Ex Parte Besser et al

Patent Trials and Appeals BoardMay 1, 2014

11849242 - (D) (P.T.A.B. May. 1, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/849,242 08/31/2007 David A. Besser 8158P005 5265 8791 7590 05/01/2014 BLAKELY SOKOLOFF TAYLOR & ZAFMAN 1279 Oakmead Parkway Sunnyvale, CA 94085-4040 EXAMINER AMRANY, ADI ART UNIT PAPER NUMBER 2836 MAIL DATE DELIVERY MODE 05/01/2014 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 ____________ Ex parte DAVID A. BESSER, STEFAN MATAN, and MELVIN J. BULLEN ____________ Appeal 2012-006364 Application 11/849,242 Technology Center 2800 ____________ Before CHUNG K. PAK, JEFFREY T. SMITH, and CHRISTOPHER M. KAISER, Administrative Patent Judges. KAISER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-006364 Application 11/849,242 2 This is an appeal under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1-5, 9-29, 36, 38, 39, 42, and 43. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. OPINION Appellants disclose a “power extractor [that provides power from power sources to loads and] operates to obtain impedance matching between the power source and the combination of the power extractor and the load, and between the load and the combination of the power source and the power extractor. . . . This impedance matching allows the power source to provide a greater amount of power than it would without the impedance matching.” Spec. 7 at [0051]. Claim 1, quoted below, is representative of the claimed invention: 1. A system comprising: an energy source that provides an unregulated source voltage and source current; a load; a power extractor to transfer power between the energy source and the load, wherein the power extractor transfers power with a magnitude at least partially dependent on a continuously detected power change, and wherein power extractor output voltage and output current are unregulated. Claims App., Br. 9 (some paragraphing added). Appeal 2012-006364 Application 11/849,242 3 At the time of the Final Rejection, claims 1-43 were pending, but claims 6-8, 30-35, 37, 40, and 41 were withdrawn from consideration. Final Rejection 1. The Examiner rejected claims 1-5, 9-29, 36, 38, 39, 42, and 43 under 35 U.S.C. § 112, second paragraph, as “indefinite for failing to particularly point out and distinctly claim the subject matter which [Appellants regard] as the invention.” Id. at 3. The Examiner also rejected claims 1-5, 9, 10, 12-14, 16, 36, 38, and 39 under 35 U.S.C. § 102(b) as anticipated by US Patent Publication No. 2005/00521651 (“Willner”). Id. at 4. The Examiner further rejected claims 11, 15, 17-20, 42, and 43 under 35 U.S.C. § 103(a) as obvious over Willner and claims 21-29 under 35 U.S.C. § 103(a) as obvious over the combination of Willner and US Patent No. 7,408,2682 (“Nocentini”). Id. at 7-10. Appellants appeal each of the anticipation and obviousness rejections. App. Br. 3. The indefiniteness rejection, however, does not appear in the list of “Grounds of Rejection to Be Reviewed on Appeal” presented in Appellants’ Brief. Id. Appellants also do not present any arguments with respect to this rejection under a separate heading in the “Argument” section of the Brief. Id. at 3-8. Although the Examiner stated in the Examiner’s Answer that the failure to “rebut[] or address[] this rejection in the Brief” constituted a concession with respect to the indefiniteness rejection, Ans. 12, Appellants did not file a Reply Brief containing arguments directed to the indefiniteness rejection maintained by the Examiner.3 1 Willner et al., US 2005/0052165 A1, published Mar. 10, 2005. 2 Nocentini et al., US 7,408,268 B1, issued Aug. 5, 2008. 3 Appellants did not file any Reply Brief at all. Appeal 2012-006364 Application 11/849,242 4 Accordingly, we affirm the indefiniteness rejection as a matter of form. See Manual of Patent Examining Procedure (MPEP), 8th ed., 8th rev., § 1205.02 (July 2010)4 (“If a ground of rejection stated by the examiner is not addressed in the appellant’s brief, that ground of rejection will be summarily sustained by the Board.”). The indefiniteness rejection that we affirm applies to all claims that have not been withdrawn from consideration. As noted above, the Examiner also rejected these claims as anticipated by or obvious over the prior art. Although the anticipation and obviousness rejections might be proper under the Examiner’s conditional interpretation of the claims, there is no dispute that the actual scope of the claims is indefinite. In order to address the propriety of the anticipation and obviousness rejections at this time, we would be required to speculate as to the scope of the claims, an approach we decline to take. See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962) (it is improper to “rely[] on what at best are speculative assumptions as to the meaning of the claims” as the basis for a rejection). Accordingly, we do not reach the Examiner’s rejections of the claims under §§ 102(b) and 103(a). ORDER The Examiner’s rejection of claims 1-5, 9-29, 36, 38, 39, 42, and 43 under 35 U.S.C. § 112, second paragraph is affirmed. 4 The 8th revision of the 8th edition of the MPEP was the version in effect at the time that Appellants filed their notice of appeal. Appeal 2012-006364 Application 11/849,242 5 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. AFFIRMED bar