Ex Parte 7230345 et al

Patent Trial and Appeal BoardAug 7, 2014

95001558 (P.T.A.B. Aug. 7, 2014)

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. 95/001,558 05/16/2011 7230345 297.209 6570 23598 7590 08/07/2014 BOYLE FREDRICKSON S.C. 840 North Plankinton Avenue MILWAUKEE, WI 53203 EXAMINER GAGLIARDI, ALBERT J ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 08/07/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ KOHLER CO. Requester and Appellant v. GENERAC POWER SYSTEMS, INC. Patent Owner and Respondent ________________ Appeal 2013-007907 Reexamination Control 95/001,558 Patent 7,230,345 B2 Technology Center 3900 ________________ Before HOWARD B. BLANKENSHIP, STANLEY M. WEINBERG, and GREGG I. ANDERSON, Administrative Patent Judges. WEINBERG, Administrative Patent Judge. Appeal 2013-007907 Reexamination Control 95/001,558 Patent 7,230,345 B2 2 DECISION ON APPEAL A. STATEMENT OF THE CASE Introduction This reexamination proceeding arose from a third party request for inter partes reexamination filed on February 28, 2011 (Request). The patent involved in this reexamination appeal proceeding (“the ‘345 Patent”) issued to Peter D. Winnie, et al. on June 12, 2007. Kohler Co. (Kohler), the Requester, appeals under 35 U.S.C. §§ 134(c) and 315(b) from the Examiner’s decisions not to adopt its proposed rejections of claims 1-24. 1 An oral hearing was held on December 4, 2013 and a transcript (Tr.) was made of record on January 30, 2014. We have jurisdiction under 35 U.S.C. §§ 134(c) (2002) and 315(b) (2002). We reverse. Related Proceeding Kohler informs us that this inter partes reexamination proceeding is related to ex parte reexamination control no. 90/011,403 and that a reexamination certificate issued on November 9, 2011. App. Br. 4. Generac informs us that the aforesaid reexamination certificate confirmed all of the claims without amendment. Resp. Br. 1. 1 Kohler relies on its Appeal Brief (App. Br.) filed April 19, 2012 and its Rebuttal Brief (Reb. Br.) filed October 1, 2012. Respondent Generac Power Systems, Inc. (Generac) relies upon its Respondent Brief (Resp. Br.) filed May 21, 2012. The Examiner relies upon a Right of Appeal Notice (RAN) mailed on February 2, 2012. Appeal 2013-007907 Reexamination Control 95/001,558 Patent 7,230,345 B2 3 Both Kohler and Generac inform us that Generac has asserted the ’345 Patent against Kohler in a patent infringement suit in the U.S. District Court for the Eastern District of Wisconsin in Case No. 2:10-cv-00947 RTR and that the aforesaid suit has been stayed pending the outcome of the present inter partes reexamination. App. Br. 4; Resp. Br. 1. The Background of the Invention and the Invention The invention relates to a method for exercising a stand-by electrical generator to insure proper operation of the engine and the electrical generator driven therewith. ’345 Patent col. 1, ll. 6-9. Typically, an individual electrical generator operates in a stand-by mode. The electrical power provided by a utility is monitored such that if the commercial electrical power from the utility fails, the engine of the electrical generator is automatically started causing the alternator to generate electrical power. When the electrical power generated by the alternator reaches a predetermined voltage and frequency desired by the customer, a transfer switch transfers the load imposed by the customer from the commercial power lines to the electrical generator. Id. at col. 1, ll. 15-24. As is known, engine-driven, electrical generators are often exercised to insure proper operation when their use is required. In order to exercise the engine-driven, electrical generator, the engine is either automatically or manually started and run for a predetermined time period at its full operating speed, which can produce unwanted noise as a result of the rotation of the fan used to cool the engine coolant flowing through the electrical generator. Id. at col. 1, ll. 43-53. Appeal 2013-007907 Reexamination Control 95/001,558 Patent 7,230,345 B2 4 “Exercising a genset drives off moisture, re-lubricates the engine, replaces stale fuel in fuel lines and carburetor and removes oxides from electrical contacts and generator slip rings. The result is better starting, more reliable operation and longer engine life.” App. Br. 11 (citation omitted). The invention provides a method for exercising a stand-by electrical generator that insures the proper operation of the engine and the electrical generator driven therewith. ’345 Patent col. 2, ll. 11-14. The method includes the step of running the engine at a predetermined exercise speed with the generator in the exercise mode. The predetermined exercise speed is in the range of 40% to 70% of the predetermined operating speed of the engine. In addition, in the exercise mode, the generator generates an exercise voltage that is less than the predetermined output voltage. ’345 Patent, Abstract; col. 5, ll. 39-53. The engine is operated at its exercise speed for a predetermined time period in order to insure proper operation of the generator system. Thereafter, the generator system returns to its stand- by mode. Id. at col. 6, ll. 5-9. Claim 1 is illustrative of the appealed subject matter and is reproduced below (App. Br. 47, 51, Claims App’x): 1. A method of exercising an engine-driven, electrical generator, the generator generating a predetermined output voltage at a predetermined frequency with the engine running a predetermined operating speed, the method comprising the steps of: selecting a generator exercise mode for the generator; starting the engine; and Appeal 2013-007907 Reexamination Control 95/001,558 Patent 7,230,345 B2 5 running the engine at a predetermined exercise speed, the exercise speed being less than the predetermined operating speed. The Prior Art Relied Upon By Kohler Cummins PowerCommand Control Generator Sets Operator's Manual, 960- 0153C, March 2001 ("Cumminsl"). Cummins PowerCommand Digital Paralleling Controller, S-1385d, Jan. 2002 ("Cummins2"). Cummins PowerCommand Digital Generator Set Control, S-1409a, Feb. 2002 ("Cummins3"). Cummins Commercial Mobile Power Operator's Manual Models HGJAD, HGJAE, HGAF, Nov. 2001, ("Cummins4"). Kohler Portable Generator Set Service Manual, TP-5580, Sept. 1993 ("Kohler1 "). TP5706 Kohler® Power Systems Fast-Response™ Standby Generator Sets Training Manual, Aug. 2001 (" Kohler2 "). TP6135 Kohler® Power Systems MP AC Setup Program for Automatic Transfer Switches, Software Operation and Installation (" Kohler3 "). TP6140 Kohler® Controller Setup and Application Industrial Generator Set, Oct. 2001, ("Kohler4"). U.S. Patent No. 5,726,503 to Domanski et al., March 1998 ("Domanski"). Changing Generator Rotational Speed, Danish Wind Industry Assoc. (June 2003) ("Danish"). Kohler’s Appeal Brief lists the following eight rejections that it asserts the Examiner should have adopted. App. Br. 5-6: Appeal 2013-007907 Reexamination Control 95/001,558 Patent 7,230,345 B2 6 Clams 1-4, 7-13, 16-21, and 24 as obvious over Cummins1, Kohler1, and Domanski. Appeal Issue 1. Claims 5, 6, 14, 15, 22, and 23 as obvious over Cummins1, Kohler1, Domanski, and Danish. Appeal Issue 2. Claims 1-4, 7-13, 16-21, and 24 as obvious over Cummins2, Kohler1, and Domanski. Appeal Issue 3. Claims 5, 6, 14, 15, 22, and 23 as obvious over Cummins2, Kohler1, Domanski, and Danish. Appeal Issue 4. Claims 1-4, 7-13, 16-21, and 24 as obvious over Cummins3, Kohler1, and Domanski. Appeal Issue 5. Claims 5, 6, 14, 15, 22, and 23 as obvious over Cummins3, Kohler1, Domanski, and Danish. Appeal Issue 6. Claims 1-24 as obvious over Kohler2 and Kohler1. Appeal Issue 7. Claims 4-6, 13-15, and 21-23 as obvious over Kohler2, Kohler1, and Danish. Appeal Issue 8. We will address only the issues raised in the Appeal Brief. 37 C.F.R. § 41.67(c)(1)(vii)( “Any arguments or authorities not included in the brief permitted under this section or §§ 41.68 and 41.71 will be refused consideration by the Board, unless good cause is shown.”). The Declaration As part of the Request, Kohler submitted a Declaration of Richard Locke (Locke Decl.), a Kohler employee. See, e.g., Request 10. Mr. Locke provided background information (Locke Decl. ¶¶ 8-11) and provided his opinion about what is taught by each of the Kohler prior art documents. Locke Decl. ¶¶ 12-26). Appeal 2013-007907 Reexamination Control 95/001,558 Patent 7,230,345 B2 7 B. ANALYSIS The meaning of “exercise” An important issue in this case is the meaning of “exercise” in the context of claim 1, which recites “exercising an engine-driven, electrical generator;” “a generator exercise mode;” and “an exercise speed.” The parties and the Examiner agree that it is well known to exercise standby generators. See ’345 Patent col. 1, ll. 43-45; App. Br. 8, agreeing with RAN 8. The ’345 Patent describes “exercise” as follows: “In order to exercise the engine-driven electrical generator, the engine is either automatically or manually started and run for a predetermined time period at its full operating speed.” ’345 Patent, col. 1, ll. 45-48. See also Tr. 19:6-12. Although the ’345 Patent also discusses, for example, exercising at an “exercise speed . . . in the range of 40% to 70% of the predetermined operating speed of the engine” ’345 Patent, col. 2, ll. 35-36; col. 2, l. 66-col. 3, l. 1), the ’345 Patent does not provide a specific definition of “exercise” that is different from the description in column 1. It is not clear how there can be an “exercise” speed, for example, in the range of 40% to 70% of operating speed when “exercise” is running at full operating speed. Similarly, it is unclear how the “exercise speed” recited in claim 1 can be “less than the predetermined operating speed.” We do not, however, determine whether claim 1 is indefinite under 35 U.S.C. § 112, second paragraph, because § 112 may be considered in an inter partes reexamination only “with respect to subject matter added or deleted in the reexamination proceeding.” 