Ex Parte 8023290 et al

Patent Trial and Appeal Board

May 2, 2016

95001861 (P.T.A.B. May. 2, 2016)

MOD PTOL-90A (Rev.06/08)

APPLICATION NO./
CONTROL NO.
FILING DATE FIRST NAMED INVENTOR /
PATENT IN REEXAMINATION
ATTORNEY DOCKET NO.
95/001,861 12/21/2011 8,023,290

EXAMINER
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
Tom, My-Trang
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE

05/02/2016 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.

UNITED STATES DEPARTMENT OF COMMERCE
U.S. Patent and Trademark Office
Address : COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________________________________________________________________________________

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

VICOR CORPORATION,
Requester,

v.

SYNQOR, INC.,
Patent Owner and Appellant.
____________________

Appeal 2015-004509
Reexamination Control 95/001,8611
Patent No. US 8,023,290 B22
Technology Center 3900
____________________

Before JAMES T. MOORE, STEPHEN C. SIU, and
DENISE M. POTHIER, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Third Party Requester Vicor Corporation (“Vicor,” “Requester,” or
“Appellant”) appeals under 35 U.S.C. §§ 134(b) and 315(b) (2002) from the
confirmation of patentability of claims 1– 15 as set forth in the Right of

1 Filed by Vicor Corporation on December 21, 2011.
2 Issued September 20, 2011 to Martin F. Schlecht and assigned to SynQor,
Inc. (the “’290 patent”). The ’290 patent issued from Application No.
12/478,942, filed June 5, 2009.
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Appeal Notice (“RAN”) mailed December 19, 2013. Requester filed an
Appeal Brief March 14, 2014. Patent Owner SynQor, Inc. (“SynQor,”
“Patent Owner,” or “Respondent”) filed a Respondent Brief on April 14,
2014. The Examiner mailed an Examiner’s Answer on August 28, 2014,
which incorporated the RAN by reference and maintained all determinations
of patentability. Requester filed a Rebuttal Brief on September 29, 2014.
We have found no request for oral argument in the files.
We affirm the decision of the Examiner withdrawing the rejections of
the claims.
There are multiple proceedings concerning this patent family.
According to Requester, the ‘290 Patent was asserted in SynQor, Inc. v.
Ericsson, Inc. et al., Case No. 2:11-CV-54 (E.D. Tex.) together with related
patents. Other related patents are also said to be asserted in SynQor, Inc. v.
Artesyn Technologies, Inc., et al., Case No. 2:07-CV-00497 (E.D. Tex.). Br.
2. The case involving Artesyn Technologies, Inc. was appealed to the
Federal Circuit and affirmed. Id.
The rejections have been withdrawn during the reexamination
proceeding largely based upon the Board’s reasoning in another, related
reexamination proceeding (Control No. 95/001,207) appeal, Murata
Manufacturing Co. v. SynQor, Inc. Appeal No. 2012-012209 (PTAB Aug.
19, 2013). It should be noted that Murata is a different party than Vicor, the
present Requester.
We also are aware of a decision from the United States Court of
Appeals for the Federal Circuit Vicor Corporation v. SynQor, Inc., 603 F.
App’x 969 (Fed. Cir. 2015). That decision reversed a decision of this Board,
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which in turn reversed a decision of the Examiner in related reexamination
proceeding Control No. 95/001,702 that determined the combined reference
teaches substituting controlled rectifiers for diodes within the capacitance-
multiplying converter 20 of both Steigerwald ’539’s Figure 4 and
Steigerwald ’090’s Figure 1. The Federal Circuit then concluded that certain
claims of US Patent 7,072,190 B2 were anticipated.
To the extent the evidence relied upon during litigation and decisions
of the District Courts and Federal Circuit are informative or persuasive, we
have considered them as such.
The ’290 Patent concerns power conversion. The power converter is
said to nearly and losslessly deliver and recover energy from capacitors
associated with controlled and parallel uncontrolled rectifiers in a secondary
winding circuit. The converter is operated by first and second primary
switches in series with first and second primary windings, respectively; the
switches are turned on for a fixed duty cycle, each for approximately one
half of the switching cycle. ’290 Patent, Abstract.
Claim 1 is representative, and reproduced below.
1. A DC-DC power converter system providing plural regulated
DC outputs, each having a regulated voltage, comprising:
a DC input;
a non-regulating isolating converter comprising:
a primary transformer winding circuit having at least one
primary winding that receives power from the DC input; and
a secondary transformer winding circuit having at least
one secondary winding coupled to the at least one primary
winding and having plural controlled rectifiers, each having a
parallel uncontrolled rectifier and each in circuit with a
secondary winding, each controlled rectifier being turned on
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and off in synchronization with a voltage waveform of the at
least one primary winding to provide a non-regulated, isolated
DC output; and
plural non-isolating switching regulators, each receiving
power from the non-regulated, isolated DC output of the non-
regulating isolating converter and each providing one of the
regulated DC outputs having a regulated voltage.

