Ex Parte Hyde et al

Patent Trial and Appeal Board

Nov 30, 2017

12460445 (P.T.A.B. Nov. 30, 2017)

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.
12/460,445 07/17/2009 Roderick A. Hyde 103069-0110 1706
103600 7590
Foley & Lardner LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
GONZALEZ, HIRAM E
ART UNIT PAPER NUMBER
2848
NOTIFICATION DATE DELIVERY MODE
12/04/2017 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):
ipdocketing @ foley. com
ISFDocketInbox@intven.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RODERICK A. HYDE, WILLIAM GATES,
JORDIN T. KARE, NATHAN P. MYHRVOLD,
CLARENCE T. TEGREENE, DAVID B. TUCKERMAN,
and LOWELL L. WOOD JR.* 1
Appeal 2016-002509
Application 12/460,445
Technology Center 2800
Before BEVERLY A. FRANKLIN, N. WHITNEY WILSON, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify the real party in interest as The Invention Science Fund
I LLC (Appeal Br. 2). However, USPTO records show that The Invention
Science Fund I LLC assigned its interest to Deep Science, LLC, in an
assignment recorded at Reel 037499, Frame 0901, on Jan. 15, 2016.
Appeal 2016-002509
Application 12/460,445
Appellants request our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1,2,4, 6—9, 12, 14, 15, 17—21,
24—28, 30, 36, 39, 40, 43, 48, 50, 52-55, 58-71, 263-266, and 269-275.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
Claims 1 and 50 are illustrative of Appellants’ subject matter on appeal
and are set forth below:
1. An assembly, comprising:
a high voltage end;
a low voltage end;
a power-line insulator extending from the high voltage end
to the low voltage end;
a device disposed in parallel to the power-line insulator
between the high voltage end and the low voltage end; and
a normally-open switch configured to establish a
conducting path from the high voltage end to the low voltage end
through the device bypassing the power-line insulator, wherein,
in a normal state of the assembly, the switch is open so that the
power-line insulator electrically isolates a power-line, and
wherein the device either injects power into or sinks power from
the power line.
50. A device, comprising:
a high voltage end;
a low voltage end;
an insulator located between the high voltage end and the
low voltage end and configured to electrically isolate a power
line; and
a normally-off switchable conductance coupled to the
insulator and placed in parallel with the insulator, wherein the
switchable conductance is switched off in a normal state and
switched on in an active state.
2
Appeal 2016-002509
Application 12/460,445
The Examiner relies on the following prior art references as evidence
of unpatentability:
Stein, Jr.
Harvey
US 3,251,014
US 5,585,611
US 6,396,172 B1
US 2008/0026600 A1
US 7,639,460 B2
May 10, 1966
Dec. 17, 1996
May 28, 2002
Jan. 31, 2008
Dec. 29, 2009
Couture ’172
De France
Couture ’460
Shankar Krishnan et al., A Novel Hybrid Heat Sink Using Phase
Change Materials for Transient Thermal Management of Electronics,
IEEE Transactions on Components and Packaging Technologies,
Vol. 28, No. 2, 281—289 (June 2005) (“Krishnan”).
THE REJECTIONS
1. Claims 1 and 50 are rejected under 35 U.S.C. § 112, first paragraph
(written description).
50, 52—55, 58—67, 70, 71, 263—266, and 269—275 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over De France in view of
Couture ’172.
3. Claims 18—20 and 48 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over De France in view of Couture ’172, and further in view of
Stein, Jr.
4. Claim 26 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over De France in view of Couture ’172, and further in view of
Harvey.
5. Claim 68 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over De France in view of Couture ’172, and further in view of
Couture ’460.
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Application 12/460,445
6. Claim 69 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over De France in view of Couture ’172, and further in view of
in view of Krishnan.
ANALYSIS
To the extent that Appellants have presented substantive arguments for
the separate patentability of any individual claims on appeal, we will address
them separately consistent with 37 C.F.R. § 41.37(c)(l)(iv). Appellants
present arguments pertaining to the combination of De France in view of
Couture ’172, with regard to claims 1 and 50. Appeal Br. 9—10. Thus, our
determinations made with regard to Rejection 2 are dispositive for Rejections
3-6.