37 C.F.R. Appeal 2013-007907 Reexamination Control 95/001,558 Patent 7,230,345 B2 8 § 1.906(a). None of the claims have been amended during this reexamination proceeding. Kohler’s employee, Richard Locke, defines exercising as: “running [a] stand-by generator during non-emergency when back-up power is not required.” Locke Decl. ¶ 10. Kohler therefore contends that “’exercising’ encompasses any period where the engine is running after the step of ‘selecting a generator exercise mode.’ And ‘predetermined exercise speed’ would encompass any predetermined engine speed chosen during the selected exercise mode.” Reb. Br. 12. In view of our analysis of the prior art, we need not construe the term “exercising.” The proposed rejection over Cummins1 and other references Kohler proposed a rejection of claims 1-4, 7-13, 16-21, and 24 as obvious over Cummins1, Kohler1, and Domanski and a rejection of claims 5, 6, 14, 15, 22, and 23 as obvious over Cummins1, Kohler1, Domanski, and Danish. App. Br. 6, Appeal Issues 1 and 2. Cummins1 is an Operator’s Manual for Cummins/Onan PowerCommand ® Control Generator Sets (cover page) that describes their function and operation. Page 3-1. The right-hand column of Figure 3-2 on page 3-9 illustrates an exercise sequence that is described on page 3-7 beginning at “Exercise Start.” As stated on page 3-7, the exercise sequence is started by pressing and holding the Exercise button shown in Figure 3-2. Page 3-7 further states that “[t]he exercise sequence may include running at idle speed, ramping to rated speed, running for a predetermined period of time and timed shutdown.” Consistent with Page 3-7, Figure 3-2 illustrates Appeal 2013-007907 Reexamination Control 95/001,558 Patent 7,230,345 B2 9 that after the exercise button is pushed, the exercise sequence includes “warm-up @ idle” and “rated speed & voltage.” The Examiner finds that “Cummins-1 does teach that the exercise sequence can include steps of warming-up and cooling-down the engine at speeds below rated speed.” RAN 6 (emphasis added). Generac agrees that “Cummins shows an idle speed that is part of the overall exercise process.” Tr. 12:18-19. See also Tr. 14:3-6 (running at idle speed “is part of the [exercise] sequence.). Generac contends as follows: Cummins1, alone or in combination with Kohler 1 and/or Domanski, does not teach or suggest exercising an engine- driven electrical generator so that while the electrical generator is exercising, the engine is run at a predetermined exercise speed that is less than a predetermined operating speed, as required by each of independent claims 1, 11, and 20. Cummins1 discloses an engine-driven electrical generator that is purposely configured to exercise its electrical generator at rated speed and voltage. The sequence that includes exercising the electrical generator is shown at the flowchart on the right- hand side of FIG. 3-2 of Cummins1. Before exercising of the electrical generator begins, the engine is warmed-up at an idle speed. When either the coolant gets to a certain temperature or a timer expires, the electrical generator begins exercising at rated speed and voltage and continues exercising until an exercise time expires. After the exercise time expires, the engine cools down either at rated speed or at idle speed. Cummins1 expressly discloses that it is not desirable to run the engine at idle speed. Accordingly, Cummins1 discloses that the engine should only run at idle speed for as long as it takes to warm up to operating temperature before the electrical generator begins exercising, and the engine should never run at Appeal 2013-007907 Reexamination Control 95/001,558 Patent 7,230,345 B2 10 idle speed for longer than 10 minutes to avoid damaging the engine. Kohler’s proposed modification contradicts express teachings of Cummins1, warning against the proposed modification, which would render Cummins1 inoperable for its intended purpose. Resp. Br. 7-8. In sum, Generac contends that the Cummins1 idle speed cannot be considered to be an exercise speed