Ex Parte 7272021 et al

Patent Trial and Appeal Board

May 5, 2015

95001637 (P.T.A.B. May. 5, 2015)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,637 05/31/2011 7272021 X43170 1997
7055 7590 05/05/2015
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
EXAMINER
NGUYEN, LINH M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
05/05/2015 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
____________________

VICOR CORPORATION
Requester

v.

SYNQOR, Inc.
Patent Owner and Appellant
____________________

Appeal 2014-007587
Reexamination Control 95/001,6371
Patent No. US 7,272,021 B22
Technology Center 3900
____________________

Before JAMES T. MOORE, STEPHEN C. SIU, and
DENISE M. POTHIER, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Patent Owner SynQor appeals under 35 U.S.C. §§ 134(b) and 315(a)
(2002) from the rejection of claims 1, 9, 15, 16, 21–27, 29–31, 39, 45–47,

1 Filed by Vicor Corporation on May 31, 2011.

2 Issued September 18, 2007 to Martin Schlecht and Richard Farrington, and
assigned to SynQor, Inc. (the “’021 patent”). The ’021 patent issued from
Application 11/407,699, filed November 23, 2006.
Appeal 2014-007587
Reexamination Control 95/001,637
Patent No. 7,272,021 B2

2
49, and 50 as set forth in the Right of Appeal Notice (“RAN”) mailed May
18, 2012. Patent Owner filed an Appeal Brief August 20, 2012. Requester
Vicor Corporation filed a Respondent Brief on September 20, 2012. The
Examiner mailed an Examiner’s Answer on February 26, 2014, which
incorporated the RAN by reference and maintained all rejections. Patent
Owner filed a Rebuttal Brief on March 26, 2014. Oral argument was
conducted before a panel of this Board on October 15, 2014 in combined
Reexamination Proceeding Appeal Numbers 2014-007362 and 2014-
007587, and a transcript of the proceedings is of record. We have
jurisdiction under 35 U.S.C. §§ 134 and 315.
We AFFIRM.
According to Patent Owner, U.S. Patent No. 7,564,702 was asserted in
SynQor, Inc. v. Artesyn Technologies, Inc. et al., Case No. 2:07-CV-497
(E.D. Tex.)(“SynQor I”) and in SynQor, Inc. v. Ericson, Inc., Case No. 2:11-
CV-00054-TJW-CE (E.D. Tex) (“SynQor II”). PO App. Br. 1. SynQor I
was appealed to the Federal Circuit (Br. 1), and it appears to have been
affirmed. It appears SynQor II lives on and has been severed into claims
against Cisco Systems (2:14-CV-286) and claims against Vicor Corporation
(2:14-CV-287) by order dated March 31, 2014, in the Eastern District of
Texas.
We note that this Board was recently reversed by the United States
Court of Appeals for the Federal Circuit in a related case, Vicor Corporation
v. SynQor, Inc., No. 2014-1578 (Fed. Cir. March 13, 2015)
(nonprecedential).
Appeal 2014-007587
Reexamination Control 95/001,637
Patent No. 7,272,021 B2

3
To the extent the evidence relied upon during litigation and decisions
of the District Courts and Federal Circuit are preclusive, persuasive or
informative, we have considered them as such.
The ’021 Patent concerns power conversion. The power converter
system comprises a normally non-regulating isolation stage and a plurality
of non-isolating regulation stages, each receiving the output of the isolation
stage and regulating a regulation stage output. ’021 Patent, 2:3–8.
Claim 1 is representative, and reproduced below.

1. A power converter system comprising:

a normally non-regulating isolation stage comprising:

a primary winding circuit;

a secondary winding circuit coupled to the primary
winding circuit, the secondary winding circuit
comprising a secondary transformer winding in
series with a controlled rectifier having a parallel
uncontrolled rectifier, the secondary winding
circuit providing a normally non-regulated output
of the isolation stage; and

a control circuit which controls duty cycle of the primary
winding circuit, the duty cycle causing
substantially uninterrupted flow of power through
the primary and secondary winding circuits during
normal operation; and

a plurality of non-isolating regulation stages, each receiving
the non-regulated output of the isolation stage and
regulating a regulation stage output.

’021 Patent 6:22–39.
Appeal 2014-007587
Reexamination Control 95/001,637
Patent No. 7,272,021 B2

4
EVIDENCE OF RECORD
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Steigerwald US 5,274,539 December 28, 1993

Steigerwald US 5,377,090 December 27, 1994
A.I. Pressman, Switching and Linear Power Supply, Power Converter
Design 1–372 (1977) (“Pressman”).

THE REJECTIONS
I. Claims 1, 9, 15, 21, 24, 26, 31, 39, 45, and 47 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Steigerwald ’090.
II. Claims 22, 23, 25, and 27–30 stand rejected under
35 U.S.C. § 103(a) over Steigerwald ’090 in view of the knowledge of one
of ordinary skill in the art.
III. Claim 49 stands rejected under 35 U.S.C. § 103(a) over
Steigerwald ’090 and Pressman.
IV. Claim 50 stands rejected under 35 U.S.C. § 103(a) over
Steigerwald ’090, Pressman, and Admitted Prior Art.3

I. The Rejection of Claims 1, 9, 15, 21, 24, 26, 31, 39, 45, and 47
under 35 U.S.C. § 102(b) as being anticipated by Steigerwald ’090.

This rejection was adopted from the Request, pages 5–21. RAN 4–5.
According to the Examiner through the adoption of the rejection in the
Request, Steigerwald ’090 incorporates Steigerwald ’539 by reference.

3 Said to be contained in U.S. Patent No. 5,999,417. RAN 5.
Appeal 2014-007587
Reexamination Control 95/001,637
Patent No. 7,272,021 B2

5
Accordingly, Steigerwald ’539 is considered by the Examiner to be part of
the disclosure of Steigerwald ’090. Req. 6.
More specifically, Steigerwald ’539 is said to describe a two stage
power converter, having a regulation stage followed by an isolation stage.
The isolation stage includes two transformers that operate in opposite phase,
each at a complementary 50% duty cycle. “As a consequence, the energy
storage capacitor Ce is always transformer coupled to the dc output.” Req.
6–7, citing Steigerwald ’539 3:33–38.
Steigerwald ’539 is said to teach further that, in alternative
embodiments, the diode rectifiers used in the isolation stage may be replaced
by synchronous rectifiers. Req. 7.
Steigerwald ’090 is said to teach an extension of Steigerwald ’539, in
which multiple output voltages may be provided. This is said to be
accomplished by replacing the single regulation stage, which in the ’539
patent is upstream of the isolation stage, with multiple regulation stages that
are downstream of the isolation stage. Because each regulation stage may
regulate a different output voltage, multiple output voltages may be provided
using only a single non-regulating isolation stage. Req. 8, citing Steigerwald
’090, 2:44–50.
Steigerwald ’090 contains a single figure, reproduced on the following
page.
Appeal 2014-007587
Reexamination Control 95/001,637
Patent No. 7,272,021 B2

6

The Figure is a circuit diagram of a power converter
The Steigerwald ’090 power converter illustrates diodes as rectifiers.
The Requester asserts that Steigerwald ’539 describes the use of diodes or
synchronous rectifiers as rectifiers. Req. 9, citing Figs 4 and 8 of
Steigerwald ’539, reproduced below.

Figure 4 is a circuit diagram of a power converter using diodes
Appeal 2014-007587
Reexamination Control 95/001,637
Patent No. 7,272,021 B2

7

Figure 8 is a circuit diagram of a power converter using controlled rectifiers

The Patent Owner takes issue with the incorporation by reference,
arguing that it is insufficient to be effective. PO App. Br. 14. Thus, it is
urged, as Steigerwald ’090 does not incorporate Steigerwald ’539 such that
the disclosures can be treated as a single document, none of the claims are
anticipated. Id. 20.
Patent Owner additionally observes that even assuming the
Steigerwald ’539 document is deemed incorporated, the alternative
embodiment set up by the Examiner is drawn from separate embodiments.
PO App. Br. 20. Patent Owner also urges that the embodiment does not
teach substantially uninterrupted power flow. Id. at 22.
Also of interest is the Federal Circuit’s recent decision in the related
appeal from inter partes reexamination proceeding Control No. 95/001,702,
noted above. Vicor Corporation v. SynQor, Inc., No. 2014-1578 (Fed. Cir.
March 13, 2015) (nonprecedential). While the decision in that case is not
Appeal 2014-007587
Reexamination Control 95/001,637
Patent No. 7,272,021 B2

