Ex Parte PING

Patent Trial and Appeal Board

May 4, 2018

14194656 (P.T.A.B. May. 4, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/194,656 02/28/2014
83219 7590 05/08/2018
Renaissance IP Law Group LLP (PIP)
1500 NW Bethany Blvd. Suite 200
Beaverton, OR 97006
FIRST NAMED INVENTOR
ZhanPING
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.
1535-069 7895
EXAMINER
TRISCHLER, JOHN T
ART UNIT PAPER NUMBER
2859
NOTIFICATION DATE DELIVERY MODE
05/08/2018 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):
pto@renaissanceiplaw.com
dkt@renaissanceiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte ZHAN PING
Appeal2017-007557
Application 14/194,656
Technology Center 2800
Before ROMULO H. DELMENDO, CHRISTOPHER L. OGDEN, and
SHELDON M. McGEE, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicant (hereinafter "Appellant") 1 appeals under 35 U.S.C.
§ 134(a) from the Primary Examiner's final decision to reject claims 1, 2, 4,
5, 7, 8, 10-18, 21, and 22. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 The Appellant is the Applicant, "Samsung Electronics Co., Ltd.," which,
according to the Brief, is the real party in interest (Appeal Brief filed
December 5, 2016, hereinafter "Appeal Br.," 1).
2 Appeal Br. 3-23; Reply Brief filed April 14, 2017, hereinafter "Reply Br.,"
2-12; Final Office Action entered July 5, 2016, hereinafter "Final Act.," 7-
31; Examiner's Answer entered February 16, 2017, hereinafter "Ans.," 2-
31.
Appeal2017-007557
Application 14/194,656
I. BACKGROUND
The subject matter on appeal relates to systems for harvesting and
converting waste heat energy from circuits into electrical energy and storing
the electrical energy for use, systems including multi-sensor memory
modules, and to a method for harvesting and storing energy from systems
including such multi-sensor memory modules (Specification filed February
28, 2014, hereinafter "Spec.," i-fi-f l-5; Abstract). Figure 1 is illustrative and
is reproduced as follow:
FIG. l
r:n-.::rgy St~):~flg~J
D-::·~·S·::i:;:
Figure 1 above is described as a block diagram of an energy harvest and
storage system 100 in accordance with the invention, wherein the system
100 includes a circuit (i.e., a first circuit) 110 (e.g., a memory module
(DIMM), an energy harvesting device 112 that converts energy from circuit
110 that would otherwise be radiated, emitted, or removed as waste energy,
an energy storage device 114, and a power supply 116 (id. i-fi-121-23).
According to the Specification, the power supply 116 is configured to supply
power from the energy storage device 114, supply power to at least part of
the circuit 110, or to supply power to another circuit (not shown), i.e., a
second circuit (id. i124). Furthermore, the power supply 116 may also be
configured to receive power 118 from an external power source and to
supply that power to the first circuit 110 or to the other or second circuit (id.
2
Appeal2017-007557
Application 14/194,656
i-f 25). The power supply 116 is described as having the capability to switch
between suppling power 118 using the external power source and the energy
storage device 114 (id.).
Representative claims 1, 8, and 1 7, which are the only independent
claims on appeal, are reproduced from the Appeal Brief (Claims Appendix
1-3), with key limitations emphasized, as follows:
1. A system, comprising:
a power source;
a circuit board;
a first integrated circuit disposed on the circuit board;
a second integrated circuit separate from the first
integrated circuit and disposed on the circuit board;
an energy harvesting device configured to convert energy
from the first integrated circuit to electrical energy;
an energy storage device configured to store the electrical
energy; and
a power supply configured to, while supplying power to
the first integrated circuit from the power source, switch
between supplying power from the energy storage device to the
second integrated circuit and supplying power from the power
source to the second integrated circuit.
8. A system, comprising:
a memory module including:
a circuit board;
a plurality of semiconductor memory devices
disposed on the circuit board;
a plurality of sensors disposed on the circuit board;
wherein a type of at least one of the sensors is different
from a type of another sensor of the sensors.
17. A method, comprising:
harvesting energy from a semiconductor memory device
on a circuit board of a memory module;
storing the harvested energy in an energy storage device
on the circuit board of the memory module; and
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Appeal2017-007557
Application 14/194,656
powering at least part of the memory module from only
the energy storage device;
wherein the at least part of the memory module includes
a plurality of sensors on the circuit board of the memory
module.
II. REJECTIONS ON APPEAL
On appeal, the Examiner maintains several rejections, as follows:
A. Claims 1, 2, 4, and 5 under AIA 35 U.S.C. § 102(a)(2) as
anticipated by Whitworth et al. 3 (hereinafter "Whitworth");
B. Claims 8 and 21 under AIA 35 U.S.C. § 102(a)(l) as
anticipated by QuickSpecs: HP ProBook 6450b Notebook
PC/HP ProBook 6550b Notebook PC4 (hereinafter "HP"), as
evidenced by HP ProBook 6455b Notebook PC/HP ProBook
6555b Notebook PC/HP ProBook 6450b Notebook PC/HP
ProBook 6550b Notebook PC: Maintenance and Service Guide,
3d ed. (August 2012) (hereinafter "HP2") and "Nehalem and
Core i7-How Fast Can They Go?," PC & Tech Authority
(January 28, 2009) (hereinafter "PCTA");
C. Claims 7 and 22 under AIA 35 U.S.C. § 103 as unpatentable
over Whitworth in view of Maeda; 5
D. Claims 14--18 under AIA 35 U.S.C. § 103 as unpatentable over
HP in view of Maeda, as evidenced by HP2 and PCT A;
E. Claims 10 and 11 under AIA 35 U.S.C. § 103 as unpatentable
3 US 2013/0328416 Al, published December 12, 2013.
4 DA-13616 Canada, Version 17 (February 15, 2012).
5 US 7,528,502 B2, issued May 5, 2009.
4
Appeal2017-007557
Application 14/194,656
over HP in view of Samoilova et al. 6 (hereinafter "Samoilova"),
as evidenced by HP2 and PCT A; and
F. Claims 8, 10, and 127 under AIA 35 U.S.C. § 103 as
unpatentable over Zansky et al. 8 (hereinafter "Zansky") in view
of Schuette, 9 as evidenced by Baxter. 10
(Ans. 2-31; Final Act. 7-31.)
III. DISCUSSION
Claim 1. The Examiner finds that Whitworth describes every
limitation recited in independent claim 1 (Final Act. 7-10). In support, the
Examiner relies on various drawings and disclosures found in Whitworth
(id.).
The Appellant contends, inter alia, that Whitworth does not describe a
power supply as configured in claim 1 (Appeal Br. 7-9). Specifically, the
Appellant argues (id. at 7-8):
These claim limitations define the configuration of the
power supply 116. As a result, any alleged power supply in
Whitworth must ( 1) receive the harvested energy from the first
integrated circuit so it may be supplied to the second integrated
circuit and (2) supply power from the power source to the first
6 US 2011/0208993 Al, published August 25, 2011.
7 Although the statement of the rejection lists claim 11 (Final Act. 28; Ans.
3), it appears that this listing was a typographical error because claim 12-
not claim 11-is discussed in the body of the rejection (Final Act. 31 ).
8 US 6,947,287 Bl, issued September 20, 2005.
9 US 2010/0296236 Al, published November 25, 2010.
10 Andrew Baxter, "SSD vs HDD," Storage Reviews (2012)
(https://web.archive.org/web/201212040033253/http://www.storagereview.c
om/ssd_vs_hdd).
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Appeal2017-007557
Application 14/194,656
integrated circuit. In particular, the power from the power source
is supplied to the first integrated circuit from which the harvested
energy was harvested. This loop of power, albeit from different
sources, defines the connections between the first integrated
circuit and the power supply. This loop is not present in
Whitworth.
The Appellant also argues that, "in Whitworth, there is no power supply that
'switch[ es] between supplying power from the energy storage device to the
second integrated circuit and supplying power from the power source to the
second integrated circuit' as recited in claim 1" (id. at 9).
The Examiner responds that Whitworth describes, for example, an
external power supply 122 and 133 as shown in Figures 12-13 (Ans. 4).
The Examiner states that, in charge pump 46 shown in Whitworth's Figure
4, the operation of four switches (identified as A through D) in concert with
four associated capacitors, satisfies the switching limitations recited in claim
1 (id. at 5---6). Moreover, the Examiner asserts that "it has been held that a
recitation [] to the manner in which a claimed apparatus is intended to be
employed (i.e. intended use) does not differentiate the claimed apparatus
from a prior art which satisfies the claimed structure" (id. at 7).
We agree with the Appellant that the Examiner's rejection is not well-
founded. Whitworth's Figure 12 is exemplary and is reproduced as follows:
(122
-- 126
~
.__ ___ _... "--~ 127
---------,.-----V1
128
FIG. 12
Power
Management
Circuit
11
-- 121
Appeal2017-007557
Application 14/194,656
Whitworth's Figure 12 depicts a system 120 comprising, inter alia: a
wireless energy source 121 that comprises energy harvester 12 with a
piezoelectric transducer 128 for converting acoustic energy (i.e., acoustic
waves 127 generated by an acoustic source 122) to electrical energy; a
power management circuit 14 (e.g., an AC/DC converter) for converting the
voltage that develops across piezoelectric transducer 128; and a capacitor
129 for smoothing the output voltage and acting as an energy storage device
(Whitworth ii 82).
