:
[I]t would have been obvious to one skilled in the art at the time
of the claimed invention that the abnormality of Helnerus and
Kimura may be due to measured charge current or voltage at the
vehicle side being outside of an acceptable range such as taught
by Suyama, whereby being outside of an acceptable range could
be with respect to charging current/voltage measured at the
charge station side and provided to the vehicle as disclosed in
Kimura as the predetermined acceptable threshold, since if what
voltage/current received at the vehicle side not being
approximately equal to what voltage/current sent from the charge
station side would constitute an abnormality such as leakage as
indicated by Kimura.
Ans. 5.
We are persuaded the Examiner has failed to adequately explain how,
nor are we able to ascertain that, either Kimura or Suyama discloses
measuring a difference between parameters at the vehicle and parameters
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Application 12/975,926
measured at the charge station, as claimed. Rather, with respect to Kimura,
we agree with Appellants that Kimura's vehicle, in notifying a charge station
that a leakage of power, voltage, or current during charging occurred "do[ es]
not reflect a difference in parameters measured at a charge station and
parameters measured at a battery charger." Reply Br. 2. With respect to
Suyama, we agree with Appellants that Suyama, in teaching that a vehicle
measures current or voltage falling outside an acceptable range "does not
imply that there is a difference between parameters measured at the charge
station and parameters measured at the vehicle." Id.
Absent evidence supporting the Examiner's findings, we find the
Examiner's explanation that Suyama's measured current or voltage outside
an acceptable range could be measured current or voltage at the charge
station as disclosed by Kimura is unsupported speculation of the Examiner,
not taught or suggested by either Suyama or Kimura or the combination. In
particular, the Examiner has failed to provide sufficient evidence that, at the
time of the invention, it would have been obvious to a person of ordinary
skill in the art to measure current or voltage falling outside an acceptable
range as taught by Suyama by detecting that power, voltage or current
measured and reported by the charge station is not approximately equal to
the power, voltage or current measured at the battery charger as claimed.
In view of the above discussion and on the record before us, we find
the Examiner erred in rejecting independent claims 1, 11, and 16, and,
therefore, claims 2, 12-15, and 17-19 dependent therefrom.
We note, in an ex parte appeal, the Board "is basically a board of
review-we review ... rejections made by patent examiners."
Ex parte Gambogi, 62 USPQ2d 1209, 1211 (BPAI 2001). "The review
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Application 12/975,926
authorized by 35 U.S.C. Section 134 is not a process whereby the examiner
... invite[ s] the [B]oard to examine the application and resolve patentability
in the first instance." Ex parte Braeken, 54 USPQ2d 1110, 1112 (BP AI
1999). Because we are a board of review, and not a place of initial
examination, we will not engage in the de nova examination required to
supplement the Examiner's findings. Thus, we express no opinion as to
whether these claims would be obvious over the proposed, or other,
combinations if supported by additional explanation and/or references. We
leave any such further consideration to the Examiner. Although the Board is
authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should
be drawn when the Board elects not to do so. See Manual of Patent
Examining Procedure (MPEP) § 1213.02 (9th Ed., Mar. 2014).
Furthermore, our decision is limited to the findings before us for
review. The Board does not "allow" claims of an application and cannot
direct an Examiner to pass an application to issuance. Rather, the Board's
primary role is to review adverse decisions of examiners including the
findings and conclusions made by the Examiner. See 37 C.F.R.
§ 41.50(a)(l) ("The Board, in its decision, may affirm or reverse the decision
of the examiner in whole or in part on the grounds and on the claims
specified by the examiner").
Claims 6 and 7
Regarding independent claim 6, Helnerus discloses a method (i1i1 51-
74) for authenticating a charge station (Figure 1, item 4) comprising:
establishing communications (i1i153 and 56) with the charge station; and
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Application 12/975,926
requesting that the charge station supply energy Cilil 53 and 56) to a battery
charger (Figure 1, item 12).
Independent claim 6 further recites "notifying the charge station jf the
power, voltage or current measured and reported by the charge station is not
approximately equal to the power, voltage or current measured at the battery
charger" (emphasis added) (hereinafter the "conditional limitation").
Conditional steps employed in a method claim need not be found in the prior
art if, under the broadest scenario, the method need not invoke the steps. See
Ex parte Katz, 2011 WL 514314, *4 (BP AI 2011) (citing In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)). We find the
conditional limitation of claim 6 recites an optional event that may not occur
and, therefore, processing recited as dependent on the condition need not be
performed or taught by the prior art in the obviousness analysis.
The Examiner's findings show the proposed combination teaches or
suggests the required "establishing" and "requesting" steps of claim 6 but
the art need not disclose the conditional limitation of claim 6. Thus, we
sustain the Examiner's rejection of independent claim 6 and claim 7
dependent therefrom and not separately argued.
Because our analysis of claims 6 and 7 differs from that of the
Examiner, we designate the affirmance of the rejection of claims 6 and 7 as a
new ground of rejection under 37 C.F.R. § 41.50(b). See In re Biedermann,
733 F.3d 329, 337 (Fed. Cir. 2013).
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Application 12/975,926
DECISION
We reverse the Examiner's decision to reject claims 1, 2, and 11-19.
We affirm the Examiner's decision to reject claims 6 and 7 and
designate this affirmance as a new ground of rejection under 37 C.F.R.
§ 41.50(b).
This Decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides that "[a] new ground of rejection ...
shall not be considered final for judicial review."
Section 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the examiner, in
which event the proceeding will be remanded to the examiner. The
new ground of rejection is binding upon the examiner unless an
amendment or new Evidence not previously of Record is made which,
in the opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request for
rehearing must address any new ground of rejection and state with
particularity the points believed to have been misapprehended or
overlooked in entering the new ground of rejection and also state all
other grounds upon which rehearing is sought.
37 C.F.R. § 41.50(b). Further guidance on responding to a new ground of
rejection can be found in the Manual of Patent Examining Procedure
§ 1214.01.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)
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