Ex Parte Hong et al

Patent Trials and Appeals Board

Feb 11, 2019

15053680 - (D) (P.T.A.B. Feb. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/053,680 02/25/2016 Xiaoyuan Hong
27060 7590 02/13/2019
ZIOLKOWSKI PATENT SOLUTIONS GROUP, SC (EATON)
136 S WISCONSIN ST
PORT WASHINGTON, WI 53074
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.
14-ICD-1118
(ETC7455.178)
CONFIRMATION NO.
9629
EXAMINER
DINH, TRAIT
ART UNIT PAPER NUMBER
2837
NOTIFICATION DATE DELIVERY MODE
02/13/2019 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):
info@zpspatents.com
sml@zpspatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XIAO YUAN HONG, HAO LUO, and KEVIN LEE 1
Appeal 2018-001149
Application 15/053,680
Technology Center 2800
Before MICHELLE N. ANKENBRAND, CHRISTOPHER C. KENNEDY,
and MERRELL C. CASHION, JR., Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-8. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
BACKGROUND
The subject matter on appeal relates to a connecting device for a
motor and a supply network. E.g., Spec. 1:7-8; Claim 1. Claim 1 is
reproduced below from page 12 (Claims Appendix) of the Appeal Brief
( some paragraph breaks added):
1 The Appellant is the Applicant, Eaton Corporation, which is also identified
as the real party in interest. See App. Br. 1.
Appeal 2018-001149
Application 15/053,680
1. A connecting device for motor and supply network,
compnsmg:
a Variable Frequency Drive (VFD),
a first switch (S 1) and a second switch (S2),
wherein the Variable Frequency Drive (VFD) is connected in
series to the first switch (S 1 ), and
the second switch (S2) is connected in parallel to the series
circuit composed of the Variable Frequency Drive (VFD) and
the first switch (S 1 ), which is characterized in that:
further comprising a bidirectional Silicon Controlled Rectifier
(SCR) which is connected in parallel to the second switch (S2).
ANALYSIS
Claims 1-8 stand rejected under 35 U.S.C. § 103 as unpatentable over
Kubal (US 2009/0218962 Al, published Sept. 3, 2009) and Lu
(US 7,952,318 B2, issued May 31, 2011 ).
Concerning claim 1, the Examiner finds that Kubal teaches a
connecting device for a motor and a supply network comprising a VFD, a
first switch S 1 connected in series to the VFD, and a second switch S2
connected in parallel to the series circuit composed of the VFD and first
switch SI. Final Act. 2-3. The Examiner finds that Kubal does not teach a
bidirectional SCR connected in parallel to second switch S2, but that Lu
teaches a bidirectional SCR connected in parallel to a second switch as part
of a "soft starter" circuit. Id. at 3. The Examiner concludes:
Id.
Therefore, it would have been obvious to one of ordinary skill
in the art before the effective filling date of the claimed
invention to use Lu's Bidirectional Silicon Controlled Rectifiers
34 and contactors 32 in place of the second switch S 12 of
Kubal's circuit for purpose of providing a soft-starter in series
between an AC power source and the AC motor.
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Appeal 2018-001149
Application 15/053,680
The Appellant argues that soft starters such as that of Lu and
frequency converters such as that of Kubal ("more commonly referred to as
a 'variable frequency drive (VFD)' in the art," App. Br. 4) are very different
technologies that present alternative solutions to solving the same problem.
App. Br. 4--10. The Appellant also argues that soft starters and VFDs
function "markedly differently," and that "a substantial reconstruction and
redesign of the motor starting controls already present in Kubal" would be
required if combined with Lu as proposed by the Examiner. Id. at 6-7, 10.
The Appellant argues that the Examiner has not adequately established a
reason to combine the references, see id. at 8; Reply Br. 3, and that the
proposed combination would include components of duplicative function,
App. Br. 9.
"[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability." In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). "[A] patent composed of
several elements is not proved obvious merely by demonstrating that each of
its elements was, independently, known in the prior art." KSR Int'! Co. v.
Teleflex Inc., 550 U.S. 398,418 (2007). Establishing a prima facie case of
obviousness of an invention comprising a combination of known elements
requires "an apparent reason to combine the known elements in the fashion
claimed." See id. "[O]bviousness concerns whether a skilled artisan not
only could have made but would have been motivated to make the
combinations or modifications of prior art to arrive at the claimed
invention." See Belden Inc. v. Berk-TekLLC, 805 F.3d 1064, 1073 (Fed.
Cir. 2015) ( emphases in original).
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Appeal 2018-001149
Application 15/053,680
The record supports the Appellant's arguments that the Examiner has
not adequately established a reason to combine the references. As an initial
matter, we observe that, in the statement of the rejection, the Examiner does
