Ex Parte Ramey et al

Patent Trial and Appeal Board

Dec 11, 2012

11118490 (P.T.A.B. Dec. 11, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BLAINE EDWARD RAMEY, CLINT ALAN
ECOFF, SCOTT ALAN EDWARDS, MATTHEW C.
SAUERS, JAMES R. KURTOCK, and JAMES J. HARTMAN
____________________

Appeal 2010-005814
Application 11/118,490
Technology Center 2800
____________________

Before ERIC S. FRAHM, KALYAN K. DESHPANDE, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1-50. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

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STATEMENT OF THE CASE
1

Introduction
Claims 1-50 have been twice rejected. See FOA 1 (“Office Action
Summary”); accord App. Br. 2 (“Status of the Claims”). Although the
Notice of Appeal is silent regarding which claims are appealed (see Notice
of Appeal of Apr. 15, 2009, appealing from the “last decision of the
Examiner”), Appellants unambiguously state that only pending claims 1, 18-
20, 29-31, and 44-46 are appealed. See App. Br. 10; accord Ans. 2-3.
Accordingly, we confine our decision to those claims appealed and not
conceded, i.e., claims 1, 18-20, 29-31, and 44-46. See Ex parte Ghuman, 88
USPQ2d 1478 (BPAI 2008) (precedential) (holding that when appellants are
silent in the notice of appeal as to the specific claims being appealed, and
then clearly state in the appeal brief that some of the finally rejected claims
are not being pursued in the appeal, Appellants should cancel those claims
not pursued). Following our decision, the Examiner should cancel the non-
appealed claims (claims 2, 4, 5, 7-17, 21-28, 32, 34-43, and 47-50).
2
See id.;
see also Manual of Patent Examining Procedure (MPEP) § 1215.03, Rev. 8,
July 2010.

1
Our decision refers to Appellants’ Appeal Brief (“App. Br.,” filed
Jul. 20, 2009); Reply Brief (“Reply Br.,” filed Feb. 8, 2010); Examiner’s
Answer (“Ans.,” mailed Dec. 8, 2009); Final Office Action (“FOA,” mailed
Mar. 18, 2009); and the original Specification (“Spec.,” filed Apr. 29, 2005).

2
We note that, contrary to the Appeal Brief (App. 2), the Examiner has not
addressed dependent claims 3, 6, and 33 by way of rejection, objection, or
allowability, such that these claims are not before the Board in this Appeal,
and are not included in our ultimate Decision.
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As such, Appellants appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1, 18-20, 29-31, and 44-46. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
The Invention
Appellants’ invention “relates generally to electrical protection, and in
particular, to electrical protection circuitry for a docking station base of a
hand held meter, such as for example a blood glucose meter, which prevents
system damage from liquid contact and unspecified power supply voltages
and currents, and the method thereof.” Spec. p. 1, Title and ¶ [0001],
“BACKGROUND OF THE INVENTION”.
Exemplary Claims
A. Claim 1 is an exemplary claim representing an aspect of the
invention which is reproduced below (emphasis added to disputed
limitations):
1. An apparatus providing electrical protection between a
rechargeable battery and a power supply, said apparatus
comprising:
an output terminal for supplying power from the power supply
to the rechargeable battery;
a ground terminal for grounding the chargeable battery;
a current monitoring circuit adapted to detect an over-current
condition of the rechargeable battery when both the
rechargeable battery is coupled to said output and ground
terminals and said apparatus is coupled to the power supply,
and to output an over-current fault detection signal
responsive to said over-current condition;
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a voltage supervisor circuit adapted to detect an out-of-range
voltage condition of the power supply when the apparatus is
coupled thereto and regardless if the rechargeable battery is
coupled to said output and ground terminals, and to output a
voltage fault detection signal responsive to said out-of-range
voltage condition; and
a switch responsive to said fault detection signals, said switch is
adapted to inhibit supplying power from the power supply to
said output terminal when either said over-current condition or
out-of-range voltage condition is detected.

B. Claim 20 is an exemplary claim representing an aspect of the
invention which is reproduced below (emphasis added to disputed
limitations):
20. The apparatus of claim 1 further comprising a latch
circuit, said latch circuit comprises logic and memory
providing an output signal having first and second states, said
first state indicating that said over-current condition is not
detected, and said second state indicating said over-condition is
detected, wherein when said over-current condition is detected
by said current monitoring circuit, said latch circuit is
adapted to latch said switch in a current shutoff mode which
cuts power to said output terminal by said logic being adapted
to hold said output signal of said memory in said second state
until power from the power supply is cycled and said over-
current condition is not detected.

C. Claim 46 is an exemplary claim representing an aspect of the
invention which is reproduced below (emphasis added to disputed
limitations):
46. The method of claim 31 further comprising providing a
visual indicator, wherein if said voltage supervisor circuit
detects said out-of-range voltage condition regardless if the
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rechargeable battery is connected to said output terminal, said
apparatus
3
is adapted to blink said visual indicator, wherein if
the rechargeable battery is coupled to said output terminal
and said current monitoring circuit detects said over-current
condition, said apparatus is adapted to blink said visual
indicator, and wherein if said battery is coupled to said output
terminal and neither said over-current nor out-of-range
conditions are detected by the apparatus, said apparatus is
adapted to illuminate said visual indicator continuously.
Prior Art
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Liu US 2005/0007711 A1 Jan. 13, 2005
Popescu-Stanesti US 6,888,338 May 3, 2005
Drucker US 7,041,468 B2 May 9, 2006
Riyuusuke JP 10174301 June 26, 1998

3
It appears that the phrase “said apparatus” in method claim 46 likely was a
reference to “said apparatus” in dependent apparatus claim 21 which recites
similar subject matter, the rejection of which is not before us on appeal. If
further prosecution of the application should ensue, analysis of this claim
under 35 U.S.C. § 112, ¶2 for proper antecedent basis may be appropriate.
Aside from this claim drafting issue, in order to expedite the decision of this
appeal on the merits, we read “said apparatus” to mean “said method” in
claim 46.
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Rejections on Appeal
4

A. The Examiner has rejected claims 1, 2, 8, 18-20, 22, 24, 25, 27,
31-32, 36, 44-47, and 49-50 under 35 U.S.C. § 103(a) as being unpatentable
over Liu in view of Popescu-Stanesti (Ans. 4).
B. The Examiner has rejected claim 29 under 35 U.S.C. § 103(a)
as being unpatentable over Liu in view of Popescu-Stanesti and Drucker
(Ans. 16).
C. The Examiner has rejected claim 30 under 35 U.S.C. § 103(a)
as being unpatentable over Liu in view of Popescu-Stanesti, Drucker, and
Riyuusuke (Ans. 17).
GROUPING OF CLAIMS
Based upon Appellants’ arguments against a portion of the final
rejections (identified above), the separate arguments for patentability set
forth with respect to certain claims on appeal (App. Br. 13-27; Reply Br. 7),
and our authority under 37 C.F.R. §41.37(c)(1)(vii), we select the following
representative claims to decide this appeal in accordance with those
arguments and rejections:
Claim 1: Claims 18, 19, 29-31, 44, and 45 stand or fall together
with independent claim 1. (See App. Br. 13-27; Reply Br. 2-7).

