Ex Parte Schuster et al

Patent Trial and Appeal Board

Nov 5, 2013

10584337 (P.T.A.B. Nov. 5, 2013)

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.
10/584,337 06/23/2006 Thomas Schuster 12604/24 1948
26646 7590 11/05/2013
KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
EXAMINER
PHAM, EMILY P
ART UNIT PAPER NUMBER
2838
MAIL DATE DELIVERY MODE
11/05/2013 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 PATENT TRIAL AND APPEAL BOARD
________________

Ex parte THOMAS SCHUSTER and HARALD WOLF
________________

Appeal 2011-007722
Application 10/584,337
Technology Center 2800
________________

Before RICHARD TORCZON, JOHN G. NEW, and HUNG H. BUI,
Administrative Patent Judges.

Opinion by NEW, Administrative Patent Judge.
Concurring opinion by TORCZON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-007722
Application 10/584,337

SUMMARY
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 8-14.
1
Specifically, claims 8-10 and
12-14 stand rejected as unpatentable under 35 U.S.C. § 103(a) as being
obvious over Appellants’ Admitted Prior Art (“AAPA”) and Zafarana et al,
(US 6,078,203, June 20, 2000) (“Zafarana”).
Claim 11 stands rejected as unpatentable under 35 U.S.C. § 103(a) as
being obvious over the combination of AAPA, Zafarana, and Goldberg (US
3,714,470, January 30, 1973) (“Goldberg”).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

NATURE OF THE CLAIMED INVENTION
Appellants’ invention is directed to a converter, comprising at least
means for sensing the currents fed to the electric motor powered by the
converter, the means for current detection being situated inside the
converter, and the signals of the means being fed to a nonlinear filter,
whose output signals are fed to an additional filter that is connected to an
analog-to-digital converter. Abstract.

GROUPING OF CLAIMS

Because Appellants make essentially the same arguments for claims
8-10 and 1-14 as they do for claim 11, we select claim 8 as representative of
the claims on appeal. See App. Br. 3, 7. Claim 8 recites:

1
Claims 1-7 have been cancelled and are not on appeal.
Appeal 2011-007722
Application 10/584,337

8. A converter, comprising:

a device adapted to sense currents fed to an electric
motor powered by the converter, the device arranged inside the
converter, signals of the device fed to a nonlinear filter, output
signals of the nonlinear filter fed to an additional filter that is
connected to an analog-to-digital converter.

Claims App’x 1.

ISSUE
Appellants argue that the Examiner erred in finding that an artisan of
ordinary skill in the art would not be motivated to combine the teachings of
Zafarana with the AAPA. App. Br. 5, 6. We therefore address the issue of
whether the Examiner so erred.

ANALYSIS
Appellants argue that the AAPA teaches a device in which signals
provided by a current-sensing device of control electronics are initially
supplied to a filter, and the filtered measuring signals are then provided to a
microcontroller to suppress interference signals. App. Br. 4. Appellants
also contend that Zafarana teaches, inter alia, a voltage regulator, which has
a linear filter, a comparator, and a stretcher filter, connected in series with
one another between an input terminal and an output terminal of the
regulator. Id. (citing Zafarana, col. 3, ll. 14-24). According to Appellants,
one of ordinary skill in the art following the teachings of Zafarana would
understand that the output from a linear filter should be supplied to a
comparator, and the output of the comparator should then be supplied to a
Appeal 2011-007722
Application 10/584,337

stretcher filter. App. Br. 5. That, contend Appellants, is not the
arrangement recited in claim 8, which does not teach that the output of the
linear filter is connected in series to a comparator and a stretcher filter. Id.
Appellants argue that Zafarana teaches that a linear filter alone is not
sufficient to filter out a noise signal; rather, a comparator is needed to
produce a square wave, and a stretcher filter is further required to suppress
spurious comparator switchings. App. Br. 5. Moreover, argue Appellants,
Zafarana also teaches a non-linear filtering section in order to completely
remove spurious comparator switchings. Id. (citing Zafarana, col. 5, ll. 25-
29). According to Appellants, Zafarana teaches that the non-linear filtering
section is effective only because it is used in combination with the linear
filter, comparator, and stretcher filter in series together. App. Br. 5.
Consequently, argue Appellants, one of ordinary skill in the art “following
the disclosure of Zafarana” would not have been motivated to exclude the
comparator and stretcher filter, since those elements are essential to the
proper function of the Zafarana’s device. Id.
The Examiner responds that Zafarana teaches that the linear filter,
comparator, and stretcher filter are for suppressing spurious switchings to
reduce the switching frequency of the linear filter-stretcher filter-
comparator system, and that they do not have any effect on the output from
the non-linear filter to the linear filter. Ans. 9. The Examiner finds that
Zafarana teaches that “the non-linear filter 7 provided is advantageous in
that it reduces the noise amplitude at the input terminal I2 of the linear filter
2, irrespective of the alternator load and the engine rpm.” Ans. 10 (quoting
Zafarana, col. 4, ll. 33-36)(emphasis omitted). The Examiner concludes
that an artisan of ordinary skill interested in using the output of the linear
Appeal 2011-007722
Application 10/584,337

