Ex Parte 7,629,705 et al

Patent Trial and Appeal Board

Mar 30, 2016

95000633 (P.T.A.B. Mar. 30, 2016)

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.
95/000,633 05/24/2011 7,629,705 1299600.00197US1 2639
23483 7590 03/31/2016
WILMERHALE/BOSTON
60 STATE STREET
BOSTON, MA 02109
EXAMINER
NASSER, ROBERT L
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
03/31/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MITSUBISHI HEAVY INDUSTRIES, LTD.
Requester and Respondent

v.

GENERAL ELECTRIC CO.
Patent Owner and Appellant

____________

Appeal 2016-001974
Reexamination Control 95/000,633
Patent 7,629,705 B2
Technology Center 3900
____________

Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and
DENISE M. POTHIER, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

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DECISION ON APPEAL
Patent Owner appeals under 35 U.S.C. §§ 134 and 315 the Examiner’s
decision to reject claims 7–9, 13, 14, 20, and 21. App. Br. 2.1 The present
inter partes reexamination proceeding was terminated with respect to claims
1–6 due to estoppel under 35 U.S.C. § 317(b).2,3 Claims 10–12 and 15–17
were not reexamined (RAN 1), nor does Patent Owner appeal the
Examiner’s rejections of claims 18 and 19.4 We have jurisdiction under
35 U.S.C. §§ 134 and 315, and we heard the appeal on March 23, 2016. We
affirm-in-part.

1 Throughout this opinion, we refer to (1) the Right of Appeal Notice mailed
October 17, 2014 (“RAN”); (2) Patent Owner’s Appeal Brief filed February
24, 2015 (“App. Br.”); (3) the Examiner’s Answer mailed July 13, 2015
(“Ans.”); and (4) Patent Owner’s Rebuttal Brief filed August 13, 2015
(“Reb. Br.”). Requester did not submit a brief, and is no longer participating
in the proceeding, including this appeal. See Third Party Requester Notice
of Non-Participation; Notice of Litigation Settlement, filed Mar. 11, 2014.
2 See Decision Granting Petition to Terminate Inter Partes Reexamination of
Claims 1–6, mailed Sept. 19, 2014.
3 Although Requester cross-appealed the Examiner’s non-adoption of
various proposed rejections in connection with the Examiner’s RAN mailed
May 7, 2013, Requester did not file a cross-appeal (or any other brief)
responsive to the Examiner’s subsequent RAN mailed October 17, 2014
which forms the basis for this appeal. Accordingly, only Patent Owner is
involved in the present appeal.
4 Although Patent Owner requests cancellation of claims 18 and 19 (App.
Br. 2; Reb. Br. 1), the Examiner did not cancel those claims. Because Patent
Owner does not contest the Examiner’s rejections of these claims, we
summarily sustain these rejections. See Ans. 3 (listing four grounds of
rejection of claims 18 and 19 under § 103).
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STATEMENT OF THE CASE
This proceeding arose from a request for inter partes reexamination
filed on behalf of Requester, on May 24, 2011 (“Request”), of United States
Patent 7,629,705 (“the ’705 patent”), issued to Barker et al. on December 8,
2009.
The ’705 patent describes coupling an electrical machine to an electric
power system. A control system facilitates the electrical machine remaining
electrically connected to the power system during and after a voltage
amplitude operating outside of a predetermined range for an undetermined
time period. The machine also remains connected when a voltage amplitude
decreases to approximately zero volts for a predetermined time period, thus
facilitating zero voltage ride through (ZVRT). See generally Abstract;
col. 8, ll. 29–46. Claim 1, reproduced below, is illustrative of the invention:
1. A method for operating an electrical machine, said method
comprising:
coupling the electrical machine to an electric power
system such that the electric power system is configured to
transmit at least one phase of electric power to the electrical
machine; and
configuring the electrical machine such that the electrical
machine remains electrically connected to the electric power
system during and subsequent to a voltage amplitude of the
electric power system operating outside of a predetermined
range for an undetermined period of time, said configuring the
electrical machine comprising:
electrically coupling at least a portion of a control system
to at least a portion of the electric power system;
coupling the control system in electronic data
communication with at least a portion of the electrical machine;
and
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configuring the electrical machine and the control system
such that the electrical machine remains electrically connected
to the electric power system during and subsequent to the
voltage amplitude of the electric power system decreasing
below the predetermined range including approximately zero
volts for the undetermined period of time, thereby facilitating
zero voltage ride through (ZRVT).

