Ex Parte Kumar et al

Patent Trial and Appeal BoardNov 20, 2012

10879612 (P.T.A.B. Nov. 20, 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. 10/879,612 06/29/2004 Pavan M. Kumar ITL.1145US (P19227) 6802 21906 7590 11/20/2012 TROP, PRUNER & HU, P.C. 1616 S. VOSS ROAD, SUITE 750 HOUSTON, TX 77057-2631 EXAMINER BERHANU, SAMUEL ART UNIT PAPER NUMBER 2859 MAIL DATE DELIVERY MODE 11/20/2012 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 PAVAN M. KUMAR, DONALD R. ALEXANDER, and ROBERT A. DUNSTAN ____________ Appeal 2010-006616 Application 10/879,612 Technology Center 2800 ____________ Before ALLEN R. MacDONALD, TREVOR JEFFERSON, and LYNNE E. PETTIGREW, Administrative Patent Judges. PETTIGREW, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from a final rejection of claims 11-17, 20-23, 25, 35, 36, and 41. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2010-006616 Application 10/879,612 2 STATEMENT OF THE CASE Introduction Appellants’ invention relates to a resilient power supply that provides backup battery power to a system such as a personal computer to enable orderly shutdown during an alternating current (AC) power outage. Spec. 2. Claim 11 is illustrative of the invention (emphasis added): 11. A method comprising: charging a back-up battery using a standby low voltage from a standby rail of a main power supply of a system; and using the standby low voltage from the standby rail of the main power supply to charge the back-up battery when the main power supply and the system are off and alternating current (AC) mains are attached and active, and using a non- standby low voltage of the main power supply to charge the back-up battery when the main power supply and the system are on, wherein the system has standby capability. Rejections on Appeal The Examiner rejected claims 11-17, 20-23, 25, 35, 36, and 41 under 35 U.S.C. § 112, first paragraph, for failure to comply with the written description requirement.1 1 Appellants do not separately argue claims 12-17, 20-23, 25, 35, 36, and 41. Therefore, we treat claim 11 as representative for purposes of this rejection. Appeal 2010-006616 Application 10/879,612 3 The Examiner rejected claims 11-14, 17, 20-23, 25, 35, 36, and 41 under 35 U.S.C. § 103(a) as being unpatentable over Shih (US 6,255,744 B1).2 The Examiner rejected claims 15 and 16 under 35 U.S.C. § 103(a) as being unpatentable over Shih and O’Connor (US 5,958,054). Issues on Appeal 1. Did the Examiner err in rejecting the claims under 35 U.S.C. § 112, first paragraph, for failure to comply with the written description requirement? 2. Did the Examiner err in rejecting the claims under 35 U.S.C. § 103(a) because Shih fails to teach using a standby voltage from the main power supply to charge a backup battery when the main power supply and system are off and alternating current (AC) mains are attached and active? ANALYSIS Rejection under 35 U.S.C. § 112, first paragraph The Examiner finds there is no written description support for “[c]harging a back up battery using a stand by low [v]oltage from a main power supply of a system using the [s]tand by voltage from the main power supply to charge the back-up battery when the main power and the system are off.” Ans. 4-5 (emphasis omitted). Specifically, the Examiner finds “it is not clear how the stand by low voltage from a main power supply is 2 Appellants do not separately argue claims 12, 13, 17, 20, 21, 25, and 41, and we treat claim 11 as representative of those claims for purposes of this rejection. Appellants make separate arguments regarding claims 14, 22, 23, 35, and 36. Appeal 2010-006616 Application 10/879,612 4 available to charge the battery when the main power supply is off, the specification does not describe how such charging is conveyed.” Ans. 5 (emphasis omitted). Appellants contend that “the Examiner fails to identify from the language of claim 11 . . . that the charging of a back-up battery when the main power supply and system are off occurs when alternating current (AC) mains are attached and active and further where the system has a standby capability.” App Br. 10 (emphasis added). Appellants further contend that the specification describes that “such charging using a standby low voltage can occur, as the system has standby capability and the main power supply includes a standby rail that is always present when AC mains are attached and active.” Id. We agree with Appellants. The specification describes a power supply with a standby capability, i.e., a power supply with a standby voltage output (e.g., +5V SB in Fig. 1) that is present when the power supply is off and AC mains are attached and active. Spec. 5, lines 22-24. This standby voltage is therefore available for charging the backup battery when the power supply is off and AC mains are attached and active. Id.; Spec. 6, lines 4-6. Accordingly, we reverse the Examiner’s rejection of claims 11-17, 20- 23, 25, 35, 36, and 41 under 35 U.S.C. § 112, first paragraph, for failure to comply with the written description requirement. Rejections under 35 U.S.C. § 103(a) The Examiner finds that Shih teaches “using the standby low voltage from the standby rail of the main power supply to charge the back-up battery when the main power supply and the system are off and alternating current (AC) mains are attached and active” as recited in claim 11 because “when Appeal 2010-006616 Application 10/879,612 5 the AC is active and available [in Shih], the AC power will be filtered and converted to Vdc as shown in figure 3, and used to charge battery 212.” Ans. 7 (emphasis omitted). Appellants contend that “this identified support is for normal operation, not when the power supply is off.” App. Br. 12. Appellants further contend that “when not in normal operation, the charger of Shih is in an off state and no charging of the battery occurs. . . . [T]here is nothing in Shih to teach that charging can occur when the system is off.” Id. We agree with Appellants that Shih does not teach charging a backup battery when the main power supply and system are off. Because this issue is dispositive of our decision regarding this rejection, we need not address Appellants’ additional arguments regarding claims 14, 22, 23, 35, and 36. Accordingly, we reverse the Examiner’s rejection of claims 11-14, 17, 20- 23, 25, 35, 36, and 41 under 35 U.S.C. § 103(a) over Shih. We also agree with Appellants that the argument addressed above is dispositive with respect to claims 15 and 16 because there is no finding that O’Connor teaches the subject matter missing from Shih. Accordingly, we reverse the Examiner’s rejection of claims 15 and 16 under 35 U.S.C. § 103(a) over Shih and O’Connor. CONCLUSIONS On the record before us, we conclude that the Examiner erred in rejecting claims 11-17, 20-23, 25, 35, 36, and 41 under 35 U.S.C. § 112, first paragraph, for failure to comply the written description requirement. We further conclude that the Examiner erred in rejecting claims 11-17, 20-23, 25, 35, 36, and 41 under 35 U.S.C. § 103(a). Appeal 2010-006616 Application 10/879,612 6 DECISION3 The Examiner’s rejection of claims 11-17, 20-23, 25, 35, 36, and 41 is reversed. REVERSED msc 3 Appellants also challenge the Examiner’s objection to the drawings. App. Br. 15. An objection is a petitionable matter and not within the jurisdiction of the Board. See Manual of Patent Examining Procedure §§ 706.01, 1002.02(c)(4), 1201.