Ex Parte Clark et al

Patent Trial and Appeal Board

Oct 23, 2018

12752078 (P.T.A.B. Oct. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/752,078 03/31/2010
85449 7590 10/25/2018
BCRK
19530 Telbir Ave.
Rocky River, OH 44116
FIRST NAMED INVENTOR
Brendan Edward Clark
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.
CI102USB 1800
EXAMINER
BORISSOV, IGOR N
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
10/25/2018 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):
ronald.krosky@gmail.com
brendan.edward.clark@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRENDAN EDWARD CLARK and
RONALDCHARLESKROSKY
Appeal2018-004043
Application 12/752,078
Technology Center 3600
Before JOSEPH L. DIXON, THU A. DANG, and SCOTT B. HOW ARD,
Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-004043
Application 12/752,078
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-14 and 26-31. We have jurisdiction under 35 U.S.C. § 6(b ).
We note that this application was prosecuted by both inventors.
While we would normally include additional discussions for a pro se
Appellants, we note both inventors are registered patent practitioner's. As a
result, we do not include additional discussions normally presented to pro se
Appellants. This Appeal is related to prior Appeal 2014-008472, mailed
May 31, 2016.
We AFFIRM.
The claims are directed to a wireless energy sharing management
system. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A system, comprising:
a wireless detection component configured to detect a
device capable of receiving wireless energy;
an amount component configured to identify at least a
received energy amount of wireless energy received by the
device and a supplied energy amount of wireless energy
emitted by the device;
a regulator component configured to manage
emission of the wireless energy in response to detection of
the device according to an energy sharing ratio enforced
with respect to at least the received energy amount, the
regulator component initiates emission to a device when its
supplied energy amount is greater than the received energy
amount according to the energy sharing ratio; and
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Application 12/752,078
a processor, that is operatively coupled to a
computer-readable medium, configured to execute an
instruction stored on the computer-readable medium, where
the instruction is for implementation of the detection
component, the amount component, the regulator
component, or a combination thereof.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Nunally
Rapps et al.
("Rapps")
Graziano et al.
("Graziano")
US 2006/0113955 Al
US 7,415,623 B2
US 2010/0145885 Al
REJECTIONS
The Examiner made the following rejections:
June 1, 2006
Aug. 19, 2008
June 10, 2010
Claims 8, 9, 14, and 31 1 stand rejected under pre-AIA 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which the inventor or a joint
inventor, or for pre-AIA the applicant regards as the invention.
Claims 1-5, 7-10, 12, 14, 26-28, and 31 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Nunally in view ofRapps.
Claims 6, 29, and 30 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Nunally in view of Rapps and further in view of
Graziano.
1 Dependent claims 10-13 contain the same deficient subject matter as
independent claim 9.
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Application 12/752,078
Claims 11 and 13 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Nunally in view of Rapps and further in view of
Graziano.
ANALYSIS
35 U.S.C. § 112, second paragraph
With respect to the indefiniteness rejection, the Examiner maintains
that the term "stability" in claims 8, 14, and 31, is indefinite because the
Specification gives a range of interpretations. (Ans. 4).
Appellants contend that the Specification in paragraph 44 identifies
examples and supported definitions. Appellants further contend that "[a]s a
contextual factor, Appellants submit there is no threshold to stability. While
this may make the claim broader than if a particular level was required, this
does not render the claim indefinite." (App. Br. 16). Appellants contend
that "[ s ]tability, based on the [S]pecification, is understood to include a
range at which the at least one other energy source can provide energy, a
proportion of energy source uptime against energy source downtime for the
at least one other energy source, and a number of loads drawn from the at
least one other energy source." (App. Br. 16-17; see also Reply Br. 2).
We agree with Appellants that the claim terminology is broad, but is
not indefinite. As a result, we cannot sustain the Examiner's rejection of
dependent claims 8, 14, and 31.
With regards to the term "comparing" in independent claim 9, the
Examiner maintains that it is unclear what the claimed "energy provided by
the requesting device" is compared with. (Final Act. 3).
Appellants contend that the comparing step in combination with the
step of determining an energy sharing ratio is satisfied where the
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Application 12/752,078
"comparison is thus clearly a comparison between amounts of energy
provided and amounts of energy received for purposes of evaluating
satisfaction or failure of the sharing ratio." (App. Br. 17). Appellants
further contend that the Examiner's rejection is a conclusory statement with
no authority, argument, or rationale. (Reply Br. 3).