’290 Patent 17:9–30.
EVIDENCE OF RECORD
When the request for inter partes reexamination was granted in the
Order Granting/Denying Requester for Inter Partes Reexamination dated
February 7, 2012, the Examiner relied upon the following prior art:
Steigerwald US 5,274,539 December 28, 1993
(Steigerwald ’539)

Steigerwald US 5,377,090 December 27, 1994
(Steigerwald ’090)

Japanese Patent Application March 12, 1993
Publication No. H05-64446 (“JP ’446”)

Abraham I. Pressman, “Switching and Linear Power Supply, Power
Converter Design” (1977). (“Pressman”)

John G. Kassakian & Martin F. Schlecht, “High-Frequency High-Density
Converters for Distributed Power Supply Systems” 76 Proc. of the IEEE
(1988), vol. 76, no. 4, pp. 362–376. (“Kassakian”).

Enrique de la Cruz et al., “Analysis of Suitable PWM Topologies to Meet
Very High Efficiency Requirements for on Board DC/DC Converters in
Future Telecom Systems,” 15th Annual Telecommunications Energy
Conference 207–214 (1993).

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J.A. Cobos & J. Uceda, “Low Output Voltage DC/DC Conversion,”
20th International Conference On Industrial Electronics, Control, and
Instrumentation 1676–1681 (1994). (“Cobos”).

Admitted Prior Art in the form of the transcript of trial testimony from the
trial in the case of SynQor, Inc. v. Arlesyn Technologies, et al., Case No.
2:07-CV-479, 12/ 14/2010, AM session. (“APA”).

THE REJECTIONS
There are no pending rejections; the claims stand as confirmed.
THE ISSUES RAISED ON APPEAL
The Requester has appealed the Examiner’s final decisions favorable
to patentability. 35 U.S.C. § 315 (b)(1) (pre AIA). The Requester raises the
following issues:
I. Whether Claims 1–4, 11, and 12 are unpatentable under 35
U.S.C. § 103(a) over Steigerwald '090, Cobos, and Pressman.

II. Whether Claims 5–10 and 13–15 are unpatentable under 35
U.S.C. § 103(a)over Steigerwald '090, Cobos, Pressman, and APA.

III. Whether Claims 1–4, 11, and 12 are unpatentable under 35
U.S.C. § 103(a) over JP ‘446, Steigerwald '539, and Kassakian.

IV. Whether Claims 5–10 and 13–15 are unpatentable under
35 U.S.C. § 103(a) over JP ‘446, Steigerwald ‘539, Kassakian, and
Cruz.

V. Whether Claims 1, 2, 4, 11, and 12 are unpatentable under
35 U.S.C. § 103(a) over Steigerwald '090 (including the incorporated
teaching of Steigerwa1d ‘539), and Pressman.

VI. Whether Claims 3, 5–10, and 13–15 are unpatentable
under 35 U.S.C. § 103(a) over Steigerwald ‘090 (including the
incorporated teaching of Steigerwald ‘539), Pressman, and Cruz.

