Ex Parte Wong et al

Patent Trial and Appeal Board

Aug 31, 2017

12429379 (P.T.A.B. Aug. 31, 2017)

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.
12/429,379 04/24/2009 Ligong Wong DC-15227 1893
33438 7590 09/05/2017
TERRILE, CANNATTI, CHAMBERS & HOLLAND, LLP
P.O. BOX 203518
AUSTIN, TX 78720
EXAMINER
KEBEDE, TESSEMA
ART UNIT PAPER NUMBER
2859
NOTIFICATION DATE DELIVERY MODE
09/05/2017 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):
tmunoz @ tcchlaw. com
kchambers@tcchlaw.com
heather@tcchlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LIGONG WONG and SHANE CHIASSON
Appeal 2016-006831
Application 12/429,379
Technology Center 2800
Before MICHAEL P. COLAIANNI, JAMES C. HOUSEL, and MICHAEL
G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1—3, 5—8, 10, and 11 of
Application 12/429,379. Final Act. (July 16, 2015) 2—19. Appellants1 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 AFFIRM and enter a NEW
GROUND OF REJECTION.
1 Dell Products L.P. is identified as the real party in interest. Appeal Br. 1.
Appeal 2016-006831
Application 12/429,379
BACKGROUND
The present application generally relates to a system that employs a
battery’s cell capacity, cell voltage, as well as time to discharge in
combination to identify good or bad battery cells. Abst.
Claims 1 and 11 are representative of the pending claims and are
reproduced below with certain key limitations emphasized:
1. A method for dynamic discharging of a battery to detect
derated battery cells comprising:
determining an accumulated discharge capacity value for the
battery;
determining an internal discharge time value for the battery;
assigning one of the accumulated discharge capacity value and
the internal discharge time value as a fixed value;
using another of the accumulated discharge capacity value and
the internal discharge time value to identify derated battery
cells, derated battery cells corresponding to battery cells having
less than a predefined amount of discharge capacity after a
number of designated charge/discharge cycles after a defined
period of time; and,
determining start and end voltage for the battery; and wherein
the assigning the fixed value comprises assigning one of the
accumulated discharge capacity value, the start and end
voltage and the internal discharge time value as the fixed
value',
the using another further comprises using another of the
accumulated discharge capacity value, the start and end
voltage and the internal discharge time value to identify
derated battery cells.
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Application 12/429,379
11. A method for dynamic discharging of a battery to detect
derated battery cells within a system comprising an expandable
redundant array of inexpensive disks controller, the method
comprising:
determining an accumulated discharge capacity value for the
battery, the accumulated discharge capacity corresponding to
(V * V * t) / R, where V is a voltage of the battery, t is a
discharge time for the battery and R is a constant,
determining an internal discharge time value for the battery;
assigning one of the accumulated discharge capacity value and
the internal discharge time value as a fixed value;
using another of the accumulated discharge capacity value and
the internal discharge time value to identify derated battery
cells, derated battery cells corresponding to battery cells having
less than a predefined amount of discharge capacity after a
number of designated charge/discharge cycles after a defined
period of time; and,
determining start and end voltage for the battery; and wherein
the assigning the fixed value comprises assigning one of the
accumulated discharge capacity value, the start and end voltage
and the internal discharge time value as the fixed value;
the using another further comprises using another of the
accumulated discharge capacity value, the start and end voltage
and the internal discharge time value to identify derated battery
cells.
Appeal Br. 8, 10 (Claims App.).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claim 11 is rejected under 35U.S.C. § 101 as directed to an
abstract idea. Final Act. 2—3.
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Application 12/429,379
2. Claims 1,3,5, 6, 8, and 10 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Ochiai et al. (US 6,294,894 Bl; iss. Sept. 25,
2001) (hereinafter “Ochiai”). Id. at 3—11.
3. Claims 2 and 7 are rejected under 35 U.S.C. § 103(a) as
obvious over Ochiai in view of Barsukov (US 2009/0248331 Al, pub. Oct.
