Ronald Koelsch

Patent Trials and Appeals BoardOct 28, 2021

2021002211 (P.T.A.B. Oct. 28, 2021)

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. 15/902,588 02/22/2018 Ronald Koelsch MSH-1126 1031 8131 7590 10/28/2021 MCKELLAR IP LAW, PLLC 784 SOUTH POSEYVILLE ROAD MIDLAND, MI 48640 EXAMINER MENDOZA-WILKENFEL, ERIK ART UNIT PAPER NUMBER 3763 MAIL DATE DELIVERY MODE 10/28/2021 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 RONALD KOELSCH Appeal 2021-002211 Application 15/902,588 Technology Center 3700 ____________ Before MICHAEL L. HOELTER, BENJAMIN D. M. WOOD, and BRANDON J. WARNER, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–10. See Appeal Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM the Examiner’s rejections of these claims. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “[t]he inventor.” Appeal Br. 2. Appeal 2021-002211 Application 15/902,588 2 CLAIMED SUBJECT MATTER The disclosed subject matter “relates to powering transport refrigeration units (TRUs) commonly called reefers.” Spec. 1:7–8. Apparatus claims 1 and 3 are independent. Claim 1 is illustrative of the claims on appeal and is reproduced below. 1. A battery powered hybrid refrigerated reefer assembly having multiple integrated power sources, said battery powered hybrid refrigerated reefer assembly comprising: A. a hybrid refrigerated reefer; B. an on-board battery that powers said hybrid refrigerated reefer, an electric motor, and air distribution fans; C. a control system containing sensors for i. a battery charge status, ii. solar panel output, iii. hybrid refrigerated reefer motion, iv. grid usage, and, v. fuel level, such that A., B., and C., in combination, configure the optimum power source combination to minimize fossil fuel consumption in the use of said hybrid refrigerated reefer; D. an air distribution system comprising: i. an air mixing chamber, ii. airflow ducting, and, iii. air distribution fans. EVIDENCE Name Reference Date Chou et al. (“Chou”) US 2011/0163603 A1 July 7, 2011 Smith et al. (“Smith”) US 8,794,187 B2 Aug. 5, 2014 Burnham et al. (“Burnham”) US 2016/0025397 A1 Jan. 28, 2016 Koelsch US 2016/0129753 A1 May 12, 2016 Vehr et al. (“Vehr”) US 2018/0001739 A1 Jan. 4, 2018 Appeal 2021-002211 Application 15/902,588 3 REJECTIONS Claims 2–4 and 10 are rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. Claims 2–4 and 102 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claims 1–7, 9, and 103 are rejected under 35 U.S.C. § 103 as unpatentable over Vehr, Chou, Burnham, and Smith. Claim 8 is rejected under 35 U.S.C. § 103 as unpatentable over Vehr, Chou, Burnham, Smith, and Koelsch. ANALYSIS The rejection of claims 2–4 and 10 as failing to comply with the written description requirement Regarding claims 2–4 and 10, the Examiner addresses the limitation “an auxiliary power unit” recited therein.4 See Final Act. 6. The Examiner states that this term is “being interpreted under 35 U.S.C. [§] 112(f)” and is understood to be “a unit for auxiliary power.” Final Act. 4; see also id. at 6. As such, the Examiner states that Appellant’s Specification “lacks written 2 The Examiner identified claims 1–10 in the Final Office Action (see Final Act. 6), however, the Examiner only proffered reasons relating to claims 2–4 and 10. We thus understand the Examiner’s initial listing of claims 1–10 to be an oversight. 3 The Examiner only identified claim 1 in the Final Office Action (see Final Act. 9), however, the Examiner proffered reasons relating to claims 1–7, 9, and 10. We thus understand the Examiner’s initial listing of only claim 1 to be an oversight. 4 Claim 10 recites “an auxiliary land-based solar panel.” Appeal 2021-002211 Application 15/902,588 4 description for structural interpretation by the Examiner” such that the “Examiner cannot properly interpret the claim limitation ‘auxiliary power unit.’” Final Act. 6; see also Ans. 3. Appellant does not challenge the interpretation of “an auxiliary power unit” under 35 U.S.C. § 112(f) as noted above, but contends that support for this term can be found in Appellant’s Specification. See Appeal Br. 3 (replicating Spec. 3:26–31). The replicated passage, however, merely describes how the auxiliary power unit is used (“plugs into the reefer”) and its function (“takes high voltage ac power from the electric grid and converts it to safe low voltage dc power”). Spec. 3:26–31. This passage does not resolve the Examiner’s search for written description support for the “structural interpretation by the Examiner” of such a unit because, as per the Examiner, “an auxiliary power unit can be a number of components associated with AC being converted to DC.” Final Act. 6; Ans. 3. In other words, this passage does not provide any indication as to what structure the recited “auxiliary power unit” is to incorporate or entail. We have been instructed that, for a means-plus-function claim limitation, the specification “ha[s] to do more than parrot the recited function; it ha[s] to describe a means for achieving a particular outcome, not merely the outcome itself.” HTC Corp. v. IPCom GmbH & Co., KG, 667 F.3d 1270, 1280 (Fed. Cir. 2012); see also Tomita Technologies USA, LLC v Nintendo Co., LTD., 594 F.App’x 657, 662 (Fed. Cir. 2014) (“However, repeating or paraphrasing means-plus-function claim language in the specification alone does not describe any structure.”); Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1382 (Fed. Cir. 2009) (if an applicant “employs means-plus-function language in a claim, [the applicant] must set forth in the specification an Appeal 2021-002211 Application 15/902,588 5 adequate disclosure showing what is meant by that language”). Hence, there is merit to the Examiner’s rejection that these claims contain “subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor . . . had possession of the claimed invention.” Final Act. 5–6. Appellant also states that “[a]uxiliary power units are known by those skilled in the art.” Appeal Br. 4. However, we have been instructed that “[i]t is not enough for the patentee simply to state or later argue that persons of ordinary skill in the art would know what structures to use to accomplish the claimed function” in order to satisfy the obligation to disclose sufficient structure to support a means-plus-function claim limitation. Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1336–37 (Fed. Cir. 2008). In other words, “[t]hat ordinarily skilled artisans could carry out the recited function in a variety of ways is precisely why claims written in ‘means-plus function’ form must disclose the particular structure that is used to perform the recited function.” Blackboard, 574 F.3d at 1385. For these reasons, we agree with the Examiner that Appellant’s Specification lacks written description support for the means-plus-function claim term “auxiliary power unit.” We sustain the Examiner’s rejection of claims 2–4 and 10. See MPEP § 2163.03 (VI) (If a specification “fails to disclose sufficient corresponding structure, materials, or acts that perform the entire claimed function” of a means-plus-function claim limitation, the limitation “lacks an adequate written description as required by [35 U.S.C. § 112(a)].”). The Examiner also specifically addresses claim 10 and the recitation of “a charge control unit” therein which, the Examiner states, “invokes 35 Appeal 2021-002211 Application 15/902,588 6 U.S.C. [§] 112(f).” Final Act. 6. Similar to the above, the Examiner states that “Applicant’s specification lacks written description for structural interpretation by the Examiner,” and as such, “Applicant’s written description is lacking.” Final Act. 6; see also Ans. 3, 4. Appellant contends that support for this term can be found in Appellant’s Specification, and specifically in “Figure 6 and page 9, line 24 et seq.” Appeal Br. 4. Appellant contends, “[t]he examiner cannot fairly state that these uses are a mystery and need more explanation.” Appeal Br. 4 (italics added). Figure 6 of Appellant’s Specification is a “schematic layout” (Spec. 5:14) that includes a box labeled “19 CHARGE CONTROL UNIT.” Page 9 of Appellant’s Specification is equally generic and states, “[w]hen a low state- of-charge battery needs charging, the central charge control unit (19) allows it to draw charge from” either its own solar panel or from “more fully charged reefers.” The Examiner addresses both Appellant’s proffered figure and text, stating “both of which do not support what structure applicant had possession of at the time of filing.” Ans. 4. Accordingly, as per the Examiner, Appellant “does not identify what specific structure, and corresponding equivalents thereof, the 112(f) limitation ‘charge control unit’ encompasses.” Ans. 4. For reasons