Philip Yin et al.

Patent Trials and Appeals Board

Oct 30, 2019

13862130 - (D) (P.T.A.B. Oct. 30, 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.
13/862,130 04/12/2013 Philip Yin 100-17774-000-US 8859
105639 7590 10/30/2019
Rimon Law - SEAGATE
2479 E. Bayshore Road
Suite 210
Palo Alto, CA 94303
EXAMINER
TRAN, THAI H
ART UNIT PAPER NUMBER
2836
NOTIFICATION DATE DELIVERY MODE
10/30/2019 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):
SVDocketing@Rimonlaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PHILIP YIN, FELIX MARKHOVSKY and
ASHUTOSH RAZDAN
____________

Appeal 2019-000527
Application 13/862,130
Technology Center 2800
____________

Before JEFFREY T. SMITH, MICHAEL G. McMANUS, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 1–23.2 We have jurisdiction
over this appeal 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. Appellant identifies Seagate Technology LLC as the real
party in interest. Appeal Brief filed March 5, 2018 (“Br.”) at 3.
2 Final Office Action entered August 23, 2017 (“Final Act.”).
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CLAIMED SUBJECT MATTER
Claim 1 illustrates the subject matter on appeal, and is reproduced
below with contested language italicized:
1. An apparatus comprising:
a rechargeable battery;
a circuitry operable to receive power from a power
source, the circuitry configured to provide power to the
rechargeable battery and to other electrical components;
a memory component configured to store a plurality of
maximum current output limits associated with a plurality of
interconnection interfaces of a plurality of power sources; and
a controller configured to detect an interconnection
interface of the power source and further configured to select a
maximum current output limit of the detected interconnection
interface of the power source,
wherein the controller is further configured to limit an
amount of power being drawn by the circuitry not to exceed the
maximum current output limit of the power source and
wherein the amount of power being drawn by the
circuitry is greater than zero and less than or equal to the
maximum current output limit of the power source to provide
uninterrupted power to the other electrical components, and
wherein a current associated with the power provided to
the rechargeable battery and to the other electrical components
is less than or equal to the selected maximum current output
limit of the detected interconnection interface of the power
source, and
wherein the controller is further configured to control the
circuitry to increase power to the rechargeable battery in
response to a decrease in power consumption associated with
the other electrical components and
wherein the controller is further configured to control the
circuitry to decrease power to the rechargeable battery in
response to an increase in power consumption associated with
the other electrical components and
wherein power to the rechargeable battery is reduced to
zero responsive to increase in power consumption associated
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with the other electrical components to the maximum current
output limit of the power source.

Br. 19 (Claims Appendix) (emphasis and spacing added).
REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered August 7, 2018 (“Ans.”):
I. Claims 1–23 under 35 U.S.C. § 112(a) for failing to comply
with the written description requirement;
II. Claims 1, 3–8, 10, 13, 15–19, 21, and 22 under 35 U.S.C. § 103
as unpatentable over Horovitz;3
III. Claims 2, 11, 12, and 23 under 35 U.S.C. § 103 as unpatentable
over Horovitz in view of Ti;4
IV. Claims 9 and 14 under 35 U.S.C. § 103 as unpatentable over
Horovitz in view of Fuchs;5 and
V. Claim 20 under 35 U.S.C. § 103 as unpatentable over Horovitz
in view of Zai.6
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejections of
claims 1–23 under 35 U.S.C. § 103, for the reasons set forth in the Final
Action, the Answer, and below. We summarily sustain the Examiner’s

