Ex Parte Johnson et al

Patent Trial and Appeal Board

Jul 22, 2016

13297477 (P.T.A.B. Jul. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/297,477 11/16/2011
101681 7590 07/22/2016
MYERS BIGEL & SIBLEY, P. A.
P.O. BOX 37428
RALEIGH, NC 27627
FIRST NAMED INVENTOR
Robert William Johnson JR.
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.
9060-284IP 1792
EXAMINER
KESSIE, DANIEL
ART UNIT PAPER NUMBER
2836
MAILDATE DELIVERY MODE
07/22/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT WILLIAM JOHNSON, JR., YU LIU,
BOBBY L. COMPTON, PASI S. TAIMELA,
and ROBERT C. SEBALD
Appeal2016-004185
Application 13/297,477
Technology Center 2800
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
PERCURIAM.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants2 filed an appeal3 under 35 U.S.C. § 134 from the
Examiner's decision finally rejecting claims 1-3 and 5-20. We have
jurisdiction under 35 U.S.C. §§ 6(b) and 134(a).
1 Our decision refers to the Specification filed Nov. 16, 2011 (Spec.), the
Final Office Action mailed Jan. 6, 2015 (Final Act.), Appellants' Appeal
Brief filed July 13, 2015 (Br.), and the Examiner's Answer mailed Dec. 7,
2015 (Ans.).
2 Appellants identify the real party in interest as Eaton Corporation. Br. 1.
3 Appellants state they are not aware of any related appeals or interferences
that would be affected by this case. Br. 1. We note Application No.
12/779,522, which the present application is a continuation-in-part of, was
Appeal2016-004185
Application 13/297,477
We AFFIRM.
The claims on appeal are directed to uninterruptible power supply
(UPS) systems and methods (see, e.g., claims 1, 8, 15). UPS systems may
be used to provide backup power when a primary power supply fails. Spec.
i-f 1. Appellants disclose embodiments of UPS systems and methods in
which variably available power sources, such as solar, wind, tidal and
similar renewable energy sources, are interfaced with UPSs. Spec. i-f 22.
Appellants disclose that the failure of variably available power sources can
impact the output of a UPS and/or reduce system robustness and reliability.
Spec. i-f 23. To address this issue, Appellants disclose UPS systems and
methods in which both an AC power source and a variably available power
source are coupled to UPS modules. Spec. i-f 23. Appellants further disclose
that power may be transferred from the variably available power source to
an auxiliary power source and/or to an AC power source that provides power
to a UPS. Spec. ,-r 23.
Independent claim 1 is illustrative of the subject matter on appeal.
Claim 1 is reproduced from the Claims Appendix of the Appeal Brief with
limitations at issue in the appeal italicized:
1. An uninterruptible power supply (UPS) system,
compnsmg:
a first port configured to be coupled to an AC power
source;
a second port configured to be coupled to a load;
a first UPS circuit comprising a first converter circuit
coupled to the first port, a second converter circuit coupled to
appealed via a Notice of Appeal filed Sept. 20, 2013 and Appeal Briefs filed
Nov. 20, 2013 and Mar. 19, 2014. A decision was mailed for Application
No. 12/779,522 on June 29, 2016.
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Application 13/297,477
the second port and a first DC bus coupling the first converter
circuit to the second converter circuit and configured to be
coupled to an auxiliary power source;
a second UPS circuit comprising a third converter circuit
coupled to the second port, a fourth converter coupled to the
first port and a second DC bus coupling the third converter to
the fourth converter and configured to receive power from a
variably available power source; and
a control circuit operatively associated with the UPS
circuit and the third converter circuit and configured to
cooperatively control the UPS circuit and the third converter
circuit to selectively transfer power to the load from the AC
power source and the variably available power source and
from the variably available power source to the AC power
source.
Br. 1 7 (emphasis added).
The claims on appeal stand rejected as follows: 4
(1) claims 1and8 under 35 U.S.C. § 112, second paragraph, as
being indefinite;
(2) claims 1-3, 5-12, and 14--20 under 35 U.S.C. § 103(a) as being
unpatentable over Marwali5 in view of Cooper; and
(3) claim 13 under 35 U.S.C. § 103(a) as being unpatentable over
Marwali and Cooper and further in view of Tracy '312.
4 The rejection of claims 1-3, 5-12, and 14--20 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Tracy et al., US 7,638,899 B2,
issued Dec. 29, 2009 ("Tracy '899") and Cooper et al., US 2010/0207448
Al, published Aug. 19, 2010 ("Cooper") has been withdrawn by the
Examiner. Ans. 2. Because the rejection of claim 13 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Tracy '899, Cooper,
and Tracy et al., US 7,050,312 B2, issued May 23, 2006 ("Tracy '312") is
not discussed in the Answer, we treat this rejection as withdrawn as well.