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PROCEDURAL POSTURE OF THIS CASE

The claims involved in this reexamination proceeding have been
confirmed by the Examiner, and all proposed rejections withdrawn. RAN 8–
10 (citing to September 17, 2013 Action Closing Prosecution (“ACP”)). The
Appellant Requester appeals the withdrawal of the rejections. Req. App. Br.
3–4.
ANALYSIS
I. Whether Claims 1–4, 11, and 12 are unpatentable under 35
U.S.C. § 103(a) over Steigerwald ‘090, Cobos and Pressman.

This rejection was adopted from the Reexamination Request (“Req.”),
pages 14–23. February 7, 2012 Office Action, 6.
As adopted by the Examiner, Steigerwald ‘090 describes a DC-DC
power converter system with plural regulated DC outputs. Req. 15 (citing
Steigerwald ‘090, Title, the sole Figure, and 1:42–54). DC power was found
to be described as supplied at an input, and the converter to be non-
regulating and isolating. Req. 16 (citing Steigerwald ‘090, the sole Figure,
2:15; 4:27–30; 4:32–36; 4:42–46, and claim 1). A transformer with primary
and secondary windings circuits were found to be described at Steigerwald
‘090 Figure, reference numerals T1, 11, 12, 22, 26, and 28. Req. 17.
Steigerwald was found to describe diode rectifiers, which are
uncontrolled. Steigerwald ‘090 Figure, CRap, CRbp. Cobos was relied upon
and found to describe the use of metal oxide semiconductor field effect
transistors (“MOSFETS”) () as controlled synchronous rectifiers. Req. 17–
18 (citing Cobos, Figs. 5, 6, 9, 10, and pp. 1676–1677). The synchronous
waveform was found to be described at Cobos on pages1677–1679.
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Finally, Steigerwald was found to describe plural non-isolating
switching regulators from the non-regulating isolating converters. Req. 19
(citing Steigerwald ‘090, the sole Figure, and 1:42–54).
The Examiner further found that Cobos describes the use of
synchronous rectifiers instead of diode rectifiers to improve the efficiency of
a power converter and that the synchronous rectifiers should be arranged to
perform self-synchronous rectification with fast transitions to reduce
switching losses. Req. 20.
As a consequence, the Examiner concluded that to improve efficiency,
one of ordinary skill in the art would have modified Steigerwald ‘090 to
include synchronous rectifiers instead of diode rectifiers and to include a
primary driving technique that produces voltage waveforms in the primary
winding with fast transitions. Req. 21.
The Examiner also found that this modification of Steigerwald ‘090
would have only required a simple, obvious substitution of one known,
equivalent element for another to obtain predictable results. Id. The
underlying factual determinations in the rejection relied in large part upon
the declaration of Patrizio Vinciarelli, a founder of Vicor Corporation.
Vinciarelli Decl. ¶ 2.
On May 2, 2012, Patent Owner filed a response to the Official Action
urging multiple errors. On May 23, 2012, Requester filed Comments
indicating its opposition to the positions taken by the Patent Owner. On
September 17, 2013, the Examiner issued an Action Closing Prosecution
(“ACP”) in which all rejections were withdrawn.

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The ACP indicated that:
The examiner withdraws the rejections for the reasons
explained by the Board in its decision in related proceeding
95/001,207. Murata Manufacturing Co. v. SynQor, Inc., Appeal No.
2012-012209 (P.T.A.B. Aug. 19, 2013) (hereinafter "the ‘207 August
2013 Board Dec."). In the related proceeding 95/001,207 the Board
explained why Steigerwald ‘090 and Cobos cannot be combined to
meet claims similar to those at issue here. The ‘207 August 2013
Board Dec. pp. 14-25. The Board explained why Steigerwald ‘090
and Pressman cannot be combined to meet similar claim limitations to
those at issue here. The ‘207 August 2013 Board Dec. p. 27.
Rejections 1, 2, 5, and 6 are therefore withdrawn for similar reasons
as given by the Board.

