Gang Ji et al.

Patent Trials and Appeals Board

Mar 27, 2020

13976093 - (D) (P.T.A.B. Mar. 27, 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.
13/976,093 07/15/2014 Gang Ji P42593US 4198
88032 7590 03/27/2020
Jordan IP Law, LLC
12501 Prosperity Drive, Suite 401
Silver Spring, MD 20904
EXAMINER
FAIRBANKS, BRENT ALAN
ART UNIT PAPER NUMBER
2862
NOTIFICATION DATE DELIVERY MODE
03/27/2020 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):
admin@jordaniplaw.com
info@jordaniplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GANG JI, ALEXANDER B. UAN-ZO-LI,
MAZEN G. GEDEON, JORGE P. RODRIGUEZ,
and BASAVARAJ B. ASTEKAR

Appeal 2018-006640
Application 13/976,093
Technology Center 2800
____________

Before JEFFREY B. ROBERTSON, MICHAEL G. McMANUS, and
SHELDON M. McGEE, Administrative Patent Judges.

McMANUS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant seeks review of the
Examiner’s decision to reject claims 28, 29, 31–33, 36, 38–42, 45–47, 49,
and 51–54.1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and issue a NEW GROUND OF REJECTION.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Intel
Corporation. Appeal Br. 3.
Appeal 2018-006640
Application 13/976,093

2
CLAIMED SUBJECT MATTER

The present application generally relates to “systems and methods of
enabling a battery system to intelligently provide its current support
capability include logic to determine current battery power status
information.” Abstract. In such method, “[t]he current battery power status
information may be compared with a set of programmed battery power
status information to determine a match.” Id.
Claim 28 is illustrative of the subject matter on appeal and is
reproduced below:
28. A computer-implemented method comprising:
receiving a support requirement related to a battery
system, wherein the battery system is a smart battery system
that includes a battery controller, a battery memory and a
battery interface associated with a battery charger, and wherein
the support requirement is selected from a plurality of distinct
battery power levels;
determining, via logic in the battery memory, current
battery power status information of the battery system, wherein
the battery power status information is based on one or more
battery power parameters including one or more voltage
parameters, one or more current parameters, and one or more
resistance parameters;
comparing, via logic in the battery memory, the current
battery power status information with a set of programmed
battery power status information to determine a match with a
member of the set, wherein the set of programmed battery
power status information is stored in the battery memory;
indicating, via logic in the battery memory, the current
battery power status information based on the match between
the current battery power status information and the
programmed battery power status information; and
Appeal 2018-006640
Application 13/976,093

3
indicating, via logic in the battery memory, whether the
support requirement can be satisfied based on the indicated
current battery power status information, wherein the battery
interface is set to reflect the battery power status information
based on the match including setting an interface register to a
value that corresponds to the programmed battery power status
information.

Appeal Br. 25 (Claims App.).
REFERENCES
The Examiner relies upon the following prior art:

Name Reference Date
Khodorkovsky et al.
(“Khodorkovsky”)
US 7,624,287 B2 Nov. 24, 2009
Svensson et al.
(“Svensson”)
US 2010/0219836 A1 Sept. 2, 2010
Martin et al. (“Martin”) US 2011/0063119 A1 Mar. 17, 2011

REJECTIONS
The Examiner maintains the following rejections:
1. Claims 28, 29, 31–33, 36, 38–42, 45–47, 49, and 51–54 are
rejected under 35 U.S.C § 101 as directed to ineligible subject
matter. Final Action mailed April 26, 2017 (“Final Act.”).
Final Act. 2–5.
2. Claims 28, 29, 31–33, 36, 38–42, 45–47, 49, and 51–54 are
rejected under 35 U.S.C § 103(a) (pre-AIA) as being
unpatentable over Martin in view of Khodorkovsky and further
Appeal 2018-006640
Application 13/976,093

4
in view of Svensson. Id. at 6–21.

