Ex Parte Syed et al

Patent Trial and Appeal Board

Dec 11, 2012

12817703 (P.T.A.B. Dec. 11, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/817,703 06/17/2010 Fazal Urrahman Syed 81205117 6105
28395 7590 12/12/2012
BROOKS KUSHMAN P.C./FGTL
1000 TOWN CENTER
22ND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
BERHANU, SAMUEL
ART UNIT PAPER NUMBER
2859
MAIL DATE DELIVERY MODE
12/12/2012 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 FAZAL URRAHMAN SYED, VENKATAPATHI RAJU
NALLAPA, SHAILESH SHRIKANT KOZAREKAR, MICHAEL
EDWARD LOFTUS, SHANE SCHULZE, ROBERT K. TAENAKA,
DONALD CHARLES FRANKS, MING LANG KUANG, and
VENKATESWA ANAND SANKARAN
____________

Appeal 2013-001699
Application 12/817,703
Technology Center 2800
____________

Before JOHN A. JEFFERY, JENNIFER L. McKEOWN,
and DAVID C. McKONE, Administrative Patent Judges.

McKONE, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-15 and 17, which constitute all the claims pending in this
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application. See App. Br. 2-3; Final Rej. 1.1 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm in part and enter a new ground of rejection within the
provisions of 37 C.F.R. § 41.50(b).

STATEMENT OF THE CASE
This application was made special under the Green Technology Pilot
Program. See Mar. 29, 2011, Decision on Petition to Make Special Under
the Green Technology Pilot Program. Appellants’ invention relates to solar
panel arrays on alternatively powered vehicles. See, e.g., Spec. 1:33-2:7;
3:10-18. Claim 1, which is illustrative of the invention, reads as follows:
1. A vehicle comprising:
an electric machine configured to generate motive
power for the vehicle;
a traction battery having positive and negative
terminals, and configured to provide energy to the
electric machine;
a solar panel array; and
a first switch having a maximum current carrying
capability less than 5 Amps electrically connected
between the solar panel array and one of the positive and
negative terminals of the traction battery.

1 Throughout this opinion, we refer to the Final Rejection mailed January 23,
2012, the Appeal Brief filed June 25, 2012, the Examiner’s Answer mailed
September 4, 2012, and the Reply Brief filed November 5, 2012.
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THE REJECTIONS
The Examiner relies on the following prior art in rejecting the claims:
Aguilar US 5,353,006 Oct. 4, 1994
Ward US 2008/0143292 A1 June 19, 2008
Klein US 2008/0236648 A1 Oct. 2, 2008
Sato US 2009/0001926 A1 Jan. 1, 2009
Ng US 2010/0127568 A1 May 27, 2010
Claims 1, 2, and 5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ward and Ng. See Final Rej. 2-3.
Claims 3, 4, 6, and 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ward, Ng, and Klein. See Final Rej. 3-4.
Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ward and Ng. See Final Rej. 4-5.
Claims 10-14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ward, Ng, and Klein. See Final Rej. 5-6.
Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sato and Ng. See Final Rej. 6-7.
Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sato, Ng, and Aguilar. See Final Rej. 7.

ISSUES
Appellants direct their arguments to claim 1. See App. Br. 2-3. They
only nominally argue claims 2-15 and 17 separately. See id. Regarding
claim 1, the Examiner finds that Ward discloses a vehicle comprising an
electric machine 40, a traction battery 42, a solar panel array 50, and a
switch 841 connected between the solar panel array and one of the traction
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battery terminals. See Final Rej. 2 (citing Ward, Figs. 11, 13). However, the
Examiner concedes that Ward does not disclose that the switch 841 has a
maximum current carrying capability less than 5A. See id. The Examiner
finds that Ng discloses switches with current carrying capabilities less than 5
Amps and concludes that a person of ordinary skill in the art would have
used a switch with such a current rating in Ward “in order to ensure that
excessive current capable of damaging the system is not drawn or discharged
by the system.” Final Rej. 3.
Appellants contend that the Examiner’s stated reason to combine
Ward and Ng lacks technical merit. App. Br. 2-3. Accordingly, the issue
raised by Appellants’ contention is whether the Examiner articulated a
reason, with rational underpinning, to combine Ward and Ng.
The Examiner rejected independent claim 15 based on Sato and Ng
using rationale similar to that used in rejecting claim 1. Appellants contend
that claim 15 is allowable for the same reasons as claim 1. See App. Br. 3.
Accordingly, for claim 15, the issue is whether Appellants’ reference to their
arguments regarding claim 1 (which focus on Ward and Ng) is sufficient to
show error in the Examiner’s conclusion that claim 15 is obvious over Sato
and Ng.

ANALYSIS
REJECTION OF CLAIMS 1, 2, AND 5 UNDER 35 U.S.C. § 103(a)
Appellants dispute the Examiner’s stated reason to combine Ward and
Ng, arguing that Ward’s system does not suffer from the risk of excessive
current and thus one of skill would not have had a reason to modify Ward’s
system as suggested by the Examiner. See App. Br. 2-3. Specifically,
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Appellants argue that (1) Ward’s system cannot draw excessive power from
the solar panel arrays because the arrays are low voltage, and (2) Ward’s
system includes buffers or diodes to prevent damaging current from flowing
from the batteries to the solar panel arrays. See id. (citing Ward, Abstract,
Fig. 12).
In response, the Examiner argues, without citation, that “[a]lthough
Ward’s apparatus provide[s] low voltage it could produce fast, short duration
spike voltage that could produce currents capable of damaging the hybrid
vehicle charger, these currents could be in the ranges of 0.1- 5 Amps and
protected by Ward’s switch.” Ans. 3. In reply, Appellants characterize the
Examiner’s finding as “mere speculation” that is “inconsistent with the
behavior of low voltage solar panels.” Reply Br. 1. Regarding whether a
high-current spike could travel from Ward’s solar panel to the battery,
Appellants contend that because they are low voltage, Ward’s solar panels
are “not capable of producing” such a spike, and further contend that Ward’s
charge controller 66 is described as providing “a stable voltage and current
from the solar panel.” Id. (quoting Ward, ¶ 0070). Regarding whether a
high-current spike could flow from Ward’s battery to the solar panel,
Appellants point to Ward’s disclosure of buffering between the battery and
solar panel that would prevent such spikes. See Reply Br. 2 (quoting Ward,
¶ 0054).
We agree with Appellants. “[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006); accord Alza Corp. v. Mylan Laboratories, Inc., 464 F.3d 1286, 1290
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(Fed. Cir. 2006) (“[L]egal determinations of obviousness, as with such
determinations generally, should be based on evidence rather than on mere
speculation or conjecture.”). The Examiner points to insufficient evidence
supporting a finding that Ward’s system risks damaging current spikes. Nor
does the Examiner explain why, in light of Ward’s disclosure of low voltage
solar panels and buffering between the solar panels and the battery, a person
of ordinary skill in the art would nevertheless have sought to protect Ward’s
circuit from current spikes using low current switches. Appellants have
presented persuasive evidence that casts doubt on the Examiner’s finding.
The Examiner has failed to respond to Appellants’ arguments with evidence
supporting the rationale to combine Ward and Ng. Therefore, we conclude
that the Examiner’s stated reason for combining Ward with Ng lacks rational
underpinning.
Accordingly, on the current record, we do not sustain the Examiner’s
rejection of (1) claim 1; or (2) claims 2 and 5, which depend on claim 1.

REJECTION OF CLAIMS 3, 4, 6, AND 7 UNDER 35 U.S.C. § 103(a)
Claims 3, 4, 6, and 7 depend on claim 1. The newly cited reference,
Klein, has not been cited to cure the above noted deficiency. See Final Rej.
3-4. Accordingly, we do not sustain the rejection of claims 3, 4, 6, and 7 for
the reasons given above for claim 1.

REJECTION OF CLAIMS 8 AND 9 UNDER 35 U.S.C. § 103(a)
Claim 9 depends on independent claim 8. Claim 8 recites limitations
similar to those of claim 1. However, instead of “a first switch having a
maximum current carrying capability less than 5 Amps,” claim 8 recites “at
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least one switch configured to close when activated by no more than 1 Watt
maximum holding power to permit energy to flow from the solar panel array
to the traction battery.” Despite the difference in claim language, the
Examiner rejects claim 8 for substantially the same reasons as claim 1,
including finding that Ng discloses switches with maximum current carrying
capabilities less than 5A and concluding that it would have been obvious to
use switches with different current ratings, as shown by Ng, in Ward’s
system “in order to ensure that excessive current capable of damaging the
system is not drawn or discharged by the system.” Final Rej. 4-5; see also
Ans. 3-4. Appellants do not separately argue claim 8, stating instead that it
is patentable for the same reasons as claim 1. See App. Br. 3.
Because we conclude, supra, that the Examiner’s stated reason to
combine Ward and Ng lacks rational underpinning, we do not sustain the
rejection of claims 8 and 9 for the reasons given above for claim 1.

REJECTION OF CLAIMS 10-14 UNDER 35 U.S.C. § 103(a)
Claims 10-14 depend on claim 8. The newly cited reference, Klein,
has not been cited to cure the above noted deficiency. See Final Rej. 5.
Accordingly, we do not sustain the rejection of claims 10-14 for the reasons
given above for claim 8.

