Ex Parte Zhu et al

Board of Patent Appeals and Interferences

Mar 24, 2011

10897695 (B.P.A.I. Mar. 24, 2011)

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

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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
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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.
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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).
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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.
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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.
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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,
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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.
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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)).
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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
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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
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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