Ex Parte Carter et al

Patent Trial and Appeal BoardMar 17, 2014

11277029 (P.T.A.B. Mar. 17, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte SCOTT J. CARTER and STEPHEN E. HANNAH ____________________ Appeal 2012-001629 Application 11/277,029 Technology Center 3600 ____________________ Before: JENNIFER D. BAHR, JOHN C. KERINS, and PATRICK R. SCANLON, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-001629 Application 11/277,029 2 STATEMENT OF THE CASE Scott J. Carter and Stephen E. Hannah (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-11, 15-25, 27-34, 38, 39, 41-50, 52-66, and 70-78. The Examiner withdrew claims 12- 14, 26, and 51 from consideration.1 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. The Claimed Subject Matter Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A power generator configured for use on a non-self-powered, wheeled vehicle, the power generator comprising: a housing comprising windings; a magnetized element disposed within the housing and operable to rotate about an axis; a drive mechanism configured to cause the magnetized element to rotate in response to rotation of the wheel, wherein the rotation of the magnetized element produces electrical power in the windings so as to enable the generator to supply electrical power; and a control circuit configured to provide the electrical power at two or more operating voltages, wherein the housing, the magnetized element, and the drive mechanism are disposed within a wheel of the non-self- powered vehicle. Evidence The Examiner relied on the following evidence in rejecting the claims on appeal: Reynolds US 4,748,395 May 31, 1988 1 Office Action mailed Sep. 16, 2010, (hereinafter “Office Action”) at 1, 2. Appeal 2012-001629 Application 11/277,029 3 Moreno Conway Wu US 5,315,290 US 5,580,093 US 6,481,518 B1 May 24, 1994 Dec. 3, 1996 Nov. 19, 2002 Rejections Appellants request our review of the following rejections: I. Claims 1-6, 8, 23-25, 49, 50, 52, 59, 72, and 73 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Conway and Reynolds; II. Claims 7, 9-11, and 18-22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Conway, Reynolds, and Moreno; III. Claims 15-172 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Conway, Reynolds, and Moreno; IV. Claims 27-34, 38, 39, 41-50, 52-58, 65, 66, and 70-783, 4 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Conway, Reynolds, and Moreno; and V. Claims 60-64 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Conway, Reynolds, and Wu. 2 The Examiner’s omission of claim 17 from the statement of this rejection (Ans. 6) was ostensibly an inadvertent error. See Office Action at 4; Ans. 3 (including claim 17 among the rejected claims); id. at 3-4 (stating that every ground of rejection set forth in the Office Action is maintained except those grounds (if any) listed under the “subheading ‘WITHDRAWN REJECTIONS’”). 3 The Examiner’s omission of claim 41 from the statement of rejection (Office Action at 4; Ans. 7) was ostensibly an inadvertent error, as claim 41 is explicitly addressed in the rejection. See Office Action at 5; Ans. 7. The Amended Answer, mailed Nov. 19, 2011, suggests that claim 40 is included in this rejection, but we see no mention of claim 40 or its claim limitations in the rejection, and thus do not treat this rejection as including claim 40. 4 The Examiner withdrew claim 51 from consideration. Office Action at 2. Appeal 2012-001629 Application 11/277,029 4 OPINION All of the Examiner’s rejections rest in relevant part on the combination of Conway and Reynolds. Conway discloses a generator mounted on the wheel axle of an in-line roller skate that provides power to a pair of 1.5 volt light emitting diodes 24 on each wheel, as shown in Figure 1 and described at column 3, lines 3-28. See Ans. 5. The Examiner finds that Conway lacks “a control circuit for regulating two or more operating voltages.” Id. The Examiner thus proposes to provide Conway’s wheel generator with the dual voltage power regulation control circuit of Reynolds “in order to regulate the voltages when powering desired loads.” Id. Reynolds discloses a generator driven by a motor vehicle engine in either a 12-volt mode or a 24-volt mode to charge a pair of storage batteries in order to power various devices within the vehicle. Col. 1, line 65 to col. 2, line 43; col. 4, lines 20-30. Appellants argue that the Examiner has not articulated an apparent reason with rational underpinnings to take a simple device like Conway and add a complicated control circuit like that of Reynolds. App. Br. 11-12. Appellants also argue that the Examiner has not established that the references even could be combined, because it is not clear that Conway’s generator could even generate sufficient power to actuate Reynolds’ circuit. Id. at 12. Appellants also argue that the Examiner fails to identify any teaching or suggestion in Conway or Reynolds, alone or in combination, for an “electronic control system configured to control power usage from the reservoir based upon a level of energy in said reservoir” (claim 23), a “controller [that] is configured to monitor a level of electrical energy in the power storage device” (claim 28), or a “power management system Appeal 2012-001629 Application 11/277,029 5 configured to monitor a level of electrical energy in the storage device” (claim 38). App. Br. 14, 22, 23. The Examiner responds that Appellants’ argument that “Reynolds is more complex and . . . [is] intended for a motor vehicle rather than a skate is not . . . persuasive because the art of circuits and power generators can be applied to many forms of transportation . . . and still solve similar problems with similar results.” Ans. 9. The Examiner further responds that “circuits of various voltages are common and simply converting a system from one voltage to another may be as simple as changing a battery and is not considered undue experimentation.” Id. The Examiner also replies that Reynolds was applied “as a simple example of a two voltage system being known in the art and was not relied upon for any other structure or function.” Id. The Examiner also asserts that “although Conway’s wheel generator is intended for a skate, it could easily be applied to a number of wheel types and sizes using the state of the technology and without undue experimentation.” Id. We agree with Appellants that the Examiner has not articulated an apparent reason with rational underpinnings why a person of ordinary skill in the art would combine Conway and Reynolds as proposed. The mere assertion that Conway’s wheel generator could be applied to other wheel types and sizes does not identify a reason why a person of ordinary skill in the art would have been prompted to combine such a wheel generator with the dual voltage power regulation control circuit of Reynolds. The Examiner’s position that applying the dual voltage power circuit of Reynolds to Conway is simple and thus within the level of skill in the art is also lacking any evidentiary support. While the Examiner may have Appeal 2012-001629 Application 11/277,029 6 expertise in the claimed subject matter, this cannot take the place of concrete evidence supporting any of the challenged core factual findings upon which a patentability determination is made.5 In re Zurko, 258 F.3d 1379, 1386 (Fed. Cir. 2001). Furthermore, the Examiner has not articulated any findings or reasoning directed to the specific requirements recited in claims 23, 28, and 38 that the electronic control system be configured to monitor (claims 28 and 38), or control power usage based upon (claim 23), a level of energy or voltage in a power storage device.6 It is well settled that obviousness is not determined based on the gist of the invention. W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1548 (Fed. Cir. 1983). All claim limitations must be considered. In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). In light of the above, we do not sustain any of the Examiner’s rejections. DECISION The Examiner’s decision rejecting claims 1-11, 15-25, 27-34, 38, 39, 41-50, 52-66, and 70-78 is reversed. REVERSED llw 5 Notably, the Examiner does not identify any teachings in Moreno or Wu that would appear to overcome the deficiency in the Examiner’s combination of Conway and Reynolds. 6 Although the Examiner has not relied upon or directed our attention to these portions of Reynolds, we note that Reynolds discloses comparing the relative magnitudes of the voltages across the batteries and then operates to cause charging of the battery that has the lower voltage (col. 4, ll. 48-52).