3 US 7,535,195 B1, issued May 19, 2009.
4 Ti Thunderbolt™ Technology Reference Guide,
Printed 2012, http://www.ti.com/lit/sg/slyt456a/slyt456a.pdf.
5 US 2011/0267765 A1, published November 3, 2011.
6 US 2012/0011376 A1, published January 12, 2012.
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rejection of claims 1–23 under 35 U.S.C. § 112(a) for failing to comply with
the written description requirement (Rejection I) without further comment,
because Appellant does not contest this rejection. 37 C.F.R. §
41.37(c)(1)(iv); see also Manual of Patent Examining Procedure (MPEP) §
1205.02 (9th ed. Jan. 2018) (“If a ground of rejection stated by the examiner
is not addressed in the appellant’s brief, appellant has waived any challenge
to that ground of rejection and the Board may summarily sustain it, unless
the examiner subsequently withdrew the rejection in the examiner’s
answer.”).
We review appealed rejections for reversible error based on the
arguments and evidence the appellant provides for each issue the appellant
identifies. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (Explaining that even if the Examiner had
failed to make a prima facie case, “it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections.”)).
Rejection II: Claims 1, 3–8, 10, 13, 15–19, 21, and 22 under
35 U.S.C. § 103(a) as unpatentable over Horovitz
Claims 1, 4–8, 10, 13, 15–19, and 22
Appellant argues claims 1, 4–8, 10, 13, 15–19, and 22 together on the
basis of claim 1, to which we accordingly limit our discussion. Br. 15–17;
37 C.F.R. § 41.37(c)(1)(iv).
Horovitz discloses a method and apparatus for controlling the quantity
of current allocated for charging a battery in an electrical device while
simultaneously supplying current to an application load in the device.
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Horovitz col. 1, ll. 8–12. Horovitz discloses that the apparatus includes
power source 10, battery 20, battery charger control circuit 210 including
register 214 (memory) and state machine 212 (controller), and battery
charger and power source circuit 220 (circuitry operable to receive power
from a power source and configured to provide power to the rechargeable
battery and to other electrical components). Horovitz col. 3, ll. 17–32; Fig.
2. Horovitz discloses that register 214 (memory) stores an Ilimit value
representing the maximum current that power source 10 is able to deliver,
and an Iprog value representing the desired rate at which battery 20 is to be
charged. Horovitz col. 3, ll. 56–61. Horvitz discloses that a connection to
register 214 (memory) allows state machine 212 (controller) to retrieve and
update Ilimit and Iprog values; a connection to power source busses 12 allows
state machine 212 (controller) to determine the status of power source 10;
and Idiff, Imin, and Status connection signals to battery charger and power
source circuit 220 allow state machine 212 (controller) to control battery
charging and determine the battery and battery charging status. Horovitz
col. 3, ll. 51–65; Fig. 2.
Horvitz discloses that Idiff informs battery charger and power source
circuit 220 of the difference between the maximum current power source 10
is able to deliver (Ilimit) and the desired current with which battery 20 may be
charged (Iprog). Horovitz col. 3, l. 65–col. 4, l. 1. Horovitz discloses that Idiff,
therefore, represents the maximum amount of current that application load
30 may consume before there is insufficient current to charge battery 20 at
its desired charging rate. Horovitz col. 4, ll. 2–4. Horovitz discloses that
Imin notifies battery charger and power source circuit 220 of the minimum
value of Ilimit and Iprog, which “represents the maximum current with which to
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charge battery 20.” Horovitz col. 4, ll. 5–12.
Horvitz discloses that battery charger and power source circuit 220
supplies battery charging current Icharge to battery 20 under the control of Idiff,
Imin, and Status signals, and application load 30 draws load current Iload.
Horovitz col. 5, ll. 10–17; Fig. 2. Horvitz discloses that if Iload is greater
than Idiff, charging current Icharge is reduced “to give priority to application
load 30.” Horovitz col. 6, ll. 7–9. Horvitz’s apparatus thus “controls the
maximum current for battery charging,” and “is capable of providing the
power requested by the load,” while “us[ing] the remaining power for
battery charging. Horovitz col. 2, ll. 24–31.
The Examiner finds that “Horovitz does not expressly disclose
reducing power to the rechargeable battery to zero in response to an increase
in power consumption associated with electrical components to the
maximum current output limit of the power source” as recited in claim 1.
Final Act. 5. The Examiner determines that it would have been obvious to
one of ordinary skill in the art at the time of filing to reduce Icharge (current
supplied to the battery) to zero if Iload (current drawn by application load 30)
increases to Ilimit (the maximum current power source 10 is able to deliver) to
allow supplying current to application load 30 to be prioritized, as disclosed
