11237909 (B.P.A.I. May. 3, 2011)

Ex Parte Kajita

Board of Patent Appeals and InterferencesMay 3, 2011

11237909 (B.P.A.I. May. 3, 2011)

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. 11/237,909 09/29/2005 Mikihiro Kajita 285691/04 7069 21254 7590 05/04/2011 MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC 8321 OLD COURTHOUSE ROAD SUITE 200 VIENNA, VA 22182-3817 EXAMINER ALMO, KHAREEM E ART UNIT PAPER NUMBER 2816 MAIL DATE DELIVERY MODE 05/04/2011 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES _____________ Ex parte MIKIHIRO KAJITA _____________ Appeal 2009-008088 Application 11/237,909 Technology Center 2800 ______________ Before JOSEPH F. RUGGIERO, ROBERT E. NAPPI, and DAVID M. KOHUT,1 Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant has filed a paper under 37 C.F.R. § 41.52(a)(1) requesting that we reconsider our decision of January 31, 2011, wherein we reversed the Examiner’s anticipation rejection of claims 1-26 based upon Yoshida and affirmed the Examiner’s obviousness rejection of claims 1- 27 over Appellant’s admitted prior art, Yoshida, and Bettega. We have granted Appellant’s request for rehearing to the extent that we have reconsidered our decision, and we now reverse the Examiner’s obviousness rejection based 1 The original panel consisted of APJ Martin, Ruggiero, and Nappi. The panel has been changed due to APJ Martin’s retirement. Appeal 2009-8088 Application 11/237,909 2 upon Appellant’s admitted prior art, Yoshida, and Bettega. Additionally, we now enter a new rejection of claim 1 as anticipated by Bettega. Appellant contends that our decision is erroneous as Appellant asserts our finding that Appellant never received the Answer, and as such was not able to present arguments that Examiner’s rationale for combining the admitted prior art and Yoshida is unreasonable. Request for Rehearing 6-14. Thus, Appellant’s contentions present the issue of whether the Examiner’s reasoning for combining Appellant’s admitted prior art and Yoshida is unreasonable? Appellant argues that the Examiner’s rationale for using Yoshida’s filter with the admitted prior art power supply (to provide a filter which can reduce input noises without causing a change in the frequency band characteristics) does not make sense. Appellant’s arguments focus on the Admitted prior art being directed to a DC power supply and that as such there is no “frequency band characteristic” to preserve. Request for Rehearing 9-10. We note that this argument was not presented prior to our decision. However, as there is sufficient evidence that Appellant was not provided with the Answer which presented the Examiner’s rationale for combining the references, we have considered the argument and find it persuasive. Thus, Appellant has persuaded us of error in the Examiner’s obviousness rejection of claims 1 through 27 based upon Appellant’s admitted prior art, Yoshida, and Bettega. Accordingly, while we have granted Appellant’s request for rehearing to the extent that we have reconsidered our decision, we now reverse the Examiner’s rejection of claims 1 through 27 over Appellant’s admitted prior art, Yoshida, and Bettega. Our decision of January 31, 2011 is now Appeal 2009-8088 Application 11/237,909 3 modified and all of the Examiner’s rejections on appeal are reversed. However, we enter a new rejection as follows. NEW GROUNDS OF REJECTION PURSUANT TO 37 C.F.R. § 41.50(B) We now enter a new rejection of claim 1 under 35 U.S.C. § 102(b) as anticipated based upon Bettega. We note that the Examiner used this reference in the obviousness rejection of claim 1-27 but only made findings regarding the reference teaching using a filter on a power supply to reduce harmonics. Answer 7. Appellant has not addressed this finding and we find ample evidence to support the finding, see Col. 2, ll. 10-13. Further, we find that Bettega teaches all of the limitations of claim 1. Bettega teaches a power source, (item 1) connected to an active filter (item 6) and a passive filter (item 7). Figure 1, column 3, 11-32. The passive filter is a resonant circuit and meets the claimed resonant circuit. Col. 1 ll. 36-38. The active filter meets the claimed filter. Thus, we find that Bettega discloses all of the elements of independent claim 1.2 This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b) (2007). This regulation states that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Furthermore, 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN 2 We have not reviewed the dependent claims to determine whether the further limitations are obvious in light of the disclosure of Bettega and leave it to the Examiner to determine if these claims should be subject to additional rejections. Appeal 2009-8088 Application 11/237,909 4 TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2007). REHEARING GRANTED- 37 C.F.R. § 41.50(b) ELD