INTERNATIONAL BUSINESS MACHINES CORPORATION

Patent Trials and Appeals Board

Mar 8, 2021

2019006052 (P.T.A.B. Mar. 8, 2021)

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.
15/077,235 03/22/2016 Julian de Hoog YOR920160103US1(163-1270) 1078
49267 7590 03/08/2021
Tutunjian & Bitetto, P.C.
401 Broadhollow Road
Suite 402
Melville, NY 11747
EXAMINER
COLE, BRANDON S
ART UNIT PAPER NUMBER
2122
NOTIFICATION DATE DELIVERY MODE
03/08/2021 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):
docketing@tb-iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JULIAN de HOOG, FETAMEH JALALI and ARUN
VISHWANATH
____________________

Appeal 2019-006052
Application 15/077,235
Technology Center 2100
____________________

Before ROBERT E. NAPPI, JASON J. CHUNG, and JOHN A. EVANS
Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1 through 20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). According to Appellant, International Business Machines
Corporation, is the real party-in-interest. Appeal Br. 3.
Appeal 2019-006052
Application 15/077,235

2
CLAIMED SUBJECT MATTER
The claims relate generally to mobile energy storage system and a
method for supplying power to entities at disparate locations. The system
includes a set of vehicles each of the vehicles having one or more batteries
for storing power and supplying power at the locations. Spec. Abstract.
Claim 1 is reproduced below.
1. A mobile energy storage system for supplying power
to buildings at disparate locations, the system comprising:
a set of vehicles, each including:
a battery set having one or more batteries for
storing power; and
a power connector having an end connected to the
battery set and another end for
connecting to a power transfer switch at the buildings;
and a central server for scheduling vehicles in the set to provide
power to the buildings responsive to energy charging requests
issued by the buildings.

EXAMINER’S REJECTIONS2
The Examiner rejects claims 1 through 3, 5, 8, 9, 11 through 13, and
16 through 20 under 35 U.S.C. § 103 as unpatentable over the combined
teachings of Jammer (US 2012/0271758 A1), and Bridges (US
2009/0040029 A1). Final Act. 2–6.
The Examiner rejects claims 1 through 20 under 35 U.S.C. § 103 as
unpatentable over the combined teachings of Sosinov (US 9,592,742 B1),

2 Throughout this Decision we refer to the Appeal Brief filed October 19,
2018 (“Appeal Br.”); Final Office Action mailed July 6, 2018 (“Final Act.”);
and the Examiner’s Answer mailed February 28, 2019 (“Ans.”).
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Application 15/077,235

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and Bridges. Final Act. 6–11.

ANALYSIS
We have reviewed Appellant’s arguments in the Appeal Brief, the
Examiner’s rejections, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of all of the claims under 35 U.S.C. § 103.

Rejection based upon Jammer and Bridges
Appellant argues that the Examiner erred in finding that the skilled
artisan would not combine Jammer and Bridges. Appeal Br. 11–16.
Specifically, Appellant asserts that Jammer is concerned with recharging
electric vehicles in transit and that it is counterintuitive and not taught by
Jammer that buildings could be recharged. Appeal Br. 11–13. Further,
Appellant asserts Jammer teaches away from the limitations of independent
claims 1 and 19, as recharging a building is not equivalent to charging an
electric car. Appeal Br. 13. Appellant argues “the teachings of Bridges,
Jammer is explicitly directed to ‘real-time system and method for tracking,
locating and recharging electric vehicles IN TRANSMIT’ (Jammer,
preamble, emphasis added), while claims 1 and 19 (and allegedly Bridges)
are directed to recharging a STATIONARY object, i.e., a building.”
Appeal Br. 14 (emphasis original).3

3 We note that Appellant argues claims 1 through 3, 5, 8, 9, 11 through 13,
and 16 through 20 together as a group. Accordingly, we select claim 1 as
representative of the group of claims rejected over Jammer and Bridges.
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Application 15/077,235

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The Examiner finds, that Jammer teaches mobile energy storage
system to supply power to disparate locations, each with battery set and
finds that Bridges teaches using electric vehicle batteries (mobile energy
storage systems) to provide power to the power grid and people’s homes
during a blackout. Final Act. 3 (citing Jammer, Figs. 1, 2A, 3, ¶¶219, 224,
290, 292, 297, 325, and Bridges ¶48). Further the Examiner states
[e]lectrical energy storage systems can be incorporated in a
vehicle or be part of a person's home as taught in Bridges et al.
Also, such energy storage systems can be considered a power
source or a load ... meaning that the home can power an
auxiliary power source or that the auxiliary power source can
power a home (i.e. can power a home when it's a blackout).
Answer 4.
Appellant’s arguments have not persuaded us of error in the
Examiner’s conclusion the skilled artisan would combine the references. As
discussed above the Examiner finds that that Jammer teaches mobile power
sources and Bridges teaches using mobile power sources to provide power to
buildings. We have reviewed the teachings of Jammer and Bridges and
concur with these findings.4 We disagree with Appellant’s augments that
the Examiner’s rejection is in error as the skilled artisan would not use
Jammer to recharge a building, as the Examiner is not modifying Jammer to
recharge a building. Rather, the Examiner is relying upon Jammer’s mobile
power supplies to provide power to buildings as taught by Bridges. We
consider the combination to represents using known mobile power sources

4 We further note that while the Examiner has not relied upon Bridges to
teach these limitations; Bridges also teaches in figure 11 two battery
powered vehicles providing power to a building through a transfer switch
and in Figure 1 that a central server can be used to schedule power transfer.
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Application 15/077,235

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to power a load in a building. “The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007). Further, Appellant’s arguments that the references teach away
from the combination is not persuasive of error.
[A] reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was
taken by the applicant. The degree of teaching away will of
course depend on the particular facts; in general, a reference
will teach away if it suggests that the line of development
flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant.

In re Gurley, 27 F.3d 551, 553, (Fed. Cir. 1994) (citing United States v.
Adams, 383 U.S. 39, 52, (1966)). The Appellant has not cited to any
teaching, nor do we find any, in either Jammer or Bridges which discourages
or would lead in a divergent path from the claimed invention. Accordingly,
we are not persuaded of error in the Examiner’s obviousness rejection based
upon Jammer and Bridges and we sustain the Examiner’s rejection.

Rejection based upon Sosinov and Bridges
Appellant argues that the Examiner erred in finding that the skilled
artisan would not combine Sosinov and Bridges. Appeal Br. 17–25.
Appellant’s arguments directed to this rejection are similar to those
discussed above in that Appellant asserts that Sosinov is concerned with
recharging electric vehicles in transit and that it is counterintuitive and not
taught by Sosinov that buildings could be recharged. Appeal Br. 18–21.
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Further, Appellant asserts Jammer teaches away from the limitations of
independent claims 1 and 19, as recharging a building is not equivalent to
charging an electric car. Appeal Br. 22–25. 5
We are not persuaded of error in the Examiner’s rejection by these
arguments. The Examiner finds that Sosinov teaches mobile power sources
and Bridges teaches using mobile power sources to provide power to
buildings. Final Act. 6–7. We have reviewed the teachings of Jammer and
Bridges and concur with these findings. Similar, to our discussion above we
disagree with Appellant’s augments that the Examiner’s rejection is in error
as the skilled artisan would not use Sosinov to recharge a building, as the
Examiner is not modifying Sosinov to recharge a building. Rather, the
Examiner is relying upon Sosinov’s mobile power supplies to provide power
to buildings as taught by Bridges. Further, Appellant’s arguments that the
references teach away from the combination is not persuasive of error. The
Appellant has not cited to any teaching, nor do we find any, in either
Sosinov or Bridges which discourages or would lead in a divergent path
from the claimed invention. Accordingly, we are not persuaded of error in
the Examiner’s obviousness rejection based upon Sosinov and Bridges and
we sustain the Examiner’s rejection.

5 We note that Appellant argues claims 1 through 20 together as a group.
Accordingly, we select claim 1 as representative of the group of claims
rejected over Sosinov and Bridges.
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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–3, 5, 8, 9,
11–13, 16 –
20
103 Jammer,
Bridges
1–3, 5, 8,
9, 11–13,
16 –20

1–20 103 Sosinov,
Bridges
1–20
Overall
Outcome
1–20
AFFIRMED