Ex Parte 7910833 et al

Patent Trial and Appeal Board

Oct 28, 2014

95002365 (P.T.A.B. Oct. 28, 2014)

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.
95/002,365 09/14/2012 7910833 00073-0003 2612
86022 7590 07/24/2015
Jerold I. Schneider
Schneider Rothman IP Law Group
4651 North Federal Highway
Boca Raton, FL 33431
EXAMINER
MENEFEE, JAMES A
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
07/24/2015 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
____________

SUPERIOR COMMUNICATIONS, INC.
Requester and Cross Appellant

v.

VOLTSTAR TECHNOLOGIES, INC.
Patent Owner and Appellant
____________

Appeal 2014-007294
Reexamination Control 95/002,365
Patent 7,910,833 B2
Technology Center 3900
____________

Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and
DAVID M. KOHUT, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge

DECISION ON REQUEST FOR REHEARING

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SUMMARY
Pursuant to 37 C.F.R. §41.79(A)(3), Third Party Requester
(“Requester”) has requested rehearing of our December 11, 2014 Corrected
Decision on Appeal (“Corrected Decision”).1 See generally Reh’g Req.
(“Request”).2 In the Corrected Decision, the Board AFFIRMED the
Examiner’s decision rejecting claims 1–3, as well as the Examiner’s decision
not to reject claims 24–27 and 33–37. Corrected Dec. 71–72. The Board

1 Appeal 2014-007294 was taken from an inter partes reexamination of
US Patent No. 7,910,833 B2 (issued to Valerie L. McGinley et al.,
March 22, 2011) (“the ’833 Patent”). The present panel of the Board issued
a Corrected Decision on Appeal in that proceeding, which was first mailed
December 10, 2014 and subsequently re-mailed on December 11, 2014. The
Corrected Decision is distinguished from the Board Decisions of appeals
2014-007812 and 2014-006493, which were taken from related inter partes
reexamination proceedings, 95/002,374 and 95/002,378, respectively.
2 Throughout this opinion and the referenced Corrected Decision, we refer to
(1) the Request for Inter Partes Reexamination filed September 14, 2012
(“Request”); (2) the Action Closing Prosecution mailed Apr. 3, 2013
“ACP”) (3) the Right of Appeal Notice mailed August 2, 2013 (“RAN”);
(4) Patent Owners’ Appeal Brief filed November 4, 2013 as corrected by
Owner’s Supplemental Appeal Brief filed November 21, 2013 (“PO App.
Br.”); (5) Requester’s Appeal Brief filed November 5, 2013 (“3PR App.
Br.”); (6) Owner’s Respondent Brief filed December 4, 2013 (“PO Resp.
Br.”); (7) Requester’s Respondent Brief filed December 4, 2013 (“3PR
Resp. Br.”); (8) the Examiner’s Answer mailed January 30, 2014
(incorporating portions of the RAN by reference) (“Ans.”); (9) Requester’s
Rebuttal Brief filed February 28, 2014 (“3PR Reb. Br.”); (10) the § 131
Declaration of Mr. James McGinley dated January 24, 2013 (“the first
’833 McGinley Decl.”); (11) the § 131 Declaration of Mr. James McGinley
dated June 3, 2013 (“the second ’833 McGinley Decl.”); (12) the
§ 132 Declaration of Dr. John M. Tobias dated June 3, 2013 (“the
’833 Tobias Decl.”); (13) the § 132 Declaration of Dr. William Milton
Gosney dated July 3, 2013 (“the ’833 Gosney Decl.”); and (14) Third Party
Requester’s Request for Rehearing filed February 10, 2015 (“Reh’g Req.”).
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REVERSED the Examiner’s decision rejecting claims 4–23, as well as the
Examiner’s decision not to reject claim 6–10 and 56–58. Id. The Board
designated two of the affirmed rejections as constituting new grounds:
(1) the anticipation rejection of claims 1, 2, 6, and 10 over Tracy
(US 2009/0027922 A1; published Jan. 29, 2009), as proposed by Requester
in Basis of Invalidity BI-16; and (2) the obviousness rejection of claims 7–9
and 56–58 over Tracy in view of Kubo (US 6,671,814 B1; issued Dec. 30,
2003), as proposed by Requester in BI-17. Id. 72.
In Section II the Request, Requester seeks reconsideration of the
Board’s determination that Yang (WO 2007/027063 A1; published
Mar. 8, 2007) fails to teach or suggest a “converter,” as recited in, inter alia,
independent claim 11. Reh’g Req. 2–13. In this regard, Requester
maintains that Yang does teach a converter (Reh’g Req. 2–11) or at least
renders a converter obvious (id. 11–12). Requester also contends that the
Board erred by failing to make additional rejections based upon other
references of record. Reh’g Req. 11–13.
In Section III of the Request, Requester contends that the combination
of Yang and Odaohhara (US 6,986,067 B2; issued Jan. 10, 2006) renders
obvious claims 1 and 4–13, according to BI-2–BI-4. Reh’g Req. 14.
In Section IV of the Request, Requester contends that “[t]he Board
incorrectly finds that Bhogal [US 2007/0300089 A1; published Dec. 27,
2007] does not sufficiently disclose, teach or suggest” claim 1 and 56’s
limitations, “the power device draw no input power in the ‘off’ state,” as
Requester argued in bases of invalidity BI-13 and BI-14. Reh’g Req. 15–16.
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In Section V of the Request, Requester contends that the Board failed
to interpret Yang properly for the same reasons set forth in Section II of the
Request, and as such, the Board erred by failing to assert BI-21–BI-27.
Reh’g Req. 17–18.
In Section VI of the Request, Requester contends that the Board
misapprehended the disclosure of Hoeyer (EP 1473813 B1; published
Mar. 16, 2005), as asserted in BI-28. Reh’g Req. 18–19. Requester more
specifically contends that “[t]he Board incorrectly finds that Hoeyer does not
sufficiently disclose, teach or suggest the limitation in independent claim 24
of ‘the load sensing portion determining the power or load being drawn from
the power device by measuring the frequency of the pulses.’” Id. 18.
In Section VII of the Request, Requester contends “[t]he Board
misapprehends or overlooks the content of the Patent Owner’s Declaration
under 37 C.F.R. § 1.131 (“Declaration”) and improperly fails to assert BI-11
and BI-12.” Reh’g Req. 19–22. That is, Requester contends that Owner
lacked diligence in reducing the present invention to practice from a time
preceding the filing dates of the references cited in BI-11 and BI-12.
We address these general contentions separately in the ensuing
Contentions and Analysis Section. To summarize, Third Party Requester’s
request for rehearing is DENIED.

