Ex Parte Rosendahl

Patent Trial and Appeal Board

Apr 28, 2017

12705302 (P.T.A.B. Apr. 28, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/705,302 02/12/2010 Glenn Rosendahl 85862-232 ADB 8107
23529 7590 05/02/2017
A OF ^ COMPANY TN C EXAMINER
2157 Henderson Highway CASS, JEAN PAUL
WINNIPEG, MB R2G1P9
CANADA ART UNIT PAPER NUMBER
3669
NOTIFICATION DATE DELIVERY MODE
05/02/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GLENN ROSENDAHL
Appeal 2015-005954
Application 12/705,3021
Technology Center 3600
Before STEFAN STAICOVICI, BRANDON J. WARNER, and
ANTHONY KNIGHT, Administrative Patent Judges.
KNIGHT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Glenn Rosendahl, Appellant, appeals under 35 U.S.C. § 134 from the
Examiner’s final decision rejecting claims 51—53. Claims 51 and 52 are
rejected under 35 U.S.C. § 103(a) as being unpatentable over Tanaka2 (JP
2009-213301 A, pub. Sept. 17, 2009), Ichikawa et al. (JP 2009-33265 A,
1 According to Appellant, the real party in interest is the inventor, Mr. Glenn
Rosendahl. Br. 1.
2 We derive our understanding of this reference from the English language
translation (hereafter “Tanaka Translation”) and from its equivalent US
patent, namely, US 8,548,659 B2, iss. Oct. 1, 2013 (hereafter “Tanaka
’659”). All references to the text of this document are to portions of Tanaka
’659.
Appeal 2015-005954
Application 12/705,302
pub. Feb. 12, 2009, hereinafter “Ichikawa”)3, and Hudson et al. (US
2001/0034557 Al, pub. Oct 25, 2001, hereinafter “Hudson”).
Claim 53 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Tanaka, Ichikawa, Hudson, and Hanssen et al. (US 2010/0106351 Al,
pub. April 29, 2010, hereinafter “Hanssen”).
Claims 51—53 are provisionally rejected under obviousness-type
double patenting over claims 1—50 U.S. Patent Application No. 12/705,318
(nowU.S. Patent 8,355,832 B2, iss. Jan. 15, 2013).
We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
The claims are directed to controlling power supply to vehicles
through a series of electrical outlets. Spec. 1,11. 3^4. Claim 51, the sole
independent claim, reproduced below, is representative of the claimed
subject matter:
51. Apparatus comprising:
a vehicle; and
3 We derive our understanding of this reference from an English language
translation contained in the image file wrapper of this application. All
references to the text of this document are to portions of the translation.
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Application 12/705,302
apparatus for supplying electrical power to the vehicle
including an electrical outlet to which the vehicle is brought and at
which it remains stationary for a period;
the vehicle comprising:
a vehicle power plant;
one or more electrical loads in the vehicle;
a CAN BUS [Controller Area Network Bus]
communication system for communication between the vehicle
power plant and said one or more electrical loads for controlling
operation of the vehicle power plant;
the apparatus comprising:
an electrical connection cable for connection from the
vehicle to the electrical outlet through which the electrical
power is supplied which can be disconnected;
an outlet control unit mounted at the electrical outlet
including a microprocessor;
a switch operable by the microprocessor of the outlet
control unit for selectively supplying power from a central
power supply to said electrical connection cable;
a vehicle control unit mounted in the vehicle including a
microprocessor;
a power supply connection for supplying power from the
electrical connection cable to said one or more loads in the
vehicle;
wherein the microprocessor of the vehicle control unit is
arranged to communicate data to the outlet control unit;
wherein the microprocessor of the vehicle control unit
includes an interface which is arranged to connect to and
communicate with said CAN BUS communication system of
the vehicle;
and wherein the outlet control unit and the vehicle
control unit are arranged to communicate from a central source
to said CAN BUS communication system to so as to download
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Application 12/705,302
through said interface new data from the central source to the
CAN BUS communication system.
Br. 11 (Claims Appendix).
OPINION
Appellant provides separate arguments for claims 51 and 53. As
Appellant does not provide separate arguments against claim 52, this claim
is considered to stand or fall with claim 51, from which it depends. Br.5—10.
Appellant’s arguments are addressed below.
The Obviousness Rejection Based Upon Tanaka ’659, Ichikawa, and Hudson
Claims 51 and 52
Appellant argues that
[t]he key point of claim 51 relates to:
a) an outlet control unit (of the charging system) mounted
at the electrical outlet including a microprocessor,
b) the outlet control unit and the vehicle control unit are
arranged to communicate from a central source to said CAN BUS
communication system to so as to download through said
interface new data from the central source to the CAN BUS
communication system.
Br. 5 (emphasis omitted). According to Appellant, claim 51 requires that
“the outlet control system of the charging system is sued to communicate
and download new data to the CAN BUS system of the vehicle.” Id.
