Dan G. Priem

Patent Trials and Appeals Board

Aug 20, 2019

15006791 - (D) (P.T.A.B. Aug. 20, 2019)

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.
15/006,791 01/26/2016 Dan G. Priem 106389-3607 2556
116387 7590 08/20/2019
Foley & Lardner LLP
3000 K Street N.W.
Suite 600
Washington, DC 20007-5109
EXAMINER
GONZALEZ, JULIO CESAR
ART UNIT PAPER NUMBER
2831
NOTIFICATION DATE DELIVERY MODE
08/20/2019 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAN G. PRIEM
____________

Appeal 2018-008828
Application 15/006,791
Technology Center 2800
____________

Before ROMULO H. DELMENDO, MERRELL C. CASHION, JR., and
JANE E. INGLESE, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Applicant1 (“Appellant”) appeals under 35 U.S.C. § 134(a) from
the Primary Examiner’s final decision to reject claims 1, 3–9, 11–16, and
18–22.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 The Applicant is “Cummins Power Generation IP, Inc.” (Application Data
Sheet filed January 26, 2016, at 4), which is also identified as the real party
in interest (Appeal Brief filed May 8, 2018 (“Appeal Br.”), at 2).
2 Appeal Br. 10–21; Reply Brief filed August 17, 2018 (“Reply Br.”), at
2–16; Final Office Action entered December 8, 2017 (“Final Act.”), at 4–17;
Examiner’s Answer entered June 20, 2018 (“Ans.”), at 2–12.
Appeal 2018-008828
Application 15/006,791

2
I. BACKGROUND
The subject matter on appeal relates to systems and methods for
removing moisture from generator sets (“gensets”) (Specification filed
January 26, 2016 (“Spec.”), ¶ 1). According to the Specification, “[w]hen
internal components of a genset, such as alternator windings and brush
blocks, are exposed to moisture, the components may be corroded, and their
functions may be affected” (id. ¶ 2). The Specification explains that the
invention uses a field flash circuit that operates while the genset is in a
non-rotating state and provides a field flash current to heat at least a portion
of the alternator of the genset to reduce moisture (id. ¶ 3).
Representative claim 1 is reproduced from the Claims Appendix to the
Appeal Brief, as follows:
1. A method comprising:
detecting that a generator set is in a non-rotating state, the
generator set comprising a field flash circuit and an alternator
structured to be operatively connected to an engine;
enabling the field flash circuit of the generator set to
operate while the generator set is in the non-rotating state,
wherein the field flash circuit is structured to provide a field flash
current to the generator set;
activating the field flash circuit in a heating function so
that current flows through and heats at least a portion of the
alternator of the generator set and reduces a moisture on the at
least a portion of the generator set; and
disabling the heating function of the field flash circuit in
response to at least one of:
detecting that the generator set is in a first mode and is
being activated, the first mode comprising at least one of:
an automatic mode in which the generator set activates
automatically in response to one or more conditions monitored
by a controller of the generator set; or
Appeal 2018-008828
Application 15/006,791

3
a remote mode in which the generator set activates in
response to receiving a signal from a device remote from a
location of the generator set;
detecting that the generator set is switched to a second
mode in which the generator set is activated manually; or
detecting that the generator set is switched to a third mode
in which the generator set is turned off manually.
(Appeal Br. 22 (emphases added)).
II. REJECTIONS ON APPEAL
The claims on appeal stand rejected as follows:
A. Claims 1, 3–9, 11–16, and 18–22 under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement;
B. Claims 1, 3–9, 11–16, and 18–20 under 35 U.S.C. § 103 as
unpatentable over Lin et al.3 (“Lin”) in view of Messersmith et
al.4 (“Messersmith”); and
C. Claims 21 and 22 under 35 U.S.C. § 103 as unpatentable over
Lin, Messersmith, and Curtis et al.5 (“Curtis”).
(Ans. 2–12; Final Act. 4–17).
III. DISCUSSION
Rejection A. The Examiner’s rejection appears to be based on a
finding that the Drawings (e.g., Fig. 3) “only show a box” for the “field flash
circuit” recited in the claims and “fail to show what components make up the
field flash circuit” (Final Act. 5). According to the Examiner, “[t]he present