Upon consideration of the evidence and each of the respective positions
set forth in the record, we find that the preponderance of evidence supports
the Examiner’s findings and conclusion that the subject matter of Appellants’
claims is unpatentable over the applied art with regard to Rejections 2—6.
Accordingly, we sustain each of the Examiner’s rejections on appeal
essentially for the reasons set forth in the Final Office Action and in the
Answer. However, we reverse Rejection 1. We add the following for
emphasis.
Rejection 1
It is the Examiner’s position that the term “normally-open” switch in
claim 1, and the term “normally-closed” switch in claim 50, does not have
written descriptive support in the original disclosure. Final Act. 2—3. Ans. 3—
4. The Examiner states that there is not a single statement in the original
disclosure showing that Appellants specifically intended for their switches
to be represented by “normally-open” or “normally-off ’ switches. Ans. 4.
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Application 12/460,445
However, we note “it is not necessary that the application describe the
claimed invention in ipsis verbis”, but rather “all that is required is that it
reasonably convey to persons skilled in the art that, as of the filing date
thereof, the inventor had possession of the subject matter later claimed by
him.” In re Edwards, 568 F.2d 1349, 1351-1352 (CCPA 1978); In reLukach,
442 F.2d 967, 969 (CCPA 1971). We agree with Appellants stated position in
the record. Appellants explain that original claim 3 recites “wherein the
switch is configured to be open in a normal state of the assembly”, and that
original claim 51 recites “wherein the switchable conductance is configured
to be switched off in a normal state.” Appeal Br. 9. Appellants also refer to
§ [ 0099] of the Specification that provides additional details regarding the
“normal” state of claim 1, reproduced below:
In a first or normal state, insulator assembly 900
functions as a suspension (or strut) insulator 920
for electrically isolating power line 910. In a
second or activated state, insulator assembly
functions, for example, as a device 930 that
provides a parallel electrical path from high
voltage end H to low voltage end E around or
bypassing insulator 920.
Reply Br. 3.
Appellants submit that a person having ordinary skill in the art
would understand that a “switch [that] is configured to be open in a
normal state of the assembly” as originally recited in claim 3 is a
“normally-open switch”, as currently recited in claim 1, and would also
understand that a “switchable conductance [that] is configured to be
switched off in a normal state”, as originally recited in claim 51, is a
“normally-off switchable conductance” as currently recited in claim 50.
Reply Br. 3^4.
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Application 12/460,445
Appellants further explain that a “switch [that] is configured to be
open in a normal state of the assembly” as originally recited in claim 3 is
essentially a definition of a “normally-open switch” as that term would be
understood by a person having ordinary skill in the art. Reply Br. 4.
Appellants refer to MPEP § 2163.07 which lists several examples of
“amendments to application which are supported in the original
description”, noting in particular that "a rewording of a passage where the
same meaning remains intact is permissible." MPEP § 2163.07 I (citing
In re Anderson, 471 F.2d 1237 (CCPA 1973)). Appellants submit that
they merely reworded the passages of original dependent claims 3 and
51, while retaining the same meaning of the original passages. We agree.
In view of the above, we reverse Rejection 1.
Rejections 2—6
With regard to claim 1, the Examiner makes findings on pages 3—5 of
the Final Office Action regarding certain claims elements taught by the
primary reference ofDe France.
The Examiner states that De France does not explicitly teach wherein
the switch is normally-open. Ans. 4. The Examiner reiterates on page 5 of
the Answer that De France teaches all the claim elements except for switches
being “normally open” or “normally closed”.
