13716317 - (D) (P.T.A.B. Sep. 4, 2019)

Andrew E. Seman et al.

Patent Trials and Appeals BoardSep 4, 2019

13716317 - (D) (P.T.A.B. Sep. 4, 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. 13/716,317 12/17/2012 Andrew E. Seman JR. P-US-TN-12048-A 2999 28268 7590 09/04/2019 Stanley Black & Decker, Inc. 6201 Greenleigh Avenue, MR045 Middle River, MD 21220 EXAMINER TORRES RUIZ, JOHALI ALEJANDRA ART UNIT PAPER NUMBER 2859 MAIL DATE DELIVERY MODE 09/04/2019 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 ANDREW E. SEMAN, JR. and DANIEL J. WHITE1 ____________ Appeal 2018-001489 Application 13/716,317 Technology Center 2800 ____________ Before ALLEN R. MacDONALD, MICHAEL J. STRAUSS, and DAVID J. CUTITTA II, Administrative Patent Judges. CUTITTA, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Final Rejection of claims 22–31, all the pending claims in the present application.2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b). An oral hearing was scheduled for August 15, 2019 but was waived by Appellants on August 8, 2019. We AFFIRM. 1 Appellants identify Black & Decker Inc. as the real party in interest. See Appeal Br. 3. 2 Claims 1–21 and 32–34 are cancelled. See Appeal Br. 5. Appeal 2018-001489 Application 13/716,317 2 STATEMENT OF THE CASE Invention Appellants’ invention relates to “recharging the pack in the event a battery pack is left in a battery charger for a prolonged period of time.” Spec. ¶ 4.3 The charging is performed to prevent over-discharge of “Li-ion batteries[, which] deteriorate rapidly in an over-discharged state.” Id. Exemplary Claim Claims 22 and 27 are independent claims. Claim 22 is representative and is reproduced below with limitation at issue emphasized. 22. A method of initiating a charge cycle for a battery pack operably coupled to a battery charger, comprising: placing a battery pack into sleep mode when the battery pack has been inactive for a period of time, wherein the battery pack is operable to reduce discharge of battery cells residing therein during the sleep mode; awakening the battery pack in response to the battery pack entering the sleep mode; and delivering a charge to the battery pack when the battery pack is awoken from the sleep mode. Appeal Br. 14 (claims appendix). 3 This Decision refers to: (1) Appellants’ Specification (“Spec.”) filed December 17, 2012; (2) the Final Office Action (“Final Act.”) mailed November 15, 2016; (3) the Appeal Brief (“Appeal Br.”) filed April 24, 2017; and (4) the Examiner’s Answer (“Ans.”) mailed August 24, 2017. Appeal 2018-001489 Application 13/716,317 3 REFERENCES The Examiner relies upon the following prior art4 in rejecting the claims on appeal: Bauer US 4,965,738 Oct. 23, 1990 Dias US 5,592,069 Jan. 7, 1997 Stockstad US 5,818,201 Oct. 6, 1998 Niculae US 2006/0139005 A1 June 29, 2006 REJECTIONS Claims 22–24, 27, and 29 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Stockstad and Bauer. See Final Act. 2–5. Claims 25, 26, and 30 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Stockstad, Bauer, and Dias. See Final Act. 5–6. Claims 28 and 31 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Stockstad, Bauer, and Niculae. See Final Act. 6–8. Our review in this appeal is limited to the above rejections and the issues raised by Appellants. Arguments not made in the Appeal Brief are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2016). 4 All citations to the references use the first-named inventor only. Appeal 2018-001489 Application 13/716,317 4 ANALYSIS Issue: Does the Examiner err in finding the cited combination of Stockstad and Bauer teaches or suggests “awakening the battery pack in response to the battery pack entering the sleep mode,” as recited in independent claim 22? The Examiner finds Stockstad teaches “awakening the battery pack in response to the battery pack entering the sleep mode.” Final Act. 3 (citing Stockstad Abstract) (“Pack sense circuit (240) senses when the battery pack is placed in a charger. If circuit (10) was in a sleep mode, it is awakened.”). Appellants dispute the Examiner’s factual findings. Appellants argue Stockstad does not teach “‘awakening the battery pack in response to the battery pack entering the sleep mode,’” as recited in claim 22, because the battery pack in the “Stockstad reference is awoken in response to coupling the battery pack to a charger and the battery pack already being in a sleep mode.” Appeal Br. 10. The Examiner responds that claim 22 does “not require the battery pack be awaken [sic] immediately upon entering a sleep mode” and therefore there is no distinction between entering a state and being in a state, as argued by Appellants. Ans. 3. We find unpersuasive Appellants’ argument that any distinction between entering a sleep mode and being in a sleep mode (see Appeal Br. 9– 10) is significant here, because we agree with the Examiner that entering a sleep mode is integral to being in a sleep mode. That is, as a precursor to being in a sleep mode, Stockstad’s battery pack necessarily enters a sleep mode and we, therefore, agree with the Examiner’s finding that Stockstad’s awakening of a battery pack in response to the battery pack being in a sleep Appeal 2018-001489 Application 13/716,317 5 mode teaches or at least suggests the disputed limitation. See Final Act. 2–3; Ans. 2–4. Next, Appellants argue “the Stockstad reference requires a two-step process to awaken the battery pack: first, entering a sleep mode and second, coupling with a charger” and in contrast, “[t]he present invention does not require coupling with a charger.” Appeal Br. 10. The Examiner responds “that the features upon which applicant relies (i.e., the battery pack is already coupled with a charger) are not recited in the rejected claim(s).” Ans. 3. We agree with the Examiner. The transitional term “comprising” in claim 22 indicates that the claim is open-ended and allows for additional elements or steps. See Dow Chem. Co. v. Sumitomo Chem. Co., 257 F.3d 1364, 1380 (Fed. Cir. 2001) (“It is fundamental that the use of th[e] phrase [comprising] as a transitional phrase ‘does not exclude additional unrecited elements, or steps.’” (citation omitted)); see also MPEP § 2111.03 I. Consequently, claim 22 does not exclude the second step (Stockstad’s coupling of the battery pack with a charger), upon which Appellants’ arguments are premised and, as noted by the Examiner, this argument fails because it is not commensurate with the scope of the claim. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982). For these reasons, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection of claim 22, and similarly, independent claim 27, which is not argued separately from claim 22. See Appeal Br. 11. Dependent claims 23– 26, and 28–31 are not argued separately and so we also sustain the Examiner’s 35 U.S.C. § 103(a) rejection of these claims. See Appeal Br. 11–12. Appeal 2018-001489 Application 13/716,317 6 DECISION We affirm the Examiner’s decision to reject claims 22–31 under 35 U.S.C. § 103(a). 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