Ex Parte Tabatowski-Bush et al

Patent Trial and Appeal Board

Feb 27, 2018

14694175 (P.T.A.B. Feb. 27, 2018)

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.
14/694,175 04/23/2015 Benjamin A. Tabatowski-Bush 83533114;67186-181
PUS1
5876
46442 7590 03/01/2018
TART SON OASKFY Rr OT DS P C /FnrH EXAMINER
400 W. MAPLE RD.
SUITE 350
EUSTAQUIO, CAL J
BIRMINGHAM, MI 48009 ART UNIT PAPER NUMBER
2683
NOTIFICATION DATE DELIVERY MODE
03/01/2018 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BENJAMIN A. TABATOWSKI-BUSH and
GEORGE ALBERT GARFINKEL
Appeal 2017-009443
Application 14/694,175
Technology Center 2600
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
JOHN P. PINKERTON, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—9 and 11—21, which constitute all the claims
pending in this application. Claim 10 was cancelled. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm-in-part.
Exemplary Claims
Exemplary claims 1, 8, and 9 under appeal read as follows (emphasis
added);
1. A method, comprising:
providing an alert in response to an analysis of an array
that includes at least a first recorded value and a second
recorded value, the first recorded value corresponding to an
electrical parameter of a battery joint under a first set of
operating conditions and positioned within the array according
to the first set of operating conditions, the second recorded
value corresponding to the electrical parameter of the battery
joint under a second set of operating conditions and positioned
within the array according to the second set of operating
conditions; and
updating the array by replacing the first recorded value
with a new recorded value corresponding to the electrical
parameter of the battery joint under the first set of operating
conditions.
8. The method of claim 1, wherein the array is a three
dimensional array.
9. The method of claim 8, wherein a first dimension of
the array is representative of a location of the battery joint, a
second dimension of the array is representative of current at the
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battery joint, and a third dimension of the array is representative
of temperature at the battery joint.
App. Br. 11—12 (Claims Appendix).
Rejections on Appeal
1. The Examiner rejected claims 1—7, 11—18, and 21 under
35 U.S.C. § 103(a) as being unpatentable over Lev et al.
(US 2012/0286945 Al; published Nov. 15, 2012) (“Lev”) and McBride
(US 2015/0143627 Al; published May 28, 2015) (“McBride”).1
2. The Examiner rejected claims 8, 9, 19, and 20 under
35 U.S.C. § 103(a) being unpatentable over Lev, McBride and Cai et al.
(US 2014/0203066 Al; published July 24, 2014) (“Cai”).
Issue on Appeal
Did the Examiner err in rejecting claims 1, 4, 6, 8, 9, 13, and 19—21 as
being obvious?
PRINCIPLES OP LAW
The mere existence of differences between the prior art and the claim
does not establish non-obviousness. See Dann v. Johnston, 425 U.S. 219,
230 (1976). Instead, the relevant question is “whether the difference
between the prior art and the subject matter in question is a [difference]
sufficient to render the claimed subject matter unobvious to one skilled in
the applicable art.” Dann, 425 U.S. at 228 (internal quotations and citations
1 The patentability of claims 2, 3,5,7, 11, 12, and 14—18 is not separately
argued from that of claims 1 and 13. See App. Br. 8. Thus, except for our
ultimate decision, claims 2, 3, 5, 7, 11, 12, and 14—18 are not discussed
further herein.
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Application 14/694,175
omitted). Indeed, the Supreme Court made clear that when considering
obviousness, “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.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
ANALYSIS
A. Independent Claims 1 and 13
Appellants contend the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because:
Claim 1 recites, among other things, providing an alert in
“response to an analysis of an array.” The rejection relies on Lev
as teaching the array feature of the claims, which is misplaced.
Lev’s paragraph [0048] allegedly teaches storing a first joint
resistance and a second joint resistance, but there is no teaching
in Lev that these alleged first and second joint resistances are
stored in an array, further, the alleged first and second joint
resistances are also not analyzed as an array.
In the Advisory Action, the Examiner lists two dictionary
definitions of an “array” and takes the position that Lev’s
mentions of measuring and calculating resistance values at two
different time periods is Lev “inherently having the property of
an array.” The claim, however, does not recite an inherent
“property of an array. ” The claims recites an “array. ” There
are many properties to an array, but finding one of these
properties in a reference does not mean that the reference
teaches an array.