CONTENTIONS AND ANALYSIS
Section II of the Request.
In the Corrected Decision, the Board did not sustain the anticipation
rejection of claims 11, 14, and 20 over Yang, which Requester had proposed
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as BI-1. Corrected Dec. 9–21. The Board did sustain the Examiner’s refusal
to adopt proposed BI-5–BI-7 and BI-20—additional obviousness rejections
of dependent claims 15–19, all based upon Yang. Corrected Dec. 20–21.
The Board’s conclusions in these regards were based upon the Board
interpreting the claim term “converter” in a manner that was relatively
narrower than that proposed by Requester. Specifically, Requester and
Requester’s expert, Dr. Gosney, assert that “the term ‘converting’ when
referring to voltage, has a broad meaning in the field including manipulation
of a voltage’s phase, frequency, amplitude, noise level and other forms of
filtering.” Corrected Dec. 12 (internal citations omitted). In Requester’s
view, Yang’s noise removing unit 100—or noise filtering capacitor
circuitry—reasonably may be interpreted as constituting a converter for
Yang’s AC circuitry. Corrected Dec. 11–12.
In contrast, the Board found that although simply filtering noise out of
an AC signal reasonably may be deemed to constitute altering the voltage
(Corrected Dec. 16), “conversion” requires that the voltage undergo some
more fundamental of a change, such as a conversion in voltage type (e.g.,
conversion between AC and DC power) or possibly a conversion in voltage
level (e.g., DC-DC voltage stepping). Corrected Dec. 13–20. The Board
left undecided whether “converting” includes DC-DC voltage stepping, and
the Board did not address whether any type of AC-AC conversion was
possible. Id.
The Board reached this conclusion based primarily upon the intrinsic
evidence—Patent Owner’s usage of the terms “convert,” “converted,”
“conversion,” “converting” (together, more simply referred to as
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“converting”) and “altering” within the written specifications of the present
’833 Patent and also the related ’648 Patent:3
In order to charge the battery, the portable device (or
possibly just the battery thereof) is connected to a power
device. Typically, the power device is a combination of a
charger and a power adapter so that alternating current with
an input voltage is received and converted to direct current,
and the voltage is stepped-down to an output voltage for which
the battery is designed. It should be noted that, depending on
source power and output power requirements, the power
device need not always convert and step, instead being able to
do one or the other, such as may be the case for a DC-DC
adapter used only to step-down the input voltage to an output
voltage or simply receiving input power and delivering output
power to the battery . . . .
The power device . . . typically includes internal
circuitry for the power conversion and stepping.
’833 Patent, col. 1, ll. 22–41 (emphasis added).
Towards this end, the power device 10 includes
electronic circuitry 30, discussed below and shown in FIG. 8,
for altering input power from the receptacle at the prongs 14 to
output power delivered to the electronic device 20. The
circuitry 30 is generally located within a housing 32 preferably
positioned proximate to the first end 12. For instance, the
power device 10 may receive 120 VAC at the prongs 14 and,
after conversion and stepping, delivers 5 VDC from the ground
G and current output D, discussed below.
’833 Patent, col. 7, ll. 4–12 (emphasis added).
Currently, it is known to use power adapters and chargers
for charging or powering a variety of electronic devices having

3 US 7,960,648 B2, titled “ENERGY SAVING CABLE ASSEMBLIES”
(issued to James W. McGinley et al. on June 14, 2011 from Application
12/251,882, filed October 15, 2008). The ’648 Patent claims continuation-
in-part priority to the present ’833 Patent.
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an on-board battery or power supply, and the chargers provide
power to the battery. As used herein, the term “charger” refers
to devices that provide a step in power (i.e., step power from an
input voltage to an output voltage), convert power (i.e., convert
input alternating current (AC) to output direct current (DC))
or both.
’648 Patent, col. 1, ll. 30–37 (emphasis added).
“The charger 100 includes converter circuity 106 for converting input
power received at the inputs 102, 104 into output power, typically AC to DC
conversion, if necessary, and step-down conversion to reduce the voltage.”
’648 Patent, col. 8, ll. 26–30 (emphasis added).
Requester now seeks reconsideration of the Board’s interpretation of
the claim term “converter.” Reh’g Req. 2–13. Requester requests that the
Board find Yang teaches or suggests a converter within the meaning of the
present claims, and, ultimately, that the Board find claims 11 and 14–20 to
be either anticipated by Yang or at least be rendered obvious by Yang. Id.
To this end, Requester sets forth four general arguments. According
to Requester, the Board relied upon inconsistent extrinsic evidence. Reh’g
Req. 2–7. In Requester’s view, the Board also failed to assert the plain
meaning of “converting.” Reh’g Req. 7–10. Requester then contends that
the Board improperly relied on attorney argument to limit the meaning of
“converting.” Reh’g Req. 10–11. Finally, Requester argues that the Board
must consider the obviousness of AC/DC conversion. Reh’g Req. 11–13.
We address these arguments in order.
IIA.
Requester presents several arguments to support the general
contention that the Board erred in relying upon inconsistent extrinsic
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evidence. Reh’g Req. 2–7. Requester first argues that the Board’s reliance
on the testimony of Owner’s expert witness was in error because this
extrinsic evidence is at odds with, less reliable than, and inferior to, the
intrinsic evidence contained within the written description of the related
’648 Patent specification. Id. 3. Requester more specifically argues that
Owner’s expert Dr. Tobias is incorrect in asserting “converting” is limited to
AC/DC conversion because the ’648 Patent specification indicates that
“converting” is not limited solely to AC/DC conversion. Id. 3–4.
This argument is not persuasive because the Board did not conclude
that “converting” is limited to AC/DC conversions. The Board instead
acknowledged that the intrinsic evidence of the two patents’ written
descriptions renders it ambiguous whether other conversions (e.g., DC/DC
or DC/AC) additionally fall within the meaning of “conversion.” Corrected
Dec. 14–15. The Board additionally found that regardless of this ambiguity,
the intrinsic evidence—the’833 and ’648 Patents’ usage of “converting”—
rendered it reasonably clear that the term still had limits. Corrected Dec.
15–20. As used in Owner’ patents, “converting” excludes lesser voltage
changes, adjustments, and quality enhancements, such as voltage filtering.
Voltage filtering merely filters out noise, undesired frequencies, and voltage
spikes from the input signal without changing the input voltage’s
fundamental voltage characteristic. Such lesser differences between input
and output voltages alternatively would be described in Owner’s parlance as
voltage “alterations.” Id. 15 (citing ’833 Patent, col. 7, ll. 3–12); accord id.
15–20.
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Just after Requester asserts that the opinions of Owner’s expert
constitutes extrinsic evidence and are therefore less reliable than the intrinsic
evidence of record (Reh’g Req. 2–6), and after further arguing that “[t]he
Board’s reliance upon such extrinsic evidence undermines the public notice
function of the intrinsic record” (Reh’g Req. 4), Requester then argues that
the Board should instead rely on different extrinsic evidence—the opinions
of Requester’s expert, Dr. Gosney. Reh’g Req. 6–7. Requester contends
that according to Dr. Gosney’s interpretation, “converting” “has a broad
meaning in the field that includes manipulation of a voltage’s phase,
frequency, amplitude, noise level and other forms of filtering.” Id. 6
(internal citation omitted). That is, “converting” allegedly includes any
difference between input and output voltages (id.), and this interpretation
should be taken as the plain meaning of the term (id. 6–7). Requester argues
that this interpretation “is consistent with the language of the claims, and
comports with the ’833 and ’648 Patent specifications.” Id. 6.
This argument is not persuasive. We instead agree with Requester’s
contrary positions—that “extrinsic evidence is not irrelevant, but has
relatively little probative value in view of the prevailing intrinsic evidence”
(id. 3 (internal citation omitted)) and that “undue reliance on extrinsic
evidence poses the risk that it will be used to change the meaning of claims
in derogation of the ‘indisputable public records consisting of the claims, the
specification and the prosecution history,’ thereby undermining the public
notice function of patents” (id. 4 (internal citation omitted)). See also
Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc):
[The claims] are part of a fully integrated written instrument,
consisting principally of a specification that concludes with the
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claims. For that reason, claims must be read in view of the
specification . . . . [T]he specification is always highly relevant
to the claim construction analysis. Usually, it is dispositive; it
is the single best guide to the meaning of a disputed term.
We further find that Yang’s voltage filtering corresponds to mere
voltage “altering” as opposed to “converting.” Voltage converting requires
changing the fundamental character of the voltage, such as the voltage type
(AC-DC conversion) or possibly the voltage level (e.g., DC-DC voltage
stepping).4 But voltage filtering (removing voltage spikes, noise or
unwanted frequencies) does not change the input voltage fundamentally. To
find otherwise would render “converting” indistinguishable from “altering.”
Requester next cites Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d
973, 979 (Fed. Cir. 2014) for the proposition that “a requester ‘has the right
to defend the examiner’s final decision on any ground supported by the
record.” Requester then cites two prior art references to support
Dr. Gosney’s opinion that one of ordinary skill in the art would interpret
voltage filtering as constituting a voltage conversion. Reh’g Req. 6–7
(citing Abdelatty Ali (US 2007/0057701 A1; published Mar. 15, 2007) and
Ikeda (US 5,625,269 issued Apr. 29, 1997)).
We will not consider these references on rehearing because Requester
has not alleged, much less demonstrated, that either reference was made of
record prior to the Examiner’s issuance of the Action Closing Prosecution.
See generally Reh’g Req. Nor has Requester alleged that either of these
references was relied upon previously in any of the appeal briefs. Id.

