Ex Parte Salasoo et al

Board of Patent Appeals and Interferences

Dec 7, 2009

11431299 (B.P.A.I. Dec. 7, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LEMBIT SALASOO, ROBERT DEAN KING, AJITH
KUTTANNAIR KUMAR, DONGWOO SONG, HENRY TODD YOUNG,
TIMOTHY GERARD RICHTER, and PRAHLAD BHUGRA
____________

Appeal 2009-013248
Application 11/431,299
Technology Center 2800
____________

Decided: December 7, 2009
____________

Before JOSEPH F. RUGGIERO, MARC S. HOFF, and ELENI MANTIS
MERCADER, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-4 and 18-21, which are all of the pending claims. Claims 5-17
and 22-39 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
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We affirm-in-part.
Rather than reiterate the arguments of Appellants and the Examiner,
reference is made to the Brief (filed December 5, 2007), the Answer (mailed
March 10, 2009), and the Reply Brief (filed May 8, 2009) for the respective
details. Only those arguments actually made by Appellants have been
considered in this decision. Arguments which Appellants could have made
but chose not to make in the Briefs have not been considered and are
deemed to be waived (see 37 C.F.R. § 41.37(c)(1)(vii) (2008)).

Appellants’ Invention
Appellants’ invention relates to the equalization of a storage
parameter for a vehicle energy storage system having one or more energy
storage banks. (See generally Spec. ¶ ¶ [0007]-[0010]).

Claim 1 is illustrative of the invention and reads as follows:

1. A method for equalizing a storage parameter for a vehicle
energy storage system having two or more energy storage banks associated
therewith, the method comprising:
identifying a quiescent period of operation for the vehicle;
determining whether the value of a defined storage quantity for a first
energy storage bank differs from the value of said defined storage quantity
for a second energy storage bank by a threshold amount; and
during said quiescent period of operation, discharging one of said first
and second energy storage banks and charging the other of said first and
second energy storage banks;
wherein said one of said first and second energy storage banks
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corresponds to the bank having the value of said defined storage quantity
exceeding the value of said defined storage quantity of said other of said first
and second energy storage banks.

The Examiner’s Rejections
The Examiner relies on the following prior art references to show
unpatentability:
King US 5,659,240 Aug. 19, 1997
Hoffman, Jr. (Hoffman) US 5,869,950 Feb. 9, 1999
Ukita US 5,905,360 May 18, 1999
Kumar US 6,615,118 B2 Sep. 2, 2003
(filed Dec. 26, 2001)

Claims 1 and 2 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Ukita.
Claims 3, 18, and 19 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Hoffman.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hoffman in view of Kumar.
Claims 20 and 21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hoffman in view of King.

ISSUES
The pivotal issues before us are whether Appellants have
demonstrated that the Examiner erred in finding that:
a) Ukita discloses the identification of a quiescent period of
vehicle operation;
b) Hoffman discloses
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(i) the identification of an active period of vehicle
operation, and
(ii) the estimation of vehicle energy storage bank
temperature from received electrical property information.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence:
1. Ukita discloses (Figs. 1-3, col. 4, ll. 2-7) the equalization of the
charges on first and second batteries of a vehicle when the vehicle ignition is
turned off.
2. Ukita further discloses (col. 4, ll. 7-11) the equalization of
vehicle battery charges during temporary stoppages of battery supply of
power to the vehicle such as when the shift lever is brought into a neutral
position.
3. Also disclosed by Ukita (Fig. 15, col. 13, l. 58-col. 14, l. 24) is
the occurrence of vehicle battery charge equalization based on a
determination in decision block 620/622 of the vehicle shift lever position
being in a neutral position.
4. Hoffman discloses (Figs. 1 and 2a, col. 4, ll. 42-47) a system
for equalizing the charges on the batteries of a vehicle energy storage system
in which the state of the vehicle ignition switch is examined in decision
block 212 to indicate “whether the vehicle is operating or not.”
5. Hoffman further discloses (col. 4, ll. 42-50) the identification of
other conditions such as wheel rotation, battery current drain, and traction
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motor current flow which will provide an indication as to whether a vehicle
is in active operation.
6. Also disclosed by Hoffman (col. 12, ll. 62-65) is the
determination of the vehicle battery charge state using a module temperature
parameter.

PRINCIPLES OF LAW

1. ANTICIPATION
It is axiomatic that anticipation of a claim under § 102 can be found if
the prior art reference discloses every element of the claim. See In re King,
801 F.2d 1324, 1326 (Fed. Cir. 1986) and Lindemann Maschinenfabrik
GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir.
1984).
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis
Pharmaceutical Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005), citing Minn.
Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d
1559, 1565 (Fed. Cir. 1992). “Anticipation of a patent claim requires a
finding that the claim at issue ‘reads on’ a prior art reference.” Atlas Powder
Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed Cir. 1999) (“In other words, if
granting patent protection on the disputed claim would allow the patentee to
exclude the public from practicing the prior art, then that claim is
anticipated, regardless of whether it also covers subject matter not in the
prior art.”) (internal citations omitted).
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2. OBVIOUSNESS
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Furthermore,
[“]there must be some articulated reasoning with
some rational underpinning to support the legal
conclusion of obviousness” . . . . [H]owever, the
analysis need not seek out precise teachings
directed to the specific subject matter of the
challenged claim, for a court can take account of
the inferences and creative steps that a person of
ordinary skill in the art would employ.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

