Ex Parte HIDAKA et al

Patent Trials and Appeals Board

May 28, 2019

14936060 - (D) (P.T.A.B. May. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/936,060 11/09/2015
78198 7590
Studebaker & Brackett PC
8255 Greensboro Drive
Suite 300
Tysons, VA 22102
05/30/2019
FIRST NAMED INVENTOR
Seiji HIDAKA
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
002000-000240 5117
EXAMINER
KHAN, IFTEKHAR A
ART UNIT PAPER NUMBER
2127
NOTIFICATION DATE DELIVERY MODE
05/30/2019 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):
info@sbpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEIJI HIDAKA and KO Y AMANAGA
Appeal2019-002688
Application 14/936,060
Technology Center 2100
Before LINZY T. McCARTNEY, NORMAN H. BEAMER, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek review under 35 U.S.C. § 134 of the Examiner's final
rejection of claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2019-002688
Application 14/936,060
BACKGROUND
This patent application concerns "an inductor simulation method of
simulating nonlinear characteristics of inductors when a direct current is
superimposed and an inductor nonlinear equivalent circuit model is used in
the simulation." Specification ,r 2, filed November 9, 2015 ("Spec.").
Independent claims 1 and 2 illustrate the claimed subject matter:
1. An inductor simulation method for simulating nonlinear
characteristics of an inductor, comprising:
representing an equivalent circuit of the inductor by using
a passive circuit element;
expressing a characteristic change ratio of the passive
circuit element when a direct current is superimposed as an
approximate function that uses current as a variable, based on
actually measured values; and
referring to the direct current flowing in the inductor,
generating, using a computer, a difference voltage between a
voltage occurring in the passive circuit element when a direct
current is superimposed and a voltage occurring in the passive
circuit element when no direct current is superimposed, based on
the characteristic change ratio calculated in accordance with the
referred current by using the approximate function and based on
the voltage occurring when no direct current is superimposed, by
using a control voltage source connected in series to the passive
circuit element whose characteristics are changed by the
superimposition of a direct current, and superimposes the
difference voltage on the voltage occurring when no direct
current is superimposed, thereby simulating the nonlinear
characteristics of the inductor when the direct current is
superimposed.
2. A computer program product, comprising:
a non-transitory computer-readable memory that includes
an inductor nonlinear equivalent circuit model program that,
when accessed by a computer, causes the computer to:
2
Appeal2019-002688
Application 14/936,060
represent, using a passive circuit element, an equivalent
circuit of an inductor;
refer to, using a current referring element, a current
flowing in the inductor; and
generate, using a control voltage source, a difference
voltage between a voltage occurring in the passive circuit
element when a direct current is superimposed and a voltage
occurring in the passive circuit element when no direct current is
superimposed, based on a characteristic change ratio of the
passive circuit element when a direct current is superimposed
which is calculated in accordance with the current referred to by
the current referring element and by using an approximate
function expressed with current as a variable from actually
measured values, and based on the voltage occurring when no
direct current is superimposed, the control voltage source being
connected in series to the passive circuit element whose
characteristics are changed by the superimposition of a direct
current.
Appeal Brief 9, filed October 11, 2018 ("App. Br.").
REJECTIONS
1-17 § 101
1-17 § 112
1-17 Double Patenting
DISCUSSION
'902 Application 1 and
Tachibana2
We have reviewed the Examiner's rejections and Appellants'
arguments. Except for the rejection of claims 1, 3-8, 10, and 11 under § 101
and the rejection of claims 1-17 under§ 112, we disagree with Appellants
that the Examiner erred. As consistent with the discussion below, we adopt
1 US Patent App. No. 14/934,902; Nov. 6, 2015.
2 Tachibana et al. (US 2011/0181274 Al; July 28, 2011).
3
Appeal2019-002688
Application 14/936,060
the Examiner's reasoning, findings, and conclusions in the Final Office
Action mailed April 6, 2018 ("Final Act.") and the Answer mailed
December 27, 2018 ("Ans."). We address the rejections in tum.
Section 101 Rejection
Section 101 of the Patent Act provides that "any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof' is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
"Laws of nature, natural phenomena, and abstract ideas are not patentable."
Alice Corp. v. CLSBankint'l, 573 U.S. 208,216 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
To determine whether a claim falls within one of these excluded categories,
the Court has set out a two-part framework. The framework requires us first
to consider whether the claim is "directed to one of those patent-ineligible
concepts." Alice, 573 U.S. at 217. If so, we then examine "the elements of
[the] claim both individually and 'as an ordered combination' to determine
whether the additional elements 'transform the nature of the claim' into a
patent-eligible application." Alice, 573 U.S. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).
That is, we examine the claim for an "inventive concept," "an element or
combination of elements that is 'sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself."' Alice, 573 U.S. at 217-18 (alteration in original) (quoting
Mayo, 566 U.S. at 72-73).
The Patent Office recently revised its guidance about this framework.
See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
4
Appeal2019-002688
Application 14/936,060
50 (Jan. 7, 2019) ("Revised Guidance"). Under the Revised Guidance, to
decide whether a claim is directed to an abstract idea, we evaluate whether
the claim (1) recites subject matter that falls within one of the abstract idea
groupings listed in the Revised Guidance and (2) fails to integrate the recited
abstract idea into a practical application. See Revised Guidance, 84 Fed.
Reg. at 51, 54. If the claim is directed to an abstract idea, as noted above, we
then determine whether the claim has an inventive concept. The Revised
Guidance explains that when making this determination, we should consider
whether the additional claim elements add "a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity in the field" or "simply append[] well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality." Revised Guidance, 84 Fed. Reg. at 56.
With these principles in mind, we tum to the § 101 rejection.
Claims 2, 9, and 12-17
Abstract Idea
The Examiner determined that claim 2 recites steps that fall within the
"mathematical concepts" and "mental processes" abstract idea groupings
identified in the Revised Guidance. See, e.g., Final Act. 12 (determining that
claim 2 recites steps that "relate to performing mathematical computations");
Ans. 4--5 ( determining that the pending claims recite tasks that can "be
performed mentally or with ... pen and paper"); see also Revised Guidance,
84 Fed. Reg. at 52 (explaining that the abstract idea exception includes
mathematical concepts and mental processes). For the reasons discussed
below, Appellants have not persuaded us that the Examiner erred.
5
Appeal2019-002688
Application 14/936,060
Claim 2 recites ( 1) "represent, using a passive circuit element, an
equivalent circuit of an inductor" (the "represent" limitation) and (2) "refer
to, using a current referring element, a current flowing in the inductor" (the
"refer to" limitation). App. Br. 9. Claim 2 also recites (3) "generate ... a
difference voltage ... based on [i] a characteristic change ratio ...
calculated in accordance with the current referred to ... and by using an
approximate function expressed with current as a variable from actually
measured values" and "[ii] the voltage occurring when no direct current is
superimposed" (the "generate" limitation). App. Br. 9.
Each of these limitations encompasses a mental process. The
"represent" limitation requires representing an equivalent circuit of an
inductor. See App. Br. 9. The written description indicates that this
limitation encompasses a circuit diagram in which a series circuit of
inductive and resistive elements represents an equivalent circuit of an
inductor. See, e.g., Spec. ,r,r 62 ("A series circuit of an inductor element L1
and a resistive element R1 in each equivalent circuit model constitutes a
passive circuit element representing an equivalent circuit of the inductor
being a target for simulation."), Figs. 1 (a), 1 (b) ( showing circuit diagrams
with a series circuit of inductive and resistive elements). People can draw
such a circuit diagram using pen and paper, so this limitation encompasses a
mental process. See, e.g., CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1372 (Fed. Cir. 2011) ("It is clear that unpatentable mental
processes are the subject matter of claim 3. All of claim 3 's method steps
can be performed in the human mind, or by a human using a pen and
paper.").
6
Appeal2019-002688
Application 14/936,060
As for the "refer to" limitation, this limitation requires referring to a
current flowing in the inductor. See App. Br. 9. People can mentally perform
this step by looking at a device (for example, a computer screen or an
ammeter) that displays this information. Cf CyberSource, 654 F.3d at 1372
( determining that a claim limitation that "requires 'obtaining information
about other transactions that have utilized an Internet address that is
identified with the [] credit card transaction' ... can be performed by a
human who simply reads records of Internet credit card transactions from a
preexisting database"). This limitation thus also encompasses a mental
process. In any case, even if this limitation involved physical steps such as
entering values into a computer or connecting an ammeter to a circuit, these
steps would not make claim 2 patent eligible. See CyberSource, 654 F.3d at
1372 ("[E]ven if some physical steps are required to obtain information from
the database (e.g., entering a query via a keyboard, clicking a mouse), such
data-gathering steps cannot alone confer patentability.").
