Ex Parte Harris

Patent Trial and Appeal Board

Sep 29, 2016

12025007 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/025,007 02/02/2008
23844 7590 10/03/2016
SCOTT C HARRIS
Law Office of Scott C Harris, Inc
PO BOX 1389
Rancho Santa Fe, CA 92067-1389
FIRST NAMED INVENTOR
Scott C. Harris
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.
Modular Hybrid 1407
EXAMINER
GURARI, EREZ
ART UNIT PAPER NUMBER
3618
NOTIFICATION DATE DELIVERY MODE
10/03/2016 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):
scott@harrises.com
schuspto@ gm ail. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT C. HARRIS
Appeal2013-008054
Application 12/025,007
Technology Center 3600
Before JENNIFER D. BAHR, EDWARD A. BROWN, and
CHARLES N. GREENHUT, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Scott C. Harris (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner's Final decision rejecting claims 1-5, 8-11, 13-16, and 18-20. 1
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-N-PART.
1 Claims 6 and 7 have been cancelled. The Office Action Summary (PTOL-
326) of the Final Office Action (dated May 24, 2012) indicates claim 12 is
rejected. However, there is no rejection of claim 12 in the Final Office
Action. The rejection of claim 17 has been withdrawn. Ans. 15-16.
Therefore, claims 6, 7, 12, and 17 are not on appeal.
Appeal2013-008054
Application 12/025,007
CLAIMED SUBJECT MATTER
Claims 1, 8, 13, and 16 are independent claims. Claim 1, reproduced
below, illustrates the claimed subject matter:
1. An electrically-operable vehicle, that comprises plural
separate battery modules, including a first battery module at a
first location in the vehicle, and a second battery module at a
second location in the vehicle, and wherein each of said first and
second battery modules are operative to produce drive for the
vehicle, [] and a plurality of switches, and a controller for said
plurality of switches, said plurality of switches being controlled
by said controller for switching said modules into a parallel
connection at a first time based on a condition of said battery
modules, a serial connection at a second time based on said
condition of said battery modules, and a configuration at a third
time where one of said battery module replaces another of said
battery modules based on said condition of said battery modules.
Br. 24 (Claims App.).
REJECTIONS
1. Claims 8-10 are rejected under 35 U.S.C. § 102(b) as
anticipated by Ishii (US 6,741,065 Bl, iss. May 25, 2004).
2. Claims 1-3 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ishii and Allen (US 2004/0134694 Al, pub. July 15,
2004).
3. Claims 4, 5, 11, and 13-15 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Ishii, Allen, and Yakes (US 6,757,597 B2, iss.
June 29, 2004).
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Application 12/025,007
4. Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Maslov (US 2005/0052080 Al, pub. Mar. 10, 2005), and Arai (US
2006/0214636 Al, pub. Sept. 28, 2006, "Arai '636").
5. Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Maslov, Arai '636, and Elder (US 2005/0035741 Al, pub. Feb. 17,
2005).
6. Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Maslov, Arai '636, and Ishii.
7. Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Maslov, Arai '636, and Arai (US 2005/0110460 Al, pub. May 26,
2005, "Arai '460").
ANALYSIS
Rejection I-Anticipation of claims 8-10 by Ishii
The Examiner finds Ishii discloses all limitations of claim 8. Final
Act. 2 (citing Ishii, col. 3, 11. 48---60; col. 6, 11. 15-61 ). Ishii discloses that:
storage battery packs each having a required capacity are
mounted in a divided form in accordance with characteristics of
an electric vehicle, and the storage battery packs are made
connect able in series or in parallel to be charged or discharged
singly or in combination as required, thereby improving the
radiation property of the heat from the storage battery packs
during charge and discharge to reduce the deterioration caused
by heat so as to prolong storage battery pack life.
Ishii, col. 3, 11. 50-58 (emphasis added).
Appellant contends Ishii discloses switches, such as SW1 l-SW13 and
SW2 l-SW23, but does not disclose anything that could control the batteries
in series at one time and in parallel at another time. Br. 9-10.
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Application 12/025,007
Appellant also contends the above-quoted description does not disclose "any
specific switching," or "controlling based on conditions of said first and
second battery," as claimed. Id. at 10, 11.
The description at column 3, lines 50-58 of Ishii relates to
"background technology." This description does not indicate the
"conditions" of the storage battery packs are known or determined, much
less indicate such conditions are a basis for controlling whether the storage
battery packs are connected in parallel or in series. This description
mentions an effect of the connection-that is, "improving the radiation
property of the heat from the storage battery packs during charge and
discharge to reduce the deterioration caused by heat so as to prolong storage
battery pack life"-but this description does not indicate the storage battery
packs are controlled based on their respective conditions.
The Examiner notes correctly that claim 8 does not recite "switching."
Ans. 10. The Examiner references Ishii's description at column 10, lines 7-
57, pertaining to switches and "how they can be turned off with respect to
the needs of batteries. Id. at 10-11. The Examiner states that "the term
condition is extremely broad and certainly covers the information stored in
the memories of the battery [cells]." Id. at 11; see also Ishii, col. 10, 11. 35-
39).
We note, however, the description at column 10, lines 7-57 in Ishii
pertains to Ishii 's invention. The Examiner does not identify any disclosure
in Ishii that establishes this description even applies to the background
technology described at column 3, lines 50-58. For example, the Examiner
does not identify any particular description in this passage of Ishii that
indicates battery units 2, 3, and 4 "are made connectable in series or in
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parallel to be charged or discharged singly or in combination as required," as
described at column 3, lines 50-58. Accordingly, the Examiner does not
establish by a preponderance of the evidence that Ishii discloses that battery
units 2, 3, and 4, or any other battery units, are controlled based on their
respective conditions to be used in parallel at a first time, in series at a
second time, with only one battery unit connected to the vehicle at a third
time, and with only the other of the battery units connected to the vehicle at
a fourth time, as required by claim 8.
We do not sustain the rejection of claim 8, and dependent claims 9
and 10, as anticipated by Ishii.
Rejection 2-Claims 1-3 over Ishii and Allen
Claim 1 recites an electrically-operable vehicle comprising a first
battery module, a second battery module, a plurality of switches, and a
controller for the plurality of switches, where:
said plurality of switches being controlled by said controller for
switching said modules into a parallel connection at a first time
based on a condition of said battery modules, a serial
connection at a second time based on said condition of said
battery modules, and a configuration at a third time where one
of said battery module replaces another of said battery modules
based on said condition of said battery modules.
Br. 24 (Claims App.) (emphasis added).
The Examiner appears to find Ishii, alone, discloses all
limitations of claim 1. Final Act. 3 (citing Ishii, col. 15, 11. 36-54; col.
3, 11. 48---60; col. 6, 11. 3 8---61; and Fig. 1 ).
Appellant contends Ishii does not say anything about the actual
connection or switching, or that switching is based on the condition of the
modules in the description at column 3, lines 52-55. Br. 14.
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The Examiner responds that the disclosure at column 3, lines 48-60,
of Ishii meets the claim limitations. Ans. 11. The Examiner finds that for
Ishii's batteries to switch from series to parallel to singly or combined
connections would require a switching mechanism, and Ishii discloses
switching mechanisms (i.e., switches SWl 1, SW12, and SW13). Id. (citing
Ishii, col. 10, 1. 7).
As discussed above, this description in Ishii pertains to Ishii 's
invention, and the Examiner does not establish that it necessarily also
pertains to the background technology described at column 3, lines 50-58.
Moreover, the Examiner does not identify any particular description in this
passage of Ishii that indicates its switches are controlled, based on a
condition of battery units 2, 3, and 4, to switch battery units 2, 3, and 4 into a
parallel connection at a first time, a serial connection at a second time, and a
configuration where one battery unit replaces another at a third time, as
required by claim 1.
The Examiner finds Allen discloses the locations of the first battery
and second battery recited in claim 2. Final Act. 4. The Examiner does not
rely on any disclosure in Allen that cures the deficiencies of Ishii in regard
to claim 1.
For claim 3, the Examiner finds Ishii discloses that the battery
modules each include at least one sensor, and "a controller ... providing
extra power to a battery that has less energy," as claimed. Final Act. 3--4
(citing Ishii, col. 6, 11. 38---61). However, even if this finding is supported by
Ishii, it does not cure the deficiencies of Ishii in regard to claim 1.
For the above reasons, we do not sustain the rejection of claims 1-3 as
unpatentable over Ishii and Allen.
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Rejection 3-Claims 4, 5, 11, and 13-15 over Ishii, Allen, and Yakes
Claims 4, 5, and 11
Claim 3 recites that the sensors "produce[] information indicative of a
condition of said battery module." Br. 25 (Claims App.). Claim 4 depends
from claim 3 and recites that "said sensors communicate information
wirelessly." Id. Claim 5 depends from claim 4 and recites that "said
controller receives information wirelessly from a plurality of said modules."
Id. The Examiner finds Yakes discloses the limitations of claims 4 and 5.
Final Act. 4--5 (citing Yakes, col. 3, 11. 37--40; col. 3, 11. 10-20; and col. 4, 11.
60-65). The Examiner concludes it would have been obvious to modify
Ishii to include sensors, as taught by Y akes, "to enable the wireless
diagnosis of vehicle problems during maintenance." Id. at 6. However, the
Examiner's application of Y akes to claims 4 and 5 does not cure the
deficiencies of Ishii in regard to claim 1. Thus, we do not sustain the
rejection of claims 4 and 5.
Claim 11 depends from claim 8 and calls for "wirelessly detecting
characteristics of said batteries." Br. 27 (Claims App.). The Examiner
concludes it would have been obvious to modify Ishii in view of Y akes to
include the features of claim 11 "so that the controller can determine
wirelessly whether the battery needs to be changed." Final Act. 6. The
Examiner's application of Yakes does not cure the deficiencies of Ishii in
regard to claim 8. Thus, we do not sustain the rejection of claim 11.
Claims 13-15
Claim 13 recites a first sensor, a second sensor, and "a controller that
receives information wirelessly from said first and second sensors." Br. 27-
28 (Claims App.). The "information is indicative of whether or not a first
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battery has been installed at said first location or whether or not a second
battery has been installed at said second location." Id. (emphasis added).
The Examiner determines Ishii does not disclose the claimed first and
second sensors that communicate wirelessly and a controller that receives
information wirelessly from the sensors. Final Act. 4--5. The Examiner
relies on Y akes for disclosing these limitations. Id.
Appellant contends Ishii detects whether the voltage from a battery is
available, but does not disclose any communication to a controller about
whether a battery is installed or not installed. Br. 16. Appellant
acknowledges Y akes discloses wireless communication among wireless
modules, but not to set the charge on a battery. Id. The Examiner responds
that Ishii' s "controller would at least indirectly determine whether a battery
is installed" in order to be able to control the electric power from that
battery. Ans. 13.
Appellants do not apprise us of any error in the Examiner's
determination that Ishii' s controller receiving information can be considered
"indicative of' whether or not a first battery has been installed at a first
location or whether or not a second battery has been installed at a second
location. "[I]ndicative of' is a broad term, and does not require a
determination regarding the presence or absence of the battery to be made
with absolute certainty.
The Examiner also explains Ishii teaches communication between a
battery and a controller to set the charge of a battery, and Yakes teaches
wireless communication between a controller and a battery module. Ans.
13. The Examiner's position is that "Appellant is merely incorporating the
known technique of wireless communication between battery modules with
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a controller to a vehicle which is silent on how communication occurs." Id.
at 13-14. Appellants do not apprise us of any error in the Examiner's
findings or reasoning.
Accordingly, we sustain the rejection of claim 13, and dependent
claims 14 and 15, for which Appellants do not present any separate
arguments (Br. 16), as unpatentable over Ishii and Y akes.
Rejection 4-Claim 16 over Maslov and Arai '636
The Examiner finds Maslov discloses all limitations of claim 16
except for "a controller to detect and equalize differences in voltage." Final
Act. 5-6. (citing Maslov, Fig. 1). The Examiner finds Arai '636 teaches a
controller that detects and equalizes differences in voltage. Id. at 6 (citing
Arai '636, Abstract). The Examiner concludes it would have been obvious
to modify Maslov in view of Arai '636 to include a voltage equalizer "in
order to better extend the life of the batteries." Id.
Appellant contends tvfaslov does not disclose that some batteries
would discharge faster than others. Br. 18. According to Appellant, because
Maslov never realized this problem, it would not be obvious to provide a
solution to this problem. Id. Appellant also contends Arai '636 does not
address this discharge issue. Br. 19. According to Appellant, Arai '63 6
refers to "equalizing among unit cells in a battery, not among multiple
batteries." Id. Arai '636 discloses equalizing voltages of unit cells of a
main battery by charge transfer from a maximum voltage cell to a minimum
voltage cell. Arai '636, Abstract. Appellant contends the only incentive to
make the Examiner's combination comes from Appellant's Specification
(id.), and if the references were combined there would be no teaching of
equalizing of voltages between batteries, as claimed (id. at 20).
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The Examiner responds that it can be inferred from Maslov that
"some batteries discharge quicker than others," and Maslov recognizes
transfer of energy for optimizing energy management. Ans. 14--15 (citing
Maslov, i-f 422). The Examiner explains Arai '636 is cited because it
"specifically discusses the equalization process." Id. at 15. The Examiner
states Appellant's argument "overlooks the fact that battery cells are in fact
batteries." Id. The Examiner reasons that "[a]s long as the batteries are
electrically connected to each other, it would be obvious of one of ordinary
skill to equalize the voltages to prevent such overcharging and
overdischarging." Id.
Appellant's contentions are persuasive. First, the Examiner does not
identify any disclosure in Maslov that battery voltages of multiple batteries
are, or become, unequal, or that this situation would be a problem. Second,
as Appellant points out, Arai '636 does not disclose equalizing voltages
among multiple batteries. Consequently, the Examiner does not identify an
adequate reason with rational underpinnings to modify Maslov to equalize
voltages between batteries, as claimed.
We do not sustain the rejection of claim 16 as unpatentable over
Maslov and Arai '636.
Rejection 5-Claim 18 over Maslov, Arai '636, and Elder
Rejection 6---Claim 19 over Maslov, Arai '636, and Ishii
Rejection 7-Claim 20 over Maslov, Arai '636, and Arai '460
Claims 18, 19, and 20 depend from claim 16. The Examiner's
application of Elder to the rejection of claim 18 (Final Act. 6-7), Ishii to the
rejection of claim 19 (id. at 7-8), and Arai '460 to the rejection of claim 20
(id. at 8) does not cure the deficiencies of the rejection of claim 16 discussed
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above. Accordingly, we also do not sustain the rejection of claim 18 as
unpatentable over Maslov, Arai '636, and Elder; the rejection of claim 19 as
unpatentable over Maslov, Arai '636, and Ishii; or the rejection of claim 20
as unpatentable over Maslov, Arai '636, and Arai '460.
DECISION
We reverse the rejection of claims 1-5, 8-11, 16, and 18-20, and
affirm the rejection of claims 13-15.
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
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