Ex Parte Shoytush et al

Patent Trial and Appeal Board

Feb 18, 2016

12708477 (P.T.A.B. Feb. 18, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/708,477 02/18/2010 Paul J. Shoytush P003900-FCA-CHE 4526
65798 7590 02/18/2016
MILLER IP GROUP, PLC
GENERAL MOTORS CORPORATION
42690 WOODWARD AVENUE
SUITE 300
BLOOMFIELD HILLS, MI 48304
EXAMINER
TORRES RUIZ, JOHALI ALEJANDRA
ART UNIT PAPER NUMBER
2859
MAIL DATE DELIVERY MODE
02/18/2016 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 PAUL J. SHOYTUSH and MICHAEL JOSEPH FARMAN1
____________

Appeal 2014-004583
Application 12/708,477
Technology Center 2800
____________
Before BRADLEY R. GARRIS, TERRY J. OWENS, and WESLEY B.
DERRICK, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’s
rejections under 35 U.S.C. § 103(a) of claims 1, 2, and 5 as unpatentable
over Oram (US 5,061,898 issued Oct. 29, 1991) and Cohen (US 7,880,438
B1 issued Feb. 1, 2011) and remaining claims 3, 6–12, 14–17, and 20 as
unpatentable over these references alone or in combination with additional
prior art references. We have jurisdiction under 35 U.S.C. § 6.

1 General Motors, is identified as the real party in interest. App. Br. 4.
Appeal 2014-004583
Application 12/708,477
2
We AFFIRM.
Appellants claim a system for battery capacity testing comprising: a
battery charger 18 for charging a battery 12; a load test resistor 26; a control
relay 14 coupled to the battery, the resistor, and the charger; an electronic
controller 22 coupled to the battery, resistor, relay and in communication
with the charger for calculating the capacity of the battery in ampere-hours
at the end of the load testing; and a selectable voltage switch so as to enable
the end condition at the end of the load testing to be any voltage desired
(independent claim 1, Fig. 1; see also independent claims 9 and 16). The
claimed system further comprises a first lead attached to a first battery
terminal, a second lead attached to a second battery terminal, and a third lead
also attached to the second battery terminal, wherein the first, second, and
third leads couple the battery to certain other electrical components of the
system (dependent claim 2; see also dependent claim 10). The claimed
system additionally comprises a selectable current setting so as to allow the
battery to be tested at different currents (dependent claim 5; see also
dependent claim 14).
A copy of representative claims 1, 2, and 5, taken from the Claims
Appendix of the Appeal Brief, appears below.

1. A system for battery capacity testing, said
system comprising:
a battery charger for charging a battery;
a load test resistor;
a control relay coupled to the battery, the load test
resistor and the battery charger;
an electronic controller coupled to the battery, load test
resistor and the control relay and further in communication with
the battery charger, said electronic controller controlling the
battery charger so as to allow the battery to be charged,
Appeal 2014-004583
Application 12/708,477
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wherein the electronic controller allows the battery to be load
tested and calculates the capacity of the battery in ampere-hours
at the end of the load testing; and
a selectable voltage switch so as to enable the end
condition at the end of the load testing to be any voltage
desired.

2. The system according to claim 1, further comprising a
first lead attached to a first terminal of the battery, a second
lead attached to a second terminal of the battery, and a third
lead also attached to the second terminal of the battery, wherein
the first lead couples the battery to the control relay, the second
lead couples the battery to the electronic controller and the load
test resistor, and the third lead couples the battery to the battery
charger.

5. The system according to claim 1, further comprising a
selectable current setting so as to allow the battery to be tested
at different currents.

Appellants present arguments specifically directed to the common
limitations recited in independent claims 1, 9, and 16, the common
limitations recited in dependent claims 2 and 10, and the common
limitations recited in dependent claims 5 and 14 (App. Br. 11–24). In
considering these arguments, we need focus only on representative claims 1,
2, and 5.
We sustain the § 103 rejections advanced in this appeal based on the
findings of fact, conclusions of law, and rebuttals to arguments well
expressed by the Examiner in the Final Action and in the Answer. The
following comments are added for emphasis.
Regarding claim 1, Appellants dispute the Examiner’s conclusion that
it would have been obvious to provide Oram with a selectable voltage switch
as claimed in view of Cohen (Final Action 3) by arguing that “the test switch
Appeal 2014-004583
Application 12/708,477
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38 of Cohen is just a switch for opening and closing a circuit, and has no
selectable voltage function as claimed” (App. Br. 13). According to
Appellants, “it is the processor 30 [of Cohen] that is configured to control
the test switch 38, such as at a specific voltage” (id.).
The Examiner agrees with Appellants’ last quoted statement and
determines that it is reasonable and consistent with Appellants’ Specification
to interpret the claim 1 limitation under review “as encompassing a switch
that enables the end condition of a load testing to be any voltage desired as
selected by a processor [i.e., Cohen’s processor 30]” (Ans. 4). Significantly,
Appellants reiterate their above argument in the Reply Brief but do not
address much less challenge the Examiner’s interpretation of claim 1 as
encompassing the processor-controlled switch 38 of Cohen (see, e.g., Reply
Br. 1–2). Under these circumstances, Appellants’ argument lacks persuasive
merit.
Regarding the Examiner’s finding that Oram discloses first, second,
and third leads attached and coupled as recited in claim 2 (Final Action 3–4),
Appellants argue that Oram discloses only two leads not three leads
including second and third leads which couple the battery in the claimed
manner (App. Br. 15–16).
Appellants’ argument is not persuasive for the reasons fully detailed
by the Examiner (Final Action 3–4 (especially ann. Fig. 1 of Oram at Final
Action 4), Ans. 4). Although the Examiner’s reasoning is discussed in the
Reply Brief, Appellants’ discussion does not specifically identify any error
in the Examiner’s finding that Oram discloses the lead limitations of claim 2
(see Reply Br. 2–3).
Finally, Appellants contend that the Examiner erred in finding Oram
discloses the claim 5 limitation of a selectable current setting (App. Br. 16).
Appeal 2014-004583
Application 12/708,477
5
In response, the Examiner convincingly explains that the limitation is
satisfied by Oram’s test loads having different impedance values thereby
allowing the battery to be tested at different currents as claimed (Ans. 4–5)
and that it is reasonable and consistent with the Specification to interpret
claim 5 as encompassing different test loads having different impedances
(id. at 5). In their Reply Brief, Appellants do not discuss claim 5 and
therefore do not reveal error in the Examiner’s explanation why this claim is
satisfied by Oram.
For the reasons given by the Examiner and emphasized above,
Appellants fail to show that the Examiner erred in rejecting the claims on
appeal.
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED