Ex Parte YONAK et al

Patent Trials and Appeals Board

Apr 17, 2019

14994851 - (D) (P.T.A.B. Apr. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/994,851 01/13/2016
28395 7590 04/19/2019
BROOKS KUSHMAN P.C./FG1L
1000 TOWN CENTER
22NDFLOOR
SOUTHFIELD, MI 48075-1238
FIRST NAMED INVENTOR
Serdar Hakki YONAK
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.
83593155 7673
EXAMINER
CHAN, KAWING
ART UNIT PAPER NUMBER
2837
NOTIFICATION DATE DELIVERY MODE
04/19/2019 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 SERDAER HAKKI YON AK and FAN XU
Appeal2018-005775
Application 14/994,851
Technology Center 2800
Before CATHERINE Q. TIMM, LILAN REN, and
JANEE. INGLESE, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner's decision to reject claims 1-20. We have jurisdiction under
35 U.S.C. § 6(b).
1 In explaining our Decision, we cite to the Specification of January 13, 2016
as amended on March 8, 2017 (Spec.), Final Office Action of June 15, 2017
(Final), Appeal Brief of December 18, 2017 (Appeal Br.), Examiner's
Answer of March 7, 2018 (Ans.), and Reply Brief of May 7, 2018 (Reply
Br.).
2 Ford Global Technologies, LLC. is the applicant under 37 C.F.R. § 1.46
and is identified as the real party in interest. Appeal Br. 1.
Appeal2018-005775
Application 14/994, 851
We AFFIRM, but denominate our affirmance as involving a new
ground of rejection.
The claims are directed to a power inverter (see, e.g., claim 1 ), a
power module assembly of a vehicle inverter (see, e.g., claim 9), and a
power module assembly of a vehicle inverter system (see, e.g., claim 14).
The Specification describes a power inverter 56 for use in a vehicle
16. Spec. ,r,r 18, Fig. 1. Inverter 56 inverts the direct current (DC) power
supplied by battery 52 to alternating current (AC) power for operating
electric machines 18, 24. Spec. ,r 25. Inverter 56 also rectifies AC power
provided by electric machines 18, 24 to DC power for charging battery 52.
Id. The electric machines may be AC electric motor/generators. Spec. ,r,r
18-19.
Power inverter 56 includes a power module assembly 57. Spec. ,r 31,
Fig. 2. Power module assembly 57 includes a plurality of cards (also known
as power modules) in a stacked arrangement. Spec. ,r 32. Each card
includes a first switching unit and a second switching unit, each with
switches (transistors) with some of the switches electrically connected to
motor 18 and the others electrically connected to generator 24. Id., Fig. 2. 3
Figure 5 depicts an exploded view of card 130, which can be used in
the power module (such as power module 112 of power inverter 111 shown
in Figure 3). Spec. ,r,r 10, 33-34. Card 130 includes first and second
substrates 132 and 134 that sandwich switching units 136 that are
3 Contrary to paragraph 32 and Figure 2, transistors 96 are only connected
through lead 100 to motor 18, they are not connected to generator 24. It
appears the unlabeled transistors in the lower half of Figure 2 are the second
switches of claim 1 as those switches are electrically connected to motor 24.
2
Appeal2018-005775
Application 14/994, 851
electrically connected to terminals 166 and 168. Spec. ,r,r 34--36. Terminals
166 and 168 are to be electrically connected to first and second electric
machines 18, 24. Spec. ,r 36; Fig. 1. The cards are stacked as shown in
Figure 8, which depicts power module 210 with cards 212 stacked in a one-
by-four longitudinal array 213. Spec. ,r 41.
Claim 1, with reference numerals from Figures 1, 3, 5 and 8, is
illustrative of the power inverter:
1. A power inverter [Fig. 3 (111 )] comprising:
an array [Fig. 8 (213)] of stacked cards [Fig. 8 (212)]
each including
switches [Fig. 5 ( transistors in switching units 13 6)]
arranged to transform direct current from a battery [Fig. I (52)]
into alternating current (AC),
a first terminal [Fig. 5 (166)] attached to some of the
switches and configured to pass AC therefrom to a first electric
machine [Fig. 1 (18)],
a second terminal [Fig. 5 (168)] attached to the other of
the switches and configured to pass AC therefrom to a second
electric machine [Fig. 1 (24)], and
first and second substrates [Fig. 5 (132, 134)]
sandwiching the switches [Fig. 5 (transistors in 136)] and
terminals [Fig. 5 (166, 168)].
