Ex Parte Foesel

Board of Patent Appeals and Interferences

Feb 27, 2008

10937261 (B.P.A.I. Feb. 27, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ULRICH FOESEL
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Appeal 2007-2260
Application 10/937,261
Technology Center 3600
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Decided: February 27, 2008
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Before MURRIEL E. CRAWFORD, JENNIFER D. BAHR, and DAVID B.
WALKER, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 (2002) from a final rejection
of claims 1 to 8, 10 to 17, 19 and 20. Claims 9 and 18 have been cancelled.
We have jurisdiction under 35 U.S.C. § 6(b) (2002). Appellant presented
oral argument on January 24, 2008.
Appeal 2007-2260
Application 10/937,261

Appellant invented a diesel-electric locomotive having one cable,
originating from a generator, to supply electrical power to the drive unit and
another cable including a transformer, originating from the generator, to
supply electric power to secondary appliances (Specification 1 to 2).
Claim 1 under appeal reads as follows:
1. A diesel-electric locomotive comprising:
a diesel engine connected to a generator;
a cable originating from the generator to supply electrical power to
a drive unit; and
an additional cable originating from the generator to supply
electrical power to secondary appliances, the additional cable
including a transformer.

The Examiner rejected claims 1 to 8, 10 to 17, 19 and 20 under
35 U.S.C. § 103(a).

The prior art relied upon by the Examiner in rejecting the claims on
appeal are:
Hamilton, Jr. US 6,267,062 July 31, 2001
Brooks US 6,523,654 Feb. 25, 2003

ANALYSIS
We have carefully reviewed the rejection on appeal in light of the
arguments of the Appellant and the Examiner.
We find that Hamilton discloses a diesel-electric locomotive having a
diesel engine 20 connected to a generator 30. A power cable 32 transfers
power from the generator 30 to a drive cabinet 40 which in turn transfers
variable frequency current to a traction motor 50 and to various secondary
components such as lights. Hamilton does not disclose that the various
secondary components operate at different voltages than that supplied by the
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Appeal 2007-2260
Application 10/937,261

drive cabinet 40. It follows that Hamilton does not disclose that there is a
need to provide a stepped down power from the generator to the various
secondary components. Hamilton does not disclose transformer cables.
We find that Brooks discloses an electric locomotive including a
transformer 7 which steps down the alternating power supply from a
relatively high voltage trolley wire so as to be suitable for supply to the
motor and the other electrical equipment on the train (col. 1, ll. 30 to 34).
The Examiner reasons that a person of ordinary skill in the art would
have found it obvious to include a transformer as disclosed by Brooks in the
Hamilton locomotive cable in order to properly operate various components,
because the braking circuit of the locomotive may operate at a different
voltage than components like radios and lighting systems. The Appellant
contends that there is no need for a transformer in the Hamilton locomotive,
because Hamilton discloses that the various components operate properly
and Hamilton does not disclose that there is a need to step down the voltage
in the Hamilton locomotive. In addition, Appellant argues that neither
reference discloses a cable which includes a transformer and originates from
the generator.
We agree with the Appellant that Hamilton does not disclose that the
other components such as the lights operate on a different voltage than that
supplied by the drive cabinet 40. As such, absent hindsight derived from
Appellant’s disclosure, there is no reason to provide a transformer in the
Hamilton locomotive.
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598
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Appeal 2007-2260
Application 10/937,261

(Fed. Cir. 1988). In so doing, the Examiner must make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148
USPQ 459, 467 (1966). Furthermore, "there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness" KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1741,
82 USPQ2d 1385, 1396 (2007) (quoting In re Kahn, 441 F.3d 977, 988,
78 USPQ2d 1329, 1336 (Fed. Cir. 2006)).
There is no factual basis for the Examiner’s assertion that the various
components in Hamilton may operate on various voltages, and that therefore
there is a need for a transformer in cable 32.
In addition, neither Hamilton nor Brooks discloses a cable with a
transformer that originates from a generator.
In view of the foregoing, the decision of the Examiner is reversed.
REVERSED

JRG

HARNESS, DICKEY & PIERCE, P.L.C.
P.O.BOX 8910
RESTON, VA 20195
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