Ex Parte Luke et al

Patent Trial and Appeal Board

Jan 5, 2018

13559010 (P.T.A.B. Jan. 5, 2018)

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.
13/559,010 07/26/2012 Hok-Sum Horace Luke 170178.404 6874
25096 7590 01/09/2018
PFRKTNN TOTF TIP- NFA General
EXAMINER
PATENT-SEA NGUYEN, NHA T
P.O. BOX 1247
SEATTLE, WA 98111 -1247 ART UNIT PAPER NUMBER
2851
NOTIFICATION DATE DELIVERY MODE
01/09/2018 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):
patentprocurement @perkinscoie. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HOK-SUM HORACE LUKE and
MATTHEW WHITING TAYLOR
Appeal 2017-004443
Application 13/559,010
Technology Center 2800
Before JAMES C. HOUSEL, WESLEY B. DERRICK, and
JENNIFER R. GUPTA, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s
maintained rejections of claims 1-22. We have jurisdiction under 35 U.S.C.
§6.
We AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
The subject matter of the claims on appeal relates to machines for
charging and distributing portable energy storage devices and their use to
1 The Appeal Brief identifies the real party in interest as Gogoro Inc. Appeal
Brief filed June 22, 2016 (“Appeal Br.”), 2.
Appeal 2017-004443
Application 13/559,010
charge and distribute portable energy storage devices. Specification filed
July 26, 2012 (“Spec.”), Abstract. The meaning of the phrase portable
electrical power storage device encompasses batteries. Spec. 13,11. 4-9.
Independent claim 1 is directed to a “method of operating of
controller of a portable electrical energy storage device collection, charging
and distribution machine.” Independent claim 13 is directed to a “portable
electrical energy storage device collection, charging and distribution
machine.” Independent claim 21 is directed to “non-transitory computer-
readable medium that stores instructions” for operating the portable
electrical energy storage device collection, charging and distribution
machine.
Independent claim 1 below is representative:
1. A method of operating a controller of a portable electrical
energy storage device collection, charging and distribution
machine, comprising:
receiving, by the controller of the portable electrical
energy storage device collection, charging and distribution
machine, a request for a portable electrical energy storage
device from a user at a portable electrical energy storage device
collection, charging and distribution machine;
automatically selecting, by the controller of the portable
electrical energy storage device collection, charging and
distribution machine, a portable electrical energy storage device
in the portable electrical energy storage device collection,
charging and distribution machine having particular
performance characteristics, the selection based on a received
user profile of the user that is indicative of a performance level
of the portable electrical energy storage device; and
automatically releasing the selected portable electrical
energy storage device for the user.
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Appeal Br. 18. Claim 6, dependent from claim 1, further requires
“determining ... a particular level of energy to release from the portable
electrical energy storage device for use by the user” and “configuring ... a
security system of the portable electrical energy storage device to release
energy from the portable electrical energy storage device at the determined
particular level for use by the user based on the received user profile.”
Appeal Br. 19.
THE REJECTIONS
Claims 1, 6, 7, 11-14, and 20-22 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Tseng.2
Claims 2-5, 8-10, and 15-19 stand rejected under 35 U.S.C. § 103(b)
as follows:
Claims 2, 3, 5, and 15-18 over Tseng in view of Hoeltzel.3
Claims 8 and 9 over Tseng in view of Hammerslag.4
Claim 10 over Tseng in view of Kelty.5
Claim 4 over Tseng in view of Hoeltzel and Codings.6
Claim 19 over Tseng in view of Codings.
2 Tseng, US 5,631,536, issued May 20, 1997.
3 Hoeltzel, US 2010/0145717 Al, published June 10, 2010.
4 Hammerslag, US 2009/0198372 Al, published August 6, 2009.
5 Kelty et al., US 2010/0188043 Al, published July 29, 2010.
6 Codings, 111 et al., US 2011/0224868 Al, published September 15, 2011.
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Application 13/559,010
DISCUSSION7
On this record, having reviewed the maintained grounds of rejection
set forth by the Examiner, Appellants’ arguments, and the Examiner’s
response, we are persuaded that the Examiner erred reversibly in rejecting
claim 6 (and claim 7, dependent thereon) as anticipated by Tseng, but are not
persuaded of reversible error in the rejections of claims 1-5 and 8-22.
For any ground of rejection, “the [Ejxaminer bears the initial burden
. . . of presenting a prima facie case of unpatentability.” In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992). We consider the record to determine
whether Appellants have identified reversible error in the Examiner’s
rejection. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has
long been the Board’s practice to require an applicant to identify the alleged
error in the [Ejxaminer’s rejections.”) (citing Ex parte Frye, 94 USPQ2d
1072, 1075 (BPAI 2010)) (precedential).
We add the following.
Anticipation
Appellants proffer substantive arguments as to claim 1 and rely on
dependency from claim 1, or on the proffered arguments, adding separate,
substantive argument only as to dependent claim 6. Appeal Br. 12-15.