DISCUSSION
Rejection 1. The Examiner rejects claims 28, 29, 31–33, 36, 38–42,
45–47, 49, and 51–54 as directed to patent ineligible subject matter.
Appellant argues these claims collectively. Appeal Br. 13–18. We
select claim 28 as representative and the remaining claims at issue will stand
or fall with claim 28. See 37 C.F.R. § 41.37(c)(1)(iv) (“When multiple
claims subject to the same ground of rejection are argued as a group or
subgroup by appellant, the Board may select a single claim from the group
or subgroup and may decide the appeal as to the ground of rejection with
respect to the group or subgroup on the basis of the selected claim alone.”).
The Examiner determines that independent claim 28 is directed to
abstract subject matter. Final Act. 2–4. More specifically, the Examiner
determines that the claim is directed to the abstract idea of determining
whether a battery can supply a requested amount of power. Id. at 2. With
respect to claim 28, the Examiner enumerates the following limitations as
reciting an abstract idea:
receiving a support requirement related to a battery
system, wherein the support requirement is selected from a
plurality of distinct battery power levels;
determining current battery power status information of
the battery system;
comparing the current battery power status information
with a set of programmed battery power status information to
determine a match with a member of the set;
Appeal 2018-006640
Application 13/976,093

5
indicating the current battery power status information
based on the match between the current battery power status
information and the programmed battery power status
information; and
indicating whether the support requirement can be
satisfied based on the indicated current battery power status
information, wherein the battery interface is set to reflect the
battery power status information based on the match.

Id. at 2–3.
The Examiner determines that the identified limitations of claim 28
correspond to concepts identified as abstract in certain prior judicial cases.
Id. at 3. The Examiner additionally finds that the nonabstract elements of
the claim, such as the battery system, are “recited at a high level of
generality and are well-known, routine and customary in the art.”
Appellant argues that the Examiner’s determination of ineligibility is
in error. Appeal Br. 13–18. First, Appellant argues that the limitations
identified by the Examiner “are not fundamental economic practices,
mathematical algorithms, or basic tools of scientific and technological
work.” Id. at 15. Appellant further argues that the claim, considered as a
whole, “is more akin to a physical process than an abstract idea.” Id.
Second, Appellant argues that the claimed methods, apparatus, and
systems are patent eligible because they improve an existing technological
process. Id. at 15–16.
A. Section 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
Appeal 2018-006640
Application 13/976,093

6
abstract ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank
International, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Services v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with
that framework, we first determine what concept the claim is “directed to.”
See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to
the concept of intermediated settlement, i.e., the use of a third party to
mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611
(2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept
of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; see also Bilski, 561 U.S. at
611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95
(1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67
(1972)). Concepts determined to be patent eligible include physical and
chemical processes, such as “molding rubber products” (Diamond v. Diehr,
450 U.S. 175, 191 (1981)); “tanning, dyeing, making waterproof cloth,
vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v.
Burden, 56 U.S. 252, 267–68 (1853))); and manufacturing flour (Benson,
409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Appeal 2018-006640
Application 13/976,093

7
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second part
of the Alice and Mayo framework, where “we must examine the elements of
the claim to determine whether it contains an ‘inventive concept’ sufficient
to ‘transform’ the claimed abstract idea into a patent-eligible application.”
Alice, 573 U.S. at 221 (quotation marks omitted). “A claim that recites an
abstract idea must include ‘additional features’ to ensure ‘that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea].’” Id.
(quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer
implementation[] fail[s] to transform that abstract idea into a patent-eligible
invention.” Id.
B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of section 101. 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
Appeal 2018-006640
Application 13/976,093

8
(“2019 Revised Guidance”).2 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.”
2019 Revised Guidance at 51; see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).3
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:

2 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
3 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
Appeal 2018-006640
Application 13/976,093

9
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.

2019 Revised Guidance, 84 Fed. Reg. at 52–56.

C. Analysis

Revised Guidance Step 1
The first step under the Revised Guidance entails considering whether
the claimed subject matter falls within one of the four statutory categories
permitted by statute. Claims may directed to “any new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
Claims 28, 29, 31, 32, 47, 49, and 51–54 are directed to methods. A
method falls within the scope of the term “process” for purposes of our
analysis. 35 U.S.C. § 100(b).
Claims 33, 36, 38, and 39 are directed to apparatuses. Appeal Br. 26–
27 (Claims App.). These claims require several “logic” elements. Id. The
Specification does not clearly define the term “logic” as used therein. The
Specification teaches that “battery status determination logic 215 may be
implemented in software, hardware or a combination of both.” Spec. 3. The
Specification further teaches as follows:
One or more aspects of at least one embodiment may be
implemented by representative instructions stored on a
machine-readable medium which represents various logic
Appeal 2018-006640
Application 13/976,093

10
within the processor, which when read by a machine causes the
machine to fabricate logic to perform the techniques described
herein. Such representations, known as “IP cores” may be
stored on a tangible, machine readable medium and supplied to
various customers or manufacturing facilities to load into the
fabrication machines that actually make the logic or processor.

Id. at 6. Thus, the claimed “logic” appears to be capable of implementation
as hardware or software. In either case, it falls within the scope of the term
“manufacture” as used in 35 U.S.C. § 101. See In re Beauregard, 53 F.3d
1583, 1584 (Fed. Cir. 1995).
Claims 40–42, 45, and 46 are to a “system” that includes a processor
and a smart battery system. Appeal Br. 27–28 (Claims App.). The Supreme
Court has defined the term “machine” as “a concrete thing, consisting of
parts, or of certain devices and combination of devices.” Burr v. Duryee, 68
U.S. (1 Wall.) 531, 570 (1863). The claimed systems fall within this
definition of “machine.”
Accordingly, the claims at issue are not ineligible under Step 1 of the
analysis required by the Revised Guidance.

Revised Guidance Step 2A, Prong 1
Under Step 2A, Prong 1 of the Revised Guidance, we must determine
whether claim 1, being directed to a statutory class of invention, nevertheless
recites a judicial exception.
In finding claim 1 to be ineligible, the Examiner determines that the
steps of “receiving a support requirement,” “comparing . . . the current
battery power status information,” “indicating . . . the current battery power
status information,” and “indicating . . . whether the support requirement can
be satisfied” recite a judicial exception. Final Act. 2–3.
Appeal 2018-006640
Application 13/976,093

11
Appellant argues that the claims do not recite abstract elements.
Appeal Br. 13–15. Appellant cites to the Board’s decision in US. Bancorp v.
Solutran, Inc.4 where a process that included receiving and scanning paper
checks was found to be “more akin to a physical process than an abstract
idea.” Appellant argues that, like Bancorp, the limitations at issue here “are
not fundamental economic practices, mathematical algorithms, or basic tools
of scientific and technological work.” Appeal Br. 15.
The Federal Circuit has held as follows regarding the collection,
analysis, and presentation of information:

Information as such is an intangible. Accordingly, we have
treated collecting information, including when limited to
particular content (which does not change its character as
information), as within the realm of abstract ideas. In a similar
vein, we have treated analyzing information by steps people go
through in their minds, or by mathematical algorithms, without
more, as essentially mental processes within the abstract-idea
category. And we have recognized that merely presenting the
results of abstract processes of collecting and analyzing
information, without more (such as identifying a particular tool
for presentation), is abstract as an ancillary part of such
collection and analysis.

Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1353-54 (Fed.
Cir. 2016) (citations omitted).
Here, “receiving a support requirement” is merely the receipt of
information indicating the power requirement of a certain mode of operation.
See Spec. 5. This is similar to the “collecting information” determined to be
abstract in Electric Power Group. Such an information collection step is

4 U.S. Bancorp v. Solutran, Inc., Case No. CBM2014-00076, 2014 WL
3943913, *6 (PTAB Aug. 7, 2014).
Appeal 2018-006640
Application 13/976,093

12
equivalent to a mental process. In addition, the “comparing . . . the current
battery power status information” limitation is similar to the analysis of
“information by steps people go through in their minds, or by mathematical
algorithms” determined to be abstract in Electric Power Group. Further, the
two “indicating” claim elements are similar to the mere presentation of
results held to be abstract in Electric Power Group. Similar to the above,
such steps are equivalent to mental processes. The Examiner’s
determination is consistent with the Guidance. See Revised Guidance 52
(regarding mental processes).
Accordingly, we determine that Appellant has not shown error in Step
2A, Prong 1 of the analysis.