The Board additionally determined that claims in the related
proceeding were not obvious based on objective indicia of non-
obviousness. The ‘207 August 2013 Board Dec. pp. 33-50. The Board
determined that the materials from litigation, submitted to the Office
by patent owner, were available to use as evidence of non-
obviousness. The Board determined that such materials, in
combination with the Schlecht Declaration, established a nexus
between the claims and the objective indicia of non-obviousness. The
Board then determined that such objective indicia was sufficient to
show non-obviousness of the claims. Similar evidence has been
presented in the current proceeding, and the claims are likewise
similar. The examiner therefore finds that the patent owner has
provided sufficient objective indicia to prove that the claims were not
obvious for the reasons given by the Board in the related proceeding
along with the reasons given by the patent owner in the Response.
Thus, all of the obviousness rejections 1-6 are withdrawn.

ACP 10–11.
On appeal, the Requester urges that this decision of the Examiner was
erroneous. According to the Requester, “[t]he Examiner failed to properly
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consider this patent on the record of this proceeding.” Req. App. Br. 5.
(emphasis in original).
We are not persuaded by this argument in its generic sense. The
Examiner unequivocally stated that “[b]oth the Patent Owner’s response and
the Third Party Requester Comment[s] have been carefully considered and
made of record.” ACP 4 (emphasis added). The Examiner also said it
considered the “reasons given by the patent owner in the Response.” ACP
11. Accordingly, giving the Examiner the presumption of good faith,3 we
find that the arguments from both parties were considered, along with a
persuasive influence from the Board’s reasoning in a similar, but not
precisely or exactly on point decision, in a related case. There is nothing
necessarily erroneous with another case turning on similar issues having a
persuasive effect, so long as the evidence of record in this case supports the
decision in this case.
The Appellant also urges that prior decisions among different parties
have no applicability in this appeal, and that the record in this reexamination
is different from other litigations. Req. App. Br. 7–9. We also agree with
the Appellant that there is not necessarily a preclusive effect from the prior
proceedings, but disagree that other proceedings cannot be persuasive or
informative to this panel if similar facts and issues exist. We do, however,
agree that the evidence of record must both be in this proceeding, and must
support the Examiner’s decision adequately.
We have at our disposal both the Patent Owner’s response, the Third
Party Requester’s Comments, the RAN, the briefs on appeal and their

3 Boyle v. U.S., 515 F.2d 1397 (Ct. Cl. 1975).
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respective appendices, as well as the decision of another panel of this Board
in the related proceeding. The record on this appeal is developed
sufficiently for this panel to review the decision in the ACP to withdraw all
of the rejections. Given the requirements of special dispatch, we endeavor
to render a decision based on this record, without resort to remand.
1. The Combination of Cobos and Steigerwald ‘090
a. Implementation of Synchronous Rectification
Patent Owner in this proceeding prior to the withdrawal of the
rejection had urged that (1) the level of ordinary skill in the art was low and
the Requester and Examiner had not established an appropriate level,4 (2)
the modification of Steigerwald to add synchronous rectification was beyond
the level of ordinary skill in the art (Id. at 3–4), (3)there was no reasonable
expectation of success (Id. at 4–5), (4) it was against conventional wisdom
to combine synchronous techniques with a two-stage converter (Id. at 5–6),
and (5) the Vinciarelli declaration fails to specify the level of ordinary skill
(Id. at 7).
The Examiner withdrew the rejection, based in part on reasoning in
pages 14–25 of the August 19, 2013 decision on appeal in Reexamination
Proceeding 95/001,207 (‘207 Appeal Decision).
In that decision, a different panel of this Board determined that there
was insufficient evidence to counter Patent Owner’s position that the
frequency incompatibility of Cobos and Steigerwald would not have been
able to be overcome by one of ordinary skill in the art. ‘207 Appeal
Decision 25.

