Ex Parte Klausner et al

Patent Trials and Appeals Board

Mar 22, 2019

14234752 - (D) (P.T.A.B. Mar. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/234,752 04/24/2014
10800 7590 03/22/2019
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
FIRST NAMED INVENTOR
Markus Klausner
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.
2178-0792 1044
EXAMINER
CANTELMO, GREGG
ART UNIT PAPER NUMBER
1725
MAIL DATE DELIVERY MODE
03/22/2019 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 MARKUS KLAUSNER, VOLKMAR DENNER,
and STEFAN BUTZMANN
Appeal2018-002979
Application 14/234,752
Technology Center 1700
Before LINDA M. GAUDETTE, N. WHITNEY WILSON, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 request our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 1, 3, 5-7, 9, and 10. 2 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify Robert Bosch GmbH and Samsung SDI Co., Ltd. as the
real parties in interest. Appeal Brief filed December 12, 2016 ("App. Br."),
3.
2 Final Office Action entered April 13, 2016 ("Final Act.").
Appeal2018-002979
Application 14/234,752
STATEMENT OF THE CASE
Appellants claim an energy storage device for generating a supply
voltage (independent claim 1 ), a power supply system (independent claim
6), and a method for operating an energy storage device (independent claim
7). App. Br. 5-11. Independent claims 1 and 7 illustrate the subject matter
on appeal and are reproduced below with contested language italicized:
1. An energy storage device for generating a supply voltage,
compnsmg:
an output connector;
a plurality of parallel connected energy supply strings
that are connected in each case to the output connector, each
energy supply string of the plurality of energy supply strings
including:
a first string comprising a first plurality of energy storage
modules connected in series and a first plurality of coupling
modules, each energy storage module in the first plurality of
energy storage modules including at least one energy cell and
each coupling module including at least one switching device
configured to connect a corresponding energy storage module
in the first plurality of energy storage modules in series with the
first string in a first mode and bridge the corresponding energy
storage module to isolate the corresponding energy storage
module from the first string in a second mode;
a second string connected in parallel with the first string,
the second string comprising a second plurality of energy
storage modules connected in series and a second plurality of
coupling modules, each energy storage module in the second
plurality of energy storage modules including at least one
energy cell and each coupling module including at least one
switching device configured to connect a corresponding energy
storage module in the second plurality of energy storage
modules in series with the second string in the first mode and
bridge the corresponding energy storage module to isolate the
corresponding energy storage module from the second string in
the second mode; and
2
Appeal2018-002979
Application 14/234,752
a control device connected to the first plurality of
coupling modules in the first string and the second plurality of
coupling modules in the second string, the control device being
configured to:
identify an age of each energy storage module in
the first plurality of energy storage modules and the
second plurality of storage modules with reference to an
operating temperature, a progression with respect to time
of a power output, a progression with respect to time of
an energy output, a service life without energy
consumption, and a cumulative operating time of each
energy storage module;
operate the first plurality of coupling modules in
the first string to connect a first predetermined number of
the first plurality of energy storage modules in the first
string in series to generate an output at a first voltage
level and disconnect a second predetermined number of
the first plurality of the energy storage modules in the
first string, the first predetermined number of the first
plurality of energy storage modules having identified
ages that are less than any identified age in the second
predetermined number of the first plurality of energy
storage modules; and
operate the second plurality of coupling modules
in the second string to connect the first predetermined
number of the second plurality of energy storage modules
in the second string in series to generate another output
at the first voltage level and disconnect the second
predetermined number of the second plurality of the
energy storage modules in the second string, the first
predetermined number of the second plurality of energy
storage modules having identified ages that are less than
any identified age in the second predetermined number of
the second plurality of energy storage modules.
7. A method for operating an energy storage device
compnsmg:
identifying with a control device a predetermined number
of energy storage modules in each of a first string and a second
3
Appeal2018-002979
Application 14/234,752
string of energy storage modules required to drive a load
connected to the energy storage device with reference to a
prevailing load requirement for the load, the first string
comprising a first plurality of the energy storage modules
connected in series and the second string comprising a second
plurality of the energy storage modules connected in series, the
first string and the second string being connected in parallel;
identifying with the control device an age of each energy
storage module in the first plurality of energy storage modules
in the first string and an age of each energy storage module in
the second plurality of energy storage modules in the second
string with reference to an operating temperature, a progression
with respect to time of a power output, a progression with
respect to time of an energy output, a service life without
energy consumption, and a cumulative operating time of each
energy storage module;
operating, with the control device, a first plurality of
coupling devices in the first string in a first mode to connect the
predetermined number of energy storage modules in the first
string to the load and a second plurality of coupling devices in
the first string in a second mode to bypass any energy storage
module in the first plurality of energy storage modules that is
not in the predetermined number of energy storage modules,
each energy storage module in the predetermined number of
energy storage modules in the first string having an age that is
less than an age of any of the first plurality of energy storage
modules that is not in the predetermined number of energy
storage modules; and
operating with the control device a first plurality of
coupling devices in the second string in the first mode to
connect the predetermined number of energy storage modules
in the second string to the load and a second plurality of
coupling devices in the second string in the second mode to
bypass any energy storage module in the second plurality of
energy storage modules that is not in the predetermined number
of energy storage modules, each energy storage module in the
predetermined number of energy storage modules in the second
string having an age that is less than an age of any of the second
4
Appeal2018-002979
Application 14/234,752
plurality of energy storage modules that is not in the
predetermined number of energy storage modules.
