15010825 - (D) (P.T.A.B. Aug. 12, 2019)

Ke Zou et al.

Patent Trials and Appeals BoardAug 12, 2019

15010825 - (D) (P.T.A.B. Aug. 12, 2019)

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. 15/010,825 01/29/2016 Ke Zou 83598193 4181 28395 7590 08/12/2019 BROOKS KUSHMAN P.C./FGTL 1000 TOWN CENTER 22ND FLOOR SOUTHFIELD, MI 48075-1238 EXAMINER RO, BENTSU ART UNIT PAPER NUMBER 2837 NOTIFICATION DATE DELIVERY MODE 08/12/2019 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@brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KE ZOU and CHINGCHI CHEN ____________ Appeal 2018-007864 Application 15/010,8251 Technology Center 2800 ____________ Before KEVIN F. TURNER, DENISE M. POTHIER, and JOHN A. EVANS Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge TURNER. Opinion Concurring filed by Administrative Patent Judge POTHIER. TURNER, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a Final Office Action (mailed September 20, 2017, hereinafter “Final Act.”), rejecting claims 1–13. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is Ford Global Technologies, LLC, the assignee of this application. App. Br. 1. (Appeal Brief, filed Mar. 20, 2018, hereinafter “App. Br.”). Appeal 2018-007864 Application 15/010,825 2 THE CLAIMED SUBJECT MATTER The claims are directed to control of a gate voltage to an Insulated Gate Bipolar junction Transistor (IGBT) (Specification ¶¶ 1–2). Claims 1, 6, and 9 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter, with emphases added: l. A vehicle comprising: an inverter including an N-channel IGBT, with a freewheeling diode, coupled to a phase of an electric machine, and having a MOSFET coupling a local voltage with a gate of the IGBT and configured to transition from saturation to linear operation as a current flow direction through the diode switches from positive to negative while the IGBT initiates a current through the electric machine. REJECTIONS Claims 1–4 and 6–12 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Pace et al. (US 7,274,243 B2; issued Sept. 25, 2007, hereinafter “Pace”); Claims 1–4 and 6–12 are rejected in the alternative under 35 U.S.C. § 103(a) as being unpatentable over Pace; and Claims 5 and 13 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Pace in view of Nadd (US 5,672,992 B2; issued Sept. 30, 1997). Appeal 2018-007864 Application 15/010,825 3 ANALYSIS The rejections of claims 1–4 and 6–12 Appellants argue claims 1–4 and 6–12 together as a group. All of the rejections rely, at least in part, on Pace. See Final Act. 2–8; see generally Ans. (Answer, mailed May 22, 2018, hereinafter “Ans.”); App. Br 2–4. We select claim 1 as representative. Thus, claims 2–4 and 6–12 will stand or fall with claim 1. See C.F.R. § 41.37(c)(1)(iv). The Examiner relies on Figure 4 of Pace as disclosing the disputed elements of claim 1. Final Act. 2–5. The Examiner finds that “Pace’s inverter and its gate drive are identical to applicant’s inverter and its gate drive, except applicant’s inverter is to be used in a vehicle.”2 Id. at 3. The Examiner further finds: [t]he voltage transfer characteristic of semiconductor devices (FETs, IGBTs, etc.) is from ‘cutoff voltage’ to ‘active voltage’ to ‘saturation voltage’, or vice versa . . . [t]hus, when semiconductor device is switching from ‘On’ state to ‘Off’ state, it must pass through the active region. The converse is also true. The active region is a linear region of operation. Id. at 4. Appellants argue: Figure 8 of the instant application shows the different operation of 3 different MOSFETs . . . [a]nd each of these different MOSFETS can be schematically represented by MOSFET 906 of Figure 9 . . . [t]hat is, the schematic representation of a MOSFET does not completely describe its operational behavior. App. Br. 2–3. 2 We interpret this statement from Examiner as a finding that the term “vehicle” in the preamble is merely intended use. Appeal 2018-007864 Application 15/010,825 4 The Examiner clarifies that “the point that MOSFETs have different operating behavior is irrelevant to fact that all MOSFETs transition from saturation to linear operation as a current flow direction through the diode switches from positive to negative.” Ans. 12. Appellants reply that: the Examiner’s Answer suffers from technical flaws. The examiner asserts that IGBT 20 receives a gate voltage from FET 120 as Motor 19 transitions from generator operation to motor operation . . . IGBT 20 transitions from cut-off through