4 May 2, 2012 PO Response 1. (“PO Resp. 1”).
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That very issue had been raised in this proceeding by the Patent
Owner in its Response dated May 2, 2012 (“PO Resp.”) at pages 17 and 18.
The Patent Owner argued that the topologies of both Steigerwald ‘090 and
Cobos “are functionally constrained to particular frequency ranges that are
incompatible with each other.” PO Resp. 17. This position is supported
with the May 2, 2012 declaration of Dr. Schlecht, at ¶ 41 and ¶ 29. Dr.
Schlecht’s statement is supported by reference to two separate treatises
which each state that the synchronous rectifiers are complex. Cobos 1678,
column 1, 1680 column 1; Kassakian 372.
Requester urges that the Examiner erred in withdrawing this rejection
based on the finding that one of ordinary skill in the art at the time of the
invention would not have had a reasonable likelihood of succeeding in
producing a multistage DC/DC power converter using synchronous
rectification in its isolation stage. Req. App. Br. 30–31.
Appellant urges that Dr. Schlecht, Patent Owner’s principal witness, is
not credible when he testifies that the level of skill in the art was too low to
implement synchronous rectification. It is alleged that he made statements
which were flatly contradictory to that conclusion. Id. Appellant also
argues that the references are not frequency incompatible, citing Dr.
Steigerwald’s testimony that “they have no frequency limits.” Req. App. Br.
35. We observe that Dr. Steigerwald testified that he had no difficulty
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switching out 1 MHz for 0.5 MHz, and it was within the level of ordinary
skill. Steigerwald Tr. 60–61.5
Patent Owner, on the other hand, urges that Dr. Schlecht clarified in
his testimony that the statements alleged to be contradictory included those
in which he was describing a rudimentary understanding that a MOSFET
may be used in certain instances in place of a diode. This, it is urged, “does
not enable one of ordinary skill to be able to design and implement a
complex multi-stage DC-DC power converter system comprising a ‘non-
regulating isolation converter’ and ‘plural non-isolating switching
regulators’ utilizing synchronous rectification, as claimed in the ‘290
patent.” PO Resp. Br. 5 (citing PO Resp. Br., Evid. App’x, Ex. EA324 ¶¶
27–29).
On balance, we find the evidence of record in this proceeding supports
the Examiner’s position. While Dr. Schlecht certainly has an interest in the
outcome of this proceeding, we deem his testimony sufficiently supported
with objective evidence so as to be credible on the point of the frequency
incompatibility. Dr. Steigerwald’s testimony, on the other hand, we find less
persuasive than as argued by Appellant. More often than not his testimony
was more equivocal than as urged by Appellant, or in response to a leading
question. See, e.g. Req. App. Br., Evid. App’x, EA49 at 84–86 (“I don’t
recall a specific frequency.”)

5 Transcript of the deposition of Robert L. Steigerwald taken on October 28,
2013. Also known as Exhibit Appendix number 49 to the Requester’s
Appeal Brief (“Req. App. Br. EA49”) and Exhibit Appendix number 324 to
Patent Owner’s Respondent Brief. (“Resp. Br. EA349”).
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We therefore are unpersuaded of error in this first regard on the
present record. This conclusion also addresses issue II, above.
III. Whether Claims 1–4, 11, and 12 are unpatentable under 35 U.S.C.
§ 103(a) over JP ‘446, Steigerwald '539, and Kassakian.

