Ex Parte Ball

Patent Trial and Appeal Board

Aug 9, 2016

12277621 (P.T.A.B. Aug. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/277,621 11125/2008 Alan R. Ball
132167 7590 08/11/2016
SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC (PP)
5005 E. McDowell Road
Maildrop A700
Phoenix, AZ 85008
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
ONS01192 6378
EXAMINER
HERNANDEZ, MANUEL J
ART UNIT PAPER NUMBER
2859
NOTIFICATION DATE DELIVERY MODE
08/11/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patents@onsemi.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALAN R. BALL
Appeal2014-007090
Application 12/277 ,621 1
Technology Center 2800
Before BEYERL YA. FRANKLIN, JAMES C. HOUSEL, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner's decision finally rejecting, under 35 U.S.C. § 103(a), claims 21,
22, 27, 28, 31-33, and 35 as unpatentable over So2 in view ofKoemer,3 and
claims 24 and 25 as unpatentable over these references, adding Meng4 alone
1 According to Appellant, the real party in interest is Semiconductor
Components Industries, L.L.C. Appeal Br. 3.
2 US 2008/0258687 Al, published October 23, 2008.
3 US 2004/0100231 Al, published May 27, 2004.
4 US 2008/0024089 Al, published January 31, 2008.
Appeal2014-007090
Application 12/277,621
or further with Kranzen. 5 Because pending claims 26, 36, and 37 have been
objected to only, and claims 29 and 30 have been allowed, these claims are
not before us on appeal. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We AFFIRM.6
STATEMENT OF THE CASE
The invention relates to a battery charger circuit and method of
charging a battery. Claims 21 and 31. Appellant discloses a battery charger
that automatically selects between one of four operating modes. Spec. i-f 9.
In particular, Appellant discloses a battery charger that can operate in either
linear or switching modes, either of which can provide constant-current or
constant-voltage regulation. Id. According to Appellant, the charger
switches automatically between these four operating modes based on
feedback signals indicating the current delivered to the battery, the battery
voltage, and the temperature of the battery charger integrated circuit. Id.
Appellant further discloses that the charger mode may also be determined
based on the charger source, i.e., either a "mains-connected source" or a
universal serial bus (USB) source. Id.
Claim 21, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal:
5 US 7,560,898 Bl, issued July 14, 2009.
6 Our decision refers to Appellant's Specification (Spec.) filed November 25,
2008, the Final Office Action (Final Act.) delivered August 1, 2013,
Appellant's Appeal Brief (Appeal Br.) filed January 9, 2014, the Examiner's
Answer (Ans.) delivered April 9, 2014, and Appellant's Reply Brief (Reply
Br.) filed June 9, 2014.
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21. A battery charger circuit comprising:
a transistor having a first current electrode for receiving a
charger voltage, a control electrode for receiving a first control signal,
and a second current electrode for providing an output voltage;
a rectifier having a first terminal coupled to said second current
electrode of said transistor, and a second terminal coupled to a power
supply voltage terminal; and
a control and regulation circuit having a first input for receiving
a first feedback signal representative of a temperature, a second input
for receiving a second feedback signal representative of a battery
voltage, and a first output for providing said first control signal,
said control and regulation circuit operating in a switching
mode if said battery voltage is less than a voltage threshold, and
changing from said switching mode to a linear mode if said battery
voltage substantially reaches said voltage threshold and if said
temperature is below a first temperature threshold.
ANALYSIS
Appellant argues claims 21, 22, 27, 28, and 31-33 together as a group,
and separately argues dependent claims 24; 25; and 35. We select claim 21
as representative of the group, and separately address Appellant's arguments
as to dependent claims 24, 25, and 35, consistent with 37 C.F.R.
§ 41.37(c)(l)(vii). The remaining claims stand or fall with claim 21.
Claim 21
Appellant raise two points of argument alleging the Examiner erred in
the obviousness rejection of the claims over the combination of So and
Koerner by failing to establish the battery charger circuit of claim 21 is
prima facie obvious: 1) that neither So nor Koerner teach or suggest a
battery charger circuit that changes from switching mode to linear mode if
the battery voltage substantially reaches a voltage threshold (Appeal Br. 6-
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9), and 2) that the Examiner failed to articulate a reason to combine So and
Koerner (id. at 10). After careful review of the opposing positions
articulated by Appellant and the Examiner and the evidence of obviousness
adduced by the Examiner, we determine that Appellant's arguments are
insufficient to outweigh the evidence of obviousness marshalled by the
Examiner. Thus, Appellants have not identified reversible error in the
Examiner's obviousness rejection. In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011). Accordingly, we sustain the stated obviousness rejection for
substantially the fact findings and the reasons set forth by the Examiner in
the Final Office Action and in the Examiner's Answer. We offer the
following for emphasis only.
Appellant contends that the combination of So and Koerner does not
produce a battery charger circuit that changes from switching mode to linear
mode if the battery voltage substantially reaches a voltage threshold. Appeal
Br. 6. Appellant argues that So fails to disclose changing from switching
mode to linear mode based on the battery voltage substantially reaching a
voltage threshold, and also argues that So instead changes from switching
mode to linear mode "a considerable amount of time after the voltage
reaches a threshold (the Regulated Voltage Level)." Id. at 7. In particular,
Appellant asserts that So continues in switching mode "for a substantial
amount of time during period 3 after the battery voltage has reached the
Regulated Voltage Level." Id. (referring to So, Fig. 5). Further, Appellant
asserts that when So changes from switching mode to linear mode, "it is not
based on whether the battery voltage substantially reaches a voltage
threshold," but is based on when the charge current is relatively low. Id. at
8.
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Appellant further argues that Koerner also fails to disclose this
limitation, arguing that Koerner instead changes from switching mode to
linear mode based on temperature, not voltage. Appeal Br. 8. Appellant
asserts that Koerner' s voltage regulator changes from switching mode to
linear mode if the temperature Ts is not greater than a threshold SWk and if
it has been in switching mode more than a maximum time SWt. Id. at 9. As
such, Appellant urges that nothing in Koerner discloses, suggests, or in any
way renders obvious a battery charger circuit capable of changing from
switching mode to linear mode based on reaching a voltage threshold. Id.
According to Appellant, since neither So nor Koerner discloses changing
from switching mode to linear mode based on reaching a voltage threshold,
the Examiner's combination of So and Koerner fail to establish that the
invention would have been prima facie obvious. Id.
The Examiner responds that claim 21 does not require changing from
switching mode to linear mode immediately upon reaching a voltage
threshold. Ans. 3. The Examiner finds So discloses changing from
switching mode to linear mode when the battery voltage has substantially
reached the voltage threshold, e.g., the Regulated Voltage Level. Id. The
Examiner also notes that claim 21 recites two conditions for changing from
switching to linear mode: 1) if the battery voltage substantially reaches the
voltage threshold; and 2) if the temperature is below a first temperature
threshold. Id. That claim 21 has two conditions that must be met before
changing from switching mode to linear mode, the Examiner supports the
view that immediate change between modes is not required. Id. The
Examiner also determines that claim 21, moreover, does not exclude other
conditions for transitioning between modes, such as a condition for changing
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modes being when the charger current is relatively low, as in So. Id. at 3--4.
Finally, the Examiner notes that Koerner was not relied on to teach the
limitation in question, but to suggest the temperature feedback and control
limitations. Id. at 4.
Thus, based on Appellant's arguments and the Examiner's response,
we must decide whether Appellant's claim 21 requires changing from
switching mode to linear mode based on voltage, and if so, whether So, as
modified with Koerner, teaches such a function for the battery charger
circuit. In doing so, we note there is no dispute that So discloses the
structure of claim 21, i.e., a transistor, a rectifier, and a control and
regulation circuit as recited in claim 21, except for first input for receiving a
first feedback signal representative of a temperature. The Examiner relies
on Koerner for suggesting this feature in concluding the invention of claim
21 to have been obvious. The limitation in dispute here, that "said control
and regulation circuit ... changing from said switching mode to a linear
mode if said battery voltage substantially reaches said voltage threshold and
if said temperature is below a first temperature threshold," is recited in
functional language.
"[A]pparatus claims cover what a device is, not what a device
does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468
(Fed. Cir. 1990). Therefore, the patentability of an apparatus claim depends
on the claimed structure, not on the use or purpose of that structure, Catalina
Mktg. Int'!, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir.