Finally, the "generating" limitation requires generating a "difference
voltage" based on "[i] a characteristic change ratio ... calculated in
accordance with the current referred to ... and by using an approximate
function expressed with current as a variable from actually measured values"
and "[ii] the voltage occurring when no direct current is superimposed." See
App. Br. 9. The written description indicates that generating a difference
voltage in this way involves calculations that people can perform in their
minds or using pen and paper. See, e.g., Spec. ,r,r 72-81 ( discussing
expressions (7}-(13)), Figs. 15(a}-16(b) (showing graphs of measured
characteristic change ratio values); see also App. Br. 3 (mapping the
difference voltage recited in claim 2 to paragraph 80 of the written
7
Appeal2019-002688
Application 14/936,060
description). This limitation therefore recites a mental process. See
CyberSource, 654 F.3d at 1372. 3
Appellants' conclusory arguments to the contrary have not persuaded
us otherwise. Appellants assert that claim 2 does not recite mental processes
or mathematical concepts, but offer no persuasive reasoning or evidence to
support this assertion. See Reply Brief 2, filed February 14, 2019 ("Reply
Br."). Appellants also contend the Examiner provided no evidence that the
limitations recited in claim 2 are abstract, but Appellants have not shown
that the Examiner had to do so. See App. Br. 6.
In sum, the "represent," "refer to," and "generate" limitations together
recite a process that people can perform in their heads or using pen and
paper. Because people can perform this process mentally or by hand, the
recited process is not meaningfully different from other processes that courts
have determined are mental processes. See, e.g., CyberSource, 654 F.3d at
1373. This is true even though claim 2 requires that computers perform the
recited functions. "Courts have examined claims that required the use of a
computer and still found that the underlying, patent-ineligible invention
could be performed via pen and paper or in a person's mind." Versata Dev.
3 This limitation also falls within the mathematical concepts abstract idea
grouping, as the limitation recites at least a mathematical calculation and a
mathematical formula. See Revised Guidance, 84 Fed. Reg. at 52
( explaining that the mathematical concepts grouping includes mathematical
calculations, relationships, formulas, and equations). Claim 2 recites
generating the difference voltage based on "a characteristic change ratio ...
calculated in accordance with the current referred to ... and by using an
approximate function." App. Br. 9 ( emphases added). And as noted above
the written description indicates this limitation encompasses mathematical
calculations. See, e.g., Spec. ,r,r 72-81.
8
Appeal2019-002688
Application 14/936,060
Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015). See also
Revised Guidance, 84 Fed. Reg. at 52 n.14 ("If a claim, under its broadest
reasonable interpretation, covers performance in the mind but for the
recitation of generic computer components, then it is still in the mental
processes category unless the claim cannot practically be performed in the
mind."). We therefore determine that claim 2 recites a mental process, one of
the abstract idea groupings in the Revised Guidance. See Revised Guidance,
84 Fed. Reg. at 52. Claim 2 thus recites an abstract idea.
Because we agree with the Examiner that claim 2 recites an abstract
idea, we next evaluate whether claim 2 integrates the abstract idea into a
practical application. See Revised Guidance, 84 Fed. Reg. at 51. In doing so,
we consider whether there are any additional elements beyond the abstract
idea that, individually or in combination, "integrate the [ abstract idea] into a
practical application, using one or more of the considerations laid out by the
Supreme Court and the Federal Circuit." Revised Guidance, 84 Fed. Reg. at
54--55.
The additional elements recited in claim 2 include "a passive circuit
element," "a control voltage source," "a current referring element," "a non-
transitory computer-readable memory that includes an inductor nonlinear
equivalent circuit model program," and "a computer." See App. Br. 9. The
written description indicates that these elements encompass generic
computer software and hardware and that the claimed invention uses these
elements as tools to perform an abstract idea. For example, the written
description teaches that the disclosed invention uses generic circuit
simulation software. See, e.g., Spec. ,r,r 60 ("Embodiments applied to
L Tspice supplied from Linear Technology Corporation of an inductor
9
Appeal2019-002688
Application 14/936,060
simulation method and inductor nonlinear equivalent circuit model
according to the present disclosure are described below."), 132 ("Circuit
simulators to which the equivalent circuit models are applicable are not
limited to LTspice. For example, they are also applicable to other circuit
simulators .... "). The written description also indicates that the claimed
invention uses this software to represent the recited "passive circuit
element," "control voltage source," and "current referring element" with
generic circuit simulation components that perform in a generic manner. See,
e.g., Spec. ,r,r 62 ( explaining that a passive circuit element consists of a
"series circuit of an inductor element L1 and a resistive element R1 in each
equivalent circuit model"), 63 ("These voltage source models Vo and V1 are
components that are set for the sake of convenience in L Tspice .... The
voltage source models Vo and V 1 constitute current referring elements
.... "), 65 ("The control voltage source B1 is a component handled as a
behavior voltage source model in L Tspice .... ").