The Examiner relies upon Couture ’172 for teaching a
switching apparatus for an electric power line where the switches
have supports that couple the power line to a transmission tower
(elements 93, Fig. 31), having pairs of switches connected in parallel
for selectively opening and closing the conductors of each phase line
according to the current operating conditions of the line segment
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Couture ’172, Abstract. Final Act. 4—5. In view of these teachings, the
Examiner concludes that it would have been obvious to have modified
the in-line switch in De France to function in parallel with other in­
line switches, and have normally-open or normally-off switches that
selectively open or close, to better control the line conditions of a
multiphase power line, as taught by Couture ’172, to prevent line
overvoltage, damage to insulators from overheating, or increase
power to a load depending on the desired line conditions. Final Act.
5.
With regard claim 50, the Examiner makes similar findings
regarding the primary reference of De France. Final Act. 5—6. The
Examiner states that De France does not explicitly teach wherein the
switch is normally-off. The Examiner relies upon Couture ’172 in a
similar manner as discussed, above, with regard to claim 1, for teaching
this aspect of the claimed invention. Final Act. 6.
Appellants first present a teaching away argument, set forth on pages
11—12 of the Appeal Brief (which we do not repeat herein). We are
unpersuaded by such argument for the reasons provided in the
Examiner’s response made on pages 5—6 of the Answer. Therein, the
Examiner states that both De France and Couture ’172 share a principle
operation of modifying a power line condition. Ans. 5. The Examiner
disagrees with Appellants’ position that the combination teaches away from
the purpose of the electrical conductor assembly or "in-line switch" of De
France. Id. The Examiner explains that Couture ’172 teaches a switching
apparatus for a segment of a power line which allows it to switch the
conductors of a segment without disconnecting the segment from the line,
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in an efficient and safe manner (col. 2, 11. 3—7 of Couture ’172), which
coincides with the intended purpose of the in-line switch of De France,
which isolates the line to allow an operator to work on the line or to
protect the line in a surge event. Ans. 5—6. The Examiner maintains that it
would be obvious to have modified the in-line switch structure of De
France to be in plurality, with multiple open and closed switches, to better
control the line conditions and improve efficiency, while still being able to
isolate line segments to allow an operator to work on the line or prevent
damage from a surge condition. Ans. 6. We agree.
As stated by the Examiner on page 5 of the Answer, the test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference; nor is it
that the claimed invention must be expressly suggested in any one or all of
the references. Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art. See
In re Keller, 642 F.2d 413 (CCPA 1981). Furthermore, the teaching away
argument is unconvincing because Appellants direct us to no evidence that
De France’s assembly “should not” or “cannot be” modified according to the
disclosure of Couture. Para-Ordnance Mfg., Inc. v. SGS Imps. Inti, Inc., 73
F.3d 1085, 1090 (Fed. Cir. 1995) (a reference that teaches away will state
that it “should not” or “cannot” be used in combination with other
reference); see In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (a prior
art disclosure does not teach away unless it criticizes, discredits, or
discourages the claimed solution).
Appellants next argue that the proposed modification of De France
in view of Couture would render De France unsatisfactory for its intended
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Application 12/460,445
purpose for the reason presented on pages 13—15 of the Appeal Brief.
However, we are unpersuaded by such argument for the reasons
provided by the Examiner’s response made on page 6 of the Answer,
wherein the Examiner relies upon the same arguments made in response
to Appellants’ teaching away argument. The Examiner reiterates that
De France and Couture ’172 share a principle operation of modifying a
power line condition. Ans. 6.
We have fully reviewed Appellants’ arguments presented in the Reply
Brief, and are unpersuaded by the arguments set forth therein for the reasons
already discussed, supra, with regard to the art rejections. We add that to
the extent that Appellants discuss the applied references individually, such
arguments are unpersuasive as they do not address squarely what the
combined teachings of the combination of applied references reasonably
would have suggested to one of ordinary skill in the art at the time of the
invention. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non­
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.”); In re Keller, 642 F.2d 413, 425 (CCPA 1981) (The test for
obviousness “is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.”).
In view of the above, we affirm Rejections 2—6.
DECISION
Rejection 1 is reversed.
Rejections 2—6 are affirmed.
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TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a).
ORDER
AFFIRMED
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