8
precedential, it does have some persuasive value to the instant proceeding,
because the cited art is largely identical.
The Court was presented with this precise issue as to whether the
embodiments of the different Steigerwald references could be combined into
a single embodiment as Requester and the Examiner have done here. The
Federal Circuit stated that it was appropriate to do so, reversing an earlier
decision of this Board in favor of SynQor. The Federal Circuit’s decision is
reproduced below in pertinent part:
We therefore hold that Steigerwald ’090 incorporates by reference at
least those teachings of Steigerwald ’539 that relate to its capacitance-
multiplying converter 20. The incorporated teachings include
Steigerwald ’539’s alternative embodiment, which teaches a
substitution that takes place within the isolation stage:

In other alternative embodiments, such as those of FIGS. 7-9,
synchronous rectifiers SRa and SRb are used instead of diodes
CRa and CRb of FIGS. 4 and 6.

Steigerwald ’539 col.4 ll.58-60; see also id. at fig.4 (showing that
diodes CRa and CRb are within the capacitance multiplying converter
20).

Vicor Corporation v. SynQor, Inc., No. 2014-1578, slip op. at 10–11.
Further, the court concluded:
We accordingly hold that the combined reference teaches substituting
controlled rectifiers for diodes within the capacitance-multiplying
converter 20 of both Steigerwald ’539’s Figure 4 and Steigerwald
’090’s Figure 1. The combined reference teaches a single embodiment
that anticipates all elements of representative claim 20, and we reverse
the Board’s conclusion to the contrary.

Id., slip op. at 11.
Appeal 2014-007587
Reexamination Control 95/001,637
Patent No. 7,272,021 B2

9
The decision is premised in part upon the description of the reference
numeral 20 in Steigerwald ’090. The decision notes no such numeral
appears in the ’090 drawings, and its inclusion was enough for a person of
ordinary skill to understand that Steigerwald ’090 identified the capacitance
multiplying converter with reference numeral 20 in Steigerwald ’539 with
detailed particularity. Id., slip op. at 10.
With the Federal Circuit’s latest guidance in mind, we resolve the
embodiment issue in favor of the Requester. Cf. B&B Hardware v. Hargis
Industries, Inc., 135 S.Ct. 1293 (2015)(agency decision is grounds for issue
preclusion in litigation). That leaves open for resolution only the issue as to
whether the embodiment would deliver substantially uninterrupted power
flow raised by the Patent Owner.
According to the Patent Owner, the Steigerwald patents are
specifically directed to radar applications, which are characterized by the
typical pulsed load as illustrated in Steigerwald ’539 Figure 2. PO App. Br.
23. It is further urged that the bias voltage is applied to reduce the threshold
for power flow and does not expressly or inherently require power to flow
through the converter. Id.
While it is true that the applications of the Steigerwald patents are
for pulsed radar loads, the language of the claims broadly requires
“substantially uninterrupted flow of power through the primary and
secondary winding circuits during normal operation.” The Requester and
Examiner have observed that the converters of Steigerwald ’090 have
substantially uninterrupted power flow because the two transformers operate
Appeal 2014-007587
Reexamination Control 95/001,637
Patent No. 7,272,021 B2

10
180 degrees out of phase with a complementary 50% duty cycle Req. 11.
We therefore are not persuaded by the Patent Owner’s arguments of error.
We therefore affirm this rejection.
II. The rejection of Claims 22, 23, 25, and 27–30 under 35 U.S.C. §
103(a) over Steigerwald ’090

