Turner, Qian et al.

Patent Trials and Appeals Board

Jul 20, 2020

2019000876 (P.T.A.B. Jul. 20, 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.
15/159,087 05/19/2016 Qian Turner 709923US1 6247
24938 7590 07/20/2020
FCA US LLC
CIMS 483-02-19
800 CHRYSLER DR EAST
AUBURN HILLS, MI 48326-2757
EXAMINER
ZAKARIA, AKM
ART UNIT PAPER NUMBER
2868
NOTIFICATION DATE DELIVERY MODE
07/20/2020 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):
chris.davenport@fcagroup.com
michelle.madak@fcagroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte QIAN TURNER and YURIY TABORISSKIY1
____________

Appeal 2019-000876
Application 15/159,087
Technology Center 2800
____________

Before LINDA M. GAUDETTE, JAMES C. HOUSEL, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This case is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–4. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
The subject matter on appeal relates to a high voltage isolation tester.
E.g., Spec. ¶ 1; Claim 1. Claim 1 is reproduced below from page 22 (Claims
Appendix) of the Appeal Brief (some formatting added):

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as FCA
US, LLC. Appeal Br. 3.
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1. A high voltage isolation tester, comprising:
a high voltage side and a low voltage side that are coupled to
each other by isolation amplifiers;
the high voltage side having
a positive high voltage test input coupled by a positive side
switched voltage divider network to an input of a first one of
the isolation amplifiers,
the positive side switched voltage divider network having
first and second resistances that have different resistivities,
a negative high voltage test input coupled by a negative side
switched voltage divider network to an input of a second one
of the isolation amplifiers,
the negative side switched voltage divider network having
third and fourth resistances that have different resistivities,
and a common test input;
the positive high voltage test input and the negative high
voltage test input also coupled to opposite sides of a voltage
divider network of resistances with a junction of the
resistances coupled to an input of a third one of the isolation
amplifiers;
the low voltage side including
an analog-to-digital converter to which outputs of the
isolation amplifiers are coupled and
a controller that controls switching of the switched voltage
divider networks, reads from the analog-to-digital converter
digitized data of voltage measurements of voltages across the
high voltage test input and common test input, voltages across
the negative high voltage test input and the common test
input, and a voltage across the positive high voltage test input
and the negative high voltage test input; and
the controller configured with control logic to switch the positive
side switched voltage divider network to couple the positive high
voltage test input to the input of the first isolation amplifier
through the first resistance and then through the second
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resistance and take voltage measurements of the voltage at the
input of the first isolation amplifier when the positive high
voltage test input is coupled to the input of the first isolation
amplifier through the first resistance and also when the positive
high voltage test input is coupled to the input of the first isolation
amplifier through the second resistance,
the controller also configured with control logic to switch the
negative side switched voltage divider network to couple the
negative high voltage test input to the input of the second
isolation amplifier through the third resistance and then through
the fourth resistance and take voltage measurements of the
voltage at the input of the second isolation amplifier when the
negative high voltage test input is coupled to the input of the
second isolation amplifier through the third resistance and also
when the negative high voltage test input is coupled to the input
of the second isolation amplifier through the fourth resistance,
the controller also configured with control logic to take a voltage
measurement of a voltage at the input of the third isolation
amplifier.
ANALYSIS
Claims 1–4 stand rejected under 35 U.S.C. § 103 as unpatentable over
Schumacher (US 8,618,809 B2, issued Dec. 31, 2013) and Carruthers (US
6,678,132 B1, issued Jan. 13, 2004). After review of the cited evidence in
the appeal record and the opposing positions of the Appellant and the
Examiner, we determine that the Appellant has not identified reversible error
in the Examiner’s rejection. Accordingly, we affirm the rejection for
reasons set forth below, in the Final Action dated January 25, 2018 (“Final
Act.”), and in the Examiner’s Answer.
The Appellant argues the claims as a group. See generally Appeal Br.
We select claim 1 as representative, and the remaining claims will stand or
fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
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The Examiner finds that “Schumacher teaches in figure(s) 1–4 each
element[] and function[] recited in claim 1, namely, high/low voltage side,
amplifiers, switched voltage divider network having resistance elements plus
switches, analog-to-digital converter and controller except explicitly reciting
isolation amplifier with test inputs.” Ans. 4; see also Final Act. 4–6. The
Examiner acknowledges that “Schumacher does not teach explicitly
isolation amplifier; positive high voltage test input; negative high voltage
test input.” Final Act. 6.
The Examiner finds that Carruthers teaches isolation amplifiers and
positive/negative high voltage test inputs. Id. The Examiner determines:
It would have been obvious . . . to modify the teachings of
Schumacher by having isolation amplifiers; positive high voltage
test input; negative high voltage test input as taught by Carruthers
in order to provide ‘an amplifier circuit responsive to the first
voltage signal and to a reference voltage for generating an
amplified signal indicative of the existence of the unwanted
electrical path when the difference between the first voltage
signal and the reference voltage exceeds a predetermined value’
(abstract).
Id.
The Appellant raises several arguments against the Examiner’s
rejection, which we address in turn below.
1. The Appellant argues that some of the components of
Schumacher’s Figure 2 relied on by the Examiner are part of Schumacher’s
“vehicle electrical system 18” rather than Schumacher’s “isolation detection
system 111,” and that it is unreasonable to interpret components of
Schumacher’s vehicle electrical system 18 as being part of a “high voltage
isolation tester” as recited by claim 1. Appeal Br. 10–11, 15–17; Reply
Br. 1–4.
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That argument is not persuasive. Unlike in the Smith International
case cited by the Appellant, where the Federal Circuit explained that the
disclosure at issue “consistently describes and refers to the body as a
component distinct from others,” see Appeal Br. 16 (quoting In re Smith
International, 871 F.3d 1375 (Fed. Cir. 2017) (emphasis added)), the
Appellant does not identify any portion of the Specification that refers to a
high voltage isolation tester as necessarily being wholly distinct from a
vehicle’s electrical system. As the Examiner explains in the Answer,
claim 1 “do[es] not specify any boundary between components and non-
components of a vehicle,” and it “makes no mention requiring isolation
tester system is completely separate or distinct from vehicle electrical
system.” Ans. 4.
In the Reply Brief, the Appellant does not persuasively identify a
portion of the claims or specification that show error in the Examiner’s
interpretation of claim 1. See generally Reply Br. The Appellant does argue
that the preamble of claim 1, “[a] high voltage isolation tester,” is
structurally limiting, but even assuming that to be true, the Appellant fails to
persuasively explain why the term “[a] high voltage isolation tester”
excludes embodiments such as those of Schumacher in which some recited
components are part of a vehicle electrical system and other recited
components are part of an isolation detection system, particularly where—as
in Schumacher—all of the components are electrically interconnected. See
id.; see also Schumacher Fig. 2. In the Reply Brief, the Appellant does not
contest the Examiner’s finding in the Answer (which is consistent with the
Examiner’s findings in the Final Action) that “Schumacher teaches . . . each
element[] and function[] recited in claim 1.” See generally Reply Br.