active operation to saturation while IGBT 20 initiates a current through Motor 19. This does not suggest the claimed limitations. Reply Br. 2 (Reply Brief, filed July 23, 2018, hereinafter “Reply Br.”). We agree that a MOSFET must transition from cutoff operation to active/linear operation to saturation operation and vice versa. Final Act. 4 (citing Pace, Fig. 4); Ans. 9–12 (citing Pace, Fig. 1). We acknowledge Appellants’ argument that different MOSFETs can have different operational behavior. App. Br. 2–3. However, we agree with Examiner that arguments directed towards specific operating behavior are irrelevant because the limitations presented in claim 1 do not require any specific operational behavior to distinguish the claim from the inherent behavior of all MOSFETs. Ans. 12. We further agree with Examiner that Figure 4 of Pace illustrates substantially identical behavior to the behavior of Appellants’ MOSFET for driving an IGBT as illustrated in Figure 9 of the Specification. Final Act. 3. We find Appellants have failed to present evidence distinguishing claim 1 from Pace, based on the limitations recited in claim 1. Finally, we find Appellants’ argument presented in the Reply Brief, regarding IGBT 20 switching from OFF to ON, does not address the rejection Appeal 2018-007864 Application 15/010,825 5 presented in the Final Action which expressly includes the IGBT switching from ON to OFF. Reply Br. 2; see also Final Act. 4. On this record, we find Appellants have failed to present substantive arguments and supporting evidence persuasive of Examiner error regarding the aforementioned disputed limitations. We have considered Appellants’ Reply Brief but find it unpersuasive in rebutting the Examiner’s responses. Because Appellants have failed to sufficiently rebut the Examiner’s specific underlying factual findings and ultimate legal conclusion of obviousness, Appellants have not established the Examiner erred in concluding Pace renders independent claim 1 unpatentable. Therefore, we sustain the rejection of claims 1– 4 and 6–12 under 35 U.S.C. § 103(a). Because we affirm the Examiner’s anticipation rejection of the claims, we do not reach the alternative obviousness rejection. See In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (declining to address a rejection of certain claims after upholding a rejection of those claims on other grounds). The rejection of claims 5 and 13 Appellants argue claims 5 and 13 “are patentable because they depend from one of the independent claims.” App. Br. 4. Because no separate and substantive argument has been made, we are unpersuaded of Examiner’s error in rejecting claims 5 and 13 for the same reasons discussed above with respect to claim 1. Appeal 2018-007864 Application 15/010,825 6 DECISION We affirm the Examiner’s rejection of claims 1–13. 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). See 37 C.F.R. § 41.50(f). AFFIRMED Appeal 2018-007864 Application 15/010,825 7 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KE ZOU and CHINGCHI CHEN ____________ Appeal 2018-007864 Application 15/010,825 Technology Center 2800 ____________ Before KEVIN F. TURNER, DENISE M. POTHIER, and JOHN A. EVANS Administrative Patent Judges. POTHIER, Administrative Patent Judge, concurring. I concur with the Majority’s decision (“Maj. Dec.”) to affirm the Examiner’s rejections of (1) claims 1–4 and 6–12 under 35 U.S.C. § 102(a)(1) as being anticipated by Pace and (2) claims 5 and 13 under 35 U.S.C. § 103(a) as being unpatentable over Pace in view of Nadd. However, unlike the majority (Maj. Dec. 6), I respectfully would reach and affirm the additional rejection of claims 1–4 and 6–12 under 35 U.S.C. § 103(a) as being unpatentable by Pace. The Majority indicates that they interpret the statement “Pace’s inverter and its gate drive are identical to applicant’s inverter and its gate drive, except applicant’s inverter is to be used in a vehicle” made by the Examiner (Final Act. 3) to mean the “vehicle” in claim 1 is a limitation of intended use. Maj. Dec. 4 n.2. The Majority’s understanding may be correct for the anticipation rejection under 35 U.S.C. § 102. However, as explained in more detail below, the term “vehicle” Appeal 2018-007864 Application 15/010,825 8 in the instant context can be considered to define claim 1’s invention and to be more than a recitation of intended use. For this reason, I would additionally affirm the Examiner’s alternative rejection of claims 1–4 and 6–12 under 35 U.S.C. § 103(a) as being unpatentable by Pace. Case law supports that a preamble in some instances merely states the claim’s intended purpose and does not define distinctly a claim’s limitations. For example, If . . . the body of the claim fully and intrinsically sets forth the complete invention, including all of its limitations, and the preamble offers no distinct definition of any of the claimed invention’s limitations, but rather merely states . . . the purpose or intended use of the invention, then the preamble is of no significance to claim construction because it cannot be said to constitute or explain a claim limitation. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). In other instances, a preamble is significant to claim construction. See Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1256–57 (Fed. Cir. 1989) (concluding the phrase “optical waveguide” in the preamble breathes life and meaning into the claim); see also In re Cruciferous Sprout Litig., 301 F.3d 1343, 1347 (Fed. Cir. 2002) (concluding the preamble phrase “rich in glucosinolates” helps define the claimed invention). Like Corning Glass Works and Cruciferous Sprout, the term “vehicle” in claim 1’s preamble can be viewed as helping to define claim 1. The Specification describes the invention on multiple occasions in the context of electrified vehicles (see Spec. ¶¶ 1–2, 20, 24, 59, 61, Fig. 1), summarizes the invention as a vehicle comprising an inverter (see id. ¶¶ 3–5), and describes the inverter as “a vehicular Appeal 2018-007864 Application 15/010,825 9 electric motor inverter” (id. ¶ 8, Fig. 3). Thus, as evidenced by the Specification, the recitation “vehicle” breathes meaning into claim 1. On the other hand, the Federal Circuit in In re Bigio, 381 F.3d 1320 (Fed. Cir. 2004) affirmed the Board’s interpretation of phrase “hair brush” located in the preamble, which was not limited to a brush for human hair on a scalp. Id. at 1324 (Fed. Cir. 2004) (indicating the Board properly “construed the term ‘hair brush’ to include ‘not only brushes that may be used for human hair on [a] scalp, but also brushes that may be used for hairs [o]n other parts of animal bodies (e.g. human facial hair, human eyebrow hair, or pet hair).’” Id. at 1324. The Federal Circuit indicated “the Board correctly declined to import from the specification a limitation that would apply the term only to hairbrushes for the scalp” and “counsels the PTO to avoid the temptation to limit broad claim terms solely on the basis of specification passages.” Id. (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). Therefore, like Bigio, importing the phrase “vehicle” in claim 1 to be limited to “[e]lectrified vehicles” (Spec. ¶ 2) would not be proper. As such, a broad and reasonable construction of “vehicle” in claim 1 is as a limitation that includes its ordinary meaning, “a means of carrying or transporting something.”3 Given the above claim construction of “vehicle” in claim 1, the Examiner appropriately presented an alternative rejection of claims 1–4 and 6–12 under 35 U.S.C. § 103(a) as being unpatentable by Pace. See Final Act. 2–5. The Examiner specifically states “Pace does not identify the usage of inverter in a vehicle” but explains a vehicle is a typical application for Pace’s AC motor control system (id. at 3 (citing Pace, Fig. 1)) in concluding the claim 1’s “vehicle” limitation is obvious. See id. at 2–4. As an example, Pace states IGBTs are used in inverter 3 Vehicle, The Merriam-Webster Dictionary, available at https://www.merriam- webster.com/dictionary/vehicle (def. 1) (last visited August 2, 2019). Appeal 2018-007864 Application 15/010,825 10 section of variable speed AC motor drives and “other similar applications” (Pace, 1:24–27), including those “hav[ing] much broader application than AC motors or a specific industry” (id. at 3:54–55; see id. at 3:51–55). Pace therefore suggests using its inverter with many applications, including those used in apparatuses that carry or transport something (i.e., in a vehicle). See Final Act. 3. Appellants do not challenged the above findings and conclusions concerning Pace made by the Examiner related to the obviousness rejection. See generally Appeal Br. 2–4 (disputing only the Examiner’s finding related to the anticipation rejection based on Pace). Thus, on the record, I would affirm the rejection of claims 1–4 and 6–12 under 35 U.S.C. § 103(a) as being unpatentable by Pace.