Ex Parte Wolff et al

Patent Trial and Appeal Board

Nov 30, 2018

13890016 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/890,016 05/08/2013
10800 7590 11/30/2018
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
FIRST NAMED INVENTOR
Hans-Joerg Wolff
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.
2178-0748 1745
EXAMINER
VO,JIMMY
ART UNIT PAPER NUMBER
1723
MAIL DATE DELIVERY MODE
11/30/2018 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 HANS-JOERG WOLFF, HANS PAR TES, and
ANNE HEUBNER
Appeal2017-008926
Application 13/890,016
Technology Center 1700
Before JEFFREY T. SMITH, A VEL YN M. ROSS,
and MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner rejected claims 1 and 3-10 of Application 13/890,016
under 35 U.S.C. §§ 102, 103, and 112. Final Act. (April 11, 2016) 4--15;
Examiner's Answer (March 28, 2017) 4--6. Appellants 1 seek reversal of
these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6.
For the reasons set forth below, we REVERSE.
1 The Appellants are the Applicants, Robert Bosch GmbH and Samsung SDI
Co., Ltd., which are also identified as the real parties in interest. Appeal
Br. 3.
Appeal2017-008926
Application 13/890,016
BACKGROUND
The present application generally relates to a battery system and a
method of operating a battery system having at least a first battery module
and a second battery module. Spec. 2. The method includes at least the
steps of 1) activating a first battery module for a defined period of time, then
2) activating a second battery module for the defined time period while
simultaneously deactivating the first battery module. Id. Practice of the
described method is taught to "reduce the creation of a high internal
resistance and, in particular, the occurrence of a depletion effect" in the
battery modules. Id. at 3.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below with certain limitations bolded for emphasis:
1. A method for operating a battery system to provide
power to a load, the battery system including at least a first
battery module and a second battery module, the first battery
module and the second battery module each being configured to
provided power to the load only while activated, the method
compnsmg:
activating the first battery module to provide power to the load;
deactivating the first battery module at a defined time period
after the activating of the first battery module;
activating the second battery module to provide power to the
load, the activating of the second battery module being
simultaneous with the deactivating of the first battery
module; and
deactivating the second battery module at the defined time
period after the activating of the second battery module.
Appeal Br. 17 (Claims App.) (reformatted for clarity).
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REJECTIONS
The Examiner maintains the following rejections:
1. Claims 1 and 3-10 are rejected under 35 U.S.C. § 112(a) for
failure to comply with the written description requirement.
Answer4-5.
2. Claims 1 and 3-10 are rejected under 35 U.S.C. § 112(b) as
indefinite. Id. at 5---6.
3. Claims 1 and 3---6 are rejected under 35 U.S.C. § I03(a) as obvious
over McAndrews. Final Act. 5-9.
4. Claims 7 and 8 are rejected under 35 U.S.C. § 102(b) as
anticipated by McAndrews et al. 2 Id. at 2-5.
5. Claim 9 is rejected under 35 U.S.C. § I03(a) as obvious over
McAndrews in view of Murase. 3 Id. at 10.
6. Claim 10 is rejected under 35 U.S.C. § I03(a) as obvious over
McAndrews in view of Kuranuki. 4 Id. at 10-11.
DISCUSSION
Rejection 1. The Examiner rejected claims 1 and 3-10 for failure to
comply with the written description requirement. Answer 4--5.
Claims 1, 7, and 9 each require deactivating a battery module at a
"defined time period." Id. at 5. The Examiner determined that such
limitation is not adequately supported by a written description in the
2 US Pat. No. 5,886,503, issued Mar. 23, 1999 ("McAndrews").
3 WO 2010/109881 Al, published Sept. 30, 2010 (citations to US
2012/0013304 Al, published Jan. 19, 2012) ("Murase").
4 US 2007 /0202370 Al, published Aug. 30, 2007 ("Kuranuki").
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Application 13/890,016
Specification as it does not specify or describe any specific value or range
for the time period. Id.
The relevant statute requires that "[t]he specification shall contain a
written description of the invention, and of the manner and process of
making and using it, in such full, clear, concise, and exact terms as to enable
any person skilled in the art to which it pertains, or with which it is most
nearly connected, to make and use the same." 35 U.S.C. § 112(a).
