Ex Parte Nemesh et alDownload PDFPatent Trial and Appeal BoardDec 30, 201612394516 (P.T.A.B. Dec. 30, 2016) Copy Citation 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. 12/394,516 02/27/2009 MARK D. NEMESH P003755-JEK (003.0533) 2687 70422 7590 LKGlobal (GM) 7010 E. COCHISE ROAD SCOTTSDALE, AZ 85253 EXAMINER SINGH, AMIT K ART UNIT PAPER NUMBER 3742 NOTIFICATION DATE DELIVERY MODE 01/04/2017 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@lkglobal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARK D. NEMESH, CHANDRA S. NAMUDURI, WISSAMIBRI, MATTHEW J. MARTINCHICK, and ANDREW J. FARAH Appeal 2014-003993 Application 12/394,516 Technology Center 3700 Before CHARLES N. GREENHUT, ANNETTE R. REIMERS, and GORDON D. KINDER, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL Appeal 2014-003993 Application 12/394,516 STATEMENT OF THE CASE1 Mark D. Nemesh et al. (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner’s decision to reject under 35 U.S.C. § 103(a) (1): claims 1-7 and 12 as unpatentable over Luo (US 6,998,584 Bl; iss. Feb. 14, 2006), Ziaimehr (US 6,541,740 B2; iss. Apr.l, 2003), and Smith (US 6,181,235 Bl; iss. Jan.30, 2001); (2) claims 8, 9, and 19 as unpatentable over Luo, Gassho (US 5,308,958; iss. May 3, 1994), Smith, and Ziaimehr; (3) claims 13 and 18 as unpatentable over Luo, Russell (US 5,504,306; iss. Apr. 2, 1996), Smith, and Ziaimehr;2 and (4) claims 15 and 16 as unpatentable over Luo, Russell, Smith, Gassho, and Ziaimehr. Claims 10, 11, 14, 17, and 20 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The claimed subject matter relates to “a heater control system utilizing power/current amplitude modulation.” Spec. 1, para. 1, Figs. 1, 2. Claims 1, 13, and 19 are independent. 1 The Examiner has withdrawn the 112, first paragraph, written description and 112, second paragraph, indefiniteness rejections of claim 19. Ans. 12; see also Final Act. 3—4. We note that the Examiner does not address the drawing objection in the Answer. See Ans., generally; see also Final Act. 2-3. We further note that a drawing objection is not an appealable matter, but rather is a petitionable matter, and thus is not within the jurisdiction of the Board. See In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002); and In reMindick, 371 F.2d 892, 894 (CCPA 1967). 2 Claim 18 depends from claim 13 not from canceled claim 17. See Amendment filed Sept. 28, 2012; see also Final Act. 2. 2 Appeal 2014-003993 Application 12/394,516 Claim 1 is illustrative of the claimed subject matter and recites: 1. A heater control system, comprising: a controller having an input for receiving a signal indicative of the desired heating level and having a plurality of outputs (Bl, B2, B3, B4 . . . , Bn); a plurality of n banks of heating elements (HI, H2, H3, H4, . . . , Hn) each containing at least one heating element, wherein the plurality of n banks comprises at least four banks (HI, H2, H3, H4), and wherein each of the plurality of outputs (Bl, B2, B3, B4 . . . , Bn) represents a single bit of an at least four-bit binary representation of the desired heating level; a plurality of switches Ql, Q2, Q3, Q4, .... ,Qn each coupled to a one of the plurality of n banks for selectively activating the plurality of n banks, wherein the controller is further configured to turn a first plurality of the plurality of switches Ql, Q2, Q3, Q4, .... ,Qn OFF before turning a second plurality of the plurality of switches ON; and a plurality of control inputs each one coupled to a different one of the plurality of switches to selectively activate the plurality of switches. ANALYSIS Obviousness over Luo, Ziaimehr, and Smith Claims 1—7 and 12 Appellants argue claims 1-7 and 12 as a group. Appeal Br. 12-16. We select claim 1 as the representative claim, and claims 2-7 and 12 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). Independent claim 1 recites, in relevant part, a controller “configured to turn a first plurality of the plurality of switches Ql, Q2, Q3, Q4, .... ,Qn OFF before turning a second plurality of the plurality of switches ON.” 3 Appeal 2014-003993 Application 12/394,516 Appeal Br. 20, Claims App. The Examiner finds that the combined teachings of Luo and Ziaimehr do not disclose this limitation. Final Act. 4- 5. As such, the Examiner turns to Smith for disclosing that “the control unit 12 can be adapted to control energization of the heaters 3 in any desired sequence to suit operating conditions.” Id. at 5 (citing Smith 3:57-59). The Examiner reasons that “[i]f operating conditions, such as avoiding undesirable peak or transient currents, require a particular sequence of turning on and turning off the switches, a person having ordinary skill in the art can readily contemplate such a sequence from the Smith teaching of energization in any sequence . . . while assessing and adjusting the heater power output.” Final Act. 6; see also id. at 16; Ans. 12-13. The Examiner concludes that it would have been obvious to modify Luo and Ziaimehr with the rotary apparatus of Smith “to provide performance that suits operating conditions.” Id. at 7 (citing Smith, 3:57-59). Appellants contend that “there is insufficient evidence in Smith such that one of ordinary skill in the art would discern from reading Smith that the controller is configured to turn off a first plurality switches before a second plurality