App. Br. 3 (Appellants’ emphasis omitted; panel’s emphasis added); see also
Reply Br. 1—2.
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This argument is not persuasive. As the Examiner correctly found,
Lev teaches storing first and second recorded joint resistance values as part
of an overall algorithm or method for monitoring a health of a joint. See
Final Act. 3 (citing Lev 46-48); see also Lev 172. Lev further teaches a
control system that includes a storage medium and programmable memory
which store and execute algorithms to effect the overall algorithm for
monitoring the health of the joint. See Lev 123. Although Lev does not
explicitly use the term “array,” a person of ordinary skill in the relevant art
would understand that the storage medium disclosed in Lev would require an
appropriate data structure to store the two joint resistance values, and that an
array data structure would be a suitable data structure for storage of the
values. As courts have held, the obviousness inquiry “may include recourse
to logic, judgment, and common sense available to the person of ordinary
skill that do not necessarily require explication in any reference or expert
opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329
(Fed. Cir. 2009).
Appellants further contend the Examiner erred in rejecting claim 1
because:
Claim 1 recites, among other things, the first recorded value is
“positioned within the array according to the first set of operating
conditions,” and that the second recorded value is “positioned
within the array according to the second set of operating
conditions.” Lev, as modified by McBride, fails to teach or
suggest at least these features and the rejection should be
reversed.
Lev, as modified, fails to teach any positioning a value according
to a set of operating conditions, and certainly not positioning
according to operating conditions. The rejection admits that Lev
fails to disclose this feature, yet points to no teaching in
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McBride, or elsewhere, addressing this admitted deficiency in
Lev.
That McBride allegedly stores a measures or calculated
resistance is not a teaching of positioning a recorded value
within an array according to operating conditions.
App. Br. 4 (Appellants’ citations and emphasis omitted; panel’s emphasis
added); see also Reply Br. 2.
We are not persuaded by this argument. As previously described, Lev
teaches storing first and second recorded joint resistance values. See Final
Act. 3 (citing Lev 46-48). As also correctly found by the Examiner, the
first joint resistance value corresponds to a joint resistance recorded at a first
instance (i.e., the claimed “first set of operating conditions”), and the second
joint resistance value corresponds to a joint resistance recorded at a second
instance (i.e., the claimed “second set of operating conditions”). See id.
(citing Lev 46-48). Once again, although Lev does not explicitly
describe positioning the recorded first and second joint resistance values
within a data structure utilized by the storage medium, it would be logical
for the storage medium to respectively position the first and second joint
resistance values within an array according to the first and second recorded
instances. This would allow the storage medium to access the appropriate
recorded joint resistance value that corresponds to the appropriate recorded
instance (i.e., claimed “set of operating conditions”).
Appellants also contend the Examiner erred in rejecting claim 1
because:
Claim 1 recites, among other things, “updating the array by
replacing the first recorded value with a new recorded value
corresponding to the electrical parameter of the battery joint
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under the first set of operating conditions.” The Examiner alleges
McBride, and specifically paragraph [200] of McBride, teaches
this feature. This reliance is misplaced and the rejection should
be reversed as the modified version of Lev fails to teach or
suggest the “updating” feature of claim 1.
McBride’s paragraph 200 refers to updating an operating
condition of a drive mechanism based on a change in a
characteristic of the drive mechanism relative to a previously
defined operating condition. This is strikingly different from the
“updating” feature of claim 1, where an array, not a drive
mechanism, is updated by “replacing the first recorded value
with a new recorded value corresponding to the electrical
parameter of the battery joint under the first set of operating
conditions. ”
The referenced portion of McBride specifically requires a change
in a characteristic of a drive mechanism relative to a previously
defined operating condition to prompt an update to an operating
condition. In the claimed “updating,” the first recorded value and
the new recorded value both correspond to the first set of
operating conditions (i.e., the same operating conditions). In
McBride, however, the operating conditions are updated (i.e.,
changed), not a recorded value.
App. Br. 5 (Appellants’ citations and emphasis omitted; panel’s emphasis
added); see also Reply Br. 2.