The Examiner finds Tseng discloses the method of claim 1. Final
Act. 3—4, 23-25 ; see also Ans. 2—4. The Examiner finds Tseng discloses a
battery recharging and vending apparatus that enables a user to request,
7 In this discussion, we refer to the Specification, the Final Office Action
dated November 30, 2015 (“Final Act.”), the Appeal Brief, the Examiner’s
Answer dated November 22, 2016 (“Ans.”), and the Reply Brief filed
January 17, 2017 (“Reply Br.”).
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Application 13/559,010
purchase, and receive a recharged battery upon swapping a discharged
battery. Id. As to the request receiving step, the Examiner finds Tseng
discloses a controller that receives a request for a portable electrical energy
storage device from a user. Final Act. 3 (citing Tseng col. 2,1. 57-col. 3,
1. 3, col. 6,11. 49-60, col. 9,11. 1^40, Fig. 8). As to the controller
“automatically selecting ... a portable electrical storage device . . . having
particular performance characteristics . . . based on a received user profile
. . . that is indicative of a performance level of the portable electrical energy
storage device” (claim 1), the Examiner finds Tseng’s method of vending
machine operation to include receiving input of user information, including
battery profile information, such as discharge profiles, which the Examiner
deems to be user profile information, and selecting a battery to dispense
based on the information. Final Act. 3-4 (citing Tseng col. 3,11. 35^15,
col. 6,11. 49-60, col. 7,1. 35-col. 8,1. 35, and col. 9,1. 1-col. 12,1. 60)
(emphasis omitted). As to “automatically releasing the selected portable
electrical energy storage device for the user” (claim 1), the Examiner relies
on the disclosed release of the battery to the user by Tseng’s automated
vending machine. Final Act. 4 (citing Tseng col. 6,11. 49-60, col. 9,1. 1-
col. 12,1. 60, and Figs. 8-9).
Appellants generally contend that Tseng fails to disclose
“automatically selecting ... a portable electrical energy storage device . . .
having particular performance characteristics based on a received user
profile that is indicative of a performance level of the portable electrical
energy storage device.” Appeal Br. 12 (emphasis omitted). Appellants
argue that “[tjhere is no selection of a battery having particular performance
characteristics based on a received user profile” and that “in Tseng, the
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system simply selects a battery to match characteristics of the particular
battery being returned independent of any association of the user with the
battery information.” Appeal Br. 13. In the Reply Brief, Appellants recant
that Tseng discloses selecting a battery to match characteristics of the battery
being returned, but instead contend it discloses selection of batteries to be
provided such that their characteristics are matched. Reply Br. 2^1.
Appellants further contend that, even if Tseng discloses selecting a
battery to match the characteristics of the particular battery being returned,
Tseng fails to create a user profile that has any “stored association of the
user with the battery identification information” (Reply Br. 4), fails to
disclose select a battery based on any such stored association because there
is no stored association {id.), and fails to select a battery based on a received
user profile because “[f]or the user profile to be received, it must already
exist before it is received, not be formed after the battery is returned (i.e.,
after battery identification information is received)” {id. at 4-5). Further, as
to battery characteristics such as state of charge and discharge pattern,
Appellants argue that this fails because there is no recorded association
between the user and the specific battery characteristics and because “the
state of charge and discharge pattern are not supplied by the user.” Reply
Br. 5, 6. Appellants also contend that the ability to purchase of a fully
charged battery is not an indication of a particular performance level. Reply
Br. 6 (citing Tseng col. 9,11. 35-37).
We begin our analysis by determining the meaning of the claims,
giving terms the broadest reasonable interpretation consistent with the
Specification as it would be interpreted by one of ordinary skill in the art.
See, e.g., In re Suitco Surface, Inc., 603 F.3d 1255, 1259-60 (Fed. Cir.
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Application 13/559,010
2010). In doing so, we turn first to the claim itself. See, e.g., Rapoport v.
Dement, 254 F.3d 1053, 1059 (Fed. Cir. 2001). “[W]e look to the
[Specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation.” In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2009). “[A]s applicants may amend claims
to narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee.” Id.
Having considered the language of the claims, and the Specification,
we determine that the “received user profile of the user that is indicative of a
performance level of the portable electrical energy storage device” (claim 1)
includes any information received that indicates what battery is used by the
user, as well as any further information as to the user or profile based on
such further information. In particular, we discern no definition of “user
profile of the user” in the Specification requiring it to reflect any particular
item of information, such that the type (or size) of battery used by the user
does not constitute a “user profile of the user.” Likewise, we discern no
definition of “performance level of the portable electrical energy storage
device” that would be contrary to the type (or size) of the battery as being
indicative of its performance level. Indeed, the Specification identifies
“capacity of the portable electrical energy storage device” as a “performance
characteristic.” Spec. 6,11. 10-12.