For an applicant to comply with the written description requirement,
the applicant's specification must "convey with reasonable clarity to those
skilled in the art that, as of the filing date sought, he or she was in possession
of the invention." Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541
F.3d 1115, 1122 (Fed. Cir. 2008) (quoting Vas-Cath Inc. v. Mahurkar, 935
F.2d 1555, 1563-64 (Fed. Cir. 1991)).
"One shows that one is 'in possession' of the invention by describing
the invention, with all its claimed limitations, not that which makes it
obvious." Lockwood v. American Airlines Inc., 107 F.3d 1565, 1572 (Fed.
Cir. 1997) ( original emphasis not reproduced). "Although the exact terms
need not be used in haec verba ... the specification must contain an
equivalent description of the claimed subject matter." Id. Similarly, "[t]he
knowledge of ordinary artisans may be used to inform what is actually in the
specification, but not to teach limitations that are not in the specification, ...
. even if those limitations would be rendered obvious by the disclosure in the
specification." Rivera v. Int'! Trade Comm 'n, 857 F.3d 1315, 1322 (Fed.
Cir. 2017) (internal citation omitted).
Here, the Specification teaches a control unit that "activates the first
battery module 306 by means of the coupling unit for a defined clock time
Tt and, after the clock time Tt has elapsed, activates the second battery
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Application 13/890,016
module 308 by means of the coupling unit for a further clock time Tt."
Spec. 8-9 ( emphasis added). The Specification further teaches that the
control unit "dynamically defines the clock time Tt as a function of [various]
measurement values." Id. at 9.
The "defined clock time Tt" of the Specification appears to be
equivalent to the "defined time period" of the claims. Thus, the
Specification indicates that the inventors were in possession of the invention
as claimed. Accordingly, the claims do not exceed the scope of the
disclosure.
In view of the foregoing, we determine that Appellants have shown
that the Examiner reversibly erred in determining that the claim limitation
"defined time period" is not supported by an adequate written description.
Rejection 2. The Examiner rejected claims 1 and 3-10 as indefinite.
Answer 5---6. The Examiner determined that the same limitation discussed
above, "defined time period," is indefinite because the Specification and
figures do not specify a particular value or range of values of the time
period. Id.
The thrust of the Examiner's reasoning is not that "defined time
period" does not have a clear meaning; rather, it is that it is an excessively
broad limitation that could encompass any time period. "Merely claiming
broadly does not render a claim insolubly ambiguous, nor does it prevent the
public from understanding the scope of the patent." Ultimax Cement Mfg.
Corp. v. CTS Cement Mfg. Corp., 587 F.3d 1339, 1352 (Fed. Cir. 2010).
Accordingly, the limitation at issue, while broad, has not been shown to be
indefinite. See also IGTv. Bally Gaming Int'!, Inc., 659 F.3d 1109, 1119
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Application 13/890,016
(Fed. Cir. 2011) ("the plain language of the claim must control, and the term
'predefined' has a well-known definition").
Further, we note that the Specification teaches an exemplary
embodiment where "the voltage of the battery module drops in such a way
that the voltage profile exhibits a point of inflection, as can be seen in Figure
2 approximately at 70 seconds and 2.95 volts." Id. at 7. Thus, the
Specification gives some guidance as to the value or range of the defined
time period.
In view of the foregoing, we determine that Appellants have shown
that the Examiner reversibly erred in determining that the claim limitation
"defined time period" is indefinite.
Rejection 3. The Examiner rejected claims 1 and 3---6 as obvious over
McAndrews. Final Act. 5-9.
McAndrews is titled "Back-Up Battery Management Apparatus for
Charging and Testing Individual Battery Cells in a String of Battery Cells."
McAndrews concerns supplying power to communication and computer
equipment. McAndrews, 1: 18-21. Such equipment is primarily powered by
rectified commercial AC current. Id. at 1 :21-22. In order to avoid an
interruption in service during an AC power outage, it is common to employ
a backup battery system. Id. at 1 :24--26. Such backup battery systems may
have multiple batteries or groups of batteries referred to as "battery strings."
