Ronald Koelsch

Patent Trials and Appeals Board

Oct 28, 2021

2021002211 (P.T.A.B. Oct. 28, 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.
15/902,588 02/22/2018 Ronald Koelsch MSH-1126 1031
8131 7590 10/28/2021
MCKELLAR IP LAW, PLLC
784 SOUTH POSEYVILLE ROAD
MIDLAND, MI 48640
EXAMINER
MENDOZA-WILKENFEL, ERIK
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
10/28/2021 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RONALD KOELSCH

Appeal 2021-002211
Application 15/902,588
Technology Center 3700
____________

Before MICHAEL L. HOELTER, BENJAMIN D. M. WOOD, and
BRANDON J. WARNER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–10. See Appeal Br. 2. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM the Examiner’s rejections of these claims.

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 “[t]he
inventor.” Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to powering transport
refrigeration units (TRUs) commonly called reefers.” Spec. 1:7–8.
Apparatus claims 1 and 3 are independent. Claim 1 is illustrative of the
claims on appeal and is reproduced below.
1. A battery powered hybrid refrigerated reefer assembly
having multiple integrated power sources, said battery powered
hybrid refrigerated reefer assembly comprising:
A. a hybrid refrigerated reefer;
B. an on-board battery that powers said hybrid refrigerated
reefer, an electric motor, and air distribution fans;
C. a control system containing sensors for
i. a battery charge status,
ii. solar panel output,
iii. hybrid refrigerated reefer motion,
iv. grid usage, and,
v. fuel level, such that A., B., and C., in combination,
configure the optimum power source combination
to minimize fossil fuel consumption in the use of
said hybrid refrigerated reefer;
D. an air distribution system comprising:
i. an air mixing chamber,
ii. airflow ducting, and,
iii. air distribution fans.
EVIDENCE
Name Reference Date
Chou et al. (“Chou”) US 2011/0163603 A1 July 7, 2011
Smith et al. (“Smith”) US 8,794,187 B2 Aug. 5, 2014
Burnham et al.
(“Burnham”)
US 2016/0025397 A1 Jan. 28, 2016
Koelsch US 2016/0129753 A1 May 12, 2016
Vehr et al. (“Vehr”) US 2018/0001739 A1 Jan. 4, 2018
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REJECTIONS
Claims 2–4 and 10 are rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement.
Claims 2–4 and 102 are rejected under 35 U.S.C. § 112(b) as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which the inventor or a joint inventor regards as the invention.
Claims 1–7, 9, and 103 are rejected under 35 U.S.C. § 103 as
unpatentable over Vehr, Chou, Burnham, and Smith.
Claim 8 is rejected under 35 U.S.C. § 103 as unpatentable over Vehr,
Chou, Burnham, Smith, and Koelsch.
ANALYSIS
The rejection of claims 2–4 and 10 as failing to comply with the written
description requirement

Regarding claims 2–4 and 10, the Examiner addresses the limitation
“an auxiliary power unit” recited therein.4 See Final Act. 6. The Examiner
states that this term is “being interpreted under 35 U.S.C. [§] 112(f)” and is
understood to be “a unit for auxiliary power.” Final Act. 4; see also id. at 6.
As such, the Examiner states that Appellant’s Specification “lacks written

