International Business Machines CorporationDownload PDFPatent Trials and Appeals BoardJul 15, 20212020004145 (P.T.A.B. Jul. 15, 2021) Copy Citation 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. 14/318,658 06/29/2014 Soumyadip Ghosh YOR920140102US1 7292 98841 7590 07/15/2021 Otterstedt, Wallace & Kammer, LLP P.O. Box 381 Cos Cob, CT 06807-0381 EXAMINER ALKAFAWI, EMAN A ART UNIT PAPER NUMBER 2865 NOTIFICATION DATE DELIVERY MODE 07/15/2021 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): CTOFFICE@OEKLAW.COM admin1@oeklaw.com docket@oeklaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SOUMYADIP GHOSH, DUNG PHAN, and XU SUN ____________ Appeal 2020-004145 Application 14/318,658 Technology Center 2800 ____________ Before ADRIENE LEPIANE HANLON, JEFFREY B. ROBERTSON, and GEORGE C. BEST, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–3, 6–9, and 12–18 of Application 14/318,658. Final Act. (May 29, 2019). We have jurisdiction under 35 U.S.C. § 6. For the reasons set forth below, we reverse. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies International Business Machines Corp. as the real party in interest. Appeal Br. 3. Appeal 2020-004145 Application 14/318,658 2 I. BACKGROUND The ’658 Application describes methods for determining power output levels of generators in an electric power system and computer programs embodying such methods. Spec. ¶ 4; Claims 1, 7, 13. According to the Specification, electric power grid control is of increasing importance in electric generation. Id. ¶ 5. Centralized optimal power flow (OPF) algorithms commonly are used in this process. Id. According to Appellant, the ’658 Application describes a decentralized OPF algorithm that improves cost efficiency and enables real- time dynamic control without central coordination. Appeal Br. 4. Claim 1 is representative of the ’658 Application’s claims and is reproduced below from the Appeal Brief’s Claims Appendix. 1. A method of controlling a first power generating node of a plurality of power generating nodes in an electric power system comprising: receiving, at the first power generating node of the plurality of power generating nodes, voltage information and Lagrangian multipliers of all neighboring power generating nodes of the first power generating node within the electric power system; controlling the first power generating node to output an actual local power and an actual local voltage determined using the voltage information and the Lagrangian multipliers of the neighboring power generating nodes received by the first power generating node and distributing local voltage information about the actual local power and the actual local voltage output by the first power generating node to each of the neighboring power generating nodes; determining, by the first power generating node, an estimated voltage of each of the neighboring power generating nodes; and Appeal 2020-004145 Application 14/318,658 3 updating, by the first power generating node, a local Lagrangian multiplier using the voltage information received from the neighboring power generating nodes and the estimated voltage of each of the neighboring power generating nodes determined by the first power generating node and distributing the local Lagrangian multiplier to each of the neighboring power generating nodes, wherein each of the Lagrangian multipliers of the neighboring power generating nodes reflects voltage information received by a respective one of the neighboring power generating nodes from neighboring power generating nodes thereof and an estimated voltage of each of the neighboring power generating nodes of the respective node determined by the respective node. Appeal Br. 15. II. REJECTIONS On appeal, the Examiner maintains the following rejections: 1. Claims 1–3, 6–9, 12–14, and 16–18 are rejected under 35 U.S.C. § 103 as unpatentable over the combination of Raghunathan2 and Low.3 Final Act. 2. 2. Claim 15 is rejected under 35 U.S.C. § 103 as unpatentable over the combination of Raghunathan, Low, and Imes.4 Final Act. 25. 2 US 8,756,556 B1, issued June 17, 2014. 3 US 2015/0340863 A1, published November 26, 2015. 4 US 2010/0076613 A1, published March 25, 2010. Appeal 2020-004145 Application 14/318,658 4 III. DISCUSSION A. Rejection of claims 1–3, 6–9, 12–14, and 16–18 over the combination of Raghunathan and Low Before we consider Appellant’s claim-specific appeals, we must address a threshold issue: Is Low’s published non-provisional patent application prior art? The ’658 Application’s effective filing date is June 29, 2014. Filing Receipt (July 11, 2014); see also Appeal Br. 9. In rejecting claims 1, 7, and 13, the Examiner cites the November 26, 2015, published version of Low’s non-provisional patent application. Final Act. 2. The patent application—US Application No. 14/722,075—that resulted in the published version of Low was filed on May 26, 2015, which is after the ’658 Application’s filing date. Low [22]. Low’s non-provisional application, however, claims priority to US Provisional Application No. 62/002,697, which was filed May 23, 2014. Id. [60], ¶ 1. Low, therefore, is prior art only if it is entitled to benefit of the ’697 Provisional Application’s filing date. Appellant argues the Low is not so entitled. Appeal Br. 9–10. Because Appellant has raised the issue of whether Low is entitled to benefit of the filing date of a provisional application, the Examiner has the burden of establishing entitlement. The Federal Circuit has explained what must be shown for a non- provisional application to benefit from the filing date of a related provisional application. In Dynamic Drinkware, the Federal Circuit held that “[a] reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application Appeal 2020-004145 Application 14/318,658 5 provides support for the claims in the reference patent in compliance with § 112, ¶ 1.” Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1381 (Fed. Cir. 2015) (emphasis added). The Federal Circuit subsequently made clear that this rule applied to non-provisional applications—not just issued patents—seeking benefit of the filing date of a provisional application. Amgen Inc. v. Sanofi, 872 F.3d 1367, 1380 (Fed. Cir. 2017); see also MPEP § 2136.03(III). In this case, the Examiner has not attempted to show that at least one of the claims in Low’s non-provisional application is supported by the disclosure in the ’697 Provisional Application. The Examiner, therefore, has not met the burden of showing that Low’s effective filing date is that of the ’697 Provisional Application.5 Because the Examiner has not established that Low is prior art to the ’658 Application, we are constrained to reverse the rejection of claims 1–3, 6–9, 12–14, and 16–18 over the combination of Raghunathan and Low. B. Rejection of claim 15 over the combination of Raghunathan, Low, and Imes As discussed above, we have determined that the Examiner has not established that Low’s published non-provisional application is prior art to the ’658 Application. We, therefore, reverse the rejection of claim 15. 5 We express no opinion regarding whether the Examiner’s finding that the ’697 Provisional Application adequately supports the portions of Low’s non- provisional application relied upon in the rejection. Appeal 2020-004145 Application 14/318,658 6 IV. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 6–9, 12–14, 16–18 103 Raghunathan, Low 1–3, 6–9, 12– 14, 16–18 15 103 Raghunathan, Low, Imes 15 Overall Outcome 1–3, 6–9, 12–18 REVERSED Copy with citationCopy as parenthetical citation