Ex Parte Niki et al

Patent Trial and Appeal BoardNov 28, 2012

11130242 (P.T.A.B. Nov. 28, 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. 11/130,242 05/17/2005 Kazuya Niki 050301 2280 23850 7590 11/29/2012 KRATZ, QUINTOS & HANSON, LLP 1420 K Street, N.W. 4th Floor WASHINGTON, DC 20005 EXAMINER PIERRE LOUIS, ANDRE ART UNIT PAPER NUMBER 2123 MAIL DATE DELIVERY MODE 11/29/2012 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 KAZUYA NIKI and OSAMU MORIYA Appeal 2010-006800 Application 11/130,2421 Technology Center 2100 ____________ Before THU A. DANG, JAMES R. HUGHES, and GREGORY L. GONSALVES, Administrative Patent Judges. PER CURIAM DECISION ON APPEAL 1 Application filed on May 17, 2005, claiming benefit from Japanese Application No. 2004-156472(P), filed May, 26, 2004, and Japanese Application No. 2004-220614(P), filed Jul. 26, 2004. The Real Party in Interest is Sanyo Electric Company Ltd. STATEMENT OF CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 5, 6, 7, 9, 10, and 12-25. Claims 1-4, 8, and 11 were cancelled during prosecution. (App. Br. 4.)2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Invention Appellants’ invention relates generally to a simulation technique for an electric circuit and, more specifically, to an equivalent circuit model of an electricity storage element. (Spec. 1, ll. 9-10.)3 Representative Claim Independent claim 5, reproduced below with the key disputed limitations emphasized, further illustrates the invention: 5. A computer-readable record medium recording a program to be executed by a computer for derivation of an equivalent circuit model of an electricity storage element wherein a real part of an equivalent impedance varies to approximate to a real part of a measured impedance according to a frequency of an applied AC signal; wherein said equivalent circuit model includes 2 Appellants’ Briefs and the Examiner’s Answer state that claims 1-4 are still pending. However, as noted by Appellants (App. Br. 5) and as indicated in the “Claims Appendix,” claims 1-4 were cancelled in the Amendment after Final dated May 29, 2009, in order to overcome a rejection under § 101. The Examiner entered the amendment and withdrew the § 101 rejection in the Advisory Action mailed June 29, 2009. Thus, we conclude the headings indicating claims 1-4 to be pending are harmless error. 3 We refer to Appellants’ Specification (“Spec.”); Reply Brief (“Reply Br.”) filed Feb. 4, 2010; and Appeal Brief (“App. Br.”) filed Sep. 28, 2009. We also refer to the Examiner’s Answer (“Ans.”) mailed Jan. 6, 2010. Appeal 2010-006800 Application 11/130,242 3 a first circuit corresponding to an electricity storage unit and a second circuit corresponding to a terminal unit and connected in series with said first circuit; said first circuit includes at least one first series circuit including a first parallel circuit and a second parallel circuit connected in series; said first parallel circuit includes a first resistance and an inductance connected in parallel with said first resistance; said second parallel circuit includes a second resistance and a first capacitance connected in parallel with said second resistance; and said program allows the computer to execute the steps of accepting a frequency characteristic of the real part of the measured impedance of said electricity storage element and optimizing each value of an element forming said first circuit to approximate a frequency characteristic of the real part of the equivalent impedance of said equivalent circuit model to the frequency characteristic of the real part of said measured impedance. Rejection Claims 5-7, 9, 10, and 12-25 stand rejected under 35 U.S.C. § 103(a) as being obvious over Stevenson (U.S. Patent No. 6,473,291 B1, issued Oct. 29, 2002, filed Mar. 28, 2001) in view of PSpice (OrCAD Inc., OrCAD PSpice User’s Guide, 1998). Appeal 2010-006800 Application 11/130,242 4 ANALYSIS Based upon our review of the record, we find the preponderance of the evidence supports the Examiner’s finding that the disputed subject matter of representative claim 5 would have been taught or suggested by the cited combination of references. (See Ans. 3-4, 15-17.) We agree with and adopt the Examiner’s findings. We have reviewed Appellants’ arguments in the Appeal Brief and Reply Brief and find them to be without merit. In particular, Appellants argue “. . . the results of PSpice depend on a person, and if this user is the person of ordinary skill, then even with PSpice, she or he cannot create any invention.” (App. Br. 9.) “PSpice does not do anything on its own; it is a tool; it waits for inputs, and inputs corresponding to the instant claims are not disclosed. (Id.) We observe that PSpice is a secondary reference that would have, in fact, taught or suggested models as relied upon by the Examiner. (See PSpice, 85.) Appellants further argue that the PSpice reference does not anticipate. (Reply Br. 2; App. Br. 10-11.) Appellants should note that the pending claims stand rejected under 35 U.S.C. § 103. Therefore, Appellants’ arguments regarding anticipation do not address the Examiner’s specific findings of obviousness. Moreover, we find Appellants’ singular attack of the PSpice reference unavailing.4,5 4 One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Merck & Co., Inc., 800 F.2d 1091 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, (CCPA 1981). Appeal 2010-006800 Application 11/130,242 5 Based on this record, we affirm the Examiner’s rejection of claims 5- 7, 9, 10, and 12-25 for the reasons stated in the Answer. CONCLUSION OF LAW Appellants have not shown that the Examiner erred in rejecting claims 5-7, 9, 10, and 12-25 under 35 U.S.C. § 103(a). DECISION We affirm the Examiner’s rejection of claims 5-7, 9, 10, and 12-25 under 35 U.S.C. § 103(a). 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. § 41.50(f). AFFIRMED tkl 5 Arguments that Appellant could have made but chose not to make are considered waived. See 37 C.F.R. § 41.37(c)(1)(vii).