Ex Parte Willenberg et al

Patent Trials and Appeals Board

Apr 25, 2019

15010061 - (D) (P.T.A.B. Apr. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/010,061 01/29/2016
29393 7590 04/29/2019
Eschweiler & Potashnik, LLC
Rosetta Center
629 Euclid Ave., Suite 1000
Cleveland, OH 44114
FIRST NAMED INVENTOR
Mario Willenberg
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.
SMAP161WOUS 4202
EXAMINER
AHMAD, SHAHZEB K
ART UNIT PAPER NUMBER
2838
NOTIFICATION DATE DELIVERY MODE
04/29/2019 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):
docketing@eschweilerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARIO WILLENBERG, RAPHAEL KNOKE,
ANDREAS FALK, ROBET STALA, MAREK RYLKO,
JERZY MASLON, ANDRZEJ MONDZIK, SLA WO MIR
SZOT, ADAM PENCZEK, and MITOSZ SZAREK
Appeal2018-005127
Application 15/010,061
Technology Center 2800
Before CHRISTOPHER C. KENNEDY, A VEL YN M. ROSS, and
BRIAND. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-27. We have jurisdiction. 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant is the Applicant, SMA Solar Technology AG, which, according
to the Appeal Brief, is also the real party in interest. Appeal Br. 1.
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Application 15/010,061
STATEMENT OF THE CASE2
Appellant describes the invention as relating to a step-up converter
that could be used, for example, in a photovoltaic installation. Spec. ,r,r 2-3.
Appellant asserts that its converter has improved efficiency and allows a soft
switching of a semiconductor switch. Id. at ,r 7. Claim 1, reproduced below
with emphasis added to certain key recitations and formatting modified for
readability, is illustrative of the claimed subject matter:
1. A step-up converter, comprising:
a first inductance electrically connecting a first DC voltage
input of the step-up converter to a first junction point;
a step-up converter switch connecting the first junction
point to a second DC voltage input and a second DC voltage
output of the step-up converter;
a first diode connecting the first junction point to a first
DC voltage output of the step-up converter; and
a snubber circuit comprising a charging path and a
discharging path,
wherein the discharging path runs as a series
connection of a capacitor and a second diode from the first
junction point to the first DC voltage output,
wherein the charging path is connected at its one
end to a junction point between the capacitor and the
second diode and is arranged such that the capacitor
immediately begins charging when the step-up
converter switch is switched on, and
wherein the charging path is connected at its other
end to the first DC voltage input.
Appeal Br. 1 (Claims App.). The other independent claims on appeal
(claims 6, 8, 9, 10, and 24) similarly recite that the capacitor "immediately
2 In this Decision, we refer to the Final Office Action dated July 3, 2017
("Final Act."), the Appeal Brief filed January 12, 2018 ("Appeal Br."), the
Examiner's Answer dated February 23, 2018 ("Ans."), and the Reply Brief
filed April 18, 2018 ("Reply Br.").
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begins charging when the step-up converter switch is switched on." Id. at
19--24.
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Machin et al.
("Machin")
Jang et al.
("Jang")
Ikriannikov
Huang
WO 94/23488
US 2009/0244944 Al
US 2014/0062446 Al
US 9,060,396 B2
REJECTIONS
The following rejections are before us on appeal:
Oct. 13, 1994
Oct. 1, 2009
Mar. 6, 2014
Jun. 16,2015
Rejection 1. Claims 1-27 under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement. Final Act. 5.
Rejection 2. Claims 1-27 under 35 U.S.C. § 112(b) as indefinite. Id.
Rejection 3. Claims 1-5, 9, 26, and 27 under 35 U.S.C. § I02(a)(2) as
anticipated by Machin. Id. at 6.
Rejection 4. Claim 8 under 35 U.S.C. § 103 as unpatentable over
Machin. Id. at 12.
Rejection 5. Claims 6 and 7 under 35 U.S.C. § 103 as unpatentable
over Machin in view of Ikriannikov. Id. at 13.
Rejection 6. Claims 10, 11, 13-15, 17, 24, and 25 under 35 U.S.C.
§ 103 as unpatentable over Machin in view of Jang. Id. at 15.
Rejection 7. Claim 12 under 35 U.S.C. § 103 as unpatentable over
Machin in view of Jang, in further view of Huang. Id. at 19.
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Rejection 8. Claim 16 under 35 U.S.C. § 103 as unpatentable over
Machin in view of Jang, in further view ofikriannikov. Id.
ANALYSIS
Rejection 1. The Examiner rejects claims 1-27 under 35 U.S.C.
§ 112(a) as failing to comply with the written description requirement. Final
Act. 5. In particular, the Examiner determines that the word "immediately"
does not appear in Appellant's Specification and that the Specification
would not reasonably convey to a person having ordinary skill in the art that
the inventor, at the time of the application's filing, had possession of "the
capacitor immediately begins charging when the step-up converter switch is
switch-on." Id.
To determine whether the written description requirement is met, we
consider "whether the disclosure of the [earlier] application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date." Hologic, Inc.
v. Smith & Nephew, Inc., 884 F.3d 1357, 1361 (Fed. Cir. 2018) (bracketed
material in original quote) ( quotes and citation omitted).
Here, Appellant argues that the Specification Figure 1 and Paragraphs
10 and 40 convey that the inventor possessed the recitation at issue. Appeal
Br. 7-9. Appellant's argument is persuasive. The Specification states, for
example, that "[ t ]he renewed charging of the capacitor is effected via the
charging path at the beginning of the switch-on phase of the step-up
converter switch." Spec. ,r 10 (emphasis added). Because the charging "is
effected" at "the beginning of the switch-on phase," this paragraph is best
read as teaching that charging occurs as soon as the switch is switched-on
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(i.e., at the beginning/ immediately). 3 Similarly, the Specification also
states "at a point in time at which the semiconductor switch 8 is opened,
the capacitor 10 is charged approximately to twice the voltage of the output
capacitor 15." Id. at ,r 40 (emphasis added). This passage also suggests that
charging occurs "immediately" upon opening the switch.
The Examiner argues that the Specification teaches that charging of
the capacitor cannot occur until after flow through an inductor. Ans. 4--6.
Appellant, however, persuasively explains that its capacitor 10 and inductor
13 have voltage applied to them simultaneously and will thus charge
simultaneously. Reply Br. 4. While the presence of an inductor may slow
complete charging of the capacitor, the Examiner has not adequately
explained why the presence of an inductor would delay the point of time at
which the capacitor "begins" charging. Id. at 4--7.
Because the Examiner has not adequately established that Appellant's
Specification fails to support the claims at issue, we do not sustain this
rejection.
Rejection 2. The Examiner rejects claims 1-27 under 35 U.S.C.
§ 112(b) as indefinite. Final Act. 5. In particular, the Examiner determines
that the claims' recitation "the capacitor immediately begins charging when
the step-up converter switch is switch[ ed] on" is indefinite because the term
"immediately" is a term of degree and the Specification does not provide "a
standard for ascertaining the requisite degree." Id. at 5-6.
3 The meaning of "immediately" is further addressed below. Given our
interpretation of "immediately," this "as soon as" disclosure is
"immediately."
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During prosecution, "' [a] claim is indefinite when it contains words or
phrases whose meaning is unclear."' Ex parte McAward, Appeal 2015-
006416, slip op. at 11 (quoting In re Packard, 751 F.3d 1307, 1314 (Fed. Cir.
2014)). The use of relative terminology in patent claim language will not
automatically render the claim indefinite under 35 U.S.C. § 112, second
paragraph. See Seattle Box Co., Inc. v. Industrial Crating & Packing,
Inc., 731 F.2d 818 (Fed. Cir. 1984) (holding that trial court did not err in
holding that claim with recitation "substantially equal to" was definite
because specification indicated limits of the claims). The acceptability of
relative terminology in claim language depends on whether one of ordinary
skill in the art most closely pertaining to the invention would understand
what is claimed in light of the specification.
Appellant argues that a person of skill in the art would readily
understand the term "immediately" in the context of the claims at issue.
Appeal Br. 9--10; see also Reply Br. 9-10. We agree with Appellant that,
given the context provided by the Specification (see, e.g., Spec. ,r,r 10, 40 as
discussed above), a person of skill in the art would understand
"immediately" as meaning at the same moment in time while ignoring
negligibly small variations that result from the time required for
electromagnetic signal propagation within a circuit. The portions of the
Specification addressed above provide context to the meaning of
immediately.
We also emphasize, as Appellant does (Reply Br. 10), that the claims
only require that the capacitor immediately "begins charging when the step-
up converter switch is switched on" ( emphasis added). So long as there is
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no delay ( other than delay required for electromagnetic signal propagation)
in the capacitor starting to receive charge, the claim language would be met.
Because the Examiner has not established that Appellant's claims
contain words or phrases whose meaning is unclear, we do not sustain this
rejection.
Rejections 3-7. The Examiner rejects claims 1-5, 9, 26, and 27 under
35 U.S.C. § 102(a)(2) as anticipated by Machin. Final Act. 6. The
Examiner applies additional rationales and/or references to reach the
teachings of other claims. Id. at 6-19.
We focus solely on the Examiner's findings that relate to the
argument Appellant raises. In particular, the Examiner finds that Machin's
capacitor (C1) is arranged in the Machin circuit such that the capacitor
immediately begins charging when the step-up converter switch ( component
SWB) is switched on. Id. at 6-7; see also Machin Fig. 3. The Examiner
relies on this finding to reach the "such that the capacitor immediately
begins charging when the step-up converter switch is switched on" recitation
of each independent claim. See, e.g., Final Act. 8, 10, 12, 14, 15, 17.
Appellant argues that Machin does not teach a capacitator that
"immediately begins charging when the step-up converter switch is switched
on." Appeal Br. 11. Appellant's position is supported by a preponderance
of the evidence. Machin's Figure 4 provides a timing diagram that indicates
that current flows to diode DB at T0 (when switch SWB turns on (see, e.g.,
Machin 98:27-28)). Current, however, does not flow to the capacitor C1
until time T 2. Id. at Fig. 4. The evidence supports that the structure of diode
DB serves to delay the charging of capacitor C1. Machin Fig. 4, 6, 6:21-
7: 18. In particular, Machin explains that, at T 2, DB "reverts to a high
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impedence state (recovers)" and during this time period, excess current
"begins to flow in the loop formed by D 1, C 1 and Li'' with energy being
transferred to C1. Id. at 7:6-18; see also Appeal Br. 11-13; Reply Br. 11-
14.
The Examiner argues that if the claims' recitation that "the capacitor
immediately begins charging when the step-up converter switch is switched
on" is taught by the Specification (i.e., satisfies the written description
requirement) it must also be taught by Machin because Machin and the
Specification teach the same structure. Ans. 8-9. Appellant, however,
persuasively explains the distinction between the Specification and Machin.
The Specification explicitly teaches that the capacitor begins charging when
the switch is switched on. Spec. ,r,r 10, 40. As explained above, the best
reading of the Specification is that this beginning of charging happens
immediately. In contrast, as explained above, Machin explains that the
Machin diode D 1 delays charging of capacitor C1 so that C 1 does not begin
charging immediately when the switch is switched on. The Examiner does
not identify an equivalent diode in Appellant's Specification that necessarily
performs this same function ( and which would, therefore, weigh in favor of
the Examiner's written description position or weigh in favor of a broader
understanding of "immediately").
The Examiner also does not otherwise explain why it would have
been obvious to modify Machin to reach the recitations of Appellant's
claims, and the Examiner's additional reasoning and citations to additional
prior art references do not cure this error. We, therefore, do not sustain the
Examiner's obviousness rejections.
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DECISION
For the above reasons, we reverse the Examiner's rejections of
claims 1-2 7.
REVERSED
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