Ex Parte Ribarich

Board of Patent Appeals and Interferences

Feb 23, 2009

10835637 (B.P.A.I. Feb. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte THOMAS J. RIBARICH
____________________

Appeal 2008-3124
Application 10/835,6371
Technology Center 2100
____________________

Decided: February 23, 2009
____________________

Before JOSEPH L. DIXON, JEAN HOMERE, and JAY P. LUCAS,
Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed April 30, 2004. Appellant claims the benefit under
35 U.S.C. § 119 of provisional application 60/466,919, filed April 30, 2003.
The real party in interest is International Rectifier Corporation.

Appeal 2008-3124
Application 10/835,637

2
STATEMENT OF THE CASE
Appellant appeals from a final rejection of claims 16 and 17 under
authority of 35 U.S.C. § 134. The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).
Appellant’s invention relates to the packaging of an encapsulated
ballast circuit, which is commonly used to supply power to fluorescent lights
and similar electrical loads. In the words of the Appellant:
Referring now to Figure 7, a TO220 package 70 is
illustrated in a front view and side view. Package 70 includes a
through hole 72 for use in mounting package 70. In one
embodiment of package 70, mounting clip 74 also serves as a
heatsink to remove heat from the circuit enclosed in package
70. A package body 75 houses the circuitry of the hybrid
electronic ballast circuit in accordance with the present
invention. The entire hybrid electronic ballast circuit is
enclosed within body 75, including the passive resistor and
capacitor components, the control circuit and the power
switches that form the switching half-bridge.

As illustrated in Figure 3, hybrid ballast control 20 can be
implemented with only three connections in the lighting circuit.
Package 70 includes three connector pins 77A, 77B and 77C,
which are all the connections used by hybrid ballast control 20.
Because package 70 houses the power switches, pins 77A-77C
are of sufficient dimension to carry the high currents that are
switched by the power switches.

(Spec. ¶¶ [0051]-[0052]).

Claims 16 and 17 are on appeal:
16. An electronic ballast circuit, comprising:
an encapsulating package for the entire circuit;
Appeal 2008-3124
Application 10/835,637

3
a first external connection extending out of the package for receiving
power from a power supply to power the electronic ballast circuit;
a second external connection extending out of the package for
supplying power to a resonant load; and
a third external connection extending out of the package for
connection to a common reference to provide a return power path,
wherein there are no other externally accessible connections to the
encapsulated circuit.

17. The electronic ballast circuit of claim 16, wherein the
encapsulating package is a TO220 package with three electrical connections.

PRIOR ART
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Sun 6,020,691 Feb. 1, 2000
Grant 6,762,645 B1 Jul. 13, 2004
Konopka 6,657,400 B2 Dec. 2, 2003
Lankin 5,331,258 Jul. 19, 1994

REJECTIONS

The Examiner rejects the claims as follows:
R1: Claims 16 and 17 stand rejected under 35 U.S.C. § 103(a) as
being obvious over Sun in view of Lankin.
R2: Claims 16 and 17 stand rejected under 35 U.S.C. § 103(a) as
being obvious over Grant in view of Lankin.
R3: Claims 16 and 17 stand rejected under 35 U.S.C. § 103(a) as
being obvious over Konopka in view of Lankin.
Appeal 2008-3124
Application 10/835,637

4
A previous rejection under 35 U.S.C. § 101 was withdrawn. (Ans. 8,
top).
Appellant contends that the claimed subject matter is not rendered
obvious by any of the references Sun, Grant or Konopka in combination
with Lankin, for failure of the combination to teach the claimed limitations.
(Brief, 5-7). The Examiner contends that each of the claims is properly
rejected. (Ans. )

