SYNQOR, INC.

Patent Trials and Appeals Board

Dec 18, 2020

2020004156 (P.T.A.B. Dec. 18, 2020)

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.
90/014,180 09/11/2018 7072190 X55579 3642
7055 7590 12/18/2020
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
EXAMINER
NGUYEN, MINH T
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
12/18/2020 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 SYNQOR, Inc.
Patent Owner and Appellant
____________________

Appeal 2020-004156
Reexamination Control 90/014,1801
Patent No. US 7,072,1902
Technology Center 3900
____________________

Before JAMES T. MOORE, JOHN A. JEFFERY, and
DENISE M. POTHIER, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL

1 Corrected Request (“Corrected Req.”) filed by Vicor Corporation on
September 11, 2018. Hereinafter referred to as “the ’180 Corrected
Request.” The original Request was filed August 6, 2018 but rejected for
including rebuttal to Patent Owner’s arguments in a different reexamination
proceeding and failing to clearly state a substantial new question of
patentability.

2 Issued July 4, 2006, to Martin Schlecht and assigned to SynQor, Inc. (the
“’190 patent”). The ’190 patent issued from Application 10/812,314, filed
March 29, 2004 (“the ’314 Application.”).

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STATEMENT OF THE CASE
Patent Owner SynQor appeals3 under 35 U.S.C. §§ 134(b) and 315(a)
(2002) from the rejection of claims 1–3, 5–10, 13–19, 24–26, 28, and 31 as
set forth in the Final Office Action (“Final Act.”) mailed August 9, 2018.
The Examiner mailed an Examiner’s Answer (“Ans.”) on March 12, 2020.
The Patent Owner filed a Reply Brief on May 11, 2020. Oral argument was
conducted before a panel of this Board on August 5, 2020, and a transcript
of the proceedings will be made of record. We have jurisdiction under 35
U.S.C. §§ 134 and 315.
The reexamination proceedings are related to a litigation filed against
Requester by Patent Owner in the Eastern District of Texas. See, e.g.,
SynQor, Inc. v. Vicor Corp., Civil Action No. 2:14-cv-00287-MHS-CMC
(E.D. Tex.) (hereinafter “the Texas Litigation”). That litigation is said to be
stayed pending the outcome of these reexamination proceedings.
The ’190 patent was successfully asserted against another party and
found to be not invalid. Damages were awarded, and the judgment
confirmed in SynQor, Inc. v. Artesyn Technologies., Inc., 709 F.3d 1365
(Fed. Cir. 2013) (hereinafter “SynQor I”).
On August 19, 2009 Murata Manufacturing filed inter partes
reexamination request 95/001,702 (“the ’702 reexamination”). A
reexamination certificate issued confirming the patentability of claims 1–33
in that proceeding and adding claims 34–38.

3 SynQor’s Appeal Brief (“Appeal Br.”) was filed December 6, 2019.
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On August 5, 2011 Vicor filed inter partes reexamination 95/001,702
against this patent as well. The Examiner found all claims, i.e. pending
claims 1-38, to be unpatentable. After an appeal to the Board4 and
subsequently to the Court of Appeals for the Federal Circuit,5 claims 20-23,
27, 29, 30, 32, and 33 were found to be anticipated by the combination of
Steigerwald US Patent 5,377,090 and Steigerwald US Patent 5,274,539.
On remand from the court to the Board, another panel of this Board
subsequently found claims 1–33 and 35–38 unpatentable as obvious over the
combined Steigerwald reference and other art, and entered a new
obviousness rejection against claim 34.6 That decision became final and
appealable on February 20, 2019.7 A notice of appeal to the United States
Court of Appeals for the Federal Circuit has been filed.8

4 Appeal No. 2014-001733; the Board reversed all pending rejections in its
Decision of April 10, 2014. The panel consisted of Judges James T. Moore,
Stephen C. Siu, and Denise M. Pothier.

5 Vicor Corp. v. SynQor, Inc., 603 F. App’x 969 (Fed. Cir. 2015). The Court
found claims 20–23, 27, 29, 30, 32, and 33 to be anticipated by the
combination of Steigerwald US Patent 5,377,090 and Steigerwald US Patent
5,274,539, vacated the remainder of the decision, and remanded to the Board
for further proceedings.

6 Appeal 2014-001733, Decision entered May 2, 2016.

7 Appeal 2018-000038, Decision entered February 20, 2019.

8 Notice of Appeal to the Federal Circuit, filed March 27, 2019. Federal
Circuit Docket Number 19-1704. Oral Argument took place May 8, 2020.
To date, no decision has issued. That decision may affect the ultimate
outcome of this decision.

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Neither Steigerwald reference is at issue in this appeal. However, in
another case involving Requester and Patent Owner concerning related US
Patent 7,564,702 (the ’702 patent”),9 the Federal Circuit affirmed certain
relevant findings concerning one of the prior art references as discussed
hereinafter.
We REVERSE the rejection of record in this proceeding.
ANALYSIS
The ’190 patent concerns power conversion. The claims generally
describe a two-stage direct current to direct current power conversion
system. The two stages are separate – one for isolation, and one for the
actual voltage conversions needed. The combination of these separate stages
is said to provide nearly lossless conversion. See ’190 patent, Abstr.; 4:33
et. seq., and Figure 1.
As Patent Owner puts it, the ’190 patent power system is more
efficient (dissipates less power and heat), and smaller (takes up less space on
a load board) than the prior art systems. Appeal Br. 83. Conventional
wisdom, we are told, as regards then-existing distributed power architecture,
indicated that making converters smaller reduced efficiency. Id. The ’190
patent is said to provide smaller, more efficient converters. Id.
According to Patent Owner, Dr. Schlecht took the isolating/regulating
board-mounted converters used in distributed power architecture systems,
split the isolation and regulation functions into two different “stages,” and
increased the efficiency of the isolation stage. Id.

9 Vicor Corporation v. SynQor, Inc., 2017 U.S. App. Lexis 16599, *9–*11
(Fed. Cir. Aug. 30, 2017) (“Vicor I”) (Exhibit 13 to Appeal Brief, 4).
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This idea was said to be “radical” because, although multiple-stage
converters had been used many years earlier, the industry had largely
abandoned them as inefficient and wasteful of board space compared to
single-stage converters. Dr. Schlecht testifies that he realized he could make
a two-stage system that would be efficient and compact, and would be
especially suited for boards that needed multiple voltages. Id., citing Ex. 26,
9–10.
Substantial technical detail is provided on implementingthe circuitry
of the invention, including the use of uncoupled transformers. ’190 patent,
4:62–6:49. This detail further includes connecting the transformer windings
through metal oxide semiconductor field effect transistors (“MOSFETs”),
switching the transistors in a switching cycle to drive the waveform, and the
parallel controlled and uncontrolled rectifiers. Id.
Claim 1 is illustrative of the claimed invention, and reproduced below,
with paragraphing added for sake of clarity.
1. A power converter system comprising:
a DC power source;
a non-regulating isolation stage comprising:
a primary transformer winding circuit having at least one
primary winding connected to the source; and
a secondary transformer winding circuit having at least one
secondary winding coupled to the at least one primary winding and
having plural controlled rectifiers, each having a parallel uncontrolled
rectifier and each connected to a secondary winding, each controlled
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rectifier being turned on and off in synchronization with the voltage
waveform across a primary winding to provide an output,
each primary winding having a voltage waveform with a fixed
duty cycle and transition times which are short relative to the on-state
and off-state times of the controlled rectifiers; and
a plurality of non-isolating regulation stages, each receiving the
output of the isolation stage and regulating a regulation stage output
while the fixed duty cycle of the isolation stage is maintained.

EVIDENCE OF RECORD
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Abraham I. Pressman, Switching and Linear Power Supply Power
Converter Design, Hayden Book Company, New Jersey (1977)
(hereinafter “Pressman”).

MOSPOWER Applications Handbook, Siliconix, Inc. (Rudolf P.
Severns ed.,1984) (hereinafter “MOSPOWER”).

THE REJECTION
I. Claims 1–3, 5–10, 13–19, 24–26, 28, and 31 stand rejected under
35 U.S.C. § 103(a) as obvious over Pressman in view of MOSPOWER.

GENERAL ISSUES
The Patent Owner asserts two issues concerning the propriety of this
reexamination. First, Patent Owner asserts the ’180 Corrected Request does
not set forth a substantial new question of patentability. Appeal Br. 13–14.
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Second, Patent Owner asserts that this reexamination proceeding should be
dismissed under 35 U.S.C. § 325(d). Id. at 15.
As these issues could result in the merits decision being moot, we
address them first.

I. 35 U.S.C. § 325(d)
35 U.S.C. § 325(d) provides that:
Notwithstanding sections 135(a), 2512, and 252, and chapter 30,
during the pendency of any post grant review under this chapter, if
another proceeding or matter involving the patent is before the Office,
the Director may determine the manner in which the post-grant review
or other matter may proceed, including providing for the stay,
transfer, consolidation, or termination of any such matter or
proceeding. In determining whether to institute or order a proceeding
under this chapter, chapter 30, or chapter 31, the Director may take
into account whether, and reject the petition or request because, the
same or substantially the same prior art or arguments previously were
presented to the Office.

Patent Owner filed a Petition under 37 C.F.R. § 1.181(a) on
September 19, 2018, seeking to have the Director exercise his discretion and
reject the Request for ex parte reexamination under 35 U.S.C. § 325(d) as,
inter alia, repeating arguments made in a previous reexamination and as
being harassing. That Petition was denied by the Office of Patent Legal
Administration in a Decision mailed December 3, 2018.
Patent Owner nevertheless urges that the Examiner had jurisdiction to
consider whether, under 35 U.S.C. § 325(d), the ex parte reexamination
should not be instituted where, as here, the same or substantially the same
prior art and arguments have been previously presented to the Office. Patent
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Owner directs us to the Petition filed in this case on September 19, 2018,
addressing this argument, as well as its argument directed to the Request
failing to set forth a substantial new question of patentability.
Patent Owner asserts that the Examiner refused to address this
argument, asserting a lack of jurisdiction.
Patent Owner urges that the Examiner and the Board have jurisdiction
to consider issues under § 325(d), urging that for efficiency and to avoid
inconsistent results, the Board should likewise address § 325(d) issues in the
context of ex parte reexaminations. Appeal Br. 104–105.
According to the Patent Owner, the current reexamination “merely
asserts a combination of the same technical teachings asserted in [the ’702
reexamination] albeit using a different reference for one of the same
technical teachings.” Appeal Br. 8. Patent Owner also contends that
Requester relied upon both MOSPOWER and Pressman in its invalidity
contentions filed in the Texas Litigation on December 22, 2011. Id. at 8,
citing Ex. 21. It is stated that Vicor refers to the same figures, embodiments
and arguments (including the Pressman Alternative Embodiment, as
discussed below) of Pressman and MOSPOWER that Vicor now again
asserts in this proceeding. See Ex. 21.
Patent Owner asserts that Requester intentionally chose not to make
these arguments until this late stage as “strategic behavior” which 35 U.S.C.
§ 325(d) was enacted to prevent. Appeal Br. 8.
We note that Section 325(d) is permissive in nature, indicating that the
Director “may” determine the manner in which the post-grant review or
other matter may proceed. In this instance, the Director decided the petition
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via the Office of Patent Legal Administration. The Director specifically
found that “[t]he record, however, does not show that the MOSPOWER
reference, and the specific arguments with respect to the MOSPOWER
reference, were previously evaluated by the Office. Furthermore, the record
does not show that the combination of Pressman and MOSPOWER was
previously evaluated by the Office.” Petition Decision Dec. 3, 2018, 9.10
Whether or not the Examiner had jurisdiction to consider the issue is
not determinative. Rather, the Director considered and decided the issue in a
manner of his choosing. We are provided no persuasive reasoning that the
procedure was inconsistent with the intent or language of the statute. Even
if the issues of patentability should be considered together for the sake of
consistency, such does not make the Director’s choice how to proceed in this
proceeding somehow erroneous. The Director has rendered his decision.
Accordingly, we are not persuaded by this contention.
II. Substantial New Question of Patentability
An ex parte reexamination proceeding will not be ordered in the
absence of a substantial new question of patentability. 35 U.S.C. § 304; the
Manual of Patent Examining and Procedure (MPEP) § 2242.
For “a substantial new question of patentability” to be present,
it is only necessary that: (A) the prior art patents and/or printed
publications raise a substantial question of patentability regarding at
least one claim, i.e., the teaching of the (prior art) patents and printed
publications is such that a reasonable examiner would consider the

10 See also Advanced Bionics LLC v. Med-El Elekromedizinische Gerate
GmbH, IPR2019-01469 (PTAB Feb. 13, 2020)(precedential). As the
Director has concluded that the art fails the first prong of the test set forth
therein; i.e. being previously presented to the office, we also find this result
consistent with the guidance therein. See id. 8–9.
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teaching to be important in deciding whether or not the claim is
patentable; and (B) the same question of patentability as to the claim
has not been decided by the Office in an earlier concluded
examination or review of the patent, raised to or by the Office in a
pending reexamination or supplemental examination of the patent, or
decided in a final holding of invalidity (after all appeals) by a federal
court in a decision on the merits involving the claim. If a
reexamination proceeding was terminated/vacated without resolving
the substantial question of patentability question, it can be re-
presented in a new reexamination request. It is not necessary that a
“prima facie” case of unpatentability exist as to the claim in order for
“a substantial new question of patentability” to be present as to the
claim. Thus, “a substantial new question of patentability” as to a
patent claim could be present even if the examiner would not
necessarily reject the claim as either fully anticipated by, or obvious in
view of, the prior art patents or printed publications. As to the
importance of the difference between “a substantial new question of
patentability” and a “prima facie” case of unpatentability see
generally In re Etter, 756 F.2d 852, 857 n.5, 225 USPQ 1, 4 n.5 (Fed.
Cir. 1985).
. . . .
In a decision to order reexamination made on or after
November 2, 2002, reliance on old art does not necessarily preclude
the existence of a substantial new question of patentability that is
based exclusively on that old art. See Public Law 107-273, 116 Stat.
1758, 1899-1906 (2002), which expanded the scope of what qualifies
for a substantial new question of patentability upon which a
reexamination may be based. Determinations on whether a substantial
new question of patentability exists in such an instance shall be based
upon a fact-specific inquiry done on a case-by-case basis. For
example, a substantial new question of patentability may be based
solely on old art where the old art is being presented/viewed in a new
light, or in a different way, as compared with its use in the earlier
examination(s), in view of a material new argument or interpretation
presented in the request. Such material new argument or interpretation
may be based solely on claim scope of the patent being reexamined.
. . . .
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For any reexamination ordered on or after November 2, 2002,
the effective date of the statutory revision, reliance on previously
cited/considered art, i.e., “old art,” does not necessarily preclude the
existence of a substantial new question of patentability (SNQ) that is
based exclusively on that old art. Rather, determinations on whether a
SNQ exists in such an instance shall be based upon a fact-specific
inquiry done on a case-by-case basis.

MPEP § 2242.

Patent Owner asserts that the ’180 Corrected Request does not present
any new, non-cumulative, technological teachings not previously considered
by the Office in connection with the ’190 patent. Appeal Br. 13.
Specifically, Patent Owner asserts that a prior reexamination, 95/001,702,
addressed the same issues. In that reexamination, it is stated, Requester
relied on the same figures in Pressman for the same technological teachings,
in combination with the isolation stage of Figure 9 of Cobos.11
Patent Owner asserts that Figure 9 of Cobos is identical to Figure
11(a) of MOSPOWER with respect to the technical features important in this
reexamination proceeding. Patent Owner thus concludes that the ’180
Corrected Request does not contain a new technological teaching that has
not already been considered by the Office in connection with the ’190
patent. Appeal Br. 12–13.
We observe that the Request itself stated that:

11 J.A. Cobos & J. Uceda, “Low Output Voltage DC/DC Conversion,”
20th Int’l Conf. On Industrial Electronics, Control, and Instrumentation
1676–-81 (1994). (“Cobos”).

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This Corrected Request clarifies that the MOSPOWER
Applications Handbook is cited for its teaching of an isolation
stage using controlled rectifiers that:
• has a fixed (50%) duty cycle square-wave driving
waveform, AND, as such,
• is not pulse-width modulated to achieve regulation .

Requester respectfully submits that the teaching of the
MOSPOWER isolation stage having these characteristics in a
single reference represents a new, non-cumulative technological
teaching that has not previously been examined.

Corrected Req. 43.

The Requester further observed in the request that, although submitted
in an information disclosure statement to the office among multiple other
references, the MOSPOWER reference had neot been cited on the record in
a rejection or proposed rejection, and not in combination with another
reference. Id. at 45–46. This fact is not in material dispute.
The Requester amplified upon the MOSPOWER reference’s new use
in the rejection – specifically, that the MOSPOWER Applications Handbook
teaches a relevant circuit that uses square wave driving waveforms. Because
the waveforms are square, Requester asserts that they have nearly vertical
transitions in a voltage-time plot (the voltage changes in a very short amount
of time). This means, according to Requester, that the transitions are
indisputably “short” as required by the claims. Id. at 50–51.
This cited art is said to be different from that of Cobos, which teaches
pulse-width modulation, i.e. a regulated converter. Id. at 53–54.
Patent Owner is of the view that this is a repeat of Pressman and
Cobos in the ’702 reexamination. More specifically:
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Vicor argued to the Patent Office, in the 1702 Reexam, to
replace the isolation stage of the circuit depicted in Pressman
Fig. 3-4B (and the Pressman Alternative Embodiment) with the
isolation stage of Cobos. This is exactly what Vicar has
proposed in the present ’180 Reexam, but using the isolation
stage of MOSPOWER Fig. l l(a) instead of Cobos.
Appeal Br. 20.
According to Patent Owner, the isolation stage of Cobos “is identical
in all relevant technical respects to the isolation stage of Fig. 11 (a) of
MOSPOWER and Vicar relies on MOSPOWER for the same technological
teachings here as Cobos was relied upon in the 1702 Reexam.” Id.
The Examiner found, for two independent reasons, that there was a
substantial new question of patentability. Determination, Dec. 4, 2018, 8–9.
We focus on the one specifically stated in the request. Corrected Request,
43. Specifically, that the combination of Pressman and MOSPOWER is
presented in a different way and that MOSPOWER was not before the
Office in a rejection or proposed rejection. Ans. 21. More specifically, that
Pressman teaches many key limitations recited in independent claim 1 of the
’190 patent, while MOSPOWER describes the use of power MOSFETs in
rectification circuits for purposes of efficiency. Id. at 21–22; ’180 Corrected
Request, 43–44. The Examiner thus concluded that an SNQ existed.
Determination, 7–10.
On the specific facts of this case, we are persuaded that MOSPOWER
is sufficiently different from Cobos, even considering all Cobos’ and
MOSPOWER’s figures. Although the references are used in a similar way
in both proposed rejections, we find that the evidence supports the
Examiner’s conclusion that differences exist in the manner of rectification
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described therein and compatibility (e.g., the Examiner’s finding that no
resonant converter needs to be adapted). Determination, 9. Moreover, as
discussed above, at that time the MOSPOWER reference had not been
considered by the office in a meaningful and substantive way in a prior
proceeding.
Accordingly, we are not persuaded of error on this basis.
THE SUBSTANTIVE REJECTION
The Rejection of Claims 1–3, 5–10, 13–19, 24–26, 28, and 31 under
35 U.S.C. §103(a) as obvious
over Pressman in view of MOSPOWER.

Claim 1 reads as noted above. The major components are summed up
for convenience here as (1) a DC power source, (2) a non regulating
isolation stage with a primary transformer winding circuit with at least one
primary winding connected to the source, and a secondary winding circuit
coupled to the first winding and having a parallel uncontrolled rectifier
connected to the secondary winding controlled in a specified way, and (3) a
plurality of non-isolating regulation stages functioning in a specified way.
This rejection of claim 1 as presented in the Request was agreed with
by the Examiner as presenting a substantial new question of patentability.
Determination, 9; Non-Final Act. 3–15 (dated Mar. 15, 2019).
Level of Ordinary Skill in the Art
The Patent Owner agrees that the level of ordinary skill in the art is
adequately reflected by the following standard: a hypothetical person who,
in the power electronics field, likely would have a bachelor's degree in
electrical engineering and a couple of years of additional experience
possibly in graduate school or in industry. Appeal Br. 14 n.5, citing Ex. 45
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(Declaration of Dr. Martin F. Schlecht (hereinafter “Schlecht Decl.”).12 Dr.
Patrizio Vinciarelli also so testifies. Ex. 10 ¶ 6 (hereinafter “Vinciarelli
Decl.”).13 We agree and find that the art of record supports such a
determination.
Pressman
Pressman is a textbook that was “[w]ritten for both design engineer
and undergraduate with little or no knowledge of the power supply field and
the available design alternatives.” Corrected Req. 17, citing Pressman
(Preface).
The Pressman textbook is divided into three parts: The first part
contains chapters 1 and 2, which describe basic building blocks for power
supply systems, such as DC/ AC converters and switching regulators.
Pressman 1–73. The second part is chapter 3, which describes how to put
the building blocks together to form a variety of power supply systems.
Pressman 74–104. The third part contains chapters 4–9, which describe in

12 Dr. Schlecht is the named inventor of the ’190 patent and Chief Executive
Officer of SynQor, Inc. It could fairly be presumed that he has an interest in
the outcome of this proceeding. See, e.g., Exs. 26, 45. Despite this, we find
him qualified to testify as to the technical subject matter of this proceeding
based upon his education and experience. Ex. 26, passim. We credit his
testimony as appropriate herein.

13 Dr. Vinciarelli is CEO of Vicor Corporation. It could also fairly be
presumed that he has an interest in the outcome of this proceeding. Ex. 10.
Despite this, we find him qualified to testify as to the technical subject
matter of this proceeding based upon his education and experience. Id.,
passim. We also credit his testimony as appropriate herein.
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greater detail the construction of various building blocks. Pressman 105–
365; Corrected Req. 16–17.
Pressman describes a number of systems that “resemble the
arrangement” of components in the claims of the ’190 patent. Corrected
Req. 18. Figure 3-3 is reproduced below:

Figure 3-3 has an “unregulated input converter” (dc/dc converter).
The input converter is isolating, because it uses a transformer (“converter
with multiple secondaries”). The outputs of the converter lead to plural non-
isolating down-converter switching regulators (called “series switching
postregulators”). Accordingly, Pressman teaches a “single isolation stage to
drive multiple regulation stages.” Corrected Req. 19
Figure 3-4 B is reproduced below:
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Figure 3-4 B is a step block diagram of a preregulated converter

Pressman also states that Figure 3-3 can be used with only one
secondary winding. Specifically, that “[t]he schemes of Figs. 3-3 and 3-4
can be used with only one transformer secondary winding and one filter
capacitor to generate a multiplicity of different output voltages at high
efficiency as shown in Fig. 3-4B.” Pressman 83.
In other words, Pressman describes a combination of Figures 3-3 and
3-4B noted above, configured as having one winding and filter, as illustrated
below.

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The Figure is a Block Diagram of
a combination of Pressman Figures 3-3 and 3-4 B; Final Act. 4.

It bears noting that there is more than one change to arrive at this
above alternative embodiment. In addition to combining Figures 3–3 and 3–
4 B, the pre-regulator is dropped from between the DC power source and
converter in Figure 3–4.
Our reviewing court has previously weighed in on the description of
the Pressman reference. In a prior decision on a related patent, the court
determined such a further embodiment exists, “an alternative embodiment of
Figure 3-4(B) which omits a pre-regulator and adopts Figure 3-3’s front end.
This alternative embodiment would be a non-regulating isolation stage.”
See, Vicor I,* 9. (Exhibit 13, 4). We reference this embodiment as the
“Pressman Alternative Embodiment” hereinafter.

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MOSPOWER
The MOSPOWER Applications Handbook is a 1984 textbook. The
Handbook is said to serve as “a source of detailed, up-to-date information on
device characteristics and circuit applications” of power MOSFETs.
MOSPOWER, p. xiii. As explained in the Handbook:
The book is divided into four sections. Chapters 1 through 3 discuss
the basic operation of MOSFETs. Chapters 4 and 5 deal with the
practical problems of using MOSFETs from a device point of view.
Chapter 6 is a collection of applications examples selected to
demonstrate how to use MOSFETs from a circuit point of view.
Chapter 7 provides an introduction to the testing and reliability of
MOSFETs.” Id.
In Chapter 5, MOSPOWER discusses using power MOSFETs in
rectification circuits. MOSPOWER explains that using power MOSFETs
for rectification will be more efficient than using diode rectifiers:
The efficiency penalty imposed by the offset voltage inherent in
Schottky and pn junction diodes has been a perennial thorn-in-the-
paw for designers of low voltage, high current power supplies.
Recent power MOSFET design advances allow designers to
economically replace Schottky diodes and provide higher conversion
efficiency in many applications. Using power MOSFETs will remove
that thorn.

MOSPOWER 5–69.

One figure of MOSPOWER is Figure 11 (a) illustrating a DC-DC
converter. It is reproduced below:

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Figure 11(a) is a schematic diagram of a
DC-DC converter with multiple rectifiers

It is worth noting that the incoming voltage source is regulated by a
pulse-width modulator; the figures cited to us occasionally omit this.
The Rejection
The Examiner has found that Pressman discloses a power converter
system with a DC power source as shown in the Figure representing the
Pressman Alternative Embodiment, which as noted above is a combination
of Fig. 3-3 and Fig. 3-4B of Pressman. Indeed, the Examiner found this to
be mandated in Vicor I. See Final Action, Mar. 15, 2019, 3.
The circuit blocks “rfi Line Filter” and “Rectifiers and Filter” on the
left are found by the Examiner to function as a DC power source, while the
circuit blocks on the right are found to describe a non-regulating isolation
stage. Id.; see combination of Pressman Figures 3-3 and 3-4 B, above.
These comprise the first two elements of claim 1. Id. at 3–4.
The Examiner has additionally found that one of the implemented
details of the Pressman “dc/dc Converter with Single Secondary” and
“Rectifier and Filter” circuit blocks of the Pressman’s Alternative
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Embodiment is shown in Figure 2-1 of Pressman at page 35. Id. at 5. The
Examiner has further found that the circuit (Figure 2-1 of Pressman,
reproduced below) teaches a primary transformer winding circuit having at
least one primary winding Np connected to the source. Id.

Figure 2-1 is an electronic schematic of
a primary transformer winding circuit.

The Examiner has additionally found that Figure 2-1 of Pressman
discloses a secondary transformer winding circuit having at least one
secondary winding Ns coupled to the at least one primary winding. Act. 5.
The Examiner has also found that Pressman does not disclose the
plural controlled rectifiers, each having a parallel uncontrolled rectifier and
each connected to a secondary winding, each controlled rectifier being
turned on and off in synchronization with the voltage waveform across a
primary winding to provide an output, each primary winding having a
voltage waveform with a fixed duty cycle and transition times which are
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short relative to the on-state and off-state times of the controlled rectifiers as
called for in claim 1. Id.
The Examiner has further found that the claimed plural controlled
rectifier configuration is well known to an ordinarily skilled artisan in the
related art. The Examiner specifically references the MOSPOWER
Applications Handbook as teaching this circuit. We are directed to Figure
11 (a) at page 5–73 (chapter 5, page 73) as evidence that such a circuit is
well known. Id.

Figure 11(a) of MOSPOWER(Original) is a
circuit diagram of a buck derived current-fed converter
The Examiner has found that Figure 11(a) of MOSPOWER teaches a
primary transformer winding circuit having at least one primary winding
connected to the source Vin, a secondary transformer winding circuit having
at least one secondary winding coupled to the at least one primary winding
and having plural controlled rectifiers, each having a parallel uncontrolled
rectifier and each connected to a secondary winding, each controlled rectifier
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being turned on and off in synchronization with the voltage waveform across
a primary winding to provide an output, each primary winding having a
voltage waveform with a fixed duty cycle and transition times which are
short relative to the on-state and off-state times of the controlled rectifiers.
Id. at 6.
The Examiner has concluded that it would have been obvious to a
person with ordinary skill in the art at the time the invention was made to
use the circuit taught in MOSPOWER to implement the “dc/ac Converter
with Single Secondary” and “Rectifier and Filter” block circuits in the
modified figure taught in Pressman. Id.
As evidence thereof, the Examiner points to MOSPOWER explicitly
teaching the advantages of using the circuit. Specifically:
The demand for low cost and high conversion efficiency is fueling the
overwhelming acceptance of switched-mode power supplies (SMPS).
To ensure cost-effective design of these inherently high-efficiency
supplies, switching frequencies must rise. When MOSPOWER
transistors are used as the switching elements in a power supply, the
50 kHz frequency barrier imposed by bipolar transistors is eliminated.
Removal of this barrier has allowed SMPS with operating frequencies
up to 500 kHz to be constructed. At these higher frequencies, the size
of the magnetic and capacitive component.s is decreased and the
switching losses are lower.”

Id. at 6–7, citing MOSPOWER 5–95.

The Examiner additionally finds, as regards the functioning of the
rectifiers, that each controlled rectifier is turned on and off in
synchronization with the voltage waveform across a primary winding to
provide an output, each primary winding having a voltage waveform with a
fixed duty cycle, and transition times which are short relative to the on-state
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and off-state times of the controlled rectifiers. Specifically, this is because
MOSPOWER teaches to turn each controlled rectifier ON for an ON-state
time and OFF for an OFF-state time, as illustrated in MOSPOWER Figure
11, reproduced below. Id. at 7.

MOSPOWER Partial Figure 11 (b) is
a graphical illustration of converter duty cycles

MOSPOWER, 5-73.
In Figure 11(b) above, the V1 and V2 waveforms are found to drive
each controlled rectifier ON and OFF. Final Act. 7.
The Examiner has also found that the voltage waveforms across all
the windings are synchronized because they are inductively coupled to one
another and the output of the controlled rectifiers provides a nonregulated,
isolated DC output because control voltages applied to switches in the
primary winding have 50 % cycle and it is inductively coupled. More
specifically, Figure 11(b) above was found to show that the transitions of the
synchronous rectifier gates are short relative to the on-state and off-state
times. Id.
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The Examiner acknowledges that, although the transition times in
Figure 11(b) are not directly the “transition times of the primary side voltage
waveform,” they are nonetheless representative of the transitions in the
primary-side waveform. This is said to be so because the waveforms in
Figure 11(b) are driven by the circuit in Figure 13, which uses the auxiliary
secondary windings. Id.
The auxiliary secondary windings are found to be inductively coupled
to the primary winding, and thus the auxiliary secondary winding voltage
waveform is the same as the primary side voltage waveform. Thus, the duty
cycle, frequency and relative length of the transition times of the primary-
side voltage waveform are found to be reflected in Figure 11(b). Id.
Finally, the Examiner has found that Pressman Figure 3–4 above
describes the plurality of non-isolating switching regulators (“switching
postregulators”) Id. at 8, concluding that the claimed subject matter would
have been obvious to one of ordinary skill in the art at the time the invention
was made. Id.
The Appeal
The Patent Owner asserts (among others) two major errors in the
Examiner’s stated case of obviousness. First, the rejection is said to not set
forth any evidence or rationale to support the conclusion that a person of
ordinary skill in the art would have combined the references to arrive at the
claimed invention. Appeal Br. 33–34. According to the Patent Owner, the
evidence shows that there are multiple reasons why a person of ordinary
skill in the art would not have combined the Pressman Alternative
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Embodiment with figures 11(a) and 13 of MOSPOWER (or substituted the
diodes D1/D2 with controlled rectifiers). Id.
Second, the Patent Owner also asserts hindsight, in that it asserts that
the rejection impermissibly uses the ’190 patent claims as a road map to pick
and choose portions of disparate references and circuits, and disregards what
a person having ordinary skill in the art would have understood at the time
of the invention—including what the actual references would have taught.
Appeal Br. 34.
Motivation to Combine
Patent Owner further urges in support of its arguments that the stated
motivation to combine is lacking because the circuit created by the
combination would not work, and the person of ordinary skill in the art
would not have any reasonable expectation of success. Appeal Br. 35. We
are provided by the testimony of Dr. Martin F. Schlecht, SC D. in support of
this contention. Schlecht Decl. Dr. Schlecht is an inventor on the ’190
patent, and as noted before, he has an interest in this proceeding as Chief
Executive Officer of SynQor, Inc. Id. ¶ 1. We acknowledge that this fact
reduces the probative value Dr. Schlecht’s declaration somewhat. See
Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776, F.2d 281 (Fed.
Cir. 1985) (noting that an expert's interest in the outcome of the case is a
factor in assessing the probative value of an expert opinion).
Dr. Schlecht testifies that isolation stage created by the Examiner
results in a stalemate or a “catch 22” because the synchronous rectifiers are
not able to turn off at the end of a half cycle. He further testifies that this is
because the voltage across the secondary and auxiliary windings must first
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be changed. He additionally states that these transformer windings’ voltages
cannot be changed unless and until the synchronous rectifier is first turned
off. Schlecht Decl. ¶¶ l6–27. The consequences of this are said to be a short
circuit and potential destruction of components. Id. ¶ 27. SynQor does not
point out if Dr. Schlecht testifies as to whether one of ordinary skill in the art
would know how to solve this problem or not.
The Examiner states in response that, in
[c]omparing circuits shown in Figure 2-1 of Pressman
and Figure 11 (a) of MOSPOWER, an ordinarily skilled artisan
would know that they both perform the same function as a
converter. The difference is that D1 and D2 in Figure 2-1 of
Pressman configured to function as uncontrolled rectifiers
whereas S1 and S2 in Figure 11 (a) of MOSPOWER configured
to function as controlled rectifiers. Using these teachings, the
Examiner finds that an ordinarily skilled artisan would not have
any difficulty in assembling detailed circuit for the “dc/ac
Converter with Single Secondary” and “Rectifier and Filter”
circuit blocks which require the rectifiers in the circuit blocks
configured to function as controlled rectifiers.
Ans. 26.
Dr. Vinciarelli, in his declaration filed with the Request, testifies that
“[i]t would have been obvious to use this non-regulating isolation stage as
the non-regulating isolation stage in the alternative embodiment to Fig. 3-4B
of Pressman.” Vinciarelli Decl. ¶ 35. The substitution would be as follows:
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The Figure is a block diagram of a
substitution of an isolating converter

Vinciarelli Decl. ¶ 35.
We are not persuaded that it is quite as simple a substitution as both
the Examiner and Dr. Vinciarelli state, for the reasons that follow later in
this decision.
We next turn to Patent Owner’s position that a person of ordinary skill
in the art would not be motivated to make the combination because the
Pressman Alternative Embodiment has an unregulated isolation stage, while
the circuit based on MOSPOWER’s Figure 11(a) because the output voltage
of the isolation stage in Fig. 11(a) is regulated. Appeal Br. 35.
In response, the Examiner states that “in a 103 rejection there is no
requirement for a limitation to be taught in both references. In this instant
case, Pressman teaches a non-regulating stage as discussed above, the only
issue here is whether it is obvious to replace the uncontrolled rectifiers in
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Pressman with controlled rectifiers.” Ans. 28. This statement is somewhat
conclusory in our view and does not explain the issue as to why one of
ordinary skill in the art would be motivated make such a change. Moreover,
it ignores the voltage input pre-regulator pulse width modulation in
MOSPOWER.
Patent Owner also asserts that the rejection uses impermissible
hindsight to pluck the needed elements from “the sea of prior art” evidenced
in part by the fact that MOSPOWER teaches against removing the pre-
regulator from the isolation stage of the Figure 11(a) circuit in the first place,
which is a necessary prerequisite to combining the modified isolation stage
of Figure l l(a) with the Pressman Alternative Embodiment. Appeal Br. 36.
More specifically, Patent Owner urges that the rejection takes “two
very large and substantial textbooks (each several hundred pages long) and
selectively extracts, using the claim limitations as the guide, the component
parts needed to meet the claim limitations. The Patent Owner further asserts
that the Examiner does so without considering the knowledge of a POSA at
the time of the invention or even the relevant teachings in the references
themselves, and does so without providing any evidence of motivation for
the proposed combination. Appeal Br. 37.
We find this argument somewhat compelling.
First, we observe that the rejections require an amended construct, to
arrive at Pressman’s Figure 3-4(B). The Request starts with Pressman’s
Figure 3-3, which is a straightforward, unregulated, isolating input converter
having multiple windings with postregulated outputs. Corrected Req. 19.
The Request then picks one of those embodiments – only one transformer
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secondary winding – and creates Pressman’s modified Figure 3-3. Id. But
there are further modifications. - – The pre-regulator must also be removed.
Id. at 21. Support for this is found within Pressman that the pre-regulator is
optional. Pressman 82. We are of the view that with these selections,
Pressman in fact describes a further modified Figure 3-3. This embodiment,
the Pressman Alternative Embodiment, has been determined to exist. But it
is one of several embodiments within Pressman. We thus query what drives
one of ordinary skill in the art to select it out of Pressman’s textbook to
combine with MOSPOWER.
We observe that Pressman also teaches that including the pre-
regulator makes a two-transistor push-pull dc/ac converter useable. Id., 82–
83. The Request notes that both Pressman and MOSPOWER use push-pull
configurations. Request, 69. But several reasons are proffered for removing
the MOSPOWER pre-regulator, including it would be made “to match
Pressman’s architecture” (Corrected Req. 75), which is somewhat circular
logic seemingly driven by the combination itself. Another reason is that the
Federal Circuit found the pre-regulator in Pressman to be optional. Id.at 76.
Again, this does not support the selection of the circuit for combination with
MOSPOWER.
These facts cut against the initial incorporation of MOSPOWER’s
regulation stage into Pressman. The pre-regulator of MOSPOWER is shown
as “PWM” in original Figure 11 (a) reproduced above, at the left. No
persuasive reason is given for one of ordinary skill in the art to pick an
example with an inconsistent regulator, then delete that regulator simply to
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"match” the regulated output circuit of the Pressman Alternative
Embodiment.
The Final Office Action also teaches to substitute the secondary
winding and the controlled and uncontrolled rectifiers of Figure 13 of
MOSPOWER into the combination for Pressman’s rectifier diodes.

