Ex Parte Hirst

Board of Patent Appeals and Interferences

Jun 30, 2009

10764409 (B.P.A.I. Jun. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte B. MARK HIRST
____________

Appeal 2009-002351
Application 10/764,409
Technology Center 2800
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Decided:1 June 30, 2009
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Before MAHSHID D. SAADAT, ROBERT E. NAPPI,
and CARLA M. KRIVAK, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-30, 32-38, and 40-52. Claims 31 and 39 have been canceled. We
have jurisdiction under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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We affirm.
STATEMENT OF THE CASE
Appellant’s invention relates to power converters for conversion from
alternating current (AC) to direct current (DC) power (Spec. 2). Claim 1,
which is illustrative of the claimed invention, reads as follows:
1. An apparatus comprising:

a power converter;

said power converter including a charge pump capacitor, said
charge pump capacitor coupled to a two transistor totem-pole
configuration in said converter so as to drive a primary of an isolation
transformer; and

wherein a parasitic diode in one transistor opposes a parasitic
diode in the other transistor.

The Examiner relies on the following prior art references:
Walsh US 5,872,983 Feb. 16, 1999
Suzuki US 6,236,192 B1 May 22, 2001
Balakrishnan US 6,813,168 B2 Nov. 2, 2004
(filed Nov. 18, 2002)

The rejections as presented by the Examiner are as follows:
Claims 1-3, 5, 7, 9-18, 20, 22, 24-30, 32-36, 41-45, 47, 49, 51, and 52
stand rejected under 35 U.S.C. § 102(b) as being anticipated by Suzuki.
Claims 4, 6, 19, 21, 37, 38, 46, and 48 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Suzuki and Walsh.
Claims 8, 23, 40, and 50 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Suzuki and Balakrishnan.
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Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Brief and the Answer for their respective details. Only those
arguments actually made by Appellant have been considered in this decision.
Arguments that Appellant did not make in the Brief have not been
considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUES
Appellant argues that Suzuki does not anticipate because the switches
disclosed in Suzuki are not the same as the claimed “charge pump capacitor
coupled to a two transistor totem-pole configuration in the converter so as to
drive a primary of an isolation transformer” (App. Br. 17-18). With respect
to the obviousness rejections over Suzuki in view of Walsh or Balakrishnan,
Appellant again argues that Suzuki does not teach or suggest the claimed
feature mentioned above while Walsh or Balakrishnan do not cure the
alleged deficiencies of Suzuki (App. Br. 19-22).
Appellant’s arguments present the following issues:
1. With respect to the rejection of claims 1-3, 5, 7, 9-18, 20, 22, 24-
30, 32-36, 41-45, 47, 49, 51, and 52, has Appellant shown that the Examiner
erred in finding that Suzuki teaches the claimed “charge pump capacitor
coupled to a two transistor totem-pole configuration in said converter so as
to drive a primary of an isolation transformer?”
2. With respect to the remaining claims, has Appellant shown that the
Examiner erred in finding that the combination of the cited references
teaches the claimed requirements of these dependent claims?

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FINDINGS OF FACT
The following findings of fact (FF) are relevant to the issues
involved in the appeal.
1. Appellant’s Specification teaches that the embodiment shown
in Figure 2 comprises two transistor totem-pole configurations that are
coupled to an AC Line and an AC Neutral, while a port of the pump
capacitance is coupled between the two configurations. (Spec. 6:8-13.)
2. The Examiner interprets the claimed term “coupled” as a
general connection which does not define an exact location or configuration
for the connection. (Ans. 7.)
3. The AC voltage regulator disclosed by Suzuki, as depicted in
figure 3, includes the followings:
On a secondary coil side of the high-frequency transformer 4, a
secondary coil is provided with a center tap 41, and this center tap 41
is connected to the AC input terminal 1a (or an output terminal of the
input filter 2 in this preferred embodiment). Also, input terminals of
the bi-directional semiconductor switches SW3 and SW4 of the
second bi-directional semiconductor switch circuit 5 are respectively
connected to output terminals a and b of the secondary coil of the
high-frequency transformer 4.

(Fig. 3; col. 2, ll. 53-63.)
4. The Examiner reads the claimed charge pump capacitor on
capacitors C1 and C2 of Suzuki that re coupled, through DC rail 3 or
through capacitor C3, to switches SW1 and SW2 as the claimed two
transistor totem-pole configuration. (Ans. 7.)
5. The Examiner takes the connection described above as the
pump capacitor being “coupled” between the two transistor totem-pole
configuration to drive the primary of transformer 4. (Id.)
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PRINCIPLES OF LAW
1. Anticipation
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis
Pharmaceutical Corp., 432 F.3d 1368, 1375-76, 77 (Fed. Cir. 2005), citing
Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976
F.2d 1559, 1565 (Fed. Cir. 1992). Also See In re Paulsen, 30 F.3d 1475,
1478-79 (Fed. Cir. 1994). “Anticipation of a patent claim requires a finding
that the claim at issue ‘reads on’ a prior art reference.” Atlas Powder Co. v.
IRECO, Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999) (quoting Titanium
Metals Corp. of America v. Banner, 778 F.2d 775, 781 (Fed. Cir. 1985)).
It is well settled that if a prior art device inherently possesses the
capability of functioning in the manner claimed; anticipation exists
regardless of whether there was recognition that it could be used to perform
the claimed function. See, e.g., In re Schreiber, 128 F.3d 1473, 1477 (Fed.
Cir. 1997).
2. Obviousness
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See In re
Kahn, 441 F.3d 977, 987-988 (Fed. Cir. 2006), In re Young, 927 F.2d 588,
591 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425 (CCPA 1981). The
initial burden of establishing reasons for unpatentability rests on the
examiner. In re Oetiker, 977 F.2d 1443, 1446 (Fed. Cir. 1992).
The Examiner can satisfy this burden by showing some articulated
reasoning with some rational underpinning to support the legal conclusion of
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obviousness. KSR Int’l. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In
re Kahn, 441 F.3d at 988 (Fed. Cir. 2006)).

ANALYSIS
§ 102 Rejection over Suzuki
Appellant’s arguments that the Examiner erred in rejecting claim 1 as
being anticipated by Suzuki are not persuasive. Contrary to Appellant’s
arguments (App. Br. 17-18), the two switches SW1 and SW2 disclosed in
Suzuki are “coupled” to capacitors C1 and C2 (FF 3). Because “coupled” is
broadly used by Appellant as some type of connection (FF 1), the connection
between the capacitors and the switches shown in Figure 3 of Suzuki (FF 3)
meet the broad recitation of “coupled.” Furthermore, the Examiner has
properly used the broadest reasonable interpretation of the term “coupled,”
which is consistent with Appellant’s Specification (FF 2-3), in reading the
claimed configuration on the capacitors and switches depicted in Figure 3 of
Suzuki (FF 4-5).
Therefore, Appellant has not shown error in the Examiner’s finding
that Suzuki teaches a “charge pump capacitor coupled to a two transistor
totem-pole configuration in said converter so as to drive a primary of an
isolation transformer.” Accordingly, we conclude that Appellant has not
shown that the Examiner erred in rejecting claim 1 under 35 U.S.C.
§ 102(b).
With respect to the remaining claims that are rejected as anticipated
by Suzuki, Appellant either repeats the claim recitations discussed above
(App. Br. 18), or presents no separate arguments (App. Br. 19). We consider
such conclusory assertions without supporting explanation or analysis
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particularly pointing out errors in the Examiner’s reasoning to fall short of
persuasively rebutting the Examiner’s prima facie case of anticipation. See
Oetiker, 977 F.2d at 1445. In the absence of a separate argument with
respect to those claims, they stand or fall with the representative independent
claim. See 37 C.F.R. § 41.37(c)(1)(vii). Therefore, the rejection of claims 2,
3, 5, 7, 9-18, 20, 22, 24-30, 32-36, 41-45, 47, 49, 51, and 52 under 35 U.S.C.
§ 102(b) is also sustained.

§ 103 Rejection over Suzuki and Walsh
Appellant has not provided any separate arguments regarding this
rejection and has only relied on the same arguments made with respect to
claim 1, which we found to be unpersuasive. Appellant further asserts that
Walsh does not cure the alleged deficiencies of Suzuki (App. Br. 19-21).
Because Appellant has not shown that the Examiner erred, we will sustain
the 35 U.S.C. § 103 rejection of claims 4, 6, 19, 21, 37, 38, 46, and 48 over
Suzuki and Walsh.

§ 103 Rejection over Suzuki and Balakrishnan
Similarly, Appellant provides no separate arguments regarding this
rejection and relies on the same arguments made with respect to claim 1.
Appellant further asserts that Balakrishnan does not cure the alleged
deficiencies of Suzuki (App. Br. 21-22). Because Appellant has not shown
that the Examiner erred, we will sustain the 35 U.S.C. § 103 rejection of
claims 8, 23, 40, and 50 over Suzuki and Balakrishnan.
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CONCLUSION
Based on the findings of facts and analysis above, we conclude that
Appellant has not shown that the Examiner erred (1) in finding that Suzuki
teaches the claimed “charge pump capacitor coupled to a two transistor
totem-pole configuration in said converter so as to drive a primary of an
isolation transformer” and (2) in finding that the combination of the cited
references teaches the claimed requirements of the rejected dependent
claims.

ORDER
The decision of the Examiner rejecting claims 1-30, 32-38, and 40-52
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)(iv).

AFFIRMED

KIS

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