2 The Examiner identified claims 1–10 in the Final Office Action (see Final
Act. 6), however, the Examiner only proffered reasons relating to claims 2–4
and 10. We thus understand the Examiner’s initial listing of claims 1–10 to
be an oversight.
3 The Examiner only identified claim 1 in the Final Office Action (see Final
Act. 9), however, the Examiner proffered reasons relating to claims 1–7, 9,
and 10. We thus understand the Examiner’s initial listing of only claim 1 to
be an oversight.
4 Claim 10 recites “an auxiliary land-based solar panel.”
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description for structural interpretation by the Examiner” such that the
“Examiner cannot properly interpret the claim limitation ‘auxiliary power
unit.’” Final Act. 6; see also Ans. 3.
Appellant does not challenge the interpretation of “an auxiliary power
unit” under 35 U.S.C. § 112(f) as noted above, but contends that support for
this term can be found in Appellant’s Specification. See Appeal Br. 3
(replicating Spec. 3:26–31). The replicated passage, however, merely
describes how the auxiliary power unit is used (“plugs into the reefer”) and
its function (“takes high voltage ac power from the electric grid and converts
it to safe low voltage dc power”). Spec. 3:26–31. This passage does not
resolve the Examiner’s search for written description support for the
“structural interpretation by the Examiner” of such a unit because, as per the
Examiner, “an auxiliary power unit can be a number of components
associated with AC being converted to DC.” Final Act. 6; Ans. 3. In other
words, this passage does not provide any indication as to what structure the
recited “auxiliary power unit” is to incorporate or entail. We have been
instructed that, for a means-plus-function claim limitation, the specification
“ha[s] to do more than parrot the recited function; it ha[s] to describe a
means for achieving a particular outcome, not merely the outcome itself.”
HTC Corp. v. IPCom GmbH & Co., KG, 667 F.3d 1270, 1280 (Fed. Cir.
2012); see also Tomita Technologies USA, LLC v Nintendo Co., LTD., 594
F.App’x 657, 662 (Fed. Cir. 2014) (“However, repeating or paraphrasing
means-plus-function claim language in the specification alone does not
describe any structure.”); Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d
1371, 1382 (Fed. Cir. 2009) (if an applicant “employs means-plus-function
language in a claim, [the applicant] must set forth in the specification an
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adequate disclosure showing what is meant by that language”). Hence, there
is merit to the Examiner’s rejection that these claims contain “subject matter
which was not described in the specification in such a way as to reasonably
convey to one skilled in the relevant art that the inventor . . . had possession
of the claimed invention.” Final Act. 5–6.
Appellant also states that “[a]uxiliary power units are known by those
skilled in the art.” Appeal Br. 4. However, we have been instructed that
“[i]t is not enough for the patentee simply to state or later argue that persons
of ordinary skill in the art would know what structures to use to accomplish
the claimed function” in order to satisfy the obligation to disclose sufficient
structure to support a means-plus-function claim limitation. Aristocrat
Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1336–37 (Fed.
Cir. 2008). In other words, “[t]hat ordinarily skilled artisans could carry out
the recited function in a variety of ways is precisely why claims written in
‘means-plus function’ form must disclose the particular structure that is used
to perform the recited function.” Blackboard, 574 F.3d at 1385.
For these reasons, we agree with the Examiner that Appellant’s
Specification lacks written description support for the means-plus-function
claim term “auxiliary power unit.” We sustain the Examiner’s rejection of
claims 2–4 and 10. See MPEP § 2163.03 (VI) (If a specification “fails to
disclose sufficient corresponding structure, materials, or acts that perform
the entire claimed function” of a means-plus-function claim limitation, the
limitation “lacks an adequate written description as required by [35 U.S.C. §
112(a)].”).
The Examiner also specifically addresses claim 10 and the recitation
of “a charge control unit” therein which, the Examiner states, “invokes 35
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U.S.C. [§] 112(f).” Final Act. 6. Similar to the above, the Examiner states
that “Applicant’s specification lacks written description for structural
interpretation by the Examiner,” and as such, “Applicant’s written
description is lacking.” Final Act. 6; see also Ans. 3, 4. Appellant contends
that support for this term can be found in Appellant’s Specification, and
specifically in “Figure 6 and page 9, line 24 et seq.” Appeal Br. 4.
