Ex Parte Profitt-Brown et al

Patent Trial and Appeal Board

Feb 16, 2016

12985807 (P.T.A.B. Feb. 16, 2016)

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.
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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
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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
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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
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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.
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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.
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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
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(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
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