3 CN 203386091 U, published January 8, 2014. We refer to the
Appellant-provided English language translation filed February 8, 2016.
4 US 2013/0271060 A1, published October 17, 2013.
5 US 2014/0039708 A1, published February 6, 2014.
Appeal 2018-008828
Application 15/006,791

4
disclosure fail[s] to show a clear and distinct description of the field flashing
circuit that would enable one of ordinary skill in the art to make use of the
present invention” (id. (emphasis added)).
The Appellant points out that “‘there is a presumption that an
adequate written description of the claimed invention is present in the
specification as filed’” (Appeal Br. 10 (quoting MPEP § 2163.II(A) (internal
citation omitted)) and that the original disclosure does in fact provide
adequate written descriptive support (id. at 11). The Appellant argues that
“the Examiner’s rejection appears to be misguided with respect to the basis
for the rejection” because it focuses on an analysis that is more appropriate
for determining sufficiency of disclosure in the context of 35 U.S.C. § 112(f)
means-plus-function language (id. at 11 (citing Final Act. 11)).
Furthermore, according to the Appellant, “[a]s no particular field flash
circuit is required by the claims, no further specificity would be needed for a
skilled person to make and use the invention” (id. at 12 (emphasis added)).
In this regard, the Appellant argues that other statements in the Final Office
Action and Answer further reflect a misunderstanding of the written
description requirement as evidenced by the Examiner’s focus on
enablement rather than written description (Reply Br. 5 (citing Final Act.
13; Ans. 5)). The Appellant urges that “the written description requirement
of § 112(a) only requires the original disclosure to describe the claimed
invention in sufficient detail that one skilled in the art can reasonably
conclude that the inventor had possession of the claimed invention” (Reply
Br. 3).
We agree with the Appellant that the Examiner’s rejection is not
Appeal 2018-008828
Application 15/006,791

5
well-founded because it fails to apply the proper test for determining
compliance with the written description requirement. Ariad Pharms., Inc. v.
Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (“[T]he test for
sufficiency [of written description] is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.”).
The “field flash circuit” is described and shown in the disclosure as
originally filed (Spec. ¶¶ 15–19, 25–28, 31–41; Drawings filed January 26,
2016, Fig. 3). Therefore, the Examiner’s rejection fails to establish that the
original disclosure lacks sufficient written descriptive support for the subject
matter now recited in the claims. In this regard, we find that Figure 3 of the
Drawings filed January 26, 2016 shows the field flash circuit 306’s structure
and relationships to other elements (id. ¶¶ 25–30), contrary to the
Examiner’s stated position. In addition, the Examiner offers no evidence
that refutes the Appellant’s contention that field flash circuits are well-
established components in the art, and, thus, no showing has been made that
the Inventor was not in possession of the claimed subject matter at the time
the application was filed.
Under these circumstances, we cannot sustain Rejection A.
Rejections B and C. The Appellant provides various arguments for
certain claims under multiple sub-headings (Appeal Br. 13–20). We address
these claims separately from claim 1 only to the extent that the arguments
warrant separate consideration pursuant to 37 C.F.R. § 41.37(c)(1)(iv).
Merely pointing out what a claim recites and/or providing a skeletal
argument that the prior art references do not disclose or suggest certain
Appeal 2018-008828
Application 15/006,791

