Ex Parte Xu et al

Board of Patent Appeals and Interferences

Feb 20, 2009

10904252 (B.P.A.I. Feb. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JACK XU, JING SONG, ANTHONY PHILLIPS, and
MICHAEL TAMOR
____________

Appeal 2008-5550
Application 10/904,252
Technology Center 2800
____________

Decided1: February 20, 2009
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Before JOSEPH F. RUGGIERO, JOHN A. JEFFERY, and
CARLA M. KRIVAK, Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-5550
Application 10/904,252

STATEMENT OF CASE
Appellants’ claimed invention is a powertrain system for hybrid
electric and electric vehicles including an electric storage system (ESS)
(Spec. 1, [Para.1]) and method for controlling the operation of the vehicle.
The method and system maximize capacitor usage relative to battery usage
(cls. 1, 11, and 14).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.

1. A method for controlling operation of a vehicle having an
electric powertrain and an electric energy storage system (ESS)
in communication with the electric powertrain, the ESS
including a capacitor, a battery, and a DC/DC converter, the
method comprising:

controlling the DC/DC converter to maximize capacitor usage
relative to battery usage.

REFERENCES
Bates US 5,318,142 Jun. 7, 1994
Reimer US 6,713,894 B1 Mar. 30, 2004

The Examiner rejected claims 1-4 and 11-16 under 35 U.S.C. §
102(b)2 based upon the teachings of Reimer.

2 Although the Examiner refers to the corresponding PCT publication date
of this reference (Ans. 3), the reference itself actually qualifies as prior art
under §§ 102(a) and (e)—not § 102(b)—since it was available to the public
less than one year before the filing date of the present invention (Nov. 1,
2004). Nevertheless, we deem this error harmless as it does not affect our
decision regarding the merits of the anticipation rejection.
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Application 10/904,252

The Examiner rejected claims 1, 5-10, 14, and 17-20 under 35 U.S.C.
§ 102(b) based upon the teachings of Bates.
Appellants contend neither Reimer nor Bates disclose maximizing
capacitor usage relative to battery usage (Br. 6, 10).3

ISSUE
Did Appellants establish that the Examiner erred by finding Reimer
and Bates teach maximizing capacitor usage relative to battery usage for use
in an electric vehicle?

FINDINGS OF FACT
1. Appellants’ invention maximizes capacitor usage by controlling
power flow to and from a battery (Spec. 2, [Para. 10]). Capacitor usage can
be maximized by controlling the DC/DC converter to prevent discharging
the battery until after the capacitor has been discharged to a low discharge
threshold. Further, capacitor usage can be maximized by controlling the
DC/DC converter to prevent charging the battery until after the capacitor has
been charged to a high charge threshold (Spec. 2, [Para. 10]). Thus, the
capacitor is charged and discharged prior to charging and discharging the
battery to maximize capacitor usage, thereby increasing battery life and
making it possible to use a smaller battery (Spec. 3, [Para. 12]).
2. Reimer teaches a system supplying electricity to a motor
vehicle using a capacitor having a maximum value greater than the
maximum value of a rechargeable battery (Abstract). Charging the battery is

3 Reference is made throughout this opinion to the Brief mailed July 2,
2007.
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Appeal 2008-5550
Application 10/904,252

controlled by the capacitor. The capacitor is maximally discharged until a
capacitor voltage is reached, which is approximately equal to the momentary
actual voltage of the battery (col. 2, ll. 2-6).
3. Bates teaches a hybrid drive system that includes a super
capacitor or power maximized battery capable of storing electrical energy
(col. 3, ll. 5-9). Control means 24 determines which supplemental energy
source (fuel tank, super capacitor, or battery) is to be used to energize the
vehicle (col. 4, ll. 35-40).
4. The super capacitor of Bates provides high power to the vehicle
during peak power demands over short time intervals only when it is a low
energy/high power device. The battery provides a large amount of energy
and moderate power over substantial periods of time only when it is a high
energy/ moderate power device. Thus, the battery re-charges the capacitor
as the power capacity of the capacitor diminishes or is exhausted (col. 6, ll.
57-68).

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of Calif., 814 F.2d 628, 631
(Fed. Cir. 1987). “Inherency . . . may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed.
Cir. 1999) (citations omitted).

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Appeal 2008-5550
Application 10/904,252

ANALYSIS
Reimer
Claims 1, 4, 11, and 14
The Examiner rejected claims 1-4 and 11-16 as anticipated by Reimer.
Independent claims 1, 11, and 14 were argued together (Br. 5), claims 2, 12,
and 15 were argued together (Br. 7), and claims 3, 13, and 16 were argued
together (Br. 8). Furthermore, claim 4 was not separately argued with
particularity. Accordingly, claim 4 is grouped with independent claims 1,
11, and 14, and claim 1 is selected as representative of this group. See 37
C.F.R. § 41.37(c)(1)(vii).
The Examiner finds Reimer teaches all the elements of claims 1, 11,
and 14. Particularly, Reimer teaches a controller for controlling power flow
between an electric storage system (ESS) and an electric power train such
that the “capacitor usage is maximized relative to battery usage” (Ans. 4-5).
Appellants assert Reimer controls charging the battery using a
capacitor by way of a voltage converter “such that the charged capacitor is
discharged until a capacitor voltage is reached which is approximately equal
to the actual voltage of the battery” and thus, there is a “‘downward’
transformation in the sense of a voltage reduction starting from the capacitor
voltage to the battery voltage” (Br. 6). Therefore, the capacitor is discharged
only until the capacitor voltage is approximately equal to the actual voltage
of the battery (id.).
The Examiner notes Appellants’ description of Reimer (Ans.8; FF2) is
correct, however, Appellants’ claims merely recite controlling the DC/DC
converter to “maximize capacitor usage relative to battery usage” (cls. 1, 11,
and 14), which Reimer teaches (FF2). Because the claims are broadly
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written and do not contain any requirements regarding how the capacitor
usage is maximized relative to battery usage, they read on Reimer. See FF2.
Reimer, therefore, anticipates representative claim 1. Accordingly,
Appellants have not provided persuasive evidence that the Examiner erred in
rejecting that claim over Reimer, or claims 4, 11 and 14 that fall with claim
1.
Claims 2, 12, and 15
Appellants address claims 2, 12 and 15 together (Ans. 7). This
rejection is addressed with respect to claim 2, which is selected as
representative of this group.
Claim 2 recites preventing the battery from discharging until after the
capacitor has been discharged to a discharge threshold, which Appellants
argue, “necessarily requires that the capacitor be discharged well below the
battery voltage” (Br. 8). In contrast, Appellants contend, the battery in
Reimer begins discharging as soon as the capacitor voltage equals the
battery voltage and thus, allows discharging the battery at the same voltage
as the capacitor (Br. 8).
The Examiner finds Appellants’ claims do not require the discharge
threshold to be lower than the battery voltage. Further, there is no support in
the Specification for such an interpretation (Ans. 8).
As found by the Examiner, the claims as written read on Reimer in
that they do not require the discharge threshold to be lower than the battery
voltage as asserted by Appellants. Thus, the claims do not preclude
allowing the battery to be discharged at the same voltage as the capacitor as
taught by Reimer (FF2). Therefore, Reimer anticipates claims 2, 12, and 15.

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Appeal 2008-5550
Application 10/904,252

Claims 3, 13, and 16
The Appellants address claims 3, 13, and 16 together (Ans. 8). This
rejection is addressed with respect to claim 3, which is selected as
representative of this group.
Claim 3 recites preventing charging the battery until after the
capacitor has been charged to a charge threshold. The Examiner states
Reimer initially discloses simultaneously charging the battery and capacitor
and “[It] is inherent that at the start of simultaneous charging that the
capacitor voltage is above a ‘threshold’” (Ans. 9). The Examiner further
states there is no requirement in the claims that the capacitor charge
threshold be higher than the battery voltage (id.).
Appellants contend that Reimer teaches, in column 2, line 66-column
3, line 4, if the capacitor is charged to a voltage greater than the battery, the
transformer discharges the capacitor or otherwise controls the charging the
battery so the voltage on the battery equals the voltage on the capacitor (Br.
9). Therefore, the capacitor and battery are equally charged to have the
same voltage (Br. 9). Thus, Reimer does not teach preventing the batteries
from charging until after the capacitor is charged above a threshold level.
Even if the Examiner is correct that the capacitor and battery are
charged simultaneously, the Examiner’s statement that it is inherent that the
capacitor voltage is above a threshold (Ans. 9) is not supported. Figure 2 of
Reimer, however, suggests that a zero potential voltage for the capacitor is
possible while the battery starts charging. Anticipation requires that
charging the capacitor to a charge threshold must be necessarily present and
cannot be based on probabilities or possibilities. Robertson, 169 F.3d at
745. The Examiner has provided no evidence showing how it is inherent
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that, at the start of simultaneous charging, the capacitor voltage is above the
threshold voltage. Because Figure 2 of Reimer does not suggest the voltage
on the capacitor is above a threshold before the battery is charged, Reimer
does not anticipate claims 3, 13, and 16.
Bates
The Examiner rejected claims 1, 5-10, 14, and 17-20 as anticipated by
Bates (Ans. 5). Since independent claims 1 and 14 contain substantially the
same limitations, this rejection is addressed with respect to claim 1.
The Examiner agrees with Appellants’ description of Bates, but
disagrees that Bates fails to teach maximizing capacitor usage relative to
battery usage (Ans. 9). The Examiner finds Bates teaches using a capacitor
during peak power demands over a short period of time, and thus, is
maximized relative to battery usage (Ans. 9).
Appellants contend Bates use of a battery and capacitor are such that
the capacitor is used during peak power demands over short periods of time
and the battery is used during power demands over longer periods of time
(Br. 10; FF4). Therefore, Bates only distinguishes between usage of the
battery and capacitor as a function of time periods (Br. 10).
As Appellants assert, Bates does not teach maximization of capacitor
usage relative to battery usage. Rather, Bates teaches a distinction between
the use of the capacitor and battery at different time periods under different
conditions (FF3). Accordingly, Bates does not teach every element set forth
in claim 1, either expressly or inherently. Thus, claim 1, and therefore,
claims 5-10, 14, and 17-20, is not anticipated by Bates.

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CONCLUSIONS
The Examiner did not err in rejecting claims 1, 2, 4, 11, 12, 14 and 15
under 35 U.S.C. § 102.
The Examiner erred in rejecting claims 3, 5-10, 13, and 16-20 under
35 U.S.C. § 102.

DECISION
The Examiner’s decision in rejecting claims 1, 2, 4, 11, 12, 14, and 15
is affirmed. The Examiner’s decision in rejecting claims 3, 5-10, 13, and 16-
20 is reversed.
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-IN-PART

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