Ex Parte Herbert

Board of Patent Appeals and Interferences

Oct 29, 2002

08236378 (B.P.A.I. Oct. 29, 2002)

1
1The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 65
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte EDWARD HERBERT
____________
Appeal No. 2002-0629
Application No. 08/236,378
____________
HEARD: OCTOBER 10, 2002
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Before STAAB, NASE and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 4, 16
and 19. Claims 10 and 13-15 have been canceled (Paper No. 46) and claims 17, 18
and 20-24 have been canceled (Paper No. 56, subsequent to the final rejection).
Appellant “withdrew” claims 1-3, 5-9, 11 and 12 (Paper No. 26), which the examiner
(Paper No. 33) apparently interpreted as cancellation of these claims.
Appeal No. 2002-0629
Application No. 08/236,378
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BACKGROUND
The appellant’s invention relates to power converters and, more particularly, to a
method of manufacturing a module comprising at least one transformer module. A
copy of the claims under appeal is set forth in the appendix to the appellant’s brief.
The examiner relied upon the following as evidence of obviousness in rejecting
the appealed claims:
Miller 3,474,371 Oct. 21, 1969
Appellant’s admitted prior art at page 6, lines 1-10, and page 12, lines 1-15 of the
instant specification (AAPA)
Claims 4, 16 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Miller in view of AAPA.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejection, we make reference to the answer
(Paper No. 58) for the examiner's complete reasoning in support of the rejection and to
the brief and reply brief (Paper Nos. 57 and 59) for the appellant’s arguments
thereagainst.
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Application No. 08/236,378
Page 3
2 We note that appellant submitted a substitute specification with the submission under 37 CFR
§ 1.129(a) (Paper No. 26). It is not apparent from our review of the record whether the examiner has
approved entry of this substitute specification. Upon return of this application to the Technology Center,
the examiner may wish to clarify this issue.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification2 and claims, the applied prior art, the declaration of Charles
E. Mullett (part of Paper No. 46) and the respective positions articulated by the
appellant and the examiner. After reviewing all of the evidence of record, we cannot
sustain the examiner’s rejection.
Claim 4, the sole independent claim on appeal, requires, inter alia, steps of
“obtaining said at least one solid magnetic core [i.e., a solid magnetic core having an
electrically insulating top surface and an electrically insulating bottom surface],”
obtaining electrically conductive base and top plates dimensioned to cover the bottom
surface and top surface, respectively, of the core and bonding the bottom surface and
top surface of the core directly to the conductive base and top plates, respectively.
Miller discloses a method of assembling a transformer device 10 comprising
gathering together a plurality of stacked laminations of metallic material, each
lamination being formed in either two or three pieces and clamping the laminations
together using a clamp 20 at each end of the lamination stack. Miller discloses that the
clamps may be made of metal which has some elasticity or resiliency across the width
of the openings 42 so that, with the application of transverse force, they can be fit over
Appeal No. 2002-0629
Application No. 08/236,378
Page 4
3 It is axiomatic that, in proceedings before the PTO, claims in an application are to be given their
broadest reasonable interpretation consistent with the specification, and that claim language should be
read in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Sneed,
710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983). Moreover, limitations are not to be read into
the claims from the specification. In re Van Geuns, 988 F.2d 1181, 1184, 26 USPQ2d 1057, 1059 (Fed.
Cir. 1993) citing In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). It is well settled,
however, that it is entirely proper to use the specification to interpret what is meant by a word or phrase in
a claim, and this is not to be confused with the improper addition of an extraneous limitation from the
specification wholly apart from any need to interpret the word or phrase. In re Paulsen, 30 F.3d 1475,
1480, 31USPQ2d 1671, 1674 (Fed. Cir. 1994).
adjacent pairs of tabs 23, 26, 33, 36 of the laminations (column 3, lines 1-8). The
clamps hold the stack tightly together so that the desired magnetic flux density can be
produced and so that there is no noise produced by eddy currents and other effects
acting on loose laminations and lamination pieces (column 2, lines 37-42).
Miller’s “magnetic core” is comprised of multiple parts or laminations stacked
together. While the term “solid” as used by appellant (specification, page 12) is
sufficiently broad to encompass a stack of laminations, we understand appellant’s use
of the term “solid” as requiring that any such laminations stacked together to form a
core be “bonded rigidly together” as set forth on page 12 of appellant’s specification
and as argued by appellant on page 18 of the brief.3 Even if Miller’s clamped stack of
laminations were considered to be “bonded” rigidly together when clamped tightly
together by the clamps 20, the steps of clamping the clamps 20 to the laminations
would necessarily comprise part of the step of “obtaining at least one solid magnetic
core” recited in claim 4. Miller lacks any disclosure of then bonding the bottom and top
surfaces of the thus obtained solid magnetic core to base and top plates, respectively,
as further called for in claim 4.
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Application No. 08/236,378
Page 5
Even assuming that the AAPA would have suggested insulating the top and
bottom surfaces of the stack of laminations of Miller’s core, as asserted by the
examiner, this would still not overcome the above-noted deficiency of Miller so as to
arrive at the subject matter of claim 4. Accordingly, we shall not sustain the examiner’s
rejection of claim 4 or claims 16 and 19 which depend from claim 4.
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Application No. 08/236,378
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CONCLUSION
To summarize, the decision of the examiner to reject claims 4, 16 and 19 under
35 U.S.C. § 103(a) is reversed.
REVERSED
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 2002-0629
Application No. 08/236,378
Page 7
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