similar to those set forth above, we agree with the Examiner that there is insufficient written description support describing the structure by which the recited function is to be performed. We sustain the Examiner’s rejection of claim 10 as lacking “written description for structural interpretation by the Examiner.” Final Act. 6. Appeal 2021-002211 Application 15/902,588 7 The rejection of claims 2–4 and 10 as being indefinite Regarding claim 2, the Examiner addresses “the limitation ‘high voltage alternating current to safe low voltage direct current,’” stating that “the limitations high, low and safe are all relative terms,” which makes the claims “unclear.” Final Act. 7; see also Ans. 4. Appellant disagrees stating that “[b]attery power is known to be low power” and that Appellant’s Specification has a designation of “480 volts 3-PHZ high voltage AC” such that “we now know what ‘high voltage’ is.” Appeal Br. 4 (referencing Fig. 4). The Examiner acknowledges these recitations, but states that they “still fail[] to disclose what ‘safe low voltage’ encompasses since ‘safe’ is both subjective and relative and can change.” Ans. 4. There is merit to the Examiner’s concerns. Appellant relies on the disclosure of a range or scale having battery power (“low power”) at one end and 480 volts (“high voltage”) at the other, yet it is not made clear where the demarcation between these “low” and “high” designations might be so that one skilled in the art would be aware of the metes and bounds of this limitation. For example, if a series of batteries were to generate 480 volts, would that be deemed “low” (because it’s power from a battery) or high (because it’s 480 volts). The same can be said for “safe” because 480 volts is relatively safe when compared to even larger voltages. Thus, there is merit to the Examiner’s statement that “‘safe low voltage’ has not been defined by the disclosure to mitigate the subjectivity/relativity of the language.” Ans. 4. In other words, we agree with the Examiner that the indicated limitations are indefinite because such terms are employed “without explicitly defining what constitutes safe and low in Appellant’s disclosure.” Ans. 5. We sustain the Examiner’s rejection of claim 2 above. Appeal 2021-002211 Application 15/902,588 8 Addressing now claims 2–4 and 10, the Examiner notes that “each [claim] recites the limitation ‘an auxiliary power unit’ which invokes 35 U.S.C. [§] 112(f), however, as discussed above, Applicant’s specification lacks written description for structural interpretation by the Examiner.” Final Act. 7; see also Ans. 3. This lack of written description support “thereby mak[es] claims 2–4 and 10 indefinite because it is unclear what structure is to be included in the auxiliary power unit.” Final Act. 7; see also Ans. 3. On this point, Appellant identifies where Appellant’s Specification recites an auxiliary power unit (apu) that “takes high-voltage ac power from the electric grid and converts it to safe low voltage dc power to be plugged into the reefer to charge the battery and power the refrigeration unit.” Appeal Br. 3 (referencing Spec. 3:28–31). Appellant concludes that (1) “no further definition [is] needed” and (2) “[a]n apu could be an electrical outlet on a building carrying ac power, for example.” Appeal Br. 5. The Examiner states that this “could be” language relied on by Appellant in fact, supports the Examiner’s position “since an auxiliary power unit can be a number of components associated with AC being converted to DC.” Ans. 3. This is because a skilled person, reading Appellant’s Specification, would not “have explicitly known what an auxiliary power unit was or the explicit auxiliary power unit applicant had possession of at the time of filing.” Ans. 3. Further, even abiding by Appellant’s “electrical outlet” example above, the Examiner states that “the electrical outlet is a species of a genus (APU)” and that a “genus can have multiple species and is not limited to just one structure.” Ans. 4. In any event, Appellant’s arguments are not persuasive that the Examiner erred in rejecting these claims as being indefinite since “it Appeal 2021-002211 Application 15/902,588 9 is unclear what structure is to be included in the auxiliary power unit.” Final Act. 7; see also Ans. 3. We sustain their rejection. Regarding claim 10, the Examiner addresses the limitation “a charge control unit” under 35 U.S.C. § 112(f) stating, as above, that “Applicant’s specification lacks written description for structural interpretation by the Examiner.” Final Act. 7; see also Ans. 3, 4. As such, the “Examiner cannot properly interpret the claim limitation making the limitation indefinite.” Final Act. 7; see also Ans. 3, 4. For reasons similar to those discussed above, we are not persuaded by Appellant that the Examiner erred in concluding claim 10 indefinite in view of a lack of a structural description for the recited function. For example, we have been instructed that if a claim contains a means-plus-function limitation, and the written description lacks structure for those means, the claim is indefinite and hence invalid. See Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 950–53 (Fed. Cir. 2007). We sustain the rejection of claim 10. The rejection of claims 1–7, 9, and 10 as unpatentable over Vehr, Chou, Burnham, and Smith Appellant argues all these claims together. See Appeal Br. 5. We select claim 1 for review, with the remaining claims standing or falling therewith. See 37 C.F.R. § 41.37(c)(1)(iv). Claim 1 recites a battery powered reefer assembly comprising “an on- board battery” as well as a control system to optimize power source combinations (which includes solar and grid sources). The Examiner relies on Vehr for such teachings. See Final Act. 9; Vehr Abstract and Fig. 1A. Appellant, however, contends that “the instant invention exclusively operates on battery while the assembly of Vehr et al requires operating on Appeal 2021-002211 Application 15/902,588 10 three different modes.” Appeal Br. 5. The Examiner responds stating “nowhere in claim 1 does Appellant claim the instant invention of claim 1 exclusively operates on battery as is being argued.” Ans. 5. There is merit to the Examiner’s position because claim 1 is silent as to only and exclusively operating on battery, and Appellant does not dispute that Vehr can also operate on battery. Appellant also seeks to distinguish over the cited art by pointing “out that help from the grid does not run any of the assembly. The help from the grid is to charge the batteries.” Appeal Br. 5. Even if true, Appellant does not explain how Vehr’s battery (which can be recharged via the grid or a solar panel (see Vehr Fig. 1A)) fails to run the assembly after being charged, in the same way as Appellant’s system is run. Appellant also addresses the other power sources available for use in Vehr stating “[t]his proves that the Vehr assembly is directly operated from sources other than the battery.” Appeal Br. 5. Regardless, this does not detract from Vehr’s teaching that it is also battery operated. Appellant further contends, “the instant assembly does not require an evaporator.” Appeal Br. 5. However, claim 1 does not preclude the use of an evaporator and as such, this contention by Appellant is not persuasive of Examiner error. Appellant additionally contends, “[e]ven when supported by the secondary references . . . it is not observed where such teachings would make the instant invention obvious.” Appeal Br. 5. Appellant simply makes this assertion and does not otherwise explain how the combination of Vehr with the teachings of Burnham, Chou, and Smith (as established by the Examiner) might be in error. See Final Act. 9–11; see also Ans. 5. Appeal 2021-002211 Application 15/902,588 11 Accordingly, and based on the record presented, we sustain the Examiner’s rejection of claims 1–7, 9, and 10 as being obvious over Vehr, Burnham, Chou, and Smith. The rejection of claim 8 as unpatentable over Vehr, Chou, Burnham, Smith, and Koelsch Appellant contends, “adding Koelsch to the citations does not change the validity of the claims.” Appeal Br. 5. Appellant presents no further argument seeking to explain how the Examiner might have been in error when rejecting claim 8. Accordingly, and based on the record presented, we sustain the Examiner’s rejection of claim 8 as being obvious in view of Vehr, Chou, Burnham, Smith, and Koelsch. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 2–4, 10 112(a) Written Description 2–4, 10 2–4, 10 112(b) Indefiniteness 2–4, 10 1–7, 9, 10 103 Vehr, Chou, Burnham, Smith 1–7, 9, 10 8 103 Vehr, Chou, Burnham, Smith, Koelsch 8 Overall Outcome 1–10 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED