Ex Parte Diederichs et al

Board of Patent Appeals and Interferences

Aug 20, 2012

11326903 (B.P.A.I. Aug. 20, 2012)

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.
11/326,903 01/06/2006 Jost Diederichs 1730-61 9698
616 7590 08/20/2012
THE MAXHAM FIRM
9330 SCRANTON ROAD, SUITE 350
SAN DIEGO, CA 92121
EXAMINER
MUSLEH, MOHAMAD A
ART UNIT PAPER NUMBER
2832
MAIL DATE DELIVERY MODE
08/20/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte JOST DIEDERICHS, ANDREAS AMANN, and
MICHAEL B. SIMMONDS
________________

Appeal 2010-003088
Application 11/326,903
Technology Center 2800
________________

Before DENISE M. POTHIER, ERIC B. CHEN, and
STANLEY M. WEINBERG, Administrative Patent Judges.

WEINBERG, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003088
Application 11/326,903

2
SUMMARY
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-40. We have jurisdiction under 35 U.S.C. § 6(b).
Claims 1, 18, 33, 34, and 38 stand rejected under 35 U.S.C. § 112,
second paragraph, as indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellants regard as the invention.1
Claims 1-7, 10, 18-24, 27, and 34-37 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Roy (US 4,906,861; Mar. 6, 1990).
Claims 8 and 25 stand rejected under 35 U.S.C. § 103(a) as obvious
over Roy in view of McMillin (US 2005/0145617 A1; July 7, 2005).
Claims 9 and 26 stand rejected under 35 U.S.C. § 103(a) as obvious
over Roy in view of Aihara (US 5,680,085; Oct. 21, 1997).
Claims 11-13, 28, and 29 stand rejected under 35 U.S.C. § 103(a) as
obvious over Roy in view of Zeigler (US 6,317,303 B1; Nov. 13, 2001).
Claim 14 stands rejected under 35 U.S.C. § 103(a) as obvious over
Roy in view of Schlenga (US 6,777,938 B2; Aug. 17, 2004).
Claims 15-17 and 30-32 stand rejected under 35 U.S.C. § 103(a) as
obvious over Roy in view of Hollis (US 6,977,571 B1; Dec. 20, 2005).
Claims 33 and 38-40 stand rejected under 35 U.S.C. § 103(a) as
obvious over Roy in view of Biltcliffe (US 2003/0057942 A1; Mar. 27,
2003).
We affirm-in-part.

1 Throughout this opinion, we refer to (1) the Appeal Brief filed April 27,
2009 as corrected on June 16, 2009; and (2) the Examiner’s Answer mailed
September 11, 2009.
Appeal 2010-003088
Application 11/326,903

3
STATEMENT OF CASE
Appellants’ invention relates to a non-persistent switch for use with a
superconducting magnet. The switch is connected in parallel to the magnet
and carries a level of current that is less than 100 percent of the current
required by the magnet to obtain a full field. The switch can be heated or
cooled depending upon the desired magnetic field. The current supplied to
the magnet is not removed from the magnet after the switch transitions from
a non-superconductive state to a superconducting state. See generally
Spec. 1, 5-7; Fig. 1.
Independent claim 1 is illustrative, with key disputed limitations
emphasized:
1. A magnet system for generating a magnetic field, said system
comprising:
a superconducting magnet structured to generate magnetic fields;
a switch comprising a non-inductive superconducting current
carrying path connected in parallel to said superconducting magnet, said
switch structured to only carry a level of current that is a portion of current
required to obtain a full field by said superconducting magnet; and
a heater element thermally coupled to said switch.