The Examiner maintains that the Appellants' reliance upon the
claimed "energy sharing ratio" for context of the comparing step is flawed
because there is no express definition for "energy sharing ratio." (Ans. 5---6).
We agree with the Examiner that the language of the claim does not
evidence a clear comparison between two values, and Appellants' argument
appears to rely upon the proposed After-Final amendment which was not
entered by the Examiner. As a result, we sustain the Examiner's rejection of
independent claim 9 and its respective dependent claims 10-14 which
contain the same deficient subject matter.
35 U.S.C. § 103
With respect to the obviousness rejections, Appellants present general
arguments for patentability to all the claims and presents general arguments
for the dependent claims. (App. Br. 18-27). Therefore, we select
independent claim 1 as the representative claim for the group and will
address Appellants' arguments thereto. 37 C.F.R. § 4I.37(c)(l)(iv).
Arguments which Appellant could have made but did not make in the Briefs
are deemed to be waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
Appellants' first argument is with regards to non-analogous art and
the combination of the Rapps and the Graziano references. (App. Br. 18-19;
see also Reply Br. 4 ).
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The Examiner maintains that both the Rapps and the Graziano
references relate to the field of charging batteries. (Ans. 6-7; see also Reply
Br. 4--5).
We agree with the Examiner's line of reasoning, but we note that
Appellants consistently identify the wrong references in the combination
used by the Examiner in the rejection with respect to independent claims 1,
9, and 26 which is rejected over the combination of the Nunally and Rapps
references. The Graziano reference was relied upon for dependent claims 6,
11, 13, 29, and 30. As a result, there is no combination solely based upon
the Rapps and Graziano references. Therefore, we find Appellants'
argument thereto to be unpersuasive of error in representative independent
claim 1.
Second, Appellants argue that the cited references fail to disclose or
render obvious all of the elements of the rejected claims. Appellants rely
upon the "defective rejection" argument because of the non-analogous art
argument advanced with respect to the Rapps and Graziano references.
(App. Br. 19--20).
Because we find Appellants' non-analogous art argument to be
unpersuasive with respect to independent claim 1, we find Appellants'
argument relying thereon to be unpersuasive of error in the Examiner's
factual findings or conclusion of obviousness of representative independent
claim 1.
Appellants contend that the Rapps reference does not suggest the
claimed energy sharing ratio. (App. Br. 20). Appellants contend that the
Examiner's reliance upon the Rapps reference teaching of a priority
algorithm is based upon the Examiner's erroneous reliance upon canceled
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claim limitations from the prior Appeal 2014-0084 72. (App. Br. 20-21 ).
Appellants further provide a chart correlating "aspects" of Rapps disclosure
to "claim distinctions." (App. Br. 21-23).
We note that Appellants' chart relies upon the proffered distinctions in
the non-entered After-Final amendment and the discussion generally
addresses aspects" of the Rapps reference and "claim distinctions," but does
not specifically identify the claim language corresponding to these general
allegations. Id.
Additionally, Appellants contend that "[b ]ased on the distinctions
noted above, it is clear that claim 1 distinguishes nonobviously over Rapps."
(App. Br. 23) (emphasis omitted).
The Examiner's rejection is based upon the combination of the
Nunally and Rapps references and arguments to the Rapps reference alone
are unpersuasive of error in the Examiner's factual findings or conclusion of
obviousness of representative independent claim 1.
We find Appellants' arguments are directed to the references
individually and attempts to separately argue the references rather than the
combination as proffered by the Examiner. One cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references. See In re Keller, 642 F.2d 413 (CCPA
1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986).
With respect to dependent claims 2-8, Appellants provide general
arguments to the claims. (App. Br. 23-25).
The Examiner responds to Appellants' arguments and further finds
that Appellants are individually arguing the references, rather than arguing
the combination as applied by the Examiner. (Ans. 8-10).
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We agree with the Examiner and find Appellants' general arguments
do not show error in the Examiner's factual findings or conclusion of
obviousness with respect to dependent claims.
With respect to independent claim 9 and 26, Appellants rely upon the
arguments advanced with respect to independent claim 1, and Appellants
merely repeat the additional claim limitations without substantively
addressing the claims separately.
The Examiner finds that "Appellants do not discuss the applied
references." (Ans. 11). We agree with the Examiner that Appellants do not
argue the combination as applied in the rejection. Consequently,
Appellants' arguments do not show error in the Examiner's factual findings
or conclusion of obviousness of independent claims 9 and 26.
