Ex Parte Syed et alDownload PDFPatent Trial and Appeal BoardDec 18, 201412817711 (P.T.A.B. Dec. 18, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/817,711 06/17/2010 Fazal Urrahman Syed 81194016 6125 28395 7590 12/19/2014 BROOKS KUSHMAN P.C./FGTL 1000 TOWN CENTER 22ND FLOOR SOUTHFIELD, MI 48075-1238 EXAMINER OLSZEWSKI, JOHN ART UNIT PAPER NUMBER 3669 MAIL DATE DELIVERY MODE 12/19/2014 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 FAZAL URRAHMAN SYED, MING LANG KUANG, SHAILESH SHRIKANT KOZAREKAR, VENKATAPATHI RAJU NALLAPA, ROBERT K. TAENAKA, RYAN ABRAHAM MCGEE, and VENKATESWA ANAND SANKARAN ____________ Appeal 2012-008944 Application 12/817,7111 Technology Center 3600 ____________ Before: JENNIFER D. BAHR, PHILIP J. HOFFMANN, and GEORGE R. HOSKINS, Administrative Patent Judges. HOSKINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Fazal Urrahman Syed et al. (“Appellants”) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1–19 under 35 U.S.C. § 103(a) as unpatentable over Johanson (US 2007/0125417 A1, pub. June 7, 2007). The Board has jurisdiction over this appeal under 35 U.S.C. § 6(b). The Examiner’s decision is AFFIRMED-IN-PART. 1 The Appeal Brief identifies Ford Global Technologies, LLC as the real party in interest. Appeal Br. 1. Appeal 2012-008944 Application 12/817,711 2 CLAIMED SUBJECT MATTER Claims 1 and 4 are illustrative of the claims on appeal: 1. An automotive vehicle comprising: a battery pack (i) including a plurality of electrically connected storage cells each having an output voltage at a target storage cell state of charge and (ii) configured to provide energy to move the vehicle; a plurality of solar cells electrically connected in series to form a solar panel array having an output voltage at least equal to the sum of the respective output voltages of each of the storage cells at the target storage cell state of charge; and a controller configured to selectively electrically connect the solar panel array and the battery pack to charge the battery pack. 4. An automotive vehicle comprising: a plurality of solar cells electrically connected to form a solar panel array having an output voltage of at least 200 V at a standard solar irradiance of 1000 W/m2; a battery pack having an output voltage of at least 200 V and configured to provide energy for moving the vehicle; and a controller configured to selectively electrically connect the array and battery pack to trickle charge the battery pack. Appeal Br., Claims App. ANALYSIS A. Claim Construction Appellants and the Examiner present a claim construction dispute. According to Appellants, all claims exclude a DC/DC boost converter from being part of the claimed “solar panel array.” Appeal Br. 4–5; Reply Br. 2. The Examiner responds that “Applicant’s claim language is not so limiting Appeal 2012-008944 Application 12/817,711 3 as to exclude the converter from being part of the solar panel array.” Ans. 10. For the following reasons, Appellants have the better argument. Claim 1 representatively recites (emphases added) “a plurality of solar cells electrically connected in series to form a solar panel array having an output voltage at least equal to” a specified output voltage. (The specified output voltage differs somewhat among the various claims.) That is, the claim language defines the array as being formed by the solar cells, and thereby excludes other elements (such as a DC/DC boost converter) from being part of the array. The claims thus require that the solar cells themselves produce the specified voltage, and exclude the use of a DC/DC boost converter to help the solar cells produce the specified voltage. This construction is consistent with the Specification, which discusses the benefits of avoiding the use of a DC/DC boost converter by having a solar panel array with an output voltage at least equal to the output voltage of the battery. Spec. 1:31–2:3, 2:16–34, 3:17–27. For these reasons, a person of ordinary skill, applying a broadest reasonable construction of the claim language in light of the Specification, would conclude the claims require the plurality of solar cells to provide the specified voltage, without the aid of other components. B. Claims 1–3 and 12–19 In rejecting independent claims 1 and 12, and their respective dependent claims, the Examiner cites Johanson as disclosing an automotive vehicle comprising battery pack 54 configured to provide energy to move the vehicle; a plurality of solar cells electrically connected to form solar panel array 16 having an output voltage; and controller 56 and 58 to selectively electrically connect array 16 and battery pack 54 to charge Appeal 2012-008944 Application 12/817,711 4 battery pack 54. Ans. 5, 8–9. The Examiner concedes Johanson’s solar panel array 16 does not have an output voltage at least equal to