International Business Machines Corporation

Patent Trials and Appeals Board

Jul 15, 2021

2020004145 (P.T.A.B. Jul. 15, 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.
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
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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
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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
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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.
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Application 14/318,658
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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
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Application 14/318,658
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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.
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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