Ex Parte Ambroziak et al

Patent Trial and Appeal Board

Aug 29, 2017

12502041 (P.T.A.B. Aug. 29, 2017)

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.
12/502,041 07/13/2009 Jeffrey R. Ambroziak TL01-001-02 5469
89411 7590
Fincham Downs, LLC
90 Grove St.
Suite 205
Ridgefield, CT 06877
EXAMINER
BORISSOV, IGORN
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
08/31/2017 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 @ finchamdowns. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY R. AMBROZIAK and
CARSON C.K. FINCHAM
Appeal 2015-006085
Application 12/502,0411
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
An oral hearing was held on June 6, 2017.
STATEMENT OF THE CASE
Jeffrey R. Ambroziak, et al. (Appellants) seek our review under 35
U.S.C. § 134(a) of the Final Rejection of claims 1, 2, 7, 8, 11, 21-25, and
36-41. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM-IN-PART.
1 The Appellants identify Jeffrey R. Ambroziak and Carson C.K. Fincham
the real party in interest. App. Br. 3.
Appeal 2015-006085
Application 12/502,041
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. An electrical charging system, comprising:
a vehicle sensor;
a communication device;
a processor in communication with the vehicle sensor and the
communication device; and
a memory in communication with the processor, the memory
storing instructions that when executed by the processor cause the
processor to:
(a) receive, from the vehicle sensor, information
indicative of a presence of a vehicle in a parking space;
(b) receive, from the communication device, information
indicative of one or more charging preferences
corresponding to a desired charging of the vehicle,
wherein the one or more charging preferences are defined
by an operator of the vehicle;
(c) determine a first value of a dynamic attribute of an
electric charge provider;
(d) determine, based at least on the one or more charging
preferences and the first value of the dynamic attribute, a
charging schedule for the vehicle;
(e) initiate a charging of the vehicle in accordance with
the charging schedule;
(f) retrieve a second value of the at least one dynamic
attribute; and
(g) repeat (d) and (e), utilizing the retrieved second value
of the dynamic attribute as the first value of the dynamic
attribute.
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Appeal 2015-006085
Application 12/502,041
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Lemelson US 4,347,472 Aug. 31, 1982
Kominami US 2003/0152088 A1 Aug. 14, 2003
Pollack US 2008/0039989 A1 Leb. 14, 2008
Pryor US 7,402,978 B2 July 22, 2008
Kelty US 2009/0021385 A1 Jan. 22, 2009
McLeod US 7,778,746 B2 Aug. 17,2010
The following rejections are before us for review:
1. Claim 38 is rejected under 35 U.S.C. § 112, first paragraph, for failing
to comply with the written description requirement.
2. Claims 1, 2, 7, 8, 11, 21, 22, 25 and 39-41 are rejected under 35
U.S.C. § 103(a) as being unpatentable over McLeod, Lemelson, Pryor
and Pollack.
3. Claims 23, 24 and 36 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over McLeod, Lemelson, Pryor, Pollack and Kominami.
4. Claims 37 and 38 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over McLeod, Lemelson, Pryor, Pollack, Kominami and
Kelty.
ISSUES
Did the Examiner err in rejecting claim 38 under 35 U.S.C. § 112,
first paragraph, for failing to comply with the written description
requirement?
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Appeal 2015-006085
Application 12/502,041
Did the Examiner err in rejecting claims 1, 2, 7, 8, 11, 21, 22, 25 and
39-41 rejected under 35 U.S.C. § 103(a) as being unpatentable over
McLeod, Lemelson, Pryor and Pollack?
Did the Examiner err in rejecting claims 23, 24 and 36 rejected under
35 U.S.C. § 103(a) as being unpatentable over McLeod, Lemelson, Pryor,
Pollack and Kominami?
Did the Examiner err in rejecting claims 37 and 38 rejected under 35
U.S.C. § 103(a) as being unpatentable over McLeod, Lemelson, Pryor,
Pollack, Kominami and Kelty?
ANALYSIS
The rejection of claim 38 under 35 U.S.C. § 112, first paragraph, for failing
to comply with the written description requirement.
The Examiner's position is that "Applicant's specification does not
provide support for [the claim] limitation [alert that the preference
specifying that the vehicle needs to be charged to allow travel of a
corresponding distance by a certain time cannot be achieved (claim 38)]."
Pinal Act. 3.
The Appellants argue, inter alia, that "such concept is specifically
described in the specification as filed (e.g., at least at paragraph [0089])."
App. Br. 22. This argument is repeated in the Reply Brief (see Reply Br. 2).
