Ex Parte Kawato

Board of Patent Appeals and Interferences

Dec 2, 2008

10998567 (B.P.A.I. Dec. 2, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EIZO KAWATO
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Appeal 2008-5458
Application 10/998,567
Technology Center 2800
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Decided: December 2, 2008
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Before JOSEPH F. RUGGIERO, ROBERT E. NAPPI, and
CARLA M. KRIVAK, Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-5. An oral hearing for this application was conducted on
November 18, 2007. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

Appeal 2008-5458
Application 10/998,567

STATEMENT OF CASE
Appellant’s claimed invention is an ion storage device including an
LC resonant circuit having switching means, and resistance means that stop
the RF voltage when ions stored in an ion storing space are ejected. The
inductance L, capacitance C, and effective resistance R of the LC resonant
circuit substantially satisfy a critical damping condition (cl. 1; Spec. 11:21-
25).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.

1. An ion storage device comprising:

a plurality of electrodes enclosing an ion storing space;

an LC resonant circuit for applying an RF voltage for storing ions to
at least one of the plurality of electrodes; and

switching means and resistance means included in the LC resonant
circuit for stopping the RF voltage when ions stored in the ion storing
space are ejected therefrom, where an inductance L, a capacitance C
and an effective resistance R of the LC resonant circuit substantially
satisfy a critical damping condition.

REFERENCE
Kawato US 6,483,244 B1 Nov. 19, 2002

The Examiner rejected claims 1-4 under 35 U.S.C. § 102(b) based
upon the teachings of Kawato.
The Examiner rejected claim 5 under 35 U.S.C. § 103(a) based upon
the teachings of Kawato.
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Appellant contends that Kawato does not teach resistance means such
that an inductance L, a capacitance C, and an effective resistance R of the
LC resonant circuit substantially satisfy a critical damping condition (App.
Br. 7; Reply Br. 4).
ISSUES
Did the Examiner err in finding, under 35 U.S.C. § 102(b), the fast
termination of the RF voltage is the same as the critical damping condition
of Appellant’s claimed invention?
Did the Examiner err in finding claim 5 obvious over Kawato under
35 U.S.C. § 103(a)?

FINDINGS OF FACT
1. Appellant’s invention is an ion storage device where an LC
circuit includes switching means 46, 47 and resistance means 48, 49 such
that the inductance L, capacitance C and effective resistance R of the LC
resonant circuit substantially satisfy a critical damping function. This allows
the radio frequency (RF) voltage to be damped in a short period of time after
the switching means is turned on (Spec. 5:18-25). Critical damping is the
“condition in which the voltage is damped fastest under any initial
condition” (Spec. 8, ll. 14-15).
2. Kawato teaches an RF resonator where a “fast start” is achieved
by closing one of a set of switches 4, 5 and a “fast termination” is obtained
by closing both switches (Abstract; col. 2, ll. 8-11). The switches have the
same internal resistance (col. 2, ll. 32-33). Fast termination of the RF
resonator is made at a positive peak of the RF voltage (col. 3, ll. 13-14).

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Application 10/998,567

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of California, 814
F.2d 628, 631 (Fed. Cir. 1987). The inquiry as to whether a reference
anticipates a claim must focus on what subject matter is encompassed by the
claim and what subject matter is described by the reference. As set forth by
the court in Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed. Cir.
1983), it is only necessary for the claims to “‘read on’ something disclosed
in the reference, i.e., all limitations of the claim are found in the reference, or
‘fully met’ by it.”

ANALYSIS
The Examiner rejected claims 1-4 under 35 U.S.C. § 102(b) as
anticipated by Kawato. The Examiner states that Kawato teaches every
feature of the claims. We address this rejection with respect to
representative claim 1.
The Examiner contends that the critical damping recited in claim 1 is
the same as Kawato’s fast termination (Ans. 7). Appellant asserts Kawato
discloses a fast termination of the RF resonator by turning the switches ON
at the peak RF voltage (App. Br. 9; FF 2). However, even if this occurs, it
takes time for the coil current to be sufficiently damped (App. Br. 9). In
contrast, claim 1 provides resistance R (an effective resistance including
resistors 48, 49 connected respectively to switches 46, 47 (FF1) in addition
to the internal resistance of the switches and other resistances of the circuit)
that along with the capacitance and inductance of the LC resonant circuit,
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Application 10/998,567

substantially satisfies a critical damping condition (App. Br. 8-9). Thus, fast
termination is not the same as critical damping.
An anticipation rejection under 35 U.S.C. § 102 requires only that the
claims “‘read on’ something disclosed in the reference, i.e., all limitations of
the claim are found in the reference, or ‘fully met’ by it.” Kimberly-Clark,
supra. Here, it appears the Examiner is applying an obvious rationale in
rejecting the claims rather than an anticipatory rejection. The language of
claim 1 does not, as asserted by Appellant, read on Kawato, as it does not
teach an inductance L, a capacitance C, and an effective resistance R of the
LC resonant circuit that substantially satisfies a critical damping condition.
Therefore, claim 1 in addition to claims 2-4, which depend therefrom, are
not anticipated by Kawato.
Claim 5 also depends from claim 1. The Examiner has not provided
evidence to show that one skilled in the art would modify Kawato’s circuit
to satisfy the critical damping condition. Thus, we will not sustain the
Examiner’s rejection of claim 5 under 35 U.S.C. § 103(a) over Kawato.

CONCLUSION
The Examiner erred in rejecting claims 1-4 under 35 U.S.C § 102(b).
The Examiner erred in rejecting claim 5 under 35 U.S.C § 103(a).

DECISION
The Examiner’s decision in rejecting claims 1-5 is reversed.

REVERSED

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