Ex Parte KATO

Patent Trials and Appeals Board

Jul 3, 2019

13727215 - (D) (P.T.A.B. Jul. 3, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/727,215 12/26/2012
78198 7590
Studebaker & Brackett PC
8255 Greensboro Drive
Suite 300
Tysons, VA 22102
07/08/2019
FIRST NAMED INVENTOR
Masahiro KATO
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
005700-ME0009 9375
EXAMINER
MATA,SARAM
ART UNIT PAPER NUMBER
2838
NOTIFICATION DATE DELIVERY MODE
07/08/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
info@sbpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASAHIRO KA TO
Appeal2018-008044
Application 13/727,215
Technology Center 2800
Before BRADLEY R. GARRIS, LINDA M. GAUDETTE, and
MICHAEL G. McMANUS, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL 1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 1-16 under 35 U.S.C. § 103(a) as unpatentable
over Skinner (US 2011/0032738 Al, published February 10, 2011) in view of
Wood (US 2006/0139020 Al, published June 29, 2006), Li (US 2010/0019742 Al,
1 This Decision includes citations to the following documents: Specification filed
December 26, 2012 ("Spec."); Final Office Action dated September 28, 2017
("Final"); Appeal Brief filed February 14, 2018 ("Appeal Br."); Examiner's
Answer dated June 18, 2018 ("Ans."); and Reply Brief filed August 1, 2018
("Reply Br.").
2 The Appellant identifies Mitsubishi Electric Corporation of Tokyo, Japan, as the
real party in interest. Appeal Br. 2.
Appeal2018-008044
Application 13/727,215
published January 28, 2010), and Deboy (US 2011/0316514 Al, published
December 29, 2011 ). 3
We REVERSE.
The "invention relates to a power module having a PFC (power factor
correction) function to correct a power factor, and an air conditioner provided with
the power module." Spec. 1 :6-8. Claim 5 is representative of the claims on appeal,
and is reproduced below.
5. A power module having a PFC (power factor correction)
function responsive to an interleaved system, comprising:
a pair of semiconductor switching elements including
respective transistors made of a wide band gap material;
a pair of diodes each having a first end and a second end, the
first end of each diode connected to a power terminal of a respective
semiconductor switching element, the diodes forming a reverse-
conducting element;
a driving part that drives said pair of semiconductor switching
elements;
a package covering said pair of semiconductor switching
elements, said pair of diodes, and said driving part; and
a pair of rectified output terminals extending independently of
each other from the respective second ends of the diodes to and
outwardly from the periphery of the package, the rectified output
terminals being different from said power terminal and connected to
the second ends of said diodes, respectively, the second ends being
opposite to the first ends of said diodes to which said pair of
semiconductor switching elements are respectively connected.
Appeal Br. 14--15 (Claims Appendix).
Each of the independent claims on appeal recites a "power module having a
PFC (power factor correction) function" comprising a pair of diodes, a pair of
3 We have jurisdiction under 35 U.S.C. § 6(b ).
2
Appeal2018-008044
Application 13/727,215
semiconductor switching elements, and a driving part that drives the pair of
semiconductor switching elements. Id. at 13-15 (claims 1, 4, 5, and 8). Each of the
independent claims also requires that the power module include a package
covering the pair of diodes, pair of semiconductor switching elements, and the
driving part. Id.
The Examiner found Skinner discloses a power module having the
aforementioned features. See Final 6-7. More specifically, the Examiner found the
claim term "power module having a PFC (power factor correction) function"
(claims 1, 4, 5, 8) reads on Skinner's driver controller 132 that includes power
factor correction (PFC) module 204 and PFC control module 250. Final 6. The
Examiner found the claim term "package" ( claims 1, 4, 5, 8) also reads on
Skinner's driver controller 132. Final 6. The Examiner relied on dictionary
definitions from Wiley Electrical and Electronics Engineering Dictionary as
evidence that the terms "package" and "module" are interchangeable: "module - a
self-contained, and usually standardized, unit that performs one or more tasks, and
which can be incorporated into a complete system[;] package - the enclosure in
which a component, circuit, device, piece of equipment, apparatus, or system, is
housed." Final 6-7.
The Appellant agrees with the Examiner that the ordinary artisan would
understand the claims terms "module" and "package" as having the Wiley
Electrical and Electronics Engineering Dictionary definitions cited by the
Examiner. Appeal Br. 8. However, the Appellant disagrees with the Examiner's
determination that the ordinary artisan would understand the terms "module" and
"package" as interchangeable, or synonymous. Id. The Appellant thus contends the
Examiner reversibly erred in finding the claimed "package" reads on Skinner's
driver controller 132. Id. The Appellant's argument is persuasive.
3
Appeal2018-008044
Application 13/727,215
During examination, claim terms are given their broadest reasonable
construction consistent with the Specification. In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007). The broadest reasonable interpretation of the
claims must be consistent with the interpretation that those skilled in the art would
reach. In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999). In the absence of
evidence to the contrary, there is a presumption that different claim terms have
different meanings. CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co. KG,
224 F.3d 1308, 1317 (Fed. Cir. 2000).
We agree with the Appellant that in the present Specification, the terms
"module" and "package" are not used interchangeably. Rather, the term "module"
is used in a manner consistent with the Wiley Electrical and Electronics
Engineering Dictionary definition: "a relationship of elements connected to each
other" that performs the task of correcting power factor to enhance efficiency in
the use of electric power. See Spec. 1: 11-14. Skinner likewise uses the term
"module" in a manner consistent with this dictionary definition, disclosing that
PFC module 204 includes elements connected to each other (Skinner Figs. 3a---c)
and "selectively provides power factor correction between the input AC power and
the generated DC power" (id. ,r 56).
The Specification also uses the term "package" in a manner consistent with
the Wiley Electrical and Electronics Engineering Dictionary definition, i.e., to
describe something that covers various elements of the circuit, such as terminals
21a-24 and wire interconnects 26. See Spec. 4:2-5. We agree with the Appellant
that Skinner's drive controller 132 does not reasonably fall within this definition of
"package." Rather, Skinner describes drive controller 132 as including numerous
modules that are connected to each other and, together, control components of an
AC system, e.g., compressor 102. See, e.g., Skinner ,r 54, Fig. 2.
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Appeal2018-008044
Application 13/727,215
Accordingly, because the Examiner's obviousness determination is based on
an unsupported interpretation of the claim term "package" as reading on Skinner's
drive controller, we do not sustain the rejection of claims 1-16 under 35 U.S.C.
§ 103(a).
REVERSED
5