Id. at 26-28. McAndrews teaches that such battery strings are periodically
tested. Id. at 7 :44--4 7. The Examiner determined that such testing process
teaches the subject matter of claims 1 and 3-6.
Appellants argue that the Examiner erred in several respects. First,
Appellants argue that the limitations regarding activation and deactivation of
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the battery modules require that the modules be configured so as to be
individually activated. Appeal Br. 9-11 (Subsection i). In this regard, the
Examiner cites to the following teaching of McAndrews:
the present invention combines the benefits of the battery string
module 15 described above in connection with the circuit of
FIG. 1 with a switching network 102 and logic circuit 104 to
provide an apparatus capable of testing and charging
individual cells or individual groups of cells of a battery
string 14 without physically removing either the string 14 or
any of its cells from the load bus 12. As a result, the present
invention enables testing and charging of individual cells or
groups of cells without loss of back-up capability.
Id. at 10:14--23 (emphasis added). Appellants acknowledge such teaching
but contend that it does not teach activation and deactivation of individual
battery cells or strings. Appellants assert that McAndrews teaches that the
battery string under test is not physically removed from the load bus.
Appeal Br. 10 ( citing McAndrews 10: 17-21 ). Appellants argue that
"McAndrews does not teach how a first cell in the battery string 14 can be
'activated' to provide power to the system load 10, while simultaneously a
second cell in the battery string 14 is 'deactivated' and does not provide
power to the system load 10." Id. at 10-11.
This is not persuasive. McAndrews teaches as follows:
As shown in FIG. 3, by adjusting the state of the controlled
switches Kl-K6, a discharge path can be formed connecting any
of the battery cells A-F across the load 10 via the discharge
module 108. For example, if the switches Kl-K6 are left in
their default position, the battery string module 15 is
deactivated, and the discharge module 108 is activated, a
discharge path will be formed comprising: the discharge
module 108, switches Kl and K2, battery cell F, switches KS
and K6 and the load 10. This discharge path will enable the
discharge of cell F ( which may actually be a group of battery
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cells) without effecting the charge of the remaining cells (A-
E) in the string 14 in any substantial manner. In this way, cell
F can be tested without removing the string 14 or any of its
cells (A-F) from the load bus 12.
Id. at 12:1-14. Thus, McAndrews teaches the individual activation and
deactivation of separate battery cells. In view of the foregoing, as well as
the Examiner's determinations in the Final Action and Answer, we
determine that Appellants have failed to show error in this regard.
Appellants additionally argue that McAndrews does not teach that a
second battery module is activated "simultaneous with the deactivating of
the first battery module" as required by independent claims 1, 7, and 9.
Appeal Br. 11-13 (Subsection ii). First, Appellants argue that during
testing, the battery cell does not supply power to the load, but rather is
merely "effectively shorted." Id. at 11-12. In support, Appellants appear to
refer to McAndrews' teaching that "[t]he FETs are preferably connected as
shunts across associated battery cell groups 160--165 as shown in FIG. 5
such that, upon receipt of a suitable drive signal from the logic circuit, they
will effectively short their associated battery cell group 160-165 to perform
a discharge test." McAndrews, 13:61---65 (emphasis added). 5 This portion of
McAndrews, however, is silent as to whether or not the battery cell groups
are discharged across the load. Further, in prior sections, McAndrews
teaches that the SCR 18 is shorted by contactor set Kl to connect battery
power to the system load. Id. at 7:8-14.
5 In their brief, Appellants cite to McAndrews, 14:58-65, in support of their
argument that McAndrews teaches that the battery cell is "effectively
shorted," however, such portion is inapposite to the stated proposition.
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Appellants additionally argue that, even if the battery cells of
McAndrews are determined to be activated to supply power to the load
(rather than merely shorted), the activation of the second battery module is
not "simultaneous with" the deactivation of the first battery module.
In the Final Action, the Examiner determined as follows:
It would have been obvious to a person skilled in the art at the
time of the invention that the battery management system of
McAndrews is capable of performing steps of activate/
discharge a first battery and then activate a second battery
and/or activate/discharge a second battery while the first battery
is deactivate or charging within a period of time of monitoring
the batteries either sequentially or simultaneous/same time as
to provide the system with power continuously/uninterrupted.
Final Act. 8.
