Ex Parte Koellner

Board of Patent Appeals and Interferences

Aug 31, 2012

11126589 (B.P.A.I. Aug. 31, 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.
11/126,589 05/11/2005 Walter Koellner 2004P08019US01 4344
28524 7590 09/04/2012
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
GLASS, ERICK DAVID
ART UNIT PAPER NUMBER
2837
MAIL DATE DELIVERY MODE
09/04/2012 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 WALTER KOELLNER
_____________

Appeal 2009-012319
Application 11/126,589
Technology Center 2800
____________

Before MARC S. HOFF, CAROLYN D. THOMAS, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-012319
Application 11/126,589

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STATEMENT OF THE CASE
Appellant appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-15 and 17-19. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

INVENTION
Appellant’s claimed invention is directed to a static DC electric drive
system for mining equipment wherein the drive system includes an active
front end adapted to receive an AC voltage and output a substantially
constant DC voltage. See Abstract.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A system comprising:

a static DC electric drive system for a mining excavator,
comprising:

an active front end adapted to receive an AC voltage and
output a substantially constant DC voltage; and

a first DC chopper coupled to said active front end, said
first DC chopper adapted to receive the substantially constant
DC voltage and output a variable DC voltage.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Sun US 5,932,979 Aug. 03, 1999
Sankey US 4,743,814 May 10, 1988

Appeal 2009-012319
Application 11/126,589

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The following rejections are before us for review:
1. The Examiner rejected claim 16 under 35 U.S.C. § 112, second
paragraph, as being indefinite.
2. The Examiner rejected claims 1-15 and 17-19 under 35 U.S.C.
§ 103(a) as unpatentable over Sun in view of Sankey.

PRINCIPLE OF LAW
The claims, of course, do not stand alone. Rather, they
are part of a “fully integrated written instrument,” consisting
principally of a specification that concludes with the claims.
For that reason, claims “must be read in view of the
specification, of which they are a part.” . . . [T]he specification
“is always highly relevant to the claim construction analysis.
Usually, it is dispositive; it is the single best guide to the
meaning of a disputed term.”
Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (internal
citations omitted).

ISSUE
The pivotal issue is whether the Examiner erred in finding that the
combination of Sun in view of Sankey teaches “an active front end” as
required by independent claim 1.

ANALYSIS
Analysis regarding the rejection of claim 16 under 35 USC § 112

Appellant has not responded to the Examiner’s rejection of claim 16
rejected under 35 USC § 112 for being indefinite (Ans. 3).
Appeal 2009-012319
Application 11/126,589

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Accordingly, we pro forma affirm the Examiner’s rejection of claim
16.

Analysis regarding the claims 1-15 and 17-19 rejected
under 35 USC §103

Appellant argues that Sun does not teach “an active front end
adapted to receive an AC voltage and output a substantially constant DC
voltage” as recited in claim 1 (Br. 16). Appellant explains that the
Examiner’s reliance on a “rectifier-filter” in Sun as meeting the limitation of
an active front end is not in accordance with the definition provided in
Appellant’s Specification (Br. 16-17). Appellant points out that “active
front end” is defined as “a self-communicated, actively controlled line
converter; a self-communicated infeed/regenerative feedback unit” (see Br.
17 and Appellant’s Spec. ¶ [13]).
We are persuaded by Appellant’s argument. While the
Examiner asserts that the “active front end” was interpreted according
to its customary meaning (Ans. 9), the Examiner provides no
definition to support such an assertion. Furthermore, our reviewing
Court held that Appellant’s Specification is the single best guide to
the meaning of a disputed term, and as such the Examiner should have
interpreted the term “active front end” as defined in Appellant’s
Specification. See Phillips, 415 F.3d at 1315. Accordingly, a
rectifier-filter is not reasonably construed as an “active front end.”
For the aforesaid reasons we reverse the Examiner’s rejection of claim
1 and for the same reasons the rejections of dependent claims 2-15 and 17-
19 because Sankey does not cure the above cited deficiency.
Appeal 2009-012319
Application 11/126,589

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CONCLUSION
The Examiner erred in finding that the combination of Sun in view of
Sankey teaches “an active front end” as required by independent claim 1.

ORDER
The Examiner’s rejection of claim 16 is affirmed.
The Examiner’s rejection of claims 1-15 and 17-19 is reversed.
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-IN-PART

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