We do not find Appellants’ arguments persuasive because the
elements Appellants contend are missing are not required by claim 1 as it is
properly construed. As discussed above, information as to the type (or size)
of battery constitutes a user profile of the user and it is not disputed that
Tseng discloses the apparatus receives this information, either by input or by
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Application 13/559,010
recognition of the returned battery. See, e.g., Tseng col. 12,11. 54-61,
Fig. 12. Appellants’ various contentions grounded on the absence of any
“stored association” or the absence of “state of charge and discharge pattern”
entered by the user (Reply Br. 4-6) fail to establish harmful error because
the “user profile of the user” is met by the identification of the type (or size)
of battery upon the battery being returned.
Appellants’ contention that the received user profile “must already
exist before it is received, not be formed after the battery is returned (i.e.,
after battery identification information is received)” (Reply Br. 4-5) is
unpersuasive because it is grounded on unclaimed features where claim 1 is
silent as to when the portable electrical energy storage device (battery) is
returned and thus does not require that the user profile is received before
return of the battery. See In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir.
1998); In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Appellants’ arguments grounded on Tseng merely providing fully
charged batteries (Reply Br. 6) fail to establish harmful error because Tseng
discloses the apparatus receives information regarding the type of battery
grounded on recognition of the returned battery and then provides the same
type of battery. See, e.g., Tseng col. 12,11. 54-61, Fig. 12; see also col. 12,
11. 28-30 (“[T]he present invention may be configured to accommodate
batteries and battery packs of varying configuration.”).
As to claim 6, the Examiner relies on Tseng’s dispensing of a fully
charged battery where the release of the battery is controlled by the security
mechanism of Tseng’s vending machine. Ans. 6-7 (citing Tseng, Abstract,
col. 3,11. 15—45, col. 7,1. 35-col. 8,1. 7, col. 9,11. 20^10); see also Final
Act. 4-5 (citing col. 6,1. 49-col. 8,1. 56, col. 9,1. 1-col. 12,1. 60). The
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Examiner further relies on the selection of batteries for release from the
vending machine on the basis of their discharge curve/pattem. Ans. 5-6
(citing col. 6,11. 1-7, col. 7,1. 35-col. 8,1. 7).
Appellants contend, inter alia, that the Examiner has erred in finding
Tseng anticipates because “[tjhere is no determination made by the battery
recharging apparatus of Tseng of a particular level of energy to release from
the charged battery” and “the battery recharging apparatus of Tseng does not
configure a security system of the battery.” Appeal Br. 15. Appellants
contend that “Tseng discloses the vending machine is equipped with
security features . . . that releases a storage device at a particular level of
energy based on the user profile” and argue this differs from “a security
system of the portable electrical energy storage device.” Reply Br. 7-8.
We are unable to sustain the rejection of claim 6 as maintained by the
Examiner because Tseng’s disclosure of a security system for the vending
machine that controls the release of batteries is not a security system of the
portable electrical energy storage device, e.g., a battery. Further, while we
find Tseng does disclose a security system associated with a battery, and it is
configured by the battery recharging apparatus of Tseng, its function does
not manifestly include controlling the release of a particular level of energy
to release from the battery, determined by the controller based on the
received user profile. Rather the function of the security system included in
Tseng’s batteries or battery packs is to “ensure batteries are swapped and
accounted for properly.” Tseng col. 3,11. 57-58; see also col. 6,11. 49-67.
Thus, the encoded security system can render the power system inoperative
when an incorrect security code is found, but this is not “determining ... a
particular level of energy to release from the portable electrical energy
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storage device for use by the user” and “configuring ... a security system of
the portable electrical energy storage device to release energy from the
portable electrical energy storage device at the determined particular level
for use by the user based on the received user profile” as required by
claim 6. We are likewise unable to sustain the rejection of claim 7, the sole
claim dependent from claim 6.
Accordingly, we affirm the anticipation rejection as to claims 1,11-
14, and 20-22, but reverse as to claims 6 and 7.
Obviousness
The Examiner relies on Tseng as set forth above. The Examiner relies
on further references for features missing from Tseng. Final Act. 12-20, 22.
As to claims 2-5, 8-10, and 15-19, subject to obviousness rejections,
Appellants proffer no substantive argument, but rely on the contended
failure of Tseng to disclose the limitations of independent claims 1,13, and
21. Appeal Br. 16-17; Reply Br. 9-10.
Having only been persuaded of reversible error as to claims 6 and 7 in
the Examiner’s rejection over Tseng for anticipation, on this record, we are
unpersuaded of reversible error in the rejections of claims 2-5, 8-10, and
15-19.
Accordingly, we affirm the obviousness rejections.
DECISION
The Examiner’s rejection under 35 U.S.C. § 102(b) of claims 6 and 7
is reversed.
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Application 13/559,010
The Examiner’s rejection under 35 U.S.C. § 102(b) of claims 1,11-
14, and 20-22 is affirmed.
The Examiner’s rejections under 35 U.S.C. § 103(a) of claims 2-5, 8-
10, and 15-19 are affirmed.
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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