Ex Parte Isham et al

Board of Patent Appeals and Interferences

Sep 29, 2010

11337925 (B.P.A.I. Sep. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT H. ISHAM, CHARLES E. HAWKES,
and MICHAEL M. WALTERS
_____________

Appeal 2010-003851
Application 11/337,925
Technology Center 2800
____________

Before THOMAS S. HAHN, ELENI MANTIS MERCADER,
and CARL W. WHITEHEAD, JR., Administrative Patent Judges.

MANTIS MERCADER, 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.
Appeal 2010-003851
Application 11/337,925

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 29-31. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

INVENTION
Appellants’ claimed invention is directed to a DC to DC bulk pulse
width modulator converter circuit having an input, a high side output, and a
low side output (see col. 1, ll. 59-61).2
Claim 29, reproduced below, is representative of the subject matter on
appeal:
29. A method of sensing an output current in a power supply, the
power supply comprising a DC to DC converter circuit having an input, a
high side output and a low side output, the method comprising: receiving a
signal at a node, the signal representative of the output current; sourcing a
current to the node, the sourced current dependent on the output current; and
generating a second signal that is representative of a value of the sourced
current, the generated second signal thereby providing a measure of the
output current.

THE REJECTIONS
The Examiner relies upon the following as evidence of unpatentability:
Walters US 5,982,160 Nov. 9, 1999
Nguyen US 6,069,471 May 30, 2000
Goder US 6,127,814 Oct. 3, 2000
The following rejections are before us for review:

2 Referring to the original parent Patent, U.S. 6,246,220 B1, issued June 12,
2001, which was filed as the application Specification.
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Application 11/337,925

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1. The Examiner rejected claims 29-31 under 35 U.S.C. § 102(e) as
being anticipated by Nguyen.
2. The Examiner rejected claims 29 and 30 under 35 U.S.C. § 102(e)
as being anticipated by Goder.
3. The Examiner rejected claims 29 and 30 under 35 U.S.C. § 102(e)
as being anticipated by Walters.

ISSUES
The pivotal issues are:
1. Whether Nguyen teaches the limitations of “receiving a signal at a
node, the signal representative of the output current” and “sourcing a current
to the node” as recited in claim 29;
2. whether Goder teaches the limitations of “receiving a signal at a
node, the signal representative of the output current” and “generating a
second signal that is representative of a value of the sourced current, the
generated second signal thereby providing a measure of the output current”
as recited in claim 29; and
3. whether Walters teaches the limitations of “receiving a signal at a
node, the signal representative of the output current” and “generating a
second signal that is representative of a value of the sourced current” as
recited in claim 29.

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
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Application 11/337,925

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art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).

ANALYSIS
Rejection of claims 29-31 under 35 U.S.C. § 102(e) as being
anticipated by Nguyen.
Appellants argue that Nguyen does not teach the limitations of
“receiving a signal at a node, the signal representative of the output current”
and “sourcing a current to the node” as recited in claim 29 (App. Br. 3-4).
Simply pointing out what a claim requires with no attempt to point out
how or why the claims patentably distinguish over the prior art does not
amount to a separate argument for patentability. 37 C.F.R. § 41.37(c)(1)(vii)
(2004). See also In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987). Thus,
we do not address Appellants’ mere recitation of claim limitations which are
without any corresponding argument.3
Accordingly, we will affirm this rejection of claims 29-31 pro forma
as no arguments for patentability were presented.
Rejection of claims 29 and 30 under 35 U.S.C. § 102(e) as being
anticipated by Goder.
Appellants argue that Goder does not teach the limitations of
“receiving a signal at a node, the signal representative of the output current”
and “generating a second signal that is representative of a value of the
sourced current, the generated second signal thereby providing a measure of
the output current” as recited in claim 29.

3 Only arguments made by Appellants have been considered in this decision.
Arguments which Appellants could have made but chose not to make in the
Brief have not been considered and are deemed waived. See 37 C.F.R. §
41.37(c)(1)(vii) (2004).
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Application 11/337,925

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Appellants assert that element 312 is a resistor and not a node (App.
Br. 4). While we agree with Appellants that 312 is a resistor, it is clear that
the Examiner’s reference to numeral 312 would be understood to refer to the
node connection between the resistor 312 and inductor L1 (see also Ans. 7).
Appellants also cite to column 5, lines 19-26, of Goder, asserting that
this section says nothing about a signal being representative of an output or
“a second signal that is representative of the sourced current” (App. Br. 5).
We note that the Examiner did not cite this section for teaching these
limitations; rather, the Examiner in the Final Rejection and the Answer
explicitly outlined how each of the limitations of claim 29 was interpreted in
view of Goder’s Figure 1 (Final Rej. 4; Ans. 7-8).
It appears that Appellants chose to ignore the Examiner’s indicated
reasoning for the rejection and how it was applied. Nonetheless, we agree
with the Examiner’s interpretation of Goder as set out in the Final Rejection
and the Answer. Thus, we adopt the Examiner’s findings of fact and
reasoning with respect to claims 29 and 30 as set out in the Answer and
adopt them as our own.
Thus, we will also sustain the Examiner’s rejection of claims 29 and
30 under 35 U.S.C. § 102(e) as being anticipated by Goder.
Rejection of claims 29 and 30 under 35 U.S.C. § 102(e) as being
anticipated by Walters.
Appellants argue that Walters does not teach the limitations of
“receiving a signal at a node, the signal representative of the output current”
and “generating a second signal that is representative of a value of the
sourced current” as recited in claim 29 (App. Br. 5-6). Appellants argue that
because the voltage across the capacitor (Ccs) is proportional to an inductor
current (citing Walters’s col. 5, ll. 37-41), Walter does not describe a circuit
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Application 11/337,925

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that receives “a signal at a node, the signal representative of the output
current” at Rcs (App. Br. 5). Appellants further argue that the voltage across
the Ccs is not “a signal at a node” because the signal is a differential signal
provided across two nodes (App. Br. 5). Appellants argue that there is
nothing in Walters that describes another current that is sourced to node 23
(App. Br. 5-6).
Again, we agree that the Examiner’s findings of fact and reasoning as
set out in the Answer (Ans. 8-10). Thus, we will also sustain the Examiner’s
rejections of claims 29 and 30 under 35 U.S.C. § 102(e) as being anticipated
by Walters.

CONCLUSIONS
1. Nguyen teaches the limitations of “receiving a signal at a node, the
signal representative of the output current” and “sourcing a current to the
node” as recited in claim 29;
2. Goder teaches the limitations of “receiving a signal at a node, the
signal representative of the output current” and “generating a second signal
that is representative of a value of the sourced current, the generated second
signal thereby providing a measure of the output current” as recited in claim
29; and
3. Walters teaches the limitations of “receiving a signal at a node, the
signal representative of the output current” and “generating a second signal
that is representative of a value of the sourced current” as recited in claim
29.

Appeal 2010-003851
Application 11/337,925

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ORDER
The decision of the Examiner to reject claims 29-31 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

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