Response to Notice of Non-Compliant Appeal Brief filed January 25,
2017, 2--4, 8-10 (Claims Appendix) (emphasis added).
Independent claim 6 includes the limitations of claim 1
italicized above.
The Examiner maintains the following rejections in the Examiner's
Answer entered November 28, 2017 ("Ans."):
I. Claims 1, 5, and 6 under 35 U.S.C. § I02(b) as anticipated by
Kawakami; 3
II. Claim 3 under 35 U.S.C. § I03(a) as unpatentable over
Kawakami in view of Muto4 and either Andrieu5 or Koster; 6
III. Claims 1, 37, 5, and 6 under 35 U.S.C. § I03(a) as unpatentable
over Kawakami in view of Muto and either Andrieu or Koster; and
IV. Claims 7, 9, and 10 under 35 U.S.C. § I03(a) as unpatentable
over Kawakami in view of Muto and either Andrieu or Koster.
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellants' contentions, we reverse the Examiner's rejection of 1, 5,
and 6 under 35 U.S.C. § I02(b), and rejections of claims 1, 3, 5-7, 9, and 10
under 35 U.S.C. § I03(a), for the reasons set forth in the Appeal Brief and
below.
3 Kawakami (US 5,744,936, issued April 28, 1998).
4 Muto (WO 2010/116671 Al, issued October 14, 2010).
5 Andrieu (5,543,245 issued August 6, 1996).
6 Koster (US 2005/0007074 Al, published January 13, 2005).
7 The Examiner includes claim 3 in Rejection II and III. Final Act. 7-12.
5
Appeal2018-002979
Application 14/234,752
Rejection I
Independent claims 1 and 6 both require the recited energy storage
device and power supply system to comprise, in part, a control device
configured to operate a first plurality of coupling modules in a first string to
connect a first predetermined number of energy storage modules in the first
string and disconnect a second predetermined number of energy storage
modules in the first string, and operate a second plurality of coupling
modules in a second string to connect the first predetermined number of
energy storage modules in the second string and disconnect the second
predetermined number of energy storage modules in the second string.
The Examiner finds that Kawakami discloses an energy storage
device having all the structural features recited in claims 1 and 6. Ans. 15-
18, 20, 24--25. The Examiner finds that Kawakami's energy storage device,
therefore, "possesses the necessary structure to function as claimed." Ans.
24--25. More specifically, the Examiner finds that:
Kawakami teaches [] an energy storage device that has the
same energy supply strings, plural energy storage modules in
each supply string and an array of controllable switches which
can connect each string and each module in each string in
response to measured operational parameters of each cell which
indicates the service life ( or age) of each cell in the device. The
energy storage device of Kawakami is therefore held to include
a control device and structure which is sufficiently configured
to perform the same functionality as it has all the necessary
components therein to do so.
Ans. 20. The Examiner finds that because "there is no clear evidence of
record that the structure rather than the function of the claimed invention is
different and patentably distinct compared to the structure of Kawakami,"
and because "the claims are directed to the device and therefore patentability
6
Appeal2018-002979
Application 14/234,752
is given to the structure of the device rather than the functionality,"
Kawakami' s device anticipates the energy storage device of claims 1 and 6.
Ans. 18, 21-23.
The Examiner, however, does not provide a sufficient factual basis to
support the Examiner's finding of anticipation, for reasons expressed by
Appellants and discussed below.
Although claims directed to an apparatus must be distinguished from
the applied prior art in terms of structure rather than function, to satisfy the
functional limitations in an apparatus claim, the Examiner has the burden of
showing that the apparatus taught or suggested by the applied prior art is
capable of performing the claimed function. In re Schreiber, 128 F.3d 1473,
1477-78 (Fed. Cir. 1997). When the functional language is associated with
programming or some other structure required to perform the function, that
programming or structure must be present in order to meet the claim
limitation. Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380
(Fed. Cir. 2011). As such, the prior art structure must be capable of
performing the recited function without further programming. Id. ( emphasis
added).
Kawakami discloses an electric power accumulating apparatus that
includes a string of serially-connected secondary batteries (referred to as
"unit batteries") connected in parallel to additional parallel strings of
serially-connected secondary batteries, and switching elements connected to
each unit battery. Col. 4, 1. 62---col. 5, 1. 2; Figs. 3A and 3B. Kawakami
discloses a control circuit connected to sensors, voltage detecting circuits,
and current detecting circuits that are connected across each unit battery.