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Relatedly, the Appellant argues that, because “it is a vehicle’s
electrical system that Appellant’s invention is used to test,” “[t]he
components of the vehicle electrical system being tested . . . cannot make up
components of a tester that is used to test the vehicle electrical system.”
Reply Br. 4. That argument is not persuasive because claim 1’s “high
voltage isolation tester” is not limited to a tester for a vehicle’s electrical
system. The Appellant fails to explain why the claim should be interpreted
as limited to what appears to be an exemplary embodiment. See Spec. ¶ 16.
Thus, even if the high voltage isolation tester of the combined prior art
identified by the Examiner could not be used to test a vehicle’s electrical
system in the same way contemplated by the Appellant’s Specification, the
Appellant does not persuasively show why that would cause it to fall beyond
the scope of claim 1. Claim 1 says nothing about vehicles or vehicle
electrical systems.
But even if claim 1 were limited to testing a vehicle’s electrical
system, we observe that the Appellant describes “the present invention” as
“a tester for measuring isolation between a high voltage direct current
system and a chassis.” Appeal Br. 8. Schumacher describes its invention as
“a system for detecting electrical isolation between a [voltage] bus terminal
and ground (or chassis reference) on a vehicle.” Schumacher at 1:43–45.
Given the similarity of those descriptions, the Appellant has not shown
reversible error in the Examiner’s findings and conclusions concerning the
functionality of Schumacher’s system. See In re Jung, 637 F.3d 1356, 1365
(Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an
applicant to identify the alleged error in the examiner’s rejections . . . .”); In
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re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a
brief cannot take the place of evidence.”).
On the present record, and particularly under the claim construction
standard applicable to this proceeding (broadest reasonable construction
consistent with the specification, see In re ICON Health & Fitness, Inc., 496
F.3d 1374, 1379 (Fed. Cir. 2007)) we are not persuaded that claim 1
precludes some elements of “[a] high voltage isolation tester” from being
part of a vehicle electrical system while others are part of an isolation
detection system. See Jung, 637 F.3d at 1365; cf. In re Zletz, 893 F.2d 319,
321 (Fed. Cir. 1989) (“[D]uring patent prosecution when claims can be
amended, ambiguities should be recognized, scope and breadth of language
explored, and clarification imposed.”).
2. The Appellant argues that “Schumacher does not disclose that
amplifiers 220, 221, 222 are or could be isolation amplifiers.” Appeal
Br. 12. That argument is not persuasive because the Examiner
acknowledges that and relies on Carruthers for disclosing isolation
amplifiers. Final Act. 6; see In re Keller, 642 F.2d 413, 426 (CCPA 1981)
(“[O]ne cannot show non-obviousness by attacking references individually
where, as here, the rejections are based on combinations of references.”).
3. The Examiner cites elements R12, R13, 44, 46, RM, R4, and R5 of
Schumacher Fig. 2 as corresponding to the claimed positive side switched
voltage divider network, and the Examiner cites elements R12, R13, 44, 46,
RM, R1, R3, and R6 as corresponding to the claimed negative side switched
voltage divider network. Final Act. 4. The Appellant argues that “R12 and
R13 cannot be switched in and out of circuits by switching devices 44, 46 as
that would result in switching devices 44, 46 modifying the timing circuit
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48” which “would likely” render Schumacher’s timing circuit 48 “unstable.”
Appeal Br. 13. Relatedly, the Appellant argues that switching devices 44
and 46 “cannot be used to switch resistances of a voltage divider network[]
in and out to make voltage measurements as doing so would result in
converter 28 then not providing the desired output voltage.” Id.
Those arguments are not persuasive. The Appellant does not
persuasively tie those arguments to the actual language of claim 1, and it is
unclear precisely which claim elements the Appellant is arguing are missing
from the combined prior art. See Jung, 637 F.3d at 1365. Additionally,
those arguments appear to be attorney argument unsupported by evidence,
and they also appear to rely on speculation. See, e.g., Appeal Br. 13
(“Timing circuit 48 would likely be unstable . . . .” (emphasis added)); see
also Pearson, 494 F.2d at 1405. As noted above, in the Reply Brief, the
Appellant does not contest the Examiner’s finding in the Answer (which is
consistent with the Examiner’s findings in the Final Action) that
“Schumacher teaches . . . each element[] and function[] recited in claim 1.”
See generally Reply Br.; see also Ans. 4.
4. The Examiner cites “R4, R5, 40, 42” of Schumacher Fig. 2 as
corresponding to the claimed “first and second resistances that have different
resistivities” of the positive side switched voltage divider network, and the
Examiner cites “R3, R6, 214, 215” of Schumacher Fig. 2 as corresponding
to the claimed “third and fourth resistances that have different resistivities”
of the negative side switched voltage divider. Final Act. 4. The Appellant
argues that resistors 40 and 42 “serve as an isolation circuit between isolated
electrical system 24 and converter 28.” Appeal Br. 13. The Appellant
argues that resistors 214 and 215 “are not even components of any type, let
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alone resistances,” and the Appellant quotes Schumacher as disclosing that
R14 and R15 “are not electrical elements of isolated electrical system 24, but
are merely illustrated to show the schematic equivalent of leakage paths that
may occur between either bus 36 or bus 38 and the chassis ground 99.” Id.
at 14.
As above, those arguments are not persuasively tied to the actual
claim language. Additionally, it is unclear how those assertions show
reversible error in the Examiner’s rejection, particularly given that the
Examiner also identifies R4 and R5 as corresponding to the claimed first and
second resistances, and R3 and R6 as corresponding to the claimed third and
fourth resistances. See Final Act. 4; see also Jung, 637 F.3d at 1365.
5. The Appellant makes certain assertions about various other
elements of Schumacher’s Figure 2, but, as above, the assertions are not
adequately tied to the actual language of claim 1 to persuasively identify any
recited claim element that is missing from the combined prior art, and the
assertions appear to be unsupported attorney argument. See Appeal Br. 14–
15; see also Jung, 637 F.3d at 1365; Pearson, 494 F.2d at 1405.
6. The Appellant argues that Schumacher does not disclose the
“controller configured with control logic” limitation of claim 1. See Appeal
Br. 17–18. The argument consists of block quoting the entire limitation,
which is approximately three quarters of a page long, and then asserting that
Schumacher does not disclose “switching of resistors.” Id.
The “controller configured with control logic” limitation of claim 1
does not expressly recite “switching of resistors,” and the Appellant’s
argument fails to persuasively address the Examiner’s specific findings and
conclusions regarding this limitation. See Final Act. 5–6. For example, in
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the Final Action, the Examiner cites Schumacher at 10:19–21 in support of
the Examiner’s finding that Schumacher teaches the “controller configured
with control logic” limitation of claim 1. Final Act. 5–6. In the Appeal
Brief, the Appellant identifies—but does not meaningfully discuss—certain
other portions of Schumacher and argues, without significant explanation,
that they do not teach the disputed limitation. See Appeal Br. 18–19 (citing
Schumacher at 4:58–5:43, 10:33–13:31, Figs. 3–5). However, the Appellant
does not acknowledge or address the Examiner’s reliance on Schumacher at
10:19–21. See id. The Appellant’s argument amounts to little more than a
conclusory assertion that the prior art does not teach the disputed limitation.
In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”).
Moreover, the Examiner makes additional findings relevant to this
limitation in the Answer, including that Schumacher teaches switching
resistors by applying a compensating voltage of power supply 84 to
conductors 86 that are connected to resistive network 75. See Ans. 9–10
(citing Schumacher Fig. 1 and 3:14–18).2 In the Reply Brief, the Appellant

