Ex Parte 7797958 et al

Patent Trial and Appeal BoardSep 18, 2012

90009825 (P.T.A.B. Sep. 18, 2012)

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. 90/009,825 09/21/2010 7797958 075397-0193 6361 52450 7590 09/18/2012 KRIEG DEVAULT LLP ONE INDIANA SQUARE SUITE 2800 INDIANAPOLIS, IN 46204-2079 EXAMINER FETSUGA, ROBERT M ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 09/18/2012 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 ____________________ Ex parte CROSSPOINT SOLUTIONS LLC.1 Appellant, Patent Owner ____________________ Appeal 2012-008637 Reexamination Control 90/009,825 Patent No. US 7,797,958 B22 Technology Center 3900 ____________________ Before JEFFREY B. ROBERTSON, DANIEL S. SONG and RAE LYNN P. GUEST, Administrative Patent Judges. SONG, Administrative Patent Judge. DECISION ON APPEAL 1 Glacier Bay, Inc. is identified as the real party in interest in the Appeal Brief filed on September 30, 2011 (hereinafter "App. Br.") but the Assignment of record subsequently filed on July 19, 2012 indicates that Patent No. US 7,797,958 B2 (hereinafter "'958 patent") has been assigned to Crosspoint Solutions LLC. 2 Issued September 21, 2010. Appeal 2012-008637 Reexamination Control 90/009,825 Patent No. US 7,797,958 B2 2 The Appellant appeals under 35 U.S.C. Â§Â§ 134(b) and 306 from a Final Rejection of claims 1-31, independent claim 1 having been amended while claims 20-31 have been added during the reexamination proceeding. We have jurisdiction under 35 U.S.C. Â§Â§ 134(b) and 306. In addition to the Appeal Brief, the Patent Owner also relies on a Reply Brief filed on March 26, 2012 (hereinafter "Reply Br.") and a Declaration of Mr. Jason Hufford dated March 9, 2011. An oral hearing with the Appellant's representative was held on September 5, 2012, a transcript of which will be electronically entered into the record in due course. The invention is directed to a heating, ventilation and air conditioning (hereinafter "HVAC") system that is installed in a vehicle, the system including a battery management system (Title; Col. 1, ll. 7-9). Claims 1 and 20 are independent claims, representative claim 1 being reproduced below (App. Br. 23, Claims App'x., underlining of amended text omitted): 1. (Amended) An HVAC system to be installed in a vehicle having an engine comprising: a battery management controller comprising: at least one connection for electrically coupling a first power source with a first voltage; at least one connection for electrically coupling a second power source with a second voltage; wherein the battery management controller is configured to run a temperature control system when the vehicle engine is off and to supply power to the temperature control system when the vehicle engine is off from a combination of the first and second power sources with a combined voltage, wherein the second power source is electrically separated when the combined voltage drops below a predetermined amount. The evidence relied upon by the Examiner in rejecting the claims is: Appeal 2012-008637 Reexamination Control 90/009,825 Patent No. US 7,797,958 B2 3 Mehdi et al. 4,616,484 Oct. 14, 1986 Gale et al. 6,737,756 B1 May 18, 2004 Zeigler et al. 6,889,762 B2 May 10, 2005 Kim 2006/0139007 A1 June 29, 2006 Nite, No-Idle, Installation Instructions, Model 9000i Post June 2002 (hereinafter "Installation Instructions") Sure Power Industries, Inc., Battery Separator, The Smart Solenoid3 (hereinafter "Battery Separator") The Examiner rejected the following claims under 35 U.S.C. Â§ 103(a) as unpatentable over the noted combination of references: 1. Claims 1-3, 6-15, 17-20 and 23-31 based on the combination of Zeigler, Installation Instructions and Battery Separator. 2. Claims 4, 5, 21 and 22 based on the combination of Zeigler, Installation Instructions and Battery Separator, further in view of Kim. 3. Claim 16 based on the combination of Zeigler, Installation Instructions and Battery Separator, further in view of Mehdi. 4. Claims 1-3, 7, 17, 18, 20, 24 and 30 based on the combination of Gale and Battery Separator. 5. Claims 4, 5, 21 and 22 based on the combination of Gale and Battery Separator, further in view of Kim. 6. Claims 6, 8-15, 19, 23, 25-29 and 31 based on the combination of Gale and Battery Separator, further in view of Zeigler. 