Ex Parte Yang et al

Patent Trial and Appeal Board

Apr 14, 2017

12845642 (P.T.A.B. Apr. 14, 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.
12/845,642 07/28/2010 Jong-Woon Yang P59129 1374
8439 7590 04/18/2017
ROBERT E. BUSHNELL & LAW FIRM
2029 K STREET NW
SUITE 600
WASHINGTON, DC 20006-1004
EXAMINER
ESSEX, STEPHAN J
ART UNIT PAPER NUMBER
1727
NOTIFICATION DATE DELIVERY MODE
04/18/2017 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):
rebushnell @ aol. com
mail @ rebushnell. com
info @ rebu shnell. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONG-WOON YANG, SUSUMU SEGAWA, IN-KYU PARK,
TETSUYA OKADA, EUI-JEONG HWANG, SE-SUB SIM,
JIN-WAN KIM, HAN-SEOK YUN, and BEOM-GYU KIM
Appeal 2015-005788
Application 12/845,642
Technology Center 1700
Before JEFFREY T. SMITH, N. WHITNEY WILSON, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—12. An Oral Hearing was held April 4, 2017.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm and designate our affirmance a new ground of rejection
pursuant to our authority under 37 C.F.R. § 41.50(b).
1 We cite to the Specification (“Spec.”) filed July 28, 2010; Final Office
Action (“Final Act.”) dated January 10, 2014; Appellants’ Appeal Brief
(“App. Br.”) dated June 5, 2014; Examiner’s Answer (“Ans.”) dated March
19, 2015; and Appellants’ Reply Brief (“Reply Br.”) dated May 19, 2015.
2 Appellants identify Samsung S.D.I. Co, Ltd. as the real party in interest.
App. Br. 3.
Appeal 2015-005788
Application 12/845,642
BACKGROUND
The subject matter on appeal relates to a battery pack which is
intended to prevent re-use of the battery pack if the battery cells have been
replaced. Spec. 12. Claims 1 and 8—the only independent claims on
appeal—are reproduced from the Claims Appendix of the Appeal Brief as
follows:
1. A battery pack comprising:
a voltage determining unit for determining whether a
voltage from the battery cell of the battery pack is equal to or
less than a first voltage;
an encryption code generating unit for generating a first
encryption code according to information of the battery cell
when the battery cell voltage is equal to or less than the first
voltage; and
a control unit disposed to write the first encryption code
to an area of a data flash, to check whether a second encryption
code, generated by using the information of the battery cell
after a power-on reset, match the first encryption code, and to
prohibit operation of the battery pack when the first encryption
code and the second encryption code do not match with each
other.
8. A battery pack comprising a battery cell and a protective
circuit having an analog front end (APE), a charge-discharge
switch, a fuse, and a microcomputer, the microcomputer
comprising:
a voltage determining unit disposed to determine whether
a voltage from the battery cell detected by the analog front end
is equal to or less than a first voltage;
an encryption code generating unit disposed to generate a
first encryption code by using information of the battery cell
when the battery cell voltage is equal to or less than the first
voltage, the information comprising at least one of the group
consisting of a production date, a serial number, a full charge
capacity (FCC), and a cycle count of the battery cell; and
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Application 12/845,642
a control unit disposed to write the first encryption code
to an area of a data flash, to check whether a second encryption
code, generated by using the information of the battery cell
after a power-on reset, match the first encryption code, and to
prohibit operation of the battery pack when the first encryption
code and the second encryption code do not match with each
other.
REJECTIONS
I. Claims 1—12 stand rejected under 35 U.S.C. § 112, second paragraph,
as indefinite.
II. Claims 1—12 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Kim3 and Iwasaki.4
DISCUSSION
Rejection I
Appellants argue the rejected claims as a group. App. Br. 7—11. We
limit our discussion to the independent claims.
The Examiner finds that the phrase “encryption code” as recited in
each of claims 1 and 8 is indefinite, Final Act. 3, on the basis that the
specification lacks “clarification as to what information is being encrypted
or if the encryption ‘code’ itself is being generated as standalone data.” Ans.
5. Appellants argue that the noted phrase “is well known in the art.” App.
Br. 10.
We begin with claim construction. Claim 1 recites “a voltage
determining unit for determining whether a voltage from the battery cell of
the battery pack is equal to or less than a first voltage.” Claim 8 similarly
3 US 2009/0085521 Al, published April 2, 2009 (“Kim”).
4 US 2010/0123463 Al, published May 20, 2010 (“Iwasaki”).
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Application 12/845,642
recites “a voltage determining unit disposed to determine whether a voltage
from the battery cell detected by the analog front end is equal to or less than
a first voltage.” We conclude that these recitations invoke the provisions set
forth in35U.S.C§ 112, sixth paragraph.
In determining whether a means-plus-fimction type claim recitation
invokes § 112, sixth paragraph, “the essential inquiry is not merely the
presence or absence of the word ‘means’ but whether the words of the claim
are understood by persons of ordinary skill in the art to have a sufficiently
definite meaning as the name for structure.” Williamson v. Citrix Online,
792 F.3d 1339, 1348 (Fed. Cir. 2015). Here, the phrase “voltage
determining unit” indicates only a black box recitation of structure for
providing the specified function of determining voltage. Although
Appellants do not use the word ‘means,’ the term ‘unit’ in the above-
mentioned recitation is tantamount to ‘means.’ See id. at 1350 (“Generic
terms such as mechanism, element, device, and other nonce words that
reflect nothing more than verbal constructs may be used in a claim in a
