Ex parte Kimball

Board of Patent Appeals and Interferences

Jul 31, 2001

08647223 (B.P.A.I. Jul. 31, 2001)

Application for patent filed May 9, 1996, entitled1
"Personal Electronic Device Having EL Lamp And Buzzer Powered
From A Single Inductor."
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The opinion in support of the decision being
entered today was not written for publication
and is not binding precedent of the Board.
_______________
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte ROBERT A. KIMBALL

Appeal No. 1999-2618
Application 08/647,2231

ON BRIEF

Before BARRETT, BARRY, and LEVY, Administrative Patent
Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1999-2618
Application 08/647,223
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This is a decision on appeal under 35 U.S.C. § 134 from
the final rejection of claims 1, 3, 5-7, and 11. Claims 2,
4, 8-10, and 12-15 stand objected to as depending from a
rejected claim. Claims 16 and 17 stand allowed.
We reverse.
BACKGROUND
The invention relates to a power supply or personal
electronic device having a single inductor for powering an
electroluminescent (EL) lamp and a buzzer. The EL lamp and
buzzer are electrically coupled together to the output of
the inverter and are in parallel with each other (figure 4)
or are coupled in series between a source of direct current
and ground (figure 5).
Claims 1 and 7 are reproduced below.
1. A power supply for producing pulses from
direct current to operate an EL lamp and a buzzer, said
power supply comprising:
an inductor and a first transistor connected in
series between a source of said direct current and
ground and having a junction therebetween;
an output terminal;
a diode coupling said junction to said output
terminal;
Appeal No. 1999-2618
Application 08/647,223
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wherein said EL lamp and said buzzer are each
coupled to said output terminal;
a semiconductor switch coupled in series with said
buzzer, wherein said switch and said buzzer are coupled
between said output terminal and ground.
7. A personal electronic device having an EL lamp
and a buzzer, said device comprising:
a low voltage source of direct current;
an inverter coupled to said source for converting
direct current into high voltage pulses, said inverter
including a single inductor and an output;
a buzzer having a first terminal and a second
terminal;
an EL lamp having a first terminal and a second
terminal;
wherein the first terminal of said EL lamp is
coupled to the first terminal of said buzzer and to
said output.
The Examiner relies on the admitted prior art (APA) of
Appellant's figure 2, which is disclosed to correspond to
U.S. Patent 4,529,322, to Ueda, issued July 16, 1985.
Claims 1, 3, 6, 7, and 11 stand rejected under
35 U.S.C. § 102(b) as being anticipated by the APA.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over the APA.
Appeal No. 1999-2618
Application 08/647,223
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We refer to the final rejection (Paper No. 10) (pages
referred to as "FR__") and the examiner's answer (Paper
No. 21) (pages referred to as "EA__") for a statement of the
Examiner's position, and to the appeal brief (Paper No. 20)
(pages referred to as "Br__") for a statement of Appellant's
arguments thereagainst.
OPINION
Anticipation
"Anticipation is established only when a single prior
art reference discloses, expressly or under principles of
inherency, each and every element of a claimed invention."
RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d
1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984).
Claims 1, 3, and 6
Appellant argues that claim 1 is not anticipated
because the APA does not teach the claimed configuration
that "said switch and said buzzer are coupled between said
output terminal and ground." The Examiner finds (FR8): "The
buzzer 26 is coupled between the output terminal (through EL
lamp 12 and the supply voltage) and ground (through switch
25 and transistor 22)." Appellant argues that the
Appeal No. 1999-2618
Application 08/647,223
The declaration of Mr. Kerwin is entitled "Affidavit2
Under Rule 131." However, since the paper is not signed under
oath, but contains the statements in lieu of oath of 37 CFR
§ 1.68, it is properly termed a "declaration" rather than an
"affidavit." Also, since the purpose of the declaration is to
traverse a ground of rejection, not to swear back of the date
of a reference, it is a declaration pursuant to 37 CFR § 1.132
(Rule 132), not § 1.131 (Rule 131).
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Examiner's claim interpretation is erroneous and provides a
declaration by Mr. Kerwin to that effect. Mr. Kerwin2
addresses the Examiner's statement and testifies that one
cannot "couple" a signal past a source of voltage because
the source is considered to have zero impedance
(declaration, p. 3). Mr. Kerwin states his opinion that
(declaration, p. 3): "In my experience, the Examiner's use
of the word 'coupled' in the context quoted above is not
consistent with the ordinary and accepted use of the word,
and its cognates, in the art of electrical engineering."
The Examiner responds that the broadest reasonable
interpretation to one or ordinary skill in the lighting art
is "'coupled' or 'coupling' means to 'join' or 'link' at
least two elements together" (EA6).
As stated in In re Cortright, 165 F.3d 1353, 1358,
49 USPQ2d 1464, 1467 (Fed. Cir. 1999):
Appeal No. 1999-2618
Application 08/647,223
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Although the PTO must give claims their broadest
reasonable interpretation, this interpretation must be
consistent with the one that those skilled in the art
would reach. See In re Morris, 127 F.3d 1048, 1054,
44 USPQ2d 1023, 1027 (Fed. Cir. 1997) ("[T]he PTO
applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their
ordinary usage as they would be understood by one of
ordinary skill in the art . . . ."); In re Bond,
910 F.2d 831, 833, 15 USPQ2d 1566, 1567 (Fed. Cir.
1990) ("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.")