is turned on.” Appeal Br. 13; see also id. at 16; Reply Br. 3- 4. According to Appellants, “Smith merely teaches energizing heaters in ‘any desired sequence.’” Id. at 16; see also Reply Br. 4. Smith discloses that “[i]t will be appreciated that the control unit 12 can be adapted to control energisation of the heaters 3 in any desired sequence to suit operating conditions.” Smith, 3:57-59; see also Final Act. 6-7; Ans. 12; Appeal Br. 13, 16; Reply Br. 3—4. In this case, the Examiner correctly reasons that Smith’s disclosure of controller 12 being adapted to control energisation of heaters 3 in “any desired sequence” means the 4 Appeal 2014-003993 Application 12/394,516 controller can turn a first plurality of switches off before turning a second plurality of switches on in order to accommodate the underlying (desired) operating condition. See Final Act. 6; see also id. at 16; Ans. 12-13. Claim 1 is directed to a control system—an apparatus or machine— not a method. Reciting a particular sequence of steps in a claim directed to an apparatus does not distinguish the claim from the prior art unless such recitation results in a structural distinction between the claimed invention and the prior art device. See, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). Regarding this limitation, the Specification only describes a particular switching methodology (“br[eak]-before-make”) and sequence of steps (“Ql and Q2 should be turned OFF before turning Q3 ON.”). Spec. 5, para. 16. Neither the Specification nor Appellants apprise us as to what structural distinction, if any, must exist in a controller by virtue of describing that controller as “configured to turn a first plurality of the plurality of switches [] OFF before turning a second plurality of the plurality of switches ON.” The Examiner reasonably found that since Smith’s controller could perform the recited function it was reasonably regarded as “configured to” do so. Appellants do not actually dispute that finding. Appellants correctly assert that Smith does not actually perform the recited function, but that is not the critical inquiry in a claim directed to an apparatus. “[WJhere the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing [patentability] in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on” In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). Appellants do 5 Appeal 2014-003993 Application 12/394,516 not provide persuasive evidence or technical reasoning that Smith’s disclosure of controller 12 being adapted to control energisation of heaters 3 in “any desired sequence” precludes the sequence of turning a first plurality of switches off before turning a second plurality of switches on. Nor do Appellants provide persuasive evidence or technical reasoning that the Examiner’s proposed modification of the Luo/Ziaimehr apparatus with Smith’s rotary apparatus would have been beyond the level of ordinary skill in the art or unpredictable to a person of ordinary skill in the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Appellants further contend that the Examiner “is employing mere speculation based on improper hindsight to complete [the] rejection.” Appeal Br. 13 (citation omitted); see also Reply Br. 3. In particular, Appellants contend that “[ejxcept for the disclosure contained in the Appellants’] application, not a single possible suggestion for minimizing peak currents by turning a first plurality of switches off before turning a second plurality on is identified in any of the references of record.” Reply Br. 4. We are not persuaded. The Examiner cites specific teachings in the references themselves, not Appellants’ disclosure, in support of the Examiner’s articulated reasoning for combining the references as proposed in the rejection. See Final Act. 4-6; see also id. at 16; Ans. 12-13. Further, the “problems/advantages” of the controller being configured to turn a first plurality of switches off before turning a second plurality on, as asserted by Appellants, are not claimed. See Reply Br. 4; see also Appeal Br. 20, 6 Appeal 2014-003993 Application 12/394,516 Claims App. Limitations not appearing in the claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Accordingly, for the foregoing reasons, we sustain the Examiner’s rejection of independent claim 1 as unpatentable over Luo, Ziaimehr, and Smith. We further sustain the Examiner’s rejection of claims 2-7 and 12, which fall with claim 1. Obviousness over Luo, Gassho, Smith, and Ziaimehr Claims 8, 9, and 19 Appellants do not present arguments for claims 8, 9, and 19 separate from those presented above for claim 1. Appeal Br. 17. As discussed above, these arguments are not persuasive. Accordingly, for the same reasons discussed above for claim 1, we sustain the Examiner’s rejection of claims 8, 9, and 19 as unpatentable over Luo, Gassho, Smith, and Ziaimehr. Obviousness over Luo, Russell, Smith, and Ziaimehr Claims 13 and 18 Appellants argue claims 13 and 18 as a group. Appeal Br. 17-18. We select claim 13 as the representative claim, and claim 18 stands or falls with claim 13. 37 C.F.R. § 41.37(c)(l)(iv). Independent claim 13 recites, in relevant part, “a plurality of n banks of heating elements (HI, H2, H3, H4, . . . , Hn) each bank having X1"1 heating elements where X is a positive integer and where 0Copy with citationCopy as parenthetical citation