RELATED PROCEEDINGS
This appeal is said to be related to various proceedings. First, the
’705 patent was involved in two separate district court actions in Arkansas
and Texas, respectively, that were dismissed due to settlement. App. Br. 1–
2. Second, reexamination certificates were issued for the ’705 patent in
connection with ex parte reexamination control numbers 90/012,587 and
90/012,880, respectively. App. Br. 2. Both certificates confirmed claim 1’s
patentability. See US 7,629,705 C1 (certificate issued July 12, 2013); see
also US 7,629,705 C2 (certificate issued April 24, 2014).
Lastly, this inter partes reexamination proceeding was terminated
with respect to claims 1–6 due to estoppel under 35 U.S.C. § 317(b) as noted
previously. See Decision Granting Petition to Terminate Inter Partes
Reexamination of Claims 1–6, mailed Sept. 19, 2014 (“USPTO Termination
Dec’n”). Accord RAN 3–4; App. Br. 2 (noting this action).

THE APPEALED REJECTIONS
Patent Owner appeals the Examiner’s rejecting the claims as follows:
Claim 7 under 35 U.S.C. § 102(b) as anticipated by Wall
(US 6,784,565 B2; Aug. 31, 2004). Ans. 5–6.
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Claims 8,5 9, 13, 14, 20, and 21 under 35 U.S.C. § 103(a) as obvious
over Wall and Pate (US 6,531,926 B1; Mar. 11, 2003). Ans. 6–7.6
Claims 8, 9, 13, 14, 20, and 21 under 35 U.S.C. § 103(a) as obvious
over Wall, Pate, and Vikram Kaura & Vladimir Blasko, Operation of a
Phase Locked Loop System Under Distorted Utility Conditions, 33 IEEE
TRANS. INDUS. APPL’NS 58 (1997) (“Kaura”). Ans. 6–7.
Claim 8 under 35 U.S.C. § 103(a) as obvious over Wall and Kaura.
Ans. 7.
Claim 8 under 35 U.S.C. § 103(a) as obvious over Wall and R.
Mohammadi-Milasi et al., A Novel Adaptive Gain-Scheduling Controller for
Synchronous Generator, PROC. 2004 IEEE INT’L CONF. CONTROL APPL’NS
800 (2004) (“Milasi”). Ans. 7.
Claims 9, 13, 14, 20, and 21 under 35 U.S.C. § 103(a) as obvious over
Erdman (US 2005/0122083 A1; June 9, 2005) and Pate. Ans. 7–8.

5 Although the Examiner omits claim 8 from the statement of the
obviousness rejection over Wall and Pate, the Examiner nonetheless
includes claim 8 in the corresponding discussion, and Patent Owner
acknowledges this inclusion. Compare Ans. 6 with App. Br. 31 (indicating
that claim 8 is rejected as obvious over Wall and Pate). Accordingly, we
present the correct claim listing here for clarity, and deem the Examiner’s
error in this regard harmless. For similar reasons, we include claim 8 in the
obviousness rejection over Wall, Pate, and Kaura. Compare Ans. 6 with
App. Br. 34.
6 For brevity, we consolidate the Examiner’s separate rejections of
(1) claims 8, 9, 13, and 14 and (2) claims 20 and 21 over Wall and Pate. We
similarly consolidate the Examiner’s other rejections of claims 9, 13, 14, 20,
and 21 over (1) Wall, Pate, and Kaura; (2) Erdman and Pate; and
(3) Erdman, Pate, and Kaura. Ans. 7–9.
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Claims 9, 13, 14, 20, and 21 under 35 U.S.C. § 103(a) as obvious over
Erdman, Pate, and Kaura. Ans. 8–9.

THE ANTICIPATION REJECTION
The Examiner finds that Wall’s control system has every recited
element of claim 7. Ans. 5–6 (citing Request 217–24 and Response filed
Dec. 27, 2011 (“Dec. 2011 Response”), at 33–34). According to the
Examiner, Wall’s transient handling system 580 enables both a turbine and a
power controller to remain connected to a grid during and after “voltage
sags,” which are said to include voltages of approximately zero volts, as
shown in the “Voltage Sag Region” in Figure 17, thus facilitating ZVRT.
Ans. 5–6, 9–13.
Patent Owner argues that because claim 7 corresponds in scope to
claim 1, which is said to have been “confirmed” by the USPTO’s Office of
Patent Legal Administration (OPLA),7 claim 7 should be “allowed” as well.
App. Br. 13–15. Patent Owner adds that Wall lacks ZVRT because (1) Wall
disconnects a wind turbine generator from the grid if the grid voltage
reaches zero volts; (2) Wall’s Figure 17 does not teach ZVRT; (3) Wall’s
mechanism for dealing with voltage transients does not disclose ZVRT;
(4) Requester’s experts offered conflicting testimony that is unreliable; and
(5) Wall does not enable ZVRT. App. Br. 13–31; Reb. Br. 2–9.