4
We also note that Appellant has chosen not to address each rejection in the
Final Office Action, but instead only argues the three rejections indicated
above, consistent with the Examiner’s observations in the Answer (see Ans.
2-3, “GROUNDS OF REJECTION NOT ON REVIEW”).
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Claim 20: Claim 20 is separately argued and stands alone (See App.
Br. 20-22; Reply Br. 6).
Claim 46: Claim 46 is separately argued and stands alone. (See
App. Br. 23; Reply Br. 7).
We point out that, to the extent that any “separate arguments” were
presented by Appellants for independent claims 29 and 30 (App. Br. 24-27),
these arguments merely relied upon the arguments presented against the
combination of the Liu and Popescu-Stanesti references with respect to
independent claim 1. Thus, we find that Appellants’ arguments presented in
response to the rejection of claims 1, 29, and 30 result in the same issue,
which we treat in the analysis of claim 1.
We have only considered those arguments raised by Appellants in the
Briefs. Arguments Appellants could have made but chose not to make in the
Briefs have not been considered and are deemed to be waived.
ISSUES AND ANALYSIS
1. 35 U.S.C. § 103(a): Claims 1, 18, 19, 29-31, 44, and 45
Appellants’ Contentions
Appellants contend that “[t]he Liu and Popescu-Stanesti references,
either alone or in combination, fail to teach or suggest a voltage supervisor
circuit which can detect an out-of-range voltage condition of the power
supply regardless of whether the rechargeable battery is coupled to the
output and ground terminals.” App. Br. 15.
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Appellants also contend that “Liu fails to disclose protection circuitry
in which the voltage supervisor is adapted to detect an out-of-range voltage
regardless if the rechargeable battery is coupled to the output and ground
terminals.” App. Br. 16.
Appellants further contend that “Liu contemplates that the system
(e.g., meter) is always coupled to the protection circuit . . . [and,] unlike the
present application, Liu is silent regarding monitoring for out-of-range
voltage conditions when the rechargeable battery is not coupled to the
protection circuit.” App. Br. 17.
Finally, Appellants contend that none of the cited art teaches or
suggests “a current monitoring circuit adapted to detect an over-current
condition of the rechargeable battery . . . and to output an over-current fault
detection signal responsive to said over-current condition,” as recited in
independent claim 1. App. Br. 17.
Issue 1
Did the Examiner err in finding that the combination of Liu and
Popescu-Stanesti teaches or suggests an apparatus that includes, inter alia,
“a current monitoring circuit adapted to detect an over-current condition of
the rechargeable battery . . . and to output an over-current fault detection
signal responsive to said over-current condition; [and] a voltage supervisor
circuit adapted to detect an out-of-range voltage condition of the power
supply when the apparatus is coupled thereto and regardless if the
rechargeable battery is coupled to said output and ground terminals,” as
recited in independent claim 1?
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Analysis
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions with respect to claim 1, and we adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken and (2) the reasons and rebuttals set forth by the Examiner in
the Examiner’s Answer (Ans. 4-8, 18-27) in response to Appellants’
Arguments (App. Br. 13-21).
In particular, we concur with the Examiner’s finding that the
combination of Popescu-Stanesti teaches or suggests an apparatus that
includes, inter alia, “a current monitoring circuit adapted to detect an over-
current condition of the rechargeable battery . . . and to output an over-
current fault detection signal responsive to said over-current condition; [and]
a voltage supervisor circuit adapted to detect an out-of-range voltage
condition of the power supply when the apparatus is coupled thereto and
regardless if the rechargeable battery is coupled to said output and ground
terminals,” as recited in independent claim 1.
We also agree with the Examiner’s finding (Ans. 5, 18-20, citing Liu
at Figs. 3, 4, 5) that Liu teaches or suggests a voltage supervisor circuit that
performs the functions recited supra. Further to this point, we also disagree
with Appellants’ argument (Reply Br. 4) that the fixed battery 44 of Liu is
not capable of being uncoupled from the power and ground terminals, and
point out that the Examiner instead relies upon Popescu-Stanesti for teaching
a rechargeable battery capable of being uncoupled from the power and
ground terminals of the protection circuitry. We also agree with the
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Examiner’s alternative argument that, “even if battery 44 [in Liu] was the
battery relied upon the examiner, battery 44 can still be considered as
capable of being decoupled by opening switches 47 and 45 [in Liu Fig. 3].”
(Ans. 20).
We further agree with the Examiner’s finding (Ans. 22, citing Liu Fig.
3) that Liu’s short circuit detection circuit meets the claimed limitation of “a
current monitoring circuit adapted to detect an over-current condition of the
rechargeable battery when both the rechargeable battery is coupled to said
output and ground terminals and said apparatus is coupled to the power
supply, and to output an over-current fault detection signal responsive to
said over-current condition.”
We are not persuaded by Appellants’ argument that:
The protection circuit of Liu does not monitor the current
at all . . . [but instead] merely monitors voltage (VSYS) and
simply assumes that there is a short circuit if VSYS falls below
a set threshold . . . [and therefore] it is incapable of identifying
situations in which the battery has an over-current condition
which is not a short circuit
(Reply Br. 5).
We find that Appellants’ argument is not commensurate with the
scope of claim 1 which merely requires that the current monitoring circuit
detect an over-current condition of the rechargeable battery, and output an
over-current fault detection signal responsive to the over-current condition.
Appellants argue (Reply Br. 5) that Liu is “incapable of identifying