Appellant contends, “[t]he examiner cannot fairly state that these uses are a
mystery and need more explanation.” Appeal Br. 4 (italics added). Figure 6
of Appellant’s Specification is a “schematic layout” (Spec. 5:14) that
includes a box labeled “19 CHARGE CONTROL UNIT.” Page 9 of
Appellant’s Specification is equally generic and states, “[w]hen a low state-
of-charge battery needs charging, the central charge control unit (19) allows
it to draw charge from” either its own solar panel or from “more fully
charged reefers.” The Examiner addresses both Appellant’s proffered figure
and text, stating “both of which do not support what structure applicant had
possession of at the time of filing.” Ans. 4. Accordingly, as per the
Examiner, Appellant “does not identify what specific structure, and
corresponding equivalents thereof, the 112(f) limitation ‘charge control unit’
encompasses.” Ans. 4.
For reasons similar to those set forth above, we agree with the
Examiner that there is insufficient written description support describing the
structure by which the recited function is to be performed. We sustain the
Examiner’s rejection of claim 10 as lacking “written description for
structural interpretation by the Examiner.” Final Act. 6.
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The rejection of claims 2–4 and 10 as being indefinite
Regarding claim 2, the Examiner addresses “the limitation ‘high
voltage alternating current to safe low voltage direct current,’” stating that
“the limitations high, low and safe are all relative terms,” which makes the
claims “unclear.” Final Act. 7; see also Ans. 4. Appellant disagrees stating
that “[b]attery power is known to be low power” and that Appellant’s
Specification has a designation of “480 volts 3-PHZ high voltage AC” such
that “we now know what ‘high voltage’ is.” Appeal Br. 4 (referencing
Fig. 4). The Examiner acknowledges these recitations, but states that they
“still fail[] to disclose what ‘safe low voltage’ encompasses since ‘safe’ is
both subjective and relative and can change.” Ans. 4.
There is merit to the Examiner’s concerns. Appellant relies on the
disclosure of a range or scale having battery power (“low power”) at one end
and 480 volts (“high voltage”) at the other, yet it is not made clear where the
demarcation between these “low” and “high” designations might be so that
one skilled in the art would be aware of the metes and bounds of this
limitation. For example, if a series of batteries were to generate 480 volts,
would that be deemed “low” (because it’s power from a battery) or high
(because it’s 480 volts). The same can be said for “safe” because 480 volts
is relatively safe when compared to even larger voltages. Thus, there is
merit to the Examiner’s statement that “‘safe low voltage’ has not been
defined by the disclosure to mitigate the subjectivity/relativity of the
language.” Ans. 4. In other words, we agree with the Examiner that the
indicated limitations are indefinite because such terms are employed
“without explicitly defining what constitutes safe and low in Appellant’s
disclosure.” Ans. 5. We sustain the Examiner’s rejection of claim 2 above.
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Addressing now claims 2–4 and 10, the Examiner notes that “each
[claim] recites the limitation ‘an auxiliary power unit’ which invokes 35
U.S.C. [§] 112(f), however, as discussed above, Applicant’s specification
lacks written description for structural interpretation by the Examiner.”
Final Act. 7; see also Ans. 3. This lack of written description support
“thereby mak[es] claims 2–4 and 10 indefinite because it is unclear what
structure is to be included in the auxiliary power unit.” Final Act. 7; see also
Ans. 3.
On this point, Appellant identifies where Appellant’s Specification
recites an auxiliary power unit (apu) that “takes high-voltage ac power from
the electric grid and converts it to safe low voltage dc power to be plugged
into the reefer to charge the battery and power the refrigeration unit.”
Appeal Br. 3 (referencing Spec. 3:28–31). Appellant concludes that (1) “no
further definition [is] needed” and (2) “[a]n apu could be an electrical outlet
on a building carrying ac power, for example.” Appeal Br. 5. The Examiner
states that this “could be” language relied on by Appellant in fact, supports
the Examiner’s position “since an auxiliary power unit can be a number of
components associated with AC being converted to DC.” Ans. 3. This is
because a skilled person, reading Appellant’s Specification, would not “have
explicitly known what an auxiliary power unit was or the explicit auxiliary
power unit applicant had possession of at the time of filing.” Ans. 3.
Further, even abiding by Appellant’s “electrical outlet” example above, the
Examiner states that “the electrical outlet is a species of a genus (APU)” and
