Ex Parte Strzalkowski

Patent Trials and Appeals Board

Jul 25, 2013

11776390 - (R) (P.T.A.B. Jul. 25, 2013)

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.
11/776,390 07/11/2007 Bernhard Strzalkowski 3195.02US02 6690
87977 7590 07/25/2013
Patterson Thuente Pedersen, P.A.
4800 IDS Center
80 South Eighth Street
Minneapolis, MN 55402
EXAMINER
CORRIELUS, JEAN B
ART UNIT PAPER NUMBER
2633
MAIL DATE DELIVERY MODE
07/25/2013 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 BERNHARD STRZALKOWSKI
_____________
Appeal 2010-009951
Application 11/776,390
Technology Center 2600
____________

Before RICHARD TORCZON, ANDREW J. DILLON, and HUNG H. BUI,
Administrative Patent Judges.

DILLON, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appeal 2010-009951
Application 11/776,390

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STATEMENT OF THE CASE
In a paper filed June 25, 2013, Appellant requests a rehearing under
37 C.F.R. §41.52 from the Opinion of the Patent Trial and Appeal Board
(hereinafter referred to as the “Board”) dated April 25, 2013. In the
Opinion we affirmed the Examiner’s rejection of claims 1-5, 8-11, 13-16,
18, 21-36 and 43-57 and reversed the Examiner’s rejection of claims 39, 42,
58 and 59. Appellant alleges that the Board misapprehended or overlooked
the requisite factual and legal basis necessary to affirm the rejection of
claims 1-5, 8-11, 13-16, 18, 21-36 and 43-57. (Req. Reh’g. 2-14). We
summarize Appellant’s principal allegations of error as follows:

(1) Appellant alleges the Board misapprehended the “ESIGNAL” of
Regan as a “logic signal” or “digital signal” when it is actually a
continuous analog signal. Req. Reh’g. 4-6.
(2) Appellant alleges the Board erred in affirming the proposed
substitution of Appellant’s Admitted Prior Art (“AAPA”) with
Regan, urging such combination cannot result in the claimed
invention. Req. Reh’g. 6-8.
(3) Appellant urges that the Board erred in finding that Regan must
include an initiation or start signal. Req. Reh’g. 11-12.
(4) Appellant urges the Board erred by finding that Regan shows or
suggests two types of signals which are initiated in response to first
and second edges of an input logic signal. Req. Reh’g. 12-13.
(5) Appellant urges the Board erred in affirming the Examiner’s
rejection of claims 1-5, 8-11, 13 and 32-26 over Regan in view of
the fact that those claims were copied from claims 1-5, 11-14 and
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16 of Chen ‘329 and claims 12-16 of Chen ‘444 which were
allowed over Regan.1 Req. Reh’g. 13-14.

ANALYSIS
We have carefully reviewed the Opinion in light of Appellant’s
allegation of errors. We will address those remarks in the order in which
they are presented in the Request, and as outlined above.
Appellant argues that we misapprehended the “ESIGNAL” of Regan as a
“logic signal” or “digital signal” when it is actually a continuous analog
signal. Req. Reh’g. 4-6. We note that Appellant did not expressly argue this
alleged distinction in the Appeal Brief submitted on January 25, 2010 or the
Reply Brief submitted on May 24, 2010.
"Any arguments or authorities not included in the brief or a reply brief
filed pursuant to [37 C.F.R.] § 41.41 will be refused consideration by the
Board, unless good cause is shown." 37 C.F.R. § 41.37(c)(1)(vii).
Accordingly, our affirmance was based only on the arguments made in the
briefs. Any arguments or authorities omitted therefrom are neither before us
nor at issue but are considered waived. Cf. In re Watts, 354 F.3d 1362, 1367
(Fed. Cir. 2004) ("[I]t is important that the applicant challenging a decision

1 Appellant also preemptively alleges that a New Ground of Rejection
substituting Regan into Appellant’s Admitted Prior Art (“AAPA”) does not
support an obviousness rejection and again urges that we retain jurisdiction
and transfer jurisdiction to the Chief Judge to decide the outstanding petition
under Rule 41.3. (Req. Reh’g. 9-10 and 14.) We decline to enter a New
Ground of Rejection and we reiterate that a petition regarding the objection
to the drawings and claims 4 and 26-31 is properly presented by a petition to
the Director under 37 C.F.R. § 1.181.
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Application 11/776,390

