Ex Parte Kim

Patent Trial and Appeal Board

Jun 21, 2013

11935029 (P.T.A.B. Jun. 21, 2013)

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.
11/935,029 11/05/2007 Sung-hun Kim 104-1301 7078
38209 7590 06/21/2013
Stanzione & Kim, LLP
919 18th Street, NW
Suite 440
Washington, DC 20006
EXAMINER
YANCHUS III, PAUL B
ART UNIT PAPER NUMBER
2116
MAIL DATE DELIVERY MODE
06/21/2013 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 SUNG-HUN KIM
_____________

Appeal 2012-003978
Application 11/935,029
Technology Center 2100
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-003978
Application 11/935,029
2
STATEMENT OF THE CASE
The Examiner finally rejected claims 1-27. Appellant appeals
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
INVENTION
This invention relates to "a computer which includes a battery and a
power control method thereof." (Spec. ¶[0002]). Claim 1, reproduced
below, is representative of the claimed subject matter:
1. A computer, comprising:
[a] a system part to process data;
[b] a battery to supply power to the system part; and
[c] a control system
[c1] to determine a residual amount of the battery,
[c2] to calculate a decreased residual amount of
the battery based on a difference between the determined
residual amount and a previous residual amount, and
[c3] to control the power supply to the system part
based on comparing [c3a] the calculated decreased
residual amount and [c3b] the residual amount to a
predetermined value.
(Disputed limitations emphasized).

REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Kozikaro
Ito
Suzuki
US 5,058,023
US 6,064,179
US 7,252,919 B2
Oct. 15, 1991
May 16, 2000
Aug. 7, 2007
Appeal 2012-003978
Application 11/935,029
3
Burns US 7,317,298 B1 Jan. 8, 2008
Applicant's Admitted Prior Art (AAPA).

REJECTIONS
R1. Claims 1-4, 9, 12, 13, 15, 17-19, and 21-23 stand rejected under
35 U.S.C §103(a) as being unpatentable over the combined teachings and
suggestions of AAPA and Burns.
R2. Claims 5-8, 10,11, 14, 16, 20, and 24-27 stand rejected under 35
U.S.C §103(a) as being unpatentable over the combined teachings and
suggestions of AAPA, Burns, and Ito.

GROUPING OF CLAIMS
Based on Appellant's arguments, we decide the appeal of the
obviousness rejection R1 of claims 1-4, 9, 12, 13, 15, 17-19, and 21-23 on
the basis of claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Based on Appellant's arguments, we decide the appeal of the
obviousness rejection R2 of claims 5-8, 10, 11, 14, 16, 20, and 24-27 on the
basis of claim 24. See id.

ANALYSIS
Issue: Under § 103, did the Examiner err in finding that the cited
references, either alone or in combination, would have taught or suggested:
[c] a control system . . .
[c2] to calculate a decreased residual amount of the battery
based on a difference between the determined residual amount
and a previous residual amount, and
Appeal 2012-003978
Application 11/935,029
4
[c3] to control the power supply to the system part based on
comparing [c3a] the calculated decreased residual amount and
[c3b] the residual amount to a predetermined value,
within the meaning of claim 1?
a.
As an initial matter of claim construction, we conclude the recited
limitations [c2] and [c3] are statements of intended use.1 (Claim 1).
Because the calculation and control are not positively recited as actually
occurring, limitations [c2] and [c3] are not accorded patentable weight.
Even assuming arguendo that the [c2] “to calculate” and [c3] “to control”
statements of intended use may be given patentable weight, we find the
weight of the evidence supports the Examiner's underlying factual findings
and ultimate legal conclusion of obviousness.
b.
Regarding claim 1's limitation "[c2] to calculate a decreased residual
amount of the battery based on a difference between the determined residual
amount and a previous residual amount," the Examiner finds this limitation
[c2] is taught or suggested by:
Burns['] disclos[ure] in column 8, lines 1-23 that one of the
ways that a new voltage indication value is irrational is if the
new voltage indication value appears to decrease (in relation to

1 Our reviewing court guides that “[a]n [] intended use or purpose usually
will not limit the scope of the claim because such statements usually do no
more than define a context in which the invention operates.” Boehringer
Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345
(Fed.Cir. 2003). Although “[s]uch statements often . . . appear in the claim’s
preamble,” In re Stencel, 828 F.2d 751, 754 (Fed.Cir. 1987), a statement of
intended use or purpose can appear elsewhere in a claim. Id.

Appeal 2012-003978
Application 11/935,029
5
a previous voltage indication value) more than is realistic.
Burns does not explicitly disclose how it is determined that the
newest battery voltage indication value is irrational due to the
value appearing to decrease by an amount that is unrealistic.
(Ans. 14; col. 8, ll. 9-16).
The Examiner concludes it would have been obvious for one skilled in
the art to calculate Burns' decrease2 between the new voltage and previous
stored voltage. (Ans. 14-15; col. 8, ll. 9-16). The Examiner further
concludes it would have been obvious to compare the calculated difference
("a decreased residual amount") to a predetermined value that represents a
realistic amount of decrease to make Burns' determination whether the
calculated difference is realistic.3 (Id. at 15-16). The Examiner supports the
legal conclusion of obviousness with Suzuki and Kozikaro, which evidence
it was known in the art to calculate a difference between values and compare
the calculated difference to a predetermined value that is realistic within a
capable range, respectively. (Id.).
Appellant contends that "other methods exist to determine a decrease
from a previous value to a subsequent value. . . . Accordingly, a decrease