In response, the Examiner states “Tanaka expressly discloses ‘outlet
unit 506 charges the vehicle and is controlled by a feed control computer
604,’” which is disclosed in Figure 8 of Tanaka ’659. Ans. 4; see also Final
Action 10, 14. Below is a copy of Figure 8 of Tanaka ’659
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Application 12/705,302
FIG.8
Figure 8 of Tanaka ’659 shows vehicle 4 connected by cable 12 to a
switchable power supply that is controlled by control computer 604. Tanaka
’659151.
With respect to the rejection of claim 51, we are not persuaded by
Appellant’s arguments because the Examiner does not rely upon Tanaka
’659 for disclosing a CAN BUS communication system or for the
transmission of data through the power line to the vehicle. Rather, the
Examiner relies upon Ichikawa for the teaching of downloading data to a
vehicle through a power line. Specifically, the Examiner finds that
“Ichikawa discloses that it is advantageous to transmit information and data
during charging via a charging port to accomplish both charging and data
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Application 12/705,302
transfer.” See Final Action 30. Hudson is relied upon for disclosing a CAN
BUS communication system. See id. at 29 (citing Hudson, para. 16). The
Examiner also finds that Hudson discloses that the data downloaded could
include software upgrades. Id. at 30 (citing Hudson, para. 22, Fig. 3). The
Examiner goes on to conclude that, “[i]t would have been obvious to modify
Tanaka and Ichikawa to combine the communication system . . . with
Hudson to provide ... a software update.” Id.
Further, Appellant argues that, “[t]he Examiner admits at paragraph
78 of the [Final] Action that Tanaka and Ishikawa even when taken together
do not disclose the limitation that the components are arranged ‘so as to
download through said interface new data from the central source to the
CAN BUS communication system.’” Br. 5 (emphasis omitted). Appellant
also argues “Hudson merely mentions in passing that [CAN BUS] is one of
many systems which can be used for control of the machine to which is
relates.” Id. at 6.
Accepting Appellant’s argument that, “[t]he primary references are
silent as to a CAN BUS communication systems” (Final Action 29), the
Examiner relies upon Hudson to teach downloading data to a CAN BUS
communication system. Id. at 30. Furthermore, we note that Appellant
admits on page 5 of the Appeal Brief that the “CAN BUS communication
system per se is a known component used in all current vehicles and this
operates as is well known to control operation of the vehicle power plant and
the components of the vehicle.” Thus, the Examiner’s reliance upon Hudson
as teaching a CAN BUS communication system for data transfer is not
misplaced.
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Application 12/705,302
Appellant further contends that “[t]he Examiner has thus cited Hudson
to show downloading of data to a control system, but this has nothing to do
with a vehicle or to the [CAN BUS] and particularly to the charging
system.” Br. 7. Appellant’s argument continues, “Hudson merely states that
it is known to download material to a processor using a bootstrap loadable
program. Tanaka and Ishikawa make no mention of downloading data to the
vehicle control system.” Id.
We are not persuaded by Appellant’s arguments because “[t]he test
for obviousness is what the combined teachings of the references would
have suggested to the artisan. Accordingly, one cannot show
nonobviousness by attacking references individually where the rejection is
based on a combination of references.” In re Keller, 642 F.2d 413, 426
(CCPA 1981). Therefore, because Appellant’s argument does not address
the Examiner’s combination of references, it is not responsive to the
rejection as articulated and is therefore not persuasive.
Appellant argues that, “[t]he Examiner alleges that Tanaka discloses
that the microprocessor of the vehicle control unit communicates with a
CAN BUS communication system. . . . However there is no mention of the
CAN BUS communication system.” Br. 7—8. Again, it would appear that
Appellant is attacking the references individually and not addressing the
combination of teachings of the references as relied upon. Therefore, this
argument if also not persuasive.
At page 8 of the Appeal Brief, Appellant argues that Ishikawa only
discloses an interface and downloading of GPS navigation data. Paragraph
14 of Ishikawa describes the interface as follows, “According to the present
invention, in order to perform communication with the other car[,] . . . wired
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Application 12/705,302
connection by a cable can . . . perform[], high-speed data transfer . . . easily.”
As to the types of data that can be downloaded, Ishikawa’s paragraph 25
describes not only GPS data but also, “seat positioning data[,]. . . switch[]
timing in the case of automatic gear change[,] . . . operation states of the
accelerator^] . . . follow-up control in a constant-speed run, etc., the control
parameter may be updated by study from the operation timing of a brake.”
Thus, in contrast to Appellant’s position, the disclosure of Ishikawa is much
broader than just GPS data, because it includes the operating characteristics
of the vehicle. Appellant’s argument is thus not persuasive.