This rejection was adopted from the Request, pages 22–26. RAN 5.
According to the Examiner, these claims recite additional features that,
although not expressly described in Steigerwald ’090, add nothing of
patentable significance to claim 1. It has been found, relying upon the
declaration of Dr. Patricio Vinciarelli (“the Vinciarelli declaration”), that
these claims simply recite various known input and output voltages for the
isolation and regulation stages. Req. 22.
The Patent Owner urges that the Examiner erred in not determining
the level of ordinary skill in the field. PO App. Br. 24. It is urged that the
ordinary level of skill is quite low and that this failure to determine the level
of skill undermines the rejections. Id. at 25. It is also urged that the
Examiner erred by giving weight to the Vinciarelli Declaration.
We disagree.
According to the Examiner, the voltages were in use in the telecom
and computer industries prior to the earliest claimed priority date of the ’021
patent. The Examiner has determined that a person having ordinary skill in
the art at the time of the alleged inventions of the ’021 patent would have
implemented those voltages as the result of routine design choice for a
circuit for use in particular operating environments in which those voltages
are used. Id.
Appeal 2014-007587
Reexamination Control 95/001,637
Patent No. 7,272,021 B2

11
The Vinciarelli Declaration, at paragraphs 7 through 10, for example,
indicates with some specificity what a person of ordinary skill in the art
would have known about power supply design and the voltages used in
telecom equipment. Between the patents themselves and this testimony, we
find sufficient basis to determine the information a person of ordinary skill
would have known, consistent with the Examiner’s findings.
The Patent Owner raises numerous additional issues in its briefing,
most of which relate to evidence of secondary considerations. We agree
that there is substantial evidence of secondary considerations in the record.
Were the independent claims rejected as obvious, this evidence would have
a substantial bearing on the ultimate determination of patentability.
However, the independent claims are rejected as anticipated, upon which the
determination the secondary considerations has no bearing.
The dependent claims here recite specific voltage levels or voltage
levels to drive standard components. Claims 22 and 30 are exemplary and
reproduced below:
22. A power converter system as claimed in claim 1 wherein the
output of the isolation stage is about 12 volts.

30. A power converter system as claimed in claim 29 wherein the
regulation stage output is of a voltage level to drive logic circuitry.

The Examiner has determined there is a strong case of obviousness,
which has been put forth for claims directed to selecting a particular voltage
level for output. We observe that the secondary considerations are
principally directed to the bus architecture, for example of claim 1, although
Appeal 2014-007587
Reexamination Control 95/001,637
Patent No. 7,272,021 B2

12
there is some evidence in the record of a determination of direct and induced
infringement of claim 30 of the ’021 patent. Ex. A20 pages 9– 27.
We therefore determine that any error which might have existed in the
Examiner’s consideration of the evidence of secondary considerations is
harmless, as the presented evidence relates principally to features of the
independent claims rejected under an anticipation rejection and does not
overcome the case of obviousness for these dependent claims by providing
the requisite nexus to the dependent claim features.

III. The Rejection of Claim 49 under 35 U.S.C. § 103(a) over Steigerwald
’090 and Pressman

This rejection was adopted from the Requester’s comments submitted
November 30, 2011, pages 18-21. RAN 5.
Claim 49 recites a “power converter system as claimed in claim 1,
wherein the regulation stages are switching regulators.”
The Examiner has found that Steigerwald ’090 does not expressly
teach switching regulators as part of its regulating output stage. Pressman is
found to describe the use of switching regulators at the output stage. Nov.
30, 2011 Requester Comments at 18. Motivation is said to be found in
Pressman on page 81, where it states that “[i]f the larger component count of
a switching postregulator (Sect.1.2) is acceptable, even higher efficiencies
can be achieved.” Id. at 20.
The Patent Owner counters that switching regulators have an inductor
in the current path that is incompatible with the teaching of the Steigerwald
Appeal 2014-007587
Reexamination Control 95/001,637
Patent No. 7,272,021 B2