2 Burns teaches:
FIG. 2, an exemplary plot 34 of captured values of the voltage
V over time without manipulation by the processor shows
apparent rises in the voltage V during discharge and unrealistic
decreases of the voltage V. The processor 26 is configured
(through software instructions) to leverage the knowledge that
battery terminal voltage either remains the same or declines
during battery discharge and that the decline is in relatively
small [realistic] amounts.
(Col. 8, ll. 9-16; emphasis added).
3 See footnote 2.
Appeal 2012-003978
Application 11/935,029
6
from a previous value to a subsequent value is not inherently determined by
calculating a difference between the two values." (Reply Br. 5) (emphasis
added).
Appellant's contention is not persuasive because "[t]he test for
obviousness is what the combined teachings of the references would have
suggested to one of ordinary skill in the art." In re Young, 927 F.2d 588, 591
(Fed. Cir. 1991) (citing In re Keller, 642 F.2d 413, 425 (CCPA
1981))(emphasis added). Although Appellant addresses Burns’ Figure 3
limitations, Appellant does not address nor rebut the Examiner's conclusion
that it would have been obvious to calculate a difference between two
voltage values and compare the calculated difference to a predetermined
realistic difference value, as described with respect to Burns’ Figure 2 (Ans.
14-16; col. 8, ll. 9-16). Therefore, on this record, we are not persuaded of
Examiner error.
c.
Regarding limitations [c2] and [c3a], Appellant contends Burns'
description of limitation [c2] does not appear at Burns column 8, lines 1-23,
as the Examiner finds, but instead appears in Figure 3, Stage 50 (col. 8, ll.
58-67). (Reply Br. 5; claim 1). Appellant contends that mapping Burns'
Stage 48 to limitation [c3a] and Stage 50 to limitation [c2] would not have
taught or suggest performing the actions of claim 1, [c2] before [c3a].
(Reply Br. 5-6).
Appellant's contentions are not persuasive because the Examiner does
not rely upon Burns’ Stage 50 to teach or suggest limitation [c2]. (Ans. 14-
16). Appellant does not rebut the Examiner's finding that limitation [c2]
would have been taught or suggested by Burns’ column 8, lines 1-23 (Ans.
Appeal 2012-003978
Application 11/935,029
7
14-16; see section b above; col. 8, ll. 9-16). Furthermore, the Examiner
relies upon the combination of AAPA and Burns for teaching or suggesting
limitations [c3], [c3a] and [c3b]. (Ans. 6; see also claim 1). Appellant does
not rebut this finding. Therefore, on this record, we are not persuaded of
Examiner error.
d.
Appellant contends Burns' "previously stored battery terminal voltage
value" would not have taught or suggested the claimed "previous residual
amount [of the battery]," within the meaning of claim 1, limitation [c2],
because Burns' "previously stored battery terminal voltage value may be a
predetermined constant value representing the voltage value when the
battery is fully charged." (Reply Br. 4) (emphasis added).
Appellant's contention is not persuasive because Appellant's argument
is not commensurate with the broader language of the claim. (Reply Br. 4).
We conclude the broadest reasonable interpretation of the recited "a previous
residual amount" does not preclude Appellant's argued predetermined
constant value representing the voltage value when the battery is fully
charged, because Appellant's argued amount is a determined "previous
residual amount" when the battery was fully charged. Furthermore, contrary
to Appellant's contention, Burns teaches the "previously stored battery
terminal voltage value" ("a previous residual amount") is a previously
determined stored corrected battery voltage based on a measured battery
voltage. (Burns, col. 8, ll. 16-23; Fig. 3; Vcurrent; Ans. 6). Appellant does not
rebut this finding. Therefore, on this record, we are not persuaded of
Examiner error.
Appeal 2012-003978
Application 11/935,029
8
e.
Notwithstanding Appellant's arguments, we find the weight of the
evidence supports the Examiner's underlying factual findings and ultimate
legal conclusion of obviousness. Accordingly, we sustain the Examiner's
obviousness rejection R1 of claim 1, and claims 2-4, 9, 12, 13, 15, 17-19,
and 21-23, which fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Regarding the second-stated §103 rejection and representative claim
24, Appellant essentially restates the same argument previously advanced
for claim 1. (App. Br. 12). We do not find this argument persuasive for the
same reasons discussed above regarding claim 1. Therefore, we sustain the
Examiner’s obviousness rejection R2 of representative claim 24, and claims
5-8, 10, 11, 14, 16, 20, and 25-27 (not separately argued). See 37 C.F.R.
§ 41.37(c)(1)(iv).

DECISION
We affirm the Examiner's rejection R1 of claims 1-4, 9, 12, 13, 15,
17-19, and 21-23 under § 103.
We affirm the Examiner's rejection R2 of claims 5-8, 10, 11, 14, 16,
20, and 24-27 under § 103.
No time period for taking any action connected with this appeal may
be extended under 37 C.F.R. § 1.136(a)(1)(iv).

ORDER
AFFIRMED
llw