Ex Parte Taylor et al

Patent Trials and Appeals Board

Jul 1, 2019

14478473 - (D) (P.T.A.B. Jul. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/478,473 09/05/2014
28395 7590 07/03/2019
BROOKS KUSHMAN P.C./FG1L
1000 TOWN CENTER
22NDFLOOR
SOUTHFIELD, MI 48075-1238
FIRST NAMED INVENTOR
Kendrick J. Taylor
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.
83456081 3938
EXAMINER
FANTU, YALKEW
ART UNIT PAPER NUMBER
2859
NOTIFICATION DATE DELIVERY MODE
07/03/2019 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENDRICK J. TAYLOR and MARK J. FERREL
Appeal2018-008804
Application 14/478,473
Technology Center 2800
Before KAREN M. HASTINGS, MERRELL C. CASHION, JR., and
JANEE. INGLESE, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
rejections of claims 1--4, 8, 11-16, and 18 under 35 U.S.C.
§ 102 (a)(l) as being anticipated by Nitzberg et al. (US 8,768,563 B2 issued
Jul. 1, 2014), or in the alternative, under 35 U.S.C. § 103 as obvious over
Nitzberg in view of Bertness et al. (US 2009/0024266 Al, pub. Jan. 22,
2009). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant is the applicant, Ford Motor Technologies, LLC which is also
stated to be the real party in interest (Appeal Br. 2).
Appeal2018-008804
Application 14/478,473
Claim 1 illustrates the invention.
1. A test device comprising:
a charge coupler pluggable to a vehicle;
a processor configured to communicate electric vehicle
supply equipment (EVSE) handshaking communications with
the vehicle via the charge coupler;
the test device permanently lacking ability to provide
electrical power for charging the vehicle; and
the EVSE handshaking communications include
communications which EVSE would communicate with the
vehicle for the EVSE to initiate charging of the vehicle.
Appellant relies on the arguments presented for claim 1 for
independent method claim 12 (Appeal Br. 10). Appellant presents
arguments for independent test device claim 16 that merely recite the
limitations of the claim (Appeal Br. 10). Appellant does not separately
argue any of the dependent claims. Accordingly, all the claims stand or fall
together. Therefore, we limit our discussion to claim 1 and claims 2--4, 8,
11-16, and 18 stand or fall with this claim.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections")). Having considered
the evidence presented in this Appeal and each of Appellant's contentions,
we are not persuaded that Appellant identifies reversible error, and we
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Application 14/478,473
affirm the Examiner's§§ 102 and 103 rejections for the reasons expressed in
the Final Office Action and the Answer. We add the following for
emphasis.
We refer to the Examiner's Final Action for a statement of the
rejections. Final Act. 3---6.
With respect to the anticipation rejection, Appellant primarily argues
that the claim limitations "configured to communicate electric vehicle
supply equipment (EVSE) handshaking communications with the vehicle via
the charge coupler" and "the EVSE handshaking communications include
communications which EVSE would communicate with the vehicle for the
EVSE to initiate charging of the vehicle" do not encompass Nitzberg' s test
device (Appeal Br. 8-9; Reply Br. 4--5).
Appellant contends that claim 1 requires "the test device
communicating with the vehicle to test the vehicle" (Appeal Br. 8).
Appellant further argues that claim 1 requires "the test device
communicating EVSE handshaking communications with the vehicle in
which the EVSE handshaking communications include communications
which EVSE would communicate with the vehicle for the EVSE to initiate
charging of the vehicle" (Appeal Br. 9).
Appellant's arguments do not point to reversible error in the
Examiner's determination of anticipation.
Claim 1 does not expressly recite that the test device communicates
with the vehicle to test the vehicle or "the test device communicating EVSE
handshaking communications with the vehicle." Nor does claim 1 exclude
the test device from being connected to an EVSE. Limitations not appearing
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Appeal2018-008804
Application 14/478,473
in the claims cannot be relied upon for patentability. In re Self, 671 F.2d
1344, 1348 (CCPA 1982).
In construing claims, "the PTO must give claims their broadest
reasonable construction consistent with the specification .... Therefore, we
look to the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation." In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007). "[A]s applicants may amend claims
to narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee." Id.
A preponderance of the evidence supports the Examiner's finding that
the claimed subject matter of independent claim 1--4, 8, 11-16, and 18 are
anticipated within the meaning of§ 102 in view ofNitzberg. As the
Examiner points out, Nitzberg teaches that the testing device may be located
in different places including the electric vehicle (EV) (Ans. 9). 2 The
Examiner explains that the mobile test unit in Nitzberg is communicating
with the vehicle through the EV connector3 (Final Act. 7). A preponderance
of the evidence supports the Examiner's position that one of ordinary skill
would have reasonably inferred from Nitzberg that the testing unit may be
located on the EV itself, and thus communicating with the vehicle. In re
Preda, 401 F.2d 825, 826 (CCPA 1968) (In determining whether a reference
anticipates the subject matter recited in a claim, "it is proper to take into
account not only specific teachings of the reference but also the inferences
which one skilled in the art would reasonably be expected to draw
therefrom."); see also In re Fritch, 972 F.2d 1260, 1264--65 (Fed. Cir. 1992)
2 Column 2, lines 35-37, Nitzberg et al.
3 Figure 5, 200 and 17 6, Nitzberg et al.
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Appeal2018-008804
Application 14/478,473
( a reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in the art would have reasonably been
expected to draw therefrom).
On this record, Appellant has not offered persuasive argument or
technical reasoning to establish that the Examiner reversibly erred in relying
upon Nitzberg as anticipating the claimed subject matter.
Accordingly, we sustain the Examiner's rejection of claims 1, 12 and
16 ( as well as all their dependent claims) as anticipated by Nitzberg.
With respect to the alternative§ 103 rejection, it has been established
that "the [obviousness] analysis need not seek out precise teachings directed
to the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418
(2007).
The Examiner further relies upon Bertness to exemplify that it was
known to provide a portable battery testing device for an EV (that is not
connected to an EVSE) ( e.g., Bertness abstract; Ans. 4, 5, 9). One of
ordinary skill would have readily appreciated, using no more than ordinary
creativity, that the testing device in Nitzberg may have been modified or
configured such that there is no connection to the charge source as
exemplified in Bertness. Appellant presents no arguments in the Appeal
Brief regarding this rejection, and accordingly has not shown reversible error
therein. 4
4 Appellant addresses Bertness for the first time in the Reply Brief (Reply
Br. 5). Appellant has not shown good cause why these arguments could not
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Appeal2018-008804
Application 14/478,473
Accordingly, the Examiner's§§ 102 and 103 rejections of claims 1--4,
8, 11-16, and 18 are affirmed.
ORDER
It is ordered that the Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)
AFFIRMED
have been presented in the Appeal Brief. Therefore, we need not consider
the arguments newly raised in the Reply Brief. 37 C.F.R. § 41.41(b)(2).
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