Ex Parte Kubo et al

Board of Patent Appeals and Interferences

Aug 17, 2010

10953364 (B.P.A.I. Aug. 17, 2010)

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.
10/953,364 09/30/2004 Asami Kubo 023971-0479 2882
22428 7590 08/17/2010
FOLEY AND LARDNER LLP
SUITE 500
3000 K STREET NW
WASHINGTON, DC 20007
EXAMINER
BERHANU, SAMUEL
ART UNIT PAPER NUMBER
2858
MAIL DATE DELIVERY MODE
08/17/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ASAMI KUBO and SADAFUMI IKEDA
____________

Appeal 2009-007115
Application 10/953,364
Technology Center 2800
____________

Before KENNETH W. HAIRSTON, JOSEPH F. RUGGIERO, and
KEVIN F. TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the final rejection of
claims 1-6, 8-12, and 14-20. We have jurisdiction under 35 U.S.C. § 6(b).
We heard oral arguments on January 12, 2010, a written transcript of
which is included in the record.
We AFFIRM-IN-PART.
Appellants’ disclosure relates to the control of a vehicle equipped
power supply and the detection of a deterioration of a vehicular battery
(Spec. ¶ [0001]).
Independent claims 1 and 19 are illustrative of the invention and read
as follows:

1. A control apparatus for a power supply equipped in an
automotive vehicle, the vehicle including an engine, a starter to
start the engine, a battery to reserve an electrical power
supplied to the starter, and a generator driven by the engine to
generate the electrical power to charge the battery, the control
apparatus comprising:
a battery voltage detecting section that detects a terminal
voltage of the battery in a form of a battery voltage;
a charge current detecting section that detects a charge current
flowing into the battery from the generator; and
deterioration determining means for determining a degree of
deterioration of the battery on the basis of a battery voltage
detected after the power supply is turned on and before a start
of operation of the generator and on the basis of a charge
current detected after the start of operation of the generator.

19. A control apparatus for a power supply equipped in an
automotive vehicle, the vehicle including an engine, a starter to
start the engine, a battery to reserve an electrical power
supplied to the starter, and a generator driven by the engine to
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generate the electrical power to charge the battery, the control
apparatus comprising:
battery voltage detecting means for detecting a terminal voltage
of the battery in a form of a battery voltage;
charge current detecting means for detecting a charge current
flowing into the battery from the generator;
a deterioration determining section configured to determine a
degree of deterioration of the battery on the basis of a battery
voltage detected after the power supply is turned on and before
a start of operation of the generator and on the basis of a charge
current detected after the start of operation of the generator.

The Examiner relies on the following prior art references to show
unpatentability:
Sato 5,122,723 Jun. 16, 1992
Ninomiya 5,287,286 Feb. 15, 1994
Arai 5,703,486 Dec. 30, 1997
Laig-Horsterbrock 6,268,712 B1 Jul. 31, 2001
Phillips 6,583,599 B1 Jun. 24, 2003
Araki 2002/0030494 A1 Mar. 14, 2002
Toyoshtima 2004/0176904 A1 Sep. 9, 2005
(filed Mar. 22, 2004)

Claims 1, 19, and 20 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Araki;
Claims 2, 3, 5, 6, 8-10, 14, and 15 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Araki and Laig-Horsterbrock;
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Araki, Laig-Horsterbrock, and Ninomiya;
Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Araki and Arai;
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Claims 12 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Araki and Phillips;
Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Araki, Laig-Horsterbrock, and Toyoshtima; and
Claim 18 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Araki, Phillips, and Sato.2

ISSUES
Appellants argue that Araki’s “deterioration determination unit 20
does not determine a degree of deterioration of a battery ‘on the basis of a
battery voltage detected after the power supply is turned on and before a
start of operation of the generator,’” and even if generator charges the
battery after the engine is on, that does not completely or appropriately
satisfy the requirements of claim 1 (App. Br. 10-14). The Examiner finds
that Araki teaches all of the elements of claims 1, 19, and 20 because it
discloses determining the battery state of charge or deterioration based on
the detected battery voltage and detected battery current (Ans. 10-12). The
Examiner also finds that Appellants’ arguments about the “no load-state” are
immaterial since the claims do not recite the same and Araki’s voltage and
current detection devices can be used in any interval since the claims do not
recite any time window when measurements should be taken (Ans. 12).
Appellants respond that claims 1, 19, and 20 recite detection in specific