2002), or the function or result of that structure. In re Danly, 263 F.2d 844,
848 (CCPA 1959); In re Gardiner, 171F.2d313, 315-16 (CCPA
1948). Although "[a] patent applicant is free to recite features of an
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apparatus either structurally or functionally[,] .... choosing to define an
element functionally, i.e., by what it does, carries with it a risk." In re
Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Where the Examiner
establishes a reasonable belief that a property or characteristic recited in the
claims would have been inherent to the apparatus, the burden of proof shifts
to Appellant to show that this characteristic or property is not possessed by
the prior art. Id. Appellant has not provided any evidence or persuasive
technical reasoning to refute the Examiner's reasonable determination that
these So's control and regulation circuit, as modified by Koerner, would
have been capable of changing from switching mode to linear mode if said
battery voltage substantially reaches said voltage threshold and if said
temperature is below a first temperature threshold.
In this regard, we note that claim 21 recites structure, e.g., a control
and regulation circuit, that does not a priori invoke 35 U.S.C. § 112, sixth
paragraph, "means plus function'' construction. Nor does Appellant assert
such construction to be appropriate.
The Examiner correctly notes that the control and regulation circuit of
claim 21 does not necessarily change from switching mode to linear mode
based on voltage alone, but also based on temperature. Indeed, if the
temperature is above the threshold, then the control and regulation circuit
will not change from switching mode. As such, changing from switching
mode to linear mode does not necessarily occur as soon as the battery
voltage reaches, substantially or otherwise, the voltage threshold. Moreover,
claim 21 does not, as the Examiner notes, exclude additional conditions for
such change including low current. So teaches not only current feedback,
but battery voltage feedback as well. So i-f 23. So teaches the control and
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regulation circuit changes from switching mode to linear mode after the
battery voltage reaches the voltage threshold. So, Fig. 5. On the other hand,
Koerner teaches that the battery charger is changed from switching mode to
linear mode if the temperature is below a temperature threshold. Koerner,
Fig. 2, ,-r 27. When So and Koerner are combined as the Examiner proposes,
So's control and regulation circuit would function to change from switching
mode to linear mode if both the battery voltage reaches the voltage threshold
and the temperature is below a temperature threshold.
In addition, we note Appellant discloses an algorithm for the battery
charger operation wherein switching mode is selected when the temperature
is not less than, i.e., greater than or equal to, a temperature threshold, 110°C,
even if the battery voltage is not less than, e.g., reaches, the voltage
threshold, 4.2V. Appellant Fig. 3 (block 395). In this switching mode, a
constant-voltage is applied similar to the first portion of So's period 3. In
fact, Appellant;s disclosed algorithm only changes from switching mode to
linear mode when both the temperature is below the temperature threshold
and the battery voltage is not less than the voltage threshold. Spec. ,-r 25;
Fig. 3 (block 386). We find these disclosure's undermine Appellant's
argument that So, as modified with Koerner, does not provide a control and
regulation circuit that changes from switching mode to linear mode if the
battery voltage substantially reaches a voltage threshold and if the
temperature is below a temperature threshold.
We tum next to Appellant's second point of argument that the
Examiner failed to articulate a reason to combine So and Koerner.
Appellant acknowledges that the Examiner states, "[i]t would have been
obvious to one of ordinary skill in the art at the time of the invention to
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Application 12/277,621
include the temperature feedback and control in order to provide a stabilized
power supply [voltage] which enables the advantages of two regulators to be
optimally utilized. (Koerner i-f 0018)." Appeal Br. 10. However, Appellant
asserts that neither So nor claim 21 recite, disclose or relate to a power
supply system with two different regulators, and the reason the Examiner
states does not relate to battery chargers. Id. Appellant asserts that Koerner
discloses a voltage regulator, not a battery charger circuit. 7 Id. In this
regard, Appellant argues that Koerner attempts to maintain constant output
voltage as the load changes, whereas So intentionally changes output
voltage. Reply Br. 4--5.
