Ex Parte Randall

Patent Trial and Appeal Board

May 11, 2018

13460579 (P.T.A.B. May. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/460,579 04/30/2012
28078 7590 05/11/2018
MAGINOT, MOORE & BECK, LLP
One Indiana Square, Suite 2200
INDIANAPOLIS, IN 46204
FIRST NAMED INVENTOR
Bruce E. Randall
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.
1505-0253 5484
EXAMINER
WONG, ALBERT KANG
ART UNIT PAPER NUMBER
3649
MAILDATE DELIVERY MODE
05/11/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRUCE E. RANDALL
Appeal2016-006638
Application 13/460,579
Technology Center 3600
Before MAHSHID D. SAADAT, ROBERT E. NAPPI,
and ERIC B. CHEN, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 appeals under 35 U.S.C. § 134(a) from the final rejection
of claims 1-14 and 19-21, which are all the claims pending in this
application. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 According to Appellant, the real party in interest is Landis+Gyr, Inc. App.
Br. 2.
2 Claims 15-18 have been canceled.
Appeal2016-006638
Application 13/460,579
STATEMENT OF THE CASE
Introduction
Appellant's invention relates to arrangements for providing power to
circuits within a utility meter. See Spec. 1. Exemplary independent claim 1
and dependent claim 19 read as follows:
1. An arrangement for providing power in an RF
transmitter, the RF transmitter operably connected to receive
commodity consumption information from a measurement
circuit of a utility meter, the arrangement comprising:
a first power supply configured to convert input AC
voltage to a DC bias voltage, and further configured to provide
the bias voltage to metering circuitry within the utility meter,
the metering circuitry including an analog to digital converter
and at least one processor; and
at least one capacitor operably coupled to provide power
to the RF transmitter at least when power requirements of the
RF transmitter exceed an amount of power available from the
first power supply.
19. The arrangement of claim 2, further comprising a
current regulating circuit coupled between the first power
supply and the at least one capacitor, the current regulating
circuit configured to regulate the charging current based on a
feedback signal.
The Examiner's Rejections
Claims 19-21 stand rejected under 35 U.S.C. § 112 (pre-AIA), second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the Appellant regards as the
invention. See Final Act. 3--4.
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Application 13/460,579
Claims 1-3, 6-8, 11, 13, 14, and 19-21 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Cumeralto et al. (US 2002/0109607 Al;
pub. Aug. 15, 2002) ("Cumeralto"). See Final Act. 4--7.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cumeralto and Provost et al. (US 5,924,051; iss. July 13,
1999) ("Provost"). See Final Act. 7.
Claims 4, 5, 9, and 10 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cumeralto, Provost, and Croushore (US 6,278,357
Bl; iss. Aug. 21, 2001). See Final Act. 7-8. 3
ANALYSIS
Rejection under 35 USC§ 112, Second Paragraph
The Examiner rejects claims 19-21 under 35 U.S.C. § 112 (pre-AIA),
second paragraph, as "being indefinite. Final Act. 2-3. In particular, as to
claims 19-21, the Examiner finds the recited term "current regulating
circuit" is not a conventional circuit because "[t]he circuit disclosed requires
a particular voltage regulator and other components and it would appear that
a current regulating circuit would not require those elements--especially-
the elaborate feedback." Final Act. 4. Similarly, the Examiner finds claims
19-21 fail to describe adequately the metes and bounds of the invention that
applicant is attempting to claim because the term "based on a feedback
signal" is indefinite. Final Act. 3. The Examiner explains "it is not clear
what is meant by based on a feedback signal" because "[t]here are many
3 The Examiner has withdrawn a rejection of claims under 35 U.S.C. § 112
(pre-AIA), First Paragraph. Ans. 7.
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Application 13/460,579
possibilities of feedback and the claim does not specify how such feedback
would work in combination with the regulating circuit." Final Act. 4.
We disagree with the Examiner's conclusion that the claims are
unclear. The test for definiteness under 35 U.S.C. § 112 is whether "those
skilled in the art would understand what is claimed." Orthokinetics, Inc., v.
Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted). In particular, breadth is not indefiniteness provided the skilled
artisan is reasonably apprised of the meaning of the claim. Metabolite Labs.,
Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1366 (Fed. Cir. 2004).
We agree with Appellant that one of ordinary skill in the art would
understand the term "current regulating circuit," as recited in claims 19-21,
to be a circuit for regulating current, which does not require a voltage
regulator. App. Br. 11; see also Reply Br. 2-3. Similarly, as argued by
Appellant (id.), claim 21 recites specific circuit components, such as
"current regulating circuit" and "voltage regulator," which are arranged in a
particular relation with respect to each other and a capacitor. Finally, we
also agree with Appellant that the metes and bound of the "feedback signal"
in claim 19 is understood by the skilled artisan to require "a current
regulating circuit regulates charging current based on, dependent on, or
responsive to a feedback signal." App. Br. 12-13; see also Reply Br. 3--4.
Therefore, we are persuaded the Examiner erred in rejecting claims 19-21
under 35 U.S.C. § 112, second paragraph.
Rejections under 35 USC§ 103
We have reviewed the Examiner's rejections in light of Appellant's
arguments (App. Br. 13-25; Reply Br. 4--9) that the Examiner erred. We
disagree with Appellant's contentions. We adopt as our own (1) the findings
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Application 13/460,579
and reasons set forth by the Examiner in the action from which this appeal is
taken (Final Act. 3-7) and (2) the reasons set forth by the Examiner in the
Examiner's Answer (Ans. 8-15) in response to Appellant's Appeal Brief.
We concur with the conclusions reached by the Examiner. We highlight and
address specific findings and arguments for emphasis as follows.
Claim 1
In rejecting claim 1, the Examiner finds Cumeralto teaches all the
claimed features, but does not clearly disclose "a power supply to convert
input AC voltage to DC bias voltage" and "at least one capacitor instead of a
bank of capacitors." Final Act. 5. The Examiner finds Cumeralto's Figure 2
shows the recited "at least one capacitor," which is also described in
paragraphs 16 and 62 and further takes Official Notice that "AC to DC
power converters are conventional means to supply power to digital circuits
since such circuits cannot operate directly from an AC voltage." Id.
Appellant contends, although AC to DC power converters are known,
Cumeralto does not suggest using such converters as "a power supply in
combination with capacitors that provide power to a transmitter when an AC
to DC converter does not provide enough power." App. Br. 15. In
particular, Appellant argues Cumeralto is concerned with battery-powered
PET modules, which would not include any AC to DC converter, or one or
more capacitors for providing power when the converter cannot provide
sufficient power. Id. Additionally, Appellant asserts modifying the gas and
water PET modules would not have been obvious because those modules,
unlike electric PET modules, do not have an AC power source and only
require battery power. App. Br. 16. With respect to including a capacitor
with the AC power supply, Appellant argues Cumeralto discloses using a
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Application 13/460,579
capacitor to limit battery drain, but does not discuss an AC-powered device
would need a capacitor for providing supplemental power. App. Br. 17.
Finally, Appellant argues the Examiner's rationale for modifying Cumeralto
is not properly supported because a battery-operated PET would not need to
replace the DC power supply "to eliminate the need to charge the battery."
App. Br. 18.
In response, the Examiner explains the skilled artisan may use the
PET 22 shown in Figure 2 of Cumeralto in an electric meter without a
battery, or if an AC to DC converter is added, with a battery. Ans. 8-9. We
agree with these findings. Although Cumeralto suggests using a battery for
water and gas meters (see Cumeralto i-f 40), using a battery-powered PET for
electric meters is not precluded. Similarly, the Examiner explains that
adding a capacitor to the battery would make up for a smaller battery and
would increase the efficiency of the AC/DC converter, which provides DC
power when AC power is available. Ans. 9-10.
