Ex Parte Miller et al

Patent Trial and Appeal Board

Sep 27, 2017

13682985 (P.T.A.B. Sep. 27, 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.
13/682,985 11/21/2012 Garold C. Miller 8185-0004-2 5468
35301 7590 09/29/2017
MCCORMICK, PAULDING & HUBER LLP
CITY PLACE II
185 ASYLUM STREET
HARTFORD, CT 06103
EXAMINER
HERNANDEZ, MANUEL J
ART UNIT PAPER NUMBER
2859
NOTIFICATION DATE DELIVERY MODE
09/29/2017 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):
patentdocket @ ip-lawyers .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GAROLD C. MILLER and
NATHAN DANIEL WEINSTEIN
Appeal 2017-001286
Application 13/682,9851
Technology Center 2800
Before ROMULO H. DELMENDO, CHRISTOPHER C. KENNEDY, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
5—7, 10-12, 14, 15, 17—24, 27, 31, 33, 34, and 37^40. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellants identify Halo2Cloud LLC as the real party in interest. Appeal
Br. 3.
2 In our Opinion, we refer to the Specification filed November 21, 2012
(“Spec.”); the Final Action issued October 27, 2015 (“Final Act.”); the
Appeal Brief filed July 14, 2016 (“Appeal Br.”); the Examiner’s Answer
issued October 5, 2016 (“Ans.”); and the Reply Brief filed October 26, 2016
(“Reply Br.”).
Appeal 2017-001286
Application 13/682,985
The claims are directed to portable power chargers with a two-way
charging interface. Claim 5 and 37, reproduced below, are illustrative of the
claimed subject matter:
5. A portable charger unit for recharging at least one
electronic device having a rechargeable internal battery, said
portable charger unit comprising:
a charger housing internally storing a rechargeable
battery;
a power connection port operatively connected to the
internal battery of the charger unit and capable of acting as a
power input and a power output depending on what is
connected to the charger unit via the power connection port,
wherein said power connection port acts as a power input when
the power connection port is connected to an external power
source that provides an electrical charge to the charger unit, and
said charge is used for recharging the internal battery of the
charger unit when the charger unit is connected to said power
source via the power connection port, or acts as a power output
when the power connection port is connected to at least one
electronic device, and a charge is provided from the internal
battery of the charger unit to the electronic device to recharge
the internal battery of said electronic device when said
electronic device is connected to the charger unit via the power
connection port, or acts as a power input and as a power output
when both an external power source and at least one electronic
device are connected to the power connection port; and
a connector cable capable of connecting the charger unit
with an external power source and at least one electronic
device at the same time via the power connection port,
wherein the connector cable comprises:
a first end having an interface adapted for
connection with the power connection port;
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Application 13/682,985
a second end having an interface adapted for
connection with one of the external power source and the
at least one electronic device; and
a third end having an interface adapted for
connection with one of the at least one electronic device
and a second electronic device if the at least one
electronic device is already connected to the second end
of the connector cable,
wherein the charger unit automatically turns on when the
first end of the connector cable is connected to the power
connection port and either an external power source or at least
one electronic device is connected to at least one of the second
end or the third end of the connector cable,
wherein the charger unit automatically turns off if one of
the following shutoff conditions occurs:
(i) where the connector cable is connected between
the power connection port of the charger unit and an
external power source, the internal battery of the charger
unit is fully charged;
(ii) where the connector cable is connected
between the power connection port of the charger unit
and at least one electronic device, the internal battery of
the at least one electronic device is fully charged; and
(iii) where the connector cable is connected
between the power connection port of the charger unit
and an external power source and at least one electronic
device at the same time, the internal battery of the
charger unit and the internal battery of the at least one
electronic device are fully charged.
37. A method for using a portable power charger having a
rechargeable internal battery and a processing unit each
operatively connected to a power connection port, said method
comprising:
determining, using the processing unit, if a connector
cable is connected to the power connection port; and, if so
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Application 13/682,985
determining, using the processing unit, if the connector
cable is also connected to at least one of (i) an external power
source supplying an electrical charge through the connector
cable, and (ii) an electronic device attempting to draw an
electrical charge through the connector cable; and, if so
turning on the power charger;
placing the power charger in a power output mode,
whereby an electrical charge is provided from the internal
battery of the power charger to recharge an internal battery of
an electronic device, in case a free end of the connector cable is
connected to at least one electronic device having an internal
battery; or
placing the power charger in a power input mode,
whereby an electrical charge is provided to the internal battery
of the power charger from the external power source to
recharge the internal battery of the power charger, in case a free
end of the connector cable is connected to an external power
source; or
placing the power charger in the power input mode, in
case free ends of the connector cable are connected to the
external power source and to the at least one electronic device,
and subsequently, switching the power charger from the power
input mode to the power output mode, whereby electrical
charge is provided from the internal battery of the power
charger to the internal battery of the electronic device, in case
the power charger is disconnected from the external power
source but still connected to the at least one electronic device.
