Ex Parte Schulze et al

Patent Trial and Appeal Board

Sep 23, 2016

12737385 (P.T.A.B. Sep. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121737,385 03/17/2011
24972 7590 09/27/2016
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
FIRST NAMED INVENTOR
Christian Schulze
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.
1019116768 6933
EXAMINER
SIV ANESAN, SIV ALINGAM
ART UNIT PAPER NUMBER
2126
NOTIFICATION DATE DELIVERY MODE
09/27/2016 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):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTIAN SCHULZE and MAR TIN HERZOG1
Appeal2015-004530
Application 12/737,385
Technology Center 2100
Before KRISTEN L. DROESCH, TERRENCE W. MCMILLIN, and
SCOTT E. BAIN, Administrative Patent Judges.
DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek review under 35 U.S.C. § 134(a) from the Final
Rejection of claims 11-20, all of the pending claims in the application. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
BACKGROUND
The disclosed invention relates to a method and control device for the
supply of energy to an electric device. See Spec. 1--4, Abstract.
1 Appellants indicate the real party-in-interest is ROBERT BOSCH GmbH.
App. Br. 2.
Appeal2015-004530
Application 12/737,385
Representative claims 11 and 17, reproduced from the Claims
Appendix of the Appeal Brief, read as follows (disputed limitations in
italics):
11. A control device for an electric device, comprising:
an interface to an administrative unit;
an interface to a switch for activating and deactivating the
electric device, the control device activating or deactivating the
electric device via the switch as a function of information about
an energy supply transmitted by the administrative unit, wherein
the control device has a connection to an energy supply system;
and
an interface to an operating unit for selecting a provided
energy, wherein the electric device is activated via the switch if
there is sufficient energy from a solar energy generating device.
17. A method for controlling an electric device connected to
an energy supply system, comprising:
transmitting information regarding at least one of an
energy requirement and an energy supply between an
administrative unit of the energy supply system and the electric
device connected to the energy supply system; and
one of activating or deactivating the electric device by the
administrative unit as a function of at least one of the energy
available via the energy supply system and the energy
requirement of the electric device, wherein the electric device is
activated if there is sufficient energy from a solar energy
generating device.
REJECTION
Claims 11-20 stand rejected under 35 U.S.C. § 102(b) as anticipated
by Ehlers et al. (US 7,343,226 B2; issued Mar. 11, 2008) ("Ehlers").
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments in the Appeal Brief, the Examiner's Answer, and the arguments
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Application I2/737,385
in the Reply Brief. We do not agree with Appellants' arguments. We agree
with, and adopt as our own, the Examiner's findings to the extent they are
consistent with our below analysis. We highlight and address specific
findings and arguments below for emphasis.
Claims 11-16
The Examiner finds that Ehlers discloses "wherein the electric device
is activated if there is sufficient energy from a solar energy generating
device," as recited in independent claim I I. See Final Act. 3 (citing Ehlers
4:59---6:30, I8:5-I6, Figs. IA, 2A, 2C). The Examiner provides the
following additional findings regarding Ehlers' disclosure: (1) power can be
drawn from a photovoltaic system (citing Ehlers 9:59---65); (2) a water heater
uses solar panels to eliminate load on the energy delivery system (citing
Ehlers 25: I-8); (3) the control node receives information related to the
availability of electricity supplied (citing Ehlers 26:44--5 I); ( 4) the device
may make decisions based upon the availability of electricity to activate the
device or delay and reschedule (citing Ehlers 27: I---6); and ( 5) a water heater
is activated by load control mode based on a characteristic of the electricity
supply (citing Ehlers 27:34--44). See Ans. 6.
Appellants argue that column 4, line 59 to column 6, line 30 of Ehlers
describes the system components of the energy management system of
Figure IA, but none of these components refer to an electric device which is
activated via the switch if there is sufficient energy from a solar energy
generating device. See App. Br. 6. Appellants contend Ehlers merely refers
to switching between energy suppliers based on the asking price of the
energy supplier. See id. at 6-7 (citing Ehlers 8:52-56; 26:50---67; 41:66-
42:7; 26:50-67). Appellants further argue Ehlers "does not disclose whether
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Appeal2015-004530
Application 12/737,385
the energy from photovoltaic system 2.22G [(see Ehlers Fig. 2E)] could be
utilized ... in activating energy loads." Reply Br. 2-3. Appellants contend
that Ehlers discloses utilizing stored energy available in the storage batteries
of photovoltaic system 2.22G to offset the use of grid provided energy to
meet a usage site's energy needs instead of shedding load (e.g., deactivating
water heater 2.22E), but that this is not equivalent to activating the load
based on energy from photovoltaic system. See id. at 2 (citing Ehlers 23 :4--
10).
Appellants' arguments are not persuasive because "wherein the
electric device is activated via the switch if there is sufficient energy from a
solar energy generating device," is a statement of intended use or function
for the control device recited in claim 11. Claim 11 recites the following
structure for the control device: (1) an interface to an administrative unit,
(2) an interface to a switch; (3) a connection to an energy supply system; and
( 4) an interface to an operating unit. Appellants do not dispute that the
aforementioned structures recited in claim 11 are described by Ehlers. See
App. Br. 6-7; Reply Br. 2-3. vVhen the structural limitations are all found
in the prior art, the absence of a disclosure in the prior art relating to
intended use or function does not defeat a determination of unpatentability.
"It is well settled that the recitation of a new intended use fi..)r an old product
does not make a claim to that old product patentable." In re Schreiber, 128
F.3d 1473, 1477 (Fed. Cir. 1997) ("structure will be used to dispense
popcorn does not have patentable weight if the stn1cture is already known5
regardless of whether it has ever been used in any way in connection with
popcorn"). For this reason, the disputed limitation is not entitled to
patentable weight, and, therefore, Appe11ants' argurnents do not persuade us
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Appeal2015-004530
Application 12/737,385
of error in the rejection of claims 11----16. Accordingly, we sustain the
rejection of claims l l----16.
Claims 17-20
We also are not persuaded by Appellants' same arguments applied to
independent claim 1 7. For claim 1 7, the disputed limitation "wherein the
electric device is activated via the switch if there is sufficient energy from a
solar energy generating device," is recited in the context of the disjunctive
limitation "one of activating or deactivating the electric device by the
administrative unit as a function of at least one of the energy available via
the energy supply system and the energy requirement of the electric device."
The disputed limitation further describes the "activating" alternative, but
does not further describe the "deactivating" alternative. When a claim
covers alternatives, the claim may be unpatentable if any of the alternatives
within the scope of the claim are taught by the prior art. See Brown v. 3M,
265 F.3d 1349, 1351 (Fed. Cir. 2001). Thus, claim 17 may be unpatentable
if the prior art discloses either the "deactivating" alternative or the
"activating" alternative.
The Examiner finds that Ehlers describes deactivating the electric
device. See Final Act (citing Ehlers 18:5-16)); see also Ehlers 22:40-23:3
(discussing shedding devices to avoid exceeding an energy consumption
limit). Appellants do not dispute the Examiner's finding that Ehlers
describes deactivating the electric device. See App. Br. 5-7; Reply Br. 2-3;
see also Reply Br. 2 (acknowledging shedding load is equivalent to
deactivating a device). Therefore, Appellants arguments addressing only the
additional description of the "activating" alternative are not sufficient to
demonstrate error in the rejection where the Examiner finds Ehlers describes
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Application 12/737,385
at least the "deactivating" alternative. Accordingly, we sustain the rejection
of claims 17----20.
DECISION
We AFFIRM the rejection of claims 11-20.
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
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