ABB AG

Patent Trials and Appeals Board

Mar 29, 2021

2020004285 (P.T.A.B. Mar. 29, 2021)

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.
15/331,915 10/24/2016 Raymond Wee 815432 6871
95683 7590 03/29/2021
Leydig, Voit & Mayer, Ltd. (Frankfurt office)
Two Prudential Plaza, Suite 4900
180 North Stetson Avenue
Chicago, IL 60601-6731
EXAMINER
MUSLEH, MOHAMAD A
ART UNIT PAPER NUMBER
2837
NOTIFICATION DATE DELIVERY MODE
03/29/2021 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):
chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RAYMOND WEE
____________________

Appeal 2020-004285
Application 15/331,915
Technology Center 2800
____________________

Before ERIC S. FRAHM, JUSTIN BUSCH, and
JAMES W. DEJMEK, Administrative Patent Judges.

DEJMEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1–20. Oral arguments were heard on March 3, 2021. A transcript of
the hearing was placed in the record on March 22, 2021. We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We affirm.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2019). Appellant identifies ABB
Schweiz AG as the real party in interest. Appeal Br. 1.
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STATEMENT OF THE CASE
Introduction
Appellant’s disclosed and claimed invention generally relates to “a
switching converter circuit with an integrated transformer.” Spec. ¶ 2. In
particular with respect to the integrated transformer, Appellant describes a
structure that includes:
a double loop magnetic structure having an E I core geometry, a
primary winding, a secondary winding, a center leg, a core, an
air gap, an E-part, and an I-part, wherein the primary and
secondary windings are arranged side by side on the center leg
of the E-part of the core, wherein the air gap is arranged at a far
end of the primary winding between a free end of the center leg
and the I-part of the core.
Spec. ¶ 10.
Claims 1 and 2 are independent. Claim 1 is representative of the
subject matter on appeal and is reproduced below with the disputed
limitation emphasized in italics:
1. A switching converter circuit, comprising:
an integrated transformer,
wherein the transformer includes a double loop magnetic
structure having an E I core geometry, a primary winding, a
secondary winding, a center leg, a core, an air gap, an E-part, and
an I-part,
wherein the primary and secondary windings are arranged
side by side on the center leg of the E-part of the core,
wherein the air gap is arranged at a far end of the primary
winding between a free end of the center leg and the I-part of the
core, and
wherein the primary winding is configured to have a
charging voltage applied across it, the primary winding being
wound only around the center leg of the core.

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The Examiner’s Rejections
1. Claims 1–20 stand rejected under 35 U.S.C. § 112(a) for failing
to comply with the written description requirement. Final Act. 2–3.
2. Claims 1–20 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Zhang et al. (US 2008/0224809 A1; Sept. 18, 2008)
(“Zhang”) and Lu (US 2005/0258927 A1; Nov. 24, 2005). Final Act. 3–6.

ANALYSIS2
Rejection under 35 U.S.C. § 112(a)
The Examiner finds there is insufficient written description support
for the claim element reciting “the primary winding being wound only
around the center leg of the core,” as recited in claim 1 (and similarly recited
in claim 2). Final Act. 2–3. In particular, the Examiner explains that
although the Specification teaches the primary winding is wound on the
center leg, the Specification does not limit the primary winding to being
wound only on the center leg. Final Act. 2–3. The Examiner further
explains the limiting inclusion of “only” in the claim language “changes the
claim scope to only one way of winding that is not supported by the
[S]pecification.” Final Act. 3.
Appellant disputes the Examiner’s finding and asserts that verbatim
description is not required to comply with the written description

2 Throughout this Decision, we have considered the Appeal Brief, filed
December 20, 2019 (“Appeal Br.”); the Reply Brief, filed May 22, 2020
(“Reply Br.”); the transcript from the Oral Hearing, mailed March 22, 2021
(“Tr.”); the Examiner’s Answer, mailed March 27, 2020 (“Ans.”); and the
Final Office Action, mailed July 22, 2019 (“Final Act.”), from which this
Appeal is taken.
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requirement. Appeal Br. 4–5; Reply Br. 2–3. Rather, Appellant asserts the
Specification provides sufficient disclosure to convey to an ordinarily skilled
artisan that Appellant was in possession of the invention at the time the
application was filed. Appeal Br. 4–5. More specifically, Appellant
identifies several disclosures in the Specification which allegedly provide
support for the primary winding being wound only around the center leg of
the core. Appeal Br. 5 (citing Spec. ¶¶ 13–15, 17, 28, 29, 31, Fig. 1).
To satisfy the written description requirement, the disclosure must
reasonably convey to skilled artisans that Appellant possessed the claimed
invention as of the filing date. See Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Specifically, the
description must “clearly allow persons of ordinary skill in the art to
recognize that [the inventor] invented what is claimed” and
the test requires an objective inquiry into the four corners of the
specification from the perspective of a person of ordinary skill in
the art. Based on that inquiry, the specification must describe an
invention understandable to that skilled artisan and show that the
inventor actually invented the invention claimed.
Ariad Pharms., Inc., 598 F.3d at 1351 (internal quotations and citations
omitted).
Based on our review of the Specification, we agree with Appellant
that the Specification provides the requisite disclosure to convey to the
ordinarily skilled artisan that Appellant was in possession of an integrated
transformer wherein a primary winding is wound only around the center leg
of an E-part of a core. More particularly, we note the Specification
describes a transformer having a double loop magnetic structure with an E-I
geometry, “wherein the primary and secondary windings are placed side by
side on the center leg of the E – part of the core.” Spec. ¶ 13. In addition,
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the Specification describes “the only air gap [is] positioned between the free
end of the center leg and the frame-like structure.” Spec. ¶ 14. The
Specification further describes the configuration of the air gap at the far side
of the primary winding. Spec. ¶ 16.
Figure 1 is illustrative and is reproduced below.

Figure 1 illustrates a transformer configuration with an E I core
structure. Spec. ¶ 11. As shown in Figure 1, primary winding (3) is wound
three times around center leg (5) and is positioned between air gap (6) and
secondary winding (4).
Given the described positioning of the primary winding with respect
to the secondary winding and the air gap (see Spec. ¶¶ 13–17), we agree
with Appellant that one of ordinary skill in the art would recognize
Appellant was in possession of the claimed primary winding being wound
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only around the center leg of the magnetic structure. Moreover, regarding
the Examiner’s identification that the Specification expressly notes that
illustration and description are merely exemplary and not restrictive (see
Ans. 4; see also Spec. ¶ 40), we find that such disclosure relates to
modifications consistent with the disclosed structure (e.g., changing the
number of times the primary winding is wound around the center leg, the
material of the core, or the particular geometry of the magnetic structure)
and does not otherwise affect what the Specification expressly discloses.
For the reasons discussed supra, we are persuaded of Examiner error.
Accordingly, we do not sustain the Examiner’s rejection of claims 1–20
under 35 U.S.C. § 112(a) as failing to comply with the written description
requirement.

Rejection under 35 U.S.C. § 103
Appellant disputes the Examiner’s finding that Zhang teaches a
primary winding configured to have a changing voltage applied across it, the
primary winding being wound only around the center leg of the core.
Appeal Br. 5–7; Reply Br. 3–6. In particular, Appellant argues Zhang’s
alleged primary winding does not have a charging voltage applied across it
because it is connected in series to another winding, which is not wound
only around the center leg of the core. Appeal Br. 7 (citing Zhang ¶¶ 5–6,
24, Figs. 1, 7); Reply Br. 3–6.
We begin our analysis with a brief review of Zhang. Zhang generally
relates to “a magnetic part integrating a transformer and a coil.” Zhang ¶ 3.
Zhang describes an example insulating-type DC-DC converter circuit in
which the disclosed embodiment may be used. Zhang ¶¶ 5, 29.
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Figure 5 of Zhang is illustrative and is reproduced below.

Figure 5 of Zhang illustrates a circuit diagram of a DC-DC converter.
Zhang ¶ 20. In the schematic of Figure 5, Zhang shows an insulating-type
DC-DC converter that insulates a DC power source (1) and outputs a DC
voltage to a load (11). Zhang ¶ 5. In relevant part, Figure 5 of Zhang shows
a resonator block comprising a capacitor (4), series coil (5) and parallel coil
(6). Zhang ¶ 5. Figure 5 also includes a transformer (7) having a primary
winding on the input (left) side and secondary and tertiary windings (on the
right side of transformer (7)). Zhang ¶ 6.
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Figure 1 of Zhang, as relied on by the Examiner (see, e.g., Final
Act. 3–4), illustrates an exemplary embodiment of Zhang’s magnetic
integration structure and is reproduced below. Zhang ¶¶ 7, 10, 24.3

Figure 1 of Zhang illustrates an embodiment of the magnetic
integration structure. Zhang ¶ 16. In the disclosed embodiment, the
transformer (7) and coils (5, 6) of Figure 5 are integrated into the structure
illustrated in Figure 1. Zhang ¶¶ 6, 7, 24. Zhang describes the structure as

3 Zhang indicates that Figure 1 is similar to the background art described in
Figures 6 and 7. See Zhang ¶¶ 7, 24. We understand Zhang’s discussion
regarding the numbered components of Figures 6 and 7 to apply to similarly
numbered components of Figure 1.
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two E-type cores (21, 22) and an I-type core (24). Zhang ¶¶ 7, 11. The I-
type core (24) is between the two E-type cores (21, 22). Zhang ¶ 7.
Regarding the windings, Zhang identifies a primary winding (12), a
secondary winding (13), and a tertiary winding (14) of the transformer (7).
Zhang ¶¶ 6–7. In addition, Zhang describes winding (15) is used to form
series coil (5). Zhang ¶ 6.
More specifically as it relates to the transformer (7) functionality,
Zhang describes “by winding the primary winding and the secondary
winding and the tertiary winding of the transformer on the same magnetic
path, the primary winding and the secondary winding and the tertiary
winding are magnetically coupled to be operated as the transformer.” Zhang
¶ 7. Zhang further teaches the inductance of parallel coil (6) can be adjusted
by adjusting the number of turns of the primary winding (12) and the length
of the air gap between the center leg of the E-type core (21) and the I-type
core (24). See Zhang ¶¶ 6–7, Figs. 1, 6, 7. Zhang further teaches that “[a]
magnetic flux generated by applying a voltage to the primary winding 12 of
the transformer constitutes a path indicated by the arrow mark 18, and a
magnetic flux generated by making a current flow in the winding 15 of the
coil creates a path of the magnetic flux 19.” Zhang ¶ 7 (emphasis added).
The Examiner finds, in relevant part, Zhang teaches a transformer
including a double loop magnetic structure (18) having an E I core geometry
(21, 24) a primary winding (12), a secondary winding (13), and a center leg
(i.e., the middle leg of the E-type core (21)). Final Act. 3 (citing Zhang ¶¶ 7,
29, Fig. 1). Additionally, the Examiner finds Zhang teaches the primary
winding (12) “is configured to have a charging voltage applied across it, the
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primary winding being wound only around the center leg of the core,” as
recited in claim 1. Final Act. 3 (citing Zhang ¶ 7, Fig. 1); Ans. 8.
A reference is prior art for all that it teaches. Beckman Instruments,
Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989). Prior art
must be evaluated for what the reference would have fairly suggested to one
of ordinary skill in the art at the time of the invention. Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d 804, 807–08 (Fed. Cir. 1989); In re
Fracalossi, 681 F.2d 792, 794 n.1 (CCPA 1982) (A prior art reference’s
disclosure is not limited to its examples.); In re Boe, 355 F.2d 961, 965
(CCPA 1966) (All of the disclosures in a prior art reference “must be
evaluated for what they fairly teach one of ordinary skill in the art.”). See
also Manual of Patent Examining Procedure (“MPEP”) § 2123) (9th ed.,
Rev. 10.2019, June 2020). Moreover, “a non-enabling reference may
qualify as prior art for the purpose of determining obviousness under § 103.”
Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991).
Here, we find Zhang teaches a transformer (7) formed from an E I
core geometry (21, 24) and having a primary winding (12), a secondary
winding (13), and a tertiary winding (14). See Zhang, Figs. 1, 5. Further,
we find Zhang teaches the primary winding (12) is wound only around the
center leg of the E-part of the core. See Zhang ¶¶ 6, 7, Fig. 1. Moreover, we
find Zhang’s discussion of connecting a series coil (5)—i.e., an additional E-
shaped core (22) and winding (15) —to the transformer structure of Figure 1
does not otherwise vitiate Zhang’s express teachings of the transformer or
our findings. See, e.g., Zhang ¶¶ 6–7 (separately identifying the structure of
the transformer as not including winding (15), which is used to form series
coil (5)).
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Regarding Appellant’s argument that the charging voltage is not
applied to the primary winding, we are unpersuaded of Examiner error. As
an initial matter, we note that the entirety of discussion regarding a charging
voltage in Appellant’s Specification is a statement that “[b]y adjusting the
duty cycle of the charging voltage, that is the ratio of on/off time, the
amount of power transferred can be controlled.” Spec. ¶ 3. In addition, we
note that during the Oral Hearing, counsel indicated that in Appellant’s
invention the winding Appellant identifies as a primary winding is
performing the same function as Zhang’s primary winding (12) and series
coil (5) (i.e., winding (15)). Tr. 7 (“Exactly like what Zhang is doing, we
have a primary winding and series coil but ours is – the series coil in ours, us
being an integrated – fully integrated transformer, is combined together on
that same one leg.”); see also Tr. 12 (describing how the charging voltage is
applied, “in the context of our disclosure, it would have to be across both,
like in terms of Zhang, the series coil and the transformer coil”).
Even if Zhang were to apply a charging voltage to series coil (5) and
transformer (7), i.e., windings (12, 15), which we do not decide herein, we
would agree with the Examiner’s findings (see, e.g., Ans. 8) that Zhang
teaches having a charging voltage applied across its primary winding.
Further, based on Zhang’s express disclosure that a magnetic flux is
generated “by applying a voltage to the primary winding 12 of the
transformer,” we find Zhang teaches the disputed limitation.
Independent claim 2 is similar in scope to independent claim 1, but
recites “only one air gap being positioned between a free end of the center
leg and the frame-like structure.” Appellant argues Figure 1 of Zhang shows
two air gaps. Appeal Br. 7–8; Reply Br. 7.
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As discussed above, the Examiner relies on the E I core structure (21,
24) and windings (12, 13, 14) in Figure 1 of Zhang, which relate to Zhang’s
transformer (7), to teach Appellant’s claimed invention. See Final Act. 3–5.
This identified structure has only one center leg and only one air gap
positioned between the free end of the center leg and the frame-like structure
of the I-part of the core (24). Accordingly, we are not persuaded of
Examiner error.
We note in the rejection of claims 1 and 2, the Examiner finds Zhang
“discloses the claimed invention,” but buttresses the rejection with reference
to Lu’s Figure 1 also illustrating a primary winding wound only around the
center leg of an E-shaped core. Final Act. 4–5. For the reasons discussed
above, we find the Examiner’s identification of Lu to be cumulative to the
teachings of Zhang. See In re Kronig, 539 F.2d 1300, 1302 (CCPA 1976)
(explaining that limiting an affirmance of an obviousness rejection to fewer
than all of the references cited by the Examiner does not constitute a new
ground of rejection); In re Bush, 296 F.2d 491, 495–96 (CCPA 1961); see
also MPEP § 1207.03(a)(II). Thus, we do not find Appellant’s arguments
(see Appeal Br. 8–9) related to the combination of Zhang and Lu persuasive
that the Examiner’s rejection is in error.
Moreover, to the extent the Examiner relies on Lu’s teaching of
terminals attached to a primary winding (see, e.g., Final Act. 4, citing Lu,
Fig. 1 (terminals 27, 28)), we disagree with Appellant (see Appeal Br. 9) that
such a modification would “require a substantial reconstruction and
redesign” of Zhang. It is well settled that mere attorney arguments and
conclusory statements, which are unsupported by factual evidence, are
entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed.
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Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(attorney argument is not evidence). Additionally, as Zhang describes, the
structure identified by the Examiner is “a transformer and an inductance
component of a parallel coil.” Zhang, Abstract. We do not find the
inclusion of terminals on the ends of Zhang’s primary winding (12) would
require substantial reconstruction or redesign. Rather, Lu suggests that such
a modification would be within the capabilities of one of ordinary skill in the
art.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of independent
claims 1 and 2 under 35 U.S.C. § 103. In addition, we sustain the
Examiner’s rejection of claims 3–20, which depend directly or indirectly
from claims 1 or 2, and were not argued separately. See Appeal Br. 9; see
also 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION
We reverse the Examiner’s decision rejecting claims 1–20 under
35 U.S.C. § 112(a).
We affirm the Examiner’s decision rejecting claims 1–20 under
35 U.S.C. § 103.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1–20 112(a) Written description 1–20
1–20 103 Zhang, Lu 1–20
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Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
Overall
Outcome
1–20

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended. 37 C.F.R. § 1.136(a)(1)(iv); see 37 C.F.R.
§ 41.50(f).

AFFIRMED