Ex Parte EL-Refaie et al

Patent Trial and Appeal Board

Feb 29, 2016

12949925 (P.T.A.B. Feb. 29, 2016)

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
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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
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