(emphasis added); see also M.P.E.P. § 2111.01 (" [T]he
words of a claim . . . must be read as they would be
interpreted by those of ordinary skill in the art.").
"[W]here there are several common meanings for a claim term,
the patent disclosure serves to point away from the improper
meanings and toward the proper meaning." Renishaw PLC v.
Marposs Societa' per Azioni, 158 F.3d 1243, 1250,
48 USPQ2d 1117, 1122 (Fed. Cir. 1998).
The claims are directed to electrical circuits and,
therefore, the words of the claims must be given the
meanings as they would be understood by one of ordinary
skill in the electrical engineering art. Appellant supplies
a declaration by Mr. Kerwin to address the meaning to one of
ordinary skill in the electrical engineering art.
Appeal No. 1999-2618
Application 08/647,223
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Mr. Kerwin's credentials are very impressive, and we find
him to be an expert in electrical engineering. We agree
with Mr. Kerwin that one of ordinary skill in the electrical
engineering art would interpret "coupling" as requiring the
ability to transfer energy or signals from one circuit to
another either electrically or magnetically. This is
consistent with standard electrical engineering dictionary
definitions. See The New IEEE Standard Dictionary of
Electrical and Electronics Terms (5th ed., IEEE, Inc. 1993)
("coupling . . . The association of two or more circuits or
systems in such a way that power or signal information may
be transferred from one to another."); Weik, Communications
Standard Dictionary (3d ed., Chapman & Hall 1996)
("coupling: The transfer of energy from one conductive or
dielectric medium, such as an optical waveguide or wire, to
another, including fortuitous transfer.").
The meaning of "coupled" depends on the context.
Compare Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,
234 F.3d 558, 582, 56 USPQ2d 1865, 1882 (Fed. Cir. 2000)
(claim 9 recites "the permanent magnets of the piston and
body being polarized so as to magnetically couple the body
Appeal No. 1999-2618
Application 08/647,223
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to the piston," which requires a magnetic joining in a
mechanical sense), cert. granted 69 U.S.L.W. 3779 (2001)
with Eaton v. Evans, 204 F.3d 1094, 1096, 53 USPQ2d 1696,
1697 (Fed. Cir. 2000) (the interference count recites
"complimentary bit lines coupled to a sense amplifier,"
"first plate electrode of said first capacitor coupled
selectively to said first bit line," etc., which requires
power or signal transfer in the electrical sense). While we
agree with the Examiner that "coupled" can mean mechanically
"joined" or "linked," we consider the mechanical definition
inappropriate in the electrical context of the present
claims. Although we do not disagree with the Examiner that
the relevant art could be considered to be the (electrical)
lighting art, merely asserting that one skilled in the
lighting art would interpret "coupled" as "joined" or
"linked" is not persuasive, especially in the face of
evidence by Appellant in the form of the Kerwin declaration.
Thus, we conclude that the Examiner erred in interpreting
the claims.
Under the electrical definition of "coupling" which
requires the ability to transfer energy or signals from one
Appeal No. 1999-2618
Application 08/647,223
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circuit to another either electrically or magnetically, it
is clear that the APA does not teach the configuration of
"said switch and said buzzer are coupled between said output
terminal and ground." The buzzer 26 and switch 22 or 25 in
the APA are electrically coupled between the source 13 and
ground and are not electrically coupled to the output
terminal (the collector of transistor 21). Accordingly, the
anticipation rejection of claims 1, 3, and 6 is reversed.
Claims 7 and 11
Appellant argues that claim 7 is not anticipated
because the APA does not teach the configuration of "the
first terminal of said EL lamp is coupled to the first
terminal of said buzzer and to said output." The Examiner
finds "the first terminal of the EL lamp 12 (the junction
connecting diode 16 and transistor 21 together) is coupled
to the first terminal of the buzzer (the terminal through
the switch 25) and to the output" (FR8). Appellant argues
(Br9): "One cannot couple through back to back diodes or
through a power supply (see affidavit of Professor Kerwin)."
Mr. Kerwin states (declaration, p. 4): "Oppositely poled
diodes are used in electrical circuits for isolation, not
Appeal No. 1999-2618
Application 08/647,223
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coupling; one cannot couple a signal or transfer energy from
the collector of transistor 22 to the collector of
transistor 21 through oppositely poled diodes." The
Examiner again relies on the interpretation that "coupled"
broadly means "joined" or "linked" (EA7).
For the reasons discussed in connection with claim 1,
we conclude that the Examiner erred in interpreting the term
"coupled." The first terminal of the EL lamp 12 (the node
at the collector of transistor 21) is coupled to the output
(the node at the collector of transistor 14). However, the
first terminal of buzzer 26 (the node connected to
switch 25) is not coupled, in the electrical meaning of the
term, to the output because the back-to-back arrangement of
diodes prevents any energy or signal transfer. Accordingly,
the anticipation rejection of claims 7 and 11 is reversed.
Obviousness
The obviousness rejection of claim 5 does not cure the
deficiencies of the APA with respect to claim 1.
Accordingly, the obviousness rejection of claim 5 is
reversed.
Appeal No. 1999-2618
Application 08/647,223
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CONCLUSION
The rejections of claims 1, 3, 5-7, and 11 are
reversed.
REVERSED
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF
PATENT
LANCE LEONARD BARRY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
Appeal No. 1999-2618
Application 08/647,223
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Paul F. Wille
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