2 Claims 7 and 13 were objected to as being dependent on a rejected base
claims, but indicated by the Examiner to be allowable if rewritten in
independent form (Ans. 10).
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intervals and the Examiner’s finding that detection can be taken during any
interval is contrary to the teachings of Araki (Reply Br. 3-4).
Appellants also argue that in the systems of Laig-Horsterbrock and
Arai, the current and voltage of a battery are measured during starting, or
when the battery is in a load state, and combining Araki with either Laig-
Horsterbrock or Arai would change the principle of operation of the system
of Araki (App. Br. 14-15, 18; Reply Br. 4-5). The Examiner finds that Laig-
Horsterbrock and Arai are not nonanalogous art when compared with Araki,
that one of ordinary skill in the art would have combined the references, and
that since the references show that the claimed elements were known, one of
ordinary skill in the art would have combined those elements with no change
in their respective functions (Ans. 12-13, 14-15).
Additionally, Appellants argue that claims 4, 12, and 16-18 should be
patentable based on their dependence on improperly rejected base claims
and because the secondary references, namely Ninomiya, Phillips,
Toyoshtima, and Sato, fail to cure the deficiencies in the rejections over
Araki, Laig-Horsterbrock, and Arai (App. Br. 17-19; Reply Br. 4-5). The
Examiner finds that since no arguments were proffered against the
secondary references, the Examiner finds that Appellants accepted those
combinations (Ans. 14, 17, 18, 20).
Only those arguments actually made by Appellants have been
considered in this decision. Arguments which Appellants could have made
but chose not to make in the Brief have not been considered and are deemed
to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Thus, the issues arising from the respective positions of Appellants
and the Examiner are:
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1) Does Araki teach the determination of a degree of deterioration of
the battery on the basis of a voltage detected after the power supply is turned
on and before the operation of the generator and on the basis of the current
detected after the start of the operation of the generator as recited in claim 1
under 35 U.S.C. § 102(b)?
2) Does Araki teach the determination of a degree of deterioration of
the battery on the basis of at least one of a voltage detected after the power
supply is turned on and before the operation of the generator and on the
basis of the current detected after the start of the operation of the generator
as recited in claims 19 and 20 under 35 U.S.C. § 102(b)?
3) Do the teachings of Laig-Horsterbrock or Arai change the principle
of operation of Araki such that combinations of those references under 35
U.S.C. § 103(a) would not have been obvious to ordinarily skilled artisans?
4) Do Ninomiya, Phillips, Toyoshtima, and Sato fail to cure alleged
deficiencies in the combinations of Araki, Laig-Horsterbrock, and Arai?

FINDINGS OF FACT
1. The instant Specification details the control of a vehicle equipped
power supply and the detection of a deterioration of a vehicular battery
(Spec. ¶ [0001]). This system includes three components: a battery voltage
detection section, a charge current detecting section, and a deterioration
determining section (Spec. ¶ [0005]).
2. The instant Specification also details that the deterioration
diagnosis routine determines whether the starter switch has been turned on
(Spec. Fig. 4, element S201) and thereafter the battery voltage is read if the
starter switch has been turned on (Spec. Fig. 4, element S202). After, the
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current is monitored and the maximum current after the cranking is
identified and compared to a threshold, when specific criteria are met (Spec.
Fig. 6, elements S301-S304).
3. Araki is directed to a remaining charge detection device for a
power storage unit (Abs.), which includes a current detector and a voltage
detector connected to a battery (Fig. 1, elements 14, 26, and 28). The system
determines the voltage in a no-load state by monitoring the battery voltage
when the power storage unit terminates the output assistance of the engine
by the motor (¶ [0040]).
4. Araki also discloses that current detection unit detects the current
value of the charging current and a discharging current of the power storage
unit (¶ [0015]), after the start of operation of the generator.
5. Laig-Horsterbrock is directed to a method for determining the
starting ability of a starter battery in a motor vehicle (Col. 1, ll. 6-7). The
current and the voltage of the storage battery are measured before starting is
begun, shortly after starting is begun, and at short intervals during the
starting procedure (Col. 2, ll. 38-47).
6. Arai is directed to a battery remaining capacity measuring device
(Col. 1, ll. 7-11). The device includes voltage detecting means for detecting
a terminal voltage of a battery connected to a load and current detecting
means for detecting a current flowing through the load (Col. 2, ll. 46-63).

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631
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(Fed. Cir. 1987). Analysis of whether a claim is patentable over the prior art
under 35 U.S.C. § 102 begins with a determination of the scope of the claim.
The properly interpreted claim must then be compared with the prior art.
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007).
KSR disapproved a rigid approach to obviousness (i.e., an analysis
limited to lack of teaching, suggestion, or motivation). KSR, 550 U.S. 398 at
419 (“The obviousness analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and motivation, or by
overemphasis on the importance of published articles and the explicit
content of issued patents.”).
During examination, the claims must be interpreted as broadly as their
terms reasonably allow. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). When the specification states the meaning that a term
in the claim is intended to have, the claim is examined using that meaning,
in order to achieve a complete exploration of the applicant's invention and its
relation to the prior art. In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989).