4 The narrow question of whether voltage stepping, alone, constitutes
“converting” is not before us, so we do not reach a determination on this
point.
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Restated, we decline to extend Tempo Lighting to stand for the proposition
that a party to an inter partes reexamination proceeding may submit new
evidence in a rehearing when not authorized by regulation. See 37 C.F.R.
§ 41.79(b) (addressing rehearings in inter partes reexamination appeals):
(b)(1) . . . Arguments not raised in the briefs before the Board
and evidence not previously relied upon in the briefs are not
permitted in the request for rehearing except as permitted by
paragraphs (b)(2) and (b)(3) of this section.
(2) Upon a showing of good cause, appellant and/or
respondent may present a new argument based upon a recent
relevant decision of either the Board or a Federal Court.
(3) New arguments responding to a new ground of
rejection made pursuant to § 41.77(b) are permitted.
Finally, Requester also submits two dictionary definitions in order to
“demonstrate[e] that converting is understood to be merely a change in form
of energy, which is not limited to AC/DC, DC/DC, or DC/AC conversion.”
Reh’g Req. 7. One submission is an entry from a technical dictionary:
converter Equipment to convert electric energy from one form
to another, such as a rectifier, which converts a.c. to d.c.
energy, an inverter, which converts d.c. to a.c. energy, a
frequency converter (frequency changer in the USA), which
converts a.c. energy from one frequency to another, and a phase
converter to change the number of phases without change of
frequency.
K.G. Jackson & R. Feinberg, DICTIONARY OF ELECTRICAL ENGINEERING, 59
(1981) (“Jackson dictionary”).
The other submission—a general purpose on-line dictionary—
includes multiple definitions of “converting” in contexts ranging from
physical and chemical conversions to religious and foreign-currency
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conversions. http://www.merriam-webster.com/dictionary/converting
(accessed Dec. 27, 2014) (“the Merriam Webster dictionary”). Requester
does not assert which specific definitions of the Merriam Webster dictionary
are being relied upon. Reh’g Req. 7.
Unlike the two newly-cited Abdelatti Ali and Ikeda patent documents,
which we decline to consider, we will consider the two dictionary
definitions. See 37 C.F.R. § 41.30 (“Evidence means something (including
testimony, documents and tangible objects) that tends to prove or disprove
the existence of an alleged fact, except that for the purpose of this subpart
Evidence does not include dictionaries, which may be cited before the
Board.”). See also the explanatory comments regarding new Rule § 41.30
(2011):
Final Bd.R. 41.30 adopts the definition of ‘‘Evidence’’ from
Black’s Law Dictionary to provide clarity regarding the use of
that term in Subpart B. Toward that end, final Bd.R. 41.30
makes clear that for the purposes of Subpart B, ‘‘Evidence’’
does not encompass dictionaries. Excluding dictionaries from
the definition of ‘‘Evidence’’ thus allows appellants to refer to
dictionaries in their briefs, which would otherwise be precluded
under final Bd.R. 41.33(d)(2) (absent existence of one of the
enumerated exceptions). It further allows examiners to refer to
dictionaries in the examiner’s answers without automatically
rendering a rejection a new ground under final Bd.R.
41.39(a)(2). Treating dictionaries in this manner is consistent
with Supreme Court and Federal Circuit precedent, which
contemplate that such materials may be consulted by tribunals
“at any time.” See, e.g., Nix v. Hedden, 149 U.S. 304, 307
(1893) (citations omitted) (admitting dictionaries to understand
the ordinary meaning of terms “not as evidence, but only as
aids to the memory and understanding of the court”); Phillips v.
AWH Corp., 415 F.3d 1303, 1322–23 (Fed. Cir. 2005) (en
banc) (“[J]udges are free to consult dictionaries and technical
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treatises at any time in order to better understand the underlying
technology and may also rely on dictionary definitions when
construing claim terms, so long as the dictionary definition does
not contradict any definition found in or ascertained by a
reading of the patent documents.”) (citation omitted); In re
Boon, 439 F.2d 724, 727–28 (CCPA 1971) (holding citation to
dictionary was not tantamount to the assertion of a new ground
of rejection “where such a reference is a standard work, cited
only to support a fact judicially noticed and, as here, the fact so
noticed plays a minor role, serving only to fill in the gaps which
might exist in the evidentiary showing made by the Examiner to
support a particular ground for rejection.” (emphasis and
internal quotations omitted)). Thus, the Office feels it is logical
to permit the applicant and examiner to submit them to the
Board during the briefing stage.
Federal Register (Vol. 76; No. 225; 72270 at 72272–73).
Even having considered the two dictionary definitions for “convert”
and “converting,” though, Requester’s arguments are still unpersuasive. We
reach this conclusion for multiple reasons.
For example, the Merriam Webster dictionary provides a broad array
of potential definitions, including “to alter for more effective utilization”
(definition 2b(2) (emphasis added)). However, being a general purpose
dictionary, the definitions provided therein are less concerned with the
specific technology at hand and, therefore, are less persuasive than
definitions provided in technical dictionaries.
In contrast, the Jackson dictionary is a technical dictionary, and as
such, the definitions contained therein do have a higher probative value than
that of the Merriam Webster general purpose dictionary. However, the
Jackson dictionary’s definition of “converter” is not dispositive either.
Notably, the Jackson dictionary supports the Board’s finding that “convert”
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encompasses only electrical energy changes that are of a fundamental
character, such as AC/DC and DC/AC conversion. See Jackson dictionary
(“Equipment to convert electric energy from one form to another, such as a
rectifier, which converts a.c. to d.c. energy, an inverter, which converts d.c.
to a.c. energy”). The Jackson dictionary additionally sets forth examples of
AC/AC conversion—frequency conversion and phase conversion. Id. (“a
frequency converter. . ., which converts a.c. energy from one frequency to
another, and a phase converter to change the number of phases without
change of frequency.”) However, nothing in the Jackson dictionary
definition sufficiently demonstrates that “convert” is so broad as to include
filtering—let alone Yang’s capacitive filtering—a process that cleans or
alters the input power by removing spurious spikes and unwanted
frequencies, but does not change the voltage’s fundamental frequency or
form.
Most importantly, though, even if we were to assume solely for the
sake of argument that the newly submitted dictionary definitions together