As in the Reply Brief (Reply Br. 3), we reproduce para. 89 of the
Specification (as filed on July 13, 2009):
[0089] In addition to computing and implementing a charging
regimen to meet the user specified parameters, the ECS can
communicate with the user/driver to alert the driver to potential
problems. Lor example, with reference to the example above,
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Appeal 2015-006085
Application 12/502,041
the ECS may determine that the cost of electricity will be below
$. 10/kWh for only two of the next eight hours. The ECS may
send a message to this effect to the user via a user specified
node, such as a message on a dashboard display device, a
message sent to a cell phone, an email account or the like. The
user may be enabled to reply so as to modify or override a
predetermined parameter selection. For example, the user may
relax the maximum price for electricity attribute. In addition,
the predefined parameter selections may include directions for
actions to be taken when the predetermined charging regime
cannot be met.
The Appellants submit that "[a]t least in light of the above-quoted
paragraph from Appellants' specification as filed, it should be clear that the
Examiner has failed to set forth any evidence that claim 38 lacks written
description support." Reply Br. 3.
Compliance with the written description requirement is a question of
fact. Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed.
Cir. 1985).
We have carefully reviewed para. 89 of the Specification. The term
"alert" is indeed recited. But it is recited in the context of the "ECS [electric
charging system] [ ] communicat[ing] with the user/driver to alert the driver
to potential problems." Para. 89. This does not equate to or otherwise
disclose an "indication of the charging schedule comprising] an alert that
the preference specifying that the vehicle needs to be charged to allow travel
of a corresponding distance by a certain time cannot be achieved" (claim 38)
as claimed. Having the ECS communicate with the user/driver to alert the
driver to potential problems (para. 89) is not equivalent to having an alert as
part of an indication of the charging schedule (claim 38). . [T]he
specification must contain an equivalent description of the claimed subject
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Application 12/502,041
matter.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir.
1997). “What is claimed by the patent application must be the same as what
is disclosed in the specification; otherwise the patent should not issue.”
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 736
(2002).
Para. 89 of the Specification provides inadequate written descriptive
support for the claim limitation at issue. Thus, the argument, which relies on
para. 89 of the Specification, is unpersuasive as to error in the rejection.
The Examiner's position is clear: the Specification provides no
description of said claim limitation. That is a fact a preponderance of the
evidence supports.
The remaining arguments have been considered but are unpersuasive
as to error in the rejection.
Accordingly, the rejection is sustained.
The rejection of claims 1, 2, 7, 8, 11, 21, 22, 25 and 39-41 are rejected
under 35 U.S.C. § 103(a) as being unpatentable over McLeod, Lemelson,
Pryor and Pollack.
Independent claim 1 sets out the following steps:
(c) determine a first value of a dynamic attribute of an electric
charge provider;
(d) determine, based at least on the one or more charging
preferences and the first value of the dynamic attribute, a
charging schedule for the vehicle;
(e) initiate a charging of the vehicle in accordance with the
charging schedule;
(f) retrieve a second value of the at least one dynamic attribute.
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Application 12/502,041
According to the Examiner (Final Rej. 6), these steps are disclosed at
col. 8, lines 53-63 of McLeod, which we reproduce below:
The charging schedule for a specific vehicle 21 is based upon
energy rate ($kWh) information for on-peak and off-peak utility
rates, and the length of time to recharge. The base station 17
processor 23 determines a charge initiation window from when
off-peak hours start and end, and assigns vehicles 21 exhibiting
the deepest state of discharge the earliest start time and those
vehicles 21 exhibiting lesser degrees of discharge start times
near the end of the window, thereby staggering the load placed
on the electrical system.
In so finding, the Examiner construed the claim phrase "dynamic
attribute" to cover McLeod's disclosed "energy rate ($kWh) information for
on-peak and off-peak utility rates." See Ans. 6.
Assuming arguendo that McLeod's disclosed "energy rate ($kWh)
information for on-peak and off-peak utility rates" is encompassed by the
claim phrase "dynamic attribute" as that claim phrase is reasonably broadly
construed, the question is whether McLeod discloses or would lead one of
ordinary skill in the art to
(c) determine a first value of a ["energy rate ($kWh) information for
on-peak and off-peak utility rates"] of an electric charge provider;
(d) determine, based at least on the one or more charging preferences
and the first value of the ["energy rate ($kWh) information for on-
peak and off-peak utility rates"], a charging schedule for the vehicle;
(e) initiate a charging of the vehicle in accordance with the charging
schedule;
(f) retrieve a second value of the ["energy rate ($kWh) information for
on-peak and off-peak utility rates"].
In other words, claim 1 calls for determining a first value (e.g.,
"energy rate ($kWh) information for ... [an] off-peak utility rate[ ],")
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Application 12/502,041
"determining], based at least on [a] charging preference[ ] and the first
value ..., a charging schedule for the vehicle," "initiating] a charging of the
vehicle in accordance with the charging schedule," and "retrieving] a
second value."
In contrast, lines 53-63 of col. 8 of McLeod describe a scenario
whereby, within "a charge initiation window from when off-peak hours start
and end," "vehicles [ ] exhibiting the deepest state of discharge" are charged
first and vehicles with "lesser degrees of discharge [are given] start times
near the end of the window."
Arguably, in setting "a charge initiation window from when off-peak
hours start and end," McLeod necessarily performs, antecedent-wise, step (c)
of claim 1; that is, (c) determin[ing] a first value of a ["energy rate ($kWh)
information for on-peak and off-peak utility rates"] of an electric charge
provider.
Also arguably, in setting "a charge initiation window from when off-
peak hours start and end," McLeod has determined a charging schedule for a
vehicle based on said first value of the ["energy rate ($kWh) information for
on-peak and off-peak utility rates"].
However, step (d) requires more. It requires determining a charging
schedule, "based at least on the one or more charging preferences" in
addition to the first value of the ["energy rate ($kWh) information for on-
peak and off-peak utility rates"]." The charging preference according to
claim 1 is "receive[d] from [a] communication device [and is] information
indicative of one or more charging preferences corresponding to a desired
charging of the vehicle, wherein the one or more charging preferences are
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Application 12/502,041
defined by an operator of the vehicle." The Examiner has not adequately
explained how one with an ordinary skill in the art would reach said step.
While McLeod discloses a "charging schedule for a specific vehicle
[ ] based [on] the length of time to recharge" (see col. 8, lines 53-63), this is
insufficient as evidence that McLeod discloses a charging schedule "based at
least on the one or more charging preferences"; wherein said charging
preferences are "receive[d] from [a] communication device [and is]
information indicative of one or more charging preferences corresponding to
a desired charging of the vehicle, wherein the one or more charging
preferences are defined by an operator of the vehicle." Claim 1.
The Examiner appears to have recognized this because the Examiner
states:
The combination of McLeod and Lemelson does not
specifically teach that said received from the vehicle
information includes charging preferences corresponding to a
charging of the vehicle, wherein the one or more charging
preferences are defined by an operator, which is disclosed in
Pryor (selecting a charge mode by a user via a user interface
120 C. 3, L. 40-50, 65-68; C. 4, L. 6-30, 47-48, 58-64).
Furthermore, defining charging preferences by the user of the
vehicle indicates the "desired" limitation.
It would have been obvious to one having ordinary skill
in the art at the time of the invention to modify the combination
to include the recited limitations, as disclosed in Pryor, since
the claimed invention is merely a combination of old elements .
Final Rej. 5-6. But the Examiner does not explain why one of ordinary skill
would be led to modify McLeod to include user interfaces for selecting a
charge mode by users as Pryor discloses. McLeod discloses a "charging
schedule for a specific vehicle [ ] based [on] the length of time to recharge"
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Application 12/502,041
(see col. 8, lines 53-63). Why one would modify or substitute that set
schedule to accommodate a schedule under a user's control via an interface
for selecting a charge mode is not adequately explained.
For the foregoing reasons, a prima facie case of obviousness for the
subject matter of claim 1, and the claims dependent on claim 1, has not been
made out by a preponderance of the evidence. We reach the same conclusion
as to the other independent claim (claim 39) and the claims depending
therefrom - which also calls for "receiving], from the communication
device, information indicative of one or more charging preferences
corresponding to a desired charging of the vehicle, wherein the one or more
charging preferences are defined by an operator of the
vehicle" and "determining], based at least on the one or more charging
preferences and at least one current value of a dynamic attribute of an
electric charge provider, a charging schedule for the vehicle."
The rejection of claims 23, 24 and 36 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over McLeod, Lemelson, Pryor, Pollack and
Kominami.
The rejection of claims 37 and 38 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over McLeod, Lemelson, Pryor, Pollack, Kominami and
Kelty.
CONCLUSIONS
The rejection of claim 38 under 35 U.S.C. § 112, first paragraph, for
failing to comply with the written description requirement is affirmed.
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Appeal 2015-006085
Application 12/502,041
The rejection of claims 1, 2, 7, 8, 11, 21, 22, 25 and 39-41 are rejected
under 35 U.S.C. § 103(a) as being unpatentable over McLeod, Lemelson,
Pryor and Pollack is reversed.
The rejection of claims 23, 24 and 36 are rejected under 35 U.S.C. §
103(a) as being unpatentable over McLeod, Lemelson, Pryor, Pollack and
Kominami is reversed.
The rejection of claims 37 and 38 are rejected under 35 U.S.C. §
103(a) as being unpatentable over McLeod, Lemelson, Pryor, Pollack,
Kominami and Kelty is reversed.
DECISION
The decision of the Examiner to reject claims 1,2, 7, 8, 11, 21-25, and
36-41 is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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