Ex Parte Gabor et al

Patent Trial and Appeal BoardDec 31, 2012

12048565 (P.T.A.B. Dec. 31, 2012)

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. 12/048,565 03/14/2008 Daniel Gabor 81169037 5135 28395 7590 01/02/2013 BROOKS KUSHMAN P.C./FGTL 1000 TOWN CENTER 22ND FLOOR SOUTHFIELD, MI 48075-1238 EXAMINER FLEMING, FRITZ M ART UNIT PAPER NUMBER 2836 MAIL DATE DELIVERY MODE 01/02/2013 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 DANIEL GABOR and DALE SCOTT CROMBEZ ____________________ Appeal 2010-008496 Application 12/048,565 Technology Center 2800 ____________________ Before BRUCE R. WINSOR, JAMES B. ARPIN, and TRENTON A. WARD, Administrative Patent Judges. WARD, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2010-008496 Application 12/048,565 2 STATEMENT OF THE CASE Appellants’ invention relates to improved systems and methods for delivering power to an electric motor of an automotive vehicle. See Spec., 2:19-32. Claim 1 is illustrative with certain disputed limitations italicized: 1. A system for delivering power from a power source to an electric motor of an automotive vehicle, the electric motor having an expected number of activation cycles for a life of the automotive vehicle, the system comprising: at least two electro-mechanical switches in parallel, each of the electro-mechanical switches being configured to deliver power from the power source to the electric motor when activated, each of the electro-mechanical switches having a specified number of activation cycles that defines its lifetime, and the specified number of activation cycles for at least one of the electro-mechanical switches being less than the expected number of activation cycles of the electric motor; and an electronic control module being configured to selectively activate the at least two electro-mechanical switches for an activation cycle of the electric motor. THE REJECTIONS The Examiner rejected claims 1-18 as being unpatentable under 35 U.S.C. § 103(a) over Sakata (US 2005/0231029 A1; issued Oct. 20, 2005) and Applicants’ Admitted Prior Art (“AAPA”). Ans. 4-10.1 CONTENTIONS The Examiner finds that Sakata teaches or suggests every recited feature of claims 1 and 10, except that each of the electro-mechanical 1 Throughout this opinion, we refer to (1) the Appeal Brief (“App. Br.”) filed Jan. 29, 2010; (2) the Examiner’s Answer (“Ans.”) mailed Mar. 16, 2010; and (3) the Reply Brief (“Reply Br.”) filed May 11, 2010. Appeal 2010-008496 Application 12/048,565 3 switches has a specified number of activation cycles that define its lifetime, and that the electric motor has an expected number of activation cycles over a lifetime of the automobile. Ans. 6. The Examiner cites the AAPA, in combination with Sakata, as teaching these features in concluding that claims 1 and 10 would have been obvious. Ans. 6-8. Appellants argue that “modifying Sakata as suggested by the Examiner would render Sakata unsatisfactory for its intended purpose.” App. Br. 4. Specifically, Appellants argue that “[e]ach of Sakata’s relays appear to have an expected useable life that is at least equal to that of its motor”; thus, the Examiner’s proposal to use relays with a useable life less than the motor “would all but guarantee one or more failures in Sakata’s relay system.” App. Br. 4. Additionally, Appellants argue that Sakata’s “teaching of ‘redundancy’ does not necessarily show ‘that a relay with a lower useable life than that of the motor can be used.’” App. Br. 5. ISSUE Under § 103, has the Examiner erred in rejecting claims 1 and 10 by finding that the combination of the cited, prior art teaches that the specified number of activation cycles for at least one of the electro-mechanical switches is less than the expected number of activation cycles of the electric motor? ANALYSIS Appellants make three arguments as to why claims 1 and 10 are not made obvious in view of the combination of prior art cited by the Examiner. We address Appellants’ arguments seriatim. Appeal 2010-008496 Application 12/048,565 4 First, Appellants argue that “modifying Sakata as suggested by the Examiner would render Sakata unsatisfactory for its intended purpose.” App. Br. 4. Specifically, Appellants argue that the “Examiner’s proposal would all but guarantee one or more failures in Sakata’s relay system,” because Sakata teaches that “all relays are simultaneously activated.” App. Br. 5 (emphasis added); Reply Br. 1-2. Appellants argue that Sakata teaches a system where all relays2 “appear to have an expected useable life that is at least equal to that of its motor.” App. Br. 4 (citing Sakata, ¶¶ 40-41). Although the specific embodiment in cited paragraphs 40-41 of Sakata teaches the use of all relays simultaneously, Appellants do not address the alternative embodiments in the portions of the Sakata relied upon by the Examiner, which disclose sequentially driving the relays. Ans. 5-6, 12 (citing Sakata, ¶¶ 72-73, 115, 119). For example, the Examiner finds that Sakata expressly discloses that in one embodiment “the plurality of relays 14a to 14c is sequentially driven in a predetermined order,” so that “a heat generation amount is restricted in the plurality of relays 14a to 14c and durability thereof improves.” Ans. 12 (citing Sakata, ¶ 115). Additionally, the Examiner cites to the Sakata disclosure that in one embodiment the “plurality of relays 14a to 14c are provided to add the redundancy function to the relay circuit while detecting the disconnection abnormality in each of the relays 14a to 14c.” Ans. 7 (citing Sakata, ¶ 119). Accordingly, Sakata 2 We note that, while the claims recite “switches,” Appellants and the Examiner interchangeably refer to both relays and switches. See e.g., App. Br. 4-5; Ans. 12. Furthermore, we also note that Sakata discloses a direct relationship between the switches and the relays in that “[t]he relays 14a to 14c are turned on by turning the corresponding semiconductor switching elements 14d to 14f on, respectively.” Sakata, ¶ 38. Appeal 2010-008496 Application 12/048,565 5 describes sequential use of multiple relays, unless a failure is detected in one of the relays, at which time the failed relay is removed from the alternating sequence. Ans. 8 (citing Sakata, ¶¶ 117-118). We are not persuaded by Appellants’ arguments that the Examiner’s proposal to use switches with a shorter usable lifetime than the motor would render Sakata unsatisfactory for its intended purpose, because the redundancy function taught in the Sakata system can account for switch failures. See Sakata, ¶¶ 117-119. Second, Appellants argue that Sakata’s “teaching of ‘redundancy’ does not necessarily show ‘that a relay with a lower useable life than that of the motor can be used.’” App. Br. 5. On this record, Appellants have not persuasively rebutted the Examiner’s findings to show error in the rejection. The Examiner finds that because Sakata teaches “that a failure in one relay results in the other two relays being used,” “Sakata has shown that a relay with a lower useable life than that of the motor can be used.” Ans. 8 (citing Sakata, ¶¶ 117-118). As found by the Examiner, Sakata’s teachings of redundancy in the relays “has clearly shown that the weak link of the relay/motor combination is that of the relay, as the relays are placed in a redundant parallel fashion, and not the motor.” Ans. 7-8. Therefore, Appellants’ argument regarding the use of a relay with a lower useable life than that of the motor (App. Br. 5) is, at best, merely a recognition of another advantage that would flow naturally from the suggestion of the Sakata prior art, and cannot be the basis of patentability. See Ex Parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Int. 1985) (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious”). Appeal 2010-008496 Application 12/048,565 6 Third, Appellants argue that its “claims are not somehow directed to happenstance or unexpected failures,” but require the electro-mechanical switches to have a specified number of activation cycles. App. Br. 5. Appellants argue that the term, “specified number of activation cycles,” has a “recognized meaning among those of ordinary skill,” App. Br. 5., but Appellants do not “provide any further explanation of what this recognized meaning is,” Ans. 14. We are not persuaded by the Appellants’ argument regarding unexpected failures versus expected failures because the claims do not recite a specific failure state. “The claim only specifies a lifetime.” Ans. 13. The Examiner finds that it is known in AAPA that “the useable life of an electro- mechanical switch is typically less than the expected number of activation cycles” of a motor. Ans. 6 (emphasis added), citing Spec. 4, ll. 27-33. Appellants do not challenge this finding with respect to AAPA. Accordingly, we are not persuaded that the Examiner erred in rejecting claims 1 and 10, and claims 2-9 and 11-18, which were not separately argued with particularity. ORDER The Examiner’s decision rejecting claims 1-18 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)(1)(iv). AFFIRMED Appeal 2010-008496 Application 12/048,565 7 ke