Appeal Br. claims appendix 1.
Claim 9 is directed to the power module assembly within the power
inverter. Claim 9 does not require the terminals to be attached to the
switches. Appeal Br. claims appendix 2. Claim 14, like claim 9, is directed
to the power module assembly, but claim 14 is similar to claim 1 in that it
3
Appeal2018-005775
Application 14/994, 851
requires the terminals to be attached to the switches. Appeal Br. claims
appendix 2-3.
The Examiner maintains the following rejections:
A. The rejection of claims 1 and 12 under 35 U.S.C. § 112(b) as
indefinite; and
B. The rejection of claims 1-20 under 35 U.S.C. § 103 as
obvious over Tokuyama in view of Milich.
OPINION
Indefiniteness Rejection
The Examiner rejects claims 1 and 12 under 35 U.S.C. § 112(b)
because the language "the other of the switches" renders the claim
indefinite. Final 2. According to the Examiner, the relationship of "the
other of the switches" and "some of the switches" is unclear. 4 Id. For
examination purposes, the Examiner interprets "the other of the switches" as
referring to switches other than and/or different from "some of the
switches." Id.
In response, Appellant states that the Examiner's interpretation of the
phrase "the other of the switches" is correct. Appeal Br. 3.
It is evident from the language of the claim and the agreement of
Appellant with the Examiner's interpretation that the claims are not
indefinite. The claims require switches. Claim 1, clause 2. A first terminal
is attached to some of those switches and a second terminal is attached to
4 Claim 14 also includes the language "some of the switches" and "the other
of the switches," but is not rejected as indefinite.
4
Appeal2018-005775
Application 14/994, 851
"the other of the switches," i.e., the second terminal is attached to the
remainder of the switches recited in clause 2. Claim 1, clauses 3 and 4. The
meaning is clear enough to allow those of ordinary skill in the art to
determine the scope of the claim.
We do not sustain the Examiner's rejection of claims 1 and 12 under
35 U.S.C. § 112(b ).
Obviousness
In arguing against the Examiner's rejection of claims 1-20 as obvious
over Tokuyama in view of Milich, Appellant focuses on the rejection of
claim 1. Appeal Br. 2-3. We select claim 1 as representative.
In rejecting claim 1, the Examiner acknowledges that Tokuyama fails
to teach a card with two terminals with the first terminal attached to some
switches and the second terminal attached to the other switches. Final 3.
Instead, Tokuyama teaches using two inverters (Fig. 1 (40, 42)), i.e., two
different cards, to pass AC to different electric machines (Fig. 1 (92, 94)).
Tokuyama ,r 103. However, the Examiner concludes that, based on the
teaching in Milich of an inverter with two terminals, one terminal (Fig. 3
(35-37)) attached to switches 15.2, 16.2, 17.2 and the other terminal (Fig. 3
(3 8)) attached to a switch connected with diode 13, it would have been
obvious to one of ordinary skill in the art to modify the teachings of
Tokuyama with the teachings of Milich to reduce the cost of manufacturing.
Final 3--4.
Appellant calls into question the Examiner's finding of a reason to
make the combination and argues that the combination fails to suggest the
claimed invention because Tokuyama suggests using different cards to pass
AC to different electric machines and Milich suggests that a power circuit
5
Appeal2018-005775
Application 14/994, 851
should service a single generator (electric machine). Appeal Br. 2-3; Reply
Br. 2-3.
We agree with Appellant that both Tokuyama and Milich use an
inverter to pass AC to a single electric machine. However, we determine
that claim 1 is broad enough to sweep in an inverter structure suggested by
the combination of Tokuyama and Milich. This is because the "configured
to" language of claim 1 does not limit the scope of claim 1 in the manner
assumed by the Examiner and Appellant.
Claim 1 requires the power inverter to include two terminals, a first
one "attached to some of the switches and configured to pass AC therefrom
to a first electric machine" and a second one "attached to the other of the
switches and configured to pass AC therefrom to a second electric
machine." Importantly, the claim is to the inverter itself, which does not
include the electric machines. See Fig. 1 (showing inverter 56 as separate
from electric machine 18 and electric machine 24). Nor does the claim
require electrical connections between the respective terminals and electric
machines. Instead, the "configured to" language merely limits the structure
of the terminals themselves.
There is no persuasive evidence indicating that the terminal itself
differs in structure based on what it is connected to. Thus, it is reasonable to
conclude that a power inverter having a first terminal attached to some of the
switches and a second terminal attached to the other of the switches will
have the structure required by claim 1 no matter how one later connects the
terminals. In other words, how the inverter is ultimately put to use once it is
installed is of no matter to the patentability of the inverter itself.
Determining otherwise would inject an improper use limitation into a claim
6
Appeal2018-005775
Application 14/994, 851
written in structural terms. Paragon Sols., LLC v. Timex Corp., 566 F .3d
1075, 1090 (Fed. Cir. 2009). "[A]pparatus claims cover what a device is, not
what a device does." Hewlett-Packard Co. v. Bausch & Lomb, Inc., 909
F.2d 1464, 1468 (Fed. Cir. 1990).
There is no dispute that Tokuyama fails to teach two terminals in one
inverter attached to switches as required by claim 1 ( and also required by
claim 14). Compare Final 3, with Appeal Br. 2-3. Tokuyama uses two
inverters (Fig. 1 (40, 42)), one configured to pass AC to a first electric
machine (Fig. 1 (92)) and one configured to pass AC to a second electric
machine (Fig. 1 (94)). Figure 2 shows the circuitry for one of the inverters,
inverter 40, but inverter 42 has the same construction. Tokuyama ,r 106. As
shown in Figure 2, the AC is passed to the armature coil of the electric
machine stator of electric machine 92. Tokuyama ,r,r 103, 106.
Like Tokuyana, Milich teaches a power module circuit including
switches connected to terminals leading to a three-phase stator of a first
electric machine. Milich ,r,r 23, 29 and Fig. 1 ( showing transistors 15 .1,
15.2, 16.1, 16.2, 17.1, 17.2 connected to stator winding 9) and Fig. 3
(showing terminals 35-37 for the three-phase stator winding 9). But Milich
adds another circuit with a switch in series with diode 13 that is allocated to
the energizing field coil 14. Milich ,r 23 and Fig. 1. There is no dispute that
diode 13 is connected to a transistor switch as found by the Examiner.
Compare Final 3--4 (citing the switch in series with diode 13), with Appeal
Br. 2-3, and Reply Br. 2-3. Nor is there any dispute that Milich's switch
connected to diode 13 is attached to terminal 38. Milich ,r 29 and Fig. 3.
Thus, Milich teaches an inverter with two terminals (first terminal 35-37
and second terminal 3 8) with the first terminal attached to some of the
7
Appeal2018-005775
Application 14/994, 851
switches (15.1, 15.2, 16.1, 16.2, 17.1, 17.2) and the second terminal attached
to the other of the switches (switch in series with diode 13).
As found by the Examiner, Milich teaches two different inverter
modules in a single unit. Ans. 4--5. Adding Milich's second inverter
module containing the switch in series with diode 13 to either or both of the
inverters of Tokuyama would have been obvious to one of ordinary skill in
the art when an energizing field coil was used to energize the three-phase
stator winding of Tokuyama.
Claim 1 sweeps in the prior art because it does not affirmatively
require the presence of the two recited electric machines and the "configured
to" language does not structurally differentiate the two terminals from the
two terminals suggested by the combination of Tokuyama and Milich.
Because our affirmance rests on a different claim interpretation and a
different reason for combining the prior art than applied by the Examiner,
we denominate our affirmance as involving a new ground of rejection. We
so denominate the affirmance a new ground to give Appellant an opportunity
to respond.
In summary:
1, 12 § 112(b)
1-20 § 103
Outcome
CONCLUSION
T okuyama,
Milich
8
1-20 (new
ground)
1-20 (new
ground)
1, 12
Appeal2018-005775
Application 14/994, 851
DECISION
The Examiner's decision is affirmed.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). 37 C.F.R. § 4I.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 4I.50(b) also provides that 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:
(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 proceeding
will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
AFFIRMED; 37 C.F.R. § 4I.50(b)
9