1, 2009) (hereinafter “Barsukov”). Id. at 12—14.
4. Claim 11 is rejected under 35 U.S.C. § 103(a) as obvious over
Ochiai in view of Wiley et al. (US 6,031,354, iss. Feb 29, 2000) (hereinafter
“Wiley”). Id. at 1^U19.
DISCUSSION
Rejection 1. The Examiner rejected claim 11 as directed toward
patent ineligible subject matter. Id. at 2—3. Claim 11 requires, in part,
“determining an accumulated discharge capacity value for the battery.”
Appeal Br. 10 (Claims App.). The claim further requires that the claimed
discharge capacity correspond to “(V * V * t) / R where V is a voltage of the
battery, t is a discharge time for the battery and R is a constant.” Id. The
Examiner determined that both of the foregoing limitations are directed to an
abstract idea based on a mathematical relationship or formula. Final Act. 3;
Answer 3.
Appellants argue that the subject matter of claim 11 is more like that
found to be patentable in Diamond v. Diehr,2 than that found to be
unpatentable in Alice Corp. v. CIS Banklnt 7.,3 and further is similar to
hypothetical claims taught to be patentable in the Patent Office’s “July 2015
2 450 U.S. 175 (1981).
3 573 U.S. _, 134 S. Ct. 2347 (2014).
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Application 12/429,379
update on Patent Eligibility.” Appeal Br. 3-4. Appellants additionally argue
that even if the present claims are determined to be directed to an abstract
idea, the claims provide additional detail sufficient to transform the claims
into a patent-eligible application. Id. at 4.
Section 101 defines the scope of patent-eligible subject matter as “any
new and useful process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof.” 35U.S.C. §101. To this broad
universe of eligible subject matter, the Supreme Court has long-recognized
an exception: laws of nature, natural phenomena, and abstract ideas are not
patent-eligible because they represent “the basic tools of scientific and
technological work.” Ass ’n for Molecular Pathology v. Myriad Genetics,
Inc., 133 S. Ct. 2107, 2116 (2013) (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 71 (2012)). Permitting patent
protection for these ideas could thwart the purpose of the patent laws
because it “might tend to impede innovation more than it would tend to
promote it.” Alice Corp. Pty. v. CLS BankInt’l, 134 S. Ct. 2347, 2354
(2014) (quoting Mayo, 566 U.S. at 71).
The “framework for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts” comprises two steps. Id. at 2355. The first
step requires us to “determine whether the claims at issue are directed to one
of those patent-ineligible concepts.” Id. If they are, we must then analyze
whether the claim elements, either individually or as an ordered
combination, contain an “inventive concept” that “‘transform[s] the nature
of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S.
at 72, 78).
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As a preliminary matter, we note that claim 11 is directed to a process,
which is one of the statutory categories of invention enumerated in Section
101. Next, we proceed to the first step of the two-step inquiry taught by
Mayo\ whether claim 11 is directed to any judicial exception to patent
eligibility. The claim is directed to determining an accumulated discharge
capacity value for a battery where the accumulated discharge capacity
corresponds to a mathematical equation, determining an internal discharge
time value for the battery, assigning one of the foregoing values as a fixed
value while using the other value to identify “derated” cells, and determining
a start and end voltage for the battery. Appeal Br. 10 (Claims App.). These
limitations set forth a judicial exception because mathematical relationships
have been characterized by the courts as abstract ideas.
Next, the claim as a whole is analyzed to determine whether any
element, or combination of elements, is sufficient to “transform” the claimed
abstract idea into a patent-eligible application. Alice, 134 S.Ct. at 2357.
Taken alone, none of the additional elements amounts to significantly more
than the exception. Determining an accumulated discharge capacity value
and internal discharge time value for a battery is mere data gathering. Nor
can the assignment of one value to be a fixed value while using another
value for comparative purposes (derated or not derated), or the determination
of a voltage, be said to transform the abstract idea into something
significantly more than the exception.