2 The Appellant states that “if isolation detection system 11 of Fig. 1 of
Schumacher is to be relied upon as teaching any of the limitations of
claim 1, prosecution should have been re-opened in response to the Pre-
Appeal Brief Request for Review and a non-final office action issued
addressing this new ground of rejection.” Appeal Br. 19. That issue,
however, is a petitionable matter, rather than an appealable one, and does not
fall within the Board’s jurisdiction. See 37 C.F.R. § 41.40(a). We note that,
in the Reply Brief, the Appellant does not address the Examiner’s reliance
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does not contest the Examiner’s additional findings in the Answer in support
of the Examiner’s determination that Schumacher teaches or suggests the
disputed limitation. See generally Reply Br.
On this record, the Appellant’s argument concerning the “controller
configured with control logic” limitation of claim 1 does not persuade us of
reversible error in the rejection. See Jung, 637 F.3d at 1365.
7. The Appellant acknowledges that “isolation amplifiers have been
well known for a number of decades,” but argues that, because
“Schumacher’s isolation detection system 111 does not have a high voltage
side and a low voltage side,” and “[i]solation amplifier 510 in Carruthers is
disclosed as being part of a compensating circuit,” “one of ordinary skill in
the art would not be taught by Carruthers to replace any of Schumacher’s
amplifiers with isolation amplifiers.” Appeal Br. 19 (emphasis added).
Those arguments are not persuasive because they appear to hinge on
the Appellant’s argument, discussed above, that only components of
Schumacher’s isolation detection system 111 (and not components of
Schumacher’s electrical system 18) should be considered part of “[a] high
voltage isolation tester” as recited by claim 1. As explained above, we do
not find that argument to be persuasive, and the Examiner does not rely
exclusively on Schumacher’s isolation detection system 111 for the

