Ex Parte Anderson

Patent Trial and Appeal Board

Jan 9, 2017

12885946 (P.T.A.B. Jan. 9, 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.
9060-291 9701
EXAMINER
PHAM, DUC M
ART UNIT PAPER NUMBER
2836
MAIL DATE DELIVERY MODE
12/885,946 09/20/2010
101681 7590
MYERS BIGEL, P. A.
P.O. BOX 37428
RALEIGH, NC 27627
01/09/2017
Jason Scott Anderson
01/09/2017 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 JASON SCOTT ANDERSON
Appeal 2015-007774
Application 12/885,946
Technology Center 2800
Before: JEFFREY T. SMITH, JULIA HEANEY, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1—7, 10, and 21—28. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In our Opinion below, we refer to the Specification filed September 20,
2010 (“Spec.”); the Final Action mailed August 13, 2014 (“Final Act.”), the
Appeal Brief filed January 6, 2015 (“App. Br.”), and the Examiner’s Answer
mailed June 17, 2015 (“Ans.”).
2 Appellant identifies Eaton Corporation as the real party in interest. App.
Br. 1.
Appeal 2015-007774
Application 12/885,946
The claims are directed to uninterruptible power supply systems and
methods employing an uninterrupted power supply system. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An uninterruptible power supply (UPS) system
comprising:
a first UPS circuit having first power input configured to
be coupled to a backup generator, a second power input
configured to be coupled to an energy storage device and a first
inverter circuit having a power output configured to be coupled
to a load;
a second UPS circuit having a first power input
configured to be coupled to a utility power source, a second
power input configured to be coupled to an energy storage
device and a second inverter circuit having a power output
configured to be coupled to the load in common with the power
output of the first UPS circuit; and
a control circuit configured to control the first and second
UPS circuits and the generator and to selectively transfer power
to the load using the first and second UPS circuits.
App. Br. 9.
The Examiner relies
REFERENCES
on the following prior art in rejecting the claims
appeal:
Jungreis et al. US 6,134,124 Oct. 17, 2000
(“Jungreis”)
Yamamoto US 6,960,843 B2 Nov. 1,2005
Edelen et al. US 2006/0226706 Al Oct. 12, 2006
(“Edelen”)
2
Appeal 2015-007774
Application 12/885,946
REJECTIONS
The Examiner rejects the claims under 35 U.S.C. § 103(a) as follows:
claims 1—7, 10, 21—26, and 28 over Edelen in view of Jungreis; claim 27
over Edelen in view of Jungreis and further in view of Yamamoto. Final
Act. 2, 5.
OPINION
Appellant argues the patentability of independent claims 1 and 21, and
their respective dependent claims as a group. App. Br. 4—6. We select claim
1 as representative of the group. Appellant also argues for the separate
patentability of claims 3, 24, and 27. Id. at 6—7. We address these claims
separately below.
Rejection of claim 1
The Examiner finds that Edelen teaches a UPS system comprising a
controller (control circuit) configured to control the first and second UPS
circuits and to selectively transfer power to the load to the first and second
UPS circuits. Final Act. 3. The Examiner finds that Edelen teaches all
limitations of claim 1 except “wherein the controller controls the generator.”
Id. The Examiner finds that Jungreis teaches a universal distributed-
resource interface wherein the controller controls the generator and UPS
circuit. Id. In the Answer, the Examiner points out that Edelen discloses
multiple UPS systems used to provide power to a load, but does not disclose
a generator. Ans. 2. Jungreis discloses a UPS systems employing different
types of generators to power the load when the main power is unavailable.
Id. The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of the invention to combine the references
3
Appeal 2015-007774
Application 12/885,946
in order to control and provide the power output to the load. Final Act. 3;
Ans. 3.
Appellant argues that Jungreis does not teach interoperation of the
generators shown with “first and second UPSs as described, for example, in
Edelen.” App. Br. 5 (emphasis in original). However, each reference cited
by the Examiner must be read, not in isolation, but for what it fairly teaches
in combination with the prior art as a whole. See In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Nonobviousness cannot be
established by attacking references individually where the rejection is based
on a combination of references.”). The cited references establish that the
combination of a controller and two UPS systems were known to persons of
ordinary skill in the art (Edelen) and the combination of a controller and a
UPS system in conjunction with a generator was also known (Jungreis). A
person of ordinary skill in the art would have reasonably expected that
controller would have been suitable for regulating the operation of a system
that comprises multiple power sources, i.e., two UPS systems and a
generator. A person of ordinary skill in the art would have had sufficient
skill to configure a controller to operate multiple power sources.
Appellant further argues that the Final Action provides no evidence of
teaching or suggestion of integration of a backup generator as described in
Jungreis with the inverter configuration in claim 1, and concludes that
Jungreis is not properly combinable with Edelen. App. Br. 5. In Appellant’s
opinion, the Examiner’s stated rationale for combining the references, i.e.,
“in order to control and provide the power output of the load,” is
4
Appeal 2015-007774
Application 12/885,946
insufficient. Id. The Appellant contends that the Examiner’s conclusion is
based on hindsight.3
A claim is obvious where it ‘“simply arranges old elements with each
performing the same function it had been known to perform’ and yields no
more than one would expect from such an arrangement.” KSR Int 7 Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007) (quotes and citation omitted); In re
Mayne, 104 F.3d 1339, 1340 (Fed. Cir. 1997) (“Because the applicants
merely substituted one element known in the art for a known equivalent, this
court affirms [the rejection for obviousness].”). The test for obviousness is
not whether the claimed invention is expressly suggested in any one or all of
the references, but whether the claimed subject matter would have been
obvious to those of ordinary skill in the art in light of the combined
teachings of those references. See In re Keller, 642 F.2d 413, 425 (CCPA
1981). One of ordinary skill can use his or her ordinary skill, creativity, and
common sense to make the necessary adjustments and further modifications
to result in a properly functioning device. See KSR, 550 U.S. at 418 (“a
court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ”). Furthermore, “if 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.” See id. at 417.
3 In the Final Action, the Examiner stated, in response to Appellant’s
arguments, “[s]ince [] both of Edelen and Jungreis are in the same field, it is
obvious to replace the generator and controller of Jungreis into [one] on the
UPS systems in Edelen in order to achieve [] all the features of the
applicant’s invention.” Ans. 6.
5
Appeal 2015-007774
Application 12/885,946
Moreover, “[ojbviousness does not require absolute predictability of
success ... all that is required is a reasonable expectation of success.” In re
Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (citingIn re O’Farrell, 853
F.2d 894, 903-04 (Fed. Cir. 1988)).
Appellant’s arguments are not persuasive of reversible error. As set
forth in the present record, the Examiner finds Edelen discloses the
combination of two UPS systems including an inverter circuit. Final Act 2.
It is not been disputed that UPS systems were known at the time of the
claimed invention. See Spec. 1 (Background). Indeed, use of a UPS system
in conjunction with a generator was known, as well. Id.; see also Jungreis
Fig. 1; col. 1,11. 44-47, 58—60. A person of ordinary skill in the art would
have reasonably expected that the controller would have been suitable for
regulating the operation of a system that comprises multiple power sources,
i.e., two UPS systems and a generator as required by the claimed invention.
Rejection of claims 3 and 24
Appellant argues for the separate patentability of claims 3 (depending
from claim 1) and 24 (depending from claim 21). Claim 3 recites “wherein
the control circuit is configured to activate the backup generator and to cause
the first UPS circuit to provide power to the load from the energy storage
device responsive to the failure of the second UPS circuit and/or the utility
power source coupled to the power input of the second UPS circuit until the
backup generator is available to support the load.” Similarly, claim 24
recites “providing power to the load from the energy storage device
responsive to the failure of the second UPS circuit and/or the utility power
source until the backup generator is available to support the load.” App. Br.
9, 11 (Claims App’x).
6
Appeal 2015-007774
Application 12/885,946
Appellant contends that the Examiner’s citations to Edelen and
Jungreis do not teach these elements of claims 3 and 24. Id. at 7—A.
Appellant argues the references individually, and for the reasons above, such
argument is not persuasive. See In re Merck, 800 F.2d at 1097
(“Nonobviousness cannot be established by attacking references individually
where the rejection is based on a combination of references.”). In addition,
the modification necessary would not have been beyond the skill of one of
ordinary skill in the art at the time of the invention. See KSR, 550 U.S. at
418. A person of ordinary skill in the art would have had sufficient skill to
configure a controller to operate multiple power sources including the
regulating the activation of the generator as well as the first and second UPS
circuits.
Appellant’s arguments do not establish reversible error in the
Examiner’s rejection of claims 3 and 24.
Rejection of claim 27
Claim 27 requires “wherein the control circuit is configured to cause
the first and second UPS circuits to concurrently provide power to the load
from the backup generator and the utility power source to support testing of
the backup generator.” App. Br. 12 (Claims App’x).
The Examiner explains that the system disclosed by Edelen includes a
back-up generator in its power supply source, but acknowledges that the
combination of Edelen and Jungreis does not disclose how to test the back­
up generator. Ans. 4. The Examiner finds that Yamamoto discloses a
parallel operating system for UPS systems wherein the system is used to
support testing. Final Act. 6.
7
Appeal 2015-007774
Application 12/885,946
Appellant argues that the portion of Yamamoto cited by the Examiner
does not mention back-up generators or generator testing. App. Br. 7.
Appellant contends, therefore, that Yamamoto fails to provide the alleged
teaching. Id.
Appellant attacks Yamamoto as an individual reference, and ignores
the teachings of the combination of references over which claim 27 is
rejected. See In re Merck, 800 F.2d at 1097.
The Examiner finds that Yamamoto is in the same field as Edelen and
Jungreis, and teaches parallel UPS systems that can be used to test both of
the UPS circuits of the system in order to control the output to the load from
the power source. Ans. 4. The Examiner concludes that one of ordinary
skill in the art at the time of the invention would have been able to add the
testing function of Yamamoto into the system of Edelen and Jungreis. Id.
Appellant’s arguments reveal no reversible error in the Examiner’s
rejection of claim 27.
The Examiner did not err in rejecting claims 1—7, 10, and 21—28.
DECISION
For the above reasons, the Examiner’s rejection of claims 1—7, 10, and
21—28 is affirmed.
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
8