We do not find these arguments persuasive of reversible error. Claim
21 recites a battery charger circuit controlling charging of a battery in two
regulatory modes of operation, a switching mode and a linear mode. In
addition, So teaches a battery charger circuit controlling charging of a
battery in switching and linear regulatory modes of operation. So ,-r 29. In
both claim 21 and So, the circuit is operated so as to control the power
supply to the battery. Although Koerner teaches a power supply system with
two different regulators, these regulators are a switching regulator and a
linear regulator. Koerner i-f 9. Indeed, Koerner teaches similar advantages
and disadvantages for the switching and linear regulators as Appellant
teaches for the switching and linear operating modes. Compare Koerner
i-f 17 with Spec. i-f 2. As such, Koerner's regulators are analogous to the
switching and linear operating modes of claim 21 and So. Moreover,
7 Nonetheless, Appellant clarifies that Koerner is not asserted to be non-
analogous prior art. Reply Br. 4.
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Application 12/277,621
although Koerner teaches a circuit system for generating a stabilized power
supply voltage, and not a battery charger circuit per se, Koerner was relied
on in the rejection to teach temperature feedback and control in changing
between switching and linear regulation. In addition, as the Examiner finds,
Koerner is reasonably pertinent to the problem faced by the inventor and So,
i.e., enabling the advantage of two regulatory modes, switching and linear,
to be optimally utilized. Thus, the Examiner's articulated reasoning for
combining So and Koerner as proposed is consistent with and supported by
these prior art disclosures. This is true even though Koerner's purpose is to
stabilize a power supply voltage, as the rejection did not rely on Koerner to
provide a teaching of the battery charger circuit. So teaches the battery
charger circuit.
Accordingly, we will sustain the Examiner's obviousness rejection of
claim 21.
Claim 24
Claim 24 depends from claim 21, and further requires the control and
regulation circuit selectively operate in the switching mode if the battery
voltage is less than the voltage threshold, and change to linear mode if the
battery voltage substantially reaches the voltage threshold and the
temperature is below a second temperature threshold, "when said charging
voltage is provided by a first type of charging source."
In reference to this last clause of claim 24, Appellant urges that he can
find no disclosure to different types of battery charging sources in any of the
applied prior art to So, Koerner, and Meng. Appeal Br. 12. Appellant
argues that So does not disclose operating differently for different types of
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charging sources. Appeal Br. 12-13. Appellant further argues that Meng
does not disclose selective operation based on the type of charging source
because it never discloses determining the type of charging source. Appeal
Br. 13. As such, Appellant contends that the ordinary artisan "would simply
not operate a battery charger circuit [of So modified by Koerner and Meng]
selectively based on the type of charging source." Id.
We do not find Appellant's arguments persuasive of reversible error
in the Examiner's obviousness rejection of claim 24. As the Examiner
correctly notes, claim 24 does not recite or require different types of
charging sources, but merely recites "a first type of charging source." Ans.
10. Nor does the claim require selective operation for different types of
charging sources. Id. In re Self, 671F.2d1344, 1348 (CCPA 1982) ("Many
of appellant's arguments fail from the outset because, as the solicitor has
pointed out, they are not based on limitations appearing in the claims.")
Appellant has not identified reversible error in the Examiner;s finding that
So provides a first type of charging source. We, therefore, will sustain the
Examiner's rejection of claim 24.
Claim 25
Claim 25 depends from claim 24, and further requires the charging
source comprises a universal serial bus (USB).
Appellant argues that Kranzen teaches away from operating a battery
charger with a control and regulation circuit selectively based on the type of
charging source. Appeal Br. 15. Appellant asserts Kranzen does not
disclose this feature, but instead discloses using two separate switching
regulator controllers for either a wall source or USB power, rather than
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Application 12/277,621
operating a battery charger with a control and regulation circuit selectively
based on the type of charging source. Appeal Br. 14. Further, although
Appellant concedes that USB charging sources are known, Appellant argues
that the Examiner has failed to articulate a reason why an ordinary artisan
would selectively operate the battery charger circuit if it is a USB charging
source. Reply Br. 6. Appellant urges that the Examiner's determination that
one of ordinary skill in the art would recognize using a USB charging source
is a known expedient in the art fails to articulate why the ordinary artisan
would switch between modes in the manner recited in claims 21 and 24 if it
is a USB charging source. Reply Br. 6-7.
We do not find Appellant's arguments persuasive of reversible error
in the Examiner's obviousness rejection of claim 25. Claim 25 does not
recite or require different types of charging sources or selectively operating
the battery charger circuit based on the type of charging source, but merely
recites that the charging source is USB. Ans. 11. Selj~ 671 F.2d at 1348.
Appellant's teaching away argument is founded on an incorrect
interpretation of the scope of claim 25 and, as such, is not persuasive of
reversible error. Appellant has not contested the Examiner's findings that
Kranzen teaches a USB charging source for a battery charging circuit and
that using a USB charging source is a known expedient in the art. We,
therefore, will sustain the Examiner's rejection of claim 25.
Claim 35
Claim 35 depends indirectly from independent method claim 31 via
claim 32, and further requires performing the operating step and the
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changing step "if a battery charging source is a first type but not a second
type."
In maintaining the obviousness rejection of claim 35 over So and
Koerner, the Examiner finds "So inherently performs said operating and said
changing if the charging source is a compatible type but does not operate
with an incompatible type of charging source." Ans. 6. However, Appellant
contends that "[i]f the charger is incapable of operating, then it logically
follows that it is not a battery charging source." Appeal Br. 11. Appellant
argues that it is unreasonable to infer that So contemplates another type of
battery charging source by pointing to an undisclosed possibility of using an
inoperable source. Id. Appellant urges that the broadest reasonable
interpretation of method claim 35, in light of the Specification, is that the
operating and changing steps are performed based on battery charging
sources that are capable of charging the battery. Appeal Br. 11-12.
Appellant argues that there is nothing in So that discloses a different method
is possible when operating with another type of power source capable of
charging the battery. Appeal Br. 12.
The problem with Appellant's argument is that claim 35 does not
recite or require selectively performing the method using different types of
power sources, or selectively performing different methods based on the
type of power source. Independent method claim 31 recites a method of
charging a battery without limitation as to the type of power source.
Intervening dependent claim 32 further limits the method of charging the
battery, but has no limitation as to the type of power source. Claim 35
merely recites that the battery charging method steps of operating and
changing is performed if the battery charging source is a first type but not a
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second type. In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) ("the
name of the game is the claim.") As the Examiner correctly determines, the
scope of claim 3 5 sweeps in the possibility that the battery charging method
is not performed if the battery charging source is incompatible. Ans. 7;
Hiniker, 150 F.3d at 1368. There is nothing in claim 35 that requires that the
second type of battery charging source be compatible with the battery
charger circuit. While a claim is interpreted in light of the specification, care
must be taken to avoid reading limitations from the specification into the
claim. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
Appellant also has not shown, either by persuasive technical reasoning
or an evidentiary showing, that the Examiner's inherency finding regarding
So is erroneous. Appellant's argument that the Examiner's inherency
finding is unreasonable rests on the lack of any explicit disclosure in So of
incompatible charging sources. However, an inherency finding is, by its
very nature, not based on an expressed disclosure but on that which would
have necessarily flowed from the disclosure as understood by one of
ordinary skill in the art. Schering Corp. v. Geneva Pharms., 339 F.3d 1373,
1379 (Fed. Cir. 2003) (quoting Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d
955, 970 (Fed. Cir. 2001)) (In general, a limitation is inherent "if it is the
'natural result flowing from' the explicit disclosure of the prior art."); In re
Oelrich, 666 F.2d 578, 581 (CCPA 1981) (quoting Hansgirg v. Kemmer,
102 F.2d 212, 214 (CCPA 1939)) (emphasis and bracketed material in
original) ("If, however, the disclosure is sufficient to show that the natural
result flowing from the operation as taught would result in the performance
of the questioned function, it seems to be well settled that the disclosure
should be regarded as sufficient."') Although So does not explicitly teach
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the possibility of incompatible battery charging sources, there is also no
disclosure that So may work with any and all battery charging sources. The
Examiner, therefore, finds that one of ordinary skill in the art would have
understood that at least one battery charging source would be incompatible
with So's circuitry. Appellant has not identified reversible error in this
finding. Indeed, So shows voltage and current limits for the battery charging
process (So, Fig. 5); it is reasonable to expect that a battery charging source
supplying voltage and current well outside these limits would be
incompatible with So's circuitry.
Accordingly, we will sustain the Examiner's obviousness rejection of
claim 35.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Final Office Action and the Answer, the decision of the Examiner
rejecting claims 21, 22, 24, 25, 27, 28, 31-33, and 35 under 35 U.S.C.
§ 103(a) as unpatentable over So and Koerner, alone or further in combined
with Meng and/ or Kranzen, is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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