This rejection was adopted from the Reexamination Request (“Req.”)
at pages 38–49. February 7, 2012 Office Action 7.
The Examiner found that JP ‘446 described “an efficient and low
noise power supply system” including a transformer connected to a DC
power supply 1. Req. 38. The transformer was found to include a primary
winding and a secondary winding, and a rectifier circuit including a plurality
of rectifying diodes connected to the secondary winding of the transformer.
Id. The Examiner further found that the output of the rectifier circuit 7 is
connected to respective DC/DC converters which are non-isolating
regulators. Id. at 39.
Steigerwald ‘539 was found to describe that synchronous rectifiers
driven by the voltage waveform on the primary winding of the transformer
may be substituted for diode rectifiers in a non-regulating, isolating power
converters. Id. 40. The Examiner then concluded it would have been
obvious to substitute the synchronous rectifiers for the diodes in JP ‘446.
Kassakian was found to describe that down-converting non-isolating
switching regulators were well known in the art. Id. 41. The Examiner then
concluded it would have been obvious to implement the non-isolating
regulators of JP ‘446 as the non-isolating regulators of Kassakian. Id.
During prosecution in this proceeding, the Patent Owner urged that JP
‘446 cannot be combined with Steigerwald ‘539. PO Resp. 25. The reason
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urged was that the modification to JP ‘446 would cause current to flow in
the reverse direction for a period of the duty cycle. Id. More specifically,
Patent Owner urged that Steigerwald’s controlled rectifiers are driven by
waveforms derived from a voltage on the primary side of the power
converter. Id. (citing Steigerwald ‘539, 4:58–55:42). Patent Owner urged
that this drive scheme, if used for controlled rectifiers replacing the diode
rectifiers in JP ‘446 would cause current to flow in the reverse direction, or
fail to operate correctly. Id. at 25–26.
Patent Owner additionally urged that evidence of secondary
considerations overcame any prima facie case of obviousness which may
have existed. PO Resp. 28. Among those items urged to be evidence were
trial evidence from the infringement action indicating millions of infringing
products were sold, which were commercially successful. Id. at 52–53.
Those products were argued to be substantially the entire market. Id. at 53.
Those products were urged, based upon the jury finding of infringement, to
directly infringe present claims 2, 8, 10, and 19 of US Patent 7,072,190 (“the
‘190 patent”) and, thus, be commensurate in scope with the present claims.
Id. 54, citing Ex. 18, the jury verdict form, finding contributory
infringement. The jury awarded $95 million in damages to SynQor in the
litigation. Id. 66, citing Ex. 18.
Patent Owner also pointed to and urged a long-felt need for providing
low output voltages at high current, as far back as 1991. Id. 69. Patent
Owner also alleged failures of others. Id. 73. Finally, Patent Owner pointed
to what it called praise by others including competitors and vendors in the
industry. Id. 77–87.
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Requester, in its comments, urged that modifications to prevent
current flowing backwards are unnecessary because a synchronous rectifier
is itself a rectifier. Req. Comments 36–37. Requester also urged that the
claims do not reflect that it was known unregulated intermediate bus
architecture that caused the commercial success, that nexus was lacking, the
evidence was not commensurate in scope with the claims, and the evidence
was dubious. Req. Comments 39–72.
The Examiner, in the Action Closing Prosecution, did not directly
address the prima facie case of obviousness. Rather, the Examiner observed
that there was objective indicia of nonobviousness, as found by the Board in
the ‘207 Appeal Decision at pages 33–50. ACP 11.
The ‘207 Appeal Decision relied upon numerous pieces of evidence,
including the Schlecht Declaration, the jury verdict forms, and product data
sheets. It concluded that nexus was shown to those claims, and that there
was weight to be given to commercial success (Dec. 46), long felt need (Id.
at 47–48), industry praise (Id. at 48–49), and copying (Id. at 49–50). It
therefore found that based upon the technical arguments and secondary
considerations, claims 1–33 of the ‘190 patent would not have been obvious.
On appeal, the Requester urges that the objective evidence supports a
conclusion that the claims are invalid. The Appellant urges that Dr. Schlecht
did not invent intermediate bus architecture, and the patents in question did
not reflect intermediate bus architecture until 2007. App. Br. 9–12. The
Appellant urges that Pressman disclosed multistage converter architecture
having a non-regulating isolation stage followed by non-isolating switching
regulators. App Br. 21. In short, the Appellant is urging that there has been
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an inadequate showing of nexus between the claimed invention and the
alleged secondary considerations.
Patent Owner counters that the architecture claimed in the ‘290 patent
involved in the present proceeding is substantially identical to that claimed
in the ‘190, ‘702 and ‘021 patents, and as a consequence, the secondary
considerations evidence applies equally. PO Resp. Br. 10.
Claim 1 from the ‘190 and the ‘290 patent are reproduced side-by-side
below with underlining and bolding added for emphasis of the claim
differences.
Claim 1 of the ‘190 Patent Claim 1 of the ‘290 Patent
1. A power converter system
comprising:

a DC power source;

a non-regulating isolation stage
comprising:

a primary transformer winding
circuit having at least one primary
winding connected to the source;
and

a secondary transformer winding
circuit having at least one secondary
winding coupled to the at least one
primary winding and having plural
controlled rectifiers, each having a
parallel uncontrolled rectifier and
each connected to a secondary
winding, each controlled rectifier
1. A DC-DC power converter
system providing plural regulated
DC outputs, each having a regulated
voltage, comprising:

a DC input;

a non-regulating isolating
converter comprising:

a primary transformer winding
circuit having at least one primary
winding that receives power from
the DC input; and

a secondary transformer winding
circuit having at least one secondary
winding coupled to the at least one
primary winding and having plural
controlled rectifiers, each having a
parallel uncontrolled rectifier and
each in circuit with a secondary
winding, each controlled rectifier
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being turned on and off in
synchronization with the voltage
waveform across a primary
winding to provide an output,

each primary winding having a
voltage waveform with a fixed
duty cycle and transition times
which are short relative to the on-
state and off-state times of the
controlled rectifier
ers; and

a plurality of non-isolating
regulation stages, each receiving the
output of the isolation stage and
regulating a regulation stage output
while the fixed duty cycle of the
isolation stage is maintained.
being turned on and off in
synchronization with a voltage
waveform of the at least one
primary winding to provide a non-
regulated, isolated DC output;
and

plural non-isolating switching
regulators, each receiving power
from the non-regulated, isolated DC
output of the non-regulating
isolating converter and each
providing one of the regulated DC
outputs having a regulated voltage.

‘190 Patent 17:21-42. ’290 Patent 17:9–30.

It is evident that the only substantive difference between instant claim
1 and claim 1 of the ‘190 patent is the inclusion of the short transition times
as indicated in boldface type above. Claim 2 of the ‘190 patent, which was
found infringed, adds the switching regulator found in bold in the last
paragraph of instant claim 1.
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We have not been provided with persuasive argument and reasoning
why the evidence of secondary considerations found persuasive for the
claims of the ‘190 patent by the Examiner does not also apply to the instant
claims of the ‘290 patent. We have carefully considered the arguments
raised by the Appellant concerning the development of the industry and
reasons for commercial success of intermediate bus architecture. Req. App.
Br. 9– 30. However, we are not persuasively pointed to error in the
Examiner’s ultimate conclusion that the preponderance of objective
evidence, including that from the infringement litigation concerning the ‘190
patent, outweighs the evidence of obviousness.
Accordingly, we find no error in the conclusion of the Examiner that
the rejections based upon JP ‘446 be withdrawn. This also applies to issue
IV.
V. Whether Claims 1–2, 4, 11, and 12 are unpatentable under 35
U.S.C. § 103(a) over Steigerwald '090 (including the incorporated teaching
of Steigerwa1d ‘539) and Pressman.

This rejection was adopted from the Reexamination Request (“Req.”)
on pages 67–79. February 7, 2012 Office Action 8.
The Examiner initially found that Steigerwald ‘539 describes a two
stage power converter, having a regulation stage followed by an isolation
stage. The isolation stage was found to include two transformers (Tl, T2)
that operate in opposite phase, each at a 50% duty cycle, coupling an energy
storage capacitor to the DC output. Req. 67 (citing Steigerwald ‘539 3:33–
38). The duty cycle was found to be fixed and the isolation stage non-
regulating. Id. (citing Vinciarelli Decl. ¶ 5.)
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19
Steigerwald ‘539 was also determined to include an alternative
embodiment including a non-regulating isolation stage with synchronous
rectifiers. Id. at 69 (citing Steigerwald ‘539 4:58–60).
Pressman was determined to teach the same configuration as
Steigerwald ‘090, but using switching regulators. Req. 71.
The Examiner then concluded as Pressman describes switching post-
regulators provide improved efficiency relative to linear regulators when
used in the configuration disclosed in Steigerwald ‘090, one of ordinary skill
would have been motivated to use switching regulators in Steigerwald’s
design for those outputs, in order to obtain the improved efficiency as taught
by Pressman. Req. 73.
The Patent Owner raised several issues during this proceeding relating
to Pressman. First, that combining Pressman into multi-stage converters
reduces efficiency. PO Resp. 6–7. Second, that modifying Steigerwald to
include switching regulators renders the circuit unsatisfactory by destroying
the output pulse. PO Resp. 12. Third, that modifying Steigerwald to include
synchronous regulators would not be more efficient as the energy saved
would be dissipated in linear regulators. PO Resp. 13.6
Requester urged during prosecution that Pressman in fact described
efficient multi-stage converters, as high as 72%. Requester Comments at
13–14 (citing Pressman Figures 3-4, 3-5, and 3-6).