We reverse the rejections under 35 U.S.C. § 103(a) and impose a
Board rejection by authority of 37 C.F.R. § 41.50(B), under 35 U.S.C. § 112,
first paragraph.
ISSUE
The issue before us is whether Appellant has shown that the
Examiner erred in rejecting the claims 16 and 17 under 35 U.S.C. § 103(a).
The issue turns on whether the combination of references teaches or
suggests an encapsulated circuit as claimed.
FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellant has invented an electronic ballast circuit for a fluorescent
lighting application or the like. (Spec. ¶ [0003]). The circuit is
encapsulated in a package body commonly called a TO220 package
which includes three electrical connections to the lighting circuit, pins
#77a, b and c, and mounting clip #74. (Fig. 7 and Spec. ¶ [0051]).
Appeal 2008-3124
Application 10/835,637

5
Mounting clip #74 serves as a heatsink and includes a through hole #72
which is used in mounting the package to some fixture or other support.
(Spec. ¶ [0052]).
2. The Sun patent teaches a driving circuit used in the ballast for a high
intensity discharge lamp. (Col. 3, l. 54). Sun does not discuss an
encapsulating package for the circuit.
3. The Grant patent teaches circuitry for a low power radio. (Col. 1, l. 4).
In Figure 6 it teaches a resonant load (L 44, C 42) powered by a circuit
that reduces the voltage from the system 3 volts to a more efficient 1.5
volts. Grant does not discuss encapsulating this part of the circuit.
4. The Konopka patent teaches a ballast circuit for a gas discharge lamp.
(Col. 1, l. 15). An inverter circuit 200 supplies power to the resonant
load 300. (Fig. 1). Konopka does not discuss encapsulating the circuit
200.
5. The Lankin patent teaches an electronic controller for a motor. (Col. 4, l.
26). The controller circuit’s electronic components are taught to be
packaged in a TO220 package, which will serve as a heat sink for the
electronic components. (Col. 7, ll. 50-62).
PRINCIPLES OF LAW
“In reviewing the examiner’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992).
Appeal 2008-3124
Application 10/835,637

6
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
127 S. Ct. 1727, 1742 (2007). To be nonobvious, an improvement must be
“more than the predictable use of prior art elements according to their
established functions.” Id. at 1740. Appellants have the burden on appeal to
the Board to demonstrate error in the Examiner’s position. See In re Kahn,
441 F.3d 977, 985-86 (Fed. Cir. 2006) (“On appeal to the Board, an
applicant can overcome a rejection [under § 103] by showing insufficient
evidence of prima facie obviousness or by rebutting the prima facie case
with evidence of secondary indicia of nonobviousness.”) (quoting In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
An analysis of whether the claims under appeal are supported by an
enabling disclosure requires a determination of whether that disclosure
contained sufficient information regarding the subject matter of the appealed
claims as to enable one skilled in the pertinent art to make and use the
claimed invention. The test for enablement is whether one skilled in the art
could make and use the claimed invention from the disclosure coupled with
information known in the art without undue experimentation. See United
States v. Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988); In re
Stephens, 529 F.2d 1343, 1345 (CCPA 1976).
Under the written description requirement of 35 U.S.C. § 112, the
disclosure of the application relied upon must reasonably convey to the
artisan that, as of the filing date of the application, the inventor had
possession of the later claimed subject matter. Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1563 (Fed. Cir. 1991). "One shows that one is 'in possession'
Appeal 2008-3124
Application 10/835,637

7
of the invention by describing the invention, with all its claimed limitations,
not that which makes it obvious." Lockwood v. American Airlines, Inc., 107
F.3d 1565, 1572 (Fed. Cir. 1997) (emphasis in original).
The first paragraph of 35 U.S.C. § 112 requires, among other things,
that the specification of a patent enable any person skilled in the art to which
it pertains to make and use the claimed invention. Although the statute does
not say so, enablement requires that the specification teach those in the art to
make and use the invention without "undue experimentation." In re Wands,
858 F.2d 731, 736-37 (Fed. Cir. 1988). Whether undue experimentation is
required is a conclusion reached by weighing several underlying factual
inquiries. Id. at 737.
Our reviewing court states in In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989) that “claims must be interpreted as broadly as their terms reasonably
allow.” Our reviewing court further states that "the words of a claim 'are
generally given their ordinary and customary meaning.'" Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal citations
omitted). The "ordinary and customary meaning of a claim term is the
meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the effective filing date of the
patent application." Id. at 1313.
ANALYSIS
From our review of the administrative record, we find that Examiner
has presented a prima facie case for the rejections of Appellant’s claims
under 35 U.S.C. § 103(a). The prima facie case is presented on pages 3 to 8
Appeal 2008-3124
Application 10/835,637

