Ex Parte Harrison

Patent Trial and Appeal Board

Nov 20, 2017

13398981 (P.T.A.B. Nov. 20, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/398,981 02/17/2012 Michael John Harrison EE068 4230
54698 7590 11/22/2017
MOSFR TAROADA
EXAMINER
1030 BROAD STREET AMRANY, ADI
SUITE 203
SHREWSBURY, NJ 07702 ART UNIT PAPER NUMBER
2836
NOTIFICATION DATE DELIVERY MODE
11/22/2017 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):
docketing@mtiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL JOHN HARRISON
Appeal 2017-001366
Application 13/398,9811
Technology Center 2800
Before BRADLEY R. GARRIS, MICHAEL P. COLAIANNI, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner’s
rejection adverse to the patentability of claims 1—3, 5—8, 10-13, and 15—20
under 35 U.S.C. § 103(a).
We have jurisdiction under 35 U.S.C. § 6.
We affirm.
1 Appellant identifies the real party in interest as Enphase Energy, Inc.
App. Br. 4.
Appeal 2017-001366
Application 13/398,981
SUBJECT MATTER
Claim 1 is illustrative of the subject matter on appeal:
1. Apparatus for cancelling electromagnetic interference (EMI)
during power conversion, comprising:
a power converter for converting a DC input to a DC
output, wherein the power converter comprises a transformer
having a continuous primary winding and a secondary winding
comprising a first secondary winding and a second secondary
winding, and a diode coupled in series between the first
secondary winding and the second secondary winding such that
during operation of the power converter a current flow through a
parasitic capacitance between the continuous primary winding
and the first secondary winding is equal and opposite to a current
flow through a parasitic capacitance between the continuous
primary winding and the second secondary winding.
App. Br. 17 (emphasis added).
REFERENCES
The Examiner relies on the following references as evidence of
unpatentability:
US 3,886,434
US 4,315,306
US 2009/0244929 A1
US 6,057,665
Schreiner
Tol
Fomage
Hemiter
May 27, 1975
Feb. 9, 1982
Oct. 1, 2009
May 2, 2000
The following claims are rejected under 35 U.S.C. § 103(a):
I. Claims 1—3, 5, 11—13, 15, 16, 19, and 20 as unpatentable over
Schreiner in view of Tol;
II. Claims 6—8, 10, and 20 as unpatentable over Schreiner in view of
Tol and Fomage; and
III. Claims 17 and 18 as unpatentable over Schreiner in view of Tol
and Hemiter.
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Application 13/398,981
STATEMENT OF THE CASE
The Examiner finds that Schreiner discloses the apparatus of claim 1,
including the requirement that the transformer have a “continuous primary
winding.” Final Act. 3^4. The Examiner finds that each of Schreiner’s
primary windings 24 and 26 are individually “continuous.” Id. at 4.
“[T]o make the art rejection complete,” the Examiner also finds that
Schreiner discloses that it was known in the prior art to split a primary
winding, which “means that the state of the art originated with a continuous
(unsplit) primary winding.” Id. The Examiner relies on Tol for evidence
that it was known at the time of the invention to use such a continuous
primary winding in a power converter, and concludes that it would have
been obvious to the skilled artisan “to construct the Schreiner primary
winding to be continuous, as taught by Tol” in order to “build the converter
using a known and proven construction.” Id. at 4—5.
The Examiner makes similar findings regarding the continuity of the
primary winding for the remaining independent claims 6 and 11. Id. at 5, 6.
OPINION
We have considered Appellant’s arguments (App. Br. 9—15; Reply Br.
2—3) and are unpersuaded that Appellant has identified any reversible error
in the Examiner’s rejections. In re Jung, 637 F.3d 1356, 1365—66 (Fed. Cir.
2011) (explaining the Board’s long-held practice of requiring an Appellant
to identify the alleged error in the Examiner’s rejection). Therefore, we
sustain the obviousness rejections advanced in this appeal based on the
findings of fact, conclusions of law, and rebuttals to arguments well-
expressed by the Examiner in the Final Action and in the Answer. We add
the following comments for emphasis.
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Appeal 2017-001366
Application 13/398,981
The Final Rejection sets forth two findings regarding how Schreiner
alone discloses the recited “continuous primary winding” limitation and
evinces that this limitation was known in the prior art. Final Act. 4. In their
primary Brief, Appellant addresses neither of these findings with any
reasonable degree of specificity. App. Br. 9—15. Rather, Appellant’s
arguments focus on how the skilled artisan would not have been motivated
to modify Schreiner with Tol. Id. Such arguments, however, do not reveal
error in the Examiner’s finding that Schreiner alone discloses this recited
feature.
We observe that, on page 2 of the Reply Brief, Appellant argues that
Schreiner’s primary winding “is not a continuous primary winding as recited
in” the claims. We decline to consider this argument, however, because
Appellant has not explained why it could not have been raised in the Appeal
Brief. See 37 C.F.R. § 41.37(c)(l)(iv) (“Except as provided for in §§41.41,
41.47 and 41.52, any arguments or authorities not included in the appeal
brief will be refused consideration by the Board for purposes of the present
appeal.”); see also Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI2010)
(Informative) (explaining that under the previous rules, which are similar to
the current rules, “the reply brief [is not] an opportunity to make arguments
that could have been made in the principal brief on appeal to rebut the
Examiner’s rejections, but were not.”).
However, even if Appellant’s argument was timely made, we would
find it unpersuasive for the reasons expressed by the Examiner at pages 3—5
of the Answer. We emphasize here that Appellant has not directed us or the
Examiner to any definition of the term “continuous,” in the Specification or
otherwise, that differentiates the recited primary windings over coils 24 and
26 of Schreiner.
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Appeal 2017-001366
Application 13/398,981
Therefore, on this record, there is an uncontested finding that
Schreiner alone discloses “a continuous primary winding” required by each
of the independent claims on appeal. Thus, Appellant’s arguments which
are focused on the lack of motivation to modify Schreiner with Tol in order
to arrive at this claimed feature reveal no error in the Examiner’s rejections.
SUMMARY
The Examiner’s final decision to reject claims 1—3, 5—8, 10-13, and
15—20 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
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