that a “genus can have multiple species and is not limited to just one
structure.” Ans. 4. In any event, Appellant’s arguments are not persuasive
that the Examiner erred in rejecting these claims as being indefinite since “it
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is unclear what structure is to be included in the auxiliary power unit.” Final
Act. 7; see also Ans. 3. We sustain their rejection.
Regarding claim 10, the Examiner addresses the limitation “a charge
control unit” under 35 U.S.C. § 112(f) stating, as above, that “Applicant’s
specification lacks written description for structural interpretation by the
Examiner.” Final Act. 7; see also Ans. 3, 4. As such, the “Examiner cannot
properly interpret the claim limitation making the limitation indefinite.”
Final Act. 7; see also Ans. 3, 4. For reasons similar to those discussed
above, we are not persuaded by Appellant that the Examiner erred in
concluding claim 10 indefinite in view of a lack of a structural description
for the recited function. For example, we have been instructed that if a
claim contains a means-plus-function limitation, and the written description
lacks structure for those means, the claim is indefinite and hence invalid.
See Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 950–53 (Fed.
Cir. 2007). We sustain the rejection of claim 10.
The rejection of claims 1–7, 9, and 10
as unpatentable over Vehr, Chou, Burnham, and Smith
Appellant argues all these claims together. See Appeal Br. 5. We
select claim 1 for review, with the remaining claims standing or falling
therewith. See 37 C.F.R. § 41.37(c)(1)(iv).
Claim 1 recites a battery powered reefer assembly comprising “an on-
board battery” as well as a control system to optimize power source
combinations (which includes solar and grid sources). The Examiner relies
on Vehr for such teachings. See Final Act. 9; Vehr Abstract and Fig. 1A.
Appellant, however, contends that “the instant invention exclusively
operates on battery while the assembly of Vehr et al requires operating on
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three different modes.” Appeal Br. 5. The Examiner responds stating
“nowhere in claim 1 does Appellant claim the instant invention of claim 1
exclusively operates on battery as is being argued.” Ans. 5. There is merit
to the Examiner’s position because claim 1 is silent as to only and
exclusively operating on battery, and Appellant does not dispute that Vehr
can also operate on battery.
Appellant also seeks to distinguish over the cited art by pointing “out
that help from the grid does not run any of the assembly. The help from the
grid is to charge the batteries.” Appeal Br. 5. Even if true, Appellant does
not explain how Vehr’s battery (which can be recharged via the grid or a
solar panel (see Vehr Fig. 1A)) fails to run the assembly after being charged,
in the same way as Appellant’s system is run.
Appellant also addresses the other power sources available for use in
Vehr stating “[t]his proves that the Vehr assembly is directly operated from
sources other than the battery.” Appeal Br. 5. Regardless, this does not
detract from Vehr’s teaching that it is also battery operated.
Appellant further contends, “the instant assembly does not require an
evaporator.” Appeal Br. 5. However, claim 1 does not preclude the use of
an evaporator and as such, this contention by Appellant is not persuasive of
Examiner error.
Appellant additionally contends, “[e]ven when supported by the
secondary references . . . it is not observed where such teachings would
make the instant invention obvious.” Appeal Br. 5. Appellant simply makes
this assertion and does not otherwise explain how the combination of Vehr
with the teachings of Burnham, Chou, and Smith (as established by the
Examiner) might be in error. See Final Act. 9–11; see also Ans. 5.
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Accordingly, and based on the record presented, we sustain the
Examiner’s rejection of claims 1–7, 9, and 10 as being obvious over Vehr,
Burnham, Chou, and Smith.
The rejection of claim 8
as unpatentable over Vehr, Chou, Burnham, Smith, and Koelsch
Appellant contends, “adding Koelsch to the citations does not change
the validity of the claims.” Appeal Br. 5. Appellant presents no further
argument seeking to explain how the Examiner might have been in error
when rejecting claim 8. Accordingly, and based on the record presented, we
sustain the Examiner’s rejection of claim 8 as being obvious in view of
Vehr, Chou, Burnham, Smith, and Koelsch.
CONCLUSION
In summary:

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
2–4, 10 112(a) Written Description 2–4, 10
2–4, 10 112(b) Indefiniteness 2–4, 10
1–7, 9, 10 103 Vehr, Chou,
Burnham, Smith
1–7, 9, 10
8 103 Vehr, Chou,
Burnham, Smith,
Koelsch
8
Overall
Outcome
1–10
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