7 But see Reb. Br. 1–2 (noting that the jury in the Texas district court case
confirmed claim 1 as “not invalid” and infringed).
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ISSUE
Under § 102, has the Examiner erred in rejecting claim 7 by finding
that Wall’s control system facilitates an electrical machine to remain
electrically connected to an electric power system during and subsequent to
(1) at least one voltage amplitude of the system operating outside of a
predetermined range for an undetermined time period, and (2) a voltage
amplitude of each phase of the system decreasing to approximately zero
volts for a predetermined time period, thereby facilitating ZVRT?

ANALYSIS
We begin by clarifying the status of claims 1–6. As noted previously,
the present inter partes reexamination proceeding was terminated with
respect to claims 1–6 due to estoppel under 35 U.S.C. § 317(b). USPTO
Termination Dec’n. 1–6. But despite Patent Owner’s characterizing this
termination decision as a “confirmation” (App. Br. 13), no such terminology
was used in that decision. Rather, the USPTO merely stated that any
rejection against claims 1–6 will not be maintained, nor will any such
rejection be made in the present reexamination proceeding. USPTO
Termination Dec’n 1, 6. In short, no decision has been made by the USPTO
confirming patentability of claims 1–6 in this proceeding. That the
Examiner notes that these claims are not subject to reexamination in Box 1b
on page 1 of the RAN, but does not indicate that they are “confirmed” in
Box 3, is telling in this regard.
Turning to the merits, claim 7 recites, in pertinent part, a control
system facilitating an electrical machine to remain electrically connected to
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an electric power system during and subsequent to (1) at least one voltage
amplitude of the system operating outside of a predetermined range for an
undetermined time period, and (2) a voltage amplitude of each phase of the
system decreasing to approximately zero volts for a predetermined time
period, thereby facilitating ZVRT.
Method claim 1, however, recites, in pertinent part, coupling an
electrical machine to an electric power system such that the system is
configured to transmit at least one phase of electric power to the machine,
and configuring the machine such that it remains electrically connected to an
electric power system during and subsequent to a voltage amplitude of the
system operating outside of a predetermined range for an undetermined time
period, where this configuring comprises configuring an electrical machine
and control system such that the machine remains electrically connected to
an electric power system during and subsequent to the voltage amplitude of
the system decreasing below the predetermined range including
approximately zero volts for the undetermined time period, thereby
facilitating ZVRT.
Our emphasis underscores key distinctions between system claim 7
and method claim 1 which, although similar, nonetheless differ materially
with respect to (1) the undetermined versus predetermined time periods in
connection with ZVRT, and (2) claim 1 lacking claim 7’s above-emphasized
“each phase” limitation.
So to say that the only substantive difference between claims 1 and 7
is that they are directed to a method and apparatus, respectively, as Patent
Owner contends (App. Br. 15) is, at best, overstated, for this argument
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ignores the above-noted material differences in the claims’ respective ZVRT
limitations. Therefore, Appellants’ contention that the Examiner’s
anticipation rejection is erroneous solely due to claim 7’s similarity to claim
1 (App. Br. 13–15; Reb. Br. 1–2) is unavailing.
As noted above, a key aspect of claim 7 is that the control system
facilitates the electrical machine remaining electrically connected to the
electric power system during and subsequent to a voltage amplitude of the
power system decreasing to approximately zero volts for a predetermined
time period, thereby facilitating ZVRT. Our emphasis underscores that the
claim does not require zero volts, but rather approximately zero volts: an
approximation that both Patent Owner and the Examiner acknowledge
encompasses values other than zero volts. See Reb. Br. 2; Ans. 9–10
(acknowledging that “approximately zero volts” and “zero volts” are not
identical terms). Although the ’705 patent does not specify what values of
voltage beyond zero volts are considered “approximately zero volts,” the
Examiner nonetheless construes this term to be “near to, about, or almost
zero volts.” See Ans. 10 (citing RAN 8). But then the Examiner reasons
that the claims do not require ZVRT, ostensibly because the claims do not
require exactly zero volts. See Ans. 10.
This position is problematic. Notably, the ’705 patent refers explicitly
to “approximately zero volts” in facilitating ZVRT in column 8, lines 41 and
42. But leaving this express support for “approximately zero” ZVRT aside,
to say that any voltage—however minute—other than exactly zero volts is
not ZVRT is not only unreasonable as a practical matter, but also effectively
blurs the ’705 patent’s distinction between ZVRT and low voltage ride
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through (LVRT), as Patent Owner indicates. Accord App. Br. 8–9 n.1 (“The
use of the term ‘approximately’ accounts for the real-world situation where
the grid voltage may not be absolutely zero (because of noise) but is
effectively zero in the sense that the frequency and phase angle of the grid
can no longer be determined.”); Reb. Br. 4 (citing ’705 patent, col. 6, ll. 63–
67).
Given this distinction, we find reasonable Patent Owner’s
construction that “approximately zero volts” recited in connection with
ZVRT refers to grid voltages that are so low that the control system can no
longer measure the grid voltage’s frequency and phase. Reb. Br. 4. Accord
Supplemental Declaration of Dr. William Mack Grady under 37 C.F.R.
§ 1.132, dated Nov. 26, 2012, Ex. 34 (“Supp. Grady Decl.”), at ¶ 89
(declaring that Wall is incapable of riding through either (1) zero voltage, or
(2) “some small, non-zero voltage at which the grid’s phase and frequency
cannot be sensed, i.e., through a transient of approximately zero volts.”)
(emphasis added); see also Declaration of William Mack Grady under
37 C.F.R. § 1.132, dated Oct. 27, 2011, Ex. 31 (“Grady Decl.”)
¶ 113 (“One of ordinary skill in the art would understand that zero voltage
ride through requires that voltage no longer be detected on all three phases
of the grid.”).
With this construction, we find unpersuasive the Examiner’s position
that Wall’s transient-ride-through functionality in Figure 17 meets the ZVRT
limitation because that figure’s “voltage sag region” purportedly includes
voltages that are approximately zero. Ans. 5, 11–12. To be sure, Wall’s
transient handling system 580 not only allows power controller 620 to ride
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through transients associated with capacitor switching on grid 616, but also
short circuit faults on the grid that cause voltage sags. Wall, col. 23, ll. 25–
35; Figs. 16–18. Figure 17 graphs transients typically present on the grid in
terms of voltage magnitude and duration, and is reproduced below.

Wall’s Figure 17 graphing grid transients

As shown above, Wall’s Figure 17 includes a “voltage sag” region
with a duration of approximately 0.4 seconds (400 ms) and a magnitude of
over 200 volts, which is said to be approximately 220 volts. Ans. 5, 10.
Wall’s Figure 17 includes other regions beginning at approximately 400 ms
that initiate grid fault shutdown due to overvoltage and undervoltage,
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respectively. As shown above, a horizontal line labeled “CONTINUOUS
OPERATION” is also located outside the “voltage sag” and shutdown
regions. According to Dr. Grady, this line is located at about 480 volts, and
indicates normal operation at this substantially constant voltage. Grady
Decl. ¶ 102. But Wall does not further discuss this “continuous operation,”
nor does Wall discuss the meaning or significance of the 220 V horizontal
line in Figure 17. Supp. Grady Decl. ¶ 87. Nevertheless, Wall’s Figure 17
includes the label “VOLTAGE SAG REGION” below this line.
The Examiner reasons that because Wall’s voltage sag region is not in
the shutdown region that disconnects the system for longer duration
transients, Wall’s system is said to remain connected or “ride through”
shorter duration transients resulting in voltage sags of approximately zero
volts. Ans. 5, 11–12.
We find this position problematic, at least with respect to anticipation.
Notably, the functionality of Wall’s Figure 17 is not a model of clarity, at
least regarding the so-called “voltage sag region”—ambiguities that even Dr.
Grady acknowledges. See Grady Decl. ¶ 103 (noting that Wall’s Figure 17
is “poorly explained”); see also id. ¶ 104 (“Without additional clarification,
it is not obvious how Fig. 17 relates to what Wall describes.”). Therefore, to
draw any definitive conclusions regarding Wall’s voltage sag region in
Figure 17 is, at best, dubious given the reference’s silence and ambiguity in
this regard.
To be sure, Wall’s voltage sag region appears to extend from
approximately 220 volts down to zero volts in Figure 17, and apparently
includes any voltage sags below 220 volts as Dr. Grady acknowledges. See
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Supp. Grady Decl. ¶ 90 (acknowledging that Wall’s voltage sag region “is
the region in which any voltage sag below 220V would be found”)
(emphasis added).8
But Wall does not explain what is meant by a “voltage sag” apart
from one brief statement that such a sag is caused by short circuit faults.
Wall, col. 23, ll. 34–35. As Dr. Grady indicates, Wall nowhere defines the
term “voltage sag.” Supp. Grady Decl. ¶ 95.
In light of this silence and ambiguity, we presume—as does Patent
Owner and Dr. Grady—that a “voltage sag” in Wall is no different than
voltage sags commonly understood by ordinarily skilled artisans, namely
momentary dips in grid voltage to some fraction of the system’s rated power,
which can be as low as 5% of that power—but not approximately zero volts.
Id. ¶¶ 91–92. Although various power electronics authorities cited by Patent
Owner differ on the precise range of a voltage sag, all such authorities agree
that voltage sags exclude voltages that are approximately zero. Id. ¶¶ 92–93
(citing definitions of “voltage sag” from various authorities); see also App.
Br. 23–24 (same). This interpretation makes sense linguistically as well, for,

8 But see Grady Decl. ¶ 103 (averring that Wall’s voltage sag region is
between 220 volts and 480 volts, and that “220 volts is the lowest voltage
sag”). Although this characterization conflicts with Dr. Grady’s later
acknowledgment in paragraph 90 of his supplemental declaration that Wall’s
voltage sag region “is the region in which any voltage sag below 220V
would be found,” we nonetheless deem any error associated with this
inconsistency harmless, for we find that Wall’s voltage sag region comports
with Dr. Grady’s characterization in the supplemental declaration, namely
that this region includes voltage sags below 220 volts. Accord Ans. 10
(finding that the top of Wall’s voltage sag region is approximately
220 volts).
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as Dr. Grady indicates, a voltage sag presupposes that some voltage exists to
“sag”; otherwise, the condition would be reasonably characterized as a
voltage interruption or similar term reflecting a disruption that causes an
approximately zero-volt condition. See Supp. Grady Decl. ¶ 92.
To the extent that the Examiner takes the position that the inventors of
the Wall reference acted as their own lexicographers and defined the term
“voltage sag” differently from its commonly-understood meaning in the art
(see Ans. 12), we find such a theory problematic. According to the
Examiner, because Wall’s Figure 17 clearly delineates the voltage sag
region, Wall states what a voltage sag is; therefore, external evidence
regarding the meaning of a “voltage sag” is purportedly irrelevant given
Wall’s usage. Id.
Indeed, the Examiner’s theory is consistent with that of Dr. Harley,
whose declarations were submitted by Requester during prosecution of this
reexamination proceeding, and have been made of record in this appeal by
Patent Owner. See Third Declaration of Dr. Ronald Harley under 37 C.F.R.
§ 1.132, dated Dec. 21, 2012, Ex. 37 (“3d Harley Decl.”) ¶ 17 (averring that
Patent Owner’s definitions of “voltage sag” do not comment on what Wall
means when teaching “voltage sag”).
But it is well settled that any special meaning assigned to a term
“must be sufficiently clear in the specification that any departure from
common usage would be so understood by a person of experience in the
field of the invention.” Multiform Desiccants Inc. v. Medzam, Ltd., 133 F.3d
1473, 1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick Washroom
Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) (“A patentee may act as
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its own lexicographer and assign to a term a unique definition that is
different from its ordinary and customary meaning; however, a patentee
must clearly express that intent in the written description.”) (citations
omitted). In short, “[w]here an inventor chooses to be his own lexicographer
and to give terms uncommon meanings, he must set out his uncommon
definition in some manner within the patent disclosure” to give ordinarily
skilled artisans notice of the change. In re Paulsen, 30 F.3d 1475, 1480
(Fed. Cir. 1994).
There is no such notice in Wall. As noted above, Wall merely
(1) refers briefly to the cause of voltage sags by short circuit faults in
column 23, lines 34 and 35, and (2) designates a “voltage sag region” in
Figure 17. Apart from these brief references, however, Wall does not further
mention voltage sags—let alone explain what they mean, or define them in a
manner different from the commonly-understood meaning in the art to
provide the requisite notice of such a difference. To the extent that the
Examiner contends that Wall intended to deviate from the commonly-
understood meaning of the term “voltage sag” in the art, and that this
intention could be gleaned solely by inspecting Wall’s Figure 17 without
further elaboration—a theory apparently espoused by Dr. Harley in
paragraph 17 of his third Declaration—such a position is untenable given the
strict notice requirements of our precedent.
That Dr. Grady found Wall’s Figure 17 to be “poorly explained,” and
it was not obvious to Dr. Grady how that figure relates to what Wall
describes (Grady Decl. ¶¶ 103–04) only further undermines the theory that
Wall intended to deviate from the commonly-understood meaning of
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“voltage sag” in the art, and that skilled artisans would be notified of that
intention solely by inspecting Figure 17. Therefore, despite the Examiner’s
assertion that external evidence is purportedly irrelevant to discern the
meaning of the term “voltage sag” in Wall’s context (Ans. 12), external
evidence is highly relevant where, as here, Wall is silent as to its meaning,
and the term is presumed to have its commonly-understood meaning in the
art.
Given this understanding, and the fact that Wall disconnects the
generator from the grid if the grid voltage drops to zero volts9 in column 8,
lines 50 and 51, as Patent Owner indicates (App. Br. 16–17; Reb. Br. 4–5),
the weight of the evidence on this record favors Patent Owner’s position that
Wall does not teach facilitating ZVRT, despite Dr. Harley’s views to the
contrary. See Declaration of Dr. Ronald Harley under 37 C.F.R. § 1.132,
dated May 23, 2011 (Ex. 30) (“Harley Decl.”) ¶¶ 60–61; see also Second
Declaration of Dr. Ronald Harley under 37 C.F.R. § 1.132, dated Nov. 30,
2011 (Ex. 33) (“2d Harley Decl.”) ¶¶ 48, 51, 56.

9 Although Patent Owner’s arguments in this regard are somewhat
inconsistent, we deem any error associated with this inconsistency harmless.
In the Appeal Brief, Patent Owner argues that Wall disconnects the
generator if the grid voltage reaches zero volts, but argues in the Rebuttal
Brief that this disconnection occurs when the grid voltage reaches
approximately zero volts. Compare App. Br. 16 with Reb. Br. 4. Wall
teaches that if grid 222 collapses, the loss of the grid is sensed, and the unit
output goes to zero and disconnects. Wall, col. 8, ll. 50–51. Wall, therefore,
at least suggests that this disconnection condition includes “approximately
zero volts” consistent with our interpretation of the term, namely grid
voltages that are so low that the control system can no longer measure the
grid voltage’s frequency and phase. Accord Reb. Br. 4–5.
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That skilled artisans could plausibly interpret the leftmost dot at the
origin in Wall’s Figure 17 as extending the line defining the boundary of the
grid fault shutdown region along the x-axis from time 0 to approximately
400 ms, as Patent Owner indicates in the annotated version of Wall’s Figure
17 (App. Br. 21), only further bolsters Patent Owner’s position. Although
the meaning of this leftmost dot in Wall’s Figure 17 is unclear, as the
Examiner indicates (Ans. 11), this dot is nonetheless consistent with the
other dots in the undervoltage shutdown region in the lower part of the
figure: a relationship similar to the other leftmost dot at time 0 and the other
dots in the overvoltage shutdown region at the top of the figure. Although it
is unclear whether Wall’s undervoltage shutdown region in Wall’s Figure 17
includes the leftmost dot at the origin, skilled artisans could nonetheless
plausibly interpret the figure consistent with Patent Owner’s characterization
given the above-noted ambiguities in Wall’s description of that figure.
Wall is similarly unclear whether Figure 17 relates only to detecting
longer-duration transients—not voltage transients—as Patent Owner
contends. App. Br. 19–20; Reb. Br. 5–7. According to Patent Owner, Wall
discloses two separate protection mechanisms that operate in parallel: one
dealing with voltage transients by monitoring current, and the other dealing
with “longer duration transients” using magnitude estimator 584. App. Br.
19; Reb. Br. 5–7.
Notably, Wall’s Figure 17 graphs voltage transient duration and
voltage magnitude, and indicates grid fault shutdown conditions due to
overvoltage and undervoltage conditions, respectively. Wall, col. 23, ll. 43–
47. But given Wall’s ambiguities regarding Figure 17, we cannot say that
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this graph is limited to handling only longer-duration transients, and does
not involve the detection and protection mechanism used for voltage
transients that stops switching when monitored current exceeds a
predetermined level under Patent Owner’s theory. App. Br. 19; Reb. Br. 6
(citing Wall, col. 23, ll. 58–63; Grady Decl. ¶ 31). Although Wall does not
support explicitly Patent Owner’s theory that Figure 17 is so limited, Wall is
nevertheless ambiguous in this regard.
Given these ambiguities, Patent Owner’s characterization of Wall’s
Figure 17 has at least a rational foundation based on at least one plausible
interpretation of that figure and its accompanying description and, therefore,
tends to support the view that Wall lacks ZVRT. Accord Supp. Grady Decl.
¶¶ 65, 88–89 (declaring that Wall’s Figure 17 does not show or teach any
voltage transient in which the grid voltage reaches approximately zero volts,
or that Wall’s system can ride through that voltage).
The weight of the evidence on this record, then, favors Patent
Owner’s position at least to the extent that Wall does not necessarily
facilitate ZVRT. To be sure, the record before us includes testimony from
two distinguished experts, namely Drs. Grady and Harley, who are both
learned scholars and specialists in the field of endeavor of the claimed
invention,10 yet they reach diametrically opposite conclusions regarding
what Wall teaches in connection with ZVRT, as noted previously. But
whether Dr. Harley’s declarations “cannot be trusted to explain what a
reference does or does not disclose,” as Patent Owner contends based on

10 Compare Harley Decl. ¶¶ 4–5 with Grady Decl. ¶¶ 4–10 (summarizing
qualifications).
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purported inconsistencies in his trial testimony (App. Br. 27–29), we cannot
say. Nevertheless, even if these purported inconsistencies do not diminish
the probative value of Dr. Harley’s declarations as they pertain to the issues
before us in this appeal, the weight of the evidence on this record still favors
Patent Owner’s position, at least to the extent that Wall does not necessarily
facilitate ZVRT.
Therefore, we are persuaded that the Examiner erred in rejecting
independent claim 7 as anticipated by Wall.

THE OBVIOUSNESS REJECTION OVER WALL AND PATE
The Examiner finds that Wall’s control system has every recited
element of independent claim 9, including a phase-locked loop (PLL)
regulator 586 in Figure 16 as noted on pages 232 to 236 of the Request,
which the Examiner incorporates by reference. Ans. 6. The Examiner also
cites Pate’s Figure 3 for teaching a PLL comprising at least one phase
detection scheme (phase detector 108) and at least one proportional-integral
(PI) filter scheme (low-pass filter 116). Ans. 6 (incorporating Request 237).
The Examiner adds that Pate’s analysis and parametric control blocks 304
and 308 collectively correspond to the recited PLL state machine. Ans. 6
(incorporating Request 237–38). According to the Examiner, it would have
been obvious to replace Wall’s PLL regulator with that of Pate to optimize
the PLL based on current operating conditions as evidenced by Section II(L)
of Dr. Harley’s declaration. Ans. 6 (incorporating Request 238).
Patent Owner argues that Pate—like Wall—does not disclose ZVRT
and, in any event, Pate’s state machine reduces jitter, which is a different
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problem than using a state machine to allow a generator to ride through grid
faults as in the claimed invention. App. Br. 31–33; Reb. Br. 9–11. Patent
Owner adds that not only is there no motivation to combine the references,
but even if they were combined, the combination would disclose nothing
more than a PLL with a jitter-free sensed line voltage. App. Br. 33.

ISSUES
(1) Under § 103, has the Examiner erred in rejecting claim 9 by
finding that Wall and Pate collectively would have taught or suggested the
recited control system with the recited PLL?
(2) Is the Examiner’s combination of these references’ teachings
supported by articulated reasoning with some rational underpinning to
justify the Examiner’s obviousness conclusion?

ANALYSIS
Claims 9, 13, and 14
We begin by noting that, unlike independent claim 7, independent
claim 9 does not recite ZVRT, as the Examiner indicates. Ans. 13. Rather,
claim 9 recites, in pertinent part, a control system that facilitates an electrical
machine remaining electrically connected to an electric power system during
and subsequent to at least one voltage amplitude of the power system
operating outside of a predetermined range for an undetermined time period
(“the ride-through limitation”). Notably, this voltage amplitude is
unspecified: it need not decrease, let alone be approximately zero, as with
claim 7. Although claim 9’s ride-through limitation is similar to that of
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claim 7, claim 7 adds a ZVRT limitation that claim 9 lacks. In this respect,
then, claim 9 is broader than claim 7, notwithstanding claim 9’s additional
PLL limitations.
Therefore, Patent Owner’s arguments that the Wall/Pate combination
does not facilitate ZVRT (App. Br. 32) are unavailing, for they are not
commensurate with the scope of claim 9, which recites no such requirement.
The Examiner’s point in this regard (Ans. 13) is well taken.
Claim 9’s control system, however, facilitates the electrical machine
to remain connected to the power system under the recited conditions and, as
Patent Owner indicates, this control system includes the recited PLL
regulator and its constituent elements. Reb. Br. 10. But the claim does not
specify how—and to what extent—the PLL regulator and its constituent
elements are involved in, or contribute to, facilitating ride through. Accord
Ans. 14 (“[N]o limitation requires that the PLL be involved in ride
through.”). Although the control system facilitates ride through according to
claim 9, the same cannot be said necessarily for its PLL regulator whose
functionality is not tied clearly to this facilitation. To the extent Patent
Owner argues otherwise (see App. Br. 33; Reb. Br. 10), such arguments are
not commensurate with the scope of the claim.
Therefore, we see no error in the Examiner’s position that Wall at
least suggests a control system that facilitates the ride-through limitation for
the reasons indicated on pages 232 to 236 of the Request, which the
Examiner incorporates by reference. Ans. 6. Although Wall does not
necessarily disclose ZVRT, Wall nevertheless at least suggests the recited
ride-through limitation, which, as noted above, does not require ZVRT.
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Nor do we find error in the Examiner’s reliance on Pate merely to
show that the recited PLL regulator and its constituent elements were known
in the art, and that it would have been obvious to provide such a regulator in
Wall’s system to optimize Wall’s PLL based on current operating
conditions, as Dr. Harley explains. Request 238 (citing Harley Decl.
§ II(L)).11 Dr. Harley further explains that Pate’s jitter refers to a time-wise
variation or irregularity in an input clock signal—not a noise signal
superimposed on an input signal, as Patent Owner contends. 2d Harley
Decl. ¶¶ 28–31. According to Dr. Harley, Pate’s PLL handles this jitter by
synthesizing a smoothed clock signal from jittered or irregular input
signals—functionality commensurate with Wall’s PLL that removes input
signal irregularities to produce a smooth output signal. Id. ¶¶ 31–32. Based
on this commensurate functionality, we see no error in the Examiner’s
position that providing the recited PLL regulator elements in Wall would
have been obvious in view of Pate.
Although we appreciate Dr. Grady’s insights regarding Pate’s
disclosure (Grady Decl. ¶¶ 60–64, 119–21), Dr. Grady’s conclusion in
paragraphs 119 to 121 of his declaration—that the Wall/Pate combination
does not show a PLL with the recited constituent elements to facilitate ride
through—is not commensurate with the scope of the claim, which does not
require those particular PLL elements to do so, as noted previously. In any
event, Wall’s control system facilitates ride through as noted above, and
providing Pate’s PLL functionality to enhance Wall, as the Examiner

11 Section II(L) of the Harley Declaration corresponds to paragraphs 62 to 71
of that document.
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proposes, merely uses prior art elements predictably according to their
established functions—an obvious improvement. See KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 417 (2007). We, therefore, find that the
Examiner’s proposed combination is supported by articulated reasoning with
some rational underpinning to justify the Examiner’s obviousness
conclusion.
Accordingly, we are not persuaded that the Examiner erred in
rejecting claim 9 as obvious over Wall and Pate, and claims 13, 14, 20, and
21 not argued separately with particularity. See App. Br. 31–34, 37; Reb.
Br. 9–11.
Claim 8
We do not, however, sustain the Examiner’s rejection of claim 8.
Because the Examiner has not shown that Pate cures Wall’s above-noted
deficiencies regarding ZVRT in connection with the rejection of independent
claim 7, from which claim 8 depends (see Ans. 7), we will not sustain the
obviousness rejection of claim 8 over Wall and Pate for similar reasons.

THE OTHER OBVIOUSNESS REJECTIONS OF CLAIM 8
We also do not sustain the Examiner’s rejections of claim 8 as
obvious over (1) Wall, Pate, and Kaura; (2) Wall and Kaura; and (3) Wall
and Milasi. Ans. 7. Because the Examiner has not shown that Kaura or
Milasi cures Wall’s above-noted deficiencies regarding ZVRT in connection
with the rejection of independent claim 7, from which claim 8 depends (see
Ans. 7, 14), we will not sustain the three obviousness rejections of claim 8
listed above for similar reasons.
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THE REMAINING REJECTIONS
Because our decision is dispositive regarding patentability of all
appealed claims based on the foregoing prior art references, we need not
reach the merits of the Examiner’s decision to also reject claims 9, 13, 14,
20, and 21 as obvious over (1) Wall, Pate, and Kaura; (2) Erdman and Pate;
and (3) Erdman, Pate, and Kaura. Ans. 7–9. See Beloit Corp. v. Valmet Oy,
742 F.2d 1421, 1423 (Fed. Cir. 1984) (approving ITC’s determination based
on a single dispositive issue, and not reaching other issues not decided by
the lower tribunal).

CONCLUSIONS
The Examiner erred in rejecting (1) claim 7 under § 102 as anticipated
by Wall. The Examiner also erred in rejecting claim 8 under § 103 as
obvious over (1) Wall and Pate; (2) Wall, Pate, and Kaura; (3) Wall and
Kaura; and (4) Wall and Milasi.
The Examiner, however, did not err in rejecting claims 9, 13, 14, 20,
and 21 under § 103 as obvious over Wall and Pate.
We summarily sustain the Examiner’s rejections of claims 18 and 19.
We do not reach the Examiner’s obviousness rejections of claims 9,
13, 14, 20, and 21 over (1) Wall, Pate, and Kaura; (2) Erdman and Pate; and
(3) Erdman, Pate, and Kaura.

DECISION
The Examiner’s decision rejecting claims 7–9, 13, 14, 18–20, and 21
is affirmed-in-part.
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Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED-IN-PART

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PATENT OWNER:

WILMER HALE BOSTON
60 State Street
Boston, MA 02109

THIRD PARTY REQUESTOR:

OBLON, SPIVAK, MCCLELLAND, MAIER & NEUSTADT, LLP
1940 Duke Street
Alexandria, VA 22314