Ex Parte Cavigelli

Board of Patent Appeals and Interferences

Mar 12, 2003

09289076 (B.P.A.I. Mar. 12, 2003)

The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GEORGE A. CAVIGELLI
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Appeal No. 2002-0558
Application No. 09/289,076
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HEARD: Feb. 5, 2003
____________
Before KRASS, RUGGIERO, and BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
A patent examiner rejected claims 1-24. The appellant appeals therefrom under
35 U.S.C. § 134(a). We affirm-in-part.
BACKGROUND
The invention at issue on appeal monitors current leaking between a high
voltage source and ground. In power switching stations, the quality of high voltage
insulators is paramount. According to the appellant, monitoring leakage current during
operation can provide information on the quality of such insulators. (Spec. at 1.)
Appeal No. 2002-0558 Page 2
Application No. 09/289,076
The invention includes a transformer and an amplifier. In turn, the transformer
comprises a primary wire and a secondary winding. For its part, the primary wire
carries a leakage current from an insulator for a high voltage conductor to ground. The
amplifier has two input terminals connected across the secondary winding of the
transformer and produces an output signal proportional to the leakage current. (Id.
at 1-2.)
A further understanding of the invention can be achieved by reading the following
claim.
1. Apparatus for monitoring leakage currents from an insulator for
a high voltage conductor to ground comprising:
a transformer comprising a primary wire and a secondary winding,
the secondary winding having a secondary resistance, the primary
wire constructed and arranged to carry a leakage current from the
insulator to the ground; and
an amplifier having an input connected to the secondary winding,
constructed and arranged to produce an output signal proportional to the
leakage current.
Claims 1 and 4 stand rejected under 35 U.S.C. § 102(b) as anticipated by U.S.
Patent No. 5,652,521 (“Meyer”). Claims 2, 3, and 5-24 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Meyer and U.S. Patent No. 3,881,149 (“Kiko”).
Appeal No. 2002-0558 Page 3
Application No. 09/289,076
OPINION
Our opinion addresses the following groups of claims:
• claims 1, 4, and 20-24
• claim 2, 3, and 6-8
• claims 5 and 9-19.
Claims 1, 4, and 20-24
Rather than reiterate the positions of the examiner or the appellant in toto, we
address the two points of contention therebetween. First, the examiner asserts, "Meyer
(US 5652521) teaches an apparatus for monitoring leakage current (IINSULATION 14) of an
insulator 12 from a high voltage conductor 2 to ground 10 (Fig. 2,3)." (Examiner's
Answer at 10.) He adds, "primary wire 30 is arranged to carry a leakage current 32
from insulator 20 to ground 10. . . ." (Id. at 3-4.) The examiner further asserts, "Meyer
also discloses an amplifier 93 having an input connected to a secondary winding 34
constructed and arranged to produce an output signal proportional to leakage current
(Fig. 5)." (Id. at 10.) The appellant alleges, "[t]he reference does not disclose
apparatus for monitoring leakage currents from an insulator for a high voltage
conductor to ground. The reference does not disclose a primary wire constructed and
arranged to carry leakage current from an insulator to the ground, nor an amplifier
having an input connected to the secondary winding constructed and arranged to
produce an output signal proportional to the leakage current." (Appeal Br. at 4.)
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Application No. 09/289,076
"Analysis begins with a key legal question -- what is the invention claimed?"
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567, 1 USPQ2d 1593, 1597 (Fed.
Cir. 1987). In answering the question, "the Board must give claims their broadest
reasonable construction. . . ." In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664,
1668 (Fed. Cir. 2000). "Moreover, limitations are not to be read into the claims from the
specification." In re Van Geuns, 988 F.2d 1181, 1184, 26 USPQ2d 1057, 1059 (Fed.
Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir.
1989)).
Here, claim 1 specifies in pertinent part the following limitations: "[a]pparatus for
monitoring leakage currents from an insulator for a high voltage conductor to ground
comprising . . . primary wire constructed and arranged to carry a leakage current from
the insulator to the ground; and an amplifier having an input connected to the
secondary winding, constructed and arranged to produce an output signal proportional
to the leakage current." Giving the claim its broadest, reasonable construction, the
limitations require an apparatus for monitoring leakage currents between an insulator
and ground comprising a wire for carrying a leakage current from the insulator to the
ground and an amplifier for generating a signal proportional to the leakage current.
Appeal No. 2002-0558 Page 5
Application No. 09/289,076
"Having construed the claim limitations at issue, we now compare the claims to
the prior art to determine if the prior art anticipates those claims." In re Cruciferous
Sprout Litig., 301 F.3d 1343, 1349, 64 USPQ2d 1202, 1206 (Fed. Cir. 2002).
"[A]nticipation is a question of fact." Hyatt, 211 F.3d at 1371, 54 USPQ2d at 1667
(citing Bischoff v. Wethered, 76 U.S. (9 Wall.) 812, 814-15 (1869); In re Schreiber, 128
F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). "A claim is anticipated . . .
if each and every element as set forth in the claim is found, either expressly or
inherently described, in a single prior art reference." Verdegaal Bros., Inc. v. Union Oil
Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987) (citing Structural
Rubber Prods. Co. v. Park Rubber Co., 749 F.2d 707, 715, 223 USPQ 1264, 1270
(Fed. Cir. 1984); Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548, 220 USPQ
193, 198 (Fed. Cir. 1983); Kalman v. Kimberly-Clark Corp., 713 F.2d760, 771, 218
USPQ 781, 789 (Fed. Cir. 1983)).
Here, we find that Meyer discloses an apparatus for monitoring leakage currents
between an insulator and ground. Specifically, the reference's "device [is] used in the
continuous, on-line, monitoring of the charging or leakage current of a step-graded or
capacitive insulated high voltage apparatus." Col. 3, ll. 18-20. We also find that the
device includes a wire for carrying a leakage current from the insulator to the ground.
Specifically, "lowest potential foil layer 26 is electrically connected to ground 10 with a
Appeal No. 2002-0558 Page 6
Application No. 09/289,076
conductive element 30 which provides a ground path for the insulation charging
current 32." Col. 6, ll. 5-8.
Meyer's device also includes an amplifier. Specifically, "coil assembly 34 is
electrically connected to a sensor electronic circuit or transmitter 38. . . . The
transmitter 38 performs the functions of amplifying and rectifying the sensor voltage
signal Vs." Id. at ll. 25-29 (emphasis added). Furthermore, we find that the transmitter,
which operates as an amplifier inter alia, generates a signal proportional to the leakage
current. Specifically, "[o]utput driver circuits in the transmitter 38 are used to modulate
a DC current I1 in a control loop 40. The modulation results in the current signal I1
containing a proportionate magnitude of the charging current 32." Id. at ll. 29-33
(emphasis added).
Second, the appellant argues, "[t]here is no disclosure of coil 34 having a
secondary resistance." (Appeal Br. at 5.) The examiner asserts, "[a] secondary
winding having a resistance is an inherent property of a winding."
Claim 1 specifies in pertinent part the following limitations: "a secondary winding,
the secondary winding having a secondary resistance. . . ." Giving the claim its
Appeal No. 2002-0558 Page 7
Application No. 09/289,076
broadest, reasonable construction, the limitations require a winding having some
resistance.
It is uncontested that Meyer's device includes a coil, which is a winding.
Specifically, "[a] wound, non-ferrous toroidal coil assembly 34 is positioned such that
the ground conductor 30 passes directly through the center of the toroidal coil, such
that the coil 34 links all of the magnetic flux generated by the charging current 32
passing through the conductor 30." Col. 6, ll. 8-13 (emphasis added).
We find that the reference's wound coil 34 inherently features a resistance. “To
establish inherency, the extrinsic evidence ‘must make clear that the missing
descriptive matter is necessarily present in the thing described in the reference, and
that it would be so recognized by persons of ordinary skill.’" In re Robertson, 169 F.3d
743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999) (quoting Continental Can Co. v.
Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991)). Here,
Kiko evidences that resistance is necessarily present in coils and windings.
Specifically, the reference discloses that a "winding 14d," col. 2, ll. 22-23, features a
"series resistance of winding 14d. . . ." Col. 4, l. 14. See also Robert L. Shrader,
Electronic Communication 80 (1985) (evidencing that "resistance exists in the[]
windings" of a transformer) (copy attached); Francis Weston Sears et al., University
Appeal No. 2002-0558 Page 8
Application No. 09/289,076
Physics 617 (3d ed. 1964) (evidencing that metal and alloy conductors posses some
resistivity) (copy attached). Therefore, we affirm the rejection of claim 1.
Claims that are not argued separately stand or fall together. In re Kaslow, 707
F.2d 1366, 1376, 217 USPQ 1089, 1096 (Fed. Cir. 1983) (citing In re Burckel, 592 F.2d
1175, 201 USPQ 67 (CCPA 1979)). When the patentability of a dependent claim is not
argued separately, in particular, the claim stands or falls with the claim from which it
depends. In re King, 801 F.2d 1324, 1325, 231 USPQ 136, 137 (Fed. Cir. 1986) (citing
In re Sernaker, 702 F.2d 989, 991, 217 USPQ 1, 3 (Fed. Cir. 1983); In re Burckel, 592
F.2d 1175, 1178-79, 201 USPQ 67, 70 (CCPA 1979)). Furthermore, “[m]erely pointing
out differences in what the claims cover is not an argument as to why the claims are
separately patentable.” 37 C.F.R. § 1.192(c)(7).
Here, although the appellant alleges, "[t]he claims do not stand or fall together,"
(Appeal Br. at 2), he argues claims 1 and 4 as a group. (Id. at 3-4). Furthermore, the
appellant fails to argue the patentability of claims 20-24 separately. Therefore, claims 4
and 20-24 fall with claim 1, and we affirm the rejections of claims 4 and claims 20-24.
Appeal No. 2002-0558 Page 9
Application No. 09/289,076
Claim 2, 3, and 6-8
Admitting that "Meyer did not expressly disclose a ferromagnetic transformer
core," (Examiner's Answer at 4), the examiner asserts, "[a] ferrite core transformer is
well known in the art having magnetic properties suitable for transformer action and
seen in the teaching of Kiko (US 3881149). Therefore it would have been obvious for
one of ordinary skill in the art to modify Meyer by providing a ferromagnetic transformer
core for transformer action." (Id. at 10.) The appellant argues, "combining the primary
and secondary references as proposed by the Examiner would destroy this important
function of the 'non-ferrous nature of the coil assembly 34' in the primary reference."
(Appeal Br. at 10.)
"[T]o establish obviousness based on a combination of the elements disclosed in
the prior art, there must be some motivation, suggestion or teaching of the desirability
of making the specific combination that was made by the applicants." In re Kotzab, 217
F.3d 1365, 1370, 55 USPQ2d 1313, 1316 (Fed. Cir. 2000) (citing In re Dance, 160 F.3d
1339, 1343, 48 USPQ2d 1635, 1637 (Fed. Cir. 1998); In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984)). Furthermore, "prior art references . . . must
be read as a whole and consideration must be given where the references diverge and
teach away from the claimed invention." Akzo N.V. v. U.S. Intn'l Trade Comm'n, 808
Appeal No. 2002-0558 Page 10
Application No. 09/289,076
F.2d 1471, 1481, 1 USPQ2d 1241, 1246 (Fed. Cir. 1986) (citing W.L. Gore & Assocs. v.
Garlock, 721 F.2d 1540, 1550, 220 USPQ 303, 311 (Fed. Cir. 1983)).
Here, Meyer purposefully uses a "non-ferrous toroidal coil assembly 34," col. 6,
ll. 9-10 (emphasis added), for a stated purpose. Namely, "[t]he non-ferrous nature of
the coil assembly 34 results in a low inductance coupling back into the series capacitive
circuit of the insulation 20 and, therefore, does not alter the magnitude of the charging
current 32 being measured." Id. at ll. 13-17. The examiner's proposal to substitute a
ferromagnetic coil for the reference's non-ferrous coil, "would require . . . a change in
the basic principles under which," In re Ratti, 270 F.2d 810, 813, 123 USPQ 349, 352
(CCPA 1959), Meyer "was designed to operate." Id., 123 USPQ at 352. "Such a
material and radical modification of the prior art would be contrary to the teachings of
the primary reference patent . . . and could be made only with the assistance of [the]
appellant's disclosure." In re Irmscher, 262 F.2d 85, ?, 120 USPQ 196, 198 (CCPA
1958).
Because the examiner's proposal to substitute a ferromagnetic coil for Meyer's
non-ferrous coil would have required a change in the basic principle under which the
reference was designed to operate, we are not persuaded that an artisan would have
been motivated to combine the references in the proposed manner despite any desire
Appeal No. 2002-0558 Page 11
Application No. 09/289,076
for "magnetic properties suitable for transformer action. . . ." (Examiner's Answer
at 10.) Therefore, we reverse the rejection of claims 2, 3, and 6-8.
