SEW-EURODRIVE GmbH Co. KG

Patent Trials and Appeals Board

Jul 15, 2021

2020005476 (P.T.A.B. Jul. 15, 2021)

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.
14/376,707 08/05/2014 Sebastian Schiffmann 2915-111 7112
31554 7590 07/15/2021
CARTER, DELUCA & FARRELL LLP
576 BROAD HOLLOW ROAD
MELVILLE, NY 11747
EXAMINER
AMRANY, ADI
ART UNIT PAPER NUMBER
2836
NOTIFICATION DATE DELIVERY MODE
07/15/2021 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):
docket@carterdeluca.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SEBASTIAN SCHIFFMANN, JOSEF SCHMIDT,
MATTHIAS HAUCK, CHRISTIAN LAMPERT, DANIEL TRITSCHLIER,
and THOMAS ZOLLER

____________

Appeal 2020-005476
Application 14/376,707
Technology Center 2800
____________

Before KAREN M. HASTINGS, JEFFREY B. ROBERTSON, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 16–25 and 27.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to the “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies SEW-EURODRIVE GmbH & Co. KG as the real party
in interest. Appeal Brief filed April 21, 2020 (“Appeal Br.”), 1.
2 Final Office Action entered November 21, 2019 (“Final Act.”), 1.
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CLAIMED SUBJECT MATTER
Appellant claims an energy production system (independent claim 16)
and a method for operating an energy production system (independent claim
27). Appeal Br. 2. Claim 16 illustrates the subject matter on appeal, and
reads as follows:
16. An energy production system, comprising:
an energy store;
an inverter including a maximum power point (MPP)
tracker, a terminal on an alternating-voltage side of the inverter
being connected to a power consumer and/or an AC system;
a solar generator connected to the inverter; and
a power converter connected, in parallel to the solar
generator, to the energy store;
wherein the power converter includes a plurality of
selectable characteristic curves and is adapted to deliver power
(a) from the energy store to a DC side of the inverter or (b)
from the DC side of the inverter to the energy store, according
to a selected one of the plurality of selectable characteristic
curves.

Appeal Br. Claims Appendix 1 (emphasis added).
REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered May 18, 2020 (“Ans.”):
I. claims 16–23, 25, and 27 under 35 U.S.C. § 102(b) as
anticipated by Collins (US 2010/0231045 A1, published September 16,
2010); and
II. claim 24 under 35 U.S.C. § 103(a) as unpatentable over Collins
in view of Kurokami (US 2004/0174720 A1, published September 9, 2004).

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FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s timely contentions,3 we affirm the Examiner’s rejection
of claims 16–23, 25, and 27 under 35 U.S.C. § 102(b), and rejection of claim
24 under 35 U.S.C. § 103(a), for reasons set forth in the Final Action, the
Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence the Appellant provides for each issue the Appellant
identifies. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had
failed to make a prima facie case, “it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections”)).
Rejection I
We turn first to the Examiner’s rejection of claims 16–23, 25, and 27
under 35 U.S.C. § 102(b) as anticipated by Collins. To address this
rejection, Appellant presents arguments directed to independent claim 16, to
which we accordingly limit our discussion. Appeal Br. 3–12; 37 C.F.R.
§ 41.37(c)(1)(iv).
Appellant does not dispute the Examiner’s finding that Collins

