Ex Parte Zhu et alDownload PDFBoard of Patent Appeals and InterferencesMar 24, 201110897695 (B.P.A.I. Mar. 24, 2011) Copy Citation 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. 10/897,695 07/23/2004 Douglas Zhu 81102812; 67186-001 2009 26096 7590 03/25/2011 CARLSON, GASKEY & OLDS, P.C. 400 WEST MAPLE ROAD SUITE 350 BIRMINGHAM, MI 48009 EXAMINER PAIK, SANG YEOP ART UNIT PAPER NUMBER 3742 MAIL DATE DELIVERY MODE 03/25/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte DOUGLAS ZHU, JACOB MATHEWS, PAX MAGUIRE, and PATRICK PADGETT ____________ Appeal 2009-012375 Application 10/897,695 Technology Center 3700 ____________ Before: LINDA E. HORNER, JOHN C. KERINS, and MICHAEL W. O’NEILL, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-012375 Application 10/897,695 2 STATEMENT OF THE CASE Douglas Zhu et al. (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1, 9-13, 15-17, and 19-32, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE INVENTION Appellants’ claimed invention relates to a system and method for heating the electrical storage device in a vehicle. Spec. 1, para. [0001]. Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A system for heating a traction battery in a vehicle, the system being connectable to a first power source, comprising: a heater coupled to the traction battery; a switch for selectively coupling the first power source to the heater; and a controller that receives an input corresponding to a temperature of the traction battery and operates the switch based on at least the traction battery temperature, wherein the controller is powered by a second power source different from the first power source. THE REJECTIONS Appellants seek review of the following rejections: 1. Rejection of claims 1, 9-13, 17, 19-23, 27-30, and 32 under 35 U.S.C. § 103(a) as being unpatentable over Lee (US 5,281,792; issued Appeal 2009-012375 Application 10/897,695 3 January 25, 1994) and either Ijaz (US 5,948,298; issued September 7, 1999), or Sweetman (US 4,667,140; issued May 19, 1987).2 2. Rejection of claims 15, 16, 24-26, and 31 under 35 U.S.C. § 103(a) as being unpatentable over Lee, either Ijaz or Sweetman, and McMahan (6,002,240; issued December 14, 1999). CONTENTIONS AND ISSUES Appellants argue claims 1, 9-13, 17, 19-23, 27-30, and 32 as a group. App. Br. 7-9. We select claim 1 as the representative claim, and claims 9- 13, 17, 19-23, 27-30, and 32 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). The Examiner found that Lee discloses a system for heating a traction battery in a vehicle connectable to a first power source (combination power supply 10 and plug 11) that includes a heater (electrical resistance heater 8) coupled to a traction battery (vehicle storage battery 5), and a heater control circuit including a thermistor to control the battery heater. Ans. 3. The Examiner found that Lee does not explicitly disclose a controller that receives an input corresponding to the traction battery temperature to operate a switch to selectively couple the heater to the first power source, as called 2 While the Examiner’s Answer fails to list claims 19 and 23 in the heading of this ground of rejection, claims 19 and 23 are subject to this ground of rejection. See Ans. 2 (noting that “appellant’s statement of the grounds of rejection to be reviewed on appeal is correct”). Claims 19 and 23 were included in this rejection in the Office Action that is the subject of this appeal, and Appellants list claims 19 and 23 as subject to this ground of rejection. Office Action dated October 20, 2008, page 2; App. Br. 7. Appeal 2009-012375 Application 10/897,695 4 for in claim 1. Id. The Examiner found that Ijaz and Sweetman each disclose a controller that receives an input corresponding to a temperature of a battery and operates a switch to connect the power source to a heating element based on at least the battery temperature. Ans. 3. The Examiner concluded it would have been obvious to modify Lee to include a controller and a switch “to more effectively maintain a desired heating temperature to adequately warm the battery when necessary.” Ans. 4. Appellants do not challenge the Examiner’s findings as to scope and content of the references, do not point to any difference(s) between the proposed combination and the device of claim 1, do not assert that the proposed modification is beyond the level of skill in the art, and do not present any evidence of secondary considerations of non-obviousness. App. Br. passim; Reply Br. passim. Rather, Appellants argue that the proposed modification is not based upon a sufficient reason with rational underpinning to support a determination of obviousness. App. Br. 7-9; Reply Br. 1-2. The first issue presented by this appeal is whether the proposed combination is based upon a sufficient reason with a rational underpinning to explain why a person of ordinary skill in the art would have modified the system of Lee with the teaching of either Ijaz or Sweetman to reach the subject matter of independent claim 1. For the second ground of rejection, Appellants argue claims 15, 16, 24-26, and 31 as a group. App. Br. 9-10. We select claim 15 as the representative claim, and claims 16, 24-26, and 31 stand or fall with claim 15. See 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2009-012375 Application 10/897,695 5 The Examiner found that McMahan discloses a battery pack with a controller having a variety of modes including a sleep mode and a wake mode, wherein during a sleep mode, less or no power is consumed. Ans. 5. The Examiner concluded that it would have been obvious to further modify the proposed combination of Lee and either Ijaz or Sweetman to include the sleep and wake modes as disclosed by McMahan “to more efficiently control the heating temperature without overheating of the system and conserve the power source.” Id. Again, Appellants do not challenge the Examiner’s findings as to the scope and content of the references, do not point to any difference(s) between the proposed combination and the device of claim 15, do not assert that the proposed modification is beyond the level of skill in the art, and do not present any evidence of secondary considerations of non-obviousness. App. Br. passim; Reply Br. passim. Rather, Appellants argue that the Examiner has used improper hindsight in making the rejection. App. Br. 9. The second issue presented by this appeal is whether the proposed modification is based upon a sufficient reason with a rational underpinning to explain why a person of ordinary skill in the art would have further modified the proposed combination of Lee and either Ijaz or Sweetman to include the sleep and wake-up modes as disclosed by McMahan to reach the subject matter of independent claim 15. Appeal 2009-012375 Application 10/897,695 6 ANALYSIS Rejection of claims 1, 9-13, 17, 19-23, 27-30, and 32 under 35 U.S.C. § 103(a) as being unpatentable over Lee and either Ijaz or Sweetman Appellants contend that the proposed modification is not based upon a sufficient reason in part because it improperly changes the principle of operation of Lee from “a heater control circuit system to a controller based system.” App. Br. 8 (emphasis Appellants’); see also Reply Br. 2. In support of this assertion, Appellants contend that the proposed modification of Lee would require a “complete redesign” of Lee’s heating system. App. Br. 8; see also Reply Br. 1 (contending the modification would require a “substantial redesign” of Lee). We find this argument unpersuasive. A change in the principle of operation of the primary reference can, in some circumstances, render a modification nonobvious. For example, a modification suggested by an examiner was considered to be nonobvious where the modification (1) necessitated a substantial reconstruction of the primary reference, and (2) changed the basic principles under which the primary reference was designed to operate. In re Ratti, 270 F.2d 810, 811- 13 (CCPA 1959) (“This suggested combination of references would require a substantial reconstruction and redesign of the elements shown in [the primary reference] as well as a change in the basic principles under which the [primary reference] construction was designed to operate.” (emphasis added)).3 In Ratti, the proposed modification altered sealing in the primary 3 The Ratti case, which Appellants cite in the Appeal Brief, is discussed in MPEP § 2143.01(VI). App. Br. 8. Appeal 2009-012375 Application 10/897,695 7 reference from attaining sealing through a rigid, press-fit, interface between the components, to attaining sealing by providing a resilient interface between the components. Id. In Ratti, the modification suggested by the examiner would have required a change in the basic principle of operation of the primary reference because: (1) the primary reference seal “cannot function in the manner of appellant's seal”, and (2) “the resilient element of [the primary reference] is forced so tightly into the bore and is so ‘stiffened’ that the use of the resilient spring fingers of [the secondary reference] could not possibly increase the resilient deformation of the [primary reference] seal in the direction of the bore or increase the sealing engagement of the seal with the bore.” Id. at 813. Even assuming, arguendo, as Appellants assert, that the proposed modification would require a substantial reconstruction of Lee’s system and would change Lee from a heater control circuit system to a controller based system, the case at hand remains distinguishable from Ratti, because the proposed modification of Lee’s “heater control circuit system” with a “controller based system” would not change the basic principles under which Lee’s system was designed to operate. The controller of the proposed combination (e.g., Ijaz’s battery control module 80) receives an input corresponding to a temperature (from thermistors 81A-D) of a battery (battery 30) and operates a switch (relays 82, 84C and 84D) to couple a power source to the heater (heaters 40, 64C, Appeal 2009-012375 Application 10/897,695 8 and 64D).4 Ijaz, col. 5, ll. 6-12, 15-17, 30-33; fig. 6B. Lee discloses a system for heating and charging a vehicle battery having a heater control circuit comprised of a switch5, a temperature sensing element (e.g., a thermistor), and control logic for adjusting the triggering instances of the switch to control voltage across a heating element. Lee, col. 1, ll. 29-31; col. 2, ll. 14-21; figs. 1, 6. Lee’s control circuit receives an input (from resistors 43 and 44) corresponding to a temperature of the battery (vehicle storage battery 5) and operates a switch (triac switch 40) to couple the first power source (power supply 10) to the heater (electrical resistance heater 8) based on this temperature. Lee, col. 2, ll. 14-21; col. 3, ll. 36-39; col. 4, ll. 3, 27- 35; fig. 6. Thus, the controller of the proposed combination and Lee’s control circuit each receive an input corresponding to a temperature of the battery and operate a switch to couple a power source to a heater based on this temperature. In contrast to the facts in Ratti, discussed supra, Lee’s control circuit functions similarly to the controller in the system of the proposed combination, and thus, the proposed modification does not necessitate a change in the basic principle under which Lee operates. 4 Because Appellants do not contest the Examiner’s finding that Ijaz and Sweetman each disclose a controller that receives an input corresponding to a temperature of a battery and operates the switch based on at least the battery temperature we analyze the proposed combination using only Ijaz’s controller. See Ans. 3; App. Br. passim; Reply Br. passim. 5 Lee discloses this switch is a triac switch or a silicon controller rectifier. Lee, col. 2, ll. 14-15. Appeal 2009-012375 Application 10/897,695 9 Appellants’ argument that the references fail to provide an adequate reason for the proposed modification because the references fail to disclose that the additional temperature monitoring sensor would be more accurate than Lee’s resistors 43 and 44 for establishing the temperature of the heater is unconvincing in that it does not focus on the proper question. See App. Br. 8. “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious” the relevant inquiry is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Here, combining Lee’s system for heating and charging a vehicle battery with Ijaz’s or Sweetman’s controller for receiving an input corresponding to a temperature of a battery to operate a switch is merely the predictable use of prior art elements according to their established functions. Given this, we agree with the Examiner that the proposed combination would have been obvious. Appellants also argue that “Lee specifically teaches against the proposed modification.” Reply Br. 1; see also App. Br. 9. However, this conclusory assertion is unpersuasive because it is not accompanied by an explanation of what in Lee’s disclosure would have led a person of ordinary skill in the art in a direction divergent from that chosen by Appellants. See In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (“‘A reference may be said to teach away when a person of ordinary skill, upon reading the reference, . . . would be led in a direction divergent from the path that was taken by the applicant.’” (citation omitted)). Appeal 2009-012375 Application 10/897,695 10 As such, we sustain the rejection of independent claim 1, and claims 9-13, 17, 19-23, 27-30, and 32 fall with claim 1. Rejection of claims 15, 16, 24-26, and 31 under 35 U.S.C. § 103(a) as being unpatentable over Lee, either Ijaz or Sweetman, and McMahan Independent claim 15 is directed to a method of regulating an electrical storage device temperature in an electrical storage device heater system that includes the step of entering a sleep mode for a predetermined period of time that requires less power than a wake-up mode, and automatically moving between the sleep mode and the wake-up mode. Appellants repeat the arguments used against the rejection of independent claim 1. App. Br. 9. For the reasons explained in the analysis of that rejection, supra, those arguments are unconvincing here as well. Appellants further assert Lee does not disclose a need for the proposed modification or that such improvement would be advantageous and that “[t]here is no legitimate reason to add additional circuitry that would increase the complexity and costs associated with the Lee, et al. arrangement with no added benefit.” App. Br. 10; Reply Br. 1-2. Appellants thus contend the prior art does not provide a reason for the additional modification in view of McMahan, and that the Examiner’s rationale is improperly based upon hindsight reasoning. Id. Appellants’ argument that there is no legitimate reason for the proposed modification fails to address the reason provided by the Examiner. In particular, the Examiner concluded that it would have been obvious to modify the Lee and either Ijaz or Sweetman combination to include a sleep Appeal 2009-012375 Application 10/897,695 11 and a wake mode, as taught by McMahan, in order to conserve power. Ans. 5. This rationale is supported by the reference, and we conclude it is reasonable. See McMahan, col. 5, l. 49-col. 6, l. 2. Further, Appellants seem to be arguing that in order for the proposed combination to be proper, Lee must disclose a need for the proposed modification or Lee must disclose that such improvement would be advantageous. We cannot agree. The Supreme Court has rejected the rigid requirement of a teaching, suggestion or motivation to combine known elements in order to show obviousness. See KSR, 550 U.S. at 418. Because a person of ordinary skill in the art would recognize that McMahan’s technique for converting power through use of sleep and wake modes would improve the modified Lee system in the same way, and because Appellants have not alleged that such a modification would be beyond the level of skill in the art, we agree with the Examiner that this modification would have been obvious. See id. at 417 (“if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). As such, we sustain the rejection of claim 15, and claims 16, 24-26, and 31 fall with claim 15. CONCLUSIONS The proposed combination is based upon a sufficient reason with a rational underpinning to explain why a person of ordinary skill in the art Appeal 2009-012375 Application 10/897,695 12 would have modified the system of Lee with the teaching of either Ijaz or Sweetman to reach the subject matter of independent claim 1. The proposed modification is based upon a sufficient reason with a rational underpinning to explain why a person of ordinary skill in the art would have further modified the proposed combination of Lee and either Ijaz or Sweetman to include the sleep and wake-up modes as disclosed by McMahan to reach the subject matter of independent claim 15. DECISION We AFFIRM the Examiner’s decision to reject claims 1, 9-13, 15-17, and 19-32. 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). AFFIRMED nlk CARLSON, GASKEY & OLDS, P.C. 400 WEST MAPLE ROAD SUITE 350 BIRMINGHAM MI 48009 Copy with citationCopy as parenthetical citation