This case is somewhat similar to Parker v. Flook, 437 U.S. 584
(1978). There the Court found a claim which “consists of three steps: an
initial step which merely measures the present value of the process variable
(e. g., the temperature); an intermediate step which uses an algorithm 1 to
calculate an updated alarm-limit value; and a final step in which the actual
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Application 12/429,379
alarm limit is adjusted to the updated value” to be ineligible subject matter.
Parker v. Flook, 427 U.S. at 585.
Accordingly, Appellants have not shown the Examiner’s rejection of
claim 11 as directed to unpatentable subject matter to be erroneous.
Rejection 2. The Examiner rejected claims 1,3,5, 6, 8, and 10 as
anticipated by Ochiai. Final Act. 3—11. Appellants allege error on several
bases. First, they assert that “there is no disclosure or suggestion within the
cited portion of Ochiai” teaching that “assigning the fixed value comprises
assigning one of the accumulated discharge capacity value, the start and end
voltage and the internal discharge time value as the fixed value” as required
by claims 1 and 6. Appeal Br. 5.
In the Final Rejection, the Examiner finds as follows:
the assigning the fixed value comprises assigning one of the
accumulated discharge capacity value (col. 5 lines 50 - 53
examiner’s note: Total voltage service capacity gets integrated
into Program 7a), the start and end voltage and the internal
discharge time value as the fixed value ([Ochiai]4 Fig. 7 col. 5
lines 50 - 53 Examiner’s note: full charge to final discharge
voltage)
Final Act. 5 (emphasis omitted).
Figure 7 of Ochiai, cited by the Examiner, depicts discharge from a
voltage of 4.2V to 3.0V. The Specification describes the figure as showing
the “relation among total service capacities for discharge from full charging
to the final discharge voltage of 3.0 V at the specific values of discharge
current.” Ochiai 10:38-40. The Specification further provides that
4 In the Final Rejection, the Examiner refers to “Ki Fig. 7.” As there is no
Ki reference at issue in the present matter, we construe this to refer to
Ochiai.
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“[although not specifically shown in FIG. 7, the integrated quantities Q„o,
Q„i and Q„2 of discharged electricity are likewise obtained for 3.2 V.” Id.
10:45—47. This teaches a fixed “start and end voltage” (4.2V and 3.0V).
Accordingly, Appellants have not shown reversible error in the
Examiner’s finding that Ochiai discloses “assigning the fixed value
comprises assigning one of the accumulated discharge capacity value, the
start and end voltage and the internal discharge time value as the fixed
value.”
For their second argument, Appellants argue that “merely identifying
a service capacity of a battery cell is not a disclosure or suggestion of
identifying derated battery cells (i.e., battery cells whose capacity is below a
defined threshold after a number of designated charge/discharge cycles after
a defined period of time)” as required by claims 1 and 6. Appeal Br. 6.
In support of this argument, Appellants merely identify the element,
quote a portion of the Final Rejection, and state that the Examiner’s findings
are insufficient. Id. at 5—6. This fails to comply with Patent Office Rules
which require that the Appeal Brief include “[t]he arguments of appellant
with respect to each ground of rejection, and the basis therefor, with
citations of the statutes, regulations, authorities, and parts of the Record
relied on. The arguments shall explain why the examiner erred as to each
ground of rejection contested by appellant.” 37 C.F.R. § 41.37(c)(l)(iv).
Here, there is no explanation of Appellants’ contention as to “why the
examiner erred.”
Further, claims 1 and 6 indicate that a derated battery is one “having
less than a predefined amount of discharge capacity after a number of
designated charge/discharge cycles after a defined period of time.” Appeal
Br. 8 (Claims App.). Ochiai explains that “a rechargeable battery
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Application 12/429,379
deteriorates upon repetition of charging and discharge cycles, total service
capacity of the rechargeable battery gradually decreases due to this
deterioration of the rechargeable battery.” Ochiai 5:42-45. Ochiai further
teaches to use “four tables 71, 72, 73 and 74 corresponding to the battery
deterioration degrees L of 1, 2, 3 and 4, respectively.” Ochiai 6:39—41
(emphasis omitted). Additionally, Ochiai provides that, “[i]n each of the
tables, a total service capacity of the single battery cell 1 for discharge up to
the final discharge voltage of 3.0 V at the value of 0.2 c of discharge current
and at the temperature of 25° C. as shown in FIG. 4 is employed as the
reference total service capacity Qo.” Ochiai 6:67—7:5 (emphasis omitted).