As for the recited computer and non-transitory computer-readable
memory, the written description mentions computers and computer hardware
only in passing. See, e.g., Spec. ,r,r 3 ( explaining that people used personal
computers to access certain prior art circuit simulators over the Internet),
13 5 ( explaining that people can use a personal computer to access a server
with the disclosed computer program). The written description thus
describes these components in a manner that indicates the components and
the functions they perform are generic. See Hybritech Inc. v. Monoclonal
Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986) (explaining that "a
patent need not teach, and preferably omits, what is well known in the art");
see also Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1331
10
Appeal2019-002688
Application 14/936,060
(Fed. Cir. 2017) ("The claimed mobile interface is so lacking in
implementation details that it amounts to merely a generic component
( software, hardware, or firmware) that permits the performance of the
abstract idea, i.e., to retrieve the user-specific resources.").
Appellants do not address these aspects of claim 2. Instead,
Appellants argue that claim 2 integrates the recited abstract idea into a
practical application because the claim is "explicitly directed toward[] the
representation and simulation of inductors" like claim 1. Reply Br. 2
( emphases omitted). But as discussed below, claim 1 explicitly recites using
a difference voltage to simulate the nonlinear characteristics of an inductor.
See App. Br. 9. In contrast, although claim 2 recites generating a difference
voltage, claim 2 does not recite applying the voltage, much less applying the
voltage to simulate an inductor. See App. Br. 9.
At bottom, claim 2 uses generic computer software and hardware as
tools to implement an abstract idea. Claim 2 thus does not integrate the
recited abstract idea into a practical application. See Alice, 573 U.S. at 223-
24 ("[W]holly generic computer implementation is not generally the sort of
'additional featur[ e]' that provides any 'practical assurance that the process
is more than a drafting effort designed to monopolize the [ abstract idea]
itself."' (second and third alterations in original) (quoting Mayo, 566 U.S. at
77)). Claim 2 is thus directed to an abstract idea.
Inventive Concept
Finally, because claim 2 is directed to an abstract idea, we consider
whether claim 2 has an inventive concept, that is, whether the additional
claim elements in the claim "'transform the nature of the claim' into a
patent-eligible application." Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S.
11
Appeal2019-002688
Application 14/936,060
at 78, 79). As discussed above, this requires us to evaluate whether the
additional claim elements add "a specific limitation or combination of
limitations that are not well-understood, routine, conventional activity in the
field" or "simply append[] well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality."
Revised Guidance, 84 Fed. Reg. at 56.
The Examiner determined that the additional elements recited in claim
2 perform well-understood, routine, and conventional functions. See Final
Act. 13-14. Although Appellants contend that this determination lacks
supporting evidence, see App. Br. 6, the written description adequately
supports this determination. For the reasons discussed above, the written
description indicates that the additional elements encompass conventional
software and hardware elements that perform well-known functions. See,
e.g., Spec. ,r,r 3, 60, 62, 63, 65, 132, 135; see also Robert W. Bahr,
Memorandum on Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.) 3 (Apr. 19, 2018), available at https://www.uspto.gov/sites
/default/files/documents/memo-berkheimer-20180419 .PDF ( explaining that
a specification that describes additional elements "in a manner that indicates
that the additional elements are sufficiently well-known that the
specification does not need to describe the particulars of such additional
elements to satisfy 35 U.S.C. § 112(a)" can show that the elements are well
understood, routine, and conventional).
Appellants also point out that the Examiner withdrew a prior art
rejection for the pending claims and argue that this shows the claimed
features are not well understood, routine, and conventional. See App. Br. 6.