situations in which the battery has an over-current condition which is not a
short circuit,” which clearly implies that Appellants recognize that Liu is
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capable of detecting an over-current condition which is a short circuit
(emphasis added). Appellants do not provide a definition of “over-current
condition,” particularly one that excludes a short circuit (we find that a short
circuit is an over-current condition), nor does the claim recitation require
that the current monitoring circuit detect non-short circuit over-current
conditions.
Accordingly, Appellants have not convinced us that the Examiner
erred in the unpatentability rejection of claim 1 over the combination of Liu
and Popescu-Stanesti.
Therefore, we sustain the Examiner’s rejection of claim 1 and claims
2, 8, 18-20, 22, 24, 25, 27, 31-32, 36, 44-47, and 49-50 which fall with
claim 1.
2. 35 U.S.C. § 103(a): Claim 20
Appellants’ Contentions
Appellants contend that “Liu and Popescu-Stanesti do not teach a
current monitoring circuit adapted to detect an over-current condition of the
rechargeable battery . . . [and] these references also do not teach a latch
circuit comprising logic and memory and adapted to latch the switch in a
current shutoff mode when an over-current condition is detected.” (App.
Br. 22).
Issue 2
Did the Examiner err in finding that the combination of Liu and
Popescu-Stanesti teach or suggest “a latch circuit, said latch circuit
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comprises logic and memory providing an output signal having first and
second states . . . wherein when said over-current condition is detected by
said current monitoring circuit, said latch circuit is adapted to latch said
switch in a current shutoff mode,” as recited in dependent claim 20?
Analysis
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions with respect to claim 20, and we adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken and (2) the reasons and rebuttals set forth by the Examiner in
the Examiner’s Answer (Ans. 6-7, 24-25) in response to Appellants’
Arguments (App. Br. 21-22; Reply Br. 6).
We concur with the conclusions reached by the Examiner, particularly
the Examiner’s findings (Ans. 24-25, citing to Liu at ¶ [0027]) that Liu’s SD
latch 65 meets the claimed limitation of “a latch circuit, said latch circuit
comprises logic and memory providing an output signal having first and
second states . . . wherein when said over-current condition is detected by
said current monitoring circuit, said latch circuit is adapted to latch said
switch in a current shutoff mode,” as recited in dependent claim 20. We are
not persuaded by Appellants’ mere assertion, without any evidence or
substantive argument (App. Br. 22), that Liu Figure 8 does not teach “a latch
circuit comprising logic and memory and adapted to latch the switch in a
current shutoff mode when an over-current condition is detected.”
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Appellants have not convinced us of any error in the Examiner’s
characterization of the cited art or in the Examiner’s claim construction.
Accordingly, we sustain the Examiner’s rejection of claim 20.
3. 35 U.S.C. § 103(a): Claim 46
Appellants’ Contentions
Appellants contend that “both references [Liu and Popescu-Stanesti]
are silent about blinking the visual indicator for various fault conditions . . .
[such that] claim 46 is patentable over Liu in view of Popescu-Stanesti.”
App. Br. 23.
Issue 3
Did the Examiner err in finding that the combination of Liu and
Popescu-Stanesti teaches or suggests a method that includes, inter alia,
“providing a visual indicator . . . adapted to blink . . . [when] said current
monitoring circuit detects said over-current condition,” as recited in
dependent claim 46?
Analysis
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (App. Br. 23) that the Examiner has erred, and we agree with
Appellants’ arguments with respect to the rejection of claim 46.
The Examiner’s Answer (Ans. 26) states that “[c]laim 46 limitations
are similar to Claim 21, therefore, please also see the rejection of Claim 21.”
Claim 21, not the subject of this Appeal, stands rejected under 35 U.S.C.
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§ 103(a) as being unpatentable over the combination of Liu and Popescu-
Stanesti in view of Holmes. In the Final Office Action, the Holmes
reference is relied upon by the Examiner as teaching a visual indicator
adapted to blink as recited in claim 21. FOA 12-13. However, earlier in the
Final Office Action, Holmes is not explicitly cited by the Examiner in the
rejection of claim 46 over the combination of Liu and Popescu-Stanesti.
“Regarding claim[] . . . [46], the recited steps of the method claims would
necessarily be performed when using the apparatus of Claim[] 21. . . .
FOA 5.
Having convinced us of error in the Examiner’s rejection of dependent
claim 46, we cannot sustain the Examiner’s rejection of that claim.
5

CONCLUSIONS
(1) Appellants have not established that the Examiner erred with
respect to the various unpatentability rejections of claims 1, 18-20, 29-31,
44, and 45 under 35 U.S.C. § 103(a), and the rejections are sustained.
(2) Appellants have established that the Examiner erred with
respect to the unpatentability rejection of dependent claim 46, and we cannot
sustain the rejection of that claim.
(3) The Examiner has not addressed dependent claims 3, 6, 33, and
36 by way of substantive rejection or allowability, such that these claims are
not part of this Appeal or our Decision.

5
However, we reiterate that the recitation of “said apparatus” in method
claim 46 may present issues of indefiniteness under 35 U.S.C. § 112, ¶2.
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DECISION
A. The decision of the Examiner to reject claims 1, 18-20, 29-31,
44, and 45 is affirmed.
B. The decision of the Examiner to reject claim 46 is reversed.
C. Claims 2, 4, 5, 7-17, 21-28, 32, 34-43, and 47-50 have not been
appealed, and are subject to cancellation. See In re Ghuman, cited supra.
D. We reach no decision on the status of claims 3, 6, and 33 which
were not substantively addressed by the Examiner nor properly presented to
us for appeal.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2011).
AFFIRMED-IN-PART

ELD