Appellant argues that the Examiner has not shown how the references
of record would make obvious data communication through a vehicle
charger and a CAN BUS.” Br. 8. Further, Appellant argues that there is no
motivation or suggestion for the combination of Tanaka, Ishikawa, or
Hudson. Id. at 9. According to Appellant, “[t]here is simply no suggestion
in the prior art cited that the step of using the charging system to download
vehicle control data is obvious.” Id.
Appellant’s argument is not persuasive because it appears to be
holding the Examiner to the old teaching, suggestion, or motivation
(“TSM”) standard, where there must have been some express suggestion or
motivation to modify the reference or to combine reference teachings; such a
standard is not required. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398,415
(2007) (“We begin by rejecting the rigid [application and requirement of a
TSM to combine known elements in order to show obviousness]”). The
proper inquiry is whether the Examiner has articulated adequate reasoning
based on a rational underpinning to explain why a person of ordinary skill in
the art would have been led to combine the disclosures of Tanaka, Ishikawa,
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Application 12/705,302
and Hudson. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(“rejections on obviousness grounds[,] . . . there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”), cited with approval in KSR, 550 U.S. at 419.
In this case, the Examiner has provided adequate reasoning for
combining the teachings of Tanaka and Ishikawa because “Ichikawa
discloses that it is advantageous to transmit information and data during
charging via a charging port to accomplish both charging and data transfer.”
Final Act. 30. Further, the Examiner has also provided an adequate
reasoning for combining the teachings of Tanaka, Ishikawa, and Hudson,
namely, “to provide with a software update.” Id. Appellant has not
persuasively shown error in the Examiner’s findings or reasoning.
Appellant’s arguments have been considered, but Appellant has not
shown error in the combination of Tanaka, Ishikawa, and Hudson.
Accordingly, rejection of claim 51 is sustained.
Appellant has waived arguments for separate patentability of
dependent claim 52. We thus likewise sustain the rejection of claim 52
under 35 U.S.C. § 103(a) as being unpatentable over Tanaka, Ishikawa, and
Hudson.
The Obviousness Rejection Based Upon Tanaka ’659, Ichikawa, Hudson,
and Hanssen
Claim 53
Appellant argues that there is no disclosure in Tanaka or Ishikawa that
the vehicle control unit and the CAN BUS communication system are
arranged such that the CAN BUS communication system acts to prevent
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Application 12/705,302
driving motion of the vehicle while the electrical connection cable remains
connected. Br. 9.
The Examiner cites to Hanssen for the teaching of “hardware or
software interlock [on the charger] may be provided to prevent driving to
prevent damage to the vehicle.” Final Action 33. The Examiner concludes
that “[i]t would have been obvious to combine [Hanssen], with Tanaka,
Ichikawa and Hudson in that [Hanssen] discloses that a hardware or software
interlock may be provided to prevent driving to prevent damage to the
vehicle.” Id.
Although we appreciate that Hanssen’s hardware or software
interlocks on the charger prevent a vehicle from driving away while
charging, the Examiner fails to adequately explain how the vehicle control
unit communicates from the charging system to the CAN BUS
communication system of the system of Tanaka, Ichikawa, Hudson, and
Hanssen to prevent driving motion of the vehicle while the electrical
connection cable remains connected. In other words, the Examiner does not
make sufficient findings regarding modifying the structure of Tanaka,
Ichikawa, and Hudson, to incorporate the hardware or software interlocks of
Hanssen so as to prevent driving of the vehicle when charging. Thus, the
Examiner has not made the initial factual findings required to demonstrate a
prima facie case of obviousness of claim 53. See In re Warner, 379 F.2d
1011, 1017 (CCPA 1967). Accordingly, we do not sustain the rejection of
claim 53.
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Appeal 2015-005954
Application 12/705,302
The Double Patenting Rejection
Appellant does not challenge the merits of the Examiner’s
obviousness-type double patenting rejection of claims 51—53 over claims 1—
50 ofU.S. Patent Application No. 12/705,318 (nowU.S. Patent 8,355,832
B2, iss. Jan. 15, 2013). Rather, it is our understanding that Appellant is
attempting to perfect the filing of a Terminal Disclaimer, submitted August
16, 2013, which references US Patent No. 7,642,670 that is unrelated to the
’318 application. See Appellant’s Amendment 5 (filed August 16, 2013);
see also Ans. 3. We thus decline to reach the merits of the obviousness-type
double patenting rejection, and we leave it to the Examiner to determine
whether the rejection is still proper in light of the claims of the ’832 patent
and the guidance provided in MPEP § 804.
DECISION
The Examiner’s decision to reject claims 51 and 52 under 35 U.S.C.
§ 103 is affirmed.
The Examiner’s decision to reject claim 53 under 35 U.S.C. § 103 is
reversed. We do not reach the provisional rejection of claims 51—53 under
the judicially-created doctrine of obviousness-type double patenting.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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