THE SECTION 112, SECOND PARAGRAPH, REJECTION
The Examiner concludes that the phrase “only carry a level . . . that is
a portion” includes relative terms which render the claim indefinite (Ans.
10:4-5) because any level of current would meet this limitation. Ans. 10:16-
17.2

2 Initially, the Examiner contended that the phrase is not defined in the
Specification and does not provide a standard for ascertaining the requisite
degree, and one of ordinary skill would not be reasonably apprised of the
scope of the invention. Ans. 3. In his Response, however, the Examiner
Appeal 2010-003088
Application 11/326,903

4
Appellants argue that the phrase is not indefinite because page 5, lines
14-19 (corresponding to ¶ 0019 of Appellants’ printed publication US
2007/0159280 A1, which Appellants cite at page 14 of the Brief), of the
Specification explains that the switch is structured to only carry a level of
current that is less than 100 percent (more specifically, a portion in a range
from a low of 1 percent to a high of 20 percent) of the current required by
magnet 20 to obtain a full field. Therefore, Appellants contend, because a
person of ordinary skill in the art would know the level of current required
by a specific magnet to obtain a full field, such a person would also know
how to determine a level of current that is less than 100 percent of the full
field current. Br. 14.

ISSUE
Under § 112, second paragraph, has the Examiner erred by concluding
that the limitation “only carry a level . . . that is a portion” is indefinite?

PRINCIPLES OF LAW
1. “[I]f a claim is amenable to two or more plausible claim
constructions, the USPTO is justified in requiring the applicant to more
precisely define the metes and bounds of the claimed invention by holding
the claim unpatentable under 35 U.S.C. § 112, second paragraph, as
indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
(precedential).

“agrees that the specification discloses adequate teachings for these relative
terms.” Ans. 10:5-6.
Appeal 2010-003088
Application 11/326,903

5
2. A claim is indefinite if it is “not sufficiently precise to permit a
potential competitor to determine whether or not he is infringing.” Morton
Int’l, Inc. v. Cardinal Chem. Co., 5 F.3d 1464, 1470 (Fed. Cir. 1993).

ANALYSIS
As the Examiner found, the Specification explains that switch 25 is
structured to carry a level of current that is a portion (that is, less than 100%)
of the current required by magnet 20 to obtain a full field. See supra note 2.
Because the current is either 100 percent of the current required for a full
field, or it is less than 100 percent and therefore a portion of the 100 percent
full field current, the claim’s recitation of a “portion” is not subject to two or
more plausible constructions and a potential competitor would be able to
determine whether or not it is infringing.
We are therefore, persuaded that the Examiner erred in rejecting claim
1 under 35 U.S.C. § 112, second paragraph, as well as claims 18, 33, 34, and
38, which have either identical or substantially similar limitations.

THE ANTICIPATION REJECTION
The Examiner finds that Roy discloses every recited feature of
illustrative claim 1, including a switch comprising a non-inductive
superconducting current carrying path connected in parallel to the
superconducting magnet. Ans. 4, 11-13. The Examiner relies on both
Figure 1 of Roy, showing a persistent switch 20 in parallel with a magnet 14
and Figure 2 of Roy, showing switches 30 and 32 which the Examiner found
were also in parallel with magnet 14. Ans. 4, 12:1-2.
Appeal 2010-003088
Application 11/326,903

6
Although Appellants do not address Figure 1 of Roy, they do argue
that Roy’s switches 30 and 32 in Figure 2 are connected in series with Roy’s
magnet 14, not in parallel as found by the Examiner. Br. 15-16.

ISSUE
Under 35 U.S.C. § 102(b), has the Examiner erred by finding that the
switches’ current carrying path in Roy’s Figure 2 embodiment is connected
in parallel to Roy’s magnet?

FINDINGS OF FACT
1. Appellants’ invention uses a switch 25 including a current carrying
path in parallel to the magnet. Spec. 5:14-15; Fig. 1.
2. A heater element 30 in Appellants’ device can either cause the switch
25 to open when the switch 25 is heated above its superconducting critical
temperature or to close when heat is turned off, and the switch 25 transitions
below the critical temperature. Spec. 6:10-21; Fig. 1.
3. Figure 1 of Roy illustrates a prior art switching system showing a
persistent switch 20 in parallel to the magnet 14. The magnet and the
persistent switch are operated at cryotemperatures sufficient to achieve
superconductivity of the appropriate wires. Col. 3, ll. 9-13.
4. The prior art device shown in Figure 1 of Roy does not disclose a
heater thermally coupled to the switch. See Figure 1.
5. In Roy’s Figure 2, switch units 30, 32 are positioned within
cryofluid 28. Switch unit 30 contains wires 34, 36 fabricated from
superconducting material and contains a heater 38 that is thermally
Appeal 2010-003088
Application 11/326,903

7
connected to wires 34, 36. Similarly, switch unit 32 has a pair of
superconductor wires 40, 42 and a heater 44. Col. 3, ll. 35-44; Fig. 2.
6. No persistent switch is shown in Roy’s Figure 2. Col. 3, ll. 49-50.
7. Instead of using a persistent switch, Roy’s Figure 2 uses switch units
30, 32 to function as a persistent switch. Col. 3, ll. 50-52.
8. In Roy’s Figure 2, heater 38 is not energized and heater 44 is
energized. Thus, resistance of elements 34, 36 is substantially zero and the
current flow in magnet 14 is in a direction indicated by arrow 68 with
currents in superconductors 34, 36 indicated by arrows 70, 72. There is no
current flow in switch unit 32 because heater 44 maintains a temperature at
which elements 40, 42 have a relatively high resistance. Col. 4, ll. 21-30.
9. Roy’s Figure 2 shows that switch 30 is connected in series with
magnet 14. The series connection in Figure 2 of Roy is shown in the
reproduced Figure 2 (below) by the current flow arrows 22, 22A, 71, 70, 68,
67, 69, 72, 23, and 24, modified with additional reference numbers.3

3 Although the Examiner asserts that he has reproduced Figure 2 in the
Response (Ans. 11-12), we find that the diagram on page 11 of the Answer
is not an accurate reproduction of Figure 2.
App
App

Roy
and

1
the
art r
631
eal 2010-0
lication 11
’s reprodu
annotated
. A claim
claim is fo
eference.
(Fed. Cir.
03088
/326,903
ced Figur
with refe
is anticipa
und, eithe
Verdegaa
1987).
e 2 showi
rence num
PRINCIP
ted only if
r expressly
l Bros., In
8
ng switch
erals sho
LES OF L
each and
or inhere
c. v. Union
30 in seri
wing cur
AW
every elem
ntly descri
Oil Co. of
es with m
rent flow.
ent as set
bed, in a s
Cal., 814

agnet 14

forth in
ingle prior
F.2d 628

,
Appeal 2010-003088
Application 11/326,903

9
2. In order to anticipate, the prior art reference must not only disclose all
elements of the claim within the four corners of the document, but must
also disclose those elements arranged as in the claim. Net MoneyIN, Inc. v.
VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).
3. “[A]rranged as in the claim” refers to the need for an anticipatory
reference to show all of the limitations of the claims arranged or combined
in the same way as recited in the claims. The test is more accurately
understood to mean “arranged or combined in the same way” as in the
claim. Id. at 1370.
4. Claims cannot be treated as mere catalogs of separate parts, in
disregard of the part-to-part relationships set forth in the claims and that
give the claims their meaning. Id.
5. Although a prior art reference can be said to contain all of the
elements of the claimed invention, it does not anticipate under § 102 where
it discloses an entirely different device, composed of parts distinct from
those of the claimed invention, and operating in a different way to process
different material differently. Id.

ANALYSIS
Claims 1-17 and 39
We begin by analyzing the conflicting contentions regarding Roy.
The Examiner relies upon different figures of Roy to assert that Roy
has a switch connected in parallel to a magnet. Compare Ans. 4:11-13
(referring to Fig. 1 to support the assertion that Roy’s Fig. 2 wires 34, 36 are
connected in parallel) with Ans. 12:1-2 (asserting that Fig. 2 itself shows
switches in parallel with magnet 14). The Examiner also asserts that Roy’s
Appeal 2010-003088
Application 11/326,903