filter, would have been motivated to remove Zafarana’s comparator, the
stretcher filter, frequency reader, and frequency controller because those
elements serve only to suppress spurious switchings to reduce the switching
frequency of the linear filter/stretcher filter/comparator system. Ans. 10
(citing Zafarana, col. 1, ll. 65- 67). The Examiner also concludes that one
of ordinary skill in the art would have known to exclude the comparator and
stretcher filter of Zafarana because they do not serve the purpose of
converting an analog signal into digital signal. Ans. 10.
We are persuaded by the Examiner’s reasoning. All elements of a
prior art reference need not read on the claimed invention; rather, the proper
test for obviousness is what the combined teachings of the prior art would
have suggested to a person of ordinary skill in the art. See In re Kotzab,
217 F.3d 1365, 1370 (Fed. Cir. 2000). In the instant appeal, the Examiner
relies upon the teachings of Zafarana to supply the “signals of the device
fed to a nonlinear filter, output signals of the nonlinear filter fed to an
additional filter” recited in claim 8. It is not required that all elements of
Zafarana’s series of non-linear filter, linear filter, comparator, and stretcher
filter be incorporated when combined with AAPA, particularly since, as the
Examiner finds, the comparator and stretcher filter do not distribute
feedback to the non-linear or linear filters, and therefore do not influence,
the output of the non-linear filter to the linear (“other”) filter. Ans. 9. We
therefore discern no error in the Examiner’s findings and conclusion and we
affirm the Examiner’s rejection of claim 8. Moreover, because Appellants
rely upon the same reasoning with respect to dependent claims 9-14, we
similarly affirm the rejection of those claims.

Appeal 2011-007722
Application 10/584,337

DECISION
The Examiner’s rejection of claims 8-14 under 35 U.S.C. § 103(a) is
affirmed.

TIME PERIOD FOR RESPONSE
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

Appeal 2011-007722
Application 10/584,337

TORCZON, Administrative Patent Judge, concurring.
I join with the majority in affirming the rejection, but write separately
to note problems in the form of claim 8. Specifically, claim 8 appears to
run afoul of the prohibition on single-means claims. See In re Hyatt,
708 F.2d 712, 714 (Fed. Cir. 1983) (explaining the long-standing
prohibition), citing O'Reilly v. Morse, 56 U.S. 62, 112 (1853). The Hyatt
decision suggests that the proper rejection for such claims is an enablement
rejection under 35 U.S.C. 112(a). Additionally, claim 8 appears to be
missing words needed to make grammatical sense. Hyatt, 708 F.2d at 714
(applying the precepts of grammar to claims). Presumably, the latter half of
the claim should read (added words underlined):
wherein signals of the device are fed to a nonlinear filter and
output signals of the nonlinear filter are fed to an additional
filter that is connected to an analog-to-digital converter.
Other corrections are also possible, however, which suggests that a
rejection under 35 U.S.C. 112(b) for indefiniteness is also warranted. In the
event that the appellant further prosecutes an amended version of claim 8,
these section 112 defects should be corrected.
Although the claim is defective under section 112, it is nevertheless
possible to review a prior art rejection if the prior art teaches or suggests an
embodiment within the uncontested scope of the claim. Ex parte Tanksley,
26 SPQ2d 1384, 1387 (BPAI 1991). The rejection as the majority analyzes
it above appears to be facially reasonable. Although the Appellant argues
that a person having ordinary skill in the art would not substitute the
analog-to-digital converter 2 of the disclosed prior art for Zafarana's
comparator-stretcher filter (which produces a square wave), argument is not
evidence. The fact that Zafarana uses the non-linear/linear filters for noise
Appeal 2011-007722
Application 10/584,337

reduction in one circuit does not in itself teach away from using the same
combination of filters for the same purpose in a different circuit.
Consequently, because the appellant has not shown prejudicial error in the
prior art rejection, I join with the majority in affirming the reject, despite
my concerns about the claim form.

ELD