Enphase Energy, Inc.

Patent Trials and Appeals Board

Jul 30, 2021

2020002499 (P.T.A.B. Jul. 30, 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.
14/505,268 10/02/2014 Martin Fornage EE137 2384
54698 7590 07/30/2021
MOSER TABOADA
1030 BROAD STREET
SUITE 203
SHREWSBURY, NJ 07702
EXAMINER
COYER, RYAN D
ART UNIT PAPER NUMBER
2191
NOTIFICATION DATE DELIVERY MODE
07/30/2021 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):
docketing@mtiplaw.com
llinardakis@mtiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN FORNAGE and BENJAMIN SMITH
Appeal 2020-002499
Application 14/505,268
Technology Center 2100
Before MARC S. HOFF, JAMES R. HUGHES, and
JOHN A. EVANS, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Claims 1–20 are pending, stand rejected, are appealed by Appellant,
and are the subject of our decision under 35 U.S.C. § 134(a).1 See Final Act.
1; Appeal Br. 3.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Enphase Energy, Inc.
Appeal Br. 3.
2 We refer to Appellant’s Specification (“Spec.”), filed Oct. 2, 2014
(claiming benefit of US 61/885,737, filed Oct. 2, 2013); Appeal Brief
(“Appeal Br.”), filed Mar. 4, 2019; and Reply Brief (“Reply Br.”), filed Feb.
Appeal 2020-002499
Application 14/505,268
2
CLAIMED SUBJECT MATTER
The claimed subject matter, according to Appellant, “relate generally
to power production and, more particularly, to controlling power production
based on predicted weather events.” Spec. ¶ 2. More specifically,
Appellant’s claimed method for controlling power production includes
predicting (or receiving a prediction of) a weather event, using a distributed
generator (DG) controller to determine a predicted power production impact
for a coupled DG array based on the prediction of the weather event, and
automatically (autonomously) controlling (by the DG controller) power
production in one or more power converters of the DG array to compensate
for the predicted power production impact. See Spec. ¶¶ 3–5, 18–23, 30–32,
36–39; Abstract. Claim 1 (directed to a method), 8 (directed to an
apparatus), and 15 (directed to a system) are independent. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method for controlling power production,
comprising:
obtaining a prediction of a weather event;
determining, by a distributed generator (DG) master
controller communicatively coupled to a DG array, a predicted
power production impact for the DG array based on the
prediction of the weather event; and
autonomously controlling, by the DG master controller
communicatively coupled to the DG array, power production in
one or more power converters of the DG array to compensate for
the predicted power production impact.
Appeal Br. 16 (Claims App.) (emphasis added).

10, 2020. We also refer to the Examiner’s Final Office Action (“Final
Act.”), mailed Oct. 1, 2018; and Answer (“Ans.”) mailed Dec. 10, 2019.
Appeal 2020-002499
Application 14/505,268
3
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Bose et al. (“Bose”) US 2010/0292857 A1 Nov. 18, 2010
Tokyo Electric Power
Co. (“Tokyo Elect.
Power”)
JP2012-10536(A) Jan. 12, 2012
F. Katiraei and M.R. Iravani, Transients of a Micro-Grid System with
Multiple Distributed Energy Resources, Int’l Conf. on Power Systems
Transients (IPS’05) (June 2005) (“Katiraei”).

REJECTIONS3, 4
1. The Examiner rejects claims 1–20 under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement. See Final Act.
2–3.
2. The Examiner rejects claims 1–3, 5–10, and 12–19 under 35
U.S.C. § 102(a)(1) as being anticipated by Bose. See Final Act. 6–11.
2. The Examiner rejects claims 4, 11, and 20 under 35 U.S.C.
§ 103 as being unpatentable over Bose and Katiraei. See Final Act. 11–14.
3. The Examiner rejects claim 1–20 under 35 U.S.C. § 103 as
being unpatentable over Tokyo Elect. Power. See Final Act. 5.

3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
Stat. 284 (2011), amended 35 U.S.C. §§ 102, 103, and 112. Because the
present application has an effective filing date after the AIA’s effective date
(March 16, 2013), this decision refers to 35 U.S.C. § 102(a)(1), 35 U.S.C.
§ 103, and 35 U.S.C. § 112(a).
4 The Examiner withdrew the patent eligibility rejection under 35 U.S.C.
§ 101. See Final Act. 3–6; Ans. 13. We do not address Appellant’s
arguments with respect to the § 101 rejection. See Appeal Br. 8–11.
Appeal 2020-002499
Application 14/505,268
4
ANALYSIS
Written Description Rejection of Claims 1–20
The Examiner rejects claims 1–20 as failing to comply with the
written description requirement. See Final Act. 2–3; Ans. 14–17.
Specifically, the Examiner rejects claim 1 (and the other pending claims)
because the claim recites “autonomously controlling”—“autonomously
controlling, by the DG master controller, power production in one or more
power converters of the DG array to compensate for the predicted power
production impact” (Final Act. 2 (quoting claim 1)), for which the Examiner
finds no written description support in Specification. See Final Act. 2–3;
Ans. 14–17.
Appellant contends that there is support for the disputed feature of
claim 1 (“autonomously controlling”) because it is “well-known” to monitor
and interact with autonomous control systems and an autonomous controller
“is not required to operate in a vacuum without any type of input in order to
provide autonomous control of a system.” Appeal Br. 6; see Appeal Br. 6–
8; Reply Br. 2–3. Appellant cites extrinsic evidence to further support their
interpretation of autonomous control. See Appeal Br. 7; Reply Br. 3.
The test for sufficiency under the written description requirement “is
whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly and Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010).
We agree with the Examiner that Appellant’s Specification lacks
written description support and does not reasonably convey to those skilled
in the art that Appellant had possession of the claimed subject matter as of
the filing date of the instant application.
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Application 14/505,268
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Contrary to Appellant’s argument, Appellant does not point to or cite
“numerous portions of the instant specification that provide support for the
claimed autonomous control.” Reply Br. 2; see Ans. 16 (discussing
Appellant’s response that cites Spec ¶¶ 18, 19). In fact, Appellant does not
cite any support in the Specification for this feature in either Appellant’s
Appeal Brief arguments (see Appeal Br. 6–8) or in the Reply Brief (see
Reply Br. 2–3). The only citation for this feature appears in the “Summary
of Claimed Subject Matter” (see Appeal Br. 4), which states that paragraphs
18, 23, 32–41 of the Specification and Figure 2 of the drawings support this
feature. In reviewing the cited portions of the Specification, however, we
find no support for the disputed feature. The cited portions of the
Specification do not describe, in any manner, autonomous control. Instead,
the cited portions merely describe the DG master controller performing
control functions (e.g., controlling power production and controlling power
output from the DG arrays). At best, Appellant’s Specification describes
“real-time or near real-time power production control.” Spec. ¶ 37. Real-
time control, however, is not necessarily autonomous control. Appellant
does not persuasively argue otherwise.
Appellant’s Specification lacks any mention of the controller
performing autonomous control of (or the controller autonomously
controlling) power production. In view of Appellant’s dispute of the
Examiner’s interpretation of the terminology, we look to extrinsic sources to
determine the meaning of “autonomous.” “Autonomous” has a well-
understood meaning—“functioning independently without control by
others.” Webster’s New World College Dictionary (4th ed. 1999).
Therefore, we broadly, but reasonably interpret “autonomously controlling”
to mean independently controlling without external control, which is
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Application 14/505,268
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contrary to Appellant’s position. See Appeal Br. 6 (supra). As pointed out
by the Examiner, Appellant added the disputed feature (of autonomously
controlling) by amendment of the claims after the filing of the Specification.
See Ans. 15–16. Because Appellant’s Specification lacks any disclosure of
independent control, automatic control, or controlling without user
interaction, we agree with the Examiner that Appellant’s Specification does
not reasonably convey to those skilled in the art that Appellant had
possession of the claimed subject matter when the original Specification was
filed. Appellant’s Specification does not provide sufficient written
description support for the claimed features the Examiner found lacking in
such support. Thus, Appellant does not persuade us that the Examiner erred
in rejecting claims 1–20 as lacking sufficient written description support,
and we sustain the Examiner’s rejection.
Anticipation Rejection of Claims 1–3, 5–10, and 12–19
The Examiner rejects independent claim 1 (as well as independent
claims 8 and 15 and dependent claims 2, 3, 5–7, 9, 10, 12–14, and 16–19) as
anticipated by Bose. See Final Act. 6–7; Ans. 17–18. Specifically, the
Examiner finds that Bose discloses every feature of claim 1, including a
distributed generator (DG) master controller obtaining a weather prediction,
determining a predicted power production impact based on the weather
prediction, and controlling power production to compensate for the predicted
power production impact. See Final Act. 7 (citing Bose ¶¶ 1, 7, 26, 27 32–
36; Fig. 4). The Examiner determines that the “autonomously controlling”
feature of claim 1 fails to comply with the written description requirement
(supra) and excises the feature from the claim. See Ans. 17–18. The
Examiner finds that Bose does not disclose autonomously controlling, but
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Application 14/505,268
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does disclose controlling power output based on weather predictions. See
Ans. 18.
Appellant contends that Bose does not disclose the disputed limitation
of claim 1—a controller that “both determines a potential power production
impact based on predicted weather and autonomously controls power
production” (Appeal Br. 12). See Appeal Br. 12; Reply Br. 4.
We agree with Appellant that the Examiner-cited portions of Bose do
not disclose “autonomously controlling, by the DG master controller
communicatively coupled to the DG array, power production in one or more
power converters of the DG array to compensate for the predicted power
production impact” (Appeal Br. 18 (Claims App.) (claim 1). The Examiner
concedes that “Bose admittedly does not disclose ‘autonomously
controlling.’” Ans. 18.
The Examiner has not shown that Bose discloses the disputed features
of claim 1. To anticipate a prior art reference must “disclose all elements of
the claim within the four corners of the document, and it must disclose those
elements arranged as in the claim.” Microsoft Corp. v. Biscotti, Inc., 878
F.3d 1052, 1068 (Fed. Cir. 2017) (internal quotation marks omitted). See
Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989);
Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir.
1987); Manual Patent Examining Procedure (“MPEP”) § 2131.
Consequently, we are constrained by the record before us to find that
the Examiner erred in finding Bose anticipates Appellant’s claim 1.
Independent claims 8 and 15 include limitations of commensurate scope.
Dependent claims 2, 3, 5–7, 9, 10, 12–14, and 16–19 depend from and stand
with their respective base claims. Accordingly, Appellant’s contentions
persuade us of error in the Examiner’s anticipation rejection of
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Application 14/505,268
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representative independent claim 1 and we reverse the Examiner’s rejection
of claims 1–3, 5–10, and 12–19.
Obviousness Rejections of Claims 4, 11, and 20
The Examiner rejects dependent claims 4, 11, and 20 as obvious over
Bose and Katiraei. See Final Act. 11–15. The Examiner relies on Bose to
teach the “autonomously controlling” limitation of independent claim 1. As
discussed with respect to claim 1 (supra), Bose does not disclose, teach, or
suggest such autonomous control. The Examiner does not assert, nor do we
find, that the additional cited reference (Katiraei) cures the deficiencies of
Bose (supra). Therefore, we do not sustain the Examiner’s obviousness
rejections of claims 4, 11, and 20 for the same reasons set forth for claim 1
(supra).
Obviousness Rejection Based on Tokyo
Electric Power
The Examiner also rejects independent claim 1 (and the remaining
pending claims, 2–20) as being obvious over Tokyo Elect. Power. See Final
Act. 14–15; Ans. 20. Appellant contends that Tokyo Elect. Power does not
teach the disputed limitations of independent claim 1 (as well as independent
claims 8 and 15). See Appeal Br. 14; Reply Br. 4–58. Appellant
specifically contends, inter alia, “Tokyo Electric Power teaches reducing
variation on a distribution line by operating switches to connect/disconnect
inverters to/from different phase lines, which is distinctly different from a
master controller that autonomously controls the amount of power produced
in one or more power converters.” Reply Br. 4; see Appeal Br. 14.
We agree with Appellant that the Examiner-cited portions of Tokyo
Elect. Power does not teach “autonomously controlling, by the DG master
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Application 14/505,268
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controller . . . power production in one or more power converters of the DG
array to compensate for the predicted power production impact” (Appeal Br.
16 (Claims App.) (claim 1)). As pointed out by Appellant (supra), the
Examiner-cited portions of the translated Japanese prior art application (the
Tokyo Elect. Power reference) do not describe controlling converters of a
DG (photovoltaic or “PV”) array to control power production (the actual
power produced). Instead Tokyo Elect. Power describes controlling power
distribution. See Appeal Br. 14; Reply Br. 4; Tokyo Elect. Power ¶¶ 20–24;
Fig. 1. As shown in Figure 1 and described in paragraphs 16–17 (of Tokyo
Elect. Power), solar power generation facilities 13 and power storage
devices 14 are connected to distribution lines 11 (3-phase distribution lines)
through distribution transformers 12. Switching units 15, on the primary
side of the distribution transformers 12, allow connection switching
(connection and disconnection) between the various phases of the
distribution lines 11. See Id. An arithmetic control unit (arithmetic and
control unit 16) controls operation of the switches (element 15). See Tokyo
Elect. Power ¶¶ 18–24; Fig. 1. The Examiner does not sufficiently explain
how controlling operation of phase connection switches autonomously
controls the power produced by convertors in a DG (PV) array as required
by claim 1.
Consequently, we are constrained by the record before us to find that
the Examiner erred in finding that Tokyo Elect. Power renders obvious at
Appellant’s representative claim 1. Independent claims 8 and 15 include
limitations of commensurate scope. Dependent claims 2–7, 9–14, and 16–20
depend from and stand with their respective base claims. Accordingly,
Appellant’s contentions persuade us of error in the Examiner’s obviousness
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Application 14/505,268
10
rejection of representative independent claim 1 and we reverse the
Examiner’s rejection of claims 1–20.
CONCLUSION
Appellant has not shown that the Examiner erred in rejecting claims
1–20 as lacking sufficient written description support under 35 U.S.C.
§ 112(a). Appellant has shown that the Examiner erred in rejecting claims
1–3, 5–10, and 12–19 as being anticipated by Bose under 35 U.S.C.
§ 102(a)(1). Appellant has also shown that the Examiner erred in rejecting
claims 1–20 under 35 U.S.C. § 103. We, therefore, do not sustain the
Examiner’s rejection of claims 1–20.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 112(a) Written
Description
1–20
1–3, 5–10,
12–19
102 (a)(1) Bose 1–3, 5–10,
12–19
4, 11, 20 103 Bose, Katiraei 4, 11, 20
1–20 103 Tokyo Elect.
Power
1–20
Overall
Outcome
1–20

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).
Appeal 2020-002499
Application 14/505,268
11
AFFIRMED