John Boys

Patent Trials and Appeals Board

Mar 18, 2022

2021003765 (P.T.A.B. Mar. 18, 2022)

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. 12/998,031 05/16/2011 John Talbot Boys 4565.0001C 1760 165883 7590 03/18/2022 EDELL, SHAPIRO & FINNAN, LLC 9801 Washingtonian Blvd. Suite 750 Gaithersburg, MD 20878 EXAMINER AMRANY, ADI ART UNIT PAPER NUMBER 2836 NOTIFICATION DATE DELIVERY MODE 03/18/2022 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): epatent@usiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN TALBOT BOYS Appeal 2021-003765 Application 12/998,031 Technology Center 2800 Before LINDA M. GAUDETTE, CHRISTOPHER C. KENNEDY, and LILAN REN, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL1 The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision finally rejecting claims 43, 47-51, 53, 54, 61, 69-76, and 78-81.3 We affirm in part. 1 The following documents are of record: Specification filed Mar. 10, 2011 (“Spec.”); Final Office Action dated Aug. 13, 2020 (“Final Act.”); Corrected Appeal Brief filed Feb. 1, 2021 (“Appeal Br.”) and Claims Appendix (Appeal Br. 42-46); Examiner’s Answer dated Mar. 22, 2021 (“Ans.”); and Reply Brief filed May 17, 2021 (“Reply Br.”). 2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Auckland Uniservices Limited. Appeal Br. 3. 3 We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2021-003765 Application 12/998,031 2 CLAIMED SUBJECT MATTER The invention relates to Inductive Power Transfer (IPT). Spec. 1:6. Claims 43 and 50, reproduced below, are illustrative of the claimed subject matter: 43. A resonant inductive power pickup comprising a pickup coil, a tuning capacitor connected to the pickup coil to tune the inductive power pickup for receipt of inductive power, and at least one switch connected in parallel with the tuning capacitor, wherein the pickup is configured to operate the switch to short the pickup coil for part of the resonant cycle. Appeal Br. 42. 50. A method of controlling a resonant inductive power pickup comprising a pickup coil, a tuning capacitor, and at least one switch connected in parallel with the tuning capacitor, the method comprising: determining when a resonant voltage in the resonant inductive power pickup changes sign, and clamping at least one tuning capacitor of the resonant inductive power pickup for part of the resonant cycle, responsive to a change in sign of the resonant voltage, to manipulate the phase angle between the voltage of the pickup coil and the voltage of at least one tuning capacitor. Appeal Br. 43. REJECTIONS The Appellant requests review of the following rejections (see Appeal Br. 10): 1. claims 53, 72, and 73 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement; Appeal 2021-003765 Application 12/998,031 3 2. claims 43, 47-50, 54, 61, 69-72, 74, 75, and 79-81 under 35 U.S.C. § 102(b) as anticipated by Murdoch (US 5,701,121; issued Dec. 23, 1997); and 3. claims 43, 47, 48, 50, 51, 53, 54, 61, 69-76, and 78-81 under 35 U.S.C. § 102(b) as anticipated by Hussman (US 2007/0109708 A1; published May 17, 2007). OPINION Written Description Rejection The Examiner rejected claims 53, 72, and 73 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Claim 53 Claim 53 indirectly depends from method claim 50, and recites: “wherein the method comprises: determining load variations at the resonant inductive power pickup, and controlling the phase angle between the voltage of the pickup coil and the voltage of the [at] least one tuning capacitor to compensate for the load variations.” Appeal Br. 43. The Examiner determined that there was no written description support for the following recitations: “determining load variations” and “to compensate for load variations.” Final Act. 8. The Appellant cites various disclosure on Specification pages 3, 6, and 7 (see Appeal Br. 12), and argues that [o]ne of ordinary skill in the art would appreciate that . . . [these] teachings show that Appellant’s application describes techniques to determine the quality factor (Q) of the circuit and use the Q to set the phase angle. One of ordinary skill in the art would also appreciate that the Q is related to the circuit loading (id. at 13). Appeal 2021-003765 Application 12/998,031 4 To