Ex Parte Profitt-Brown et alDownload PDFPatent Trial and Appeal BoardFeb 16, 201612985807 (P.T.A.B. Feb. 16, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/985,807 01/06/2011 28395 7590 02/18/2016 BROOKS KUSHMAN P,CJFG1L 1000 TOWN CENTER 22NDFLOOR SOUTHFIELD, MI 48075-1238 FIRST NAMED INVENTOR Elizabeth Profitt-Brown 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. 83178516 5075 EXAMINER SHECHTMAN, SEAN P ART UNIT PAPER NUMBER 2121 NOTIFICATION DATE DELIVERY MODE 02/18/2016 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@brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ELIZABETH PROFITT-BROWN, KELLY LEE ZECHEL, JOSEPH PAUL RORK, BRIAN PETERSEN, EDWARD ANDREW PLEET, and CHRISTOPHER ADAM OCHOCINSKI Appeal2014-003550 Application 12/985,807 Technology Center 2100 Before KRISTEN L. DROESCH, LINZY T. McCARTNEY, and MATTHEW J. McNEILL, Administrative Patent Judges. McCARTNEY, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner's rejections of claims 1, 6-12, 14-19, 21, and 22. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal2014-003550 Application 12/985,807 STATEMENT OF THE CASE Appellants' claimed invention "relates to selectively charging a vehicle." Spec. 1:7-8. Claims 1, 12, and 18 are independent. Claim 1 illustrates the claimed subject matter: 1. A computer-implemented method for selectively charging a vehicle, the method comprising: receiving at one or more vehicle-based computers periods for charging a vehicle, related to at least two different charging locations; storing the charging periods in memory; receiving one or more pricing rates for charging the vehicle during the charging-periods; based on the one or more pricing rates and the charging- periods, determining on the one or more computers one or more low cost charging-periods for each charging location, wherein charging-cost is below an average cost for all identified charging-periods at that location; and initiating charging of the vehicle during at least part of the one or more low cost charging-periods when the vehicle is at a location to which the low cost charging-period corresponds, based on vehicle GPS coordinates. REJECTIONS 1 Claims 1, 6-12, 14-19, 21, and 22 stand rejected under 35 U.S.C. § 112 ,-i 1 as failing to comply with the written description requirement. 1 The Examiner withdrew all rejections of claims 1, 6-12, 14-19, 21, and 22 under 35 U.S.C. § 112 for failing to comply with the enablement requirement. Ans. 31. The Examiner also withdrew the rejection of these claims under 35 U.S.C. § 112 for failing to comply with the written description requirement for the limitation "based on the one or more pricing rates and the charging-periods, determining on the one or more computers one or more low cost charging-periods for each charging location." Id. 2 Appeal2014-003550 Application 12/985,807 Claims 1, 6-12, 14-19, 21, and 22 stand rejected under 35 U.S.C. § 112 iJ 2 as indefinite for failing to particularly point and distinctly claim the subject matter the applicant regards as his invention. Claims 1, 6-12, 14-19, 21 and 22 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Fincham (US 2010/0017249 Al; Jan. 21, 2010) and Pryor (US 7,402,978 B2; July 22, 2008). Claims 1, 6-12, 14-19, 21 and 22 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Kelty (US 2009/0021218 Al; Jan. 22, 2009), Fincham, and Pryor. ISSUES Do the "initiating charging of the vehicle" and "wherein charging cost is below an average cost" limitations recited in claims 1, 12, and 18 lack adequate written description support? Does the term "low" in claims 1, 6-12, 14-19, 21, and 22 render these claims indefinite? Does the Examiner's combination of Fincham and Pryor teach or suggest "receiving at one or more vehicle-based computers periods for charging a vehicle, related to at least two different charging locations" as recited in claim 1? ANALYSIS Written Description "Initiating Charging of the Vehicle" Claim 1 recites "initiating charging of the vehicle during at least part of the one or more low cost charging-periods when the vehicle is at a location to which the low cost charging-period corresponds, based on 3 Appeal2014-003550 Application 12/985,807 vehicle GPS coordinates." Independent claims 12 and 18 include similar limitations. The Examiner found Appellants' written description failed to provide adequate support for these limitations because, among other things, "the original disclosure is completely silent in teaching anything even close to the recited" limitation, "much less anything being based on vehicle GPS coordinates or initiating charging when the vehicle is at a location to which the low cost charging-period corresponds." Final Act. 2--4; see also Ans. 32. Appellants contend their specification provides adequate written description support for the "initiating charging of the" limitation. Br. 7-8. Specifically, Appellants argue that their specification does not have to literally describe the claimed matter subject to satisfy the written description requirement. Id. at 8. Rather, the specification must "clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed." Id. (quoting MPEP § 2163.02). Appellants contend that standard is satisfied here because their specification discloses "that both charging locations and vehicle locations are identifiable by GPS coordinates" and "[ o ]ne of ordinary skill would understand that, if charging location coordinates and vehicle coordinates were both known, then one could use a correspondence of those coordinates in order to determine that a vehicle was actually present at a charging location." Id. We find Appellants' arguments unpersuasive. To satisfy the written description requirement, "the disclosure of the application relied upon [must] reasonably convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date." Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). As noted by Appellants, their specification need not recite the 4 Appeal2014-003550 Application 12/985,807 claimed invention in haec verba; however, the specification does not satisfy the written description if it merely renders the invention obvious. Id. at 1352. Here, the portions of the specification relied upon by Appellants do not reasonably convey Appellants possessed the step of "initiating charging of the vehicle ... when the vehicle is at a location to which the low cost charging-period corresponds, based on vehicle GPS coordinates." The portions of the specification cited by Appellants simply disclose that a "vehicle may be charged based on selective criteria input by a user," a vehicle may include "a vehicle navigation device having ... an onboard GPS device, or remote navigation system ... having connectivity to network," and "the value charging profiles may be associated with one or more locations where the vehicle is charged." Spec. 13-14, 15 (reference numbers omitted). Even if Appellants were correct that, based on these disclosures, one of skill in the art would understand that the GPS coordinates of a vehicle and a charging location could be used to determine if the vehicle is present at the charging location, these disclosures do not reasonably convey Appellants possessed the claimed subject matter. At best, the disclosures arguably indicate the claimed subject matter may have been obvious to one of skill in the art at the filing of Appellants' application. But, as noted above, "a description that merely renders the invention obvious does not satisfy the [written description] requirement." Ariad, 598 F.3d at 1352. For the above reasons, we sustain the Examiner's rejection of claims 1, 6-12, 14-19, 21, and 22 under 35 U.S.C. § 112 iJ 1 as failing to comply 5 Appeal2014-003550 Application 12/985,807 with the written description requirement for the limitation "initiating charging of the vehicle." "Wherein Charging Cost is Below an Average Cost" Claim 1 recites "wherein charging-cost is below an average cost for all identified charging-periods at that location." Independent claims 12 and 18 recite similar limitations. The Examiner found Appellants' written description is silent regarding these limitations and therefore fails to provide adequate support for them. See Final Act. 7-9. Appellants argue their specification discloses providing a user "with the lowest possible cost for vehicle charging" and that "peak charging periods are at higher rates than off-peak charging period." Br. 9. Therefore, according to Appellants, their specification provides written description support for the disputed limitations because "it is necessarily true that a lowest charging cost is 'below an average cost for all identified charging periods at [a] location."' Id. We find Appellants' arguments unpersuasive. The limitations at issue do not recite "wherein the lowest charging cost is below an average cost" as suggested by Appellants; the relevant parts of these limitations simply recite "wherein the charging cost is below an average cost." Claims App'x 1--4. In any event, as explained by the Examiner, the term "charging cost" encompasses both the lowest and highest charging costs, neither of which is necessarily below an average cost, as both could be equal to the average cost in certain circumstances. See Ans. 33. Therefore, it is not "necessarily true that a lowest charging cost is 'below an average cost for all identified charging periods at [a] location"' as argued by Appellants. Br. 9. 