Whitworth's Figure 4 discloses another embodiment and is
reproduced as follows:
12 ---\
_____ l ______ ---1
;l
I
42
1,-14
~---41
I
r---~-------------------------1
Charge
Pump
-'r'r'rr
I I T T
,-49
Control Circuit
Voltage
Regulator
47 -
i ______________ J ~-----------------------------J V2
FIG. 4
Whitworth's Figure 4 above illustrates a wireless energy source 41
comprising an energy harvester 12 and a power management circuit 14
configured to harvest electromagnetic energy from the environment in the
form of optical radiation (id. ii 58). According to Whitworth, light 44 strikes
the P-N junction of a photodiode 42 and either current or voltage is
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Appeal2017-007557
Application 14/194,656
generated by the photodiode 42 into a charge pump 46, which is a type of
DC-DC converter that uses capacitors as energy storage elements (id. i-f 59).
The Examiner appears to consider Whitworth' s energy harvester 12 as
corresponding to the "energy harvesting device" recited in claim 1 (Final
Act. 7). Additionally, the Examiner appears to consider either power
management circuit 14 or charge pump 46 as the "first integrated circuit"
(id. at 8). But consistent with the Appellant's arguments (Appeal Br. 8-9),
the Examiner's findings (e.g., Ans. 5---6) fall short in identifying the prior art
elements corresponding to the key elements specified in the manner as
required by claim 1. The Examiner fails to provide facts or sufficient
technical reasoning establishing that Whitworth describes an energy
harvesting device that is configured to convert energy from a first integrated
circuit-i.e., in the Examiner's view, either power management circuit 14 or
charge pump 46-to electrical energy, as required by claim 1. In
Whitworth, a power source in the form of acoustic waves 127 or light 44 is
converted to electrical energy by energy harvester 12 (Figs. 4, 12).
Relatedly, the Examiner's findings lack sufficient evidentiary basis to
establish that Whitworth describes "a power supply configured to, while
supplying power to the first integrated circuit from the power source, switch
between supplying power from the energy storage device to the second
integrated circuit and supplying power from the power source to the second
integrated circuit," as recited in claim 1.
The Examiner appears to give no weight to the "configured to .... "
limitations (Ans. 6-7). That constitutes reversible error. The Examiner
must show that the prior art elements are configured to perform the functions
recited in claim 1. In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014).
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Appeal2017-007557
Application 14/194,656
For these reasons, we cannot uphold the Examiner's rejection of claim
1 and claims dependent therefrom.
Claims 8 and 17. The Examiner's rejections of these claims appear
to be premised on the belief that the limitation "memory module"
encompasses any circuit board with memory on it-such as a laptop's
motherboard (Ans. 15) or a universal power supply carrier (id. at 29). The
Examiner's claim construction is unreasonably broad.
"The protocol of giving claims their broadest reasonable
interpretation ... does not include giving claims a legally incorrect
interpretation." In re Skvorecz, 580 F.3d 1262, 1267 (Fed. Cir. 2009).
"Rather, claims should always be read in light of the specification and
teachings in the underlying patent [application]." In re Suitco Surface, Inc.,
603 F.3d 1255, 1260 (Fed. Cir. 2010). Thus,
the PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage
as they would be understood by one of ordinary skill in the art,
taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant's specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Applying these principles, we conclude that the Examiner's claim
construction of "memory module" is unreasonably broad. The Examiner
does not direct us to any description in the current Specification indicating
that the Inventor contemplated a broad meaning for "memory module" to
include any circuit board with memory on it, such as a laptop, its
motherboard, or power supply. Rather, the Specification indicates that the
Inventor used the term "memory module" in its ordinary usage, as would be
understood by one skilled in the relevant art-i.e., a module such as a dual
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Appeal2017-007557
Application 14/194,656
in-line memory module (DIMM) (Spec. i-f 21). That usage is consistent with
the way HP and HP2 use the term "memory module" (HP 4, 9; HP2 30, 41,
45, 51 (distinguishing "memory module" component from other components
such as system board or power components)). Nothing in the record
supports a conclusion that one skilled in the relevant art would understand
the term "memory module" to include a laptop motherboard or power
supply.
For these reasons, we cannot affirm the rejection of claims 8 and 17
and their dependent claims.
IV. SUMMARY
Rejections A through Fare not sustained. Therefore, the Examiner's
final decision to reject claims 1, 2, 4, 5, 7, 8, 10-18, 21, and 22 is reversed.
REVERSED
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