Ex Parte Edwards et al

Patent Trials and Appeals Board

Feb 27, 2019

14849232 - (D) (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/849,232 09/09/2015
27820 7590 03/01/2019
WITHROW & TERRANOVA, P.L.L.C.
106 Pinedale Springs Way
Cary, NC 27511
FIRST NAMED INVENTOR
Jesse W. Edwards
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1242-036C 4452
EXAMINER
KING, BRIAN M
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
03/01/2019 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):
patents@wt-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JESSE W. EDWARDS,
ROBERT JOSEPH THERRIEN, DANIEL BARUS,
MARSHALL STANLEY, ABHISHEK Y ADA V, and
DANIEL SW ANN 1
Appeal2018-004066
Application 14/849,232
Technology Center 3700
Before JENNIFER D. BAHR, BRANDON J. WARNER, and
BRENT M. DOUGAL, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-7 and 9. 2 We have jurisdiction under 35 U.S.C.
§ 6(b ). We REVERSE.
1 Phononic Devices, Inc. (Appellant) is the applicant as provided in
37 C.F.R. § 1.46 and is identified in the Appeal Brief (filed Jan. 13, 2017,
hereinafter "Br.") as the real party in interest. Br. 2.
2 Claims 10-15 stand withdrawn from consideration. Final Act. 1 ( Office
Action Summary).
Appeal2018-004066
Application 14/849,232
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below from page 3 of the Claims Appendix
submitted September 21, 2017 (hereinafter "Claims Appendix" or "Claims
App."), 3 is the only independent claim involved in this appeal and is
illustrative of the claimed subject matter.
1. A method of operating a thermoelectric module to cool a
cooling chamber, comprising:
providing a first amount of power to the thermoelectric
module;
determining that a temperature of a hot side of the
thermoelectric module is above a first threshold; and
providing a second amount of power to the
thermoelectric module that is less than the first amount of
power, wherein the second amount of power is at least an
amount of power such that a temperature of the cooling
chamber does not increase;
determining that the temperature of the hot side of the
thermoelectric module is below a second threshold; and
providing a third amount of power to the thermoelectric
module.
REJECTIONS
I. Claim 7 stands rejected under 35 U.S.C. § 112(b) as indefinite.
II. Claims 1-5, 7, and 9 stand rejected under 35 U.S.C. § 103 as
unpatentable over Busier (US 2008/0098750 Al, published May 1,
2008) and Elwart (US 2008/0098972 Al, published May 1, 2008).
3 When referring to page numbers of the Claims Appendix, we use the
pagination provided by Appellant in the Response to Notification ofNon-
Compliant Appeal Brief, which includes the Claims Appendix, beginning on
page 3.
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Application 14/849,232
III. Claim 6 stands rejected under 35 U.S.C. § 103 as unpatentable
over Busier, Elwart, and Gillen (US 6,345,507 Bl, issued Feb. 12,
2002).
DISCUSSION
Re} ection I-Indefiniteness
Claim 7 recites that "the first threshold indicates that the
thermoelectric module may be damaged by being operated at temperatures
above the first threshold." Claims App. 3. The Examiner determines that
the metes and bounds of "may be damaged" are unclear. Final Act. 2;
Ans. 2.
Appellant responds that one of skill in the art would appreciate that
thermoelectric modules have a temperature range in which they are designed
to operate and that the upper limit of this temperature range is a temperature
above which the likelihood of the module being damaged is greater than
some acceptable level, as determined by statistical analysis. Br. 8.
Appellant also contends that the Examiner's finding that Busier discloses
this feature in paragraph 59 provides evidence that persons having ordinary
skill in the art would interpret "may be damaged by being operated at
temperatures above the first threshold" in the manner set forth by Appellant.
Id. at 9.
The Examiner maintains that defining the first threshold in terms of a
level above which there is no certainty of damage occurring "is unclear what
the threshold would be for this to be positively recited because it is unclear
at what point 'damage' may occur even with a prescribed threshold because
it is defined in terms of what may happen and not what the threshold
actually is." Ans. 8. The Examiner adds that the fact that the prior art (i.e.,
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Application 14/849,232
Busier) "discusses an area for which damage may occur" is not persuasive
that one of ordinary skill in the art would understand what is meant by the
claim language. Id.