Appeal Br. 19-20 and 27—28 (Claims App’x) (some indentation,
paragraphing, and emphasis highlighting the disputed limitations added.)
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Appeal 2017-001286
Application 13/682,985
REJECTIONS
The Examiner rejects claims 5—7, 10-12, 14, 15, 17—24, 27, 31, 33,
34, and 37-40 for failing to comply with the enablement requirement of
35 US.C. § 112, 1st paragraph.3
OPINION
“[T]o be enabling, the specification of a patent must teach those
skilled in the art how to make and use the full scope of the claimed invention
without ‘undue experimentation’.” In re Wright, 999 F.2d 1557, 1561 (Fed.
Cir. 1993).
The Examiner finds the Specification “does not describe structure for
allowing the power connection port and/or the connector cable to
simultaneously transmit data and/or power between the charger unit,
external power source, and electronic device.” Final Act. 2. The Examiner
identifies specific language on which the rejection is based in at least each
independent claim. Id. at 2—6.
Appellants first argue that the Examiner analyzes only one Wands
factor (the amount of direction provided by the inventor) in rejecting the
claims, and suggest that the analysis is cursory and insufficient to support
lack of enablement. Appeal Br. 13 (citing In re Wands, 858 F.2d 731 (Fed.
Cir. 1988).
In the Final Action, the Examiner states that all Wands factors were
weighed in determining that undue experimentation would be needed to
practice the claims. Final Act. 7. The Examiner identifies evidence of the
3 Because this application was filed before the 16 March 2013, effective date
of the America Invents Act, we refer to the pre-AIA version of the statute.
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Application 13/682,985
state of the art as one exemplary factor considered. Id. at 6—7. Appellants
identify the amount of direction provided by the inventor as another factor.
Appeal Br. 13. Review of the Final Action and Answer confirms that the
Examiner also considered at least the nature of the invention (a portable
charger having a power connection port acting as a power input and as a
power output simultaneously); the level of predictability in the art
(discussion of current flow and standard USB ports and cables); the absence
of working examples (the Specification contains no working examples); and
the quantity of experimentation needed to make or use the invention based
on the content of the disclosure (undue). Final Act. 2 and 6—7, Ans. 2.
The Wands factors are illustrative, not mandatory; it is not necessary
to consider all the Wands factors in a consideration of enablement. Amgen,
Inc. v. Chugai Pharmaceutical Co., Ltd., 927 F.2d 1200, 1213 (Fed. Cir.
1991). The Examiner’s rejection is not improper for failing to explicitly
address each of the Wands factors. Appellants’ first argument fails to show
reversible error by the Examiner.
Next, Appellants argue that the Examiner makes several errors of fact
in rejecting the claims. Appeal Br. 13. Appellants contend that the
Examiner fails to properly consider the state of the art in finding that a
standard USB cable is generally not known to provide the functionality to
simultaneously transmit data and/or power between the charger unit,
external power source, and electronic device. Id. (citing Final Act. 2).
Appellants’ argue that detailed schematics in USB Specification 2.0 show
connections that are readily capable of modification by one of ordinary skill
in the art to support the claimed functionality. Id.
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Application 13/682,985
Appellants do not dispute the Examiner's finding that a standard
(unmodified) USB cable cannot provide the required functionality. See id.
We find no support in USB Specification 2.0 for Appellants’ conclusory
assertion that a skilled artisan could modify a standard USB cable to provide
the functionality. Certainly, the mere existence of (+) data, (+) power, (-)
data, and (-) power connections does not adequately inform the ordinarily
skilled artisan of how to simultaneously transmit data and/or power between
the charger unit, external power source, and electronic device. Nor do the
“detailed schematics” of USB Specification 2.0 provide this knowledge.
The second of the Examiner’s factual errors, according to Appellants,
is failure to properly consider the level of ordinary7 skill in the art. Id. at 14.
Appellants contend that the claimed device would be built by an electronics
technician. Id. The pertinent inquiry is whether an electronics technician,
using the disclosure in the Specification, would have been able to build the
claimed device at the time of the invention without undue experimentation.
Appellants contend that such a technician could, today, jumper across the
(+) data and power terminals and the (-) data and power terminals of the
power connection port of a standard USB connection, rerouting charge at the
power connection port without affecting operation of the internal battery of
the device. Id. at 15.
The Examiner challenges Appellants’ contention, given (1) that the
claims require that the power connection port (not a USB cable)
simultaneously acts as a power input and as a power output, and (2)
Appellants’ failure to explain how the power connection port would operate
as a power input and power output at the same time. Ans. 2. Appellants’
response that the skill of an electronics technician to jumper across terminals
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Application 13/682,985
of a USB cable demonstrates that the power connection port may be
configured in the required manner lacks both logic and persuasion.
In addition, Appellants’ position that the Examiner does not deny that
the claimed device could be implemented misinterprets the Examiner’s
findings. The Examiner unambiguously finds that the Specification does not
teach one of ordinary skill in the art at the time of the invention howr to make
and use the claimed device. See Ans. 3. The Specification’s mere
description that the power connection port may be configured to act as a
power input and as a power output does not convey to one of ordinary skill
in the art at the time of the invention how to configure the power connection
port for this functionality.
Lastly, Appellants argue that the Examiner misunderstands or
overlooks certain aspects of the disclosure in the Specification. Appeal Br.
14. Appellants identify paragraphs 38, 40, and 46 of the Specification as
supporting the portions of the claims that the Examiner finds lack
enablement. Id. at 14 18.
The Examiner finds that these paragraphs do not disclose how the
charge from the external power source is sent to the internal battery and also
to the electronic device at the same time via the power connection port, how
the charge will be rerouted at the power connection port to allow for
simultaneous charging of the internal battery of the charger and charging of
the electronic device, or how to provide a power connection port that acts
simultaneously as an input and output. Ans. 3—5. We agree. The
Specification, even in combination with USB Specification 2.0, does not
disclose details or circuitry sufficient to apprise one of ordinary' skill how to
make and use the claimed device.
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Appeal 2017-001286
Application 13/682,985
With respect to claims 5—7, 10-12, 14, 15, 17—24, 27, and 31, the
Examiner provides a reasonable basis for questioning the adequacy of the
disclosure, therefore shifting the burden to Appellants to rebut the challenge.
In re Ghiron, 442 F,2d 985, 991—92 (C-CPA 1971); see also In re
Strahilevitz, 668 F.2d 1229, 1232 (CCPA 1982) (“burden [] shifts to
appellant to show one of ordinary skill in the art could have practiced the
claimed invention without undue experimentation” when PTO advances
acceptable reasoning inconsistent with enablement). However, Appellants’
evidence of enablement is meager and Appellants’ arguments are
conclusory. Appellants do not show that the Examiner reversibly erred in
rejecting claims 5—7, 10-12, 14, 15, 17—24, 27, and 31 for lacking
enablement. We sustain the rejection.
Claim 37 and its dependent claims are another story. Claim 37 does
not require the charge from the external power source to be sent to the
internal battery and also to the electronic device at the same time via the
power connection port, rerouting of the charge at the power connection port
to allow for simultaneous charging of the internal battery of the charger and
charging of the electronic device, or providing a power connection port that
acts simultaneously as an input and output. See Appeal Br, 26-28 (Claims
App’x). Instead, claim 37 requires switching the power charger from the
power input mode (whereby an electrical charge is provided to the internal
battery of the power charger from the external power source) to the power
output mode (whereby an electrical charge is provided from the internal
battery of the power charger to recharge an internal battery of an electronic
device). Id. at 27.
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Appeal 2017-001286
Application 13/682,985
The Examiner finds claim 37 “not enabled for the same reasons
described above,” i.e., the reasons given with respect to claim 5. Ans. 2—5,
7. Appellants argue, persuasively, that claims 37 does not require the power
connection port to act as a power input and a power output simultaneously,
and, as a consequence, the Examiner’s arguments do not apply. Reply Br.
3-4. On this record, we do not sustain the Examiner’s rejection of claim 37
or of its dependent claims 33, 34, and 38-40.
The Examiner does not reversibly err in rejecting claims 5—7, 10 12,
14, 15, 17—24, 27, and 31. The Examiner reversibly errs in rejecting claims
33,34, and 37-40.
DECISION
For the above reasons, the Examiner’s rejection of claims 5—7, 10—12,
14, 15, 17—24, 27, and 31 is affirmed. The Examiner’s rejection of claims
33, 34, and 37-40 is reversed.
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-IN-PART
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