10
switch units 30, 32 can function as a persistent switch, such functionality
“requir[ing] the switch to be in parallel with the magnet windings as shown
in fig. 1 . . . .” Ans. 12:19-21.
Pointing only to Roy’s Figure 2, Appellants counter that Roy shows
switches 30, 32 are in series with magnet 14. Br. 15:16, 24-27.
Roy’s Figure 1 illustrates a persistent switch without a heater
thermally coupled to the switch. FF 3, 4. Appellants’ device uses a heater
thermally coupled to their switch to turn the switch on and off. FF 2.
Appellants’ claim 1 recites “a heater element thermally coupled to said
switch.” Roy’s Figure 2 shows switches 30, 32 each contain a heater. FF 5.
Instead of using a persistent switch in Figure 2, Roy uses switches 30, 32 to
function as a persistent switch. FF 6, 7. To accomplish that function, Roy’s
switches 30, 32 are connected in series with magnet 14. FF 8, 9. For this
last reason alone, we are constrained to conclude that the Examiner erred in
finding Roy teaches a parallel connection.
The Examiner presents two alternative interpretations of Roy.
On the one hand, the Examiner combines the embodiments illustrated
in Figures 1 and 2 and finds that in order to function as a persistent switch,
Roy’s switches 30, 32 are “require[d] . . . to be in parallel with the magnet
windings as shown in fig. 1.” Ans. 12:19-21. This finding impliedly
assumes that Figure 2 does not show a parallel arrangement and, to
compensate for the unshown teaching in Figure 2, requires the embodiments
in Figures 1 and 2 to be combined.
But a conclusion of anticipation requires that each and every claimed
element is found in a single prior art reference that discloses the elements
arranged as in the claim. Verdegaal, 814 F.2d at 631; Net MoneyIN, 545
Appeal 2010-003088
Application 11/326,903

11
F.3d at 1369. That is, the reference must show all of the claim limitations
arranged or combined in the same way as recited in the claims. Net
MoneyIN, 545 F.3d at 1370. Claims cannot be treated as catalogs of
separate parts in disregard of the part-to-part relationships recited in the
claims. Id. A prior art reference does not anticipate under § 102 where it
discloses an entirely different device composed of parts distinct from those
of the claimed invention. Id.
These principles of law preclude an anticipation rejection that relies
upon a combination of Figures 1 and 2. Figure 1 has a switch in parallel
with a magnet. Figure 2 has switches that are in series with a magnet. FF 9.
Also, Roy fails to state that the parallel-switch arrangement in Figure 1 can
be incorporated into Figure 2’s embodiment. The figures therefore, illustrate
two different devices, precluding an anticipation rejection because neither of
them separately disclose all of the claimed elements arranged as in the claim.
We will not speculate at this point whether such an arrangement is obvious
based on these figures.
On the other hand, the Examiner finds that Roy’s Figure 2, standing
alone, shows switches 30, 32 wired in parallel with magnet 14. Ans. 12:1-2.
As indicated above, we find that the Examiner is in error because the
switches are wired in series with the magnet and do not have a “current
carrying path connected in parallel to the said superconducting magnet”
recited in claim 1. See FF 9.
For the above reasons, we conclude that the Examiner erred in
rejecting claim 1 as anticipated by Roy. Because claims 2-17 and 39 depend
from claim 1, and because the secondary references cited to reject dependent
Appeal 2010-003088
Application 11/326,903

12
claims 8, 9, 11-17, and 39 do not cure the deficiencies in the rejection of
claim 1, the rejections of those claims are also in error.

Claims 18-24 and 27
Claim 18 is much broader than claim 1. It recites, with disputed
limitations emphasized:
18. A switch for use with a superconducting magnet, said switch
comprising:
a non-inductive superconductive current carrying path for connecting
in parallel to said superconducting magnet, said switch structured to only
carry a level of current that is a portion of current required to obtain a full
field by said superconducting magnet; and
a heater element thermally coupled to said switch.