in Horovitz. Final Act. 5–6 (citing Horovitz col. 6, ll. 8–9); Ans. 8–9.
Appellant argues that Horovitz does not disclose or suggest a
controller configured to select a maximum current output limit of an
interconnection interface of a power source, and configured to limit an
amount of power drawn by circuitry not to exceed the maximum current
output limit of the power source, as recited in claim 1. Br. 15–16. Appellant
argues that providing the maximum current that a power supply is
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configured to supply, as disclosed in Horovitz, differs from the maximum
current output limit, as recited in claim 1. Id. Appellant argues that “the
maximum source current available is merely the maximum amount of
current that is available from the source current regardless of whether that
may damage any electronics such as the power source.” Br. 15. Appellant
argues that Appellant’s Specification explicitly discloses that “some power
source devices may be equipped with a fuse that temporarily interrupts
power when the maximum output current limit is exceeded.” Br. 15–16
(citing Spec. ¶ 19). Appellant argues that the Specification further discloses
that “the amount of current used to charge the battery may be increased
during low power consumption of the electronic device,” and “the speed at
which the battery is charged is increased while protecting the power source
from being damaged,” so that “interruption to supply power from the power
source to the electronic device is prevented, e.g., by preventing the fuse to
short the circuit.” Id.
Appellant’s arguments are unpersuasive of reversible error in the
Examiner’s rejection for reasons that follow.
Appellant’s Specification states that “[t]he maximum current output
limit is the amount of current that can be safely drawn from the power
source.” Spec. ¶ 29. The Specification also indicates that “the amount of
current used to charge the battery may be increased during low power
consumption of the electronic device. . . . As such, the speed at which the
battery is charged is increased while protecting the power source from being
damaged.” Spec. ¶ 19. These disclosures indicate that the “maximum
current output limit” refers to the maximum amount of current that can be
drawn from the power source without damaging the power source. In re
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ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007)
(During prosecution of patent applications, “the PTO must give claims their
broadest reasonable construction consistent with the specification. . . .
Therefore, we look to the specification to see if it provides a definition for
claim terms, but otherwise apply a broad interpretation.”).
In response to Appellant’s arguments, the Examiner states that it was
“known . . . to one of ordinary skill in the power art, [that] the maximum
current output is usually set to a limit which the power source can supply
and also not to damage the internal circuitry of a system” (Ans. 5), which
Appellant does not challenge or refute the Examiner’s position.
Accordingly, contrary to Appellant’s arguments, one of ordinary skill in the
art would have understood that the “maximum current” Horovitz’s power
source 10 “is able to deliver” refers to the maximum current that could be
output by the power source without damaging the internal circuitry of
Horovitz’s system, corresponding to the maximum amount of current that
can be drawn from the power source without damaging the power source—
or the “maximum current output limit” as recited in claim 1.
As discussed above, Horovitz discloses that state machine 212
(controller) determines the status of power source 10, register 214 (memory)
stores an Ilimit value representing the maximum current that power source 10
is able to deliver, and state machine 212 (controller) retrieves and updates
the Ilimit value from register 214 (memory) (a controller configured to select a
maximum current output limit of an interconnection interface of a power
source). As also discussed above, Horovitz discloses that Idiff and Imin
connections from state machine 212 (controller) to battery charger and
power source circuit 220 allow state machine 212 (controller) to control
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battery charging, and if Iload (current drawn by application load 30) is greater
than Idiff (the difference between the maximum current power source 10 is
able to deliver (Ilimit) and the desired current with which battery 20 may be
charged (Iprog)), charging current Icharge (charging current supplied to battery)
is reduced “to give priority to application load 30.” One of ordinary skill in
the art reasonably would have expected from these disclosures that, because
the current supplied to battery 20 (Icharge) is reduced when the current drawn
by application load 30 increases (when Iload is greater than Idiff), the current
being drawn by application load 30 and the current supplied to charge
battery 20 together do not exceed the maximum current power source 10 is
able to deliver (Ilimit). In other words, one of ordinary skill in the art
reasonably would have understood that the maximum current that power
source 10 is able to deliver (Ilimit) is not exceeded in Horovitz’s system
because state machine 212 (controller) sends signals to battery charger and
power source circuit 220 (Idiff and Iprog) that reduce the current supplied to
the battery (Icharge) when the current drawn by application load 30 increases
(when Iload is greater than Idiff) (controller configured to limit an amount of
power drawn by circuitry not to exceed the maximum current output limit of
the power source). KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
([A]n obviousness analysis “need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for [an examiner] can
take account of the inferences and creative steps that a person of ordinary
skill in the art would employ.”); see also In re Preda, 401 F.2d 825, 826
(CCPA 1968) (“[I]t is proper to take into account not only specific teachings
of the reference but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom.”).
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Appellant argues that “Horovitz teaches uninterrupted charging of the
battery” because Horovitz discloses (1) if Iload - Idiff is less or equal to zero,
current Icharg is regulated to Imin, and if Iload - Idiff is greater than zero, current
Icharg is regulated to Imin-(Iload - Idiff), (2) the “battery charge 220 is placed in
trickle charging mode and is informed of the value Imin and Idiff” and “battery
charger 220 then charges battery 20 at a fraction of the Imin value if current
Iload is less than current Idiff, and (3) “if Iload is greater than Idiff, charging
current Icharg is reduced . . . to give priority to application load 30.” Br. 16–
17. Based on these disclosures, Appellant argues that Horovitz “fails to
teach or suggest and in fact teaches away that the power to the rechargeable
battery is reduced to zero responsive to increase in power consumption
associated with the other electrical components to the maximum current
output limit of the power source, as claimed, because the goal in Horovitz is
to maintain uninterrupted charging of the battery.” Br. 17.
The disclosures in Horovitz relied on by Appellant do not teach
“uninterrupted charging of the battery” as Appellant asserts. First,
Horovitz’s disclosure that if Iload - Idiff is greater than zero current Icharge is
regulated to Imin-(Iload - Idiff) does not indicate that battery charging is
uninterrupted, because Imin-(Iload - Idiff) (or Icharge, the current supplied to
battery 20) could be zero—meaning that battery charging is interrupted—if
Imin is equal to or greater than Iload - Idiff. Second, Horovitz’s disclosure that
battery charge 220 is placed in trickle charging mode relates to the rate of
charging the battery and does not indicate or suggest that battery charging
must be uninterrupted. Horovitz col. 4, ll. 48–67. Third, although Horovitz
discloses that “if Iload is greater than Idiff, charging current Icharge is reduced . .
. to give priority to application load 30,” Appellant does not explain why this
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disclosure establishes that Icharge could not be reduced to zero when Iload is
greater than Idiff. Accordingly, when considered individually and in
combination, the disclosure in Horovitz relied upon by Appellant do not
support Appellant’s assertion that Horovitz teaches uninterrupted battery
charging.
As the Examiner determines (Ans. 8–9), and as discussed above, in
view of Horovitz’s disclosure of prioritizing supplying current to application
load 30, it would have been obvious to one of ordinary skill in the art to
reduce Icharge (current supplied to the battery) to zero if Iload (current drawn
by application load 30) increases to Ilimit (the maximum current power source
10 is able to deliver).
Appellant does not direct us to any disclosure in Horovitz that
criticizes, discredits, or otherwise would have discouraged one of ordinary
skill in the art from reducing Icharge (current supplied to the battery) to zero
when Iload (current drawn by application load 30) increases to Ilimit (the
maximum current power source 10 is able to deliver). Contrary to
Appellant’s arguments, Horovitz does not teach away from reducing power
to a battery to zero in response to an increase in power consumption
associated with other electrical components to the maximum current output
limit of the power source, as recited in claim 1. In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004) (“[t]he prior art’s mere disclosure of more than one
alternative does not constitute a teaching away from any of these alternatives
because such disclosure does not criticize, discredit, or otherwise discourage
the solution claimed”).
We, accordingly, sustain the Examiner’s rejection of claims 1, 4–8,
10, 13, 15–19, and 22 under 35 U.S.C. § 103.
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Claims 3 and 21
Claim 3 depends from claim 1 and recites that the claimed apparatus
further comprises a monitoring circuit configured to monitor power
consumption associated with the other electrical components. Claim 21
depends from independent claim 19 and also recites that the claimed
