Ex Parte Sartore et alDownload PDFPatent Trial and Appeal BoardAug 15, 201612170526 (P.T.A.B. Aug. 15, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/170,526 07/10/2008 Ronald H. Sartore 29586 7590 08/17/2016 FSPLLC 431 H Street Crescent City, CA 95531 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. FSP0465 1236 EXAMINER VALONE, THOMAS F ART UNIT PAPER NUMBER 2858 NOTIFICATION DATE DELIVERY MODE 08/17/2016 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): charles.a.mirho@fspllc.com PA TENTS@FSPLLC.COM jane@fspllc.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RONALD H. SATORE, YINGNAN LIU, and LANE HAUCK Appeal2016-006791 Application 12/170,526 Technology Center 2800 Before THU A. DANG, NORMAN H. BEAMER, and MATTHEW J. McNEILL, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON APPEAL I. STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. A. INVENTION According to Appellants, the invention relates to "devices and circuits that employ stored energy in a capacitor to perform operations" (Spec. 2). Appeal2016-006791 Application 12/170,526 B. REPRESENTATIVE CLAIM Claim 1 is exemplary: 1. An apparatus comprising: a controller; and at least one of non-transitory machine memory and circuits comprising logic accessible to the controller to determine a voltage drop of a capacitor during use of the capacitor to power a memory backup operation, and to adjust an enablement voltage level of the capacitor according to the voltage drop, the enablement voltage level being a voltage level the capacitor must charge to before the apparatus enables the capacitor to power the memory backup operation. C. PRIOR ART REFERENCES AND REJECTIONS The prior art relied upon by the Examiner in rejecting the claims on appeal is: Claims 1---6 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the teachings of Thrap (US 7,345,454 B2; iss. Mar. 18, 2008) and Moshayedi (US 7,107,480 Bl; iss. Sep. 12, 2006). Claims 7-11 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the teachings of Thrap. Claims 12-16 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the teachings of Thrap and Pecone (US 2007 /0033433; pub. Feb. 8, 2007). Claims 1-16 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. 1 1 The Examiner has withdrawn the rejection of claims 1, 7, and 12 under 35 USC 112, 1st paragraph. 2 Appeal2016-006791 Application 12/170,526 IL ISSUES The principal issues before us are whether the Examiner erred in finding that Thrap in view of Moshayedi teaches or would have suggested a logic "to adjust an enablement voltage level of the capacitor according to the voltage drop," the enablement voltage level being a voltage level "the capacitor must charge to before the apparatus enables the capacitor to power" the memory backup operation (claim 1, emphases added). III. FINDINGS OF FACT The following Findings of Fact (FF) are shown by a preponderance of the evidence. Th rap 1. Thrap discloses, wherein Figure 2 is reproduced below: lnptJt I ;--- 100 -------------------! -------------------------- ------- ---------------- "---- ------- -----------, ! ic no I t 'HI _______________________ )) i Cl1ar(l'>t ; . 1 ' Ca9a<;h0<(~) -------------,------~- ~· ~~ I .,,.~-' ( 130 Figure 2 Figure 2 shows an energy storage system 100 that includes a voltage regulator module 130 adapted to convert the DC voltage from the power 3 Appeal2016-006791 Application 12/170,526 module 120 to an output voltage desired by the load (col. 5, 11. 55-59). The power module 120 comprises a number ofultracapacitors (col. 5, 11. 39--40). 2. As the bank ofultracapacitors in the power module 120 discharges, a drop in the voltage from the power module is experienced. As the voltage drops below a predetermined threshold, the voltage regulator module 130 may boost the voltage to assure the output voltage to the load is maintained within a desired range (col. 5, 11. 55---64). 3. The desired output voltage is in a desired range indicated by the maximum ( 100%) voltage level and a minimum rated voltage level, wherein at the minimum rated voltage, much of the energy stored in the ultracapacitors is rendered unusable (col. 2, 11. 3-13). IV. ANALYSIS 35 U.S.C. § 112, second paragraph Regarding claims 1, 7, and 12 the Examiner finds the claim terms "adjust" and "dynamically adjusting an enablement voltage level" are indefinite because it is unclear "how it can be unambiguously accomplished automatically" (Ans. 2). The Examiner also finds, "it is not clear what order the process or function is performed 'during use of the capacitor'" because "the enablement voltage level has to be set 'before' the capacitor powers the backup operation, as claimed" (Id). The Examiner notes that "[f]or examination purposes, the claimed adjustment of the enablement voltage level has been given the broadest reasonable interpretation" (Ans. 3). However, 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) 4 Appeal2016-006791 Application 12/170,526 (citations omitted). That is, 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 Appellants that "[t]he Examiner has not explained how these terms or their use in the Specification would confuse the meaning of the claim" (App. Br. 8). That is, we agree with Appellants that one of ordinary skilled in the art would reasonably understand the claim terms "adjust" and "dynamically adjusting an enablement voltage level." Orthokinetics, 806 F.2d at 1576. Therefore, we reverse the Examiner's rejection of claims 1-16 under 35 U.S.C. § 112, second paragraph. 35 U.S.C. § 103(a) Although Appellants concede "Thrap regulates a voltage on the load [from a power module comprising a number of capacitors]," Appellants contend "[t]here is no adjustment of the enablement voltage level of the capacitor performed or suggested in Thrap" (App. Br. 8). According to Appellants, "[ s Jetting the enablement level of the capacitor is not the same nor comparable to regulating the load voltage" (App. Br. 9, emphasis omitted). That is, "the enablement voltage is a minimum voltage that the capacitor must be charged to before the capacitor will be enabled as a power source for the system" (id.). We have considered all of Appellants' arguments and evidence presented. However, we disagree with Appellants' contentions regarding the Examiner's rejections of the claims. We agree with the Examiner's findings, and are unpersuaded of error with the Examiner's conclusion that the 5 Appeal2016-006791 Application 12/170,526 claimed subject matter would have been obvious over the combined teachings. As an initial matter of claim construction, we give the claim its broadest reasonable interpretation consistent with the Specification. See Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005). However, "limitations are not to be read into the claims from the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted). Although Appellants contend Thrap' s adjusting of load voltage from a power module comprising a plurality of capacitors "is not the same nor comparable" to adjusting the enablement of a capacitor (App. Br. 9), nothing in claim 1 precludes an adjustment of the voltage level of a power module and capacitors comprised therein, according to a voltage drop, so that the capacitors will be enabled. That is, claim I merely requires that the logic is provided to "adjust an enablement voltage level of the capacitor according to the voltage drop," but does not preclude the capacitor from being comprised in a power module. As Appellants admit, claim 1 merely requires that "the enablement voltage is a minimum voltage that the capacitor must be charged to before the capacitor will be enabled as a power source for the system" (App. Br. 9, emphasis omitted). Thus, giving the term its broadest reasonable interpretation, we conclude claim 1 merely requires that the voltage level on any capacitor is adjusted to a voltage level that the capacitor must charge to, to be enabled, in accordance to a voltage drop. We agree with the Examiner's finding that Thrap "teaches adjusting (boost the output voltage ... ) an 'enablement' voltage level. .. according to the voltage drop across the load ... " to "compare with a 'predetermined threshold' ... , within a 'predetermined range' of enablement ... to 'vary 6 Appeal2016-006791 Application 12/170,526 the voltage to which the capacitor is charged' during discharge" (Ans. 4, emphasis omitted). In particular, Thrap discloses and suggests a power module that comprises a number of ultracapacitors (FF 1) in which a drop in the voltage therefrom is experienced (FF 2). When the voltage is determined to drop below a predetermined threshold, voltage regulator module boosts the voltage to assure the output voltage therefrom is maintained within a desired range (id.). Thus, we find no error with the Examiner's reliance on Thrap for disclosing or at least suggesting a logic to adjust the voltage level of the power module/capacitors, according to a voltage drop, as required by claim 1. In Thrap, the desired output voltage is maintained in a desired range, wherein at the minimum rated voltage, much of the energy stored in the ultracapacitors is rendered unusable (FF 3). In particular, Thrap discloses and suggests maintaining the output voltage (the voltage level from the power module and the capacitors therein) within a desired range, wherein the capacitors are rendered unusable (not enabling) below the minimum rated voltage (id.). That is, in Thrap, the minimum voltage is the minimum level that the power module/ capacitors must be charged to before the capacitor will be enabled (id.). Thus, in view of our broadest reasonable interpretation, we find no error with the Examiner's reliance on Thrap for disclosing or at least suggesting an "enablement" voltage level that "the capacitor must charge to before the apparatus enables the capacitor" for powering (claim 1 ). Furthermore, we agree with the Examiner's finding "Moshayedi ... from the same field of endeavor teaches using the capacitor [for] back up power supply during a memory backup operation" (Ans. 5). Thus, we find 7 Appeal2016-006791 Application 12/170,526 no error with the Examiner's reliance on the combination of Thrap and Moshayedi for teaching or suggesting powering the "memory backup operation" using capacitor( s) as required in claim 1. We also note Appellants' contentions are directed to what Thrap does not disclose (or suggest) individually (App. Br. 9-10). However, the test for obviousness is what the combination of Thrap and Moshayedi teaches or would have suggested to one of ordinary skill in the art. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Supreme Court holds that the conclusion of obviousness can be based on the background knowledge possessed by a person having ordinary skill in the art. KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). The skilled artisan is "[a] person of ordinary creativity, not an automaton." Id. at 421. We agree with the Examiner that Thrap (in view of Moshayedi) teaches or would at least have suggested the contested limitations. That is, we agree with the Examiner that Appellants' invention is simply a modification of familiar prior art teachings (as taught or suggested by the cited references) that would have realized a predictable result. See id. Based on the record before us, Appellants have not shown the Examiner erred in rejecting claim 1 and claims 2---6 depending therefrom and falling therewith (App. Br. 9) over Thrap and Moshayedi. As for claims 7-11, Appellants contend Thrap does not "measure the discharge drop of the capacitor during its use to power a backup" and then "apply the discharge drop to adjust the enablement voltage level of the capacitor" (App. Br. 10). In particular, Appellants contend "the discharge drop on the cap is never measured, stored, propagated, or applied to adjust the enablement voltage level of the power capacitor" (id.). However, as 8 Appeal2016-006791 Application 12/170,526 discussed above, we find no error with the Examiner's reliance on Thrap for disclosing and suggesting determining the voltage drop on the power module and the capacitors therein to adjust the enablement/usage voltage level of thereof (FF 1-3). Thus, based on the record before us, Appellants have not shown the Examiner erred in rejecting claims 7-11 over Thrap. As for claims 12-16, Appellants contend the combination of Thrap and Pecone "would run into practical problems with the load voltage regulation of Thrap," which would "have to somehow compensate for the changed starting value of the power source voltage" (App. Br. 11 ). According to Appellants, it "would be counterproductive to adjust the enablement value of the capacitor, only to have the load regulator working to counteract the adjustment" (id.). However, Appellants appear to view the combination from a different perspective than that of the Examiner. As the Examiner points out, "Pecone is simply applied ... in order to show a volatile to nonvolatile memory backup where a capacitor is configured to provide backup operations from the volatile to the nonvolatile memory" (Ans. 13). We find no error with the Examiner's conclusion that it would have been obvious "to have used Thrap's apparatus with a volatile and nonvolatile memory as suggested by Pecone" where "the capacitor is configured to provide backup operations from the volatile to the nonvolatile memory" (Ans. 8-9). Based on the record before us, Appellants have not shown the Examiner erred in rejecting claims 12-16 over Thrap and Pecone. 9 Appeal2016-006791 Application 12/170,526 V. CONCLUSION AND DECISION We affirm the Examiner's rejections of claims 1-16 under 35 U.S.C. § 103(a), but reverse the Examiner's rejection of claims 1-16 under 35 U.S.C. § 112, 2nd paragraph. 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 10 Copy with citationCopy as parenthetical citation