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not be permitted to raise arguments on appeal that were not presented to the
Board.")
Next, Appellant argues that our affirmance of the Examiner’s
proposed combination of Appellant’s Admitted Prior Art and Regan was in
error, arguing that the proposed combination of a conventional digital
microtransformer (AAPA) with the teaching of Regan “is not the kind of
straightforward substitution that was behind the rationale asserted by the
Examiner and adopted by the Board.” Req. Reh’g. 7. Specifically,
Appellant argues that Regan teaches away from the proposed combination in
view of the analog nature of the Regan teaching. Id. at 7-8.
As we noted in our Opinion, "[I]t is not necessary that the references
be physically combinable to render obvious the invention under review." In
re Sneed, 710 F.2d 1544, 1550 Fed. Cir. 1983 (citing Orthopedic Equip. Co.
v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983); In re Andersen, 391
F.2d 953, 958 (CCPA 1968)); see also In re Nievelt, 482 F.2d 965, 968
(CCPA 1973) ("Combining the teachings of references does not involve an
ability to combine their specific structures. "). The test for obviousness is
not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference . . . . Rather, the test
is what the combined teachings of the references would have suggested to
those of ordinary skill in the art. In re Keller, 642 F.2d 413,425 (CCPA
1981) (citations omitted). We once again find that the combination of
AAPA and Regan would have suggested the claimed invention to one of
ordinary skill in the art.
Similarly, Appellant argues that the Board erred in finding that Regan
“must utilize an initiation signal of some type” since Regan describes
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“converting a continuous analog signal amplitude at the input to the
frequency domain” and consequently requires no need to “announce,
initiate, or start anything . . .” Req. Reh’g 11.
Once again, Appellant’s argument is based upon an alleged inability
to incorporate the analog system of Regan into the digital circuitry of
AAPA. We find that the combination of AAPA and Regan is valid based
upon what that combination would have suggested to one of ordinary skill in
the art. Further, we find Appellant’s argument that Regan requires no need
to “announce, initiate, or start anything . . . ” to be unpersuasive as we find
that Regan must necessarily start or initiate signal translation at some point.
Appellant further argues that the Board misapprehended that “Regan
can be said to show or suggest two types of signals which are initiated in
response to first and second edges of an input logic signal.” Id. at 12.
Specifically, Appellant bases this argument upon the analog nature of
Regan, noting a belief that Regan fails to show “any logic, digital or binary
signals.” Id. at 13.
As we noted in our Opinion, the Examiner found that Regan discloses,
within Figure 3(B) thereof, that a first signal is sent in response to a first
edge in the signal depicted in Figure 3(A), and that a second signal is sent in
response to a second edge of the signal of Figure 3(A). As for Appellant’s
argument that Regan fails to show “any logic, digital or binary signals,” we
find that the transformation of an analog circuit into a digital circuit is a
mere “improvement” utilizing a known technique and does not provide a
patentable distinction.
Finally, Appellant argues that claims 1-5 and 11-16 of Chen ‘329 and
claims 12-16 of Chen ‘444, from which claims 1-5, 8-11, 13, and 32-36 of
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the present application were copied, were allowed over Regan, noting “it is
axiomatic that the identical claims should be treated similarly during
different prosecutions, absent some strong or compelling rationale that a
clear mistake had been made in the first prosecution of the same claims.” Id.
at 13-14.
We first note that claims 1-5, 8-11, 13, and 32-36 of the present
application are not simply rejected over Regan, but are rejected over the
combination of Regan and AAPA. Further, it is well settled law that the fact
that identical claims in the Chen patents had issued over the Regan reference
is irrelevant to our decision here. “Each case is determined on its own
merits. In reviewing specific rejections of specific claims, this court does not
consider allowed claims in other applications or patents.” In re Gyurik, 596
F.2d 1012, 1017 (FN15), (CCPA 1979).

CONCLUSION
In conclusion, based on the foregoing, we have granted Appellant’s
Request to the extent we have reconsidered our Decision, but we deny
Appellant’s request to make any change therein.

REQUEST FOR REHEARING-DENIED

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