6 We observe that Patent Owner has also argued that Steigerwald ‘090 failed
to incorporate the embodiment of Steigerwald ‘539 which described
controlled rectifiers. PO Resp. 20–21. As the Federal Circuit has
determined that such an embodiment exists, we do not credit this argument.
See Vicor, 603 F. App’x 969, supra.
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The ‘207 Appeal Decision held that Steigerwald ‘090 was directed to
a capacitance multiplier that includes a large capacitor at the main input bus,
which design supports the intended purpose of providing current pulses to
radar. ‘207 Appeal Decision 27. As the design arrangement chosen was
found to prohibit the use of an inductor in the conductive path to a load, and
the substitution of a Pressman switching regulator in place of the
Steigerwald '090 linear regulator would do that, a different panel of this
board determined that the use of a circuit path inductor would defeat the
intended purpose of Steigerwald ‘090 and discourage such substitution. Id.
The Examiner then withdrew the rejections involving the combination
of Steigerwald and Pressman. RAN 11.
On appeal, Requester urges that the Examiner erred in withdrawing
the rejections because inductors in the output path would not have prevented
the combination of Steigerwald with Pressman. App. Br. 38. The Appellant
relies upon the testimony of Dr. Steigerwald that one of ordinary skill in the
art would have understood that the non-pulsed voltages in Steigerwald ‘090
can be implemented with or without inductors in the current path. App. Br.
39–40.
Patent Owner disagrees, observing that including inductors in the
current path would frustrate the principal purpose of Steigerwald. PO Reb.
Br. 8–9. Patent Owner also challenges Dr. Steigerwald’s memory and lack
of experience building a converter. Id.
On balance, although there are facts supporting each viewpoint and it
is a close call, we find the Requester has not pointed to reversible error in
the Examiner’s determination to withdraw the rejection. It is evident that
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Steigerwald ‘090 is principally directed to pulsed loads, even though it has
un-pulsed biasing and control loads. However, the principal description and
teaching of energy delivery of Steigerwald ‘090 is that of a pulsed power
converter (Title) and the ability to miniaturize the equipment needed for
energy storage. Steigerwald ‘090 1:35:40.
Even though there is a description of an alternative embodiment
derived from Steigerwald ‘539 which utilizes synchronous rectifiers (see
footnote 6, supra), we are not persuaded under the specific facts of this case
that it is erroneous for the Examiner to have concluded that Steigerwald ‘539
itself teaches away from the intentional inclusion of inductance in the
current path of the pulsed loads. See, e.g. claim 1. Moreover, Dr.
Steigerwald during his testimony noted that the bias loads in the Steigerwald
‘090 description do not necessarily stay constant and could be affected by
the pulses. Steigerwald Tr. 81:7–14.
Accordingly, on the present record in this proceeding, we are not
persuaded that the Examiner erred in withdrawing this rejection for the
reasons noted in the RAN. This analysis also applies to issue VI, which
includes a rejection of claims that depend directly or indirectly from the
claims addressed in Issue V.
CONCLUSION
We have carefully considered the evidence of record, including that of
secondary considerations submitted by the Patent Owner, and evidence
contrary thereto submitted by Requester. We also have considered the
findings and conclusions of the Examiner as adopted from the ‘207 Appeal
Decision.
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22
We conclude that the Requester has not persuaded us of error in the
Examiner’s conclusion that the claims at issue would not have been obvious
to one of only ordinary skill in the art at the time the invention was made.
We, therefore, sustain the Examiner’s decision to withdraw the
obviousness rejections of these claims.

ORDER
The decision of the Examiner is affirmed.

AFFIRMED

Patent Owner:

Greenblum & Bernstein, PLC
1950 Roland Clarke Place
Reston, VA 20191

Third Party Requester:

Turner Boyd, LLP
2570 West Camino Real
Suite 380
Mountain View, CA 94040