John Channing. Bousfield

Patent Trials and Appeals Board

Apr 8, 2020

13589228 - (D) (P.T.A.B. Apr. 8, 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.
13/589,228 08/20/2012 John Channing Bousfield III 2011P19459 US 9558
28524 7590 04/08/2020
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
Orlando, FL 32817
EXAMINER
ASSOUAD, PATRICK J
ART UNIT PAPER NUMBER
2858
NOTIFICATION DATE DELIVERY MODE
04/08/2020 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):
ipdadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN CHANNING BOUSFIELD III
Appeal 2018-006557
Application 13/589,228
Technology Center 2800
Before MONTÉ T. SQUIRE, LILAN REN, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4. See Appeal Br. 3 and Final
Act. 2–6. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as “Siemens
Aktiengesellschaft of Munich, Germany.” Appeal Br. 1.
Appeal 2018-006557
Application 13/589,228

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CLAIMED SUBJECT MATTER
The invention “relates to a system and method of providing
communication between a power cell, a mechanical bypass and a controller
to determine a current bypass status of the power cell.” Spec. ¶ 1. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A system comprising:
a power cell comprising:
a first output terminal and a second output terminal, and
a first communication interface; and
a bypass mechanism operably connected to the first output
terminal and the second output terminal and configured to
create a shunt path between the first output terminal and the
second output terminal, the bypass mechanism comprising a
second communication interface configured to transmit a
bypass signal to the first communication interface in response
to a change in state of the bypass mechanism,
wherein the first communication interface and the second
communication interface are configured to establish a
bi-directional data link between the power cell and the bypass
mechanism, the first communication interface being configured
to transmit information specific to the power cell to the bypass
mechanism via the bi-directional data link and the second
communication interface being configured to transmit
information specific to the bypass mechanism to the power cell
via the bi-directional data link allowing a single connection to a
controller from either the power cell or the bypass mechanism.

Claims Appendix (Appeal Br. 8).
REFERENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Hammond US 2008/0081244 Al Apr. 3, 2008

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REJECTION
Claim 1–4 are rejected under 35 U.S.C. § 103 as being unpatentable
over Hammond. Final Act. 2.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Cf. Ex parte Frye, 2010 WL 889747, *4 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d at 1365 (“[I]t has long been the
Board’s practice to require an applicant to identify the alleged error in the
examiner’s rejections.”)). After having considered the evidence presented in
this Appeal and each of Appellant’s contentions, we are not persuaded that
Appellant identified reversible error. We affirm the Examiner’s rejection
for the reasons expressed in the Final Office Action and the Answer. We add
the following primarily for emphasis.
In rejecting claim 1, the Examiner finds that Hammond teaches a
system having local PC boards 366/368 as the recited “first communication
interface.” Final Act. 3. Appellant, however, argues that “Hammond does
not disclose any communication interface of the power cell” as compared to
FIG. 5 of the Specification showing “a power cell 505 comprising
communication interface 530.” Appeal Br. 5; see Reply Br. 2–6 (repeating
the argument with regard to FIG. 5 of the Specification). Although not
clearly stated, Appellant’s argument seems to be that claim 1 requires the
first communication surface to be disposed at a particular location on the
power cell precisely as illustrated in FIG. 5. Id; see also Ans. 7 (explaining
that FIG. 5 of the Specification “appears to require the corresponding
communication interface within the power cell”).
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Application 13/589,228

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“In the patent claim context, the term ‘comprising’ is well understood
to mean ‘including but not limited to’.” CIAS, Inc. v. Alliance Gaming
Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007). In this case, claim 1 requires
no more than “a power cell comprising . . . a first communication interface”
without limiting the first communication interface to any particular physical
configuration in relation to the other recited components. As the Examiner
points out –– to which Appellant does not respond –– although FIG. 5 of the
Specification illustrates a particular arrangement of power cell 505 in
relation to communication interface 530, the scope of claim 1 is not limited
to the illustration shown in FIG. 5. Ans. 7 (citing Spec. ¶¶ 8, 9). Therefore,
Appellant’s arguments do not identify reversible error in the Examiner’s
findings here.
We also do not find persuasive of reversible error Appellant’s
argument that local PC boards 366/368 in Hammond “control bypass
devices 354, 356 and are therefore not communication interfaces of the
power cell, but communication interfaces of the bypass devices 352, 354,
356.” Appeal Br. 5. As noted supra, claim 1 requires no more than “a power
cell comprising . . . a first communication interface.” The claim language
does not require the recited first communication interface to be used
exclusively with the power cell. Moreover, “apparatus claims cover what a
device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb
Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). The patentability of claim 1, an
apparatus claim, “depends on the claimed structure, not on the use or
purpose of that structure.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com,
Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). Appellant’s argument here does not
structurally distinguish the prior art and is therefore unpersuasive.
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Appellant also argues that the Examiner reversibly erred in finding
that Hammond teaches “the first communication interface being configured
to transmit information specific to the power cell to the bypass mechanism
via the bi-directional data link” as recited in claim 1. Appeal Br. 5.
Appellant acknowledges Hammond provides that “each of the local printed
circuit boards 364, 366, 368 are configured to receive commands from, and
report status to, a master control device . . . .” Id. (citing Hammond ¶ 45);
see also Final Act. 3–4 (citing Hammond ¶¶ 34–46). Appellant, however,
argues that “Hammond only provides communication of all the local printed
circuit boards 364, 366, 368 with and/or via the master control device” and
does not teach these boards are configured to transmit information “to the
bypass mechanism” as recited. Appeal Br. 6.
We do not find this argument persuasive because claim 1 is an
open-ended claim and does not exclude a master control device.
Furthermore, as the Examiner finds, the local printed circuit boards in
Hammond are structurally identical to the component recited in claim 1 and
paragraph 45 of Hammond discloses that the local printed circuit boards are
configured to receive and report information. Final Act. 7. As noted supra,
“apparatus claims cover what a device is, not what a device does.” Hewlett-
Packard Co., 909 F.2d at 1468. Absent structural distinction over the prior
art, the way in which a device or a component may be used does not
patentably distinguish over the prior art. Catalina Mktg. Int’l, Inc, 289 F.3d
at 809.
Based on the foregoing, we sustain the rejection of claim 1. Appellant
does not argue the rejection of claims 2–4 separately; we, therefore, sustain
Appeal 2018-006557
Application 13/589,228

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the Examiner’s rejection of those claims as well. See Appeal Br. 3–7; see
also 37 C.F.R. § 41.37(c)(1)(vii).

CONCLUSION
The Examiner’s rejection is affirmed.
More specifically,

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4 103 Hammond 1–4

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED