FUJI ELECTRIC CO., LTD.

Patent Trials and Appeals Board

Aug 20, 2020

2019002134 (P.T.A.B. Aug. 20, 2020)

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.
14/329,024 07/11/2014 Takahiro MORI FUJI-0816 8104
37013 7590 08/20/2020
Rossi, Kimms & McDowell LLP
20609 Gordon Park Square
Suite 150
Ashburn, VA 20147
EXAMINER
LAU, KEVIN
ART UNIT PAPER NUMBER
2683
NOTIFICATION DATE DELIVERY MODE
08/20/2020 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):
EOfficeAction@rkmllp.com
mail@rkmllp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte TAKAHIRO MORI and AKIRA NAKAMORI
____________________

Appeal 2019-002134
Application 14/329,024
Technology Center 2600
____________________

Before JUSTIN BUSCH, LINZY T. McCARTNEY, and BETH Z. SHAW,
Administrative Patent Judges.

BUSCH, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant1 requests rehearing under 37 C.F.R. § 41.52 of our
Decision, mailed June 2, 2020 (“Decision”). In the Decision we, in part,
entered a new ground of rejection under 35 U.S.C. § 103 of claims 13 and
15. Appellant timely filed a Request for Rehearing (“Req. Reh’g” or
“Request”) on August 3, 2020.
We have reconsidered our Decision in light of Appellant’s Request for
Rehearing, but we decline to change the final disposition of the Decision for
the reasons discussed, infra.

1 We use the word “Appellant” to refer to “applicant" as defined in
37 C.F.R. § l.42(a). Appellant identifies Fuji Electric Co., Ltd. as the real
party in interest. Appeal Br. 1.
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DISCUSSION
On June 2, 2020, we issued our Decision in which we, in part, entered
a new ground of rejection of claims 13 and 15 under 35 U.S.C. § 103 as
obvious in view of Kumagai, Kajima, Hu, and Okumura. See Decision 18–
21. Appellant seeks rehearing of our Decision with respect to this new
ground of rejection under 35 U.S.C. § 103. Req. Reh’g 1 (“Appellant
respectfully submits that the Board misapprehended or overlooked the
following points in entering the new ground of rejection of claim 13, and
therefore respectfully requests reconsideration of the rejection of claim
13.”), 3 (“Appellant respectfully submits that the alarm signal generator
circuit according to claim 15 is allowable over the teachings of Kumagai,
Kajima, Hu, and Okumura at least for similar reasons as claim 13.”).
In particular, Appellant argues claims 13 and 15 prevent unnecessarily
increasing components because the claimed alarm signal is derived from a
single terminal. Req. Reh’g 2 (citing Spec. ¶ 74). Appellant does not appear
to contest our finding that Okumura teaches “the general concept of
encoding a signal to convey one value out of a set of choices.” See Decision
19; Req. Reh’g 2. Instead, Appellant asserts that does not provide a teaching
to arrive at what is recited in claim 13. Req. Reh’g 2. Appellant further
contends that, even if combined, the proposed combination does not provide
the benefit of the claimed alarm signal generator circuit. Req. Reh’g 2–3
(arguing Kajima’s circuit requires additional components).
We disagree with Appellant’s contention that we misapprehended or
overlooked the points Appellant asserts in the Request. Claims 13 and 15
depend from claims 1 and 2, and we explicitly addressed these points with
respect to claims 1 and 2. See Decision 4–5 (discussing the Examiner’s
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Application 14/329,024

3
findings), 11–12 (discussing the Examiner’s limited reliance on Kajima’s
and Hu’s teachings to account for Kumagai’s failure to explicitly disclose
includes two distinct portions, even though Kumagai discloses a single
alarm signal output from its single terminal that indicates both a phase and
failure type). We also implicitly considered these points in our new ground
of rejection. See Decision 19–20 (analyzing Okumura’s teachings and
finding Okumura cures any deficiency in the combination of Kumagai,
Kajima, and Hu with respect to using pulse width to indicate a failure type
and using a pulse number to indicate a failure phase).
As explained in our new ground of rejection, we agreed with (and
implicitly adopted) the Examiner’s findings that Kumagai, Kajima, and Hu
teach or suggest the subject matter recited in claims 1 and 2. In the interest
of clarity, our new ground of rejection adopts the Examiner’s findings and
conclusions with respect to base claims 1 and 2 and is based on these
findings and conclusions as well as our further explanations in the Decision.
See Decision 4–5, 11–12, 19–20.
Also for clarity, we briefly restate our findings here. “Kumagai
teaches determining a phase and type of failure in a device and generating an
alarm signal from which the phase and type of failure can be determined
including a pulse corresponding to the phase or type of failure.” Decision 4
(citing Final Act. 5); see Kumagai ¶¶ 2, 9, 56. “Kajima discloses an alarm
signal with two portions . . . and Hu teaches the general concept that two
pieces of information can be contained in one signal.” Decision 4. The
Examiner does not rely on, and neither do we, Kajima’s particular
components or modifying Kajima’s current track. Decision 11. Rather,
Kajima is relied on simply for the teaching that a failure phase and type may
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4
be communicated in two distinct signals or signal portions. Decision 11
(citing Final Act. 5–6 (citing Kajima ¶¶ 71, 77, 78)). In other words, the
proposed combination merely uses this teaching from Kajima to modify
Kumagai’s alarm signal to include two distinct portions and further uses
Hu’s explicit teaching that two different pieces of information can be
combined into two portions of a single signal. See Decision 11.
Although Appellant’s Request asserts our new ground of rejection
overlooked or misapprehended certain points, those points relate to the
findings and conclusions regarding independent claim 1, from which claims
13 and 15 ultimately depend. As explained in the new ground of rejection,
we rely on Okumura for its limited teaching that signals may be encoded in
different ways. Decision 19. The particular portions of the signals
conveying the failure type and phase are recited in claims 1 and 2, the
rejections of which we affirmed in the Decision. Decision 19.
CONCLUSION
We have considered Appellant’s Request, but we maintain our
Decision entering the new ground of rejection of claims 13 and 15 under
35 U.S.C. § 103 as obvious in view of Kumagai, Kajima, Hu, and Okumura.
DECISION SUMMARY
Outcome of Decision on Rehearing:

Claims 35 U.S.C § Reference(s)/Basis Denied Granted
13, 15 103 Kumagai, Kajima,
Hu, Okumura
13, 15

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Application 14/329,024

5
Final Outcome of Appeal after Rehearing:

Claims
Rejected 35 U.S.C. § References Affirmed Reversed
New
Ground
1, 2, 6 103 Kumagai, Kajima, Hu 1, 2, 6

3, 7 103 Kumagai, Kajima, Hu, Okumura 3, 7

4, 8 103 Kumagai, Kajima, Hu, Buxton 4, 8

9 103
Kumagai, Kajima,
Hu, Okumura,
Buxton
9

5, 10 103 Kumagai, Kajima, Hu, Isaka 5, 10

11 103
Kumagai, Kajima,
Hu, Okumura,
Isaka
11

12 103 Kumagai, Kajima, Hu, Buxton, Isaka 12

13, 14 103 Kumagai, Kajima, Hu, Grek, Buxton 13, 14

15, 16 103 Kumagai, Kajima, Hu, Grek, Isaka 15, 16

13, 15 103 Kumagai, Kajima, Hu, Okumura 13, 15
Overall
Outcome 1–12, 15, 16 13, 14 13, 15

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REHEARING DENIED