6
claim limitations are not arguments that require our separate consideration.
In re Lovin, 652 F.3d 1349, 1356–57 (Fed. Cir. 2011).
1. Claim 1
The Examiner finds that Lin describes a method for reducing moisture
in a genset that satisfies every limitation recited in claim 1 except for the use
of a “small current (‘flash current’)” to reduce the moisture (Final Act. 6–7).
The Examiner finds, however, that Messersmith teaches using a “flash
current” for heating the windings of an electrical machine to reduce moisture
(id. at 7). The Examiner concludes that although Messersmith’s disclosure
relates to a motor generally rather than a generator, motors and generators
are made up of common or similar components and, therefore, a person
having ordinary skill in the art would have found it obvious to combine
Messersmith with Lin to arrive at the Inventor’s claimed subject matter (id.
at 7–8).
The Appellant contends that Lin does not teach the limitation
“disabling the heating function of the field flash circuit in response to at least
one of . . . detecting that the generator set is in a first mode and is being
activated, the first mode comprising at least one of . . .” (Appeal Br. 14–15).
The Appellant argues that, rather, Lin discloses an automatic control mode
that takes advantage of latent heat buildup within a generator winding during
a heating cycle (id. at 15). In addition, the Appellant argues that Lin does
not teach detecting that the genset is switched to a “second mode” and to a
“third mode” as recited in claim 1 (id. at 15–17). Regarding Messersmith,
the Appellant argues that Messersmith does not disclose a “field flash
circuit” as recited in claim 1 (id. at 17). According to the Appellant, “[t]he
small current [in Messersmith] is not provided by a ‘field flash circuit’ of the
Appeal 2018-008828
Application 15/006,791

7
type recited in the claims and utilized to provide excitation in the absence of
residual magnetism in a generator, but rather by the circuitry that provides
electrical power to drive the motor” (id.).
The Appellant’s arguments fail to identify reversible error in the
Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
During examination, the PTO is obligated to give claim terms their
broadest reasonable interpretation consistent with the remainder of the
Specification. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007) (“[W]e look to the specification to see if it provides a
definition for claim terms, but otherwise apply a broad interpretation.”). Id.
“As [our reviewing] . . . court has discussed, this methodology produces
claims with only justifiable breadth.” Id.
Applying this principle, we agree with the Examiner that “the [p]rior
[a]rt is only require[d] to show one mode” (Ans. 6). The Examiner’s
conclusion is supported by the claim language “disabling the heating
function of the field flash circuit in response to at least one of: detecting
. . .” (emphasis added), coupled with one other instance of “at least one” in
specifying two alternatives for the “first mode” as well as the additional use
of the disjunctive “or” to specify the alternative “detecting” steps (Appeal
Br. 22).
Thus, under the broadest reasonable interpretation standard, we
discern no error in the Examiner’s findings concerning Lin’s scope and
content and the difference between it and claim 1’s subject matter.
Specifically, Lin describes a method for removing moisture from a generator
by using automated technology in which the temperatures of the
environment and the generator windings are monitored to control heating to
Appeal 2018-008828
Application 15/006,791

8
remove moisture in a cost-efficient manner (Lin, Abstract). Lin teaches a
delay in heating time of about 3 hours after the generator operation is
stopped as the generator would be at a sufficiently high temperature during
this delay period such that supplemental heating is unnecessary (id. at 3, 7th
full paragraph; 4, last paragraph; 5, 3rd paragraph). Therefore, consistent
with the Examiner’s findings (Ans. 6), when the environmental temperature
is lower than the reference temperatures, heating is allowed after the delay
period, and when the environmental temperature is higher than the reference
temperatures, heating is not needed (id. at 4, fourth paragraph). Thus, Lin’s
disclosed operation meets “disabling the heating function . . . in response to
at least one of . . . detecting that the generator set is in a first mode . . .
comprising at least one of . . . an automatic mode in which the generator set
activates automatically in response to one or more conditions monitored by a
controller of the generator set” as recited in claim 1.
Turning to Messersmith, we discern no persuasive merit in the
Appellant’s unsubstantiated argument that Messersmith does not disclose a
“field flash circuit” as recited in claim 1. As the Appellant acknowledges,
the Inventor’s Specification and Drawings do not limit the term “field flash
circuit” to the “example embodiments” and, therefore, “no particular field
flash circuit is required by the claims” (Appeal Br. 11–12). Here, the
Examiner finds that Messersmith discloses using a small excitation current
at a low frequency to heat the windings and that disclosure meets the claim
limitation at issue (Ans. 7 (citing Messersmith ¶¶ 25, 26, 34, 39)). The
Appellant does not provide persuasive argument or objective evidence that
rebuts the Examiner’s findings.
Appeal 2018-008828
Application 15/006,791

