Ex Parte Eo et al

Board of Patent Appeals and Interferences

Aug 5, 2010

11353965 (B.P.A.I. Aug. 5, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte YUN-SEONG EO, HEE-MUN BANG,
KWANG-DU LEE, and HEUNG-BAE LEE
_____________

Appeal 2009-013902
Application 11/353,965
Technology Center 2800
______________

Before ROBERT E. NAPPI, JAY P. LUCAS, and BRADLEY W.
BAUMEISTER, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-013902
Application 11/353,965

This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1 through 6, 10, and 11.
We affirm in part.
INVENTION
The invention is directed to a variable inductor circuit. See
Paragraphs 9 through 12 of Appellants’ Specification. Claim 1 is
reproduced below:
1. An inductor circuit comprising:
a first inductor;
a second inductor which is connected in parallel with the first
inductor; and
a switch which turns on and off electric power to one of the first
and second inductors,
wherein the first and second inductors are a same size,
wherein the first inductor and the second inductor are connected
in series to a first resistor and a second resistor having a same
resistance value, respectively, and
wherein a resonance frequency of the inductor circuit changes
according to whether the switch is turned on or off.

REFERENCES
Marsh US 5,227,962 Jul. 13, 1993
Jessie US 2005/0068146 A1 Mar. 31, 2005

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Application 11/353,965

REJECTIONS AT ISSUE
The Examiner has rejected claims 1, 3, and 10 under 35 U.S.C.
§ 102(b) as being anticipated by Marsh. The Examiner’s rejection is on
page 3 of the Answer.2
The Examiner has rejected claims 1 through 6, 10, and 11 under 35
U.S.C. § 102(b) as being anticipated by Jessie. The Examiner’s rejection is
on page 3 of the Answer.
The Examiner has rejected claims 2 and 4 through 6 under 35 U.S.C.
§ 103(a) as being unpatentable over Marsh. The Examiner’s rejection is on
page 5 of the Answer.

ISSUES
Rejections based upon Marsh.
Appellants argue on pages 9 and 10 of the Brief3 that the Examiner’s
rejection of claims 1, 3, and 10 under 35 U.S.C. § 102(b) as being
anticipated by Marsh is in error.
Appellants’ contentions with respect to claims 1, 3, and 10 present us
with the issue: did the Examiner err in finding that the skilled artisan would
have recognized that in Marsh’s inductor circuit, a resonance frequency
would change according to the switch position?

2 Throughout this decision we refer to the Examiner’s Answer dated April 7
2009.
3 Throughout this decision we refer to the Appeal Brief dated January 15,
2009 and Reply Brief dated May 29, 2009.
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Application 11/353,965

Rejection based upon Jessie
Appellants argue on pages 11 and 12 of the Brief that the Examiner’s
rejection of claims 1 through 6, 10, and 11 under 35 U.S.C. § 102(b) as
being anticipated by Marsh is in error.
Appellants’ contentions with respect to claims 1, 3, and 10 present us
with the issue: did the Examiner err in finding that Jessie teaches two
inductors in parallel as claimed?

FINDINGS OF FACT
Marsh
1. Marsh teaches a filter circuit which includes a plurality of parallel
resonant circuits. The resonant circuits each comprise a capacitor,
inductor and resistor in series. Abstract, col. 2, ll. 7-13, col. 3, ll. 23-
26, Figs. 3 and 4.
2. Each resonant circuit also has a switch in series with the inductor to
selectively change the impedance of the circuit. Col. 2, ll. 33-37,
col. 4, ll. 44-47.
3. Each resonant circuit has a different resonant frequency, as shown in
Figure 4. Col. 3, ll. 51-59.
4. The resonant circuits have low impedance at their respective
resonant frequencies. Col. 3, ll. 57-59.
5. In the circuits the impedance is capacitive below the resonant
frequency and inductive above the resonant frequency. Thus the low
impedance region corresponds to the resonant frequency. Col. 3, ll.
37-44.
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6. When the resonant circuits are combined, the combined circuit has a
low impedance region between the resonant frequencies of the
individual resonant circuits. Col. 3, ll. 60-65. As is seen in Figures
6 and 8, the low impedance area of a circuit where several resonant
circuits are combined is broader than the low impedance area of any
one individual resonant circuit, and the combined circuit has several
resonant frequencies.
7. Figure 9 depicts a power source that delivers 60 Hz power to audio
equipment 2. Col. 4, l. 66 – col. 5, l. 1. The power is filtered by
resonant circuit filter network. Col. 5, ll. 1-8.
Jessie
8. Jessie teaches a variable inductor. Abstract. In the embodiment of
Figure 6A the variable inductor is modeled as a transformer where
the two inductors are magnetically coupled. Para. 0050.

ANALYSIS
Rejections based upon Marsh.
Claims 1, 3, and 10
Appellants’ arguments have not persuaded us that the Examiner erred
in finding that the skilled artisan would have recognized that in Marsh’s
inductor circuit, a resonance frequency would change as claimed. Claim 1
recites “a resonance frequency of the inductor circuit changes according to
whether the switch is turned on or off.” Thus, the claim is broad enough to
read on a circuit having one resonance frequency that is changed or multiple
resonance frequencies where operation of the switch eliminates one of the
frequencies.
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The Examiner finds that the operation of the switches to change the
resonance frequency in Marsh is rudimentary to the structure of Marsh.
Answer 6. We concur. Appellants ague that one of ordinary skilled would
not have recognized that the switching operation of Marsh changes the
resonance value (Brief 9 and 10), however Appellants have not cited to
evidence, nor do we find any evidence, that the switching in or out of the
resonant circuits maintains the same resonance of the overall circuit (i.e. if
they are not the same they must be different). Rather, we consider the
evidence to show the contrary, that switching in or out the different resonant
elements does change the combined circuit’s resonance.
Marsh teaches that each resonant circuit, which acts as a filter, has a
different resonance that corresponds to a low impedance region of the filter.
Facts 1 and 5. Further, Marsh teaches that the switching is to change the
size of the low impedance region. Fact 6. Thus the resonance of the
combined circuit is also changed. We note that Figure 6 indicates that
closing switches adds additional resonance frequencies to the combined
circuit. That is, closing or opening switches changes the combined circuit
resonance by adding or subtracting a resonant frequency. Accordingly,
Appellants’ arguments have not persuaded us of error in the Examiner’s
rejection of independent claim 1.
With respect to claim 10, Appellants additionally argue that Marsh
“does not disclose that electric power is continuously applied to one of the
inductors L1 and L2.” Brief 10. In response, the Examiner states “Although
Fig. 9 does not show electric power, the electric power is necessarily present
when the switch is on.” Answer 6. We concur. Marsh’s system is to filter
power. Furthermore, item 1 in Figure 9 is a power source that is being
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Application 11/353,965

filtered. Fact 7. While each inductor circuit shown in Figure 9, has a
switch, for the circuit to perform its function as a filter of the power, at least
one of the switches for the inductor circuits needs to be on, and thus
connected to the power source. That is, for the device of Marsh to be
operative at filtering power, power must be continuously applied to one of
the inductors. As such, Appellants have not persuaded us of error in the
rejection of claim 10.
For the aforementioned reasons we sustain the Examiner’s rejection of
claims 1, 3, and 10.

Claims 2 and 4 through 6
Appellants’ arguments directed to the rejection of claims 2 and 4
through 6 under 35 U.S.C. § 103(a) relies on the same rationale as discussed
with respect to claim 1. Accordingly, we sustain the Examiner’s rejection of
claims 2 and 4 through 6 for the reasons discussed with respect to claim 1.

Rejection based upon Jessie
Appellants’ arguments have persuaded us that the Examiner erred in
finding that Jessie teaches two inductors in series as claimed. Claim 11
recites a first inductor circuit (consisting of an inductor and resistor in
series), connected in parallel with a second inductor circuit (consisting of an
additional inductor and resistor in series). Independent claims 1 and 10
include similar limitations. In rejecting these claims the Examiner relies
upon the circuit shown in Figures 6A, 6B, and 6C of Jessie, finding that
inductor 612 is in parallel with inductor 622. Answer 4. Further, the
Examiner states that “the broad recitation ‘connected in parallel’ in the
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Application 11/353,965

claims can be viewed as two inductors connected electromagnetically.”
Answer 7. While we agree with the Examiner that Jessie teaches two
inductors magnetically coupled, (Fact 8) we disagree with the Examiner that
this meets the claimed inductors in parallel.4 The Examiner has not shown
that the interpretation of “parallel” as including “connected
electromagnetically” is consistent with Appellants’ Specification or provided
other support for such an interpretation. It is clear from Appellants’ Figures
3 and 6 that the term parallel has the standard meaning for circuit elements
(e.g. where the elements are electrically connected at nodes on both ends).
Thus, the Examiner has not shown that the teaching of Jessie teaches all of
the elements recited in independent claims 1, 10, and 11. Accordingly, we
will not sustain the Examiner’s rejection of claims 1 through 6, 10, and 11.

CONCLUSION
Appellants have not persuaded us of error in the Examiner’s decision
rejecting claims 1 through 6 and 10. However, Appellants arguments have
persuaded us of error in the Examiner’s decision rejecting claim 11.

ORDER
The decision of the Examiner to reject claims 1 through 6, 10, and 11
is affirmed in part.

4 We note that Figures 6B and 6C of Jessie contain inductors in parallel, e.g.
inductor 636 and 638 are in parallel but these inductors are not arranged as
claimed, each in series with a resistor.
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Appeal 2009-013902
Application 11/353,965

AFFIRMED IN PART

ELD
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