because the Cummins exercise “is not complete until you’ve run at full speed” (Tr. 13:17-19) and the exercise sequence “necessarily includes running at full speed.” Tr. 14:6-7. Generac’s contention that Cummins1’s warming up the engine at an idle speed occurs “[b]efore exercising of the electrical generator begins” (Resp. Br. 9) is not persuasive. As Generac admits, and the Examiner finds, the warming up at idle speed is part of the exercise sequence. Tr. 12:18-19; Tr. 14:3-6; RAN 6. Therefore, claim 1’s recitation that “the exercise speed [is] less than the predetermined operating speed,” is taught in Cummins1. We conclude that it would have been obvious to one of ordinary skill in the art at the time of the Generac invention that Cummins1 teaches an exercise speed (its idle speed during the exercise sequence) that is less than the predetermined operating speed. Generac has not provided a definition of “exercising” that excludes Cummins1’s idle speed during the exercise sequence. As noted, Generac agrees that Cummins1 teaches an exercise sequence that includes operating at an idle speed, where the idle speed in the exercise sequence is less than the full operating speed. On the other hand, Cummins1’s idle Appeal 2013-007907 Reexamination Control 95/001,558 Patent 7,230,345 B2 11 speed during its exercise sequence falls within Mr. Locke’s definition of “exercise.” We therefore conclude that the Examiner erred in refusing to reject claim 1 as obvious over Cummins1, with or without Kohler1 and Domanski. Generac argues independent claims 1, 11 and 20 together and does not present separate arguments for patentability of dependent claims 2-10, 12- 19, and 21-24. See Resp. Br. 7-8. We therefore further conclude that the Examiner erred in refusing to reject claims 2-24 on the same basis and for the same reasons. Our conclusion that the Examiner erred in refusing to reject the above-referenced claims as unpatentable over Cummins1 with or without the other references renders it unnecessary to reach the propriety of the Examiner’s decision not to adopt the proposed rejections of those claims on a different basis. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009). CONCLUSION The Examiner erred in refusing to reject claims 1-24 based upon Cummins1 alone or with Kohler1, Domanski, and Danish. DECISION The Examiner’s refusal to reject claims 1-24 is reversed. REVERSED – 37 C.F.R. § 41.77(b) The decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.77(b). Section 41.77(b) provides that “[a] new ground of rejection . . . shall not be considered final for judicial review.” That section also provides that Patent Owner, WITHIN ONE MONTH FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal proceeding Appeal 2013-007907 Reexamination Control 95/001,558 Patent 7,230,345 B2 12 as to the rejected claims: (1) Reopen prosecution. The owner may file a response requesting reopening of prosecution before the examiner. Such a response must be either an amendment of the claims so rejected or new evidence relating to the claims so rejected, or both. (2) Request rehearing. The owner may request that the proceeding be reheard under § 41.79 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. In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the appeal may file a request for rehearing of the decision within one month of the date of: . . . [t]he original decision of the Board under § 41.77(a).” A request for rehearing must be in compliance with 37 C.F.R. § 41.79(b). Comments in opposition to the request and additional requests for rehearing must be in accordance with 37 C.F.R. § 41.79(c), respectively. Under 37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a) of this section, for requesting further rehearing under paragraph (c) of this section, and for submitting comments under paragraph (b) of this section may not be extended. An appeal to the United States Court of Appeals for the Federal Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an inter partes reexamination proceeding “commenced” on or after November 2, 2002 may not be taken “until all parties' rights to request rehearing have Appeal 2013-007907 Reexamination Control 95/001,558 Patent 7,230,345 B2 13 been exhausted, at which time the decision of the Board is final and appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See also MPEP § 2682 (8th ed., Rev. 7, July 2008). Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79(e). PATENT OWNER: PETER C. SOMMA BOYLE FREDRICKSON S.C. 840 NORTH PLANKINTON AVENUE MILWAUKEE, WI 53203 THIRD PARTY REQUESTER: STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 NEW YORK AVENUE, N.W, WASHINGTON, D.C. 20005-3934