Ex Parte Chen et al

Patent Trial and Appeal Board

Oct 30, 2017

14179442 (P.T.A.B. Oct. 30, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/179,442 02/12/2014 Ching Chen 170178.417D1 4797
25096 7590 11/01/2017
PFRKTNN TOTF TIP- NFA General
EXAMINER
PATENT-SEA LEWANDROSKI, SARA J
P.O. BOX 1247
SEATTLE, WA 98111 -1247 ART UNIT PAPER NUMBER
3661
NOTIFICATION DATE DELIVERY MODE
11/01/2017 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):
patentprocurement @perkinscoie. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHING CHEN, HOK-SUM HORACE LUKE,
MATTHEW WHITING TAYLOR, and YI-TSUNG WU
Appeal 2017-003048
Application 14/179,442
Technology Center 3600
Before JOSEPH L. DIXON, THU A. DANG, and AARON W. MOORE,
Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 16—27 and 36-40, which are all of the pending
claims. Claims 1—15 and 28—35 are canceled. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2017-003048
Application 14/179,442
A. INVENTION
According to Appellants, the invention realtes to “providing vehicle
diagnostic data using electrical power storage devices (e.g. secondary
batteries, supercapacitors or ultracapacitors)” (Spec. 2,1. 25—3,1. 1).
B. REPRESENTATIVE CLAIM
Claim 16 is exemplary:
16. A method of operating a portable electrical energy storage
device collection, charging and distribution machine comprising:
detecting presence of a portable electrical energy storage
device configured to provide power to a vehicle;
receiving data regarding the vehicle from the portable
electrical energy storage device, wherein the data at least
includes information regarding vehicle locations; and
providing information from the portable electrical energy
storage device collection, charging and distribution machine
based on the received data.
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Application 14/179,442
C. REJECTIONS1
Claims 16 and 36 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Hammerslag et al. (US 2012/0316671 Al; pub. Dec. 13,
2012, hereinafter “Hammerslag”).
Claims 16, 17, 20-22, 25—27, and 36-40 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Suzuki et al. (US 2003/0209375 Al;
pub. Nov. 13, 2003, hereinafter “Suzuki”) and Hammerslag.2
Claim 18 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Suzuki, Hammerslag, and Gupta (US 5,349,535; iss. Sept. 20, 1994).
Claims 19, 23, and 24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Suzuki, Hammerslag, and Hershkovitz et al. (US
2010/0094496 Al; pub. Apr. 15, 2010, hereinafter “Hershkovitz”).
II. ISSUE
The principal issue before us is whether the Examiner erred in finding
that Hammerslag discloses “receiving data regarding the vehicle from the
portable electrical energy storage device,” wherein the data “at least includes
information regarding vehicle location” (Ans. 3 (citing claim 16) (emphasis
omitted)).
1 In the Advisory Action, the Examiner indicates that the Amendment After-
Final has been entered and overcomes the 35 U.S.C. § 112 rejections.
2 Although the Examiner does not list Hammerslag in the statement of
rejection (Final Act. 14), the Examiner indicates that Hammerslag is relied
upon for teaching the contested limitations in all of the pending claims (Ans.
9). Thus, we deem this oversight as a harmless typographical error by the
Examiner.
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Application 14/179,442
III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Hammerslag
1. Hammerslag discloses a battery transfer and charging system for
electric vehicles, where spent batteries removed from vehicles are tested and
charged (Abstract). An electric vehicle is placed in a predetermined location
of the electric battery charging and transfer system, and the system
mechanically removes the spent battery and replaces it with a fully charged
battery (Hammerslag | 32). The system works in conjunction with battery
transfer stations located at strategic locations throughout an area to exchange
depleted batteries (id. f 35). A centralized database is accessed by the
respective computers of the geographically-distributed battery charging and
transfer stations, the database including battery tracking and history
information, wherein, for each battery, this information includes the number
of times the battery has been charged, the date of first use within a vehicle,
and the current location (e.g., charging station or vehicle) of the battery (id.
1 62). When a given battery is located within a vehicle, the location
information includes information about the vehicle (id. ).
Suzuki
2. Suzuki discloses an electrical vehicle energy supply system
comprising an electrical vehicle carrying a freely removable cassette-type
battery, and an energy supply station which performs charging processing of
the units of batteries (Abstract). When the charge of a battery installed in an
electrical vehicle becomes depleted, the user returns the battery to the return
port of an automatic vending apparatus, removes a recharged or unused
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Application 14/179,442
battery from a battery removal port of the automatic vending apparatus, and
then installs this battery into the electrical vehicle (Suzuki 1151). When the
user returns the battery to the return port, the automatic vending apparatus
automatically reads and makes a judgment as to whether it is a case of the
charge being depleted or the case in which the battery has reached the end of
its life {id. 1153). The charging system further comprises a prescribed
display means for reading out, from storage means various information with
regard to the battery installed in the electrical vehicle {id. 1156).