Figure 13 is an Auxiliary Winding Gate Drive

The reasoning for this substitution is that:
It would have been obvious to a person with ordinary
skill in the art to use the circuit taught in MOSPOWER
Applications Handbook to implement the “dc/ac Converter with
Single Secondary” and “Rectifier and Filter” block circuits in
the modified Fig. taught in Pressman as discussed above.
The MOSPOWER Applications Handbook further explicitly
teaches advantages of using this circuit as follow.

“The demand for low cost and high conversion
efficiency is fueling the overwhelming acceptance
of switched-mode power supplies (SMPS). To
ensure cost-effective design of these inherently
high-efficiency supplies, switching frequencies
must rise. When MOSPOWER transistors are
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used as the switching elements in a power supply,
the 50 kHz frequency barrier imposed by bipolar
transistors is eliminated. Removal of this barrier
has allowed SMPS with operating frequencies up
to 500 kHz to be constructed. At these higher
frequencies, the size of the magnetic and
capacitive components is decreased and the
switching losses are lower.”
(MOSPOWER Applications Handbook, p 5-95).
Final Act. 6–7.
Thus, ultimately, the stated rationale for creating the construct, and
replacing the diodes of the modified construct with MOSFETs, is the use of
these transistors will increase efficiency at low cost, reduce size, and permit
higher frequencies.
Patent Owner, on the other hand, asserts that the level of skill in the
art and the state of the art would have guided one of ordinary skill in the art
away from the claimed combination. Appeal Br. 36.
We turn now to the Patent Owner’s evidence thereof, including the
challenges with the substitution.
Dr. Schlecht, the inventor of the ’190 patent, has provided an
extensive declaration, presented in this proceeding as Exhibit 45. In that
declaration, he testifies that he has a Doctorate of Science in Electrical
Engineering from the Massachusetts Institute of Technology. Ex. 45 ¶ 1.
Dr. Schlecht’s first observation is that the constructed circuit
including the isolation stage which is a combination of MOSPOWER’s
Figures 11(a) and 13 “does not work because it results in a stalemate that
causes the synchronous rectifiers to not operate as intended by failing to
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provide a relatively constant dc output voltage. This, in turn, will destroy
the components in the circuit.” Ex. 45 ¶ 16.
More specifically, Dr. Schlecht testifies that the output capacitor in
the contruct will keep the voltage across the top secondary winding positive,
and it cannot transition from positive to negative without turning off the top
synchronous rectifier. Id. ¶ 25. As a result, he testifies, “[t]he top
synchronous rectifier (S 1) is not able to transition to the ‘off’ state until the
top auxiliary winding voltage is no longer positive. The positive voltage
across the top auxiliary winding is what keeps the top synchronous rectifier
(S 1) in the ‘on’state.” Id. ¶ 26. According to Dr. Schlecht:
“This results in an impossible stalemate. The Rejection
Isolation Circuit is not working as intended. It would likely remain in
this state until the output voltage collapses due to the short circuit
currents that will flow. The currents could be large enough to damage
or destroy the components in the circuit.”

Id. ¶ 27.

We find this testimony credible, despite Dr. Schlecht’s interest in the
outcome. Part of the reason is that it is logical, and part because it is
supported by multiple instances of objective evidence, as discussed below.
The Examiner responds that “PO conveniently ignores the fact that an
ordinarily skilled artisan is not an automation. He would know that any
replacement would need some minor adjustments, however, these
adjustments would be within a level of one skill in the art.” Ans. 27.
We look to Dr. Patricio Vinciarelli’s declaration to see his point of
view on making the combination, and to see if he made any adjustments to
compensate for any issues with making the combination.
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Dr. Vinciarelli testifies that “[a] person of ordinary skill would
understand how to drive Ql BASE and Q2 BASE with control circuitry. The
waveforms have a switching cycle, which is simply the duration between
two high ➔ low transitions or two low➔high transitions . . . .” Id. ¶ 17.
He further notes that:
[a] person of ordinary skill would understand from Fig. 1l(a)
and 1l(b) that the primary side switches are driven with
complementary, alternating 50% duty cycle square waveforms
across the primary windings, and corresponding waveforms
across the secondary windings. Each power MOSFET switch
would therefore switch at the same frequency, which is the
inverse of the switching cycle, as explained in ¶ 17, above. The
switching cycle is divided between times when primary power
MOSFET and corresponding secondary controlled rectifiers are
ON, and times when they are OFF.
Id. ¶ 29.
Dr. Vinciarelli also testifies as to some of the design choices to be
made when fabricating the circuitry (for example, distinguishing between
voltage-fed and current-fed converters and the use of inductors). One telling
bit of testimony is that “[p]roper sizing of an inductor for a current-fed
topology was well within ordinary skill, and the choice between current-fed
and voltage-fed converters was a design choice that could be made within
ordinary skill. Id. ¶ 33
Further, he observes that
Pressman states that the components in the systems of
Chapter 3 are meant to be modular:
“All these requirements can be met with
different combinations and permutations of the
above basic building blocks. Systems can be
devised with standard electrically and
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mechanically configured building blocks requiring
only a minimum custom circuit change to fit a
large variety of applications.”
(Pressman, p. 74).
A person of ordinary skill would have understood this to
mean that blocks within Pressman’s block diagrams could be
modularly replaced, and that such replacements required only
minimal skill.
Id. ¶ 36.
We are generally persuaded by the Requester and rejection that one of
ordinary skill could implement certain changes and adaptations, but we are
left with the factual issue that the capacitor observed by Dr. Schlecht renders
the circuit inoperative. And neither the requester nor the rejection noticed or
dealt with that problem in a satisfactory manner.
Consequently, we agree with Patent Owner that the proposed
construct would require additional modifications to make the circuitry work.
As noted above, we do not agree that it is a simple substitution as implied by
the Examiner and Dr. Vinciarelli. We find persuasive Patent Owner’s
contention that “[t]he failure of the circuit to work as intended demonstrates
the complexity of utilizing synchronous rectification. . . .” Appeal Br. 41.
Patent Owner points out the technical complexity by referencing the
’190 patent itself, which we find also very persuasive objective evidence of
the technical complexity of constructing the circuit, including providing
detailed and lengthy teachings to solve the problem by using two separate
(uncoupled) transformers, with the gate drive of each synchronous rectifier
being derived from a winding on the other transformer.
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In other words, the inventor explains in detail the complexity and
technical challenges involved in making the circuit work as claimed, and
that the modification to Pressman using MOSPOWER proposed by the
rejection is more than a simple substitution as the Examiner found. The
’190 patent specifically tells us how to construct a working circuit as in the
claimed invention:
Notice also the benefit of using two, uncoupled
transformers. The voltage across a first transformer can be
changed, causing the channel of the MOSFET synchronous
rectifier transistor connected to a second transformer to be
turned off, before the voltage across the second transformer is
made to change. This could not be done if both primary and
both secondary windings were tightly coupled in the same
transformer since the voltages across all the windings would
have to change together.
’190 patent, col. 7, ll. 48–56.
We find the reliance of the rejection on the fact that the ’190 patent
made the circuit work, therefore the rejection circuit could be made to work,
to be particularly unpersuasive. See Final Act. 25–26; Ans. 29–30. We shall
not use the inventor’s own work against him.
Patent Owner next urges that a person of ordinary skill in the art
would not be motivated to use the isolation stage of MOSPOWER Figure
11(a) as a starting point because its output voltage is regulated. Appeal Br.
49.
More specifically, Patent Owner asserts that the circuit in
MOSPOWER Fig. 11(a) is a converter with a regulation stage followed by
an isolation stage, where the output voltage of the isolation stage is
regulated. That output voltage is regulated by sensing its output voltage,
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comparing it to a desired value and feeding the error back through a control
loop to vary the duty cycle of the pre-regulator which is pulse-width
modulation controlled. Appeal Br. 50.
We tend to agree with the Patent Owner that the overall logic for
removing the MOSPOWER pre-regulator is faulty – that Pressman
recommends pre-regulation be removed. We are left with the dilemma of
removing something essential for the overall functioning of the two-stage
MOSPOWER converter after the combination is made. Appeal Br. 52–53.
This also tends to weigh against the conclusion of obviousness.
We also are persuaded by the Patent Owner’s observations that the
complexity of providing synchronous gate drives is a reason that
synchronous rectification was seldom used. Appeal Br. 55, citing John J.
Kassakian & Martin F. Schlecht, High-Frequency High-Density Converters
for Distributed Power Supply Systems, 76 Proceedings of the IEEE 372
(1988) (Ex. 25-159).
Accordingly, we conclude that the combination of Pressman and
MOSPOWER alone does not establish a prima facie case of obviousness.
We need not reach, at this time, the issue of the voluminous secondary
considerations. We simply observe that there is some additional and
compelling evidence found therein that further supports the above finding
that SynQor’s success in solving the challenge discussed above was
significant.
For example, in the infringement action SynQor I, a competitor,
Artesyn, was found to have sold products that were found to have infringed
claims 2, 3, 7, 8, 10, and 19 of the ’190 patent. Reply Br. 13–14. The
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evidence underlying that judgment involved evidence of significant
skepticism and praise from a direct competitor for products infringing at
least claims 2, 8, and 19 (Br. 84):
Q. Was there initial skepticism or surprise in the field to Dr.
Schlecht’s claimed IBA inventions?
A. Yeah. One of the issues you have when you try and put two
converters in series, the conventional wisdom is that, you know, your
efficiency is always going to be less, because you take this efficiency,
and you put another one, and you multiple the two efficiencies
together. They’re always less than one, and so that ultimate number is
always usually smaller. But in this invention, the way he’s done it,
he’s got that isolation stage so efficient, that that number starts
approaching one. And so even if you multiply it by another number
here in series with that, you still wind up with a pretty efficient
system, comparable or better even in some cases I’ve seen.

Testimony of Mr. Mark Rice, Vice President of Artesyn Corporation,
defendant in SynQor I. Ex. 25-98, 168:16-169:5.
That same competitor acknowledged the difficulties in implementing
the invention of the ’190 patent.
Exhibit 25-49 is particularly informative when viewed in terms of
competitors developing a “second source” to SynQor:
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We find the powerful third party testimony and evidence in the record
further supports a conclusion that Pressman and MOSPOWER would not
have rendered the claimed subject matter obvious to one of ordinary skill in
the art.
CONCLUSIONS
We have carefully considered the evidence of record, including that of
secondary considerations submitted by the Patent Owner. We also have
considered the evidence submitted by the Requester in the ’180 Corrected
Request and the findings and conclusions of the Examiner in this regard.
The weight of the objective evidence, combined with the technical
difficulties in implementing the proposed combinations of references
adopted from the ’180 Corrected Request by the Examiner, lead us to the
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conclusion that the claims at issue would not have been obvious to one of
only ordinary skill in the art at the time the invention was made.
The record does not establish that claims 1–3, 5–10, 13–19, 24–26,
28, and 31 would have been obvious to one of ordinary skill in the relevant
art at the time of the effective date of the ’190 patent invention.
We, therefore, do not sustain the obviousness rejection of these
claims.
DECISION
The rejection of claims 1–3, 5–10, 13–19, 24–26, 28, and 31 under
35 U.S.C. § 103(a) as obvious over Pressman in view of MOSPOWER is
reversed.

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 5–10,
13–19, 24–
26, 28, 31
103 Pressman,
MOSPOWER
1–3, 5–10,
13–19, 24–
26, 28, 31

REVERSED

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PATENT OWNER:

GREENBLUM & BERNSTEIN, PLC
1950 Roland Clarke Place
Reston, VA 20191

THIRD PARTY REQUESTER:

SMITH BALUCH LLP (GENERAL)
376 Boylston St, Ste 401
Boston, MA 02116