Ex Parte Luke et al

Patent Trial and Appeal BoardOct 31, 2016

14017090 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/017,090 09/03/2013 Hok-Sum Horace Luke 500 7590 11/01/2016 SEED INTELLECTUAL PROPERTY LAW GROUP LLP 701 FIFTH A VE SUITE 5400 SEATTLE, WA 98104 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. 170178.428 4395 EXAMINER BERHANU, SAMUEL ART UNIT PAPER NUMBER 2859 MAILDATE DELIVERY MODE 11/01/2016 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 HOK-SUM HORACE LUKE and CHING CHEN Appeal2015-005523 Application 14/017 ,090 Technology Center 2800 Before LINDA M. GAUDETTE, JULIA HEANEY, and JEFFREY R. SNAY, Administrative Patent Judges. HEANEY, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 seek our review pursuant to 35 U.S.C. Â§ 134(a) of a decision of the Examiner to reject claims 1-27 of Application 14/017,090 under 35 U.S.C. Â§ 102(e) as anticipated by Chen. 2 We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm-in-part. 1 Appellants identify the real party in interest as Gogoro Inc. App. Br. 1. 2 Chen et al., US 2013/0031318 Al published Jan. 31, 2013 (hereinafter "Chen"). Appeal2015-005523 Application 14/017,090 BACKGROUND The subject matter on appeal relates to portable charging devices and rechargeable electrical energy storage devices, such as secondary batteries. Specification ("Spec.") 1. The claims at issue describe a security system and method, which use authentication of the portable charging device or electrical energy storage device before charging is allowed or enabled. App. Br. 2. Claim 1 is illustrative of the claimed subject matter: 1. A portable charging device security system of a portable charging device for charging a portable electrical energy storage device, comprising: at least one controller; and at least one communications module coupled to the at least one controller, wherein the at least one controller is configured to: receive information regarding authentication of a portable electrical energy storage device to be charged by the portable charging device; make a determination regarding allowing charging of the portable electrical energy storage device by the portable charging device based on the received information regarding authentication; and record or communicate information regarding the charging to track usage of the portable charging device. Claims Appx., App. Br. 14. DISCUSSION Appellants argue only independent claims 1, 12, 23, and 26, based on the language of claim 1, and do not present arguments for separate patentability of the dependent claims. App. Br. 6-12. We limit our 2 Appeal2015-005523 Application 14/017,090 discussion to the independent claims; all dependent claims stand or fall with their respective independent claims. Appellants advance two arguments for reversal of the anticipation rejection: (1) Chen does not disclose using a "portable charging device" (claims 1, 12, 23, and 26) (App. Br. 6); and (2) Chen does not disclose a controller configured to "receive information regarding authentication of a portable electrical energy storage device" (claims 1 and 23). App. Br. 11- 12, citing Chen i-fi-1 40, 84. The Examiner finds that Chen's "collection, charging and distribution machine" 102 corresponds to the "portable charging device" recited in the independent claims. Final Act. 3, 8-9, 12, 14, citing Chen Fig. 1, i137. Machine 102 may take the form of a vending machine or kiosk. Chen i138. Appellants argue that Chen's machine 102 is not portable because it is not "easy to carry or move around." App. Br. 6-8, citing several dictionaries. The Examiner responds that Chen's machine 102, in the form of a vending machine or kiosk, is easy to move around and therefore "portable." Ans. 2- 3. We have considered the argued claim limitation in light of the claims and Specification, and agree with the Examiner that the broadest reasonable interpretation of "portable charging device" encompasses a movable vending machine or kiosk such as Chen's machine 102. Appellants have not directed us to, nor do we find, any special definition of the term "portable" in the Specification. Moreover, only one of the two dictionary definitions relied on by Appellants supports their argument that to be "portable," a device must be "easy" to move around. See App. Br. 7-8. The definition from Merriam- Webster online merely defines "portable" as "capable of being carried or moved about." See id. at 7 (citing http:www.merriam- 3 Appeal2015-005523 Application 14/017,090 webster.com/dictionary/portable ). Appellants have not argued persuasively that it was unreasonable for the Examiner to find that Chen's machine 102 is capable of being moved about. Appellants' second argument for reversal is directed at the Examiner's finding that "controller 410 of Chen's charging and distribution machine 102 may receive information such as authenticity, authorization level, operation, and status." Ans. 3--4, citing Chen i-f 84, lines 4--7. Appellants argue that Chen's controller 410 is a component within the portable electrical energy storage device, and further that Chen's description of controller 410 receiving information regarding external components "does not mention any of those external components being a portable electrical energy storage device, much less mention information regarding authentication of a portable electrical energy storage device." App. Br. 11, citing Chen i-f 84. Appellants' argument is persuasive of harmful error in the rejection. The only portion of Chen upon which the Examiner relies for disclosure of "receiv[ing] information regarding authentication of a portable electrical energy storage device" as recited in claims 1 and 23 is Chen i-f 84. Final Act. 3, 12. As Appellants note, Chen i-f 84 describes controller 410 as an internal component of the portable electrical energy storage device receiving information from components of an external device: [0084] The controller 410 may also receive signals from various sensors and/or components of an external device via the communications subsystem 206 of collection, charging and distribution machine 102. This information may include information that characterizes or is indicative of the authenticity, authorization level, operation, status, or condition of such components. App. Br. 11. Therefore, we are persuaded that the Examiner has not identified any structure in Chen that receives information regarding 4 Appeal2015-005523 Application 14/017,090 authentication of a portable electrical energy storage device, and fails to present a prima facie case of anticipation of claim 1 or 23. Accordingly, we reverse the rejection of claims 1 and 23. Because the Examiner's rejection of dependent claims 2-11 and 24--25 does not remedy the errors identified above, we likewise reverse the Examiner's anticipation rejection of those claims. SUMMARY We reverse the rejection of claims 1-11 and 23-25 under 35 U.S.C. Â§ 102( e) as anticipated by Chen. We affirm the rejection of claims 12-22 and 26-27 under 35 U.S.C. Â§ 102( e) as anticipated by Chen. AFFIRMED-IN-PART 5