"The mere fact that the prior art may be modified in the manner
suggested by the Examiner does not make the modification obvious unless
the prior art suggested the desirability of the modification." In re Fritch,
972 F.2d 1260, 1266 (Fed. Cir. 1992). Here, the Examiner does not show
that the prior art suggested simultaneous activation and deactivation of the
battery modules of McAndrews. Indeed, McAndrews teaches to the
contrary. McAndrews states that "[i]n applications with two or more battery
strings, each string is tested separately, and then only after the previously
tested string has completed its recharge and has been returned to its float
charge mode." McAndrews, 8:5-9 ( emphasis added). This suggests a delay
between the start of deactivation of the first battery module and the
activation of the second battery module. McAndrews similarly teaches as
follows:
[I]n order to optimize the back-up capability of the battery
string, it is preferable to discharge ( and subsequently re-charge)
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one group 160--165 at a time. In other words, it is preferable to
discharge a battery cell group such as group 163 and re-
charge that same group (163) before testing a second group
such as group 160.
Id. at 14:1-7 (emphasis added). As above, this teaches an intervening step
subsequent to deactivation of the first battery module and prior to activation
of the second.
Accordingly, we determine that Appellants have shown reversible
error on this basis.
Appellants assert a third basis of error with regard to the rejection of
claim 1 and 3---6 as obvious over McAndrews. Appeal Br. 13-14
(Subsection iii). They argue that McAndrews does not teach "deactivating
the first battery module at a defined time period after the activating of the
first battery module" and "deactivating the second battery module at the
defined time period after the activating of the second battery module" as
required by claim 1. Id. at 17 (Claims App.) ( emphasis added).
The Examiner found that McAndrews does not explicitly teach that
the battery is activated for a specific period of time. Final Act. 7. Rather,
the Examiner determined that "the battery management also monitors
different information such as the health and state of charge of the batteries
(Col. 5, lines 30-39), which suggests that the system can be set to
discharge/activate, stop/deactivate, or regenerate/recharge the batteries
automatically after it receives certain information from the batteries within a
period of time." Id. at 7-8. Here, as with the limitations regarding
simultaneous activation and deactivation, the Examiner does not show that
the prior art suggested use of a defined time.
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Rather, McAndrews teaches that "[t]he test duration is dependent
upon the size of the battery and its reserve time design objective" rather than
a defined time. McAndrews 8: 1-3. McAndrews further teaches that,
"[ w ]hen the controllers' algorithm determines that the controller has
sufficient and consistent information to predict string capacity, the test is
terminated." Id. at 8:3-5. Accordingly, the Examiner has not shown that
McAndrews teaches or suggests "deactivating the first battery module at a
defined time period after the activating of the first battery module" and
"deactivating the second battery module at the defined time period after the
activating of the second battery module" as required by claim 1.
In view of the foregoing, we determine that Appellants have shown
reversible error in the rejection of claim 1 as well as claims 3---6 which
depend from claim 1.
Rejections 4--6. The Examiner rejected claims 7 and 8 as anticipated
by McAndrews (Rejection 4). The Examiner further rejected claims 9
(Rejection 5) and 10 (Rejection 6) as obvious over McAndrews in view of
other references not at issue. Appellants argue that such rejections should be
reversed for the same reasons as with regard to the rejection of claim 1.
Appeal Br. 15. Likewise, the Examiner contends that such rejections should
be affirmed for the same reasons as with regard to the rejection of claim 1.
Answer 11.
For the reasons stated above in regard to the rejection of claim 1 over
McAndrews (Rejection 3), we find Appellants' arguments to be persuasive.
Accordingly, Appellants have shown reversible error in regard to the
rejections of claims 7-10.
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CONCLUSION
The rejection of claims 1 and 3-10 for failure to comply with the
written description requirement is reversed. The rejection of claims 1 and 3-
10 as indefinite is reversed. The rejection of claims 1 and 3-6 as obvious
over McAndrews is reversed. The rejection of claims 7 and 8 as anticipated
by McAndrews is reversed. The rejection of claim 9 as obvious over
McAndrews in view of Murase is reversed. The rejection of claim 10 as
obvious over McAndrews in view of Kuranuki is reversed.
REVERSED
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