Ex Parte Augesky

Patent Trial and Appeal Board

Feb 17, 2017

13513033 (P.T.A.B. Feb. 17, 2017)

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.
13/513,033 05/31/2012 Christian Augesky 5029-965PUS-320144.000 6615
27799 7590
Cozen O'Connor
277 Park Avenue, 20th floor
NEW YORK, NY 10172
EXAMINER
AHMAD, SHAHZEB K
ART UNIT PAPER NUMBER
2838
NOTIFICATION DATE DELIVERY MODE
02/22/2017 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):
patentsecretary @ cozen. com
patentdocket@cozen.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTIAN AUGESKY
Appeal 2016-001247
Application 13/513,033
Technology Center 2800
Before CATHERINE Q. TIMM, LINDA M. GAUDETTE, and
WESLEY B. DERRICK, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-001247
Application 13/513,033
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision2 finally rejecting claims 13—21 and 24—27. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
Appellant relies on limitations common to independent claims 13 and
24 in support of patentability of all appealed claims. See App. Br. 7. For
reference, claim 13 is reproduced below:
13. A flux converter for converting an input-side AC voltage
into an output-side DC voltage to provide a power factor
correction, comprising:
a transformer having at least two serially arranged
primary windings;
a secondary winding wound in a same direction as the
plurality of serially arranged primary windings;
a storage capacitor in series with a first primary winding
of the plurality of serially arranged primary windings;
a first switch for switching the storage capacitor to the
input-side AC voltage through rectification elements in a
clocked manner, and
a second switch for switching a second primary winding
of the plurality of serially arranged primary windings to the
storage capacitor in a clocked manner.
Claims App’x, filed Aug. 21, 2015, in response to the July 24, 2015,
Notification of Non-Compliant Appeal Brief (emphasis added).
The claims stand rejected under pre-AIA 35 U.S.C. § 103(a) as
follows (see Examiner’s Answer mailed Sept. 15, 2015 (“Ans.”), 2):
1 Appellants identify the real party in interest as Siemens AG. Appeal Brief
filed Apr. 30, 2015 (“App. Br.”), 2.
2 Final Office Action mailed Sept. 11, 2014 (“Final Act.”).
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Appeal 2016-001247
Application 13/513,033
1. claims 13, 14, 17, 19, 20, and 24—27 over Kuwabara (US
2004/0252528 Al, pub. Dec. 16, 2004);
2. claims 15 and 16 over Kuwabara in view of Sase et al. (US
2010/0232180 Al, pub. Sept. 16, 2010);
3. claim 18 over Kuwabara in view of Ho et al. (US 5,751,561,
iss. May 12, 1998); and
4. claim 21 over Kuwabara in view of Yamaguchi et al. (US
2009/0316444 Al, pub. Dec. 24, 2009).
The Examiner finds Kuwabara describes, in connection with Figure 4,
a device that includes all features of the flux converter recited in claims 13
and 24 with the exception that Kuwabara’s “first switch” (switching element
24) is not configured “for switching the storage capacitor to the input-side
AC voltage through rectification elements in a clocked manner” as required
by claims 13 and 24. See Final Act. 5—6, 9—12. The Examiner finds
Kuwabara describes, in connection with Figure 6, a prior art embodiment
“wherein the storage capacitor is connectable in a clocked manner to the
input-side alternating voltage by the rectification elements to the first
switch” (component 14). Id. at 7, 12. The Examiner finds one of ordinary
skill in the art would have modified Kuwabara’s Figure 4 embodiment “to
incorporate a power factor correction method and a first switch connecting a
storage capacitor” as described in the Figure 6 prior art embodiment for the
purpose of eliminating the higher harmonic components from the input
current. Id.
Appellant argues the evidence does not support the Examiner’s
finding that one of ordinary skill in the art would have had a reason to
modify Kuwabara’s Figure 4 embodiment to include a first switch having
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Appeal 2016-001247
Application 13/513,033
the capabilities recited in claims 13 and 24. See, generally, App. Br. 4—6.
Appellant argues Kuwabara’s Figure 4 and Figure 6 embodiments utilize
different circuit designs to achieve the same results. See App. Br. 5;
compare Kuwabara 15 (describing Figure 6 as illlustrating a device that
improves power factor and eliminates the higher harmonic components in
the input current) with id. 140 (describing Figure 4 as illustrating a circuit
that enhances power factor and can suppress the higher harmonic waves).
Appellant argues the ordinary artisan would not have had a reason to change
the principle of operation of the Figure 4 embodiment based on the Figure 6
embodiment, noting that Kuwabara describes the Figure 6 embodiment as
having a number of drawbacks, including the requirement for two separate
control circuits, making the device of this embodiment more complicated
and costly. App. Br. 5 (citing Kuwabara 110).
The Examiner, in response, clarifies that the rejection is based on a
finding that one of ordinary skill in the art, upon considering the Figure 6
prior art embodiment, would have modified the Figure 4 embodiment by
moving Kuwabara’s first switch (switching element 24) to a connection
point before capacitor 6. Ans. 3. The Examiner contends that “whether this
increases cost or complexity is not a concern as both circuits are looking to
achieve less harmonic noise,” and maintains one of ordinary skill in the art
would have had the requisite skills to provide the necessary controllers for
operation of Kuwabara’s first and second switches in the modified Figure 4
embodiment. Id. at 4.
Appellant, in the Reply Brief (filed Oct. 30, 2015 (“Reply Br.”)),
continues to assert that the Examiner has not explained adequately why one
of ordinary skill in the art would have modified Kuwabara’s Figure 4
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Appeal 2016-001247
Application 13/513,033
embodiment, which already has the benefit of reducing higher harmonic
components, to include the design used in the Figure 6 embodiment for
reducing harmonic noise. See Reply Br. 2—3.
Although one of ordinary skill in the art might not be deterred from
making a design modification due to an increase in cost or complexity (see
In re Farrenkopf, 713 F.2d 714, 718 (Fed. Cir. 1983)), the ordinary artisan
certainly would weigh such drawbacks against the benefits of making the
modification. We agree with Appellant that the Examiner has not explained
how the proposed modification of Kuwabara’s Figure 4 embodiment
provides a benefit or solution to a problem that is not addressed adequately
by the Figure 4 embodiment. The Examiner has not identified evidence to
support a finding that one of ordinary skill in the art would have expected
that incorporating the Figure 6 design for reducing harmonic noise into the
Figure 4 circuit would provide a further reduction in harmonic noise.
Moreover, the Examiner has not identified evidence to support a finding that
one of ordinary skill in the art would have viewed any improvement
achieved by the proposed modification to the Figure 4 embodiment as
outweighing the numerous drawbacks associated with the Figure 6 design.
See, e.g., Kuwabara 11, 45 (identifying problems in the Figure 6 design
that are addressed by the Figure 4 embodiment).
For these reasons, we find the Examiner’s obviousness determination
is based on improper hindsight reconstruction. Accordingly, we do not
sustain the Examiner’s rejections of claims 13—21 and 24—27.
REVERSED
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