Ex Parte Hong et al

Patent Trial and Appeal BoardFeb 11, 2019

15053680 (P.T.A.B. Feb. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 15/053,680 02/25/2016 Xiaoyuan Hong 27060 7590 02/13/2019 ZIOLKOWSKI PATENT SOLUTIONS GROUP, SC (EATON) 136 S WISCONSIN ST PORT WASHINGTON, WI 53074 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. 14-ICD-1118 (ETC7455.178) CONFIRMATION NO. 9629 EXAMINER DINH, TRAIT ART UNIT PAPER NUMBER 2837 NOTIFICATION DATE DELIVERY MODE 02/13/2019 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): info@zpspatents.com sml@zpspatents.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte XIAO YUAN HONG, HAO LUO, and KEVIN LEE 1 Appeal 2018-001149 Application 15/053,680 Technology Center 2800 Before MICHELLE N. ANKENBRAND, CHRISTOPHER C. KENNEDY, and MERRELL C. CASHION, JR., Administrative Patent Judges. KENNEDY, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 1-8. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. BACKGROUND The subject matter on appeal relates to a connecting device for a motor and a supply network. E.g., Spec. 1:7-8; Claim 1. Claim 1 is reproduced below from page 12 (Claims Appendix) of the Appeal Brief ( some paragraph breaks added): 1 The Appellant is the Applicant, Eaton Corporation, which is also identified as the real party in interest. See App. Br. 1. Appeal 2018-001149 Application 15/053,680 1. A connecting device for motor and supply network, compnsmg: a Variable Frequency Drive (VFD), a first switch (S 1) and a second switch (S2), wherein the Variable Frequency Drive (VFD) is connected in series to the first switch (S 1 ), and the second switch (S2) is connected in parallel to the series circuit composed of the Variable Frequency Drive (VFD) and the first switch (S 1 ), which is characterized in that: further comprising a bidirectional Silicon Controlled Rectifier (SCR) which is connected in parallel to the second switch (S2). ANALYSIS Claims 1-8 stand rejected under 35 U.S.C. Â§ 103 as unpatentable over Kubal (US 2009/0218962 Al, published Sept. 3, 2009) and Lu (US 7,952,318 B2, issued May 31, 2011 ). Concerning claim 1, the Examiner finds that Kubal teaches a connecting device for a motor and a supply network comprising a VFD, a first switch S 1 connected in series to the VFD, and a second switch S2 connected in parallel to the series circuit composed of the VFD and first switch SI. Final Act. 2-3. The Examiner finds that Kubal does not teach a bidirectional SCR connected in parallel to second switch S2, but that Lu teaches a bidirectional SCR connected in parallel to a second switch as part of a "soft starter" circuit. Id. at 3. The Examiner concludes: Id. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to use Lu's Bidirectional Silicon Controlled Rectifiers 34 and contactors 32 in place of the second switch S 12 of Kubal's circuit for purpose of providing a soft-starter in series between an AC power source and the AC motor. 2 Appeal 2018-001149 Application 15/053,680 The Appellant argues that soft starters such as that of Lu and frequency converters such as that of Kubal ("more commonly referred to as a 'variable frequency drive (VFD)' in the art," App. Br. 4) are very different technologies that present alternative solutions to solving the same problem. App. Br. 4--10. The Appellant also argues that soft starters and VFDs function "markedly differently," and that "a substantial reconstruction and redesign of the motor starting controls already present in Kubal" would be required if combined with Lu as proposed by the Examiner. Id. at 6-7, 10. The Appellant argues that the Examiner has not adequately established a reason to combine the references, see id. at 8; Reply Br. 3, and that the proposed combination would include components of duplicative function, App. Br. 9. "[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). "[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007). Establishing a prima facie case of obviousness of an invention comprising a combination of known elements requires "an apparent reason to combine the known elements in the fashion claimed." See id. "[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention." See Belden Inc. v. Berk-TekLLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) ( emphases in original). 