5 Marwali et al., US 2009/0009001 Al; published Jan. 8, 2009 ("Marwali").
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Application 13/297,477
OPINION
Rejection of Claims 1and8 under 35U.S.C.§112
Claims 1 and 8 are rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite. The Examiner concludes claims 1 and 8 are indefinite
because it is unclear which UPS each claim is referring to when reciting a
control circuit. Final Act. 2.
With regard to the rejection of claim 1, Appellants acknowledge the
indefiniteness rejection of claim 1 and state that Appellants intend to amend
claim 1 to recite "a control circuit operatively associated with the first and
second UPS circuits and configured to cooperatively control the first and
second UPS circuits" upon reversal of the § 103 rejections of claim 1. Br.
5---6. No arguments regarding the propriety of the rejection have been
proffered by Appellants. We, therefore, summarily affirm the Examiner's
indefiniteness rejection of claim 1.
With regard to the rejection of claim 8, Appellants state claim 8
recites "a plurality of power conversion modules" and "a control circuit
operatively associated with the plurality of power conversion modules."
Br. 6. In view of this, Appellants contend claim 8 is not indefinite. Br. 6.
The Examiner did not respond to Appellants' argument in the Answer.
Appellants' arguments are persuasive that the Examiner reversibly
erred in the rejection of claim 8. Therefore, we do not sustain the
indefiniteness rejection of claim 8 under 35 U.S.C. § 112, second paragraph.
Rejection under 35 U.S. C. § 103 over Marwali and Cooper
Claims 1-3, 5-12, and 14--20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Marwali in view of Cooper. Appellants argue
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claims 1-3, 7-10, 14--17, and 20; claims 5, 11, and 18; and claims 6, 12, and
19 as separate groups. Br. 7, 10, 12. We individually address the separate
arguments below.
Claims 1-3, 7-10, 14--17, and 20
We select claim 1 as representative for deciding the issues on appeal
for claims 1-3, 7-10, 14--17, and 20.
The Examiner finds Marwali discloses a UPS system including a first
port configured to be coupled to an AC power source, a second port
configured to be coupled to a load, a first UPS circuit, a second UPS circuit,
and a control circuit. Final Act. 3. The Examiner finds Marwali does not
disclose a variably available power source or that power is transferred from
the variably available power source to an AC power source. Final Act. 3.
The Examiner finds Cooper discloses a variably available power source and
transferring power from the variably available power source to an AC power
source. Final Act. 3. The Examiner concludes it would have been obvious
to combine Marwali and Cooper "to send the excess power to the grid in
order to prevent power waste" and because excess power that is not used
could overpower the system and destroy a load. Final Act. 3.
Appellants contend Cooper does not disclose transferring power from
a variably available power source to an AC power source, as recited in claim
1, by referencing arguments with respect to the withdrawn§ 103(a) rejection
over Tracy '899 in view of Cooper. Br. 13. Insofar as the arguments over
the combination of Tracy '899 and Cooper are relevant to the§ 103(a)
rejection over the combination of Marwali and Cooper, we consider them.
Specifically, in the arguments for the withdrawn§ 103(a) rejection over
Tracy '899 in view of Cooper, Appellants argue Cooper discloses supplying
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electricity to a grid 7 from a battery bank, not from the micro-generator
disclosed by Cooper. Br. 7-8.
In response, the Examiner finds the micro-generator of Cooper is a
variably available power source. Ans. 3. Cooper does define the micro-
generator as a solar photovoltaic array, a wind turbine, a water turbine, a
small combined heat and power unit, or other small scale micro-generator
for generating electricity in a household. Cooper i-f 3. The Examiner further
finds the power generated by the micro-generator is used to power sub-
circuits and any excess power generated by the micro-generator can be
stored in an energy storage circuit or supplied back to the power grid,
depending on the value of an electricity tariff. Ans. 3. Cooper discloses that
when an electricity export tariff is low and/or when excess electricity is
supplied by the micro-generator, power can be stored in energy storage
circuit but when the tariff is high, power can be supplied from the energy
storage circuit to the grid. Cooper i-f 68. Therefore, the disclosure of Cooper
supports the Examiner's findings.
Based on these findings, the Examiner finds the micro-generator of
Cooper is connected to the grid and to the energy storage circuit (e.g.,
battery). Ans. 3. Moreover, Cooper discloses that its controller can "route
electricity generated by the micro-generator 9 back on to the electricity grid
7 directly without having to store the electricity in a battery bank." Cooper i-f
70. The evidence supports the Examiner's finding. Therefore, Appellants
have not shown reversible error in the Examiner's finding that Cooper
discloses transferring power from a variably available power source to an
AC power source, as recited in claim 1.
