Ex Parte EL-Refaie et alDownload PDFPatent Trial and Appeal BoardFeb 29, 201612949925 (P.T.A.B. Feb. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/949,925 11/19/2010 Ayman Mohamed Fawzi EL-Refaie 131278 7590 03/02/2016 GE Ventures- Licensing C/O Meagher Emanuel Laks Goldberg & Liao, LLP One Palmer Square, Suite 325 Princeton, NJ 08542 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 243944-1 6744 EXAMINER LEYKIN, RITA ART UNIT PAPER NUMBER 2837 NOTIFICATION DATE DELIVERY MODE 03/02/2016 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): vivian.brandon@ge.com gpo.mail@ge.com gedocket@meagheremanuel.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte A YMAN MOHAMED FA WZI EL-REF AIE and ROBERT DEAN KING Appeal2014-001777 Application 12/949,925 Technology Center 2800 Before JOHN A. EVANS, LINZY T. McCARTNEY, and MATTHEW J. McNEILL, Administrative Patent Judges. McCARTNEY, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 1-25. We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. Appeal2014-001777 Application 12/949,925 ANALYSIS Claim 1 recites "a plurality of silicon carbide (SiC) switching devices having a voltage rating that exceeds a peak line-to-line back electromotive force (emf) of the permanent magnet machine at a maximum speed of the permanent magnet machine." The Examiner rejected claims 1-25 under 35 U.S.C. § 103(a) as obvious over Deng (US 7,690,456 B2; April 6, 2010). Regarding the switching devices recited in claim 1, the Examiner found Deng does not "teach S[i]C MOSFET switching devices" and took "official notice that use of silicon carbide switching devices in applications having a need of withstanding high voltages necessary during power generation is well known in the art." Ans. 3. The Examiner found Appellants' specification established "the switching device used ... obviously must be rated higher to withstand higher voltages developed during motor high speed operation (known inherent condition) in order ... to prevent battery from being overcharged." Id. at 4. Appellants argue the Examiner's rejection relies on improper hindsight reasoning because the rejection cites statements from Appellants' specification as support for the Examiner's findings. Reply Br. 2. Moreover, Appellants contend the Examiner has not established a prima facie case of obviousness because, contrary to the Examiner's findings, a switching device need not "be rated higher to withstand higher voltages developed during motor high speed operation (known inherent condition) in order ... to prevent battery from being overcharged." Id. at 3 (quoting Ans. 4). We find Appellants' arguments persuasive. "Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight 2 Appeal2014-001777 Application 12/949,925 reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill [in the art] at the time the claimed invention was made and does not include knowledge gleaned only from applicant's disclosure, such a reconstruction is proper." In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Here, the Examiner's finding that "the switching device used ... obviously must be rated higher to withstand higher voltages developed during motor high speed operation (known inherent condition) in order ... to prevent battery from being overcharged" relies in large part on statements found in the Detailed Description of the Invention section of Appellants' specification. See Ans. 3--4 (quoting Spec. i-f 23). We agree with Appellants that this reliance is a form of impermissible hindsight reasoning, and therefore we do not sustain the Examiner's rejection of claim 1 and its dependent claims. Because the rejections of the other independent claims (claims 10 and 14) also rely on this hindsight reasoning, see Ans. 2- 6, we also do not sustain the rejection of these claims or their respective dependent claims. DECISION For the above reasons, we reverse the rejection of claims 1-25. REVERSED 3 Copy with citationCopy as parenthetical citation