the output voltage of battery pack 54, as required by claims 1 and 12. Id. To reach that claim requirement, the Examiner asserts Johanson “states that solar panels can be varied in size, shape, and power output configurations” and: [I]t would have been obvious to one having ordinary skill in the art at the time the invention was made to design the system to have [the claimed] arrangement, since it is well known in the art that [1] there are specifically desirable states of charge to maintain batteries at in order to prolong their life, and it is well known that [2] batteries can only be charged at certain rates in order to prolong battery life, and lastly it is well known that [3] a solar panel can be designed to provide a specific voltage output. Therefore it would have been obvious to modify Johanson et al. in such a manner as to provide this relationship, to improve efficiency of the system. Ans. 5 (claim 1); see also id. at 9 (claim 12). Appellants contend the Examiner’s obviousness conclusion does not follow from the three statements [1] to [3] without the benefit of hindsight. Appeal Br. 3; Reply Br. 2–3. According to Appellants, “[t]he Examiner’s conclusion is nothing more than a conclusory statement that appears to be impermissibly based on Appellant’s own teachings.” Appeal Br. 3. These contentions are persuasive. Even if concepts [1] to [3] are indeed well known, the Examiner has not established why or how those concepts would lead one of ordinary skill to modify Johanson so that the solar cells have an output voltage at least equal to the output voltage of the battery. Concepts [1] and [2] focus on the voltage level being applied to the battery in order to charge the battery, rather than the claim language, which describes how that voltage is achieved using solar cells outputting at least the battery’s voltage. Appeal 2012-008944 Application 12/817,711 5 Concept [3] establishes, at most, that a solar panel is capable of providing the claimed output voltage. However, the mere capability of a device to be modified to reach a claimed invention, alone, does not establish obviousness. In re Giannelli, 739 F.3d 1375, 1379–80 (Fed. Cir. 2014). The Examiner also states the limitation missing from Johanson “is old and well known” and “the concept has been practiced for decades.” Ans. 11. In particular: “Applicant was provided in the Final Office Action [at page 8] with the example of an alternator and battery in a motor vehicle, in which a voltage regulator controls the voltage output of the alternator so as to maintain the battery at a target state of charge.” Id. This analysis again focuses on the voltage level being applied to the battery in order to charge the battery, rather than the claim language, which describes how that voltage is achieved using solar cells outputting at least the required voltage. The Examiner’s rejection does not provide an articulated reasoning with a rational underpinning as to why one of ordinary skill would modify Johanson so that the solar cells of Johanson’s solar panel array would output the voltages specified in claims 1 and 12. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417–18 (2007). Therefore, the Examiner’s rejection is not sustained as to claims 1–3 and 12–19. C. Claims 4–11 Independent claim 4 recites in part “a plurality of solar cells electrically connected to form a solar panel array having an output voltage of at least 200 V” and “a battery pack having an output voltage of at least 200 V.”2 The Examiner’s rejection finds Johanson “fails to disclose the 2 This claim language permits the battery pack output voltage to be higher than that of the solar panel array, and thus does not exclude a booster. Appeal 2012-008944 Application 12/817,711 6 specific values of the output voltages of the solar array and the battery pack,” but concludes “[i]t would have been obvious to one having ordinary skill in the art at the time the invention was made to make use of such values since it has been held that discovering the optimum value of a result effective variable involves only routine skill in the art.” Ans. 6 (emphasis added). Appellants’ Appeal Brief and Reply Brief do not address the Examiner’s obviousness rationale for claims 4–11, and instead address only the rationale for claims 1–3 and 12–19. Therefore, the Examiner’s rejection is summarily sustained as to claims 4–11. See, e.g., 37 C.F.R. § 41.30(c)(1)(vii) (2011); In re Baxter Int’l, Inc., 678 F.3d 1357, 1362 (2012) (argument waived when not timely presented in briefing to the Board, absent exceptional circumstances). DECISION The Examiner’s decision is REVERSED as to claims 1–3 and 12–19, and AFFIRMED as to claims 4–11. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2013). AFFIRMED-IN-PART rvb Copy with citationCopy as parenthetical citation