Ex parte Denedios

Board of Patent Appeals and Interferences

Nov 30, 1999

08244286 (B.P.A.I. Nov. 30, 1999)

Application for patent filed May 23, 1994. According to1
the appellant, the application is a continuation of
Application 07/951,396, filed September 25, 1992, now
abandoned.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte TOM DENEDIOS
____________
Appeal No. 1997-3179
Application No. 08/244,2861
____________
ON BRIEF
____________
Before HAIRSTON, JERRY SMITH, and FLEMING, Administrative
Patent Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1997-3179
Application No. 08/244,286
2
This is a decision on appeal under 35 U.S.C. § 134 from
the examiner's final rejection of claims 16-22, which
represents all of the claims remaining in the application. In
an Amendment after Final (paper number 10), claims 17 and 18
were canceled. Accordingly, claims 16 and 19-22 remain before
us on appeal.
The invention pertains to an electrical circuit and a
method for filtering radio frequency interference (RFI) from
telecommunication circuits. More specifically, the claimed
invention comprises a pair of inductor circuits with each
inductor circuit having a lead connected respectively to tip
and ring leads of telephone circuitry. The opposite end of
each inductor circuit is connected to a respective coil either
of a transformer, or, as noted in an alternative embodiment, a
ferrite-core inductor.
Claims 16 and 19 are illustrative of the claimed
invention, and they read as follows:
(16) A method of suppressing
longitudinally-conducted radio frequency
interference in voice frequency loops
having two circuit branches consisting of
inserting in series in each of the branches
a first inductor coupled with a second
ferrite-core inductor.
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Application No. 08/244,286
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(19) A filter for suppressing
longitudinally-conducted radio frequency
interference in voice frequency loops
consisting of:
a first inductor;
a second inductor; and
a transformer having a first winding and
a second winding; wherein said first
inductor and said first winding of said
transformer are coupled in series and said
second inductor and said second winding of
said transformer are coupled in series.
The prior art relied upon by the examiner as evidence of
obviousness are:
Weissner 2,144,950 Jan. 24, 1939
Hale 2,362,549 Nov. 14, 1944
Pontius 2,621,252 Dec. 9, 1952
Hudson, Jr. 3,987,380 Oct. 19, 1976
Kane 4,614,925 Sep. 30, 1986
Claims 16 and 19-22 stand rejected under 35 U.S.C. § 103
as being unpatentable over Weissner in view of Kane or Hale.
Rather than reiterate the examiner's full statement of
the above-noted rejections and the conflicting viewpoints
advanced by the examiner and appellant regarding those
rejections, we make reference to the examiner's answer (Paper
No. 19, mailed March 31, 1997) for the examiner's reasoning in
support of the rejections, and the appellant's brief (Paper
Appeal No. 1997-3179
Application No. 08/244,286
4
No. 17, filed February 12, 1997) for appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant's specification and claims,
to the applied prior art references, and to the respective
positions articulated by appellant and the examiner. As a
consequence of our review, we have made the determinations
which follow.
The obviousness rejection of claims 16 and 19-22 is
reversed.
Turning to the rejection of claims 16 and 19-22, the
examiner recognizes (Answer, page 4) that the difference
between the claimed invention and Weissner is:
Weissner presents (condensers) capacitor[s]
connected to ground which are essential to
eliminate high frequency from the incoming
signal, the claims presented eliminate the
capacitor component by closed ended language
"consisting," however, there is inherently
distributed capacitance present between the
conductors of the circuit
(electrodes/connections) and the tip and ring
line conductors as well as between the turns of
the coil(s).
Appeal No. 1997-3179
Application No. 08/244,286
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The examiner goes on to reason that Kane teaches the use
of distributed capacitance inherent in line transmission
systems and Hale teaches the use of distributed capacitance
inherent in the inductors of a line transmission filter.
Based on these auxiliary teachings, the examiner concludes
(Answer, page 5) that:
It would have been obvious to one of
ordinary skill in the art at the time the
invention was made to eliminate the
condensers (capacitors) taught by Weissner
for reducing high frequency signals... for
the reason of eliminating parts count and
thus cost of product....
In response, the appellant argues that his invention
would not have been suggested by the cited references. Stated
differently, appellant appears to be arguing that the examiner
has resorted to hindsight in reconstructing the prior art to
demonstrate the obviousness of the claimed invention.
In support thereof, the appellant (Brief, pages 4-5) points to
the fact that both Hale and Kane require the inclusion of a
capacitor device to obtain the necessary control and make
their respective inventions functional.
In rebuttal, the examiner maintains the position (Answer,
page 7) that Kane and Hale teach that there are inherent
Appeal No. 1997-3179
Application No. 08/244,286
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distributed capacitances that exist in line transmission
systems. The examiner further maintains that Kane teaches
using the distributed capacitance to determine equivalent
impedances and capacitances inherently within the lines in
order to effectively filter undesired frequencies. It is not
entirely clear from the record what the examiner gleaned from
the disclosures of Kane and
Appeal No. 1997-3179
Application No. 08/244,286
7
Hale that would lead the examiner to the conclusion that it
would have been obvious to one skilled in the art to eliminate
the capacitors in the circuit of Weissner.
In view of the respective positions noted above, we are
in general agreement with the appellant that the cited
references relied upon by the examiner neither teach nor would
have suggested appellant's claimed invention. We note that
claim 16 requires "...two circuit branches consisting of
inserting in series in each of the branches a first inductor
coupled with a second ferrite-core inductor." (emphasis
added). Accordingly, claim 16 specifically excludes all
elements other than a first inductor coupled in series with a
second ferrite-core inductor in each of the two circuit
branches. Like the examiner, we note that Weissner fails to
meet the limitations of claim 16 because Weissner includes,
inter alia, condensers (capacitors shown as elements 5 and 6)
in the two circuit branches. Quite the contrary, Weissner
goes so far as to require (column 2, lines 9-11) the presence
of condensers in the circuit branches for the purpose of
short-circuiting or suppressing high frequencies.
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Neither Hale nor Kane corrects the deficiency noted above
in Weissner because neither Hale nor Kane expressly teaches
eliminating capacitors in branch circuits or recognizes any
Appeal No. 1997-3179
Application No. 08/244,286
9
benefit that would be derived from doing so. More compelling
is the fact that page 3, lines 22-25, of appellant's
specification teaches that the two ferrite-core inductors form
the second stage of the filter and function to suppress high
frequency (RFI). Therefore, assuming arguendo that it would
have been obvious to one skilled in the art to eliminate the
capacitors from the invention of Weissner, the remaining
circuit of Weissner would be incapable of suppressing high
frequencies because Weissner's circuit requires condensers
(capacitors) to suppress the high frequencies.
Consequently, we reverse the examiner's rejection of
claims 16 and 19-22 because (1) the examiner's rejection fails
to point to some teaching, suggestion, or motivation found
either in the prior art relied upon or in knowledge generally
available to one of ordinary skill in the art that supports
eliminating the capacitors from the circuit of Weissner; In re
Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir.
1988); In re Jones, 958 F.2d 347, 351, 21 USPQ2d 1941, 1943-4
(Fed. Cir. 1992); and (2) removing the capacitors from the
circuit taught by Weissner
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Application No. 08/244,286
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renders the circuit inoperable for its intended purpose of
short-circuiting or suppressing high frequencies. In re
Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984).
Appellant's final argument (Brief, page 4) is that the
rejection of claims 16 and 19-22 under section 103 was
presented for the first time in the second Office Action was
based upon two references not relied upon in the previous
Office Action. Based on the above, the appellant believes
that the arguments and affidavit submitted in response to the
final rejection should be considered in this matter. It
appears that the appellant is questioning the propriety of the
examiner's final rejection. Questions regarding the propriety
or prematureness of the examiner's final rejection are
petitionable to the Commissioner under 37 CFR 1.181, rather
than appealable to the Board of Patent Appeals and
Interferences under 37 CFR 1.191. Therefore, we do not have
jurisdiction over the propriety of an examiner's action being
Appeal No. 1997-3179
Application No. 08/244,286
11
made final. See M.P.E.P 706.07(c). Thus, we can not consider
appellant's affidavit.
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Application No. 08/244,286
12
In short, we cannot sustain the examiner's obviousness
rejection of claims 16 and 19-22 based on the combined
teachings of Weissner in view of Kane or Hale.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
lp
Appeal No. 1997-3179
Application No. 08/244,286
13
JENNIFER H. HAMMOND
SONNENSCHEN NATH & ROSENTHAL
4520 MAIN ST. SUITE 1100
KANSAS CITY, MISSOURI 64111
Leticia
Appeal No. 97-3179
Application No. 08/244,286
APJ HAIRSTON/SPARKS
APJ FLEMING
APJ JERRY SMITH
DECISION: REVERSED
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s):
Prepared: July 21, 2000
Draft Final
3 MEM. CONF. Y N
OB/HD GAU
PALM/ACTS 2/BOOK
DISK(FOIA)/REPORT