We further find Appellants' argument to not be separate arguments for
patentability, and we group independent claims 9 and 26 as falling with
representative independent claim 1.
With respect to dependent claims 10-14 and 26-31, Appellants rely
upon the arguments advanced previously. (App. Br. 26-27). Therefore,
these claims will fall with their respective independent claims. See
37 C.F.R. § 4I.37(c)(l)(iv).
Appellants also advance a general argument regarding the prior
decision in prior Appeal 2014---008472 and attempt to distinguish the
Board's factual findings with regard to the priority limitation as being
different and distinguishable with regard to the lack of an express definition
of "energy sharing ratio" in the present application. We note that whether
there is a priority claim term/limitation or not in the claim language does not
change our express finding that no express definition for the "energy sharing
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ratio" is found in the Specification. As we previously found, this is a broad
term with no express definition, and the Examiner is entitled to a broad yet
reasonable interpretation thereof relying upon the Specification for further
context. Moreover, we found in the prior Appeal 2014---0084 72 the
Examiner's interpretation to be reasonable with respect to the energy sharing
and percentage. 2
Appellants further present a general argument to the person of
ordinary skill in the art and that the Examiner has not made an express
finding thereto. (App. Br. 28-29).
While we agree with Appellants that the Examiner did not make an
express finding of the level of skill, Appellants have not expressly identified
how the Examiner's lack of an express finding would make the Examiner's
conclusion of obviousness erroneous. We find the level of skill to be similar
to that shown in both the Rapps and Nunally references. Because Appellants
have not proffered any new proposed findings regarding the level of skill,
we find Appellants' general argument to not be a specific argument for
patentability and does not show error in the Examiner's factual findings or
conclusion of obviousness of representative independent claim 1.
Additionally, Appellants set forth a general argument regarding
hindsight and a teaching away, but Appellants do not identify any express
teaching away to show error in the Examiner's factual findings or conclusion
of obviousness of independent claim 1 nor have Appellants identified any
error in the Examiner's factual findings which evidence a reliance on
2 We agree with Appellants that in the decision on rehearing in prior Appeal
2014---008472, we cited to "column 12," but it should have referred to
column 7, line 12 which expressly recites "the system shares energy." (See
Dec. on Reh'g 8).
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impermissible hindsight reconstruction in the Examiner's formation of the
rejection. Again, we find Appellants' general argument to not be a separate
argument for patentability.
Reply Brief
Appellants present arguments proffering error in the Examiner's
rejection under Section 112, second paragraph, and we note that Appellants'
argument implies that the "amended" claim clarifies the definition of the
claim term "energy sharing ratio." (Reply Br. 3). We find Appellants'
argument relies upon the un-entered amendments to the claims, filed June
19, 2017 (see Advisory Act., mailed on June 26, 2017) and therefore cannot
distinguish Appellants' claimed invention or support Appellants' arguments.
Appellants argue that the Examiner's interpretation regarding the
broadest reasonable interpretation is overbroad and that the amended claims
clarify the claim term "energy sharing ratio." We disagree with Appellants
because the proposed claim amendment was denied entry by the Examiner
and therefore cannot further clarify the claim language so as to evidence the
Examiner's overbroad interpretation. Appellants have not identified how the
Examiner's application of the prior art to the broad claims is in error.
Appellants further contend that the Examiner's obviousness rejection
as made in the Examiner's Answer and further clarifications in the
combination of references as made in the Examiner's Answer amount to a
new ground of rejection. (Reply Br. 6-7). Whether the Examiner's
clarification is a new ground of rejection is a petitionable matter and not an
appealable matter. Because Appellants have not filed a petition, we find
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Appellants have waived any arguments thereto. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
CONCLUSIONS
The Examiner did not err in rejecting claims 9--14 based upon
indefiniteness under 35 U.S.C. § 112, second paragraph, but the Examiner
erred in separately rejecting claims 8, 14, and 31 based upon indefiniteness
under 35 U.S.C. § 112, second paragraph. The Examiner did not err in
rejecting claims 1-14 and 26-31 based upon obviousness under 35 U.S.C.
§ 103.
DECISION
For the above reasons, we sustain the Examiner's indefiniteness
rejection of claims 9-14 under 35 U.S.C. § 112, second paragraph, and we
sustain the Examiner's obviousness rejection of claims 1-14 and 26-31
under 35 U.S.C. § 103. However, we reverse the Examiner's separate
indefiniteness rejection of claims 8, 14, and 31.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner's decision. See 37
C.F.R. § 4I.50(a)(l).
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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