Claims, when read in light of the specification, must "reasonably
apprise those skilled in the art both of the utilization and scope of the
invention" using language "as precise as the subject matter permits." In re
Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). In determining whether a
claim is definite under 35 U.S.C. § 112(b), "[t]he USPTO, in examining an
application, is obliged to test the claims for reasonable precision according
to [this principle]." Id.
Claim 7 requires a step of determining that a temperature of the hot
side of the thermoelectric module is above a temperature beyond which
damage may occur. Claims App. 3. As discussed above, Appellant argues
that those skilled in the art would understand this temperature to be the
upper limit of the temperature range in which the module is designed to
operate with a reasonable expectation, based on statistical data, of not
incurring damage (Br. 8), and the Examiner does not specifically dispute that
persons of ordinary skill in the art would interpret "the first threshold
indicates that the thermoelectric module may be damaged" in this manner.
Rather, the Examiner's position appears to be that the limitation is indefinite
because neither the claim nor the Specification specifies the particular
numerical value of that threshold.
The threshold temperature indicating that the thermoelectric module
may be damaged (i.e., the upper limit of the design operating range of the
module) depends on the particular thermoelectric module used in the
method, and persons skilled in the art would understand that this value
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Application 14/849,232
would typically be provided as one of the product specifications for users of
the module. As long as those of ordinary skill in the art would understand
how to obtain the recited threshold temperature, 35 U.S.C. § 112(b) requires
nothing more. See Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F .2d
1565, 1576 (Fed. Cir. 1986). "The patent law does not require that all
possible [ values for all commercially available thermoelectric modules] be
listed in the [application], let alone that they be listed in the claims." Id.
For the above reasons, the Examiner does not persuade us that the
metes and bounds of the language of claim 7 are unclear or that the language
is not "as precise as the subject matter permits." See In re Packard, 751
F.3d at 1313. Accordingly, we do not sustain the rejection of claim 7 under
35 U.S.C. § 112(b ).
Rejection II-Obviousness (Claims 1-5, 7, and 9)
Claim 1 recites, inter alia, a step of providing a first amount of power
to the thermoelectric module, a step of providing a second amount of power
to the thermoelectric module that is less than the first amount of power and
is at least an amount of power such that a cooling chamber temperature does
not increase, and a step of providing a third amount of power to the
thermoelectric module. Claims App. 3. Appellant's Specification discloses
that the steps of providing the first and second amounts of power may, in
some embodiments, comprise providing a first amount of current and
providing a second amount of current and may, in some embodiments,
comprise providing a first amount of voltage and providing a second amount
of voltage. Spec. ,r 11. Appellant's Specification also discusses selectively
controlling an amount of power to the thermoelectric modules ( also referred
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Application 14/849,232
to as "TEMs") as distinct from selectively controlling a duty cycle of the
thermoelectric modules. See id. ,r 40 ( disclosing that "the controller 16
operates to selectively activate/deactivate the TEMs 22, selectively control
an amount of power provided to the TEMs 22, and/or selectively control a
duty cycle of the TEMs 22 to maintain the desired set point temperature").
Consistent with Appellant's Specification, we construe the steps of
providing a first amount of power and providing a second amount of power
less than a first amount of power as requiring providing power at two
different voltages or at two different currents; 4 simply adjusting the pulse
width or duty cycle of power provided, without changing either the current
or the voltage at which power is provided, would not constitute providing a
first amount of power and providing a second amount of power less than the
first amount of power. Further, where pulse width modulation is used to
provide power to the thermoelectric modules, time intervals between pulses,
in which a thermoelectric module is switched to an inactive or "OFF" state
do not constitute providing a second amount of power less than the amount
of power provided during the pulse, because power is not provided during
these intervals. See Br. 12-13 (pointing out Busier provides no voltage
during the "OFF" state of the Peltier module and, thus, the "OFF" state
"cannot be used to show the claimed 'second amount of power"').
The Examiner's rejection of claim 1 is not a model of clarity. See
Final Act. 3-5; Ans. 3-5. It appears that the Examiner reads the claimed
"thermoelectric module" on multiple groups of the Peltier modules that
4 We construe the terminology "amount of power" in the conventional
manner as voltage-times-current, such that changing one of voltage or
current produces a different amount of power.