provided some modicum of evidence that “convert” objectively could be
interpreted as including Yang’s capacitive filtering, such hypothetical
evidence still would not be dispositive. These dictionaries merely provide
extrinsic evidence of the meaning of “convert.” But as explained supra, to
the extent that extrinsic evidence is inconsistent with the term’s usage in
Owner’s patent documents, such extrinsic evidence would be inferior to the
intrinsic evidence. Phillips, 415 F.3d at 1322–23.
For example, while the Merriam Webster dictionary states that the
meaning of “convert” includes “to alter,” the intrinsic evidence shows that in
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contrast, Owner is using “conversion and stepping” to be a subset or species
of “altering input power.” ’833 Patent, col. 7, ll. 4–12. As noted by
Requester, “extrinsic evidence is not irrelevant, but [it] has relatively little
probative value in view of the prevailing intrinsic evidence.” Reh’g Req. 3
(citing Tempo Lighting, 742 F.3d at 977).
IIB.
In Section IIB of the Rehearing Request, Requester additionally
contends that the Board fails to assert the plain meaning of “converting.”
Reh’g Req. 7–10. Towards this end, Requester argues that because “the
specification failed to provide a definition for the term ‘converting,’ [] the
Board was required to give the term its broadest reasonable construction.”
Reh’g Req. 7–8. Requester contends that the plain meaning and broadest
reasonable construction include voltage filtering, which Requester refers to
as “AC/AC converting.” Reh’g Req. 9; accord id. 9–10.
This argument is a non-sequitur. The fact that Owner does not define
the claim term “converter” with sufficient specificity to exclude AC/AC
conversion does not serve as a sufficient basis to conclude that filtering
AC power falls within the plain meaning of AC/AC converting. For the
reasons already explained above and in the Corrected Decision, Requester’s
arguments are insufficiently persuasive that Yang’s AC capacitive filter
corresponds to an AC/AC converter.
Requester contends that the Board erred in distinguishing between the
terms “altering” and “converting:”
The Decision proposes a distinction between the terms
“altering” and “converting,” however, this distinction is not
sufficient to provide a definition of “converting.” “Altering” as
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used in the ’833 Patent specification is not necessarily broader
than “converting,” as the ’833 Patent states “altering”
comprises a combination of AC/DC conversion, and stepping
conversion (see ’833 Patent at col, 7, lns. 3-12). “Altering” in
this context is the combination of both of these functions.
There is no principled rule of claim construction that would
allow the Board to avoid the requirement of giving the term
“converting” its broadest reasonable construction simply
because the term “altering” is also used elsewhere in the
’833 Patent specification.
Reh’g Req. 9–10.
This argument is also a non-sequitur. Requester does not dispute the
Board correctly concluded that Owner uses “altering” in a manner that is
broader than “converting.” But Requester then asserts that the Board relies
on this fact as a rationale for not interpreting “converter” according to the
broadest reasonable construction. This is not the case. For the reasons
already stated, the Board instead determined that the broadest reasonable
construction of “converting” excluded filtering AC voltages.
In response to the Board’s reasoning that “Requester’s [overly] broad
interpretation of ‘converting’ effectively renders various terms. . .
superfluous” (Corrected Decision 18), Requester argues “that not all
circuitry converts, as may be the case with a circuit that produces the same
instantaneous input and output voltage” (Reh’g Req. 10). This argument is
not persuasive because Requester has not provided any example of a circuit
in which the internal resistance, inductance, and capacitance (whether
intentionally built into the circuit or existing merely as an inadvertent or
parasitic effect) has absolutely no influence on the circuit’s input voltage.
Nor has Requester provided any reasonable standard for determining what
objective degree of change in resistance, inductance, capacitance or
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combination thereof would be sufficient to constitute a “conversion.”
Requester’s contentions on this point merely constitute unsupported attorney
arguments. It is well settled that arguments of counsel cannot take the place
of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d
135, 139–40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984).
IIC.
In Section IIC of the Rehearing Request, Requester argues that “[t]he
Board improperly relies on attorney argument to limit the meaning of
“converting.” Reh’g Req. 10–11. Requester more specifically contends that
the meaning of “converting” is ambiguous; Owner is attempting to remove
this ambiguity by offering a special and unduly narrow definition in the
appeal briefs; and “[i]t would be legal error to allow a patent owner to give a
claim term a special definition during inter partes reexamination, based
upon an argument that the new meaning would constitute prosecution
history estoppel.” Id.
This argument is not persuasive. Requester is again conflating the
two issues that already have been discussed above. It is true that some
degree of ambiguity exists as to what specific metes and bounds correspond
to the claim term “converting”—e.g., whether Owner’s Specifications, read
in combination as a whole, indicate that the term “converting” additionally
includes only DC/DC voltage stepping. However this is a separate issue
from—and not dispositive of—whether “converting” is so broad as to
encompass additionally, all conceivable voltage alterations.
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IID.
In Section IID of the Rehearing Request, Requester argues that “the
Board must consider the obviousness of AC/DC conversion.” Reh’g Req.
11–13. More specifically, Requester asserts that “[t]he Board relies on [a]
finding of inherent obviousness to find conception of AC/DC conversion.”
Id. 12 (citing Corrected Dec. 47) (emphasis added).5 Requester then urges
that because of this finding, the Board should find that
it would [have been] obvious to modify Yang to include AC to
DC conversion based upon the reasoning of the Board, to
provide power to portable rechargeable devices that only accept
DC power, as opposed to those that only accept AC power. To
prevent injustice, the Board should find AC/DC conversion in
Yang to constitute an obvious modification in light of the
Board’s own reasoning.
Id.
In support of this assertion of obviousness, Requester cites to various
prior-art references of record that previously never were proposed to be
combined with Yang—Bhogal, Unger, and Rengan, and Requester now
argues that these references provide evidence that “Yang [can] be modified
with AC/DC conversion to supply power to such DC appliances.” Id. 12–