3 Appeal 2018-001149 Application 15/053,680 The record supports the Appellant's arguments that the Examiner has not adequately established a reason to combine the references. As an initial matter, we observe that, in the statement of the rejection, the Examiner does not meaningfully provide a reason to combine the references. See Final Act. 3. The Examiner's statement that it would have been obvious to combine the references "for the purpose of providing a soft-starter in series between an AC power source and the AC motor," id. at 3--4, is a statement of what allegedly would have been achieved if a person of ordinary skill in the art had made the proposed modification, i.e., a soft starter in series between an AC power source and an AC motor. It is not a persuasive explanation of why a person of ordinary skill in the art would have been motivated to make the modification. The evidence supports the Appellant's contention that soft starters such as those of Lu and frequency converters ( or VFDs) such as those already present in the figure of Kubal upon which the Examiner relies were considered alternative "solution[ s] for reducing the starting current" of a motor. See Kubal ,r,r 5---6; see also Walter J. Lukitsch, Soft Start Vs AC Drives- Understand the Differences, IEEE (1999), at 1 (stating that "[t]he list of possible applications" for VFDs and soft starters is "virtually identical," but that VFDs and soft starters "are very different," and indicating that generally "either soft starters or VFD's" are selected for an application ( emphasis added)). The Examiner does not appear to dispute the Appellant's contention that the proposed combination would result in unnecessary duplication of components. See Ans. 7. In the Response to Argument section of the Answer, after acknowledging the potential duplicate component issue, the Examiner states 4 Appeal 2018-001149 Application 15/053,680 that a person of ordinary skill in the art nevertheless would have combined the references' teachings "to get [a] complicated system which should be able to perform more task[s], for example, obtaining low starting to[r]que via Lu's soft starter, achieving full torque during the full time of acceleration via Kubal's frequency converter, and obtaining full speed via Lu's contactors." Id. That rationale is unpersuasive. The Examiner provides no reason to believe that a "complicated system" would have been desirable, and the Examiner's reasoning appears to be based on speculation that the more "complicated system ... should be able to perform more task[s]." Id. (emphasis added). Even were we to ignore the speculative nature of that assertion, the Examiner's identification of alleged additional "task[s]" is not persuasive. For example, Kubal actually identifies "low starting to[r ]que" of soft starters as "a problem," at least "in some cases"-not a benefit. See Kubal ,r 22. In the very next paragraph, Kubal explains that a benefit of frequency converters is that "it is possible to achieve full torque during the full time of acceleration." Id. ,r 23. Thus, it does not appear that Kubal desires low starting torque. The second benefit that the Examiner identifies, "achieving full torque during the full time of acceleration," is, according to the Examiner's own analysis, a feature already present in Kubal's frequency converter. See Ans. 7 ("achieving a full torque during the full time of acceleration via Kubal'sfrequency converter" (emphasis added)). To the extent that the Examiner's proposal is intended to suggest that a single device having the option of either Lu's low torque or Kubal's full torque would have been desirable, the Examiner identifies no support in the record. See id. As set forth above, Kubal actually indicates that low torque may be undesirable, 5 Appeal 2018-001149 Application 15/053,680 and the record supports the Appellant's contention that soft starters and VFDs were known as alternatives to each other. As to the final benefit that the Examiner identifies, "obtaining full speed via Lu's contactors," the Examiner provides no basis to believe that "full speed" is not already a feature of Kubal. See id. In that regard, we observe that Lu's contactors appear to simply be switches that are already present in Kubal, see Lu Fig. 1 ( element 32), and Kubal teaches that, "according to the invention ... the control unit of the frequency converter possesses information about the deceleration of the motor from full speed with a full load," Kubal ,r 43 (emphasis added). Thus, it appears that Kubal discloses obtaining full speed without Lu's contactors. See id. In summary, the Examiner has not sufficiently established that a person of ordinary skill in the art would have had reason to attempt to combine the soft starter of Lu with the VFD of Kubal. Accordingly, we reverse the Examiner's rejection of claim 1. The Examiner's analysis of claims 2-8 does not remedy the error identified above. We likewise reverse the Examiner's rejection of claims 2- 8. CONCLUSION We REVERSE the Examiner's rejections of claims 1-8. REVERSED 6