Guidance Step 2A, Prong 2
Next, we address the second prong of Step 2A to determine whether
additional elements in the claim integrate the judicial exception into a
practical application. The Guidance indicates that where additional
(nonabstract) elements reflect an improvement in the functioning of a
computer or other technology, such improvement is indicative of the
additional elements being integrated into a practical application.
Here, the Examiner determines that claim 28 includes the “additional
elements/steps of a battery controller; a battery memory; a battery interface;
logic in the battery memory; and a processor.” Final Act. 4.
Appellant argues that the abstract elements and the additional
elements of claim 28, considered as a whole, “improve a technological
process (e.g., power management).” Appeal Br. 16. Appellant further
asserts that “Appellant’s features are specific or limiting recitations of
Appeal 2018-006640
Application 13/976,093

13
improved computer technology (e.g., smart batteries and intelligent power
management and effect an improvement of a technical field (e.g., electrical
device power supply)[)].” Id. This appears to be consistent with the
Specification. See, e.g., Spec. 1:4–7 (regarding use of power management
techniques to extend battery power); Fig. 6.
In the Answer, the Examiner does not squarely respond to Appellant’s
arguments regarding improvement of a technological process. Rather, the
Examiner determines that “all utility patent applications are directed to
solving a technological problem or improving a technological process.”
Answer 4.
In view of the foregoing, considered as a whole, we determine that
Appellant has shown that the additional elements in the claim integrate the
judicial exception into a practical application in the field of power
management. Accordingly, claim 28 is not “directed to” a judicial exception
and is not patent-ineligible on such basis.

Rejection 2. The Examiner rejects claims 28, 29, 31–33, 36, 38–42,
45–47, 49, and 51–54 as obvious over Martin in view of Khodorkovsky and
further in view of Svennson. Final Act. 6–21.
Appellant asserts that each of the independent claims (claims 28, 33,
40, and 47) includes certain common claim elements and argues the
independent claims as a group. Appeal Br. 18–19. Appellant further argues
that the rejection of the dependent claims should be reversed for the same
reasons as presented with regard to the independent claims. Id. at 23.
Accordingly, we select claim 28 as representative and the remaining claims
will stand or fall with claim 28.
Appeal 2018-006640
Application 13/976,093

14

Summary of the Rejection
The primary reference, Martin, is titled “User Interface for
Rechargeable Batteries.” Martin, code (54). In support of the rejection of
claim 28, the Examiner finds that Martin teaches all claim elements other
than the following:
wherein the battery power status information is based on
one or more battery power parameters including one or more
voltage parameters, one or more current parameters, and one or
more resistance parameters;

comparing, via logic in the battery memory, the current
battery power status information with a set of programmed
battery power status information to determine a match with a
member of the set, wherein the set of programmed battery
power status information is stored in the battery memory; and

wherein the battery interface is set to reflect the battery
power status information based on the match including setting
an interface register to a value that corresponds to the
programmed battery power status information.

Final Act. 8; see also Appeal Br. 25 (Claims App.).
The Examiner finds that Khodorkovsky teaches a power management
scheme having various predefined power consumption states and employing
a process of “validation” where parameters are examined and the appropriate
power consumption state is selected. Final Act. 8–9 (citing Khodorkovsky
3:58–61, 6:47–52). The Examiner finds that the foregoing discloses the
claimed step of comparing the battery power status information with a set of
programmed battery power levels.
The Examiner further finds that Khodorkovsky teaches a “state
manager 72 and hardware manager 74 [which] communicate the modified
Appeal 2018-006640
Application 13/976,093

15
set of parameters of the hybrid state to the appropriate software and
hardware components of GSS 10 for application.” Final Act. 9 (quoting
Khodorkovsky, 7:35–39). An operating parameter value is communicated to
a component “which may store the value, e.g., in one or more hardware
registers.” Id. (quoting Khodorkovsky 4:6–9). The Examiner finds that the
foregoing discloses the claim element requiring that the battery interface
reflect the battery power status information based on the match between the
battery status and the set of predefined power levels. Id. at 9.
The Examiner additionally finds that Svensson teaches a method
where battery power status information is based on one or parameters
including one or more voltage parameters, one or more current parameters,
and one or more resistance parameters. Id. at 10.