3 We do not consider any argument Appellant presents for the first time in
the Reply Brief that Appellant could have raised in the Appeal Brief because
Appellant does not show good cause for raising new arguments in the Reply
Brief. 37 C.F.R. § 41.37(c)(1)(iv); 37 C.F.R. § 41.41(b)(2) (arguments
raised for the first time in the Reply Brief that could have been raised in the
Appeal Brief will not be considered by the Board unless good cause is
shown).
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discloses an energy production system comprising battery 230 (energy
store), inverter 220 including an MPP tracker and having a terminal on an
alternating-voltage side connected to grid 225 (a power consumer),
photovoltaic arrays 205 (solar generator) connected to inverter 220, and
DC/DC converter 215 (power converter) connected in parallel to
photovoltaic arrays 205 (solar generator) and to battery 230 (energy store),
as recited in claim 16. Compare Final Act. 9 (citing Collins ¶¶ 44–51; Fig.
2), with Appeal Br. 3–12.
Claim 16 further recites “wherein the power converter includes a
plurality of selectable characteristic curves and is adapted to deliver power
(a) from the energy store to a DC side of the inverter or (b) from the DC side
of the inverter to the energy store, according to a selected one of the plurality
of selectable characteristic curves.”
The Examiner interprets the recited characteristic curves “as inherent
functions of the direction in which the converter is operated,” which the
Examiner determines is supported by Appellant’s Specification. Final Act.
10 (citing Spec. 9, as amended May 20, 2019). The Examiner further
determines that the “wherein” clause of claim 16 is “directed to the selection
of a direction of [the] power converter and the resulting inherent
characteristic curve that accompanies that conversion direction.” Final Act.
10.
The Examiner finds that Collins’ DC/DC converter 215 (power
converter) is adapted to deliver power (a) from battery 230 (energy store) to
a DC side of inverter 220, or (b) from the DC side of inverter 220 to battery
230 (energy store). Final Act. 10 (citing Collins ¶¶ 45, 47; Fig. 2). The
Examiner finds that Collins thus discloses a bidirectional converter “selected
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to operate in the two claimed directions,” and, “[t]herefore, Collins discloses
that the selection of each conversion direction is accompanied by an inherent
characteristic curve.” Final Act. 10.
Appellant argues that the Examiner’s interpretation of the “wherein”
clause of claim 16 ignores the plain meaning of the phrase, and “is
inconsistent with the broadest reasonable interpretation.” Appeal Br. 5–6.
Appellant argues that page 9 of Appellant’s Specification does not establish
that characteristic curves are “inherent functions of the direction in which
the converter is operated,” as the Examiner finds. Appeal Br. 7–8.
Appellant’s arguments do not identify reversible error in the
Examiner’s rejection, for reasons that follow.
Although Appellant disputes the Examiner’s claim interpretation,
Appellant does not explain why and how the Examiner ignores the plain
meaning of claim 16’s “wherein” clause, and does not explain why and how
the Examiner’s interpretation “is inconsistent with the broadest reasonable
interpretation.” Nor does Appellant provide an alternative interpretation of
the “wherein” clause of claim 16, and explain why any such interpretation
should be adopted. As the Examiner points out in the Answer, Appellant’s
conclusory assertions amount to mere disagreement with the Examiner’s
claim interpretation, without making explicit any particular error in the
interpretation, and explaining why the “wherein” clause of claim 16 should
be interpreted differently than the Examiner’s interpretation. Ans. 5–6, 9–
10.
Furthermore, the Examiner explains in the Answer that “the
characteristic curve is inherent because it is a graphical representation of
how output power [from the converter] can be plotted against output
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voltage,” and “characteristic curves are ‘necessarily’ functions of the
direction in which the converter is operated.” Ans. 12, 13. As the Examiner
explains, “[w]hen power is taken from the battery and added to the DC bus
(mode a), the power converter has a positive characteristic curve,” and
“[w]hen power is removed from the DC bus to recharge the battery (mode
b), the power converter has a negative characteristic curve.” Ans. 12.
The Examiner’s interpretation of claim 16 is consistent with
Appellant’s Specification and drawings. The Specification4 explains that
“the power to be made available by [the] DC/DC converter [] is determined
according to a characteristic curve as a function of [output side] voltage.”
Spec. 6, ll. 34–35; 7, ll. 23–25. The Specification discloses that “Figure 3
shows the generation of a working curve of the system for the state when
energy is released from store 4, especially during daylight,” and “Figure 4
shows the generation of a working curve of the system for the state when
energy is absorbed into store 4, especially during daylight.” Spec. 6, ll. 8–
12.
As shown in Figure 3 and described in the Specification, when output
from the solar generator decreases due to, for example, cloud cover (left
graphic), the power converter discharges the battery (middle graphic) to
increase the power supplied to the inverter from the battery. Spec. 7, l. 16–
8, l. 15. As shown in Figure 4 and described in the Specification, when the
output from the solar generator is sufficient to power a consumer and
recharge the battery (left graphic), the power converter supplies energy to
the battery (middle graphic). Spec. 8, ll. 23–25. As the Specification
explains, and as illustrated by comparing the middle graphics of Figures 3