ANALYSIS
35 U.S.C. § 102(b) REJECTIONS
Claims 1 and 2
Appellants’ arguments in response to the Examiner’s anticipation
rejection, based on Ukita, of independent claim 1 assert that the Examiner
has not shown how each of the claimed features is present in the disclosure
of Ukita so as to establish a prima facie case of anticipation. Appellants’
arguments (App. Br. 6-8; Reply Br. 1-2) focus on the contention that, in
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contrast to the claimed invention, the vehicle energy storage system
disclosed by Ukita has no identification of a quiescent period of vehicle
operation in which charge is equalized between first and second batteries.
We do not find Appellants’ arguments to be persuasive of any error in
the Examiner’s stated position (Ans. 4, 9, and 10). Appellants’ arguments
focus on the example described by Ukita (FF 1), in which battery charges
are equalized when the vehicle ignition is turned off and conclude that an
“ignition off” condition is not a quiescent period of vehicle operation.
Appellants’ arguments, however, ignore the further example provided by
Ukita (FF 2) in which battery charges are equalized during temporary
stoppages of battery supply of power to the vehicle such as when the shift
lever is brought into a neutral position. We fail to see why the shifting of a
vehicle gear shift into neutral resulting in no power being supplied to the
vehicle drive wheels, such as disclosed by Ukita, would not be considered
by the ordinarily skilled artisan as corresponding to a quiescent period of
vehicle operation as claimed.
We further find to be unpersuasive Appellants’ related argument that,
to whatever extent Ukita may be considered to disclose a quiescent period of
vehicle operation, there is no identification of such a quiescent period as is
required by the language of claim 1. As disclosed by Ukita in the flow chart
illustration of Figure 15, battery charge equalization 604/614 will occur as a
result of a determination, i.e., identification, in decision block 620/622 of the
shift lever position being in a neutral position. (FF 3).
In view of the above discussion, since Appellants have not
demonstrated that the Examiner erred in finding that all of the claimed
limitations are present in the disclosure of Ukita, the Examiner’s 35 U.S.C.
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§ 102(b) rejection of independent claim 1, as well as claim 2 not separately
argued by Appellants, is sustained.

Claim 3

We also sustain the Examiner’s anticipation rejection, based on
Hoffman, of independent claim 3 which is directed to vehicle energy storage
bank equalization and includes the feature of “identifying an active period of
operation for the vehicle….” Appellants contend (App. Br. 9-10; Reply Br.
5), similar to the argument made with respect to Ukita, that Hoffman merely
assumes that a vehicle is already in an active period of operation when
vehicle battery equalization occurs, but never identifies an active period of
operation as claimed.
We do not agree with Appellants as we find ample evidence within
the disclosure of Hoffman to support the Examiner’s position (Ans. 5 and
10). For example, Hoffman discloses (FF 4) that the state of the vehicle
ignition switch is examined in decision block 212 to indicate, i.e., identify,
“whether the vehicle is operating or not.” Hoffman also discloses (FF 5) the
identification of other conditions such as wheel rotation, battery current
drain, and traction motor current flow which will provide an indication as to
whether a vehicle is in active operation.

Claims 18 and 19

We do not sustain the Examiner’s 35 U.S.C. § 102(b) rejection, based
on Hoffman, of independent claim 18 and its dependent claim 19, which are
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directed to estimating a vehicle energy storage bank temperature from
received energy storage electrical property information. In addressing the
requirements of claims 18 and 19, the Examiner directs attention to the
portion of Hoffman (FF 6) that discloses that vehicle battery charge state can
be determined by using a module temperature parameter. According to the
Examiner (Ans. 5, 10, and 11), Hoffman’s determination of battery module
temperature would require the use of a temperature sensing device which
would necessarily use electrical property information and, further, the
operation of monitoring or measuring temperature results in an accurate
“estimation” of the battery module temperature.
We agree with Appellants, however, that there is no reasonable
interpretation of the disclosure of Hoffman that would support the
Examiner’s conclusion. As argued by Appellants (App. Br. 10-12, Reply
Br. 6-7), there is no disclosure in Hoffman that would support the view that
module temperature information can be equated with electrical property
information. Further, we agree with Appellants that the most reasonable
interpretation of the disclosure of Hoffman is that battery module
temperature is used to estimate electrical property information such as the
battery charge state, and not that electrical property information is used to
estimate battery module temperature as claimed.

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35 U.S.C. § 103(a) REJECTIONS

Dependent claim 4

The Examiner’s obviousness rejection of dependent claim 4 based on
the combination of Kumar with Hoffman is sustained. We find no error in
the Examiner’s application (Ans. 6) of Kumar’s dynamic braking teachings
to the vehicle energy storage equalization system of Hoffman. Appellants’
arguments (App. Br. 12) rely on the arguments asserted previously against
independent claim 3, which arguments we have found to be unpersuasive for
all of the previously discussed reasons.

Dependent claims 20 and 21
The Examiner (Ans. 7-9 and 12) has applied the King reference to
Hoffman to address the temperature measurement limitations of dependent
claims 20 and 21. We find nothing, however, in the disclosure of King
which overcomes the innate deficiencies of Hoffman in disclosing the
storage bank temperature estimating features of independent claim 18.
Accordingly, the Examiner’s obviousness rejection of dependent claims 20
and 21 is not sustained.
CONCLUSION
Based on the findings of facts and analysis above, we conclude that,
with respect to the 35 U.S.C. § 102(b) rejections, Appellants have shown
that the Examiner erred in rejecting claims 18 and 19, but have not shown
that the Examiner erred in rejecting claims 1-3. We further conclude that
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Appellants have shown that the Examiner erred in rejecting claims 20 and
21, but have not shown that the Examiner erred in rejecting claim 4 for
obviousness under 35 U.S.C. § 103(a).

DECISION
The Examiner’s decision rejecting claims 1-3, 18, 19 under 35 U.S.C.
§ 102(b) and claims 4, 20, and 21 under 35 U.S.C. § 103(a) is affirmed-in-
part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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