9
As for the Appellant’s argument that Messersmith does not disclose a
generator, we agree with the Examiner that a person having ordinary skill in
the art would have understood that Messersmith’s teachings related to
removing moisture in a motor (id. ¶¶ 3–6) may be successfully implemented
in other similar systems, such as Lin’s genset, which would necessarily
include a motor. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)
(“[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.”).
For these reasons and those given by the Examiner, we uphold the
Examiner’s rejection as maintained against claim 1.
2. Claim 19
Claim 19, which depends from claim 16 (directed to a generator set;
Appeal Br. 26), recites “further comprising a clock structured to maintain the
time of day, wherein the controller is configured to enable the field flash
circuit in the first mode based on the time of day” (id. at 27).
The Appellant argues that Lin does not disclose a clock or any feature
where a field flash circuit’s operation is maintained by a clock (id. at 20).
According to the Appellant, Lin merely discusses how temperature can
change during the course of a day and how real-time information is used
(id.).
We find no persuasive merit in the Appellant’s argument. As the
Examiner finds, Lin describes controlling the system in real time based on
the time of day (e.g., daytime and nighttime) (Ans. 10 (citing Lin 6, 5th full
paragraph)). Hence, a person having ordinary skill in the art would have
Appeal 2018-008828
Application 15/006,791

10
drawn a reasonable inference that a clock may be used to carry out Lin’s
operations, and the implementation of such a clock to fulfill Lin’s goals of
providing control during the course of a day would have been within the
level of the ordinary skill in the art. In re Preda, 401 F.2d 825, 826 (CCPA
1968) (“[I]n considering the disclosure of a reference, 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.”).
Therefore, we also uphold the Examiner’s rejection as maintained
against claim 19.
3. Claim 21
Claim 21, which depends from claim 16, recites “further comprising a
humidity sensor structured to measure an environmental humidity, a
humidity of the windings, a humidity of an alternator assembly of the
generator set, wherein the controller is configured to enable the field flash
circuit in the first mode based on the measured humidity” (Appeal Br. 27).
The Appellant argues that the Examiner’s reliance on Curtis is
misplaced because Curtis does not relate to a genset that uses field flash
circuitry (id. at 20). This argument is also unpersuasive.
Although Curtis’s disclosure relates to a cogeneration system (Curtis,
Abstract), Curtis was cited to show that a humidity sensor may be used to
sense humidity (id. ¶¶ 8, 58, 116). Indeed, the Appellant acknowledges that
humidity sensors are well-known (Appeal Br. 20). Given that Lin’s goal is
to reduce moisture in a genset, a person having ordinary skill in the art
would have been prompted to implement a humidity sensor in Lin to provide
even greater reliability for the control system.
Appeal 2018-008828
Application 15/006,791

11
Therefore, we sustain the rejection as maintained against claim 21.
4. Claim 22
Claim 22, which also depends from claim 16, recites “further
comprising a communication interface structured to receive a local weather
forecast over a network, wherein the controller is configured to enable the
field flash circuit in the first mode based on the received local weather
forecast” (id. at 27).
The Appellant argues that “Curtis is completely silent on how a
controller may be configured to ‘enable the field flash circuit in the first
mode based on the received local weather forecast’ as claimed” (id. at 20).
For reasons similar to that provided for claim 21, we find this argument
unpersuasive.
As the Examiner finds, Curtis teaches the concept of using weather
forecast to control a cogeneration system in which environmental conditions
are important (Curtis ¶¶ 178, 209). Given that Lin is also concerned with
environmental conditions (e.g., Lin, Abstract), a person having ordinary skill
in the art would have been prompted to use weather forecast information in
Lin to provide even greater reliability for the control system.
Therefore, we also uphold the rejection as maintained against claim
22.
IV. SUMMARY
Rejection A is not sustained. Rejections B and C are sustained.
Therefore, the Examiner’s final decision to reject claims 1, 3–9, 11–16, and
18–22 is affirmed.

Appeal 2018-008828
Application 15/006,791

12
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