4 Substitute Specification filed August 5, 2014.
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and 4, “the preceding sign of the characteristic curve is a function of the
operating mode, especially the drawing of energy from or the feeding of
energy into the energy store,” and “the characteristic curve of the second
operating mode has a different preceding sign than the characteristic curve
of the first operating mode.” Spec. 5, ll. 4–6; 9, ll. 15–17 (as amended May
20, 2019).
Figures 3 and 4 thus show “characteristic curves” as a plot of power
output from the converter as a function of voltage output from the converter,
and illustrate characteristic curves resulting from operating mode (a) recited
in claim 16 and operating mode (b) recited in claim 16, respectively, which
are defined by the direction of power flow through the power converter,
consistent with the Examiner’s interpretation of claim 16. In re ICON
Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (“[T]he PTO
must give claims their broadest reasonable construction consistent with the
specification.”); In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir.
2017) (“The correct inquiry in giving a claim term its broadest reasonable
interpretation in light of the specification is not . . . simply an interpretation
that is not inconsistent with the specification. It is an interpretation that
corresponds with what and how the inventor describes his invention in the
specification, i.e., an interpretation that is ‘consistent with the
specification.’”) (quoting In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997)).
Appellant argues that “Collins is completely silent as to the power
characteristics of its battery and DC/DC converter,” and “[s]ince Collins
does not disclose a characteristic curve, as conceded by the Office, Collins
cannot reasonably be considered to expressly disclose a power converter that
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includes a plurality of selectable characteristic curves,” or “a power
converter that is adapted to deliver power from an energy store to a DC side
of an inverter, or vice versa, according to a selected one of a plurality of
selectable characteristic curves.” Appeal Br. 9. Appellant argues that the
Examiner “fails to establish that in Collins’s system, selecting a ‘direction of
power converter’ necessarily results in an ‘inherent characteristic curve that
accompanies [a] conversion direction.’” Appeal Br. 10.
Appellant’s arguments again do not identify reversible error in the
Examiner’s rejection.
Collins discloses that when output from photovoltaic array 205
decreases, “energy stored in the battery 230 is discharged by controlling the
DC/DC converter current to flow from the battery 230 to the inverter 220,”
which “adds the battery current to the photovoltaic current.” Collins ¶ 45.
Collins explains that “[i]n this mode, the battery 230 is discharged and
energy is lost.” Id. Collins discloses that, in contrast, when the photovoltaic
power output increases, “a portion of the current from the photovoltaic array
205 is delivered to the battery 230 by controlling the DC/DC converter
current to flow into the battery 230,” which “subtracts the battery current
from the photovoltaic current.” Id. Collins explains that “[i]n this mode, the
battery 230 is charged and energy is stored.” Id.
Collins thus discloses a power converter “adapted to deliver power (a)
from the energy store to a DC side of the inverter or (b) from the DC side of
the inverter to the energy store” as recited in claim 16. Because, as
discussed above, Appellant’s Specification and drawings indicate that
“characteristic curves” are defined by the direction of operation of a power
converter, the Examiner has a reasonable basis for finding that “[b]y
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selecting the power converter operating mode, Collins inherently also selects
the positive or negative characteristic curve,” (Ans. 14) regardless of
whether “Collins is completely silent as to the power characteristics of its
battery and DC/DC converter” as Appellant argues. Eli Lilly & Co. v. Barr
Labs., Inc., 251 F.3d 955, 970 (Fed. Cir. 2001) (“A reference includes an
inherent characteristic if that characteristic is the ‘natural result’ flowing
from the reference’s explicitly explicated limitations.”) (quoting Cont’l Can
Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991)); Atlas
Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1349 (Fed. Cir. 1999) (as long as
there is evidence of record establishing inherency, failure of those skilled in
the art to contemporaneously recognize an inherent property or function of a
prior art composition does not preclude a finding of anticipation); Schering
Corp. v. Geneva Pharms., 339 F.3d 1373, 1377 (Fed. Cir. 2003) (rejecting
the contention that inherent anticipation requires recognition in the prior art).
We, accordingly, sustain the Examiner’s rejection of claims 16–23,
25, and 27 under 35 U.S.C. § 102(b).
Rejection II
We turn now to the Examiner’s rejection of claim 24 under 35 U.S.C.
§ 103(a) as unpatentable over Collins in view of Kurokami.
Claim 24 depends from claim 16 and recites that the energy
production system further comprises a film capacitor connected in parallel to
the solar generator.
The Examiner finds that Collins does not “expressly disclose a thin
film capacitor in parallel with the solar generator.” Final Act. 13. The
Examiner finds, however, that “Kurokami discloses that it is known in the
art to place thin film capacitors in parallel to solar generators.” Final Act. 13
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(citing Kurokami ¶ 9; Fig. 1). In view of this disclosure in Kurokami, the
Examiner concludes that “it would have been obvious to one skilled in the
art to modify Collins to include a thin film capacitor, as taught by Kurokami
. . . to smooth out ripple voltage and current on the DC bus that connects the
solar generator to the inverter.” Final Act. 13.
Appellant argues that Collins does not mention “ripple voltage and
current on the DC bus that connects the solar generator to the inverter,” or
“that there might be any problem associated with its photovoltaic power
system relating to any ‘ripple voltage and current on the DC bus that
connects the solar generator to the inverter.’” Appeal Br. 13. Appellant
argues that the Examiner “expresses an alleged solution to an alleged
problem of Collins’s system that finds no basis in Collins’s disclosure.” Id.
Appellant argues that, therefore, “the present rejection is not based on
substantial evidence but is apparently based on improper speculation,
conjecture, or supposition, which cannot serve as the basis for an
obviousness rejection.” Id.
As the Examiner explains in the Answer, however, “[o]ne skilled in
the art can conceive of an improvement for a prior art device without having
that prior art document explicitly define the problem that needs to be
improved.” Ans. 19; see also Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343,
1354 (Fed. Cir. 2013) (“[M]otivation to combine may be found explicitly or
implicitly in market forces; design incentives; the interrelated teachings of
multiple patents; any need or problem known in the field of endeavor at the
time of invention and addressed by the patent; and the background
knowledge, creativity, and common sense of [one of ordinary skill in the
art].”) (internal quotation marks and citations omitted).
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The Examiner further finds in the Answer that “Korukami [sic]
teaches that voltage and current ripple is a known problem in solar power
system and discloses how to correct it,” and the Examiner concludes that
“one skilled in the art would have been motivated to combine Korukami’s
[sic] teachings with Collins’ structure and power converter operating mode
functionality.” Ans. 19.
Appellant’s arguments are directed to Collins alone, and do not take
into consideration what a combination of the relied upon disclosures of
Collins and Kurokami reasonably would have suggested to one of ordinary
skill in the art. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.”); In re Keller, 642 F.2d 413, 425 (CCPA 1981)
(The test for obviousness “is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.”). Contrary to
Appellant’s arguments, the Examiner provides a reasoned explanation
grounded in sound factual findings for why one of ordinary skill in the art
would have modified Collins as proposed in view of the relied-upon
disclosures of Kurokami. The Examiner’s rejection, therefore, is not based
on “improper speculation, conjecture, or supposition” as Appellant argues.
Although Appellant further argues in the Reply Brief that “the
Examiner’s Answer grossly overstates Korukami’s [sic] disclosure,”
Appellant does not identify any specific error in the Examiner’s factual
findings related to Kurokami. Reply Br. 7. Nor do Appellant’s further
arguments in the Reply Brief identify with specificity any particular error in
the Examiner’s rationale for the proposed modification of Collins in view of
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the relied-upon disclosures of Kurokami. Id. Appellant’s arguments,
therefore, do not identify reversible error in the Examiner’s rejection of
claim 24, which we accordingly sustain.

DECISION SUMMARY

Claim(s)
Rejected

35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
16–23, 25,
27
102 Collins 16–23, 25,
27

24 103 Collins, Kurokami 24
Overall
Outcome
16–25, 27

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED