Maxim Integrated Products, Inc.Download PDFPatent Trials and Appeals BoardJun 2, 20202019003901 (P.T.A.B. Jun. 2, 2020) Copy Citation 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. 14/483,402 09/11/2014 Jiangang Liu 20057-1814 4530 69569 7590 06/02/2020 NORTH WEBER & BAUGH LLP 3260 Hillview Avenue, 1st Floor Pitman PALO ALTO, CA 94304 EXAMINER FAIRBANKS, BRENT ALAN ART UNIT PAPER NUMBER 2862 NOTIFICATION DATE DELIVERY MODE 06/02/2020 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docket1@northweber.com mnorth@northweber.com mnorth@northweber.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JIANGANG LIU and JASON ALLEN WORTHAM ____________ Appeal 2019-003901 Application 14/483,402 Technology Center 2800 ____________ Before JAMES C. HOUSEL, DONNA M. PRAISS, and MONTÉ T. SQUIRE, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL1 Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–20, which are all of the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 In this Decision, we refer to the Specification filed Sept. 11, 2014 (“Spec.”); Final Office Action dated Sept. 5, 2018 (“Final Act.”); Advisory Action dated Nov. 28, 2018 (“Advisory Act.”); Appeal Brief filed Feb. 4, 2019 (“Appeal Br.”); Examiner’s Answer dated Apr. 9, 2019 (“Ans.”); and Reply Brief filed Apr. 22, 2019 (“Reply Brief”). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Maxim Integrated, Inc. as the real party in interest. Appeal Br. 3. Appeal 2019-003901 Application 14/483,402 2 CLAIMED SUBJECT MATTER The invention relates to isolation measuring systems and methods in a vehicle having a high voltage (HV) system and a low voltage (LV) system, and, more particularly, to measuring isolation impedance, including direct current (DC) resistance and alternating current (AC) impedance. Spec. ¶¶ 2, 6; Abstract. Claim 1 illustrates the subject matter on appeal and is reproduced below from the Claims Appendix to the Appeal Brief: 1. A method for determining isolation impedance, the method comprising: receiving at a voltage node a waveform signal that is representative of a first voltage; and extracting amplitude and phase information from the waveform signal; utilizing the amplitude and phase information to determine an isolation impedance between a second voltage and a ground potential, the second voltage being coupled to the voltage node and being higher than the first voltage. Appeal Br. 23 (key disputed claim language italicized and bolded). REFERENCES The Examiner relies on the following prior art references as evidence in rejecting the claims on appeal: Name Reference Date Janke et al. (“Janke”) US 5,450,328 Sept. 12, 1995 Pickerd US 2003/0030426 A1 Feb. 13, 2003 Srinivasan et al. (“Srinivasan”) US 2006/0170397 A1 Aug. 3, 2006 Wolft US 2013/0035819 A1 Feb. 7, 2013 Appeal 2019-003901 Application 14/483,402 3 REJECTIONS On appeal, the Examiner maintains (Ans. 3) the following rejections:3 1. Claims 1, 2, 5, 9–12, 15, 16, and 19 are rejected under 35 U.S.C. §§ 102(a)(1) and 102(a)(2) as being anticipated by Srinivasan (“Rejection 1”). Final Act. 13. 2. Claims 3, 4, 13, and 14 are rejected under 35 U.S.C. § 103 as being unpatentable over Srinivasan in view of Pickerd (“Rejection 2”). Id. at 17. 3. Claim 6 is rejected under 35 U.S.C. § 103 as being unpatentable over Srinivasan in view of Wolft (“Rejection 3”). Id. at 20. 4. Claims 7, 8, 17, 18, and 20 are rejected under 35 U.S.C. § 103 as being unpatentable over Srinivasan in view of Janke (“Rejection 4”). Id. at 21. OPINION Rejection 1 The Examiner rejects claims 1, 2, 5, 9–12, 15, 16, and 19 under 35 U.S.C. §§ 102(a)(1) and 102(a)(2) as being anticipated by Srinivasan. Final Act. 13–17. In response to the Examiner’s rejection, Appellant presents separate arguments for the patentability of the independent claims 1 and 10 under two separate headings in the Appeal Brief (Appeal Br. 19, 20), which we address in turn below. 3 The Examiner’s § 112 and § 101 rejections are withdrawn at page 3 of the Answer. Appeal 2019-003901 Application 14/483,402 4 Claim 1 The Examiner determines that Srinivasan describes a method disclosing each limitation of claim 1 and anticipates the claim. Final Act. 13–14. Regarding the “extracting amplitude and phase information from the waveform signal” recitation of claim 1, the Examiner relies principally on paragraphs 19 and 47 of Srinivasan for disclosing that limitation of the claim. Id. at 13; Ans. 5. In particular, the Examiner finds Srinivasan’s paragraph 19 teaches EIS is a well-known electrochemical technique and has been in use since the 1940s to measure the internal impedance of electrochemical cells. It uses a small-amplitude (<1 millivolt) ac voltage source to perturb the electrochemical cell. In response, the cell generates an ac current at the same frequency, whose magnitude and phase can be utilized to ascertain the battery’s impedance at that particular frequency. Ans. 5 (quoting Srinivasan ¶ 19 with emphasis). The Examiner further finds Srinivasan’s paragraph 47 teaches the use of Fourier transform techniques to derive an impedance of a battery based on current and frequency spectrums and the transformed current and frequency spectrums contain amplitude and phase information. Id. at 6. In particular, the Examiner relies on the portion of paragraph 47 of Srinivasan which states: Modules 802 and 806 can use fast Fourier transform techniques to derive their respective frequency spectrums. A module 812 derives an impedance 814 of battery 202 as a function of current and voltage frequency spectrums 804 and 808. Appeal 2019-003901 Application 14/483,402 5 Id. at 6 (quoting Srinivasan ¶ 47). Based on the above findings, the Examiner determines Srinivasan discloses “extracting amplitude and phase information from the waveform signal,” as recited in the claim. Appellant argues the Examiner’s rejection of claim 1 should be reversed because Srinivasan does not disclose the “extracting amplitude and phase information from the waveform signal” limitation of the claim. Appeal Br. 19–20; Reply Br. 5–6. Appellant argues that Srinivasan teaches using current and voltage frequency spectrums to derive a battery’s internal impedance, in contrast to the claimed invention, which requires extracting amplitude and phase information from a waveform signal and utilizing the amplitude and phase information to determine an isolation impedance. Appeal Br. 19 (citing Srinivasan ¶ 47); see also id. at 20 (arguing “nowhere Srinivasan mentions or suggests that it extracts amplitude and phase information from a waveform signal or that it uses such information to determine an isolation impedance”). Appellant’s argument is persuasive because the Examiner has not established by a preponderance of the evidence that Srinivasan discloses the “extracting amplitude and phase information from the waveform signal” limitation of the claim. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the prior art . . . of presenting a prima facie case of unpatentability.”). Anticipation requires a showing that each limitation of a claim is disclosed in a single reference, either expressly or inherently. Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1369 (Fed. Cir. 2005). To establish that a prior art reference inherently discloses a limitation, “the examiner must provide a basis in fact and/or technical reasoning to reasonably support Appeal 2019-003901 Application 14/483,402 6 the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Int. 1990) (citation omitted). Inherency “may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)). Here, the Examiner has not provided the requisite factual basis and/or technical reasoning to support a finding that Srinivasan, either expressly or inherently, discloses “extracting amplitude and phase information from the waveform signal,” as recited in the claim. The portions of Srinivasan the Examiner cites and principally relies upon in the rejection do not disclose that limitation of the claim. See Srinivasan ¶¶ 19, 47. Although paragraph 19 of Srinivasan mentions that magnitude and phase can be utilized to ascertain the battery’s internal impedance, the Examiner does not identify or direct us to any specific description or discussion in that paragraph or elsewhere in the reference, which expressly or inherently discloses extracting amplitude and phase information from the waveform signal and utilizing the extracted amplitude and phase information to determine isolation impedance in the manner claimed. Rather, as Appellant points outs (Appeal Br. 19) and in contrast to the claimed invention, paragraph 47 of Srinivasan discloses using current and voltage frequency spectrums to determine a battery’s internal impedance. See Srinivasan ¶ 47 (“A module 812 derives an impedance 814 of battery 202 as a function of current and voltage frequency spectrums 804 and 808.”), id. at 47 (disclosing “a module 802 derives a frequency spectrum 804 Appeal 2019-003901 Application 14/483,402 7 of stimulus current I based on the waveform stored locally at the computer” and “module 806 derives a frequency spectrum 808 of sensed voltage Vac”); id. ¶ 19 (“EIS is a well-known electrochemical technique and has been in use since the 1940s to measure the internal impedance of electrochemical cells.”). Although Srinivasan describes using current and voltage frequency spectrums, the Examiner does not direct us to any express or inherent disclosure regarding extracting amplitude and phase information from the waveform signal, as claimed. The Examiner also does not provide an adequate technical explanation as to why one of ordinary skill in the art would have understood Srinivasan’s teachings, for example, at paragraph 47, regarding using current and voltage frequency spectrums to derive a battery’s internal impedance as expressly or inherently disclosing the extracting amplitude and phase information from the waveform signal limitation of the claim. The Examiner’s finding that “both Applicant and Srinivasan utilize calculations in frequency after the performance of a Fourier transform” (Ans. 6) does not adequately support the rejection because, as Appellant notes (Reply Br. 6), performing calculations using Fourier transform methods is not necessary to perform the invention nor required by claim 1 and does not mean the calculations are based on extracting the same information from the waveform signal. In other words, the fact that Srinivasan discusses using Fourier transforms for calculating certain parameters of its invention, without more, does not establish that the reference necessarily discloses extracting amplitude and phase information from the waveform signal, as required by the claim. The Examiner’s findings that “Srinivasan teaches the use of magnitude and phase to calculate an impedance” (Ans. 5) and the Appeal 2019-003901 Application 14/483,402 8 “transformed current and frequency spectrums taught by Srinivasan contain the amplitude and phase information” (id. at 6) do not sufficiently support anticipation by Srinivasan of the claimed step of “extracting amplitude and phase information from the waveform signal” because the Examiner has not adequately established that Srinivasan necessarily extracts amplitude and phase information from the waveform signal to calculate isolation impedance. We, therefore, do not sustain the Examiner’s rejection of claim 1. Because claims 2, 5, and 9 depend from claim 1 and claims 14 and 15 each includes language similar to the “extracting amplitude and phase information from the waveform signal” limitation of claim 1, we also do not sustain the Examiner’s rejection of those claims for the same reasons as claim 1. Claim 10 Claim 10 recites: A system for determining isolation impedance, that system comprising: a signal source that generates an excitation signal, the excitation signal is coupled to a high voltage system via a first impedance; a measuring system that measures a waveform signal at a voltage node that is coupled to the first impedance; and a processor that calculates an isolation impedance between the high voltage system and a ground potential based on the waveform signal. Appeal Br. 24 (key disputed claim language italicized and bolded). The Examiner determines that Srinivasan describes a system for determining isolation impedance satisfying each limitation of claim 10 and anticipates the claim. Final Act. 15. Regarding “a processor that calculates Appeal 2019-003901 Application 14/483,402 9 an isolation impedance between the high voltage system and a ground potential based on the waveform signal” recitation of claim 10, the Examiner relies principally on paragraph 32 and Figure 4 of Srinivasan for disclosing that limitation. Id. at 15. In particular, the Examiner finds Srinivasan teaches that “computer 224 determines an internal impedance” and “the internal impedance is between V.sub.O and ground, as shown as terminals 206 and 208 in Figure 4.” Id. at 15. As part of the Examiner’s analysis, the Examiner construes the term “isolation impedance” to mean “the impedance of the battery is ‘isolating’ the high voltage terminal of the battery (node 206) from the low voltage terminal of the battery (208),” which the Examiner contends constitutes the broadest reasonable interpretation. Ans. 10. Appellant argues the Examiner’s rejection of claim 10 should be reversed