ANALYSIS
Anticipation Under 35 U.S.C. § 102(b) by Araki
Claim 1
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Appellants argue that Araki’s “deterioration determination unit 20
does not determine a degree of deterioration of a battery ‘on the basis of a
battery voltage detected after the power supply is turned on and before a
start of operation of the generator,’” and even if the generator charges the
battery after the engine is on, that does not completely or appropriately
satisfy the requirements of claim 1 (App. Br. 10-14). The Examiner finds
that Araki teaches all of the elements of claims 1, 19, and 20 because it
discloses determining the battery state of charge or deterioration based on
the detected battery voltage and detected battery current (Ans. 10-12). The
Examiner also finds that Appellants’ arguments about the “no load-state” are
immaterial since the claims do not recite the same and Araki’s voltage and
current detection devices can be used in any interval since the claims do not
recite any time window when measurements should be taken (Ans. 12).
Appellants respond that claims 1, 19, and 20 recite detection at specific
intervals and the Examiner’s finding that detection can be taken during any
interval is contrary to the teachings of Araki (Reply Br. 3-4). We agree with
Appellants.
With respect to claim 1, we disagree with the Examiner that claim 1
does not specify a time window for when measurements should be taken.
Claim 1 specifically recites “determine[ing] a degree of deterioration of the
battery on the basis of a battery voltage detected after the power supply is
turned on and before a start of operation of the generator.” Thus, the time
interval for detecting the battery voltage is specifically recited in claim 1. In
Araki, the detection occurs after the engine has already started, and the
generator has already started, and thus it is not made before the generator
has commenced operation (FF 3). We further agree with Appellants that
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since Araki detects the voltage in a no load-state, the detection of the voltage
in Araki would not comport with the requirements of claim 1 (Reply Br. 3).
Additionally, while the Examiner may be correct that Araki’s voltage
and current detection devices can be used in any interval to detect those
values, that, however, does not mean that the system of Araki would
function to make its deterioration determination if the measurements were
made in the interval recited in claim 1. Since the Examiner has properly
provided weight to the “on the basis of” language of claim 1, Araki must
disclose the same in order to anticipate. Since we find that Araki does not
provide for detection in the period prescribed, we find that Araki cannot
anticipate claim 1 and the Examiner erred in rejecting claim 1.

Anticipation Under 35 U.S.C. § 102(b) by Araki
Claims 19 and 20
With respect to claims 19 and 20, we note that deterioration
determining aspects of those claims are different from the deterioration
determining section of claim 1, discussed supra. Both claims 19 and 20
recite that the determination is made “on the basis of at least one of [a)] the
battery voltage detected after the power supply is turned on and [b)] before a
start of operation of the generator” (emphasis added). Thus, in contrast to
claim 1, the determination is made after one or both of the timing criteria are
met, so that claims 19 and 20 only require detection per a) or b).
It is clear that the voltage is detected in Araki after the power supply
is turned on (FF 3), even if the battery has no load applied to it, thus
satisfying one of the timing criteria recited in claims 19 and 20. While
Appellants allege that Araki does not disclose a determining section that
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makes the determination on the basis of a charge current detected after the
start of operation of the generator (App. Br. 11), we find that Araki provides
such a detection (FF 4). Additionally, while Appellants find that the
deterioration determining portions of claims 19 and 20 require the same as
that recited in claim 1 (Oral Hearing Transcript p. 5), Appellants have also
acknowledged the differences in the wordings of the claims (Oral Hearing
Transcript p. 10). As such, we do not find Appellants’ arguments to be
compelling with respect to the rejections of claims 19 and 20, and we affirm
their rejection as being anticipated by Araki.

Obviousness Under 35 U.S.C. § 103 over Araki and Laig-Horsterbrock
Claims 2, 3, 5, 6, 8-10, 14, and 15
Appellants argue that in the system of Laig-Horsterbrock, the current
and voltage of a battery are measured during starting, or when the battery is
in a load state, and combining Araki with Laig-Horsterbrock would change
the principle of operation of the system of Araki (App. Br. 14-15; Reply Br.
4). Appellants also argue that one of ordinary skill in the art would not have
made the proposed modification envisioned and that if combined, elements
in each would not have the same function as they did separately (App. Br.
14-15). The Examiner responds that Laig-Horsterbrock is not nonanalogous
art, that one of ordinary skill in the art would have combined Araki with
Laig-Horsterbrock, and that since the references show that the claimed
elements were known, one of ordinary skill in the art would have combined
those elements with no change in their respective functions (Ans. 12-13).
We agree with Appellants.
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We do not find that Appellants are arguing about whether Arai is
nonanalogous art; thus, we do not find the Examiner’s finding of analogous
arts to be helpful. Rather, Appellants argue that the elements of Araki and
Laig-Horsterbrock would have different functions in any combinations
thereof. Appellants argue that Araki is directed to a system which detects
deterioration with the battery in a no load-state, and Laig-Horsterbrock
measures battery properties with the battery in a load state (App. Br. 14),
and we agree (FF 5). Thus, both systems arrive at similar determinations by
different methodologies. As such, we do not find that the Examiner has
shown that all elements of Laig-Horsterbrock would have the same function
if combined with Araki.
While the Examiner is correct that the claims do not recite language
containing a “load-state,” we agree with Appellants that the functioning of
the systems must be considered in determining the propriety of the
combination of Araki and Laig-Horsterbrock. While Laig-Horsterbrock
could merely suggest that measurements could be made at a slightly
different time, we do not find that the Examiner has shown that applying
those conditions to very different operating conditions would result in a
working system or would not fundamentally change how Araki determines
deterioration. As such, we find that the Examiner erred in combining Araki
and Laig-Horsterbrock to find claims 2, 3, 5, 6, 8-10, 14, and 15 obvious.

Obviousness Under 35 U.S.C. § 103 over Araki and Arai
Claim 11
Similar to the arguments raised supra, Appellants argue that in the
system of Arai, the current and voltage of a battery are measured when the
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battery is connected to a load, and combining Arai with Araki would change
the principle of operation of the system of Araki (App. Br. 18; Reply Br. 4-
5). Appellants also argue that one of ordinary skill in the art would not have
made the proposed modification envisioned and that if combined, elements
in each would not have the same function as they did separately (App. Br.
18). The Examiner responds that Arai is not nonanalogous art, that one of
ordinary skill in the art would have combined Arai with Araki, and that since
the references show that the claimed elements were known, one of ordinary
skill in the art would have combined those elements with no change in their
respective functions (Ans. 12-13). We agree with Appellants.
As noted in the prior section, we do not find that Appellants are
arguing about whether Arai is nonanalogous art, but Appellants do argue
that the elements of Araki and Arai would have different functions in any
combinations thereof. Appellants argue that Araki is directed to a system
which detects deterioration with the battery in a no load-state, and Arai
measures battery properties with the battery in a load-state (App. Br. 18),
and we agree (FF 6). For similar reasons discussed supra, we do not find
that the Examiner has shown that applying the conditions and methodologies
of Arai to very different operating conditions would result in a working
system or would not fundamentally change how Araki determines
deterioration. As such, we find that the Examiner erred in combining Araki
and Arai to find claim 11 obvious.

Obviousness Under 35 U.S.C. § 103 over combinations of Arak, Laig-
Horsterbrock, Arai, Ninomiya, Phillips, Toyoshtima, and Sato
Claims 4, 12, and 16-18
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Appellants argue that claims 4, 12, and 16-18 should be patentable
based on their dependence on improperly rejected base claims and because
the secondary references, namely Ninomiya, Phillips, Toyoshtima, and Sato,
fail to cure the deficiencies in the rejections over Araki, Laig-Horsterbrock,
and Arai (App. Br. 17-19; Reply Br. 4-5). The Examiner finds that since no
arguments were proffered against the secondary references, the Examiner
finds that Appellants accepted those combinations (Ans. 14, 17, 18, 20). We
agree with Appellants.
Even accepting that the secondary references teach or suggest the
elements for which they were cited, we agree with Appellant that those
references do not cure the deficiencies in the combinations of Araki, Laig-
Horsterbrock, and Arai found supra. As such, we find the Examiner erred in
rejecting claims 4, 12, and 16-18 over the stated bases.

CONCLUSIONS
1) We find Araki fails to teach the determination of a degree of
deterioration of the battery on the basis of a voltage detected after the power
supply is turned on and before the operation of the generator and on the
basis of the current detected after the start of the operation of the generator
as recited in claim 1 under 35 U.S.C. § 102(b).
2) We find that Araki teaches the determination of a degree of
deterioration of the battery on the basis of at least one of a voltage detected
after the power supply is turned on and before the operation of the generator
and on the basis of the current detected after the start of the operation of the
generator as recited in claims 19 and 20 under 35 U.S.C. § 102(b).
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3) We find that the teachings of Laig-Horsterbrock or Arai change the
principle of operation of Araki such that combinations of those references
under 35 U.S.C. § 103(a) would not have been obvious to ordinarily skilled
artisans.
4) We find that Ninomiya, Phillips, Toyoshtima, and Sato fail to cure
the deficiencies in the combinations of Araki, Laig-Horsterbrock, and Arai.

DECISION
The Examiner’s rejection of claims 1-6, 8-12, and 14-18 before us on
appeal is REVERSED and the Examiner’s rejection of claims 19 and 20
before us on appeal is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

ack

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