Argument and Analysis
Appellant argues that the rejection is in error on several bases.
Appeal Br. 19–23. First, Appellant argues that Martin fails to teach
“receiving a support requirement related to a battery system” and “wherein
the battery system is a smart battery system.” Id. at 19–21. Appellant
contends that the Final Action fails even to make any specific allegation
related to these claim elements. Id. at 19–20.
In the Answer, the Examiner indicates that “[t]he Examiner's position
is that the Final Office action did not rely on Martin to teach these
limitations (see Final Office Action, page 7). Rather, the combination of
Martin, Khodorkovsky, and Svensson disclose the recited features as
discussed below.” Answer 7.
Appeal 2018-006640
Application 13/976,093

16
As a threshold matter, we consider the meaning of the terms “support
requirement” and “power levels.” Claim 28 requires “receiving a support
requirement related to a battery system . . . wherein the support
requirement is selected from a plurality of distinct battery power levels.”
Appeal Br. 25 (Claims App.) (emphasis added).
The Specification does not clearly define the term “support
requirement.” Indeed, the Specification does not even use such term. The
Specification does, however, use the terms “support” and “requirement.”
The Specification teaches an embodiment as follows:
For example, the CPU 105 may determine that, in order to
perform operations in certain operation mode (e.g., turbo
mode), the CPU 105 may need the battery system 150 to be
able to support that operation mode (e.g., satisfy power
requirement for the turbo mode). The CPU 105 may send the
requirement to the embedded controller 500 via the bus 510.
The embedded controller 500 may in turn send the requirement
to the battery system 150. The battery system 150 may then
cause the battery status determination logic 215 to determine
the current battery power status information. The battery system
150 may then compare the current battery power status
information with the requirement to determine if the
requirement may be satisfied. The battery system 150 may
then set the interface register 305 accordingly. This passive
mode may be referred to as a negotiation mode where the
embedded controller 500 negotiates with the battery system 150
until the battery system 150 indicates that it can support the
requirement.

Spec. 4:33–5:12.
With regard to “power levels,” the Specification teaches that Figure 4
“may illustrate the power modes that the computer system 100 may operate
based on the power level that the battery system 150 can support. For
example, when the bit values of the interface register 305 are ‘111’, the
Appeal 2018-006640
Application 13/976,093

17
computer system 100 may operate at maximum power or turbo mode.”
Spec. 4:9–12. Figure 4 of the Specification is reproduced below.

Figure 4 is a table that shows various interface register values associated
with certain battery power levels and system power levels.
Considering the foregoing teachings of the Specification, as well as
the manner in which the term “support requirement” is used in the claims,
we determine for purposes of this appeal that the term “support requirement”
means a battery power level indicative of an amount of electrical power
required for a computer system to operate in a desired power mode. Id. at
4:1–10.
The Examiner does not clearly direct us to any teaching of a “support
requirement” in any reference in the Final Action or in the Answer. See
Final Act. 6–7; see also Answer 7. Accordingly, Appellant has shown error
in this regard.
Appeal 2018-006640
Application 13/976,093

18
We further find that Khodorkovsky teaches as follows regarding
receiving a support requirement:
Next, a predefined operating parameter set representing a
desired power consumption state is selected from table 32
(S404). This is achieved by setting the read pointer (RPTR)
34 to point to the state descriptor in table 32 (FIG. 2) which
has the desired associated power consumption level. The
desired level is, for example, determined by the event manager
70 on the basis of current operating conditions at the GSS 10
and/or host device and/or on the basis of one or more detected
events. In one embodiment such a detected event may be, for
example, a selection made by a user, an application or the
operating system. Current operating conditions that are
considered may include, e.g., whether or not high resolution
video is being displayed by the device and whether or not
multiple displays are being driven by the device. Examples of
relevant events may be a detected disconnection from an
alternating current power source and switchover to battery
power or a period of user inactivity. A person of ordinary skill
in the art will appreciate that many other conditions and events
could conceivably be considered for the purpose of selecting a
desired power consumption level and corresponding state. Once
selected, the desired state is communicated by the event
manager 70 to the state manager 72 (FIG.1).