With respect to the motivation for modifying the reference, we also
agree with the Examiner's stated rationale that any of the three PET modules
disclosed in Cumeralto could provide the five volt DC power to the module
during the transmission. As further explained by the Examiner (Ans. 13),
one of ordinary skill in the art would have used an AC/DC converter in PET
module 223 to convert the AC power available in an electric meter.
Contrary to Appellant's argument that Cumeralto does not discuss reducing
the size of an AC-to-DC converter (Reply Br. 6), Cumeralto discloses using
a capacitor or charge pump "allowing the PET module 22 to have a high
power transmitter while limiting battery drain." See Ans. 9; Cumeralto i-f 62.
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Claims 7 and 19-21
With respect to claim 7, Appellant contends the Examiner erred in
modifying Cumeralto to include a resistor across the capacitor because the
Examiner has not identified "what constitutes the 'charging circuit' in
Cumeralto," "what effect changing 'the impedance presented to the charging
circuit' means, or accomplishes," or "whether addition of a resistor across
the capacitor of Cumeralto would effectively shorten battery life, and thus
defeat stated goals of Cumeralto." App. Br. 19--20. Appellant further
argues the Examiner has not given any reasons for the proposed
modification to include separate resistors across the capacitors. App. Br. 20.
Regarding claims 19--21, Appellant present similar arguments that the
Examiner has not identified any teachings or provided sufficient rationale
for modifying Cumeralto for including the specific recited features. App.
Br. 20-23. The Examiner responds by asserting that the proposed
modification, similar to taking of Official Notice, was not properly
challenged by Appellant. Ans. 13-15.
In rejecting claims under 35 U.S.C. Section 103, the Examiner bears
the initial burden of presenting a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed.Cir. 1992). Only ifthat burden is met,
does the burden of coming forward with evidence or argument shift to the
applicant. Id. If the Examiner fails to establish a prima facie case, the
rejection is improper and will be overturned. In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988). We are persuaded by Appellant's contention of
Examiner error in rejecting claims 7 and 19-21 because the Examiner has
not explained how one of ordinary skill in the art would have added a
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resistor across each of the plurality of capacitors in the charge pump of
Cumeralto. See Final Act. 6-7, Ans. 13-15.
Claim 11
Appellant contends "the PET module 22 of Fig. 2 of Cumeralto does
not perform the step of 'obtaining power from a utility power line"' and the
Examiner "does not identify any modifications that can be made to the PET
module 22 of Fig. 2 of Cumeralto that would arrive at such an invention."
App. Br. 23-24. In response, the Examiner explains Cumeralto's PET
module 223 is used as a power meter, which uses the power from the power
line, as recited in claim 11. Ans. 15.
We agree with the Examiner's findings and the articulated reasoning
that modifying Cumeralto would have suggested the claimed subject matter
to one of ordinary skill in the art. Moreover, as the Examiner correctly
points out, one of ordinary skill in the art would have modified Cumeralto
by adding an AC to DC convertor to provide power to the meter circuitry
when an AC power supply is used. See id.
Remaining Claims
Appellant argues the patentability of the remaining claims based on
the same reasoning presented for claim 1, on contentions that are similar to
those presented for claim 1, and based on their dependency from an
independent base claim. See App. Br. 24--25. The Examiner has provided a
detailed response, supported by sufficient evidence based on the teachings of
the cited prior art, to each of the contentions raised by Appellant. See Final
Act. 5-8. We agree with the Examiner's findings and stated rationale and
adopt them as our own.
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Application 13/460,579
CONCLUSIONS
On the record before us, because Appellant's contentions are
persuasive of Examiner error with respect to indefiniteness rejection of
claims 19--21 and obviousness rejection of claims 7 and 19-21, we do not
sustain their rejections under 35 U.S.C. §§ 103 and 112. However, we are
not persuaded that the Examiner erred in rejecting claims 1---6 and 8-14 as
obvious and therefore sustain their 35 U.S.C. § 103 rejections.
DECISION
The Examiner's decision rejecting claims 1-6 and 8-14 is affirmed,
but reversed with respect to claims 7 and 19--21.
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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