Ex Parte Duerbaum et al

Board of Patent Appeals and Interferences

Sep 29, 2010

10797791 (B.P.A.I. Sep. 29, 2010)

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.
10/797,791 03/10/2004 Thomas Duerbaum DE010138USA 4510
24737 7590 09/29/2010
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
P.O. BOX 3001
BRIARCLIFF MANOR, NY 10510
EXAMINER
PATEL, RAJNIKANT B
ART UNIT PAPER NUMBER
2838
MAIL DATE DELIVERY MODE
09/29/2010 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 THOMAS DUERBAUM
and REINHOLD ELFERICH
________________

Appeal 2009-008211
Application 10/797,791
Technology Center 2800
________________

Before ROBERT E. NAPPI, KENNETH W. HAIRSTON,
and ELENI MANTIS MERCADER, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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2
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 5, 9, 11 to 13, 16 to 18, and 23 to 34.
Claims 1 to 4, 6 to 8, 10, 14, 15, and 19 to 22 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appellants’ invention relates to a resonant converter (Figs. 1, 8, and
10) for use in power supplies of consumer electronics appliances such as set
top boxes, TVs, computer monitors, compact audio systems, etc. (Spec. 1:3-
11). Appellants’ resonant converter can control overall output power
generated by the converter by presetting the ratio of the magnitude of the
output voltage to the number of turns on secondary windings which have
different winding directions (Fig. 1; Abstract; Spec. 2:22-25). Appellants
disclose and claim a resonant converter including a transformer with a
primary winding and at least two secondary windings having different
winding directions, and multiple outputs coupled to the secondary windings
(claim 9). The resonant converter may also include capacitive and inductive
elements, as well as an inverter (Figure 2), in series with the primary
winding (Figs. 8 and 10; claim 5). The secondary windings may also be
connected to the converter outputs via a diode and an output filter (Figs. 1, 8,
and 10; claim 31). The resonant converter may also include a regulating
circuit that receives the multiple outputs and outputs a measuring signal that
regulates an output voltage (Figs. 1, 8, and 10; claim 31).
Claim 9 is representative of the claimed invention, and reads as
follows:

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9. A resonant converter comprising:
multiple outputs; and
a transformer with a primary winding and at least two secondary
windings of different winding directions,
wherein different ratios of a magnitude of output voltage to number of
turns are provided in respect of associated secondary windings having
different winding directions.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Steigerwald US 4,695,934 Sep. 22, 1987
Marson US 5,077,486 Dec. 31,1991
Liu US 5,363,287 Nov. 8, 1994
Raets US 5,777,859 Jul. 7, 1998
Duerbaum US 6,721,191 B2 Apr. 13, 2004
(filed May 8, 2002)

(i) The Examiner rejected claims 9 and 16 under 35 U.S.C. § 102(b)
based upon the teachings of Liu.
(ii) The Examiner rejected claims 5 and 31 under 35 U.S.C. § 103(a)
based upon the teachings of Liu and Raets.
(iii) The Examiner rejected claims 11 to 13, 17, 18, 25 to 27, and 32 to
34 under 35 U.S.C. § 103(a) based upon the teachings of Liu and Raets,
further in view of Steigerwald and Marson.
(iv) The Examiner rejected claims 23, 24, and 28 to 30 under 35
U.S.C. § 103(a) based upon the teachings of Liu, Steigerwald, and Marson.
(v) The Examiner rejected claims 5, 9, 11 to 13, 16 to 18, 23, and 24,
based on the judicially created doctrine of non-statutory obviousness-type
double patenting, over claims 1 to 19 of Duerbaum (USPN 6,721,191).