satisfy the requirements of 35 U.S.C. § 112, first paragraph, the written description need not recite the claimed invention in haec verba but must do more than merely disclose that which would render the claimed invention obvious. Univ. of Rochester v. G.D. Searle & Co., Inc., 358 F.3d 916, 923 (Fed. Cir. 2004). Having reviewed the cited Specification disclosure, we agree with the Examiner that “[t]he Appellant does not present any evidence to support [its] position of what the skilled artisan would ‘appreciate’ or . . . how ‘Q is related to the circuit loading.’” Ans. 7. Arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Claims 72 and 73 Claims 72 and 73 directly depend from claim 43 and recite, respectively: “wherein the pickup comprises a high Q coil that is configured for power transfer in the absence of data modulation,” and “wherein the pickup does not modulate data, or decode modulated data, in the inductive power received via the pickup coil.” Id. at 45 (emphases added). The Examiner determined that there was no written description support for the negative limitations in these claims (see italicized language in the prior sentence). Final Act. 8-9. The Appellant argues that the “entire disclosure describes the transfer of power (not data) from a primary to a pickup. Data modulation is not described because there is no data modulation in the power transfer circuit.” Appeal Br. 15; see also id. at 16 (“Appellants’ application does not teach any such data modulation circuitry . . . .”). The Appellant’s arguments fail “to rebut the Examiner’s assertion that data is created unintentionally because of the claimed structure” (Ans. 9). Appeal 2021-003765 Application 12/998,031 5 Compare id. (“Toggling a switch, connected in parallel to a wireless power receiving coil and a tuning capacitor, creates load modulation, as evidenced by Murdoch”), with Appeal Br. 14 (“The simple reason that there is no mention of the ‘absence of data modulation’ is that there is, inherently, no data modulation within the circuits shown in Appellant's application.”). Moreover, “[a]s with all other limitations, the negative limitation here must be accompanied by an original disclosure which conveys to a person of ordinary skill that the inventor was in possession of the claimed invention.” Novartis Pharm. Corp. v. Accord Healthcare, Inc., 21 F.4th 1362, 1374 (Fed. Cir. 2022). As the Examiner has provided a reasonable basis to conclude that data modulation would inherently occur, we are not persuaded that the absence of a data modulation discussion in the Specification is sufficient to demonstrate that a person of ordinary skill in the art would have understood that the inventor was in possession of a pickup that does not modulate data. Compare Final Act. 9 (“As evidenced by Murdoch (col. 13- 14), by toggling the shorting switch in the pickup, the impedance of the pickup coil is changed. This impedance change results in a change of current and/or voltage in the primary. This is referred to a load modulation and it is the modulation of data (whether or not the applicant wish[es] to purposefully use it as data).”), and Ans. 9 (“Operating the switch for ‘part of the resonant cycle’ creates an on-off control that repeatedly changes the impedance in the pickup. This impedance change creates data that is externally detectable. As the Appellant does not dispute the mechanisms regarding load modulation, they must agree that their pickup creates data in the same manner.”), with Appeal Br. 15 (“Appellant submits that since Appellant’s ‘specification makes no mention of receiving power in the complete absence of data Appeal 2021-003765 Application 12/998,031 6 modulation or that the pickup does not module (sic) or demodulate any data noted,’ one of ordinary skill in the art would readily understand that no data modulation is used within Appellant’s power transfer circuit.”). In sum, for the reasons stated in the Final Office Action, the Answer and above, we sustain the rejection of claims 53, 72, and 73 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Anticipation by Murdoch The Examiner rejected claims 43, 47-50, 54, 61, 69-72, 74, 75, and 79- 81 under 35 U.S.C. § 102(b) as anticipated by Murdoch. The Appellant separately argues each of claims 43, 48, 69, 74, and 79. The remaining claims subject to this ground of rejection stand or fall with the claim from which they depend. Claim 43 The Examiner found that claim 43 reads on Murdoch’s Figure 20e-1 embodiment. See generally Final Act. 9-10. Murdoch Figure 20e-1 is reproduced below. Appeal 2021-003765 Application 12/998,031 7 Figure 20e-1, above, is a circuit diagram illustrating switch S1 and tuning capacitor C connected in parallel. A pickup coil (illustrated in Figure 20-1) is connected to the pickup coil voltage Vc. Murdoch discloses that “switch S1 shorts out capacitor C periodically during each cycle.” Murdoch 14:57-58. The Appellant argues that the Examiner’s evidence is insufficient to support a finding that Murdoch anticipates claim 43. See generally Appeal Br. 30-31. Specifically, the Appellant argues that Murdoch describes shorting only a capacitor, not a pickup coil. Id. at 30. Citing In re Giannelli, 739 F.3d 1375 (Fed. Cir. 2014), the Appellant argues that “the Examiner continues to focus on what the prior art may or may not be capable of doing because it has a controllable switch,” but has not met the burden to show that Murdoch’s switch is purposefully constructed or configured to short the pickup coil. Reply Br. 3-4. We disagree with the Appellant’s assertion that Giannelli’s fact pattern is analogous to the facts of this case. See Reply Br. 3-4. In Giannelli, the claims recited a rowing exercise machine, and there was no dispute that the prior art chest press apparatus did not have handles adapted to be pulled in a rowing motion. 739 F.3d at 1376, 1380. The Board concluded that the Examiner had established a prima facie case of obviousness because the Examiner found that a rowing exercise could be performed on the prior art chest press apparatus. Id. at 1380. But the Federal Circuit reversed the Board’s decision, explaining that “[p]hysical capability alone does not render obvious that which is contraindicated. And, on this record, it is not obvious to modify a machine with handles designed to be pushed to one with handles adapted to be pulled.” Id. Appeal 2021-003765 Application 12/998,031 8 In the present case, the Examiner’s anticipation rejection is not based on a finding that Murdoch’s switch is physically capable of shorting the pickup coil. Rather, the Examiner finds that using Murdoch’s switch to short the capacitor (see Murdoch 14:57-58) also necessarily shorts the pickup coil. See Ans. 4 (“[C]ontrolling the switch . . . inherently produce[s] effects in the coil and capacitor.”); cf. Murdoch 13:48-49 (“S1 and S2 are switches which when both opened, deactivate the pickup coil.”). In other words, the Examiner finds that because Murdoch’s and the claimed circuit-a pickup coil connected to a tuning capacitor, and a switch connected in parallel with the tuning capacitor-are identical, they would necessarily function in the same manner. See id. at 5 (“A prior art reference that discloses [t]he pickup structure and this controllable switch would also produce the stated functionality.”). The Appellant further argues, if the Examiner is relying on an inherency rationale, the Examiner “has not demonstrated that ‘the stated functionality’ necessarily flows from the teaching of Murdoch” because Murdoch’s data modulation circuit and the Appellant’s inductive power pickup “are different physical arrangements that operate in different ways.” Reply Br. 4-5. The Appellant’s argument is not persuasive because it lacks evidentiary support. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations omitted) (“Where . . . the claimed and prior art products are identical or substantially identical, . . . , the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. § 102, on ‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or Appeal 2021-003765 Application 12/998,031 9 alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.”). Murdoch’s mere characterization of the circuit as a data modulation circuit instead of an “inductive power pickup” (claim 43) is insufficient to demonstrate that Murdoch’s and the claimed circuits structurally differ. Cf. Hewlett-Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314, 1324 n.6 (Fed. Cir. 2003) (“The anticipation analysis asks solely whether the prior art reference discloses and enables the claimed invention, and not how the prior art characterizes that disclosure.”). For the above reasons, as well as the reasons stated in the Answer which we adopt as our own (see Ans. 11-13), the Appellant’s arguments are not persuasive of reversible error in the Examiner’s rejection of claim 43 as anticipated by Murdoch. Claim 48 Claim 48 depends from claim 43 and recites wherein the pickup comprises a rectifier, the rectifier is connected to the pickup coil and is configured to rectify AC power received by the pickup coil to produce rectified power for a load, and wherein the pickup is configured to regulate the rectified power supplied to the load by adjusting the phase angle between the voltage induced in the pickup coil and the tuning capacitor voltage. Appeal Br. 42. The Appellant argues that the rejection of claim 48 should be reversed because the Examiner relied on a technically and factually incorrect finding that Murdoch’s rectifier and pickup coil are connected both in series and in parallel. Appeal Br. 19-20. The Appellant also argues that the Examiner “failed to grant proper patentable weight to the functional language of claim Appeal 2021-003765 Application 12/998,031 10 48, namely that the ‘pickup is configured to regulate the rectified power supplied to the load by adjusting the phase angle between the voltage induced in the pickup coil and the tuning capacitor voltage.’” Appeal Br. 21. The Appellant contends that the Examiner did not identify “any portion of Murdoch that allegedly teaches the functional characteristics of claim 48.” Id. Referencing various disclosure in Murdoch, the Appellant further argues that the ordinary artisan would have understood from such disclosure that “Murdoch is inherently not designed to ‘regulate the rectified power supplied to the load by adjusting the phase angle between the voltage induced in the pickup coil and the tuning capacitor voltage.’” Appeal Br. 24-26. We fully agree with, and adopt as our own, the Examiner’s detailed explanation of why these arguments are not persuasive of reversible error in the Examiner’s rejection of claim 48. See generally Ans. 14-21. Claim 69 Claim 69 indirectly depends from claim 43, and recites: “wherein the pickup is configured to control the phase angle between the voltage of the pickup coil and the voltage of the tuning capacitor to control the power output from the rectifier.” Appeal Br. 44. The Appellant argues that the Examiner improperly applied a “capable of” analysis in rejecting claim 69. Appeal Br. 27. The Appellant argues, “[j]ust like In re Giannelli, there is no question that Murdoch does not teach that the pickup actually controls ‘the phase angle between the voltage of the pickup coil and the voltage of the tuning capacitor to control the power output from the rectifier.’” Id. at 28-29 (emphasis omitted). This argument is not persuasive essentially for the same reasons discussed above as to claim 43. Appeal 2021-003765 Application 12/998,031 11 We add that, if the Appellant’s position is that Murdoch cannot anticipate absent an explicit statement that “the pickup is configured to control the phase angle . . . to control the power output from the rectifier” (claim 69), we find no such requirement in Giannelli. We agree with, and adopt as our own, the Examiner’s detailed explanation of why these arguments are not persuasive of reversible error in the Examiner’s rejection of claim 69. See generally Ans. 21-23. Claims 74 and 79 The Appellant separately argues each of claims 74 and 79. See generally Appeal Br. 31-34. Claim 74 is an independent claim reciting a resonant inductive power pickup comprising a pickup coil, a tuning capacitor, a rectifier, and a switch. Id. at 45. Claim 79 is an independent method claim. Id. at 46. We fully agree with, and adopt as our own, the Examiner’s detailed explanation of why these arguments are not persuasive of reversible error in the Examiner’s rejection of claims 74 and 79. See generally Ans. 21-28. In sum, for the reasons stated above, in the Final Office Action, and in the Answer, we sustain the rejection of claims 43, 47-50, 54, 61, 69-72, 74, 75, and 79-81 under 35 U.S.C. § 102(b) as anticipated by Murdoch. Anticipation by Hussman The Examiner rejected claims 43, 47, 48, 50, 51, 53, 54, 61, 69-76, and 78-81 under 35 U.S.C. § 102(b) as anticipated by Hussman. The Appellant argues similar limitations in independent claims 43, 74, and 79. See generally Appeal Br. 34-40. The Examiner found that Hussman Figure 5, and corresponding description, anticipates the claims. See Ans. 29. Hussman Figure 5 is reproduced below. Appeal 2021-003765 Application 12/998,031 12 Figure 5, above, “is a diagram of a pick-up circuit topology including a variable capacitor for an ICPT power supply.” Hussman ¶ 41. The circuit includes “a parallel tuned pick-up i.e. the tuning capacitor 22 is connected in parallel with the pick-up coil 10.” Id. ¶ 50. Variable capacitance 50, connected in parallel with pick-up coil 10 and tuning capacitor 22, “preferably comprises a capacitor connected across tuning capacitor 22 via two switch[es].” Id. ¶ 65. The Appellant argues that the claims do not read on Hussman Figure 5 because switches 42, 44 (more clearly illustrated in Hussman Figure 2) “are operated to control how much reactance (i.e., . . . capacitance via the variable capacitor 50) is added in parallel with the pick-up coil 10 and the tuning capacitor 22.” Appeal Br. 38. The Appellant argues that adding reactance does not create a “short,” as required by the claims. Id. The Examiner determines that the Appellant has redefined the term “short”-the plain meaning of which is “the exclusion of any power consuming component (only the pick-up coil and the closed switch)”- to include the presence of additional components, such as an inductor, one or more diodes, or a capacitor. Ans. 31-32. The Examiner thus maintains that when the claim requirement that “the pickup is configured to operate the Appeal 2021-003765 Application 12/998,031 13 switch to short the pickup coil for part of the resonant cycle” (claim 43) is interpreted in light of the Specification, it reads on Hussman’s structure because current is routed through variable capacitance 50 when the switches are closed. As acknowledged by the Examiner (see Ans. 32), [a]lthough words in a claim are generally given their ordinary and customary meaning, a patentee may choose to be his own lexicographer and use terms in a manner other than their ordinary meaning, as long as the special definition of the term is clearly stated in the patent specification or file history, Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). We have reviewed the Specification, but find no indication that the Appellant is using the terms “short” or “shunting” in a manner inconsistent with their plain and ordinary meaning of creating an ideally zero resistance path. Claims 43 and 74 require that the pickup is configured to short the pickup coil and the tuning capacitor, respectively. Appeal Br. 42, 45. Claim 79 recites a step of shunting the tuning capacitor. Id. at 46. The Appellant has persuasively argued that the Examiner has applied an unreasonably broad interpretation of these claims in finding that they read on Hussman’s circuit which is designed to add reactance (i.e., capacitance via the variable capacitor 50) is in parallel with the pickup coil and the tuning capacitor. Accordingly, we do not sustain the rejection of independent claims 43, 74, and 79, or their dependent claims 47, 48, 61, 69-73, 75, 76, 78, 80, and 81, as anticipated by Hussman. Independent claim 50 does not require a step of shunting, or that the pickup is configured to short the pickup coil or tuning capacitor. Accordingly, we sustain the rejection as to claim 50 and its dependent claims 51, 53, and 54. Appeal 2021-003765 Application 12/998,031 14 DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 53, 72, 73 112 Written Description 53, 72, 73 43, 47-50, 54, 61, 69- 72, 74, 75, 79-81 102(b) Murdoch 43, 47-50, 54, 61, 69- 72, 74, 75, 79-81 43, 47, 48, 50, 51, 53, 54, 61, 69- 76, 78-81 102(b) Hussman 50, 51, 53, 54 43, 47, 48, 61, 69-76, 78-81 Overall Outcome: 43, 47-51, 53, 54, 61, 69-75, 79- 81 76, 78 TIME PERIOD FOR RESPONSE 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). AFFIRMED IN PART