Ex Parte OH

Board of Patent Appeals and Interferences

Mar 1, 2012

11427810 (B.P.A.I. Mar. 1, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JANG GEUN OH
____________________

Appeal 2010-007455
Application 11/427,810
Technology Center 2800
____________________

Before MAHSHID D. SAADAT, KALYAN K. DESHPANDE, and JASON
V. MORGAN, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-007455
Application 11/427,810

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STATEMENT OF CASE1
The Appellant seeks review under 35 U.S.C. § 134(a) of a final
rejection of claims 1-17, the only claims pending in the application on
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We REVERSE.

The Appellant invented controlling the charging of a battery and
maintaining a full charge capacity of the battery by lowering a cut-off
current. Specification 1:4-6.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below [bracketed matter and some
paragraphing added]:
1. A method for controlling charging of a battery, the method
comprising:
[1] determining an actual full charge capacity of a battery
and a design capacity of the battery;
[2] comparing the actual full charge capacity of the battery
with the design capacity of the battery;
[3] adjusting one or more of a charge voltage or a cut-off
current if the actual full charge capacity is less than the design
capacity; and
[4] controlling the battery, wherein controlling the battery
includes charging the battery with one or more of an adjusted
cut-off current or an adjusted charge voltage.

REFERENCES
The Examiner relies on the following prior art:

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Sept. 14, 2009) and Reply Brief (“Reply Br.,” filed Feb. 16,
2010), and the Examiner’s Answer (“Ans.,” mailed Dec. 14, 2009), and
Final Rejection (“Final Rej.,” mailed Mar. 24, 2009).
Appeal 2010-007455
Application 11/427,810

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Hull US 5,606,242 Feb. 25, 1997

REJECTION
Claims 1-17 stand rejected under 35 U.S.C §102(b) as being
anticipated by Hull.

ISSUES
The issue of whether the Examiner erred in rejecting claims 1-17
under 35 U.S.C §102(b) as being anticipated by Hull turns on whether Hull
describes limitations [2] and [3] of claim 1 and as recited in independent
claim 9.

ANALYSIS
Claims 1-17 rejected under 35 U.S.C. §102(b) as being anticipated by
Hull
The Appellant contends that Hull fails to describe the “comparing”
and “adjusting” features found in limitations [2] and [3] of claim 1 and as
recited in independent claim 9. App. Br. 3-5 and Reply Br. 2-3.
We agree with the Appellant. Limitation [2] requires comparing the
actual full charge capacity of a battery with the design capacity of the
battery. Limitation [3] further requires adjusting a charge voltage or a cut-
off current if the actual full charge capacity is less than the design capacity.
Hull describes a smart battery that includes several identification
parameters, including design capacity and design voltage, to assist in the
selection of optimal usage and charge parameters. Hull, col. 5, ll. 35-42.
Other parameters monitored include the battery capacity available at full
Appeal 2010-007455
Application 11/427,810

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charge and a desired current charge. Hull 5:43-46. Hull further describes
comparing the design capacity and the actual full charge capacity to provide
an indication of battery wear. Hull 27:53-58.
While Hull describes the values required by limitations [2] and [3],
such as full charge capacity of the battery and the design capacity of the
battery, and further describes comparing these values to determine battery
wear, there is nothing in Hull that compares these values and adjusts the
voltage or current based on that comparison. “A claim is anticipated only if
each and every element as set forth in the claim is found, either expressly or
inherently described, in a single prior art reference.” Verdegaal Bros. v.
Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). Therefore,
although Hull expressly describes many of the elements of claim 1, the
failure to describe a single limitation or element renders an anticipation
rejection erroneous. The Examiner provides citations to different sections of
Hull, but fails to provide any rationale as to how the cited sections describe
limitations [2] and [3]. Ans. 4-6. Absent any evidence or rationale to
illustrate how Hull describes independent claims 1 and 9, we do not sustain
the Examiner’s anticipation rejection of claims 1-17.

CONCLUSIONS OF LAW
The Examiner erred in rejecting claims 1-17 under 35 U.S.C. §102(b) as
being anticipated by Hull.

DECISION
The Examiner’s decision rejecting claims 1-17 is reversed.

Appeal 2010-007455
Application 11/427,810

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REVERSED
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