7. Claims 8, 16 and 25 based on the combination of Gale and Battery Separator, further in view of Mehdi. 3 While the publication date is not indicated, the Appellant does not dispute the prior art status of this document. Appeal 2012-008637 Reexamination Control 90/009,825 Patent No. US 7,797,958 B2 4 8. Claims 18 and 30 based on the combination of Gale and Battery Separator, further in view of Installation Instructions. We REVERSE. ISSUE The dispositive issue of the appeal is whether the Examiner erred in concluding that it would have been obvious to modify the systems of Zeigler or Gale based on Installation Instructions and/or Battery Separator to result in the claimed invention. FINDINGS OF FACT The record supports the following findings of fact (FF) by a preponderance of the evidence. 1. A. Installation Instructions discloses an air conditioning system that is operable without idling the engine of the vehicle, and states "[t]he NITE system operates independently off of it's [sic] own deep cycle batteries and is completely isolated away from the trucks starting batteries." (Pg. 3). B. Installation Instructions also states "[t]he isolator acts as a check valve between the NITE batteries and the truck[']s starting batteries. This eliminates the multi-battery drain problem. . . . [The separator] has the same purpose as the isolator but acts differently" in that "[i]t is electrically connected between the truck batteries and the NITE batteries." (Pg. 6). Appeal 2012-008637 Reexamination Control 90/009,825 Patent No. US 7,797,958 B2 5 2. Battery Separator states the following: A. "IF the chassis' battery [voltage] is lower than the auxiliary battery bank, the BATTERY SEPARATOR will engage allowing the auxiliary battery bank to aid in vehicle starting." (Pg. 1). B. The BATTERY SEPARATOR monitors the battery system to determine if the batteries are being charged. . . . If the drain on the charging system by the auxiliary system or main battery bank reduces the system voltage below 12.4-12.9 volts, the BATTERY SEPARATOR will disconnect the battery banks from each other, thus protecting the respective battery banks from excessive drain. (Pg. 1). C. "The priorities are to assist in engine starting, if required, and to protect the charging system from excessive power drain." (Pg. 1). D. Start the vehicle or apply a charge to the main battery. Once the main battery rises to 13.2- 13.5V the Battery Separator should activate. Turn off the vehicle or remove the charge to the main battery. The Battery Separator should disconnect the auxiliary battery once the voltage on the main battery drops below 12.4-12.9V. (Pg. 2). 3. In his Declaration, Mr. Jason Hufford states: Appeal 2012-008637 Reexamination Control 90/009,825 Patent No. US 7,797,958 B2 6 A. "Hundreds of the NITE Systems that I installed included the Sure Power Battery Separator disclosed in the brochure attached as Exhibit B [Battery Separator] to this declaration." (Â¶ 4). B. In operation, I observed that when the engine stops running, the system voltage very quickly drops below the disconnect set point and the Battery Separator disconnects the engine battery from the auxiliary battery. I also observed that when the engine is off and the air conditioning system is running, the Battery Separator is open or disconnected so that the engine battery is disconnected from the auxiliary battery preventing the air conditioning system from drawing power from the engine battery. Thus, when the engine is not running, the Battery Separator prevents supplying power to the HVAC system from two different power sources. Only the auxiliary battery bank can be used to supply the air conditioning system. (Â¶ 7). PRINCIPLES OF LAW "A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). The entirety of the reference must be considered. In re Wesslau, 353 F.2d 238, 241 (CCPA 1965) ("It is impermissible within the framework of section 103 to pick and choose from any one reference only so Appeal 2012-008637 Reexamination Control 90/009,825 Patent No. US 7,797,958 B2 7 much of it as will support a given position, to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests to one of ordinary skill in the art."). ANALYSIS Rejections 1-3 based on the combination of Zeigler, Installation Instructions and Battery Separator In these rejections, the Examiner finds that Zeigler discloses all of the limitations of the independent claims "except for the power source being two electrically separable batteries allowing for use of a combined voltage." (Ans. 5). The Examiner finds that the Installation Instructions discloses the use of multiple batteries in a vehicle with an auxiliary HVAC system, and an electrical separator which "prevents drawing down of the engine starter batteries." (Ans. 5-6, citing Installation Instructions, Pgs. 8, 27, 28). The Examiner finds that Battery Separator also discloses combining two battery groups to assist engine starting, but which are "electrically separated if a combined voltage drops below a present level." (Ans. 6). The Examiner concludes that it would have been obvious for a person of ordinary skill in the art to "associate use of a combined voltage with the two groups of batteries, and associate electrical separation between the groups, in order to maximize auxiliary HVAC system operation time without jeopardizing vehicle starting capability" and asserts that such use of an electrical separator "amounts to a difference in design choice." (Ans. 6). The Appellant argues that both Installation Instructions and Battery Separator teach away from modifying Zeigler in the manner suggested by Appeal 2012-008637 Reexamination Control 90/009,825 Patent No. US 7,797,958 B2 8 the Examiner to result in the claimed invention which requires supplying of "power to the temperature control system when the vehicle engine is off from a combination of the first and second power sources with a combined voltage," as recited in claim 1 (App. Br. 4-5). The Appellant argues that Battery Separator merely addresses charging of two batteries when the engine is running as well as combining the two batteries to aid vehicle starting (App. Br. 5, 8-9), and directs our attention to the Declaration of Hufford which states, inter alia, that "when the engine is not running, the Battery Separator prevents supplying power to the HVAC system from two different power sources." (See App. Br. 5 (emphasis in original); Decl. Â¶ 7). The Appellant also points out that the reason for modifying the system of Zeigler set forth by the Examiner mimics the benefit of the claimed invention as set forth in the '958 patent (App. Br. 9). We agree with the Appellant. Installation Instructions is clear in its disclosure that the HVAC system is operated "independently" and "completely isolated" from the starting battery (FF 1A, 1B). Thus, it teaches that in operating the HVAC system with the vehicle engine off, the starter battery should be separated from the auxiliary battery, thereby leading one of ordinary skill in a direction divergent from that of the claimed invention. The Battery Separator discloses monitoring "the battery system" and when the "drain on the charging system" reduces the system voltage below 12.4- 12.9 volts, disconnecting the battery banks from each other via the separator (FF 2B). Hence, the Battery Separator discloses separation of the batteries during charging, which is generally when the engine is on, not when the engine is off as recited in the claims (FF 2B; see also FF 2C, 2D). The Appeal 2012-008637 Reexamination Control 90/009,825 Patent No. US 7,797,958 B2 9 testimonial evidence also unequivocally states that the separator disclosed in Installation Instructions is the same as that disclosed in the Battery Separator document, and that when the engine is off, the Battery Separator separates the starter battery and the auxiliary battery (FF 3A, 3B). The essence of the Examiner's position is that because electrical separators are known in the art, it would have been obvious to modify the system disclosed in Zeigler to attain the claimed invention as a "design choice." However, the Examiner's conclusion ignores the broader teachings of both the Installation Instructions and the Battery Separator (as supported by the declaration evidence of record) that it is undesirable to draw power from the starter battery when the vehicle engine is off. "[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art." KSR Intâ€™l v. Teleflex, Inc., 550 U.S. 398, 418 (2007). In the facts of the present case, we are of the view that a person of ordinary skill in the art, upon review of Installation Instructions and Battery Separator, "would be led in a direction divergent from the path" that was taken in the '958 patent. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994); see also In re Wesslau, 353 F.2d 238, 241 (CCPA 1965). As to the Examiner's argument that the system of Battery Separator still works "regardless of whether a vehicle engine is on or off" (Ans. 15), in particular, "when the batteries were subject to charging via a dedicated battery charger (engine off)" (Ans. 17), we observe that the Examiner's rejections do not appear to be based on reading a "battery charger" as a power source recited in the claims. In addition, when a dedicated battery Appeal 2012-008637 Reexamination Control 90/009,825 Patent No. US 7,797,958 B2 10 charger is utilized, the purpose is for charging the auxiliary and/or engine battery (FF 2B and 2D). There is no persuasive evidence that the charge applied to the main battery when the batteries are connected for charging provides "a combination of the first and second" power sources for operation of any ancillary loads, as recited in the claims. Correspondingly, we are not persuaded by this line of reasoning. The remaining disagreements between the Examiner and the Appellant with respect to Rejection 1 are moot. Rejections 2 and 3 (Ans. 7- 8) rely on the disclosures of Installation Instructions and Battery Separator as set forth in Rejection 1. The Examiner's application of Kim or Zeigler in Rejections 2 and 3, respectively, does not cure the deficiencies of Rejection 1. Hence, these rejections are also not sustained. Rejections 4-11 based on the combination of Gale and Battery Separator In these rejections, the Examiner finds that Gale discloses all of the limitations of the independent claims "except for the provision of electrically separating the batteries upon detection of low combined voltage." (Ans. 9). The Examiner finds that "Gale clearly teaches that the combination/separation device functions to combine the voltage of the two batteries to assist in engine starting." (Ans. 8; see also FF 2A). The Examiner also finds that Battery Separator discloses a battery management controller having electrical separation and concludes that it would have been obvious to a person of ordinary skill in the art "to associate electrical Appeal 2012-008637 Reexamination Control 90/009,825 Patent No. US 7,797,958 B2 11 separation with the Gale battery management controller in order to protect the batteries from excessive drain." (Ans. 9). The Appellant's arguments against these rejections are substantively the same as those proffered for Rejection 1 with respect to Battery Separator (see App. Br. 12-14, 19). We agree with the Appellant for the reasons already discussed supra. Furthermore, whereas the Examiner asserts that switch SW3 shown in Figure 2 of Gale can be used to couple either 42 volts or 84 volts (Ans. 22), as pointed out by the Appellant (Reply Br. 5), Figure 2 of Gale illustrates that voltage from only battery 14 is provided to the auxiliary load (Aux. Loads 26, which includes the HVAC system) by virtue of its receipt of electrical power via node N2 which is positioned between the connections of battery 14 and battery 20 (Gale, col. 2, ll. 44-48; Fig. 2). Thus, Rejection 4 is not sustained. As to Rejections 5-8, these rejections rely on the disclosure of Battery Separator, and the Examiner's application of Kim, Zeigler, Mehdi and Installation Instructions in Rejections 5, 6, 7 and 8, respectively, does not cure the deficiencies of Rejection 4. Correspondingly, Rejections 5-8 are likewise not sustained. CONCLUSION Because the Examiner erred in concluding that it would have been obvious to modify the systems of Zeigler or Gale based on Installation Instructions and/or Battery Separator to result in the claimed invention, Rejections 1-8 are REVERSED. Appeal 2012-008637 Reexamination Control 90/009,825 Patent No. US 7,797,958 B2 12 REVERSED KMF Patent Owner: KRIEG DEVAULT LLP One Indiana Square Suite 2800 Indianapolis, IN 46204-2079 Third Party Requester: Jeffery J. Makeever REINHART BOERNER VAN DEUREN P.C. 2215 Perrygreen Way Rockford, IL 61107