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Anticipation
With regard to the anticipation rejection of claims 9 and 16, the
Examiner relies upon Liu (Fig. 1; col. 6, ll. 10-30) as teaching the recited
limitation of different ratios of “a magnitude of output voltage to number of
turns” being provided with respect to the secondary windings having
different winding directions (claim 9). The Examiner finds that Liu teaches
different ratios for the top and middle transformer (Ans. 3). The Examiner
states that “[t]he different ratio of output voltage (12, -12), to number of
turns (turn are same for both (n), since voltage magnitude is the same (12))
is different since one ratio [is][sic] positive (12/n), [and][sic] the other is
negative (-12/n)” (Ans. 3).
Appellants argue (App. Br. 4 and 6; Reply Br. 2 and 4-5) that the
magnitude of -12 volts is the same as the magnitude of +12 volts, and Liu
does not disclose a resonant converter having different ratios of a magnitude
of output voltage to number of turns provided in respect of associated
secondary windings having different winding directions. Appellants point
out that “claim 9 does not recite ‘different ratio of output voltage to number
of turns’” as asserted by the Examiner (Reply Br. 2 (emphasis in original)).
Based on Appellants’ arguments, the following anticipation issue is
presented: Does Liu disclose a resonant converter “wherein different ratios
of a magnitude of output voltage to number of turns are provided in respect
of associated secondary windings having different winding directions,” as
set forth in claims 9 and 16?
Obviousness
With regard to the obviousness rejections of (i) independent claims 5
and 31 over the combination of Liu of Raets, and (ii) dependent claims 11 to
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13, 17, 18, 25 to 27 (which depend from claim 5) as well as dependent
claims 32 to 34 (which depend from claim 31) over Liu, Raets, Steigerwald,
and Marson, the Examiner relies on Liu (Fig. 1) as disclosing the recited
features of a resonant converter and Raets (Fig. 1) as disclosing a capacitive
element 8, inductive element 9, and electronic switches 6 and 7 (acting as an
inverter) in series with a primary winding 10 of a converter (Ans. 4). The
Examiner determines (Ans. 4) that since Liu’s DC-AC-DC converter is
equivalent to Raets’ inverter, and these two topologies were recognized in
the art at the time the invention was made, the ordinarily skilled artisan
would have (i) found the substitution of an inverter for a converter obvious,
and (ii) modified Liu’s converter by utilizing Raets’ technique.
As to claims 11 to 13, 17, 18, 25 to 27, and 32 to 34, the Examiner
determines that it would have been obvious to modify the combination of
Liu’s resonant converter and Raets’ inverter circuit with the techniques
taught by Steigerwald and Marson “for the purpose of increasing the
efficiency of the power supply, reducing cost and increasing reliability”
(Ans. 6).
As to claims 23, 24, and 28 to 30, the Examiner also determines that it
would have been obvious to modify Liu’s power supply with the techniques
taught by Steigerwald and Marson “for the purpose of increasing the
efficiency of the power supply and to meet cost effectiveness and reliability”
(Ans. 7).
With regard to claims 5, 11 to 13, 17, 18, and 25 to 27, Appellants
contend (App. Br. 6-7; Reply Br. 5-6) that Raets’ inverter circuitry and
electronic switches would destroy Liu’s resonant converter by increasing the
EMI as described by Liu (see Liu at column 1, lines 8 to 67; Abstract), and
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that the Examiner’s determination that the topologies of Liu and Raets are
equivalents is an unsupported conclusion. Appellants also contend (App. Br.
7-9; Reply Br. 7-9) that the Examiner fails to provide an adequate reason for
combining Liu and Raets, and no articulated reasoning or rational
underpinning exists for combining Steigerwald and Marson with Liu and
Raets.
With regard to claims 31 to 33, Appellants contend (App. Br. 7-9;
Reply Br. 7-9) that Liu and Raets do not disclose a regulating circuit for
deriving from each of the multiple outputs of a resonant converter a
measuring signal for regulating an output voltage. Appellants point out that
the Examiner fails to even allege that Liu or Raets, or their combination,
fails to disclose such a regulating circuit (App. Br. 7). Appellants also
content (App. Br. 7) that Raets’ control circuit 20 does not have multiple
outputs and thus cannot teach a similar technique to that recited in claim 31.
With regard to claim 34, Appellants argue (App. Br. 8-9; Reply Br. 9)
that the Examiner fails to make a prima facie case of obviousness as to this
claim because the Examiner has not addressed the half-bridge drive circuit
which receives a signal from a regulating circuit to provide first and second
control signals for switching first and second switching elements.
Based on Appellants’ arguments, the following obviousness issues are
presented:
(i) Are Liu and Raets properly combinable such that together
they disclose or suggest the resonant converter having
capacitive and inductive elements and an inverter in series
with the primary winding of the transformer, as set forth in
claim 5?
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(ii) Do Liu and Raets, taken alone or in combination, disclose or
suggest the regulating circuit for deriving a measuring signal
for regulating an output voltage from multiple outputs, as set
forth in claim 31?
(iii) Do Liu and Raets, taken alone or in combination, disclose or
suggest the half-bridge drive circuit, as set forth in claim 34?