on Figure 1 of Schumacher or contest the Examiner’s apparent finding that a
person of ordinary skill in the art would have combined elements from
Figures 1 and 2 of Schumacher. See generally Reply Br.; Ans. 10 (“It is not
necessary that Appellant’s claimed limitations need to be anticipated by or
mapped to Schumacher’s isolation detection component 111 of figure 2 in its
entirety.”); cf. Boston Scientific Scimed, Inc v. Cordis Corp., 554 F.3d 982,
991 (Fed. Cir. 2009) (“Combining two embodiments disclosed adjacent to
each other in a prior art patent does not require a leap of inventiveness.”).
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disclosure of high voltage and low voltage sides; the Examiner relies on
components of both isolation detection system 111 and electrical system 18.
Final Act. 4–6; Ans. 4 (“Schumacher . . . employ[s] vehicular isolation
detection . . . between high voltage (or power) and low voltage (or
chassis).”).
The Examiner finds that Schumacher generically teaches amplifiers
but does not specify isolation amplifiers, and that Carruthers teaches the use
of isolation amplifiers in combination with high voltage test inputs. Final
Act. 6. The Examiner also finds that both Schumacher and Carruthers
“employ vehicular isolation detection . . . between high voltage (or power)
and low voltage (or chassis).” Ans. 3–4. The Examiner’s combination is
based on the use of a known element (isolation amplifier) according to an
established function (e.g., component in an isolation detection system). The
use of known elements according to established functions typically does not
result in nonobvious subject matter. See KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 416–21 (2007) (“The combination of familiar elements according
to known methods is likely to be obvious when it does no more than yield
predictable results.”); see also id. at 416 (“[W]hen a patent claims a structure
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result.”). The Appellant does not argue that it would
have been beyond the ordinary level of skill in the art to substitute the
isolation amplifier of Carruthers for the generic amplifier of Schumacher.
We have carefully considered the Appellant’s arguments, but we are
not persuaded of reversible error in the Examiner’s rejection. See Jung, 637
F.3d at 1365.
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CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Reference(s) Affirmed Reversed
1–4 103 Schumacher, Carruthers 1–4
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