The claim indicates that a derated cell is one whose capacity is below
a defined threshold. In Ochiai, the defined threshold is that used to
designate a battery cell as L4 (or other deterioration level). Accordingly,
Appellants have not shown reversible error in the Examiner’s finding that
Ochiai teaches identifying derated battery cells.
For their third argument, Appellants assert that “nowhere within the
cited portion of Ochiai (nor anywhere else in Ochiai) is there any disclosure
or suggestion of derated battery cells corresponding to battery cells having
less than a predefined amount of discharge capacity after a number of
designated charge/discharge cycles after a defined period of time.” Appeal
Br. 6.
ft is correct that Ochiai does not use the term “derated.” Claims 1 and
6, however, indicates that a battery is derated where it has “less than a
predefined amount of discharge capacity after a number of designated
charge/discharge cycles after a defined period of time.” The Examiner
makes an unrebutted determination that “accumulation of Qn is based on
integrated quantities of discharged electricity value, which can be interpreted
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as discharge capacity” and further that Ochiai “determines deteriorated
capacity of the battery with Qn value, which is stored and can be retrieved
from the memory 7e.” Answer 3.
Accordingly, Appellants have not shown reversible error in the
Examiner’s finding that Ochiai discloses “derated battery cells
corresponding to battery cells having less than a predefined amount of
discharge capacity after a number of designated charge/discharge cycles
after a defined period of time.”
To the extent that the second and third arguments are considered to be
a single argument, we reach the same conclusion as explained above.
Appellants do not present separate arguments with respect to
dependent claims 3, 5, 8, and 10. Accordingly, they stand rejected for the
reasons stated above.
Rejections 3 and 4. The Examiner rejected claims 2 and 7 as obvious
over Ochiai in view of Barsukov and claim 11 as obvious over Ochiai in
view of Wiley. Final Act. 12—19. Appellants do not present separate
argument concerning this rejection; rather, they rely upon their arguments
presented in regard to claims 1 and 6. Appeal Br. 6. As such arguments
were not found to be persuasive, we sustain the rejections of claims 2, 7, and
11 as obvious.
NEW GROUND OF REJECTION
We enter a new ground of rejection of claim 1 under 35U.S.C. § 101,
pursuant to our authority under 37 C.F.R. § 41.50(b).
We determined claim 11 to be directed to patent ineligible subject
matter, supra. Just as claim 11 is subject to rejection under 35U.S.C. § 101,
claim 1 is likewise directed to patent ineligible subject matter and should
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also have been rejected under Section 101. Claim 1 recites each of the same
steps as claim 11 though without the specific mathematical relationship in
the step of “determining an accumulated discharge capacity value for the
battery.” In our view, therefore, claim 1 suffers from the same deficiency as
claim 11 with regard to non-compliance with Section 101.
CONCLUSION
The rejection of claim 11 as directed to unpatentable subject matter
under 35 U.S.C. § 101 is affirmed. The rejection of claims 1—3, 5—8, 10, and
11 as obvious under 35 U.S.C. § 103(a) is affirmed.
We enter a new ground of rejection for claim 1 under 35 U.S.C. § 101.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must
exercise one of the following two options with respect to the new ground of
rejection to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new Evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner. The new ground of rejection
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is binding upon the examiner unless an amendment or new Evidence not
previously of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the decision. Should
the examiner reject the claims, appellant may again appeal to the Board
pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard under
§41.52 by the Board upon the same Record. The request for rehearing must
address any new ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds upon which rehearing is
sought.
Further guidance on responding to a new ground of rejection can be
found in the MPEP § 1214.01.
TIME TO RESPOND
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
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