Ex Parte Gale et al

Patent Trial and Appeal Board

Feb 16, 2016

12972746 (P.T.A.B. Feb. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/972,746 12/20/2010
28395 7590 02/18/2016
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.
83161475 1533
EXAMINER
BERHANU, SAMUEL
ART UNIT PAPER NUMBER
2859
NOTIFICATION DATE DELIVERY MODE
02/18/2016 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. DEGNER
Appeal2014-004130
Application 12/972, 7 46 1
Technology Center 2800
Before ROMULO H. DELMENDO, CHRISTOPHER M. KAISER, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KAISER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the decision2 of the
Primary Examiner rejecting claims 1-18. Final Act. 2-8. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
OPINION
Appellants' invention relates to a vehicle "battery charger that ...
receives electrical energy via [an] input when the input is electrically
connected with an electrical power source" and that "may control current
1 According to Appellants, the Real Party in Interest is Ford Global
Technologies LLC. Appeal Br. 1.
2 Final Office Action, mailed May 29, 2013 ("Final Act.").
Appeal 2014-004130
Application 12/972,746
provided to [a] battery via [an] output such that a power associated with the
energy received from the power source is approximately equal to a power
target." Spec. I, 11.15-24.
Claim 1, reproduced below, is representative of the appealed subject
matter:
1. An automotive vehicle power system comprising:
a battery charger having an input and output and
configured to (i) receive electrical energy via the input when the
input is electrically connected with an electrical power source
and (ii) alter at least one of a voltage set point and current
provided at the output such that a power associated with the
energy received from the power source remains approximately
equal to a predetermined target power as a voltage associated
with the energy received from the power source varies.
Appeal Br., Claims App'x 1.
The Examiner rejected claims 1---6, 8, 9, and 11-18 under 3 5 U.S. C.
§ 103(a) as obvious over the combination ofHarrington3 and Breen. 4 Final
Act. 2---6. The Examiner also rejected claims 7 and 10 under 35 U.S.C.
§ 103 (a) as obvious over the combination of Harrington, Breen, and Mori. 5
Id. at 6-7.
Against these rejections, Appellants present a single argument: a
person of ordinary skill in the art would not have had reason to combine the
teachings of Breen with Harrington. Appeal Br. 3. The Examiner found that
a person of ordinary skill in the art would have combined these references
because doing so would "maximize the current drawn from the AC adapter
to charge a rechargeable battery without damaging the AC adapter, and
3 Harrington, US 5,736,831, issued Apr. 7, 1998.
4 Breen et al., US 6,928,568 B2, issued Aug. 9, 2005.
5 Mori, US 2006/0186860 Al, published Aug. 24, 2006.
2
Appeal 2014-004130
Application 12/972,746
decreasing the charge time of the battery." Final Act. 3. Appellants argue
that this finding is incorrect for two reasons. First, Appellants argue that
incorporating an AC adapter into Harrington "would increase [the] cost,
weight and complexity [of the system] while ... increasing charge times."
Appeal Br. 3. Second, Appellants argue that the teachings of Harrington
would not have been used to improve Breen's AC adapter "because
Harrington does not use an AC adapter." Id.
The Examiner responds that, despite the possible increased cost,
weight, complexity, and charging times that it might cause, a person of
ordinary skill in the art would have incorporated Breen's AC adapter into
Harrington to avoid leaving the external AC power source uncontrolled,
which could result in damage to the external AC power source if the battery
being charged draws too much current. Answer 3; see Final Act. 8 (person
of ordinary skill in the art "would have combined the two teachings in order
to charge a rechargeable battery without damaging the AC input source").
Appellants argue that this finding is incorrect because "Harrington does not
appear to damage the AC input source while charging." Appeal Br. 3; see
Reply Br. 2 ("creating a problem in a reference for the sole purpose of
finding reason to combine it with another reference cannot carry the
examiner's burden in establishing a prima facie case of obviousness").
We are not persuaded by Appellants' arguments. Essentially,
Appellants argue first that the fact that there are drawbacks to combining
Harrington and Breen means that no person of ordinary skill in the art would
combine those references, regardless of the benefits of doing so. This
argument is unpersuasive for two reasons. First, Appellants point to no
evidence to support their argument that adding Breen's AC adapter to
3
Appeal 2014-004130
Application 12/972,746
Harrington would increase cost, weight, complexity, and charging times.
Appeal Br. 3. "[M]ere statements of disagreement ... as to the existence of
factual disputes do not amount to a developed argument." SmithKline
Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006).
Second, the mere existence of drawbacks to a particular combination of
prior-art elements does not make that combination of elements patentable.
In re Gurley, 27 F.3d 551, 554 (Fed. Cir. 1994); see Winner Int'! Royalty
Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) ("The fact that the
motivating benefit comes at the expense of another benefit ... should not
nullify its use as a basis to modify the disclosure of one reference with the
teachings of another.").
Appellants' second argument essentially is that the fact that
Harrington fails to identify the problem solved by Breen means that the
references cannot properly be combined. This also is not persuasive. The
Examiner provided "articulated reasoning with some rational underpinning"
to combine the elements taught by Harrington and Breen in the manner
required by Appellants' claims. In re Kahn, 441F.3d977, 988 (Fed. Cir.
2006). Here, the Examiner found that a person of ordinary skill in the art
would combine Harrington and Breen in order to charge a battery quickly
while avoiding damage to an AC power source and the equipment between
the AC power source and the battery. Final Act. 3, 8; Answer 3. There is
evidence to support this finding. Breen teaches that DC devices running on
AC power "may try to source more current than [they are] rated for." Breen,
col. 2, 11. 1-7. Thus, Breen identifies a problem with charging batteries
using AC power, and Appellants have directed us to no evidence that this
problem would be unlikely to occur in vehicle battery recharging systems
4
Appeal 2014-004130
Application 12/972,746
such as that taught by Harrington. Accordingly, the record supports the
Examiner's reasoning for combining Harrington and Breen.
Because none of Appellants' arguments are persuasive, we affirm the
Examiner's rejections.
ORDER
The Examiner's rejection under 35 U.S.C. § 103(a) of claims 1---6, 8,
9, and 11-18 as obvious over the combination of Harrington and Breen is
affirmed. The Examiner's rejection under 35 U.S.C. § 103(a) of claims 7
and 10 as obvious over the combination of Harrington, Breen, and Mori also
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.
AFFIRMED
5