This argument is also not persuasive. As the Examiner correctly
found, Lev teaches replacing the first recorded joint resistance value with the
second recorded joint resistance value. See Final Act. 3 (citing Lev 1 91).
While this feature of Lev teaches or suggests replacing a first recorded value
with a second recorded value under different sets of operating conditions,
this feature does not teach or suggest replacing the recorded values under a
single set of operating conditions. See id. However, as the Examiner also
correctly found, McBride teaches replacing a first recorded value with a
second recorded value under a single set of operating conditions in response
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to a change in one or more characteristics of a drive mechanism. See id.
(citing McBride 1200); see also Ans. 6. Thus, we agree that the
combination of Lev and McBride teaches or suggests the aforementioned
claim limitation. One cannot show non-obviousness by attacking references
individually when the rejection is based on a combination of references. See
In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re
Keller, 642 F.2d413, 425 (CCPA 1981).
Appellants further contend the Examiner erred in rejecting claim 1
because:
The rejection of claim 1 should also be reversed as the rejection
fails to provide a legally sufficient reason that would lead the
skilled person to make the proposed modification.
In the instant case, the Examiner reasons that the skilled person
would modify Lev such that the first joint resistance is replaced
with a new joint resistance to providing meaningful readings
while saving memory space. This reasoning lacks a rational
basis at least because Lev requires the first joint resistance in
order to determine cycle lapse, fatigue lapse, remaining fatigue
life, etc.
App. Br. 6 (Appellants’ citations and emphasis omitted; panel’s emphasis
added).
We are not persuaded by this argument either. As previously
described, Lev teaches replacing a first recorded joint resistance value with a
second recorded joint resistance value. Thus, Appellants’ argument that Lev
requires the first joint resistance for operation of the overall method for
monitoring a health of a joint is incorrect, and thus, does not persuade us that
the Examiner’s rationale for combining the cited references is insufficient.
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Accordingly, Appellants have not shown the Examiner erred in
rejecting claim 1.
B. Claims 4 and 21
Appellants contend the Examiner erred in rejecting claims 4 and 21
under 35 U.S.C. § 103(a) because:
Regarding claim 4, the claim recites that the first recorded value
and the new recorded value are both “corresponding to the first
operating conditions.” As discussed above in response to the
rejection of claim 1, the updating in McBride relies on an
operating condition changing. The updating in McBride would
not occur if the operating conditions remained the same.
App. Br. 7 (Appellants’ emphasis omitted; panel’s emphasis added); see also
Reply Br. 2—3.
This argument is substantially similar to Appellants argument
regarding the claimed “replacing the first recorded value with a new
recorded value . . . under the first set of operating conditions,” and, thus, is
not persuasive for the reasons previously discussed. Accordingly,
Appellants have not shown the Examiner erred in rejecting claims 4 and 21.
C. Claim 6
Appellants contend the Examiner erred in rejecting claim 6 under
35 U.S.C. § 103(a) because:
Regarding claim 6, the rejection admits that Lev fails to teach the
claimed analysis that “includes an average of at least the first
recorded value and the second recorded value”. To account for
this deficiency in Lev, the rejection alleges that Lev's
measurements of battery joint resistances are [used to calculate
an average].
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Lev fails to teach any “taking of averages” as is alleged.
Measuring the battery joint resistance at two times is not a
teaching of averaging resistances. The Examiner’s position that
the “average of a normal reading to that of a catastrophic battery
joint resistance results in the average of a reading of a
catastrophic battery resistance” is also unsupported.
App. Br. 7 (Appellants’ citations and emphasis omitted; panel’s emphasis
added); see also Reply Br. 3.
This argument is not persuasive. As the Examiner correctly found,
Lev teaches comparing first and second recorded joint resistance values to
determine a difference between the two joint resistance values. See Final
Act. 5—6 (citing Lev 149). Although Lev does not explicitly disclose
determining an average of the two joint resistance values, it would have been
within the technical proficiency of a person of ordinary skill, relying on the
aforementioned person’s common knowledge and sense, to determine an
average of the two joint resistance values as part of the comparison of the
two joint resistance values. Accordingly, Appellants have not shown the
Examiner erred in rejecting claim 6.