manner that is tantamount to using the word means because they typically do
not connote sufficiently definite structure and therefore may invoke § 112,
para. 6.”) (internal quotes omitted). Thus, we construe the phrase “voltage
determining unit” in each of claims 1 and 8 and being limited to “the
structure, materials, or acts described in the specification as corresponding to
the claimed function and equivalents thereof.” Id. at 1347—8 (citing
Northrop Grumman Corp. v. Intel Corp., 325 F.3d 1346, 1350 (Fed. Cir.
2003)).
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Application 12/845,642
Applying the reasoning set forth above, we conclude that the
“encryption code generating unit” and “control unit” recitations in claims 1
and 8 likewise invoke 35U.S.C. § 112, sixth paragraph.
To construe a means-plus-function recitation pursuant to § 112, sixth
paragraph, we first identify the claimed function and then determine what
structure, if any, disclosed in the specification corresponds to the claimed
function. Noah Sys., Inc. v. Intuit Inc., 675 F.3d 302, 1311 (Fed. Cir. 2012).
If the specification does not disclose adequate corresponding structure, the
claim is indefinite. Id. at 1311—12.
Here, the respective fimction(s) associated with each of the recited
elements is expressly stated in the independent claims. For example, the
claimed voltage determining unit determines whether a voltage from the
battery cell of the battery pack is equal to or less than a first voltage. The
claimed encryption code generating unit generates a first encryption code
according to information of the battery cell when the battery cell voltage is
equal to or less than the first voltage. The control unit (i) writes the first
encryption code, (ii) checks whether a second encryption code matches the
first encryption code, and (iii) prohibits operation of the battery pack when
the first and second encryption codes do not match. According to the
Specification, all of the foregoing functions are performed by the same
structure—a microcomputer. See Spec. 115; Fig. 2. See also Reply Br. 4
(acknowledging that “Applicant has claimed element units of a
microcomputer which perform specific fimction[s] in order for the
microcomputer to control operation of a battery pack”).
In cases such as this one, involving a computer-implemented means-
plus-function recitation, the supporting corresponding structure disclosed in
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Application 12/845,642
the Specification must be “more than simply a general purpose computer or
microprocessor.” Id. at 1312 (quoting Aristocrat Techs. Austl. Pty Ltd. V.
Inti Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008)). The Specification
must disclose an algorithm for performing the claimed function. Id. The
algorithm can be expressed in “any understandable terms including as a
mathematical formula, in prose, or as a flow chart, or in any other manner
that provides sufficient structure.”
We find no disclosure in the Specification of an algorithm
corresponding to any of the three means-plus-fimction recitations discussed
above.5 Accordingly, we conclude that each of claims 1 and 8 includes
means-plus-fimction recitations that lack adequate disclosure of
corresponding structure in the Specification. We therefore affirm the
Examiner’s determination in Rejection I that claims 1—12 are unpatentable
as failing to satisfy the definiteness requirement of 35 U.S.C § 112, second
paragraph. Because our reasoning in making that determination differs from
that articulated by the Examiner, we designate our affirmance a new ground
of rejection.
Rejection II
In light of our determination that the voltage determining unit,
encryption code generating unit, and control unit recitations present in each
of the claims on appeal, expressly or implicitly by dependence, are
indefinite, we cannot determine the propriety of the Examiner’s obviousness
5 We note that Figures 3 and 4 of the Specification depict flow charts which
depict the claimed means-plus-function recitations as steps to be performed,
but do not provide algorithms for performing any of the claimed means-plus-
fimction recitations.
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Application 12/845,642
rejection without necessarily engaging in improper speculation as to the
scope and meaning of the claims. See In re Steele, 305 F.2d 859, 862
(CCPA 1962). Accordingly, we procedurally reverse Rejection II. Our
reversal is procedural in nature and not based on the merits of the rejection.
CONCLUSION
We procedurally reverse the Examiner’s § 103 rejection without
reaching the merits of that rejection.
We sustain the Examiner’s § 112, second paragraph rejection on
reasoning that differs from the Examiner’s.
DECISION
The Examiner’s decision rejecting claims 1—12 is affirmed. We have
designated our affirmance as a new ground of rejection pursuant to 37
C.F.R. § 41.50(b).
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant, within
two months from the date of the decision, must exercise one of the
following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
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Application 12/845,642
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the examiner, in
which event the prosecution will be remanded to the examiner. The
new ground of rejection is binding upon the examiner unless an
amendment or new Evidence not previously of Record is made which,
in the opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request for
rehearing must address any new ground of rejection and state with
particularity the points believed to have been misapprehended or
overlooked in entering the new ground of rejection and also state all
other grounds upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
AFFIRMED; 37 C.F.R, $ 41.50(b)
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