Col. 5, 11. 26-36; Fig. 4. Kawakami discloses that the sensors detect
7
Appeal2018-002979
Application 14/234,752
abnormalities in temperature or strain in the unit batteries, while the voltage
and current detecting circuits detect abnormalities in voltage and current,
respectively, in the batteries. Col. 5, 11. 41--46. Kawakami discloses that
when a battery shows such an abnormality, the control circuit activates the
appropriate switching element to detach the battery, and after replacement of
the abnormal battery "with a new proper battery, the control circuit activates
the switching element to connect the new battery to the system." Col. 5, 11.
46-54.
Thus, Kawakami discloses that the control circuit activates a
switching element to detach a unit battery that exhibits an abnormality. As
Appellants correctly argue, the Examiner does not identify any disclosure in
Kawakami that indicates that Kawakami' s control circuit is configured-
without further programming-to connect a first predetermined number, and
disconnect and second predetermined number, of energy storage modules in
a first string, and connect and disconnect the same respective numbers of
energy storage modules in a second string of Kawakami' s electric power
accumulating apparatus, as required by claims 1 and 6. App. Br. 17-19;
Reply Br. 3, 5---6.
Although the Examiner asserts that Appellants' argument that
Kawakami' s control circuit lacks the necessary programming to perform the
functions recited in claims 1 and 6 "has no explicit bearing on the claimed
invention as the claims do not include any explicit recitation of the control
device being programmed" (Ans. 25), claims 1 and 6 recite that the control
device is "configured to" perform the functions recited in the claims.
Accordingly, the control device must possess the necessary programming to
be "configured" to perform the recited functions.
8
Appeal2018-002979
Application 14/234,752
On this appeal record, therefore, the Examiner does not provide a
sufficient factual basis to establish that Kawakami' s control circuit is
capable of operating a first plurality of coupling modules in a first string to
connect a first predetermined number of energy storage modules in the first
string, and disconnect a second predetermined number of energy storage
modules in the first string; and operating a second plurality of coupling
modules in a second string to connect the first predetermined number of
energy storage modules in the second string and disconnect the second
predetermined number of energy storage modules in the second string, as
required by claims 1 and 6. Consequently, the Examiner fails to establish
that Kawakami's control circuit, without further programming or structural
modification, is capable of performing the functions recited in claims 1 and
6, as Appellants correctly argue.
We accordingly do not sustain the Examiner's rejection of claims 1
and 6, and also claim 5, which depends from claim 1, under 35 U.S.C.
§ 102(b) as anticipated by Kawakami.
Rejections II-IV
Similar to claims 1 and 6, independent claim 7 requires the recited
method of operating an energy storage device to comprise, in part, operating
with a control device a first plurality of coupling devices in a first string in a
first mode to connect a predetermined number of energy storage modules in
the first string, and a second plurality of coupling devices in the first string
in a second mode to bypass any energy storage module in the first plurality
of energy storage modules that is not in a predetermined number of energy
storage modules; and operating with the control device a first plurality of
coupling devices in a second string in a first mode to connect the
9
Appeal2018-002979
Application 14/234,752
predetermined number of energy storage modules in the second string, and a
second plurality of coupling devices in the second string in a second mode to
bypass any energy storage module in the second plurality of energy storage
modules that is not in the predetermined number of energy storage modules.
The Examiner does not identify any disclosure in Kawakami that
indicates or would have suggested that Kawakami' s control circuit is
capable of operating-without further programming-to connect a first
predetermined number of energy storage modules, and bypass any energy
storage module that is not in a predetermined number of energy storage
modules, in a first string, and connect and bypass the same respective
numbers of energy storage modules in a second string of Kawakami' s
electric power accumulating apparatus, as required by claim 7. Final Act.
12-15; Typhoon Touch, 659 F.3d at 1380. The Examiner also does not
identify any disclosure in Kawakami that indicates or would have suggested
that Kawakami's control circuit is capable of performing the functions
recited in claims 1 and 6, without further programming ( discussed above).
Because the Examiner does not rely on any disclosure in the
secondary references that remedies these deficiencies of Kawakami (Final
Act. 7-8, 11-12, 14--15; Ans. 27-30), we do not sustain the Examiner's
rejections of independent claims 1, 6, and 7, and also claims 3, 5, 9, and 10,
which each depend from claim 1 or 7, under 35 U.S.C. § 103(a).
10
Appeal2018-002979
Application 14/234,752
DECISION
We reverse the Examiner's rejection of 1, 5, and 6 under 35 U.S.C.
§ 102(b), and rejections of claims 1, 3, 5-7, 9, and 10 under 35 U.S.C.
§ 103(a).
REVERSED
11