IV. ANALYSIS
35U.S.C.§ 102
As to claim 16, Appellants contend “Hammerslag does not disclose
receiving data from the battery that at least includes information regarding
vehicle locations” (App. Br. 12). According to Appellants, “paragraph 62 of
Hammerslag describes storing whether the battery is currently in a vehicle or
at a charging station, not the location of the vehicle” {id.). That is, even if
Hammerslag provides battery tracking capabilities, it is “tracking whether
the battery happens to currently be in a vehicle or at a charging station” {id.).
We have considered all of Appellants’ arguments and evidence
presented. However, we disagree with Appellants’ contentions regarding the
Examiner’s rejection of the claims. Based on the record before us, we are
unpersuaded that the Examiner erred in finding that claim 1 is anticipated by
Hammerslag.
As a preliminary matter of claim construction, we give the claims
their broadest reasonable interpretation consistent with the Specification.
See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Although
Appellants contend that “Hammerslag does not disclose receiving data from
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the battery that at least includes information regarding vehicle locations”
(App. Br. 12), we agree with the Examiner that the Specification does not
provide any specific definition for “information regarding vehicle locations”
(Ans. 5). As the Examiner points out, “information regarding vehicle
locations” is only mentioned twice in the Specification: on pages 8—9,
which states “[t]he data may include one or more of: . . . information
regarding user vehicle locations,” and on pages 29-30, which states “[t]he
controller 410 may use data store 416 to log or retain information, for
example, [Jinformation regarding user vehicle locations” (Ans. 5—6 (citing
Specification 8—9, 29-30) (emphasis omitted). Thus, in the Specification,
the exemplary embodiments indicate that data/information “may” include
“information regarding user vehicle locations,” but no specific definition is
provided for the term.
As the Examiner points out, Appellants’ arguments “seem to be
interpreting the claimed feature of ‘information regarding vehicle locations’
as geographic locations of a vehicle,” but “this is not supported by the
Applicant’s disclosure, nor is this reflected in the claim language” (Ans. 5).
We agree with the Examiner’s broad but reasonable interpretation that
“[d]ue to the lack of disclosure in the [S]pecification[,]” the term “does not
particularly indicate a geographic location of a vehicle, only information
regarding vehicle locations’ '' (id.).
Giving the term its broadest, reasonable interpretation consistent with
the Specification and claims, we conclude “information regarding vehicle
locations” is any information related to where a vehicle is located (Ans. 5).
We agree with the Examiner’s finding that Hammerslag discloses a
“database 40 [that] maintains a table of location information which is
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associated with information about the particular vehicle that the battery is
within” wherein “the battery can be placed in different vehicles and that the
history information (which includes current location of the battery)
associated with each vehicle is recorded in database 40” (Ans. 5—6; FF 1).
In particular, Hammerslag discloses a database that receives and stores
battery tracking and history information from a battery, which includes
location information as to whether the battery is in a vehicle, wherein if the
battery is located within a vehicle, the location information includes
information about the vehicle (FF 1).
Thus, in Hammerslag, the database receives data regarding the vehicle
from a battery, the data including location information regarding the location
of the battery inside the vehicle, which includes information as to whether
the battery and the vehicle are located or not located at the charging and
transfer station and information about the vehicle itself (id.). We are
unpersuaded that the Examiner erred in concluding “[t]he ‘information
regarding vehicle locations’ is therefore interpreted as the recorded current
locations of the battery when the battery is in a vehicle” (Ans. 6). Given the
broadest reasonable interpretation, we conclude that “information regarding
vehicle locations” includes any information indicating where the battery and,
thus, the vehicle are located, which includes information indicating that the
battery and the vehicle are located at the charging and transfer station or not
located at the charging transfer station (id.).
On this record, based on the broadest reasonable interpretation of
“information regarding vehicle locations,” we are not persuaded of error in
the Examiner’s reliance on Hammerslag for disclosing the “information
regarding vehicle locations” as set forth in claim 16 (Ans. 5—6; Final Act. 5).
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Additionally, in further support of the Examiner’s findings, and as a
matter of claim construction, we conclude the recitation of “information
regarding vehicle location” in claim 16 is directed to non-functional
descriptive material, to which we accord no patentable weight. Even
assuming our reviewing court were to determine that Hammerslag’s data
from the battery does not include “information regarding vehicle location,”
we need not give patentable weight to descriptive material absent a new and
unobvious functional relationship between the descriptive material and the
substrate. Ans. 5—6; see Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI
2008) (precedential) (“[T]he nature of the information being manipulated
does not lend patentability to an otherwise unpatentable computer-
implemented product or process.”); In reNgai, 367 F.3d 1336, 1338 (Fed.
