Ex Parte Soeda et al

Patent Trial and Appeal Board

Oct 14, 2014

12244311 (P.T.A.B. Oct. 14, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/244,311 10/02/2008 Kouichi Soeda SC-IAT-145 1747
69296 7590 10/14/2014
VON SIMSON & CHIN
62 WILLIAM STREET, 6TH FLOOR
NEW YORK, NY 10005
EXAMINER
AMRANY, ADI
ART UNIT PAPER NUMBER
2836
MAIL DATE DELIVERY MODE
10/14/2014 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 KOUICHI SOEDA, KOUJI OKANO,
EIGO KISHIMOTO, and TAKESHI HASHIMOTO
________________

Appeal 2012-010963
Application 12/244,311
Technology Center 2800
________________

Before TERRY J. OWENS, MARK NAGUMO, and JAMES C. HOUSEL,
Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–3. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim an uninterruptable power supply. Claim 1 is
illustrative:
1. An uninterruptible power supply, which supplies both AC
power and DC power to loads comprises:
an AC power source unit comprising
an AC/DC converter converting an input AC
power to a DC power,
a storage battery storing the DC power converted
by the AC/DC converter,
Appeal 2012-010963
Application 12/244,311

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a DC/AC converter converting the DC power
stored in the storage battery to an AC power,
and
a means of selecting at least one of the input AC
power and the output of the DC/AC
converter to supply it to a load; and
a DC power source unit which is supplied the output of
the AC/DC converter and the DC power stored in
the storage battery and supplies a DC power to
another load,
wherein the DC power source unit and the AC power
source unit are placed in individual containers and
are detachably connected with each other.

The References
Hayashi US 7,254,742 B2 Aug. 7, 2007
Li US 7,851,944 B2 Dec. 14, 2010
The Rejection
Claims 1–3 stand rejected under 35 U.S.C. § 103 over Li in view of
Hayashi.
OPINION
We reverse the rejection. We need to address only the sole
independent claim, i.e., claim 1. That claim requires that an uninterruptible
power supply comprising a DC power source unit and an AC power source
unit placed in individual containers and detachably connected with each
other.
Li discloses an uninterruptible power supply (200, 300) comprising a
converter (220, 320) (which the Examiner relies upon as corresponding to
the Appellants’ DC power source (Ans. 5)) and a rectifier (210, 310), a
battery (240, 340) and an inverter (350) (which, in combination, the
Appeal 2012-010963
Application 12/244,311

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Examiner relies upon as corresponding to the Appellants’ AC power source
(Ans. 4–5)) (col. 3, ll. 51–56; col. 6, ll. 4–8). The Examiner interprets the
“may be” in Li’s statement that “the rectifier 210, the battery charger 230,
the converter 220 and/or the inverter 250 may be physically integrated into
one single printed circuit board (PCB)” (col. 3, ll. 56–59) as indicating that
the converter (220) can be on a separate circuit board (which the Examiner
considers to be a container) (Ans. 8).1
Hayashi discloses a disk array device (10) comprising control circuit
boards (31) containing DC/DC converters (32) and loads (33A, 33B) such as
central processing units, large scale integration or other general logic circuits
(col. 12, ll. 35–41; Fig. 6). The control boards (31) can be replaced by being
pulled out of the disk array device (10)’s housing (11) (col. 8, ll. 58–60;
Fig. 2).
The Examiner argues that “it would have been obvious to combine the
UPS [uninterruptible power supply] disclosed in Li with the removable DC
loads disclosed in Hayashi, in order to customize the Li computer with the
proper control circuits” (Ans. 5) and “[t]hat the two references teach a UPS
system (backup power supplies power during a main power outage) is
sufficient to motivate one skilled in the art to combine them” (Ans. 9).
Setting forth a prima facie case of obviousness requires establishing
that the applied prior art would have provided one of ordinary skill in the art

1 The Examiner’s statement that “Li shows [Fig. 3] that the DC power
source unit is enclosed within its own box” (Ans. 5) is incorrect. The dashed
line around the components (322, 324 and 326) merely indicates that they
are the components of the converter (320), not that they are within a separate
box (col. 5, ll. 4–11; col. 6, ll. 4–8).
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Application 12/244,311

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with an apparent reason to modify the prior art to arrive at the claimed
invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Hayashi’s backup power supply is a battery box (60) and a capacitor
box (70) (col. 8, ll. 41–45; col. 13, ll. 8–13, 25–28; Fig. 6). During a power
outage the control boards (31) receive power from the backup power supply
rather than supply power (col. 13, ll. 25–28).
The Examiner’s reason for combining Li and Hayashi does not
establish a commonality between Hayashi’s disk array system (10)’s load-
containing replaceable circuit boards (31) and Li’s uninterruptible power
supply (200, 300)’s converter (220, 320)’s circuit board that would have
provided one of ordinary skill in the art with an apparent reason to make Li’s
converter (220, 320)’s circuit board replaceable.
Accordingly, we reverse the rejection.
DECISION/ORDER
The rejection of claims 1–3 under 35 U.S.C. § 103 over Li in view of
Hayashi is reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED

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