Ex Parte DINH

Board of Patent Appeals and Interferences

Aug 29, 2002

09083901 (B.P.A.I. Aug. 29, 2002)

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publication and is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JAMES S. DINH
____________
Appeal No. 2000-0453
Application No. 09/083,901
____________
ON BRIEF
____________
Before FLEMING, DIXON, and BLANKENSHIP, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-18,
which are all of the claims pending in this application.
We REVERSE.
Appeal No. 2000-0453
Application No. 09/083,901
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BACKGROUND
Appellant's invention relates to a DC-to-DC converter providing high current and
low voltage. An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below.
1. A DC-to-DC converter comprising:
a synchronous rectifier converter, said synchronous rectifier converter
comprising a buck converter;
the transformer of said synchronous rectifier converter employing less than five
windings on the secondary of the transformer.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Butcher et al. (Butcher) 4,399,499 Aug. 16, 1983
Gegner 5,477,131 Dec. 19, 1995
Claims 1-7 stand rejected under 35 U.S.C. § 103 as being clearly anticipated by
Gegner. Claims 8-18 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Gegner in view of Butcher.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
appellant regarding the above-noted rejections, we make reference to the examiner's
answer (Paper No. 14, mailed Oct. 26, 1999) for the examiner's reasoning in support of
the rejections, and to appellant's brief (Paper No. 13, filed Oct. 12, 1999) for appellant's
arguments thereagainst.
Appeal No. 2000-0453
Application No. 09/083,901
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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 make the determinations which follow.
35 USC § 102
Appellant argues that Gegner does not teach all of the elements and limitations
and that the examiner has not established a prima facie case of anticipation. Appellant
argues that Gegner does not teach the use of a transformer of a synchronous rectifier
employing less than five windings on the secondary of the transformer. (See brief at
page 8.) We agree with appellant that Gegner is silent as to the number of turns on the
secondary. The examiner maintains that Gegner discloses the number of turns on “a
secondary winding Nx” in Figure 5 (Gegner at column 6) and that the number of turns
would be merely a design choice. (See answer at page 5.) We disagree with the
examiner. Additionally, the examiner maintains that appellant’s use of “windings” is
directed to the windings of the coils in the transformer and that a transformer would
have at least two windings (primary and secondary) and that these two are less than
five. We find the examiner interpretation of the term “winding” to be too narrow and not
reasonable in light of appellant’s disclosed invention. The examiner maintains that
Gegner teaches a single winding Nx at column 9, line 40, but clearly the examiner has
Appeal No. 2000-0453
Application No. 09/083,901
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misinterpreted the teachings of Gegner. Gegner clearly discloses that the value Nx is
the turns ratio of the primary and the secondary. (See Gegner at column 7, line 51.)
From our understanding of Gegner, the value of Nx would refer to the same turns ratio
in both Figures 5 and 6 rather than to the number of turns on the secondary for Figure 5
and a turns ratio for Figure 6. Therefore, the examiner has not shown how or where
Gegner teaches all of the limitations of independent claim 1 and has not established a
prima facie case of anticipation. Therefore, we will not sustain the rejection of claims
1-7 under 35 USC § 102.
35 USC § 103
With respect to dependent claims 8 and 9 and independent claim 10, the
examiner relies upon the teachings of Butcher to teach the use of a microprocessor for
a synchronous rectifier. (See answer at page 4.) The examiner maintains that it would
have been obvious to one of ordinary skill in the art to provide the required load current
and voltage and equated this to the determination of an optimum value. We disagree
with the examiner treatment of the limitation in independent claim 10. Essentially, the
examiner has added another reference and not relied upon the teachings therein to
teach or suggest the claimed invention. From our understanding of the teachings of
Butcher, Butcher does not remedy the deficiencies the teachings of Gegner with
respect to dependent claims 8 and 9, and we will not sustain the rejection of claims 8
and 9.
Appeal No. 2000-0453
Application No. 09/083,901
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With respect to independent claim 10, the examiner has not shown that
individual references or the combination of references teaches or fairly suggests the
claimed invention. The examiner relies on routine level of skill in the art to determine
the optimum values for operation. We disagree with the examiner characterization of
the invention and lack of any evidence or convincing line of reasoning to support the
examiner’s position. Therefore, we agree with appellant that the examiner has not
established a prima facie case of obviousness of the claimed invention, and we will not
sustain the rejection of independent claim 10 and its dependent claims 11-14.
With respect to independent claim 15, as discussed above the examiner has not
shown that the prior art to Gegner and Butcher teach or suggest the use of less than
five windings on the secondary and similarly, the examiner has not shown that they
teach or suggest the use of a single winding on the secondary. Therefore, we will not
sustain the rejection of independent claim 15 and its dependent claims 16-18.
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CONCLUSION
To summarize, the decision of the examiner to reject claims 1-7 under 35 U.S.C.
§ 102 is reversed, and the decision of the examiner to reject claims 8-18 under
35 U.S.C. § 103 is reversed.
REVERSED
MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
JD/RWK
Appeal No. 2000-0453
Application No. 09/083,901
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HOWARD A. SKAIST
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