Ex Parte Fouquet et al

Patent Trial and Appeal Board

Dec 23, 2014

12370208 (P.T.A.B. Dec. 23, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JULIE E. FOUQUET, GARY R. TROTT, and
CLARK F. WEBSTER
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Appeal 2012-004633
Application 12/370,208
Technology Center 2800
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Before PETER F. KRATZ, BEVERLY A. FRANKLIN, and
MARK NAGUMO, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1–7, 12–21, and 26–30. We have jurisdiction under
35 U.S.C. § 6.
Importantly, we note that there is an application (S.N. 12/059,979)
having Appeal No. 2012-004623, having the same assignee and including
claims directed to a coil transducer, as in the present case. A Board
Decision was mailed on September 23, 2014 in Appeal No. 2012-004623,
reversing the Examiner’s determinations therein. USPTO records indicate
that a Notice of Allowability was mailed on December 9, 2014. The same
principal references applied in the rejections of record in Appeal No. 2012-
Appeal 2012-004633
Application 12/370,208

2
004623 (in particular, the combination of Kahlmann view of Bando) are
applied similarly by the Examiner in the rejections of the instant case. We
decide this case in like manner, discussed, infra.

STATEMENT OF THE CASE
Claims 1 is representative of the subject matter on appeal and is set
forth below (with text in bold for emphasis):
1. A coil transducer, comprising:
a generally planar dielectric barrier and electrically insulating core
structure having upper and lower surfaces and comprising a central core
layer, an upper core layer disposed above the central core layer and a
lower core layer disposed below the central core layer, each of the
central, upper and lower core layers comprising an electrically insulating,
non-metallic, non-semiconductor, low-dielectric-loss material;
a first electrically conductive coil disposed within, upon or near
the upper surface of the core structure; , and
a second electrically conductive coil disposed within, upon or near
the lower surface of the core structure;
an input lead frame;
an output lead frame;
wherein the central core layer has no vias disposed therethrough
or therein in a region of the central core layer disposed directly between
the first coil and the second coil, and the first and second coils are
spatially arranged and configured respecting one another such that at
least one of power and data signals may be transmitted by the first coil
to the second coil across the portion of the central core layer containing
no vias, the central core layer has a thickness ranging between about
0.5 mils and about 8 mils, electrical connections to both of the first and
second coils are established through one only of the upper surface and
the lower surface, and the input and output lead frames are operably
connected to the coil transducer.

The key prior art relied upon by the Examiner in rejecting the claims
on appeal is:
Appeal 2012-004633
Application 12/370,208

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Bando et al. US 5,363,081 Nov. 8, 1994
(hereafter “Bando”)
Kahlmann et al. US 2004/0056749 A1 Mar. 25, 2004
(hereafter “Kahlmann”)

The other applied references are listed in the Answer on pages 4–5.

THE REJECTION1
Claims 1, 2, 9, 11, 14–19, and 23–25 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kahlmann in view of Bando, Zsamboky,
and Lane.
ANALYSIS
We REVERSE the Examiner’s determinations, for substantially the
reasons provided by Appellants in their Brief and Reply Brief. We add the
following for emphasis.
Our focus is on the combination of Kahlmann in view of Bando in
addressing the determinative issue before us in this case (similar to our
analysis in Appeal No. 2012-004323).
With regard to the claim limitation of “wherein the central core has
no vias disposed therethrough or therein in a region of the central core layer
disposed directly between the first coil and the second coil”, the Examiner
finds that Kahlmann does not teach this claim feature, but relies upon Bando
for so doing, and concludes

1 There are 10 art rejections in total, but we list here the singular art
rejection determinative of the outcome of the case before us.
Appeal 2012-004633
Application 12/370,208

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it would have been obvious to a person of ordinary skill in the art to
have no vias as taught by Bando et al. disposed between the first coil
and the second coil for the central core layer as disclosed by the
Kahlmann et al. to provide a compact design for facilitating insulation
and operating characteristics (Col. 1, Lines 41-47).
Ans. 7.
Appellants argue, inter alia, that the modification of Kahlmann
according to the teachings of Bando as proposed by the Examiner would be
detrimental to the transformer of Kahlmann for the reasons provided on
pages 50–52 of the Brief. Appellants reiterate this position on pages 17–21
of the Reply Brief. It is Appellants’ position that the proposed modification
of Kahlmann would change the principle of operation of Kahlmann for the
reasons provided by Appellants in the record. Notably, the Examiner does
not address this point made in the response to argument section of the
Answer, as correctly pointed out by Appellants on page 17 of the Reply
Brief.2 Hence, the Examiner has not addressed the substance of Appellants’
argument as presented by Appellants in their Brief, contrary to MPEP §
2677 I.(L). Appellants’ position is compelling regarding the failings of the
proposed modification for the reasons stated in the Brief and Reply Brief. If
the proposed modification or combination of the prior art would change the
principle of operation of the prior art invention being modified, then the
teachings of the references are not sufficient to render the claims prima facie
obvious. In re Ratti, 270 F.2d 810, 813 (CCPA 1959).

2 Therein, Appellants correctly explain that the issue raised is whether the
proposed combination is insufficient based upon a change in the principle of
operation of Kalhmann rather than based upon whether or not the applied art
is analogous art.
Appeal 2012-004633
Application 12/370,208

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In view of the above, we reverse Rejection 1. We also reverse
Rejections 2–10 because the Examiner does not rely upon other applied
references to cure the stated deficiencies of the combination of Kahlmann
view of Bando.

CONCLUSIONS OF LAW AND DECISION
Each rejection is reversed.

REVERSED

cdc