6 Appeal2014-003550 Application 12/985,807 Accordingly, we sustain the Examiner's rejection of claims 1, 6-12, 14-19, 21, and 22 under 35 U.S.C. § 112 ii 1 as failing to comply with the written description requirement for the limitation "wherein charging-cost is below an average cost." Indefiniteness Claims 1, 6-12, 14-19, 21, and 22 each recite the term "low." The Examiner found the term "low" rendered these claims indefinite because the term "is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention." Final Act. 15. Appellants contend their specification makes repeated reference to low and high cost utility rates and therefore "it is plainly obvious that 'low' refers to a cost that is less than the high cost of utility rates over the range." Br. 10 (citing Spec. 16: 1-9). According to Appellants, "when dealing in costs over a range, one of ordinary skill understands that 'low' costs can refer to any cost lower than the highest cost." Id. We find Appellants' arguments unpersuasive. The parts of the specification relied upon by Appellants provide no standard for determining what "low" is. Although Appellants contend "low" is anything less than "high," the portions of the specification cited by Appellants provide no guidance as to what "high" means, much less define "low" as anything less than "high." We therefore sustain the Examiner's rejection of claims 1, 6- 12, 14-19, 21, and 22 under 35 U.S.C. § 112 ii 2 as indefinite. 7 Appeal2014-003550 Application 12/985,807 Obviousness Claim 1 recites "receiving at one or more vehicle-based computers periods for charging a vehicle related to at least two different charging locations." Independent claims 12 and 18 recite similar limitations. The Examiner found a combination of Fincham and Pryor teaches or suggests the limitations recited in these claims. See Final Act. 15-23. In particular, the Examiner found Fincham does not teach "periods for charging a vehicle, related to at least two different charging locations" but Pryor does. Id. at 21-23 (citing Prior 3:23-7:42). The Examiner also found a combination of Kelty, Fincham, and Pryor suggests the subject matter recited in claim 1, 12, and 18. Id. at 23-38. Specifically, the Examiner explicitly found the combination of Kelty and Fincham "fails to teach periods for charging a vehicle, related to at least two different charging locations" but Pryor does. Id. at 36-37. With respect to the Examiner's combination of Fincham and Pryor, Appellants assert the Examiner relied on Pryor' s "charge initialization time" ("CIT") for the claimed "periods for charging a vehicle" and argue that a charge initialization time does not teach such a period. Br. 10. Appellants contend Fincham fails to remedy this deficiency. Id. at 11. Concerning the Examiner's combination of Kelty, Fincham, and Pryor, Appellants assert the Examiner relied on Kelty for the recited "periods" and contend Kelty' s periods are not related to at least two different locations. Id. at 11. We find Appellants' arguments unpersuasive. Regarding the Examiner's combination of Fincham and Pryor, as found by the Examiner, the cited portions of Pryor disclose that CITs may designate the beginning of certain periods such as a "low stress period for the power grid." Ans. 34 8 Appeal2014-003550 Application 12/985,807 (citing Pryor 4:6-24, 5:31-54, 5:55-6:7). Moreover, the cited portions of Pryor disclose using CITs in conjunction with a "preferred charge termination time" ("PCTT"). See Pryor 4:47-5: 11. The period between a CIT and a PCTT corresponds to the claimed "period." As for the Examiner's combination of Kelty, Fincham, and Pryor, contrary to Appellants' arguments, the Examiner explicitly found the combination of Kelty and Fincham "fails to teach periods for charging a vehicle, related to at least two different charging locations" but Pryor teaches this limitation. Final Act. 36-37. Accordingly, Appellants' argument that Kelty fails to teach or suggest this limitation has not persuaded us that the Examiner erred. We therefore sustain the Examiner's rejections of claims 1, 6-12, 14-19, 21, and 22 under 35 U.S.C. § 103(a) over combinations of Fincham and Pryor and Kelty, Fincham, and Pryor. DECISION For the above reasons, we affirm the Examiner's rejections claims 1, 6-12, 14-19, 21, and 22 under 35 U.S.C. §§ 103, 112. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv). AFFIRMED msc 9 Copy with citationCopy as parenthetical citation