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Appellants further argue Marwali discloses a rectifier to convert
power from an AC source to DC power but does not disclose or suggest the
rectifier is able to transfer power to the AC source, as recited in claim 1. Br.
13. These arguments also do not direct us to a reversible error because the
arguments address only the disclosure of Marwali and not the combination
of the disclosures of Marwali and Cooper as a whole. "[T]he test for
combining references is not what the individual references themselves
suggest but rather what the combination of disclosures taken as a whole
would suggest to one of ordinary skill in the art." In re McLaughlin, 443
F.2d 1392, 1395 (CCPA 1971).
Here, the Examiner relies on Marwali' s teaching of an inverter that
transfers power to an AC source, citing the inverter 42 and AC source 22
depicted in Figure 1 of Marwali. Ans. 2. The Examiner finds Marwali does
not disclose or suggest transferring power from a variably available power
source to an AC power source but finds Cooper discloses such a transfer.
Final Act. 3; Ans. 3. Although the Examiner does not find that Cooper
discloses a specific structure, such as an inverter and/or rectifier, to transfer
power from the micro-generator to the grid, Cooper provides a disclosure to
transfer power from a variably available power source to an AC power
source, as explained above. One of ordinary skill in the art would have
understood how to modify Marwali in view of Cooper so the inverter of
Marwali could transfer power from a variably available power source to the
AC power source of Marwali. "A person of ordinary skill is also a person of
ordinary creativity, not an automaton." KSR Int'!. Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007).
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In addition, claim 1 recites the control circuit is "configured to
cooperatively control the UPS circuit and the third converter circuit to
selectively transfer power ... from the variably available power source to
the AC power source." Thus, claim 1 does not require that the third
converter circuit have a specific structure (i.e., is an inverter and/or a
rectifier) for transferring power from the variably available power source to
the AC power source.
Appellants do not argue independent claims 8 and 15 or dependent
claims 2, 3, 7, 9, 10, 14, 16, 17, and 20 separately from claim 1. Br. 14, 15.
As a result, for the reasons discussed above and those set forth in the
Examiner's Answer, we sustain the Examiner's § 103(a) rejection of claims
1-3, 7-10, 14--17, and 20 over the combination ofMarwali and Cooper.
Claims 5, 11, and 18
For the arguments relating to claims 5, 11, and 18, we select claim 5
as representative to decide the issues on appeal. Claim 5 depends from
claim 1 and further recites "wherein the control circuit is configured to
selectively transfer power from the variably available power source to the
AC power source via the first UPS circuit."
Appellants argue Marwali discloses an inverter that converts DC
power to AC power but does not disclose or suggest the inverter may operate
as a rectifier. Br. 14. As stated by the Examiner (Ans. 3), these arguments
rely upon recitations not included in the claims. Claims 1 and 5 do not
specify whether the converter circuits of the first and second UPS circuits
are rectifiers, inverters, or a combination thereof. Therefore, Appellants'
arguments do not direct us to a reversible error in the Examiner's rejection
of claims 5, 11, and 18.
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Claims 6, 12, and 19
For the arguments relating to claims 6, 12, and 19, we select claim 6
as representative to decide the issues on appeal. Claim 6 depends from
claim 1 and further recites "wherein the control circuit is configured to
selectively transfer power from the variably available power source to the
AC power source via the fourth converter circuit."
Appellants contend Marwali discloses a rectifier of a UPS unit that is
connected to an AC power source but does not disclose or suggest an
inverter may operate as a rectifier. Br. 14. Similar to the arguments for
claim 5 above, the Examiner finds Appellants argue recitations not included
in the claims. Ans. 4. Therefore, Appellants' arguments do not direct us to
a reversible error in the Examiner's rejection of claims 6, 12, and 19.
Rejection of Claim 13
Claim 13 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Marwali and Cooper and further in view of Tracy '312. Appellants do
not argue claim 13 separately from claim 8, which is not argued separately
from claim 1. Br. 14, 15. Therefore, the§ 103(a) rejection of claim 13 over
the combination of Marwali, Cooper, and Tracy '312 is sustained.
DECISION
On the record before us, we:
A. sustain the Examiner's decision to reject claim 1 under
35 U.S.C. § 112, second paragraph, as indefinite;
B. do not sustain the Examiner's decision to reject claim 8 under
35 U.S.C. § 112, second paragraph, as indefinite;
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C. sustain the Examiner's decision to reject claims 1-3, 5-12, and
14--20 under 35 U.S.C. § 103(a) as unpatentable over Marwali in view of
Cooper; and
D. sustain the Examiner's decision to reject claim 13 under
35 U.S.C. § 103(a) as unpatentable over Marwali and Cooper and further in
view of Tracy '312.
We affirm the decision of the Examiner to reject the claims.
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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