8
of the Examiner’s Answer. In opposition, Appellant presents a number of
arguments.
Arguments with respect to the rejection
of claims 16 and 17
under 35 U.S.C. § 103. [R1, R2 and R3]

Appellant contends that Examiner erred in rejecting 16 and 17 under
35 U.S.C. § 103(a) because none of the primary references suggest isolating
the components of the ballast (or equivalent) circuit and encapsulating them
as claimed. (App. Br. 5-7). Appellant further argues that the Lankin
teaching is only of encapsulating a control circuit into a TO220 module, and
lacks the specificity of the claims.
Appellant further contends that when the individual circuits of Sun,
Grant and Konopka are analyzed, they each would require four electrical
connections extending from the encapsulated module and not the three that
are claimed. (Id.)
We have carefully reviewed Appellant’s arguments, as well as the
Examiner’s findings and conclusions. We agree with the Appellant’s
arguments. The general teaching of Lankin of encapsulating a motor control
circuit into a TO220 package does not provide sufficient specificity to render
obvious the encapsulation of the ballast circuit of Appellant with the details
as claimed. Further, Appellant has pointed out that each of the three primary
references chosen by the Examiner would require at least four connections
from the encapsulated module, not the three connections as claimed. (Id.).
Thus, in view of the express negative limitation in independent claim 16
“wherein there are no other externally accessible connection to the
Appeal 2008-3124
Application 10/835,637

9
encapsulated circuit”, the Appellant has successfully pointed out an error in
each of the rejections, as there would be no valid basis upon which to sustain
a finding of non-obviousness.
CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellant has shown that the Examiner erred in rejecting claims 16 and 17
under 35 U.S.C. § 103 as specified in R1, R2 and R3.
OTHER ISSUES
REJECTION OF CLAIMS 16 AND 17 UNDER 37 C.F.R. § 41.50(B)
We make the following new ground of rejection using our authority
under 37 C.F.R. § 41.50(b):
Claims 16 and 17 are rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement. The 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, at the time the application was filed, had possession of the claimed
invention.
The Appellant has added the phrase “wherein there are no other
externally accessible connection to the encapsulated circuit” to the original
independent claim 16. During prosecution, claims are interpreted in a broad
but reasonable manner, barring an explicit definition in the specification.
(See In re Zletz, cited above). The Specification makes it clear that the
encapsulated circuit’s mounting clip #74, with the screw hole #72, is used to
make a mechanical and heat connection to a supporting surface. (See FF1
Appeal 2008-3124
Application 10/835,637

10
above.) Thus, there is no support for the general statement “no other
externally accessible connection” in the Specification. (See Vas-Cath Inc. v.
Mahurkar, cited above).
DECISION
We have reversed the Examiner's rejections R1, R2 and R3 of claims
16 and 17. However, we have entered a new grounds of rejection under 37
C.F.R. § 41.50(b) for claims 16 and 17 as failing to comply with the written
description requirement under 35 U.S.C. § 112, first paragraph.
37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, 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. . . .

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).

Appeal 2008-3124
Application 10/835,637

11
REVERSED
37 C.F.R. § 41.50(b)

msc

OSTROLENK FABER GERB & SOFFEN
1180 AVENUE OF THE AMERICAS
NEW YORK NY 10036-8403