FINDINGS OF FACT (FF)
1. Liu describes a resonant converter (Figs. 1 and 2) including a primary
winding (shown on the left side of transformer T1) and at least two
secondary windings having different winding direction (top two
windings on the right side of transformer T1) and being electrically
separated from each other. Liu’s resonant converter includes multiple
outputs coupled to the secondary windings (outputs to right of Fig. 1
having voltages of -12V and +12V). The outputs have the same
output voltage magnitude, 12 volts (see Fig. 1).
2. Raets describes a voltage converter (Fig. 1) with two electronic
switches 6 and 7 in series with a capacitance 8, an inductance 9, and a
primary winding 10 of a transformer 11. The transformer 11 also has
a secondary winding 12 with multiple output taps 16 and 17 providing
output voltages V1 and V2. A control circuit 20 “scans the voltage
value decreasing across the capacitance 15 [VEHT ] and controls the
switching frequency of the electronic switches 6 and 7 in such a way
that the desired voltage value is maintained at all times” (col. 4, ll. 48-
52). No connection is shown in Figure 1 between the output voltages
V1 and V2 and control circuit 20.
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PRINCIPLES OF LAW
Anticipation
Anticipation is established when a single prior art reference discloses,
expressly or under the principles of inherency, each and every limitation of
the claimed invention. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342,
1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir.
1994).
Obviousness
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). The
Examiner’s articulated reasoning in the rejection must possess a rational
underpinning to support the legal conclusion of obviousness. In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006).

ANALYSIS
Anticipation of Claims 9 and 16
Claim 9, and 16 by way of dependency on claim 9, recites a resonant
converter “wherein different ratios of a magnitude of output voltage to
number of turns are provided in respect of associated secondary windings
having different winding directions.”
Liu discloses a resonant converter including multiple outputs (-12V
and + 12V) coupled to the secondary windings where the outputs have the
same output voltage magnitude of 12 volts (see Fig. 1; FF 1). Liu, however,
is silent as to the number of turns provided with respect to each of the
secondary windings having the different directions.
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Appellants are correct that (i) the magnitude of -12 volts is the same
as the magnitude of +12 volts (i.e., 12) (App. Br. 2), and (ii) “claim 9 does
not recite ‘different ratio of output voltage to number of turns’” (Reply Br. 2
(emphasis in original)), thus the Examiner’s factual findings with regard to
Liu’s ratio are flawed.
Appellants’ arguments (App. Br. 4 and 6; Reply Br. 2 and 4-5) that
Liu does not disclose a resonant converter having different ratios of a
magnitude of output voltage to number of turns provided in respect of
associated secondary windings having different winding directions are
convincing. Thus, with respect to the resonant converter recited in claims 9
and 16, Liu fails to disclose at least two secondary windings of different
winding directions that also have “different ratios of a magnitude of output
voltage to number of turns” as recited in claim 9. It follows that the
Examiner has not established anticipation because Liu does not disclose
each and every limitation of the claimed invention set forth in claims 9 and
16. Atlas Powder Co., 190 F.3d at 1347; Paulsen, 30 F.3d at 1478-79.
Accordingly, we will not sustain the anticipation rejection of claims 9
and 16.
Obviousness of Claims 23, 24, and 28 to 30
Turning next to the obviousness rejection of claims 23, 24, and 28 to
30, the Examiner’s determination that it would have been obvious to modify
Liu’s power supply with the techniques taught by Steigerwald and Marson
“for the purpose of increasing the efficiency of the power supply and to meet
cost effectiveness and reliability” is reasonable (see Ans. 7). Nonetheless,
claims 23, 24, and 28 to 30 depend from claim 9 discussed supra with
respect to the anticipation rejection.
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In light of our findings with respect to Liu (FF 1), and for similar
reasons discussed above with respect to the anticipation rejection of claim 9,
we find that the Examiner has not established a sufficient factual basis to
support the legal conclusion of obviousness as to claims 23, 24, and 28 to 30
which depend from claim 9 (see Fine, 837 F.2d at 1073). In view of the
foregoing, we will not sustain the obviousness rejection of claims 23, 24,
and 28 to 30.
Obviousness of Claims 5, 11 to 13, 17, 18, and 25 to 27
Turning next to the obviousness rejections of claims 5, 11 to 13, 17,
18, and 25 to 27, we are not persuaded by Appellants’ contention (App. Br.
6-7; Reply Br. 5-6) that Raets’ inverter circuitry and electronic switches
would destroy Liu’s resonant converter by increasing EMI as described by
Liu (see Liu at column 1, lines 8 to 67; Abstract), and that the Examiner’s
determination that the topologies of Liu and Raets are equivalents is an
unsupported conclusion.
Appellants present no evidence that the topologies of Liu and Raets
are not equivalent, and have not otherwise rebutted the Examiner’s
determination that such equivalents could be substituted on the front end of a
resonant converter such as that shown in Figure 1 of Liu.
One of ordinary skill in the art of circuitry design would have no
problem substituting the inverter of Raets in the resonant converter circuit of
Liu with known methods, and the voltage stabilization circuits 18 and 19,
along with control circuit 20 for regulating switches 6 and 7, may prevent at
least some interference caused by switches 6 and 7. Additionally, Raets
describes a “preconditioner (not shown) which reduces the higher harmonics
of the mains current consumption, may be arranged between the rectifier
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bridge and the capacitance 5” (column 3, lines 40-43), and a capacitance 5
which functions to stabilize the output voltage of the rectifier bridge
composed of four diodes 1 through 4 (column 3, lines 36 to 40). Therefore,
we do not find Appellants’ assertion (App. Br. 6-7; Reply Br. 5-6) that
Raets’ circuitry being put into the front end of Liu’s resonant converter
would destroy Liu by the introduction of too much EMI persuasive.
Appellants’ contentions (App. Br. 7-9; Reply Br. 7-9) that there is no
adequate reason for combining Liu and Raets, and no articulated reasoning
or rational underpinning exists for combining Steigerwald and Marson with
Liu and Raets, are also unconvincing. The Examiner’s articulated reasoning
in the rejections (see Ans. 4-5) possesses a rational underpinning to support
the legal conclusion of obviousness. Kahn, 441 F.3d at 988.
In view of the foregoing, as well as our findings as to Liu (FF 1) and
Raets (FF 2), Liu and Raets are properly combinable and together they
disclose or suggest the resonant converter having capacitive and inductive
elements and an inverter in series with the primary winding of the
transformer, as set forth in claim 5. Furthermore, the Examiner’s
modification of the combination of Liu and Raets with Steigerwald and
Marson is reasonable.
Accordingly, we will sustain the Examiners obviousness rejections of
(i) independent claim 5 over the combination of Liu of Raets, and (ii)
dependent claims 11 to 13, 17, 18, 25 to 27 (which depend from claim 5)
over Liu, Raets, Steigerwald, and Marson.

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Obviousness of Claims 31 to 33
Turning next to the obviousness rejections of claims 31 to 33, we find
Appellants’ argument (App. Br. 7-9; Reply Br. 7-9) that Liu and Raets do
not disclose a regulating circuit as set forth in claim 31 persuasive. Neither
Liu nor Raets disclose a regulating circuit for deriving from each of the
multiple outputs of a resonant converter a measuring signal for regulating an
output voltage (see FF 1 and FF 2, respectively). Thus, we agree with
Appellants (App. Br. 7) that Raets’ control circuit 20 does not have multiple
outputs and thus cannot teach a similar technique to that recited in claim 31.
In addition, Appellants are correct (App. Br. 7) that the Examiner fails
to even allege that Liu or Raets, or their combination, disclose such a
regulating circuit (see generally Ans. 4). The Examiner has not established
a sufficient factual basis to support the legal conclusion of obviousness as to
claim 31 (see Fine, 837 F.2d at 1073), and thus the Examiner’s articulated
reasoning in the rejection does not possess a rational underpinning to support
the legal conclusion of obviousness as to claim 31, and as to claims 32 and
33 which depend therefrom. Kahn, 441 F.3d at 988.
In view of the foregoing, we will not sustain the Examiner’s
obviousness rejections of claims 31 to 33.
Obviousness of Claim 34
Turning next to the obviousness rejection of claim 34, we agree with
Appellants (App. Br. 8-9; Reply Br. 9) that the Examiner has not made a
prima facie case of obviousness as to this claim because the Examiner has
not addressed the recited limitation of a half-bridge drive circuit which
receives a signal from a regulating circuit to provide first and second control
signals for switching first and second switching elements (see generally Ans.
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5). Liu and Raets, taken alone or in combination, do not disclose or suggest
the half-bridge drive circuit and regulating circuit, as set forth in claim 34
(see FF 1 and FF 2).
In view of the foregoing, we will not sustain the Examiner’s
obviousness rejection of claim 34.
Non-Statutory Obviousness-Type Double Patenting Rejection
Based on Appellants’ failure to address the Examiner’s prima facie
case of non-statutory obviousness-type double patenting, Appellants have
failed to show that the Examiner erred in determining that claims 1 to 19 of
Duerbaum teach or suggest the resonant converter as recited in claims 5, 9,
11 to 13, 16 to 18, and 23 to 34. Accordingly, we will sustain the
Examiner’s non-statutory obviousness-type double patenting rejection of
these claims pro forma. See 37 C.F.R. § 41.37(c)(1)(vii) (requiring a
statement in the briefs as to each ground of rejection presented by
Appellants for review); 37 C.F.R. § 41.37(c)(1)(vii) (stating that arguments
not presented in the briefs by Appellants will be refused consideration).

ORDER
The Examiner’s decisions rejecting (i) claims 9 and 16 under 35
U.S.C. § 102(b) as anticipated by the teachings of Liu, and (ii) claims 23, 24,
and 28 to 34 under 35 U.S.C. § 103(a) as being obvious over the various
combinations of Liu, Raets, Steigerwald, and/or Marson are reversed.
The Examiner’s decisions rejecting (i) claims 5, 11 to 13, 17, 18, and
25 to 27 under 35 U.S.C. § 103(a) as being obvious over the various
combinations of Liu, Raets, Steigerwald, and/or Marson, and (ii) claims 5, 9,
11 to 13, 16 to 18, and 23 to 34 over claims 1 to 19 of Duerbaum based on
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the judicially created doctrine of non-statutory obviousness-type double
patenting are affirmed.
Accordingly, the decision of the Examiner is affirmed.
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)(v).

AFFIRMED

KIS

PHILIPS INTELLECTUAL PROPERTY & STANDARDS
P.O. BOX 3001
BRIARCLIFF MANOR, NY 10510