apparatus further comprises a monitoring circuit configured to monitor
power consumption associated with the other electrical components.
Appellant argues that “Horovitz merely determines the amount power
to be supplied to the application based on the maximum current power
source and the desired current with which the battery may be charged,” and
“[n]owhere does Horovitz teach or suggest a monitoring circuit configured
to monitor power consumption associated with the other electrical
components” Br. 17.
Contrary to Appellant’s arguments, Horovitz’s system does include a
monitoring circuit configured to monitor power consumption associated with
application load 30 (other electrical components), as recited in claims 3 and
21. Specifically, we agree with the Examiner (Ans. 9) that Horovitz
discloses that battery charger and power source circuit 220 includes load
current sense circuit 310, which outputs a signal proportional to current Iload
drawn by application load 30. One of ordinary skill in the art would have
understood that in order to output a signal indicating the current drawn by
application load 30, the load current sense circuit 310 must monitor (sense)
the current drawn by load 30, as recited in claims 3 and 21. KSR, 550 U.S.
at 418; Preda, 401 F. 2d at 826. We, accordingly, sustain the Examiner’s
rejection of these claims under 35 U.S.C. § 103.
Rejection III: Claims 2, 11, 12, and 23 under 35 U.S.C. § 103
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as unpatentable over Horovitz in view of Ti
To address this rejection, Appellant first argues that Ti fails to remedy
the deficiencies of Horovitz that Appellant discusses in connection with the
arguments Appellant provides for claim 1. Br. 18. Because Appellant’s
arguments directed to Horovitz are unpersuasive of reversible error in the
Examiner’s rejection of claim 1 for the reasons discussed above, they are
also unpersuasive of reversible error in the Examiner’s rejection of claims 2,
11, 12, and 23.
Appellant next argues for claims 11 and 23 that “as presented above,
Horovitz fails to monitor power consumption in the claimed fashion” (Br.
18), as Appellant also argues for claims 3 and 21 (discussed above). Br. 18.
This argument is unpersuasive of reversible error in the Examiner’s rejection
of claims 11 and 23 for the same reasons that it is unpersuasive of reversible
error in the Examiner’s rejection of claims 3 and 21, discussed above.
Finally, for claim 12, Appellant argues that “Horovitz discloses
determining power to be supplied to the application based on the maximum
current power source and the desired current with which the battery may be
charged. As such, Horovitz fails to teach or suggest that the power level for
charging the rechargeable battery circuit is the difference between the power
from the power source and the power consumption associated with the
device,” as recited in claim 12. Br. 18.
As discussed above, Horovitz discloses that Idiff and Imin connections
from state machine 212 (controller) to battery charger and power source
circuit 220 allow state machine 212 (controller) to control battery charging,
and if Iload (current drawn by application load 30) is greater than Idiff (the
difference between the maximum current power source 10 is able to deliver
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(Ilimit) and the desired current with which battery 20 may be charged (Iprog)),
charging current Icharge (charging current supplied to battery) is reduced “to
give priority to application load 30.” Thus, Horovitz discloses reducing
Icharge (charging current supplied to battery) when current drawn by
application load 30 increases to the point where Iload (current drawn by
application load 30) is greater than Idiff to prioritize providing power to
application load 30, which one of ordinary skill in the art would have
understood to indicate that the current supplied to charge the battery (Icharge)
is the difference between the current provided by power source 10 and the
current drawn by application load 30, as recited in claim 12. KSR, 550 U.S.
at 418; Preda, 401 F. 2d at 826.
We, accordingly, sustain the Examiner’s rejection of claims 2, 11, 12,
and 23 under 35 U.S.C. § 103.
Rejection IV: Claims 9 and 14 under 35 U.S.C. § 103 as unpatentable over
Horovitz in view of Fuchs, and Rejection V: Claim 20 under 35 U.S.C. §
103 as unpatentable over Horovitz in view of Zai
Appellant does not list these rejections in the “Grounds for Rejection
to be reviewed on appeal” section of the Appeal Brief (Br. 14), and does not
mention claims 9, 14, and 20 in the “Arguments” section of the Appeal
Brief. Br. 15–18. We, accordingly, summarily sustain these rejections
without further comment. 37 C.F.R. § 41.37(c)(1)(iv).

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CONCLUSION

Claims

35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–23 112(a) Written
description
1–23
1, 3–8, 10, 13,
15–19, 21, 22
103 Horovitz 1, 3–8, 10, 13,
15–19, 21, 22

2, 11, 12, 23 103 Horovitz, Ti 2, 11, 12, 23
9, 14 103 Horovitz, Fuchs 9, 14
20 103 Horovitz, Zai 20
Overall
Outcome
1–23

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).

AFFIRMED