Ex Parte Ahmad et al

Board of Patent Appeals and Interferences

Jan 7, 2009

11139736 (B.P.A.I. Jan. 7, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RAED H. AHMAD and EKKEHARD PITTIUS
____________

Appeal 2008-1642
Application 11/139,7361
Technology Center 2800
____________

Decided: January 7, 2009
____________

Before ROBERT E. NAPPI, SCOTT R. BOALICK, and
JOHN A. JEFFERY, Administrative Patent Judges.

BOALICK, Administrative Patent Judge.

1 Application filed May 27, 2005. The real party in interest is Siemens
Energy & Automation, Inc.
Appeal 2008-1642
Application 11/139,736

2
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1-22, all the claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.

STATEMENT OF THE CASE
Appellants' invention relates to an energy management system for
machines such as off-road traction vehicles.

Claim 1 is exemplary:
1. A method comprising:

at an auxiliary power system for an off-road traction vehicle,
comprising:

via an active Insulating Gate Bipolar Transistor rectifier,
converting a first AC signal to a DC signal and providing the
DC signal to a DC bus; and

via an active Insulating Gate Bipolar Transistor inverter
electrically coupled to the DC bus, converting the DC signal to
a second AC signal and providing the second AC signal to an
auxiliary device.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kumar US 6,615,118 B2 Sep. 2, 2003 ("Kumar '118")
Kumar US 2003/0151387 A1 Aug. 14, 2003 ("Kumar '387")

Appeal 2008-1642
Application 11/139,736

3
Franz Haefner et al., "Electric Equipment for Diesel Multiple Units of
the 610 Class of The German National Railways," 398 EB Electronic
Railways, 91 (1993) July, No. 7, Munich, Federal Republic of Germany, see
all figures, ("Haefner").

Claims 8-13 and 16 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
Claims 1-5 and 8-22 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Kumar '118 or Kumar '387.
Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Kumar '118 or Kumar '387 and Haefner.

Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellants have been considered in
this decision. Arguments that Appellants did not make in the Briefs have
not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).

ISSUES
1. Have Appellants shown that the Examiner erred in rejecting claims
8-13 and 16 under 35 U.S.C. § 112, second paragraph, as being indefinite?

2. Have Appellants shown that the Examiner erred in rejecting claims
1-5 and 8-22 under 35 U.S.C. § 102(b) as being anticipated by Kumar '118
or Kumar '387? The resolution of this issue turns on whether the applied
references teach an active Insulated Gate Bipolar Transistor rectifier.
Appeal 2008-1642
Application 11/139,736

4
3. Have Appellants shown that the Examiner erred in rejecting claims
6 and 7 under 35 U.S.C. § 103(a) as being obvious over Kumar '118 or
Kumar '387 and Haefner?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.

1. Kumar '118 describes an "energy management system for use with
off-highway vehicles." (Abstract.) Figure 1A, which "generally
reflects a typical prior art diesel-electric locomotive" (col. 1, ll. 39-
40), shows an alternator/rectifier 104 that provides DC power to an
inverter 106. (Col. 1, ll. 45-46.) Kumar '118 teaches that an inverter
converts DC to AC and a rectifier converts AC to DC. (Col. 1,
ll. 54-55.) Kumar '118 teaches:
In a typical AC diesel-electric locomotive application,
the AC electric power from the alternator is first rectified
(converted to DC). The rectified AC is thereafter
inverted (e.g., using power electronics such as Insulated
Gate Bipolar Transistors (IGBTs) or thyristors operating
as pulse width modulators) to provide a suitable form of
AC power for the respective traction motor 108.

(Col. 1, ll. 60-67.) Kumar '118 makes no further mention of IGBTs.

2. Kumar '387 describes an "energy management system for use with a
hybrid energy off highway vehicle." (Abstract.) Figure 1A, which
"generally reflects a typical prior art diesel-electric Off Highway
Vehicle" (paragraph [0008]), shows an alternator/rectifier 104 that
Appeal 2008-1642
Application 11/139,736

5
provides DC power to an inverter 106. (Paragraph [0009].) Kumar
'387 teaches that an inverter converts DC to AC and a rectifier
converts AC to DC. (Paragraph [0010].) Kumar '387 teaches:
In a typical AC diesel-electric Off Highway Vehicle
application, the AC electric power from the alternator is
first rectified (converted to DC). The rectified AC is
thereafter inverted (e.g., using power electronics such as
Insulated Gate Bipolar Transistors (IGBTs) or thyristors
operating as pulse width modulators) to provide a
suitable form of AC power for the respective traction
motor 108.

(Paragraph [0010].) Kumar '387 makes no further mention of the use
of IGBTs with either inverters or rectifiers.