Claims 5 and 9-19
Admitting that "Meyer did not expressly disclose an amplifier producing negative
input resistance across the secondary winding to substantially cancel the voltage drop
in the secondary winding resistance," (Examiner's Answer at 4), the examiner alleges,
"Kiko discloses a compensated transformer circuit 16 with an amplifier 18 producing
negative input resistance across the secondary winding (see column 4 lines 46-63, and
Fig. 3)." (Id. at 10.) The appellant argues, "[t]hat is not a disclosure of producing a
negative input impedance across the secondary winding to substantially cancel the
voltage drop in the winding due to the secondary winding resistance." (Appeal Br.
at 10.)
“‘[T]he main purpose of the examination, to which every application is subjected,
is to try to make sure that what each claim defines is patentable. [T]he name of the
game is the claim. . . .’” In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523,
1529 (Fed. Cir. 1998) (quoting Giles S. Rich, The Extent of the Protection and
Interpretation of Claims --American Perspectives, 21 Int'l Rev. Indus. Prop. & Copyright
L. 497, 499, 501 (1990)).
Appeal No. 2002-0558 Page 12
Application No. 09/289,076
Here, claim 5 specifies in pertinent part the following limitations: "[t]he apparatus
of claim 1, wherein the amplifier has a temperature-dependent input impedance
adapted to produce a voltage rise substantially canceling the voltage drop due to the
resistance for a range of temperatures." Similarly, claim 9 specifies in pertinent part the
following limitations: "an amplifier having input terminals connected across the
secondary winding, the amplifier constructed and arranged to produce a voltage rise
across the secondary winding substantially canceling a voltage drop across the
resistance of the secondary winding. . . ." Also similarly, claim 16 specifies in pertinent
part the following limitations: "applying a voltage across the secondary winding to
substantially cancel a voltage drop in the winding across the resistance. . . ." Giving
claims 5, 9, and 16 their broadest, reasonable construction, the limitations require
producing a voltage rise across a winding that substantially cancels a voltage drop
across the resistance of the winding.
Having determined what subject matter is being claimed, the next inquiry is
whether the subject matter would have been obvious. "In rejecting claims under 35
U.S.C. Section 103, the examiner bears the initial burden of presenting a prima facie
case of obviousness." In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956
(Fed. Cir. 1993)(citing In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992)). "'A prima facie case of obviousness is established when the
Appeal No. 2002-0558 Page 13
Application No. 09/289,076
teachings from the prior art itself would . . . have suggested the claimed subject matter
to a person of ordinary skill in the art.'" In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529,
1531 (Fed. Cir. 1993) (quoting In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143,
147 (CCPA 1976)).
Here, the examiner fails to allege, let alone show, however, that Kiko's
compensated transformer circuit would have produced a voltage rise across a winding
that substantially cancels a voltage drop across the resistance of the winding. We will
not “resort to speculation,” In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178
(CCPA 1967), as to such production. Absent a teaching or suggestion of producing a
voltage rise across a winding that substantially cancels a voltage drop across the
resistance of the winding, the examiner fails to present a prima facie case of
obviousness. Therefore, we reverse the rejection of claim 5; of claim 9; of claims 10-
15, which fall with claim 9, of claim 16; and of claims 17-19, which fall with claim 16.
CONCLUSION
In summary, the rejection of claims 1 and 4 under § 102(b) and the rejection of
claims 20-24 under § 103(a) are affirmed. In contrast, the rejection of claims 2, 3, and
5-19 under § 103(a) is reversed. "Any arguments or authorities not included in the brief
will be refused consideration by the Board of Patent Appeals and Interferences. . . ." 37
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Application No. 09/289,076
C.F.R. § 1.192(a)(2002). Accordingly, our affirmance is based only on the arguments
made in the brief. Any arguments or authorities not included therein are neither before
us nor at issue but are considered waived. No time for taking any action connected
with this appeal may be extended under 37 C.F.R. § 1.136(a).
Appeal No. 2002-0558 Page 15
Application No. 09/289,076
AFFIRMED-IN-PART
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
Appeal No. 2002-0558 Page 16
Application No. 09/289,076
CHARLES P. HIEKEN
FISH & RICHARDSON PC
225 FRANKLIN ST
BOSTON, MA 02110