Cir. 2004); In re Lowry, 32 F.3d 1579, 1583—84 (Fed. Cir. 1994); see also
Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (informative)
(“[Nonfunctional descriptive material cannot lend patentability to an
invention that would have otherwise been anticipated by the prior art.”),
affd, 191 Fed. Appx. 959 (Fed. Cir. 2006) (Rule 36). Thus, non-functional
descriptive material does not confer patentability to inventions that are
otherwise either anticipated or obvious over the prior art.
We conclude the informational content of the claimed “information
regarding vehicle location” is not positively recited as actually being used to
alter the performance of a step or act in method claim 16. That is, the
“information” is received by an unclaimed element, but the particular
content of the information received (“at least includes information regarding
vehicle location”) is not positively recited as actually being used to change
or affect the manner in which the information is received. Moreover, the
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informational content of the received information is not positively recited as
actually being used to change or affect any machine or computer function,
within the broad scope of claim 16. Therefore, we conclude the “at least
includes information regarding vehicle location” is merely descriptive and
non-functional.
On the record before us, and under our claim construction, buttressed
by our findings of Appellants’ reliance upon non-functional descriptive
material to distinguish over the cited prior art, we are not persuaded of error
in the Examiner’s finding of anticipation.
Accordingly, we affirm the anticipation rejection of claim 16 over
Hammerslag. Appellants do not provide substantive arguments for claim 36
separate from claim 16 (App. Br. 13), and, thus, claim 36 falls with claim
16.
35 U.S.C. § 103(a)
As to the rejection of claims 16 and 36 under 35 U.S.C. § 103(a),
Appellants contend that Suzuki “only envisions transferring data regarding
the battery itself’ and “not data regarding vehicle locations” (App. Br. 13).
Appellants also contend Gupta and Hershkovitz also do not disclose
transferring data “regarding vehicle locations” (id. at 13—14).
However, as the Examiner points out, “Suzuki, Gupta and
Hershkovitz are not applied to teach the limitation” whereas “[tjhis feature is
taught by Hammerslag” (Ans. 9). As discussed above, we do not find any
error with the Examiner’s reliance on Hammerslag to disclose data
“regarding vehicle locations” as recited in claims 16 and 36. On this record,
we are not persuaded of Examiner error in the rejection of the claims under
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35 U.S.C. 103(a) over the combination of Suzuki in view of Hammerslag
(and/or Gupta and Hershkovitz).
As for claims 17 and 18, Appellants add “Suzuki mentions nothing
about reading data from the battery, much less when it is inserted into the
vending machine” (App. Br. 15—16). However, we agree with the
Examiner’s finding that, in Suzuki, “when the battery for an electrical
vehicle is to be replaced, the automatic vending apparatus 400 automatically
reads and makes a judgment as to whether it is a case of the charge being
depleted and replacement being made by a different battery, etc.” (Ans. 10;
FF 2). That is, Suzuki teaches and suggests an automatic vending apparatus
that reads (and thus detects the presence of) the battery at the station to
determine whether the charge is depleted or the battery has reached the end
of its life. FF 2. Thus, we find no error with the Examiner’s reliance on
Suzuki for teaching or at least suggesting “detecting presence of the portable
electrical energy storage device [i.e., battery] in the portable electrical
energy storage device collection, charging and distribution machine [i.e.,
charging and transfer station]” (App Br. 14 (citing claim 17)).
As for claim 25, although Appellants concede “Suzuki describes the
machine determining an existing problem with the battery,” Appellants
contend “[t]his is not a potential problem with the vehicle” (App. Br. 18
(citing claim 25)). However, we agree with the Examiner’s finding that “[a]
battery that has been detected to have reached its end of life or has been
depleted” as that of Suzuki “reasonably teaches a ‘potential problem, ’ since
a depleted battery may pose a problem for the operation of the vehicle and/or
its components” (Ans. 17). That is, it would have been obvious to one of
ordinary skill in the art that a problematic battery comprises a “potential
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problem” with the vehicle that uses the battery. Thus, we find no error with
the Examiner’s reliance on Suzuki for teaching or at least suggesting
“notifications regarding potential problems with the vehicle” (App. Br. 21).
Accordingly, we also find no error with the Examiner’s obviousness
rejections.
V. CONCLUSION AND DECISION
We affirm the Examiner’s rejections of claims 16 and 36 under 35
U.S.C. § 102(e), and claims 16—27 and 36-40 under 35 U.S.C. § 103(a).
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)(iv).
AFFIRMED
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