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Application 14/849,232
Busier discloses. See id. at 3 (referring to "Figures 4 and 5, the single
module formed by six groups of Peltier modules"). Appellant does not
appear to contest the position of the Examiner in this regard. See Br. passim.
The Examiner finds that Busier provides a second amount of power less than
the first amount of power to the thermoelectric module because "the power
would change when an air temperature changes." Id.
Busier discloses, and the Examiner appears to rely on, switching the
Peltier modules with "an AC type power modulation" using a "PWM or
Pulse Width Modulation chip drive" in a manner directly proportional to air
and coolant temperatures sensed by a thermostat, wherein "[ m ]utable phases
supplied by the" PWM chip drive "allow for better efficiency and variable
current dependent on demand." Busier ,r 51. More specifically, Busier's
PWM chip drive modulates the power supplied to each Peltier module using
a variable duty cycle determined based on inputs from the thermostat and the
fan speed selection. Id. ,r 54. As shown in Figure 6, some of Busier's
Peltier modules "receive a timed voltage pulse in an ordered or successive
manner while the other [Peltier] modules are switched to an inactive ( or
'OFF') state." Id. ,r 55; Fig. 6 (showing each Peltier module receiving 12
Volts during its timed voltage pulse and O Volts between pulses). Changing
the duty cycle when an air temperature changes (thereby changing the input
from the thermostat) merely changes the percentage of time over during
which each Peltier module receives a voltage pulse, but does not change the
amount of power (i.e., the amount of voltage) provided to the Peltier
modules. Thus, reducing the duty cycle (whether by reducing the pulse
frequency or reducing the pulse width) as the air temperature changes does
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Application 14/849,232
not constitute providing a second amount of power that is less than the first
amount of power, as recited in claim 1.
In response to Appellant's arguments, the Examiner emphasizes that
Busier's Peltier modules are "considered to be one large module in claim 1,"
and further explains:
Other operations such as the one recited in paragraph 56 recite
hi-low power settings where PMW would tum on part or all of
the modules and as such, a second amount of power would be
achieved such as that recited in paragraph 60, where the
modules are not off but see a reduced pulse width. As such, as
shown in Paragraph, the PMW signal of Busier is designed to
be able to modulate each individual component of the overall
module system in order to operate as desired the individual
Peltier cells. Thus, the picture [ A Jppellant provides shows an
operation for the overall module of the system where individual
Peltier cells, each part of the overall module are cycled on and
off as opposed to running all of the cells to provide the
necessary cooling which would provide two different modes
one where full cooling was provided and one where as
necessary lesser cooling was provided in order to achieve the
same goal with a lower power requirement.
Ans. 9.
In this explanation, the Examiner refers to both the Hi-Low power
settings disclosed by Busier in paragraphs 56 and 62 and the reduced pulse
width operation described by Busier in paragraph 60. In particular, Busier
discloses that "when the temperature is achieved," the thermostat will
override the switch settings, not turning the Peltier modules totally off, but
reducing the pulse width, thereby reducing power consumption. Busier ,r 60.
This reduction in pulse width does not constitute providing a second amount
of power that is less than the first amount of power, as recited in claim 1, as
discussed above.
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Application 14/849,232
Busier also discloses a Hi-Low power setting, which can be set
manually using LOW/HIGH switch 90. Id. ,r,r 48, 56, 62; Fig. 1. When in
the low setting, only one of the two groups of six Peltier modules is used
(i.e., supplied with power by the PWM controller), and, when in the high
setting, both groups of six Peltier modules are used (i.e., supplied with
power by the PWM controller). Id. ,r,r 56, 62. Even assuming that Busier's
PWM controller provides less power to the entirety of the "thermoelectric
module" ( considered by the Examiner to be comprised of all of Busier' s
Peltier modules) when in the low setting than when in the high setting,
thereby providing "two different modes one where full cooling was provided
and one where as necessary lesser cooling was provided in order to achieve
the same goal with a lower power requirement," as the Examiner states, the
Examiner does not adequately explain how this manual Hi-Low feature
would satisfy the method steps of providing a first amount of power,
providing a second amount of power that is less than the first amount of
power and at least enough that a cooling chamber temperature does not
increase, and providing a third amount of power, as set forth in claim 1. It is
further not clear how the Examiner's discussion of the Hi-Low feature fits in
with the discussion of PWM control as set forth in the rejection.