13
patents and would render the combination unsuitable for the intended use.
PO App. Br. 28.
As further evidence, we are pointed generally to the testimony of Dr.
Schlecht and Dr. Dickens said to be noting that the Steigerwald ’090 circuit
uses linear regulators, not switching regulators. Id at 29. However, we are
not provided with specific citation. Our review of Exhibit A1 (Dr. Schlecht
Declaration) fails to find support for this assertion. However, our review of
Dr. Dickens’ testimony in Exhibit A1D finds some level of support. Ex.
A1D ¶ 27–28.
Requester counters that Patent Owner’s argument is based entirely
upon what Steigerwald’s attorney argued during prosecution of its
applications, and not on the disclosure of the Steigerwald patents. Resp. Br.
29. Requester also urges that bias voltages would not share such a
restriction. Id. at 30. The Examiner has also observed that Steigerwald ’090
uses non-pulsed loads. RAN 7.
For the capacitance multiplier converter to perform its function
efficiently there is evidence in the record to support a conclusion that there
must be negligible or no impedance in the path between the converter's input
and the load. Dickens Decl. ¶ 10.
Steigerwald ’090’s sole Figure shows the schematic of the power
module without any inductance shown. Claim 1 of Steigerwald ’090 uses
the phrase ‘by a path lacking inductors’ seven times (elements a, d, e, h, i, j
and k), and the phrase appears four more times in claim 2 (the last four
elements). Moreover, the transformer is said to have a “leakage inductance
.... as low as possible because such leakage inductance, which appears as an
Appeal 2014-007587
Reexamination Control 95/001,637
Patent No. 7,272,021 B2

14
equivalent series inductance .... is an impedance .... causing ... a voltage drop
.... at the output.” Steigerwald ’539 patent, col. 3, line 65 - col. 4, line 4.
Dickens Decl. ¶ 11. A switching regulator has an inductor. Dickens Decl.
¶41.
However, Dr. Dickens also notes that Steigerwald ’090 teaches away
from resistance as well. Dickens Decl. ¶23A. Yet, the Federal Circuit
determined that Steigerwald has an embodiment which includes controlled
rectifiers in the capacitance multiplying converter of Steigerwald ’090 sole
Figure. Vicor, slip op. at 11. This determination by the Federal Circuit
weighs heavily against the Patent Owner’s position.
Lastly, as noted above, the evidence of secondary considerations are
therefore unavailing for the same reasons.
Accordingly, we are unpersuaded of error.

IV. The rejection of Claim 50 under 35 U.S.C. § 103(a) over
Steigerwald ’090, Pressman, and Admitted Prior Art

This rejection was adopted from the Requester’s comments filed
November 30, 2011 at pages 21-22. RAN 5–6.
Claim 50 reads as follows:
50. A power converter system as claimed in claim 1 wherein the
regulation stages are switching regulators, wherein the DC power
source provides a voltage within the range of 36 to 75 volts, and
wherein the regulation stage output is of a voltage level to drive logic
circuitry.

Appeal 2014-007587
Reexamination Control 95/001,637
Patent No. 7,272,021 B2

15
The Examiner has found that the voltage levels are admitted in the
specification of the 5,999,417 patent (parent to the ’021 Patent) as known in
the art. Id. at 21.
The Patent Owner asserts that this claim requires a switching
regulator, and substituting switching regulators would render Steigerwald
’090 unfit for its purpose. PO App Br. 68.
Also, as noted above, the evidence of record, including the
embodiment introducing resistance into the secondary stage, and the
secondary considerations, does not support a conclusion of error.

CONCLUSION
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 and the findings and
conclusions of the Examiner. Finally, the most recent guidance from the
Federal Circuit on the issue of the Steigerwald embodiments has been given
substantial weight in our decision.
We are unpersuaded of error.
ORDER
I. The rejection of Claims 1, 9, 15, 21, 24, 26, 31, 39, 45, and 47
under 35 U.S.C. § 102(b) as being anticipated by Steigerwald ’090 is
affirmed.
II. The rejection of Claims 22, 23, 25, and 27–30 under 35 U.S.C. §
103(a) over Steigerwald ’090 is affirmed.
Appeal 2014-007587
Reexamination Control 95/001,637
Patent No. 7,272,021 B2

16
III. The Rejection of Claim 49 under 35 U.S.C. § 103(a) over
Steigerwald ’090 and Pressman is affirmed.
IV. The rejection of Claim 50 under 35 U.S.C. § 103(a) over
Steigerwald ’090, Pressman, and Admitted Prior Art is affirmed.

AFFIRMED

Appeal 2014-007587
Reexamination Control 95/001,637
Patent No. 7,272,021 B2

17
PATENT OWNER:

GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191

THIRD PARTY REQUESTER:

TURNER BOYD LLP
2570 WEST EL CAMINO REAL
SUITE 380
MOUNTAIN VIEW, CA 94040

cu