D. Claims 8 and 19
Appellants contend the Examiner erred in rejecting claims 8 and 19
under 35 U.S.C. § 103(a) because:
Additionally, regarding claims 8 and 19, the claims recite the
“array is a three dimensional array.” The rejection alleges that
Cai teaches “using temperature sensors to determine the fitness
of a welded joint” and, based on this teaching, it would be
obvious to modify Lev and McBride to include a three
dimensionally array.
Initially, the rejection [fails] to show a teaching or suggestion
of the three dimensional array recited in the claims. Cai alleged
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teaching of using temperature sensors to determine a fitness of a
welded joint is not a teaching of an array’s dimension. That the
cited art allegedly shows three different parameters of a welded
joint does not demonstrate that the cited art teaches a three
dimensional array.
Also, as explained in response to the rejection of claim 1, Lev
does not disclose any array, so there is no array to be modified
with features of Cai. That is, even if Cai taught a dimension of
an array, there is no array in Lev or McBride that could be
modified to include that dimension.
The rejection additionally fails to articulate a reason having
rational basis that would lead the skilled person to modify Lev
to include a three dimensional array. That a joint’s measured
temperature is allegedly an indication of a joint’s condition does
not mean that it would be obvious to modify Lev to include a
three dimensional array. Although temperature may allegedly
contribute to a joint’s condition, this does [not] mean that the
skilled person would modify Lev to include a three dimensional
array. The rejection points to no connection between
temperature and a dimensional modification to an array. The
reasoning offered in support of the proposed modification does
not support the full scope of the modification and thus lacks a
rational basis.
App. Br. 8—9 (Appellants’ citations and emphasis omitted; panel’s emphasis
added); see also Reply Br. 3.
This argument is not persuasive. As previously discussed, Lev
teaches or suggests the claimed “array,” as recited in claim 1, that includes
first and second recorded resistance values. As the Examiner correctly
found, the array taught or suggested by Lev can be considered a two-
dimensional array in light of the two resistance values recorded at different
instances. See Final Act. 10. As the Examiner also correctly found, Cai
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discloses recording measured temperature values of a welding interface. See
id. (citing Cai 17). Although none of the cited references explicitly recite a
“three-dimensional array,” a person of ordinary skill would readily
understand that a three-dimensional array is a known data structure that
could be substituted for the two-dimensional array taught or suggested by
Lev in order to store data associated with an additional dimension (i.e., the
recorded temperature values taught by Cai). “[W]hen a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.” KSR, 550 U.S. at 416, citing
United States v. Adams, 383 U.S. 39, 50—51 (1966). Accordingly,
Appellants have not shown the Examiner erred in rejecting claims 8 and 19.
E. Claims 9 and 20
Appellants contend the Examiner erred in rejecting claims 9 and 20
under 35 U.S.C. § 103(a) because:
Regarding claims 9 and 20, the rejection alleges that “at least one
parameter for determining joint resistance reading would
inherently include its location.” This position is misplaced.
Location is not required to determine a resistance of a joint.
Lev currently calculates joint resistance without requiring a
location of the joint. Thus, concluding that calculating a first
resistance of a joint would inherently require a location of the
joint is misplaced.
App. Br. 9 (Appellants’ citations and emphasis omitted; panel’s emphasis
added); see also Reply Br. 3.
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We are persuaded the Examiner erred. We agree with Appellants that
the Examiner has not sufficiently shown that the calculation of a first
resistance of a joint would necessarily require a location of the joint.
Accordingly, Appellants have shown the Examiner erred in rejecting claims
9 and 20.
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1—8, 11—19, and
21 as being unpatentable under 35 U.S.C. § 103(a).
(2) Appellants have established that the Examiner erred in rejecting
claims 9 and 20 as being unpatentable under 35 U.S.C. § 103(a).
(3) Claims 1—8, 11—19, and 21 are not patentable.
(4) On this record, claims 9 and 20 have not been shown to be
unpatentable.
DECISION
We affirm the Examiner’s rejection of claims 1—8, 11—19, and 21 as
being unpatentable under 35 U.S.C. § 103(a).
We reverse the Examiner’s rejection of claims 9 and 20 as being
unpatentable under 35 U.S.C. § 103(a).
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-IN-PART
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