5 We note for clarity that the Board did not employ the term “inherent
obviousness,” nor did it intend to do so. This term, which was coined by
Requester, conflates the separate and distinct legal concepts of inherency
and obviousness. We understand Requester to be referring to the Board’s
analysis of the conclusion that a certain exhibit included an implicit
disclosure of AC-DC power conversion. Corrected Decision 47. See also In
re Preda, 401 F.2d 825, 826 (CCPA 1968) (noting that “in considering the
disclosure of a reference, it is proper to take into account not only specific
teachings of the reference but also the inferences [that] one skilled in the art
would reasonably be expected to draw therefrom”).
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13. Requester argues that it would be proper for the Board to consider such
new combinations of references because the “Federal Circuit decisions have
guided this Board to not grant claims that are invalid, as to do so would
exact an injustice on the public.” Id. 12 (citing Q.I. Press Controls, B.V. v.
Lee, 752 F.3d 1371, 1383–84 (Fed. Cir. 2014) for the proposition that the
Federal Circuit encourages the Board to issue new grounds of rejection for
claims having similar limitations as rejected claims, and citing Tempo
Lighting for the proposition that “when [the] Board overturns invalidity
determination of Examiner, third party requester has ‘the right to defend the
examiner’s final decision on any ground supported by the record.’”).
Requester’s reliance on Tempo Lighting and Q.I. Press Controls is
misplaced. The present situation is distinguishable from that of Tempo
Lighting because in the present reexamination, Requester has not established
that the Examiner ever made any final decisions about the present claims’
patentability based upon Yang in combination with Bhogal, Unger, or
Rengan. See generally, e.g., Action Closing Prosecution; see also
Reh’g Req. 11–13.
Q.I. Press Controls is also distinguishable from the present situation.
While our reviewing court in Q.I. Press Controls did hold that the Board
erred by failing to exercise the Board’s discretionary authority to issue a new
ground of rejection (Q.I. Press Controls, 752 F.3d at 1383), that narrow
decision was reached based upon the existence of particular facts that
warranted a new ground of rejection to avoid plainly inconsistent
patentability determinations. Not only were all of the references already
before the Board (id.), but further, the Board was already considering a
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rejection of other claims that was based upon the same combination of
references (id.). Moreover, the claims for which the Board failed to exercise
its discretion in issuing a new ground of rejection were found to be “nearly
identical” to the claims for which the rejection was issued by the
Examiner—there being only “minor differences between the [respective]
claims.” Id. at 1383–84. In fact, the court expressly clarified “[it does] not
hold that the Board should always apply references that are before it
affecting some claims to every other claim on appeal.” Id. at 1384. We,
therefore, understand Q.I. Press Controls to stand for the proposition that the
Board should employ reason when deciding whether to exercise its
discretionary authority, but the Board nonetheless has an obligation to do so
to prevent inconsistent patentability determinations “when a proper
challenge to that inconsistency is made on appeal.” See id.
In contrast, the three related appeals presently before the Board, in
combination, entail approximately 50 separate grounds of adopted and
proposed rejections. These rejections are based upon various permutations
of approximately 22 references, and they cover approximately 80 claims,
including approximately 11 independent claims. Approximately 24 of these
50 rejections are based upon Yang, either alone or with various
combinations of other references. This number of claims, number of
references, and number of bases of rejection demonstrate how extensive the
claimed subject matter on appeal is. Requester has not demonstrated that the
claims rejected over any of Bhogal, Unger, and Rengan, are “nearly
identical” to every one of the claims that are proposed to be rejected as
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anticipated by or obvious over Yang, or that only minor differences exist
among all of these claims. See Q.I. Press Controls 752 F.3d at 1384.
Furthermore, Requester has not demonstrated that any inconsistent
patentability determinations exist among the rejections based upon any of
Bhogal, Unger, and Rengan, and any of the rejections based upon Yang. In
fact, because the rejections that Requester now asks us to consider on
rehearing were never proposed or argued during the reexamination
proceeding, Requester has not established that these newly proposed
grounds constitute “proper grounds” within the meaning of Q.I. Press
Controls. See also Belkin Int’l, Inc. v. Kappos, 696 F.3d 1379, 1382 (Fed.
Cir. 2014) (agreeing that the Board did not err in not considering issues that
the [USPTO] Director had found not to raise a substantial new question of
patentability).
For at least these reasons, then, Q.I. Press Controls is inapplicable to
the present situation, and we decline to consider the newly proposed
combination of references.
Section III of the Request.
In Section III of the Rehearing Request, Requester contends
The Board seems to misapprehend or overlook the reasoning
for the combination of the Odaohhara (U.S. Pat.
No. 6,986,067) reference with the Yang reference that would
render AC/DC conversion obvious in BI-2 through BI-4.
Odaohhara utilizes a pulse width modulation scheme to
produce a DC output. BI-2 through BI-4 each reason that a DC
output may be utilized with Yang to provide for different
operating frequencies, as taught by Odaohhara. Such different
operating frequencies may allow Yang to beneficially provide
optimal power supply to a variety of different kinds of
connected devices when Yang’s device is in the “on” state.
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Reh’g Req. 14.
This argument restates Requester’s position, but it does not “state with
particularity the points believed to have been misapprehended or overlooked
in rendering the Board’s opinion reflecting its decision,” as required by
37.C.F.R. § 41.79(b)(1). The Board’s Decision expressly explains that the
adopted basis of invalidity does not provide sufficient reasoning for why one
of ordinary skill would have wanted to employ Odaohhara’s circuitry within
Yang in light of the fact that Odaohhara and Yang “address [the problem of
phantom load] for different types of devices in differing manners.”
Corrected Dec. 23. That is, the Board found that insufficient articulated
reasoning existed for wanting to employ a frequency reducing circuit for
saving power in DC devices in Yang because Yang discloses the use of
power saving circuitry for an AC device. Id. 22-23. Requester’s speculative
assertion—that such a substitution “may allow Yang to beneficially provide
optimal power supply to a variety of different kinds of connected devices
when Yang’s device is in the “on” state” (Reh’g Req. 14)—does not address
the question of why one would want to place Odaohhara’s circuit, which is
designed to save power for devices that operate on DC power, into Yang’s
device, which is designed to operate on AC power. Stated another way,
Requester does not point out error with the Board’s conclusion that no
reasonable showing has been made that one would have desired to use
Yang’s AC circuitry in combination with a DC device.
Requester next argues in Section III of the Request that “additional
grounds for finding AC/DC conversion obvious in light of Odaohhara are
also present before the Board. Odaohhara teaches a DC output that may be
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used to provide power to ‘general household electrical appliances.’” Reh’g
Req. 14 (citing Odaohhara col. 9, ll. 10-20). In fact, the full passage of the
excerpt cited by Requester reads as follows:
Although the case where the AC adaptor 10, which is a
power supply device, is present outside the housing of the main
body of the note [personal computer] PC 9 is described in the
embodiment of the present invention, the similar reduction of
power loss can be achieved when the power supply device is
incorporated in the housing. In other words, although the
aspect for reducing operating frequencies may be different,
whether the power supply device is physically separated from
the main body or not is out of the question. Also, although a
note PC 9 is described as an example of the use of the power
supply device, the present invention can be applied to general
household electrical appliances comprising a power supply
device. Although the prescribed standby state may be different
from the soft-off or suspend state in the note PC 9, the
reduction of power loss can be achieved in the state on the
assumption of resuming operation when this embodiment is
applied in a prescribed standby state in which the main
apparatus [is] not in operation, regardless of the presence or
absence of a battery in the main body.
Odaohhara col. 9, ll. 12-22 (emphasis added).
When the cited passage is read in full rather than out of context, it is
more than reasonably clear that the passage’s referenced “general household
electrical appliances” are appliances that operate on DC power.
Section IV of the Request.
Requester contends in Section IV of the Rehearing Request that “[t]he
Board incorrectly finds that Bhogal does not sufficiently disclose, teach or
suggest the limitations in independent claims 1 and 56 of ‘the power device
draws no input power in the ‘off’ state’ (emphasis added).” Reh’g Req. 15;
accord id. 15–18. In support of this contention, Requester first repeats the
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arguments presented on appeal (see, e.g., Requester’s Resp. Br. 19–22 (filed
Dec. 4, 2013)) that Bhogal distinguishes between power supplies that reduce
standby power load and those that eliminate the standby power load.
Reh’g Req. 15. Requester again contends that “Bhogal discloses that its
power supply ‘eliminates’ standby power load”—that is, Bhogal draws no
AC power in the “off” state. Reh’g Req. 15; accord id. 15–16.
The Corrected Decision already has explained that the claim 1
limitation, “draws no power in the ‘off’ state,” is interpreted to mean draws
power that is at most on the order of microwatts. Corrected Dec. 26. The
Corrected Decision also already has set forth why there is insufficient
evidence to conclude reasonably that Bhogal’s disclosure of eliminating
standby power is a disclosure of cutting power on the primary side of the
transformer. Corrected Dec. 26–29. That is, the Corrected Decision already
explains why insufficient evidence exists that Bhogal specifically draws no
input power in the “off” state, as recited by independent claim 1.
Requester next argues for the first time on Rehearing
even if the Board maintains that the disclosure of
Bhogal. . . [indicates] that AC power is indeed drawn by the
power supply 200, it would [have been] obvious to modify
Bhogal to exclude draw of AC power based on the Board’s
reasoning for asserting rejection BI-6 in the Board’s
[2014-007812] Decision6 for the reexamination of the
’359 Patent.”
Reh’g Req. 16 (emphasis added). Requester more specifically contends that
for the reasons explained in the ’7812 Decision, the claims associated with
the present appeal’s BI-13 and BI-14 are rendered obvious when Bhogal is

6 2014-007812 Decision on Appeal (mailed October 28, 2014).
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viewed further in combination with Chen (US 2004/0056533A1; published
Mar. 25, 2004) and Suzuki (US 6,489,725 B1; issued Dec. 3, 2002). Id. 16–
17. According to Requester, “the Board’s decision in this case clearly
conflicts with it decision in the related [’7812] Decision.” Id. 17 (citing Q.I.
Press Controls, B.V. v. Lee, 752 Fed 1371, 1383–84 (Fed. Cir. 2014) for the
proposition that the Board is encouraged to exercise its discretionary
authority to issue a new ground of rejection for claims having similar
limitations as rejected claims, even though third party requester did not raise
the new ground of rejection).
We decline to consider the newly presented question of whether the
combination of Bhogal, Chen, and Suzuki render obvious either independent
claim 1 or any of the dependent claims associated with BI-13 and BI-14.
Requester is simply incorrect that our decision in the present case conflicts
with our decision relating to BI-6 in the ’7812 appeal. In the present appeal,
independent claim 1 is directed to the embodiment of the invention where
“the power device draws no input power in the ‘off’ state.” Claim 1
(emphasis added). In contrast, independent claim 17 of the ’7812 appeal—
the only independent claim for which the Board affirmed the Examiner’s
rejection—contains no express restriction on how much input power the
power device draws in the “off” state.
Furthermore, while it is less than clear as to which disclosed
embodiments claim 17 of the ’7812 appeal is intended to be directed, the
Board explained that it understands claim 17 to be directed to the Figure 12
embodiment of the ’359 Patent—an embodiment that draws more than no
power in the “off” state . ’7812 Dec. 16–18. In fact, the Board expressly
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explained “we will not read the term ‘‘off’ state’ of claim 17 so narrowly as
being limited to ‘no power’ absent additional claim language that reasonably
indicates such a limitation is required.” Id. 20. The Board then proceeded to
sustain the obviousness rejection over Bhogal, Odaohhara, Chen, and Suzuki
under the interpretation that claim 17 draws some power (“reduced power”)
in the “off” state. Id. 19–23; see also id. 23–27 (explaining why the
language of dependent claim 20 “draws substantially no power”—although
narrower than claim 17—still was interpreted as reading on an embodiment
that draws reduced power, as opposed to no power).
Requester’s argument fails for a second reason. Requester argues that
the combination of Bhogal, Chen, and Suzuki “would eliminate AC power
draw by Bhogal’s power supply 200.” Reh’g Req. 17. However,
independent claim 1 does not require elimination merely of AC input power.
The claim instead requires that “the power device draws no input power in
the ‘off’ state.” That is, claim 1 requires that the power device draw input
power that is at most on the order of microwatts from any and all input
power sources, whether AC or DC sources.
As explained in the ’7812 Decision, Bhogal does teach that the
switching logic component 300 can be disconnected from the AC input
power source that supplies power to the primary winding side of transformer
230. ’7812 Dec. 21 (discussing operation Bhogal’s invention depicted in
Figs. 2–3). However, Bhogal expressly states that when Switching Logic
Component 300 shuts off the AC transformer, Switching Logic Component
300 draws DC power from local battery 260—either to supply trickle charge
in standby mode or to supply power when not in standby mode.
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Bhogal ¶ 18. That is, Bhogal always draws input power—either from the
AC power source or from the DC battery. As such, Requester’s argument
that the newly cited combination would eliminate AC power draw does not
address the language of claim 1 sufficiently.
Requester further cites to Tempo Lighting, Inc. v. Tivoli, LLC, 742
F.3d 973, 979 (Fed. Cir. 2014), contending that Tempo Lighting stands for
the proposition that “when [the] Board overturns invalidity determination of
Examiner, third party requester has ‘the right to defend the examiner’s final
decision on any ground supported by the record.” Reh’g Req. 17. However,
Requester has not alleged, much less demonstrated, that a ground of
rejection based upon the combination of Bhogal, Chen, and Suzuki was
made in relation to BI-13 or BI-14 prior to the Examiner’s issuance of the
Action Closing Prosecution. See generally Reh’g Req. Nor has Requester
alleged that such a ground of rejection was argued in any of the appeal
briefs. Id. As such, we will not consider this ground of rejection because it
is first raised in Request for Rehearing. We decline to extend Tempo
Lighting to stand for the proposition that a party to an inter partes
reexamination proceeding may submit new evidence in a rehearing when not
authorized by regulation. See 37 C.F.R. § 41.79(b) (addressing rehearings in
inter partes reexamination appeals):
(b)(1) . . . Arguments not raised in the briefs before the Board
and evidence not previously relied upon in the briefs are not
permitted in the request for rehearing except as permitted by
paragraphs (b)(2) and (b)(3) of this section.
(2) Upon a showing of good cause, appellant and/or
respondent may present a new argument based upon a recent
relevant decision of either the Board or a Federal Court.
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(3) New arguments responding to a new ground of
rejection made pursuant to § 41.77(b) are permitted.
Section V of the Request.
In section V of the Rehearing Request, Requester contends that the
Board erred by sustaining the Examiner’s decision not to adopt proposed
bases of invalidity BI-21 through BI-27, all of which proposed rejections are
based at least in part upon Yang. Reh’g Req. 17–18. However, Requester
does not separately argue any of the limitations associated with the claims
addressed by these particular bases of invalidity. Id. Requester instead
contends that “the rejections under BI-21 through BI-27 should be asserted”
based upon Requester’s arguments set forth in section II of the Rehearing
request in relation to “Yang’s disclosure of ‘converting’ and the obviousness
of AC/DC conversion.” Id.
Accordingly, we find Requester’s contentions regarding BI-21
through BI-27 to be unpersuasive for the reasons set forth above in the
discussion of Yang’s teachings.
Section VI of the Request.
In Section VI of the Request, Requester contends that the Board
misapprehended the disclosure of Hoeyer (EP 1473813 B1; published
Mar. 16, 2005), as asserted in BI-28. Reh’g Req. 18–19. Requester more
specifically contends that “[t]he Board incorrectly finds that Hoeyer does not
sufficiently disclose, teach or suggest the limitation in independent claim 24
of ‘the load sensing portion determining the power or load being drawn from
the power device by measuring the frequency of the pulses.’” Id. 18.
According to Requester,
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Hoeyer. . . discloses a charging system 600 that monitors
a duty cycle. . . The duty cycle varies in response to variations
in the resistance of the battery to be charged at a particular rated
voltage level. . . The raise in voltage reduces the duty cycle of
the charging pulse. . . Accordingly, by measuring the duty
cycle, Hoeyer is determining the power or load being drawn by
the battery.
Id.
This argument was previously considered (Corrected Dec. 36–39),
and the argument remains unpersuasive. As the Board already explained in
the Corrected Decision,
Hoeyer [does describe] determining the power or load being
drawn in order to determine the cycle/frequency to be
employed in accordance with that particular pulse width
modulation scheme. However, this question is not in dispute.
Rather, the relevant inquiry is whether the converse is true:
whether Requester has established that the power or load being
drawn is determined by measuring the duty cycle or frequency
of the pulses.
Id. 38.
Accordingly, Requester has not established that the Board
misapprehended the disclosure of Hoeyer. More generally, Requester has
not established that the Board erred in sustaining the Examiner’s decision
not to adopt proposed obviousness rejection BI-28 of claim 33–35 over
Watannabe (JP HEI 4[1992]-165957; published June 11, 1992) in view of
Hoeyer.
Section VII of the Request.
Section VII of the Rehearing Request relates to independent claim 11
and its dependent claims 12–23. Requester argues inter alia that the Board
misapprehended the scope of claim 11, and in so doing, “combines
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structures to attempt to create an invention that does not exist.” Reh’g
Req. 19. For convenience, we first reproduce independent claim 11 with the
most relevant language emphasized:
11. A power device for supplying power to a
portable rechargeable electronic device, the power device
comprising:
a first portion for receiving electrical input power from
a source, the input having an input voltage;
a second portion for delivering electrical output power
to the electronic device, the output power having an output
voltage;
circuitry for converting the input power voltage to
the output power voltage and for determining an “off”
state of the circuitry;
a connector located on the second portion and
removably connectable with the electronic device; and
a switch assembly having powered terminals, the
switch assembly responsive to movement or at least a movable
portion thereof to electrically connect the terminals and to
provide an output signal to activate the circuitry to the “on”
state,
wherein the circuitry automatically turns the circuitry
to the “off” state, the circuitry drawing no power when in the
“off” state.

We now summarize our interpretation of claim 11 and explain why
the Rehearing Request mischaracterizes this interpretation. As explained at
pages 50–53, for example, of the Corrected Decision, we understand the
claim language “circuitry. . . for determining an ‘off’ state of the circuitry”
to correspond to, e.g., the combination of IC 210, switch 340, and load
sensing device 400 depicted in Figure 8. Figures 9–13 also depict similar
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circuitry—including at least an IC—for determining an off state. In all of
the disclosed embodiments, the circuitry for determining an off state, itself,
draws some degree of low power in order to operate. See, e.g., PO Resp.
Br. 2 (contending that Figure 8—which is the initial figure depicting the
circuitry for determining an off state—“does not have the off state drawing
zero power referred to in claim 11”).
The switch of the recited switch assembly corresponds to the various
embodiments or species of the hard switch 50. See, e.g., ’833 Patent, FIGs.
1–2 (depicting toggle switch 50); see also FIG. 6; col. 8, ll. 36–59
(explaining that FIG. 6 depicts a switch assembly 50 that takes the form of
sheath 110); see also col. 8, l. 60–col. 9, l. 4; FIG. 7 (explaining that the
switch may take the form of an orientation-dependent switch or a cantilever-
contact switch).
The last limitation of claim 11 recites “wherein the circuitry
automatically turns the circuitry to the ‘off’ state, the circuitry drawing no
power when in the ‘off’ state. As explained above and previously in the
Corrected Decision, the circuitry—e.g., the load sensing device 400, switch
230 and IC 210—does turn itself to the off state automatically when the
rechargeable electronic device is disconnected or fully charged. See, e.g.,
Corrected Dec. 51 (citing ’833 Patent, col. 9, ll. 5–38). The circuitry does
not shut itself off completely, though. See, e.g., ’833 Patent, col. 9, ll. 52–54
(“while the power device 10 [of Figure 8] is not completely off, it is in [an]
ultra-low power consumption state and is able to power-up more quickly”).
Rather, this circuitry, which would otherwise draw low power in the
“off” state, is capable of “drawing no power when in the ‘off’ state” due to
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the additional presence of the switch assembly, including a hard switch,
interposed between the AC Input and the circuitry for determining an off
state. That is, the circuitry draws no power (as opposed to low power) in the
“off” state when the hard switch is opened or turned off. See, e.g., id. col. 8,
l. 60–col. 9, l. 16 (explaining that Figure 7 discloses a power device
including a mechanical switch and further explaining that the circuitry of
Figure 8—IC 210 and switch 340—may be incorporated into the power
device of Figure 7). Figure 8 of the ’833 Patent also depicts the combination
of load sensing device 400 (corresponding to at least a portion of the claimed
circuitry) and a Power-On Switch with contacts 50a/50b. The dashed lines
L1’ and L2’ depict an alternate embodiment where “lives L1’ and L2’. . . are
able to cut power in the power device 10 before the rectifying diode bridge
420 by being opened at the switch terminals 50a and 50b.” Id. col. 8, ll. 31–
35.
The combination of circuitry and a hard switch is also depicted in
other embodiments of the ’833 Patent. See FIG. 9 (depicting circuit 500 and
start pushbutton and start switch 520); FIG. 10 (depicting circuitry including
an unnumbered IC chip and a switch assembly 50 including Power-On
Switch SW1); FIG. 11 (depicting circuitry including an unnumbered IC
circuit and a switch assembly 50 including Power-On Switch SW1); FIG. 12
(depicting circuitry including an unnumbered IC and Power-On Switch
SW1); and FIG. 13 (depicting circuitry including an unnumbered IC and
switch assembly 50 including Power-On Switch SW1). At least some of
these embodiments are disclosed as drawing zero current. See, e.g., col. 11,
ll. 1–5 (“FIG. 10 shows a relatively simple circuit architecture in which a
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switch 50 connects at or proximate one of the prongs 14 for disconnecting
the input power before the power-consuming components, resulting in a zero
current draw”).7
We now turn to Requester’s argument that “the Decision combines
structures to attempt to create an invention that does not exist.” Reh’g
Req. 19. More specifically, Requester contends the Board finds the claimed
circuitry that automatically turns the circuitry to the “off” position, as well as
the claimed switch assembly, both correspond to the spring loaded sheath.
Reh’g Req. 19–20 (citing Corrected Dec. 46, 53). Requester contends that
neither the second McGinley Declaration nor the ’833 Patent discloses the
Decision’s proposed double-sheath structure. Reh’g Req. 20.
Requester’s argument is not persuasive because the Board did not, in
fact, interpret claim 11 as reading on or corresponding to a double-sheath
structure. As explained above, the Board interprets only the claimed switch
assembly as corresponding to a hard switch such as the disclosed sheath
structure. The recited circuitry “for determining an “off” state” that
“draw[s] no power when in the ‘off’ state” is separate from the switch
assembly and is not interpreted as corresponding to a sheath. Rather, the

7 To clarify the record, claim 11 does not read on the ITE AC Adapter /
Charger disclosed in Owner’s Exhibit F. The drawing of Exhibit F, titled
“Horizon Technologies Concept Drawing for ITE AC Adapter /Charger with
on/off switch to eliminate phantom load” and attached to an e-mail thread
spanning the period of January 15, 2005 to January 25, 2008, states “The
On/off switch is located after a 2 amp fuse and various other components on
the charger circuit board. Thus, it is a functional switch and not an isolation
switch as the small circuit board retains power when the switch is in the off
position.”
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circuitry draws no power in the “off” state only when the separate sheath or
other hard switch is placed into the “off” state.
Some confusion may be attributable to the statement in the Corrected
Decision “claim 11 recites a power device that includes a first mechanism,
such as a biased-sheath connector of Figure 6, that automatically turns the
power device to the ‘off’ state.” Corrected Dec. 52. This statement is true;
the power device of claim 11 does require the presence of some hard switch
that causes no power to be drawn when in the switch is in the “off” state.
Such a switch may be a biased-sheath connector of Figure 6 that can turn the
power device to the “off” state automatically.
However, the fact that sheath-embodiment is a switch that operates
automatically does not mean that the sheath was being mapped to “the
circuitry [that] automatically turns the circuitry to the “off” state.” Instead,
this statement was and is intended to mean that such a first mechanism—
whether automatic or manual—corresponds to the claimed switch assembly.
This intended meaning and mapping distinction between the switch and
circuitry is rendered reasonably clear by the very next sentence of the
Corrected Decision: “To read on claim 11, the power device must
additionally include a second mechanism, such as the IC 210, switch 340,
and load sensing device 400 of Figure 8, that determines an ‘off’ state of the
circuitry.” Corrected Decision 52–53.
Requester next argues that “[t]he failure of the inventors to prove
conception of claim 11 is further evidenced by the Board’s assertion that the
particular embodiment of claim 11 is not disclosed in the ’833 Patent.”
Reh’g Req. 21 (citing Corrected Dec. 53). In reviewing page 53 of the
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35
Corrected Decision, though, we do not see where the Board allegedly finds
that the ’833 Patent fails to disclose embodiments corresponding to claim
11.
Page 53 does state that the Board’s interpretation of claim 11 is
further
supported by the passage of the ’833 Specification that states
“various power devices are described having a variety of
features that may be selected and/or combined within the scope
of the present invention to provide a means for low-power
consumption of phantom load, or intermittent power
consumption, or no power consumption.”
Corrected Dec. 53 (citing ’833 Patent, col. 10, ll. 45–49). But this finding
merely supports the Board’s more general finding that at least some of the
switch assemblies 50 depicted generically in Figures 8–13 may be
constructed specifically of the switch-assembly embodiments depicted in
Figures 1–3, 6, and 7. See also ’833 Patent, col. 8, l. 58–col. 9, l.16 (stating
that the IC 210 of the Figure 8 embodiment controls a separate circuitry
switch 340 and that this IC 210 “may. . . be incorporated into the power
device 200 of FIG. 7”).
Requester next argues that
Exhibits B and D of the Declaration disclose mere design goals
to be pursued by the inventors. No schematics or blueprints are
provided in Exhibits B and D, and no schematics or images of
the structure of claim 11 are provided in the ’833 Patent. See
Burroughs Wellcome Co., 40 F .3d at 1228 (“Conception does
not comprise ‘just a general goal or research plan [the inventor]
hopes to pursue.”).
Reh’g Req. 21.
This argument was already addressed in the Corrected Decision:
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36
demonstrating conception does not necessarily require an
Owner to provide drawings or blueprints. Rather, conception is
the formation, in the mind of the inventor, of a definite and
permanent idea of the complete and operative invention.
Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1988).
Requester does not provide sufficient evidence to demonstrate
that the invention is of such a nature that Owner would have to
provide more detail than that contained within the exhibits
(such as additionally providing drawings or blueprints) in order
to demonstrate possession of a definite and permanent idea of
the complete and operative invention. It is well settled that
arguments of counsel cannot take the place of factually
supported objective evidence. See, e.g., In re Huang, 100 F.3d
135, 139-40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699,
705 (Fed. Cir. 1984).
Corrected Dec. 55 (addressing Requester’s argument that Exhibit D’s lack of
schematic drawings or blueprints is a basis to conclude that the exhibit does
not show conception).
Requester next argues that “the inventors could not have been
diligently working to reduce to practice an invention they did not conceive,
and that was not disclosed in the ’833 Patent.” Reh’g Req. 21. This
argument is not persuasive because, for the reasons outlined above,
Requester has failed to demonstrate sufficiently that Owner did not conceive
or disclose the invention of claim 11.
Lastly, Requester argues BI-11 and BI-12 should be adopted in
relation to independent claim 1 “for similar reasons as with claim 11.”
Reh’g Req. 22. This argument is not persuasive because claim 1 omits key
limitations that are central to Requester’s arguments regarding claim 11. For
example, independent claim 1 does not recite circuitry for determining an
“off” state or that automatically turns the circuitry to the “off” state.
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CONCLUSION
Third Party Requester’s request for rehearing is denied.

DENIED

cu

Patent Owner:
Jerold I. Schneider
Schneider Rothman IP Law Group
4651 North Federal Highway
Boca Raton, FL 33431

Third Party Requester:

Ketan S. Vakil
Snell & Wilmer
600 Anton Blvd., #1400
Costa Mesa, CA 92626