3. Haefner does not describe the use of IGBTs with either inverters or
rectifiers.

PRINCIPLES OF LAW
The purpose of the second paragraph of 35 U.S.C. § 112 "is to provide
those who would endeavor, in future enterprise, to approach the area
circumscribed by the claims of a patent, with the adequate notice demanded
by due process of law, so that they may more readily and accurately
determine the boundaries of protection involved and evaluate the possibility
of infringement and dominance." In re Hammack, 427 F.2d 1378, 1382
(CCPA 1970). The test for definiteness under the second paragraph of 35
U.S.C. § 112 is "whether those skilled in the art would understand what is
claimed when the claim is read in light of the specification." Orthokinetics,
Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986).
Appeal 2008-1642
Application 11/139,736

6
Also, during prosecution "if a claim is amenable to two or more plausible
claim constructions, the USPTO is justified in requiring the applicant to
more precisely define the metes and bounds of the claimed invention by
holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as
indefinite." Ex Parte Miyazaki, No. 2007-3300,
http://www.uspto.gov/web/offices/dcom/bpai/prec/fd073300.pdf at 11-12
(BPAI Nov. 19, 2008).
Anticipation is established when a single prior art reference discloses
expressly or under the principles of inherency each and every limitation of
the claimed invention. Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342,
1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79
(Fed. Cir. 1994). Under the principles of inherency, a reference anticipates
if it necessarily includes or functions in accordance with the claimed
limitations. Atlas Powder, 190 F.3d at 1347. Inherency may be established
by extrinsic evidence, but "[s]uch evidence must make clear that the missing
descriptive matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill."
Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir.
1991). Inherency may not be established by probabilities or possibilities,
and "[t]he mere fact that a certain thing may result from a given set of
circumstances is not sufficient." Id.
"Section 103 forbids issuance of a patent when 'the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
Appeal 2008-1642
Application 11/139,736

7
subject matter pertains.'" KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007).

ANALYSIS
We agree with Appellants (Reply Br. 6-7) that the Examiner erred in
rejecting claims 8-13 and 16 as indefinite. The Examiner found that these
"claims attempt to define the subject matter in terms of a result to be
achieved, which merely amounts to a statement of the underlying problem,
without providing the technical features necessary for achieving this result."
(Ans. 3.)
Based on the quoted portion of the Examiner's rejection, it appears
that the Examiner may have been concerned with the breadth of the claims
as opposed to indefiniteness of the claims. It is perfectly permissible for the
Appellant to claim the invention in terms as broad as the application
disclosure will permit. In other words, the breadth of the claims is not
equated with indefiniteness of the claims. In re Miller, 441 F.2d 689, 693
(CCPA 1971).
While claims 8-13 and 16 may be broad in scope, we cannot say that
what is claimed is unclear or amenable to two or more plausible
constructions. The Examiner has not explained why those skilled in the art
would not understand what is claimed when claims 8-13 and 16 are read in
light of the Specification or why the claimed subject matter is amenable to
multiple plausible constructions. Therefore, we conclude that Appellants
have shown that the Examiner erred in rejecting claims 8-13 and 16 as being
indefinite.
Appeal 2008-1642
Application 11/139,736

8
On the record before us, we also agree with Appellants (App.
Br. 13-14; Reply Br. 1-2) that Kumar '118 and Kumar '387 do not teach an
active Insulated Gate Bipolar Transistor (IGBT) rectifier, as recited by
independent claim 1. Although Kumar '118 and Kumar '387 teach inverting
rectified AC (i.e., converting DC to AC) using IGBTs (FF 1, 2), they do not
teach rectifying AC (i.e., converting AC to DC) using IGBTs (id.).
Specifically, Kumar '118 and Kumar '387 do not teach that
alternator/rectifier 104 uses IGBTs to provide DC power. (See FF 1,2.)
Although it may be possible for Kumar '119 or Kumar '387 to use an active
IGBT rectifier to convert an AC signal to a DC signal as claimed, the
Examiner has not presented, and we do not find, evidence that either
Kumar '118 or Kumar '387 necessarily does so.
Therefore, we conclude that Appellants have shown that the Examiner
erred in rejecting independent claim 1 as well as claims 2-5 and 8-20, which
depend from claim 1, under 35 U.S.C. § 102(b). Independent claims 21 and
22 recite limitations similar to that discussed with respect to independent
claim 1, and we find the Examiner erred in rejecting independent claims 21
and 22 for the same reasons discussed with respect to claim 1.
Haefner, which was cited by the Examiner for teaching a transformer
coupled to an inverter (Ans. 6-7) and a sinusoidal filter connected to an
inverter (Ans. 7), does not remedy the above noted deficiencies of
Kumar '118 and Kumar '387. (FF 3.) Therefore, for the reasons discussed
with respect to independent claim 1, from which claims 6 and 7 depend, we
conclude that Appellants have shown that the Examiner erred in rejecting
claims 6 and 7 under 35 U.S.C. § 103.

Appeal 2008-1642
Application 11/139,736

9
CONCLUSION
We conclude that:
(1) Appellants have shown that the Examiner erred in rejecting
claims 8-13 and 16 under 35 U.S.C. § 112, second paragraph, as being
indefinite.

(2) Appellants have shown that the Examiner erred in rejecting
claims 1-5 and 8-22 under 35 U.S.C. § 102(b) as being anticipated by Kumar
'118 or Kumar '387.

(3) Appellants have shown that the Examiner erred in rejecting
claims 6 and 7 under 35 U.S.C. § 103(a) as being obvious over Kumar '118
or Kumar '387 and Haefner.

DECISION
The rejection of claims 8-13 and 16 for indefiniteness under 35 U.S.C.
§ 112, second paragraph, is reversed.
The rejection of claims 1-5 and 8-22 for anticipation under 35 U.S.C.
§ 102(b) is reversed.
The rejection of claims 6 and 7 for obviousness under 35 U.S.C. § 103
is reversed.

REVERSED

Appeal 2008-1642
Application 11/139,736

10

ack

cc:

SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPT
170 Wood Avenue South
Iselin, NJ 08830