12
Appeal2019-002688
Application 14/936,060
But at best the Examiner's withdrawal of the prior art rejection shows that
the Examiner determined that the cited prior art does not disclose or suggest
aspects of the recited abstract idea. See Notice of Panel Decision from Pre-
Appeal Brief Review, mailed September 13, 2018 (withdrawing a§ 103
rejection and maintaining the § 101 rejection). That the Examiner
determined certain prior art references do not disclose or suggest aspects of
the recited abstract idea does not show that the additional elements perform
unconventional functions, let alone that claim 2 is patent eligible.
For the above reasons, the additional elements recited in claim 2
"simply append[] well-understood, routine, conventional activities
previously known to the industry." Revised Guidance, 84 Fed. Reg. at 56.
These elements therefore do not "transform the nature of the claim' into a
patent-eligible application." Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S.
at 78, 79). Claim 2 thus does not contain an inventive concept.
Conclusion
Because claim 2 is directed to an abstract idea and does not have an
inventive concept, we sustain the Examiner's rejection of claim 2 under
§ 101. Appellants do not present separate arguments for the claims that
depend from claim 2 ( claims 9 and 12-17), so we also sustain the
Examiner's rejection of these claims under § 101.
Claims 1, 3---8, 10, and 11
While we disagree with Appellants that claim 2 integrates the recited
abstract idea into a practical application, we agree with Appellants that claim
1 does so. Claim 1 recites an "inductor simulation method for simulating
nonlinear characteristics of an inductor" that includes limitations largely
similar to those recited in claim 2. See App. Br. 9. But claim 1 differs from
13
Appeal2019-002688
Application 14/936,060
claim 2 in an important respect: claim 1 recites "superimpos[ing] the
difference voltage on the voltage occurring when no direct current is
superimposed, thereby simulating the nonlinear characteristics of the
inductor when the direct current is superimposed." App. Br. 9. Claim 1 thus
generates and applies a difference voltage, while claim 2 merely generates a
difference voltage.
The method recited in claim 1 represents a technological
improvement. The written description explains that prior art circuit
simulators and models either did not reflect certain changes caused by
superimposing a direct current or did so using circuit models that have
several drawbacks. See Spec. ,r,r 18-19. The written description teaches that
the claimed method overcomes these drawbacks and enables dynamic
simulation of nonlinear characteristics of the inductor when the direct
current is superimposed. Spec. ,r,r 20, 40. Claim 1 specifically recites
applying the difference voltage to achieve this end. See App. Br. 9 ( claim 1
reciting "superimposes the difference voltage on the voltage occurring when
no direct current is superimposed, thereby simulating the nonlinear
characteristics of the inductor when the direct current is superimposed"
( emphasis added)).
We thus determine that claim 1 integrates the recited abstract idea into
a practical application. Claim 1 is therefore patent eligible. See Revised
Guidance, 84 Fed. Reg. at 55 (explaining that an additional element
reflecting an improvement to another technology or technical field may
show that the element integrates a judicial exception into a practical
application). Because claims 3-8, 10, and 11 depend from claim 1 or recite
similar limitations, we also determine that these claims are patent eligible.
14
Appeal2019-002688
Application 14/936,060
Section 112 Rejection
Claim 1 recites the "referring to the direct current flowing in the
inductor, generating, using a computer, a difference voltage" limitation
reproduced in full above. App. Br. 9. The Examiner determined that the
meaning of the limitation is "indefinite and ambiguous" because, among
other things, the limitation does not make clear what it generates and
includes unclear terms such as "control voltage source." Final Act. 15-16.
The Examiner also determined that claim 1 lacks antecedent basis for the
words "the direct current flowing in the inductor." See Final Act. 1 7. 4 The
Examiner determined that the other pending claims suffer from similar
deficiencies. See Final Act. 16, 1 7. 5
Claim 1 also recites "expressing a characteristic change ratio of the
passive circuit element when a direct current is superimposed as an
approximate function that uses current as a variable, based on actually
measured values." App. Br. 9. The Examiner determined that this limitation
is indefinite because, among other things, the "superimposed" and "actually
measured values" aspects of the limitation are unclear. See Final Act. 16-1 7.
Appellants argue that claim 1 "clearly recites" that a difference
voltage is generated and that the written description "makes it clear" what a
"control voltage source" is. See App. Br. 6. Appellants contend that the
4 The Examiner referred to "the current flowing in the inductor," Final Act.
17, but this language does not appear in claim 1. Given the citation that
accompanies this part of the rejection, we understand the Examiner to have
meant "the direct current flowing in the inductor."