a . . . current carrying path for connecting in parallel
The Examiner does not distinguish between claim 18 and claim 1.
See Ans. 4, ¶ 4; Ans. 11-13. Appellants do, however, present a separate
argument for claim 18. Br. 16.
Instead of reciting claim 1’s “switch . . . connected in parallel,”
claim 18 more broadly recites a switch having a “current carrying path for
connecting in parallel” (emphasis added). Claim 18 does not recite an actual
parallel connection to anything specific and does not recite to what the
current carrying path is directly connected. Therefore, any current carrying
path that can be used for connecting something in parallel to the magnet
meets this limitation.
Even though Appellants at one point in their Brief recite claim 18’s
limitation correctly (Br. 16:16-17), they argue for reversal based upon an
assumption that the claim recites “[t]he current carrying path is ‘in parallel’
Appeal 2010-003088
Application 11/326,903

13
with the magnet” as is recited in claim 1. Br. 16:17-18. As we conclude
above, claim 18 recites no such actual parallel connection.
In the course of explaining his combined rejection of claims 1 and 18,
the Examiner finds that Figure 5 illustrates switching the direction of current
flow in the magnet. Ans. 4, ¶ 4; Ans. 11-13. Appellants have not filed a
Reply Brief refuting the Examiner’s finding. Accordingly, we find the
Examiner’s interpretation of Figure 5 is reasonable and that the top of Figure
5 shows parallel currents, thereby meeting the claim limitation “for
connecting in parallel to said superconducting magnet” as broadly as recited.

said switch structured to only carry a level of current that is a
portion of current required to obtain a full field by said
superconducting magnet4
Giving the claim its broadest reasonable interpretation, we conclude
that “said switch structured to only carry a level of current” can be read as a
switch capable of carrying only a level of current.
Citing column 1, lines 16-19, the Examiner contends that Roy teaches
this limitation. The cited lines read, in part: “current is initially supplied . . .
until the desired level of operation is achieved.”
Without responding specifically to the Examiner’s cited lines in Roy,
Appellants contend that it is not possible for Roy’s switches to only carry a
portion of the required current because Roy’s switches 30, 32 are in series
with the magnet “and, by definition, must carry every bit of the current
flowing in magnet 14.” Br. 15-16.

4 Although claim 1 also recites this limitation, we did not discuss it in the
course of our discussion of the anticipation rejection of claim 1 above
because our interpretation of the limitation has no bearing on our decision to
reverse the rejection of claim 1.
Appeal 2010-003088
Application 11/326,903

14
We agree with the Examiner. Because Roy supplies current “until the
desired level of operation is achieved,” there must be a time, however short,
when the switch will carry less current than is required to obtain a full field
by the magnet. Col. 1, ll. 16-19. Accordingly, Roy’s switch is “structured”
to carry only a level of current that is a portion of current required to obtain
a full field by the superconducting magnet.
We therefore, do not find error in the Examiner’s rejection of claim
18. We also do not find error in the Examiner’s rejection of claims 19-24
and 27 because those claims have not been argued separately, with
particularity. Br. 16:24-25.

Claims 34-37
Claim 34 recites, in part: “(a) heating a non-persistent switch . . . .”
In the first part of the Answer, the Examiner provides no analysis of
Roy’s purported applicability to claim 34, stating only that the “method
steps are inherent in the system structure.” Ans. 5:21.
Appellants contend, in part, that Roy does not disclose a
non-persistent switch. Br. 17:9-10. The Examiner’s response does not
identify where Roy purportedly discloses a non-persistent switch.
Ans. 13-14. In fact, the Examiner’s rejection of claim 33 expressly states
that Roy does not disclose a non-persistent switch and cites Biltcliffe for
claim 33’s rejection because the Examiner contends that Biltcliffe teaches
the non-persistent switch that is missing in Roy. Ans. 8-9.
Because the Examiner at pages 8-9 of the Answer admits that Roy
does not disclose a non-persistent switch and because the rejection of
Appeal 2010-003088
Application 11/326,903

15
claim 34 is based upon § 102, we cannot say on this record that Roy
anticipates claim 34.
We therefore, conclude that the Examiner erred in rejecting claim 34
and dependent claims 35-37.

THE OBVIOUSNESS REJECTIONS
Claim 25
Although Appellants do not specifically argue the patentability of
dependent claim 25, they incorporate by reference their argument regarding
the patentability of claim 8, because, they contend, claim 25 is patterned
after claim 8. Br. 18:6-10.
We assume, without deciding, that claim 25 is patterned after claim 8
and apply Appellants’ arguments regarding claim 8 to the rejection of claim
25.
Referring to paragraph 41 of McMillin, the Examiner finds that it
would have been obvious to modify Roy’s teachings to include a frequency
shield as taught by McMillin in order to shield certain frequencies to and/or
from the layered heater. Ans. 6, 14-15. Appellants first agree that “[t]he
concept of RF shielding per se is not new.” Br. 18:2. They then attack
McMillin individually, stating it has no relation to a switch. Br. 17-18.
Appellants have not specifically argued that the references cannot be
combined. See Br. 17-18. However, one cannot show nonobviousness by
attacking references individually where the rejection is based on a
combination of references. See In re Keller, 642 F.2d 413, 426 (CCPA
1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appeal 2010-003088
Application 11/326,903

16
Additionally, because we find that the Examiner’s reliance on the
combination of Roy and McMillin has presented a reason with some rational
underpinning to combine McMillin’s teachings with Roy (Ans. 6, 14-15), we
find no error in the Examiner’s rejection of claim 25.

Claim 26
Although Appellants do not specifically argue the patentability of
dependent claim 26, they incorporate by reference their argument regarding
the patentability of claim 9 because, they contend, claim 26 is patterned after
claim 9. Br. 18.
We assume, without deciding, that claim 26 is patterned after claim 9
and apply Appellants’ arguments regarding claim 9 to the rejection of claim
26.
Again, however, Appellants’ attack on Aihara individually is not
persuasive because the rejection is based upon a combination of references.
See Keller, 642 F.2d at 426; Merck, 800 F.2d at 1097.
In addition, instead of arguing that Aihara does not teach the
limitations actually recited in claims 9 and 26, Appellants argue that “[t]here
is no hint in Aihara that his switch is ‘structured to only carry a level of
current that is a portion of current required to obtain full field by said
superconducting magnet’” (Br. 18:20-22), a limitation found in claims 1 and
18 and incorporated into claims 9 and 26. Because the Examiner does not
rely upon Aihara – rather Roy -- to teach the quoted limitation, Appellants’
arguments regarding the application of Aihara are not persuasive.
Because we additionally find the Examiner’s reliance on the
combination of Roy and Aihara has presented a reason with some rational
Appeal 2010-003088
Application 11/326,903

17
underpinning to combine Aihara’s teachings with Roy (Ans. 6-7, 15. ), we
find no error in the Examiner’s rejection of claim 26.

Claims 28 and 29
Although Appellants do not specifically argue the patentability of
dependent claims 28 and 29, they incorporate by reference their arguments
regarding the patentability of claims 12 and 13 because, they contend, claims
28 and 29 are patterned after claims 12 and 13. Br. 18:6-10.
We assume, without deciding, that claims 28 and 29 are patterned
after claims 12 and 13 and apply Appellants’ arguments regarding claims 12
and 13 (which, in turn, incorporate the arguments regarding claim 11) to the
rejection of claims 28 and 29.
As we stated with respect to the rejection of claim 18, because Roy
supplies current “until the desired level of operation is achieved,” there must
be a time, however short, when the switch will carry less current than is
required to obtain a full field by the magnet. Col. 1, ll. 16-19. Accordingly,
Roy’s switch is “structured” to carry or capable of carrying only the levels of
current recited in claims 28 and 29. In addition, Appellants’ attack on
Zeigler individually is not persuasive because the rejection is based upon a
combination of references. See Keller, 642 F.2d at 426; Merck, 800 F.2d at
1097.
Furthermore, we find that the Examiner’s combination of Roy and
Zeigler has presented a reason with some rational underpinning to combine
Zeigler’s teachings with Roy (Ans. 7, 16-17 ) and that, by attacking the
references individually rather than as a combination of how Zeigler would
Appeal 2010-003088
Application 11/326,903

18
have taught one of ordinary skill in the art, Appellants fail to persuade us of
error in the Examiner’s rejection of these claims.
We therefore do not find error in the Examiner’s rejection of claims
28 and 29.

Claims 30-32
Although Appellants do not specifically argue the patentability of
dependent claims 31 and 32, they incorporate by reference their arguments
regarding the patentability of claims 16 and 17 because, they contend, claims
31 and 32 are patterned after claims 16 and 17. Br. 21:15-22. Although
Appellants do not expressly state so, we also assume that claim 30 is
intended to be patterned after claim 15.
We assume, without deciding, that claims 30-32 are patterned after
claims 15-17 and apply Appellants’ arguments regarding claims 15-17 to the
rejection of claims 30-32.
Again, however, Appellants’ attack on Hollis individually is not
persuasive because the rejection is based upon a combination of references.
See Keller, 642 F.2d at 426; Merck, 800 F.2d at 1097. We find the
Examiner’s reason for combining the references has some rational
underpinning. See Ans. 8, 17-18 .
We therefore do not find error in the Examiner’s rejection of claims
30-32.

Claims 33, 38, and 40
Claim 33 is illustrative with key disputed limitations emphasized:
Appeal 2010-003088
Application 11/326,903

19
33. A magnet system for generating a magnetic field, said system
comprising:
a superconducting magnet structured to generate magnetic fields;
means for maintaining electrical current supplied to said
superconducting magnet during generation of said magnetic fields;
a non-persistent switch connected in parallel to said superconducting
magnet, said switch structured to only carry a level of current that is a
portion of current required to obtain a full magnetic field by said
superconducting magnet;
means for selectively causing said non-persistent switch to transition
between a superconducting mode and a non-superconducting mode; and
means for changing said electrical current to generate a desired
magnetic field.

ISSUE
Under § 103(a), has the Examiner erred by finding that the prior art
reference Biltcliffe teaches a non-persistent switch?

ANALYSIS
At first, recognizing that there is a difference between a persistent
switch and a non-persistent switch, the Examiner acknowledges that Roy
fails to teach a non-persistent switch, but finds that Biltcliffe teaches a
non-persistent switch 3 in Figure 1 as purportedly explained in Biltcliffe
paragraph 0026. Ans. 8-9.
Appellants agree with the Examiner that there is a difference between
a persistent switch and a non-persistent switch. Br. 22:1-6. Appellants
contend, however, that paragraph 0026 in Biltcliffe describes the switch 3 as
a persistent switch. We agree with Appellants because paragraph 0026
states, in part (emphasis added):
The superconducting switch 3 is then closed although no
current begins to flow through this switch 3 until the power
Appeal 2010-003088
Application 11/326,903

20
supply 4 is gradually deactivated. This deactivation causes
current to flow in “persistent mode” through the series circuit
formed by the magnet 1 (including the resistance R1) and the
switch 3.
In his response to Appellants’ Brief, the Examiner changes his
interpretation of the references. The Examiner impliedly agrees that the
prior art references do not contain a non-persistent switch by contending that
the only way for Appellants to distinguish a non-persistent switch from a
persistent switch is to recite a structural difference between the two
switches. Ans. 18:13-17; see also Ans. 20:13-16.
In this particular instance and the particular facts presented, the
Examiner’s two interpretations of the prior art are so inconsistent, on this
record, that we conclude the Examiner has not demonstrated by substantial
evidence that Roy in combination with Biltcliffe teaches a “non-persistent”
switch as recited.
We are therefore, constrained by the record as presented to us to find
that the Examiner erred in rejecting claim 33 and claims 38 and 40, which
recite similar limitations.

CONCLUSIONS
Considering the 35 U.S.C. § 112, second paragraph rejections and the
various prior art rejections as a group, the Examiner erred in rejecting claims
1-17 and 33-40; but did not err in rejecting claims 18-32.

DECISION
The Examiner’s decision rejecting claims 18-32 is affirmed.
The Examiner’s decision rejecting claims 1-17 and 33-40 is reversed.
Appeal 2010-003088
Application 11/326,903

21
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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED-IN-PART

babc