REJECTION OF CLAIM 15 UNDER 35 U.S.C. § 103(a)
Claim 15 recites limitations similar to those of claim 1. However,
claim 15 recites a plurality of switches configured to connect the traction
battery to the electric machine as well as “another plurality of switches
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configured to electrically connect the traction battery and output terminals
when closed, wherein at least one of the another plurality of switches has a
maximum current carrying capability less than 5 Amps.” Unlike claim 1, in
claim 15 the “another” plurality of switches is connected to “output
terminals” rather than a solar panel array.
The Examiner does not cite Ward and Ng against claim 15. Instead,
the Examiner cites Sato and Ng. See Final Rej. 6. Appellants do not
separately address claim 15, contending that it is patentable for the same
reasons as claim 1. See App. Br. 3. However, Appellants’ arguments for
claim 1 are based on the teachings of Ward, including the arguments
disputing the technical merits of the Examiner’s conclusion that it would
have been obvious to use switches with different current ratings in Ward’s
system to protect against excessive current. See App. Br. 2-3; Reply Br. 1-2.
Appellants do not explain why those arguments also apply to Sato, which
describes a system different from Ward’s. See id. Appellants have not
shown that the Examiner erred in concluding that claim 15 is obvious over
Sato and Ng.
Accordingly, we sustain the rejection of claim 15.

REJECTION OF CLAIM 17 UNDER 35 U.S.C. § 103(a)
Claim 17 depends on claim 15. Appellants do not separately argue
claim 17. Accordingly, we sustain the rejection of claim 17 for the reasons
given above for claim 15.

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NEW GROUND OF REJECTION WITHIN 37 C.F.R. § 41.50(b)
Claims 1-14 are rejected on a new ground of rejection under
35 U.S.C. § 103(a). Specifically, claims 1, 2, 5, 8, and 9 are rejected as
being obvious over Ward and Ng and claims 3, 4, 6, 7, and 10-14 are
rejected under 35 U.S.C. § 103(a) as being unpatentable over Ward, Ng, and
Klein.
Regarding claim 1, Appellants do not dispute the Examiner’s findings
(see Final Rej. 2) that Ward discloses an electric machine, a traction battery,
a solar panel array, and a first switch connected between the solar panel
array and one of the terminals of the battery. See App. Br. 2-3.
While switch 841 couples the solar panel 50 to the battery 42 (see
Ward, Figure 13), it does not connect the battery 42 to the electric motor 40
(see Ward, Figure 11).2 Appellants admit that “solar energy is being
converted to electrical energy via low voltage solar panels” and that,
accordingly, “Ward’s solar panel 50 is not capable of producing ‘fast, short
duration spike voltage that could produce currents capable of damaging the
hybrid vehicle charger.’” Reply Br. 1. In other words, Appellants admit that
Ward’s switch 841 is not expected to carry high current.
As the Examiner finds (and Appellants do not contest), Ng discloses
coupling electronics to power supplies using switches with maximum
current carrying capabilities from 0.1A to 1.5A. See Final Rej. 2 (citing Ng,

2 In contrast, Appellants’ Specification explains that “[t]he electrical
connection of a high-voltage battery of an alternatively powered vehicle and
an electric machine may be facilitated by a set of contactors (main
contactors). . . . Main contactors are typically sized to handle, relatively
speaking, large amounts of current (e.g., 100+ A). Typically, solar cells of
an alternatively powered vehicle are electrically connected with the vehicle’s
high-voltage battery via the main contactors.” Spec. 3:3-12.
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Figure 3; ¶¶ 0007-09; ¶¶ 0026-32). Specifically, Ng discloses dynamically
configuring switches with maximum current carrying capabilities
appropriate to accommodate the current expected to be carried through the
switch. See Ng, ¶¶ 0028-29. Since Ward’s switch 841 is expected to carry
low current, it would have been an obvious matter of design choice,
requiring no more than ordinary skill, to select a switch with low maximum
current carrying capabilities (e.g., below 5A) or low maximum holding
power (e.g., below 1 Watt) to accommodate the expected low current. See
MPEP § 2144.04 (IV); Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1368
(Fed. Cir. 2007) (“We find this case analogous to the optimization of a range
or other variable within the claims that flows from the normal desire of
scientists or artisans to improve upon what is already generally known.”
(internal quotation marks omitted)). This is simply “the predictable use of
prior art elements according to their established functions.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007). We conclude that selecting a switch
with a maximum current capability less than 5A is well within “the
inferences and creative steps that a person of ordinary skill in the art would
employ,” and is therefore obvious. Id. at 418. Accordingly, we conclude
that claim 1 is obvious over Ward and Ng.
Since Appellants do not separately argue claims 2-14, see App. Br. 2-
3, we reject those claims as obvious for the reasons articulated by the
Examiner, as modified supra regarding claim 1.

ORDER
The decision of the Examiner to reject claims 1-14 is reversed. The
decision of the Examiner to reject claims 15 and 17 is affirmed.
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We enter a new ground of rejection for claims 1-14 under 35 U.S.C.
§ 103(a).
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection . . .
shall not be considered final for judicial review.”
Section 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record.
37 C.F.R. § 41.50(b).
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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

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