5 The Examiner does not specifically address claim 4. See Final Act. 15-17.
But because the Examiner rejected claims 1-17 as indefinite and
independent claim 4 includes a similar limitation, we understand the
Examiner to have rejected claim 4 for the same reasons.
15
Appeal2019-002688
Application 14/936,060
Examiner concluded otherwise because the Examiner incorrectly believed
that the Examiner had "full latitude to interpret each claim in the broadest
reasonable sense." Reply Br. 3 (emphasis omitted) (quoting Ans. 8). For the
remaining aspects of the Examiner's rejection, Appellants assert that the
Examiner "conflate[ d] claim breadth for lack of clarity" and that the
"specification makes clear what each and every limitation encompasses."
App. Br. 6; see also Reply Br. 3--4.
Appellants have persuaded us that the Examiner erred. As argued by
Appellants, the disputed terms and limitations are sufficiently clear in light
of the surrounding claim language and the written description. See App. Br.
6; Reply Br. 3--4. We thus do not sustain the Examiner's rejection of claims
1-17 under§ 112.
Double Patenting Rejection
The Examiner provisionally rejected claims 1-17 on the ground of
nonstatutory obviousness-type double patenting over claims 1-18 of the
'902 Application and Tachibana. See Final Act. 6-11.
Appellants contend that the Examiner erred because "each
independent claim of one application contains several limitations not found
in the independent claims of the other application." App. Br. 7. For example,
Appellants point out that claim 1 of this patent application recites "referring
to the direct current flowing in the inductor" but claim 1 of the '902
Application does not. App. Br. 7 ( emphases omitted). Appellants also argue
that the Examiner's statement in the Answer that "'the core concept and
most of the claim limitations in both the application[ s] ... are very similar'
.... is spurious to a double patenting rejection." Reply Br. 4 (emphasis
omitted) ( quoting Ans. 9). Appellants assert "that the disclosures of each
16
Appeal2019-002688
Application 14/936,060
application are similar[] is not grounds for a double patenting rejection."
Reply Br. 4 ( emphases omitted).
We find these arguments unpersuasive. The Examiner concluded that
claims 1-17 would have been obvious over the combination of the claims of
the '902 Application and Tachibana. See Final Act. 7-11. Appellants'
argument against the claims of the '902 Application alone have not
established that the Examiner erred because the argument does not
adequately address this combination. See In re Keller, 642 F.2d 413, 426
(CCP A 1981) ("[O]ne cannot show non-obviousness by attacking references
individually where, as here, the rejections are based on combinations of
references."). As for the Examiner's statement about the core concept of the
applications, the Examiner's rejection relies on a combination of the claims
of the '902 Application and Tachibana, see Final Act. 7-11, so we see no
reversible error in this statement.
Appellants argue for the first time in the Reply Brief that the
combination of the claims of the '902 Application and Tachibana does not
teach or suggest the claimed subject matter. See Reply Br. 4. Appellants
argue that combining "Tachibana with the claims of the '902 [ A ]pplication
would merely result in a method for simulating the characteristics of a
capacitor that uses an inductor as the passive circuit element." Reply Br. 4
(second emphasis modified). But Appellants forfeited this argument by
failing to present it in the Appeal Brief. See 37 C.F.R. § 41.41(b)(2)
(explaining that, absent good cause, "[a]ny argument raised in the reply brief
which was not raised in the appeal brief, or is not responsive to an argument
raised in the examiner's answer, including any designated new ground of
17
Appeal2019-002688
Application 14/936,060
rejection, will not be considered by the Board for purposes of the present
appeal").
For the above reasons, we sustain the Examiner's provisional
nonstatutory obviousness-type double patenting rejection of claims 1-17.
DECISION
1-17 § 101
2, 9, and 12- 1, 3-8, 10,
17 and 11
1-17 § 112 1-17
'902
1-17
Double Application
1-17
Patenting and
Tachibana
Outcome 1-17
Because we affirm at least one ground of rejection for each claim on
appeal, we affirm the Examiner's decision. See 37 C.F.R. § 4I.50(a)(l). No
period for taking action in connection with this appeal may be extended
under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. §§ 1.136(a)(l)(iv), 41.50(±),
4I.52(b ).
AFFIRMED
18