because Srinivasan does not disclose “a processor that calculates an isolation impedance between the high voltage system and a ground potential based on the waveform signal,” as required by the claim. Appeal Br. 20. In particular, Appellant contends the rejection should be reversed because the Examiner’s interpretation of the term “isolation impedance” to encompass Srinivasan’s disclosure regarding its battery’s internal impedance is unreasonable and inconsistent with the description provided in Appellant’s Specification. Id. at 20–21; see also Reply Br. 8 (arguing “the internal series impedance of battery cannot be reasonably interpreted as an isolation impedance”). We agree with Appellant’s argument. During prosecution, claims are given their broadest reasonable interpretation consistent with the specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Appeal 2019-003901 Application 14/483,402 10 Cir. 2004). The words used in a claim must be read in light of the specification, as they would have been interpreted by one of ordinary skill in the art at the time of the invention. Id. at 1364. As Appellant points out (Appeal Br. 21), the Specification describes the “isolation impedance comprises leakage resistance and total capacitance that are coupled in parallel between the high voltage system and the chassis.” Spec. ¶¶ 6, 35, Abstract. Based on this description, we agree with Appellant that a person of ordinary skill in the art would not have reasonably interpreted Srinivasan’s disclosures regarding determining a battery’s “internal impedance” (Srinivasan ¶ 32) as disclosing “calculating an isolation impedance between the high voltage system and a ground potential based on the waveform signal,” as recited in the claim. We find no support in the claims or Specification for the Examiner’s overly-broad interpretation. The Examiner does not adequately explain how or why one of ordinary skill in the art would have considered Srinivasan’s disclosure regarding its battery’s internal impedance as falling within the scope of the claimed isolation impedance, as described in Appellant’s Specification. For example, the Examiner does not direct us to any description in Appellant’s Specification, the prior art or any other evidence of record to establish that the internal impedance Srinivasan discusses in paragraphs 19 and 32 is, indeed, equivalent to or would have been reasonably considered by one of ordinary skill in the art as corresponding to the isolation impedance recited in the claim. The fact that the portion of Srinivasan the Examiner cites and relies upon in the rejection and claim 10 both happen to include the word “impedance,” without more, is insufficient to support the Examiner’s findings and rejection in this regard. Appeal 2019-003901 Application 14/483,402 11 We, therefore, do not sustain the Examiner’s rejection of claim 10. Because claims 11, 12, 15, 16 and 19 depend from claim 10, we also do not sustain the Examiner’s rejection of those claims for the same reasons as claim 10. Accordingly, we reverse the Examiner’s rejection of claims 1, 2, 5, 9–12, 15, 16, 19 under 35 U.S.C. §§ 102(a)(1) and 102(a)(2) as anticipated by Srinivasan. Rejections 2, 3, and 4 The Examiner rejects claims 3, 4, 13, and 14 under § 103 as obvious over the combination of Srinivasan and Pickerd (Rejection 2), claim 6 under § 103 as obvious over the combination of Srinivasan and Wolft (Rejection 3), and claims 7, 8, 17, 18, and 20 under § 103 as obvious over the combination of Srinivasan and Janke (Rejection 4). Final Act. 17–26. The foregoing deficiencies in the Examiner’s analysis and findings regarding Rejection 1 and the Srinivasan reference are not remedied by the Examiner’s findings regarding the additional references and combination of references cited in support of the second, third, and fourth grounds of rejection. Thus, for principally the same reasons discussed above in connection with Rejection 1, we reverse the Examiner’s Rejections 2, 3, and 4. Appeal 2019-003901 Application 14/483,402 12 CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 5, 9–12, 15, 16, 19 102(a)(1) Srinivasan 1, 2, 5, 9–12, 15, 16, 19 1, 2, 5, 9–12, 15, 16, 19 102(a)(2) Srinivasan 1, 2, 5, 9–12, 15, 16, 19 3, 4, 13, 14 103 Srinivasan, Pickerd 3, 4, 13, 14 6 103 Srinivasan, Wolft 6 7, 8, 17, 18, 20 103 Srinivasan, Janke 7, 8, 17, 18, 20 Overall Outcome 1–20 REVERSED Copy with citationCopy as parenthetical citation