Ex Parte AndersonDownload PDFPatent Trial and Appeal BoardJan 9, 201712885946 (P.T.A.B. Jan. 9, 2017) Copy Citation 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 Copy with citationCopy as parenthetical citation