Khodorkovsky 6:9–32.
Figure 2 of Khodorkovsky is reproduced below.

Appeal 2018-006640
Application 13/976,093

19
In regard to Figure 2, Khodorkovsky teaches that “[s]tate table 32, which is
illustrated in greater detail in FIG. 2, is a table in host device (CPU) memory
which stores descriptors for each of a set of N predefined power
consumption states, where N is a positive integer greater than one.”
Khodorkovsky, col. 3:58–61. Khodorkovsky further teaches that “each of
the state descriptors in table 32 [Figure 2] describes a single power
consumption state.” Id. at col. 3:62–63.
Thus, the “support requirement” of the present Specification (and
claims) and the “state descriptor” of Khodorkovsky describe a battery power
level that corresponds to an amount of electrical power required for a system
to operate in a desired power mode. Accordingly, we find that the “state
descriptor” of Khodorkovsky is equivalent to the “support requirement” of
the claims.
Appellant additionally contends that Martin fails to teach “wherein the
battery system is a smart battery system that includes a battery controller, a
battery memory and a battery interface associated with a battery charger.”
Appeal Br. 19–21. Appellant argues that the Examiner “fails to make any
specific allegations related to these features.” Id. at 19–20. This is not
accurate. The Examiner makes findings relating to this claim element in the
Final Action. Final Act. 6–7.
Martin teaches an embodiment as follows:
A rechargeable battery includes a housing having an external
surface; a battery cell within the housing, the battery cell having
a state of charge, and a state of health; a processor disposed
within the housing, the processor configured to store and
display the state of charge and the state of health of the battery
cell; and a user interface region provided on the external
surface of the housing, the user interface region including a
plurality of visual components configured to provide a plurality
Appeal 2018-006640
Application 13/976,093

20
of visual cues relating to the charging status, the state of
charge, and the state of health of the battery cell.

Martin ¶ 9 (emphasis added). Accordingly, Martin teaches a smart battery, a
battery controller (microprocessor 604 (id. ¶ 32–33)), a battery memory (the
processor that stores the state of charge), and a battery interface (user
interface).
Appellant does not allege error in the Examiner’s stated reason to
combine. Appeal Br. 18–23; Final Act. 9–10.
In view of the foregoing, we determine that the cited references teach
the subject matter of the claims at issue. We specifically find that
Khodorkovsky teaches the “support requirement” limitation.
We, therefore, affirm the rejection of claims 28, 29, 31–33, 36, 38–42,
45–47, 49, and 51–54 as obvious over the cited prior art. Because our
findings differ from those of the Examiner, however, we designate our
affirmance of the Examiner’s obviousness rejection as a NEW GROUND
OF REJECTION.

Appeal 2018-006640
Application 13/976,093

21

CONCLUSION

The Examiner’s rejections are reversed. The Board issues a new
ground of rejection.
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed New
Ground of
Rejection
28, 29,
31–33,
36, 38–
42, 45–
47, 49,
51–54
101 Ineligible
subject matter
28, 29,
31–33, 36,
38–42,
45–47, 49,
51–54

28, 29,
31–33,
36, 38–
42, 45–
47, 49,
51–54
103 Martin,
Khodorkovsky,
Svensson
28, 29,
31–33, 36,
38–42,
45–47, 49,
51–54
28, 29, 31–
33, 36, 38–
42, 45–47,
49, 51–54
Overall
Outcome
28, 29,
31–33, 36,
38–42,
45–47, 49,
51–54
28, 29, 31–
33, 36, 38–
42, 45–47,
49, 51–54

This decision contains a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b), which provides that “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
Appeal 2018-006640
Application 13/976,093

22
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 proceeding
will be remanded to the examiner. The new ground of rejection
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.

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; 37 C.F.R. § 41.50(b)