The Examiner relies on El wart for a teaching to use the hot side of the
thermoelectric module of Busier for the temperature monitoring and control
disclosed in Busier, but not for any teaching directed to providing first,
second, and third amounts of power as recited in claim 1. Final Act. 4;
Ans. 4.
For the above reasons, the Examiner does not articulate findings and
reasoning sufficient to establish a sustainable case that the subject matter of
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Application 14/849,232
claim 1 would have been obvious based on the combined teachings of Busier
and Elwart. Accordingly, we do not sustain the rejection of claim 1, or its
dependent claims 2-5, 7, and 9, as unpatentable over Busier and Elwart.
Rejection III-Obviousness (Claim 6)
Claim 6 depends from claim 1 and further recites that "the first
threshold indicates that the hot side of the thermoelectric module is
saturated." Claims App. 3. The Examiner finds that "Gillen teaches that if .
. . a constant power supply is utilized the thermoelectric module may
become saturated with internal waste heat, therefore the power output should
be matched to operating conditions." Ans. 7 (citing Gillen 19:67-20:22). In
view of this teaching, the Examiner determines that it would have been
obvious
Id.
to have based the first threshold on a temperature at which the
thermoelectric module of Busier would become saturated as
taught in Gillen so that by changing the current ( which is how
Busier changes power, Paragraph 51 ), the thermoelectric
module does not become saturated with internal waste heat
which would reduce its thermal performance.
Appellant argues that Gillen teaches "the total avoidance of saturation
by continuously varying the 'power output' to match[] [the power] to the
particular operating conditions of the TEC 1" and, thus, "there is no teaching
in Gillen regarding what action to take when 'the hot side of the
thermoelectric module is saturated' since it is programmatically avoided."
Br. 14 (alterations in original, footnotes omitted).
The Examiner responds that Gillen shows that saturation, which
results from operation with a constant power supply, is to be avoided and
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Application 14/849,232
"this is done by modulating the power level." Ans. 10. The Examiner
concludes from this that "a threshold to be avoided is a saturation point, such
that it would be obvious for the threshold of operation of Busier based on the
teaching of Gillen to have been the point at which saturation of the Peltier
cell occurs." Id. The Examiner further reasons that "in order to fix this
issue the power would have to be modulated based on the operation of
Busier as in Gillen modulating the power would reduce the power load on an
individual cell and as such reduce the internal waste heat." Id.
Although it is not entirely clear from the Examiner's remarks how the
Examiner proposes to modify Busier in view of Gillen, it appears that the
Examiner proposes to modify Busier by using the hot side temperature at
which the thermoelectric module would be saturated as the threshold
temperature for the control discussed by Busier in either paragraph 59 or
paragraph 60. If, as the Examiner states, saturation would be avoided by
cycling the Peltier modules off and on using the PWM driver disclosed by
Busier, Appellant's argument that Busier's Peltier modules would never
reach such a threshold is correct, and, thus, Busier would not perform the
step of "determining that a temperature of a hot side of the thermoelectric
module is above a first threshold" recited in claim 1. Moreover, for the
reasons discussed above, merely modifying Busier by using a module hot
side saturation temperature as the threshold for the temperature monitoring
and control disclosed in Busier would not make up for the deficiency in the
rejection of claim 1, discussed above, which also pervades the rejection of
dependent claim 6. 5
5 Gillen discloses controlling either voltage or current to control the output
power to allow maximum cooling performance for a given TEC design and
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For the reasons discussed above, the Examiner does not articulate
findings and reasoning sufficient to establish a sustainable case that the
subject matter of claim 6 would have been obvious based on the combined
teachings of Busier, El wart, and Gillen. Accordingly, we do not sustain the
rejection of claim 6 as unpatentable over Busier, Elwart, and Gillen.
DECISION
The Examiner's decision rejecting claim 7 under 35 U.S.C. § 112(b) is
reversed.
The Examiner's decision rejecting claims 1-7 and 9 under
35 U.S.C. § 103 is reversed.
REVERSED
under a particular set of operating conditions. Gillen 29:39--43. However,
to the extent that this may be a teaching to provide different amounts of
power, instead of or in addition to controlling a duty cycle of the power, as
disclosed by Busier, it is not apparent that the Examiner has proposed
incorporating this teaching of Gillen into Busier.
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