not meaningfully provide a reason to combine the references. See Final
Act. 3. The Examiner's statement that it would have been obvious to
combine the references "for the purpose of providing a soft-starter in series
between an AC power source and the AC motor," id. at 3--4, is a statement
of what allegedly would have been achieved if a person of ordinary skill in
the art had made the proposed modification, i.e., a soft starter in series
between an AC power source and an AC motor. It is not a persuasive
explanation of why a person of ordinary skill in the art would have been
motivated to make the modification.
The evidence supports the Appellant's contention that soft starters
such as those of Lu and frequency converters ( or VFDs) such as those
already present in the figure of Kubal upon which the Examiner relies were
considered alternative "solution[ s] for reducing the starting current" of a
motor. See Kubal ,r,r 5---6; see also Walter J. Lukitsch, Soft Start Vs AC
Drives- Understand the Differences, IEEE (1999), at 1 (stating that "[t]he
list of possible applications" for VFDs and soft starters is "virtually
identical," but that VFDs and soft starters "are very different," and
indicating that generally "either soft starters or VFD's" are selected for an
application ( emphasis added)). The Examiner does not appear to dispute the
Appellant's contention that the proposed combination would result in
unnecessary duplication of components. See Ans. 7.
In the Response to Argument section of the Answer, after
acknowledging the potential duplicate component issue, the Examiner states
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Appeal 2018-001149
Application 15/053,680
that a person of ordinary skill in the art nevertheless would have combined
the references' teachings "to get [a] complicated system which should be
able to perform more task[s], for example, obtaining low starting to[r]que
via Lu's soft starter, achieving full torque during the full time of acceleration
via Kubal's frequency converter, and obtaining full speed via Lu's
contactors." Id. That rationale is unpersuasive.
The Examiner provides no reason to believe that a "complicated
system" would have been desirable, and the Examiner's reasoning appears to
be based on speculation that the more "complicated system ... should be
able to perform more task[s]." Id. (emphasis added). Even were we to
ignore the speculative nature of that assertion, the Examiner's identification
of alleged additional "task[s]" is not persuasive. For example, Kubal
actually identifies "low starting to[r ]que" of soft starters as "a problem," at
least "in some cases"-not a benefit. See Kubal ,r 22. In the very next
paragraph, Kubal explains that a benefit of frequency converters is that "it is
possible to achieve full torque during the full time of acceleration." Id. ,r 23.
Thus, it does not appear that Kubal desires low starting torque.
The second benefit that the Examiner identifies, "achieving full torque
during the full time of acceleration," is, according to the Examiner's own
analysis, a feature already present in Kubal's frequency converter. See
Ans. 7 ("achieving a full torque during the full time of acceleration via
Kubal'sfrequency converter" (emphasis added)). To the extent that the
Examiner's proposal is intended to suggest that a single device having the
option of either Lu's low torque or Kubal's full torque would have been
desirable, the Examiner identifies no support in the record. See id. As set
forth above, Kubal actually indicates that low torque may be undesirable,
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Appeal 2018-001149
Application 15/053,680
and the record supports the Appellant's contention that soft starters and
VFDs were known as alternatives to each other.
As to the final benefit that the Examiner identifies, "obtaining full
speed via Lu's contactors," the Examiner provides no basis to believe that
"full speed" is not already a feature of Kubal. See id. In that regard, we
observe that Lu's contactors appear to simply be switches that are already
present in Kubal, see Lu Fig. 1 ( element 32), and Kubal teaches that,
"according to the invention ... the control unit of the frequency converter
possesses information about the deceleration of the motor from full speed
with a full load," Kubal ,r 43 (emphasis added). Thus, it appears that Kubal
discloses obtaining full speed without Lu's contactors. See id.
In summary, the Examiner has not sufficiently established that a
person of ordinary skill in the art would have had reason to attempt to
combine the soft starter of Lu with the VFD of Kubal. Accordingly, we
reverse the Examiner's rejection of claim 1.
The Examiner's analysis of claims 2-8 does not remedy the error
identified above. We likewise reverse the Examiner's rejection of claims 2-
8.
CONCLUSION
We REVERSE the Examiner's rejections of claims 1-8.
REVERSED
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