Ex Parte Lurkens

Board of Patent Appeals and Interferences

Feb 12, 2009

10500507 (B.P.A.I. Feb. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PETER LURKENS
____________

Appeal 2008-2743
Application 10/500,507
Technology Center 2100
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Decided:1 February 12, 2009
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Before LEE E. BARRETT, JEAN R. HOMERE,
and ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-4 and 8-14.2 We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Data (electronic delivery).

Appeal 2008-2743
Application 10/500,507

THE INVENTION
The disclosed invention relates to an electronic circuit and to a
method of operating a high pressure lamp in an ignition mode and in a
normal operational mode. (Spec. 1, ll. 1-2).
Independent claim 12 is illustrative:
12. In electronic circuit for operating a high-pressure lamp in
at least two modes, a first half bridge and a second half bridge
connected in parallel between an operating potential and a
reference potential, a filter coupled to the output of the first half
bridge circuit, a resonant circuit coupled to the output of the
second half bridge circuit, wherein the lamp can be coupled
between the filter and the resonant circuit, and a first means for
operating the second half bridge, the improvement comprising:

second means for operating the first half bridge, whereby
the first half bridge and the second half bridge operate
independently of each other.

THE REFERENCES
The Examiner relies upon the following references as evidence in
support of the obviousness rejections:
Jungreis US 6,535,403 B1 Mar. 18, 2003
(filed Aug. 17, 2001)
Haas US 5,712,536 Jan. 27, 1998
(filed Jul. 31, 1995)
2 The Examiner withdrew the rejections of claims 5-7 under 35 U.S.C.
§ 103(a), in the Examiner’s Answer. Claims 5-7 are now objected to as
being dependent from a rejected base claim. The Examiner has indicated
that these claims would be allowable if rewritten in independent form
including the base claim and any intervening claims (Ans. 6).

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Application 10/500,507

Nilssen US 4,949,015 Aug. 14, 1990
(filed May 30, 1986)

THE REJECTIONS
1. The Examiner rejected claims 1 and 8-14 under 35 U.S.C.
§ 103(a), as being unpatentable over Nilssen in view of
Jungreis.
2. The Examiner rejected claims 2-4 under 35 U.S.C. § 103(a) as
being unpatentable over Nilssen, in view of Jungreis and Haas.

“[T]he examiner bears the initial burden on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Therefore, we look to Appellant's Briefs to show error in the proffered
prima facie case.
Only those arguments actually made by Appellant have been
considered in this decision. Arguments which Appellant could have made
but chose not to make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

Obviousness under 35 U.S.C. § 103
PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, “[w]hat matters is the
objective reach of the claim. If the claim extends to what is obvious, it is
invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1742
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(2007). To be nonobvious, an improvement must be “more than the
predictable use of prior art elements according to their established
functions.” Id. at 1740.
Claims 1 and 8-14
We consider the Examiner’s rejection of claims 1 and 8-14 under
35 U.S.C. § 103(a) as being unpatentable over Nilssen in view of Jungreis.
Since Appellant’s arguments have treated these claims as a single group
which stand or fall together, we select independent claim 12 as the
representative claim for this group. See 37 C.F.R. § 41.37(c)(1)(vii).

Appellant’s Contentions
1. Appellant contends that Nilssen fails to teach that the first half
bridge and second half bridge operate independently of each
other. (App. Br. 4 and Reply Br. 3-4).
2. Appellant contends that Nilssen requires that operation of one
of the bridges requires that the second bridge be maintained in a
non-operative state. Therefore, the bridges do not operate
independently. (Id.).
3. Appellant contends that the meaning of the term
“independently” as used in Nilssen is unclear. (App. Br. 5).
4. Appellant contends that there is no basis for combining Nilssen
(fluorescent lamp) with Jungreis (HID lamp). (Id.).
5. Appellant contends that Jungreis teaches away from a resonant
circuit. (App. Br. 7).

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ISSUES
1. Has Appellant shown the Examiner erred in determining that
the cited references teach that the first half bridge and second half bridge
operate independently of each other?
2. Has Appellant shown the Examiner erred in combining Nilssen
and Jungreis?
3. Has Appellant shown the Examiner erred in determining that
Jungreis teaches a filter coupled to the output of the first half-bridge circuit
and a resonant circuit coupled to the output of a second half bridge circuit?

FINDINGS OF FACT
In our analysis infra, we rely on the following findings of fact (FF)
that are supported by a preponderance of the evidence:
Nilssen
1. Nilssen teaches a full-bridge inverter that is capable of operation in
two modes: a first mode wherein one of the two pairs of switching
transistors self-oscillates, and a second mode wherein both pairs of
transistors self-oscillate. (See Abst., ll. 1-10).
2. Nilssen teaches a full-bridge inverter which consists of two half-
bridge inverters either of which can be made to operate independently of
the other as long as the other is maintained in a non-operative state. (Col.
4 ll. 61-64).

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Jungreis
3. Jungreis teaches two half bridges that include LC circuits coupled to
their respective outputs (L1 C1 and L2 C2 respectively). (See Fig. 1 and
col. 2, ll. 54-63)

ANALYSIS
As noted above, Appellant contends that Nilssen fails to teach that the
first half bridge and second half bridge operate independently of each other.
We disagree for the reasons discussed infra.

Claim Construction
“[T]he PTO gives claims their ‘broadest reasonable interpretation.’”
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)).
Claim 12 recites “whereby the first half bridge and second half bridge
operate independently of each other.” (emphasis added). We note that the
recited claim language does not require simultaneous operation of both half
bridges. The claim language only requires that both the first and second half
bridge operate (i.e., perform their respective functions) independently.
According to the Specification, “independent operation” of the two
resonant circuits is based in the decoupled nature of the two half bridges.
For instance, the Specification teaches that “the two half bridges are
operated in a decoupled manner in principle, i.e., as least as long as the high-
pressure lamp is not ignited. (See Spec. 2, ll. 30-32 and p. 6 ll. 10-15). Thus,
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it is our view that according to the Specification, “independent” operation of
the two half bridges is conditioned upon the high-pressure lamp remaining
unlit.
Based on the above claim construction, we find that Nilssen teaches
two half-bridge inverters either of which can be made to operate
independently of the other as long as the other is maintained in a non-
operative state. (FF 1-2). We do not agree with Appellant’s contention that
the condition (as long as the other is maintained in a non-operative state)
undermines the independent operation of the two half bridge inverters taught
in Nilssen. It is our view that in light of the teachings of the Specification,
the operation of the half bridge inverters taught in Nilssen are no less
independent than embodiments described in Appellant’s Specification. Thus,
we find that the cited references teach that the first half bridge and second
half bridge operate independently of each other.
As noted above, Appellant contends that one skilled in the art would
not have been motivated to combine the teachings of Nilssen with Jungreis.
(See App. Br. 6, § 13-14).
After considering the evidence before us, it is our view that
Appellant’s arguments do not take into account what the collective teachings
of the prior art would have suggested to one of ordinary skill in the art and
are therefore ineffective to rebut the Examiner’s prima facie case of
obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981)(“The test
for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference; nor is it that
the claimed invention must be expressly suggested in any one or all of the
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references. Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.”) (citations
omitted, emphasis added). This reasoning is applicable in the present case.
Appellant argues that Jungreis teaches that the bridges are operated
180° out of phase, which is not independent operation. Again, Appellant’s
arguments do not take into account the collective teachings of the prior art,
most notably Nilssen. As discussed above, the Examiner relied on Nilssen
for the teaching of independent operation. The Examiner’s rejection is
based on the combination of Nilssen and Jungreis.3 Thus, Appellant’s
contentions which focus on the deficiencies of Jungreis are not found to be
persuasive.
Appellant contends that Jungreis fails to teach a filter coupled to the
output of the first half-bridge circuit and a resonant circuit coupled to the
output of a second half bridge circuit.
We agree with the Examiner’s determination that Jungreis discloses
an LC circuit coupled to the output of the second half bridge (FF 3). This
LC circuit has a resonant frequency (Ans. 13). We further note that the
Examiner’s determination regarding the LC circuit of Jungreis has not been
rebutted by Appellant. Thus, based on the record before us, we find
Appellant has not shown error in the Examiner’s prima facie case.

3 One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
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In addition, we note that claim 12 is a Jepson claim. As such the
preamble is an implied admission that the subject matter recited in the
preamble is prior art and will not be given patentable weight. In re Fout, 675
F.2d 297, 301 (CCPA 1982). Accordingly, we affirm the Examiner’s
rejection of claim 12, and claims 1 and 8-14 which fall therewith, under 35
U.S.C. § 103(a) as being unpatentable over Nilssen and Jungreis.

Claims 2-4
We next consider the Examiner’s rejection of claims 2-4 as being
unpatentable over Nilssen in view of Jungreis and Haas.
We note that Appellant’s arguments do not assert that the cited
references fail to teach the limitations recited in claims 2-4. Instead
Appellant’s arguments address limitations/features that are not recited in
claims 2-4. (See App. Br. 7-8) For example, Appellant argues that the
“third capacitor recited in claim 2 relates to timing.” We note that claim 2
only recites how the third and fourth capacitors are coupled to the circuit
recited in claim 12. Appellant similarly presents arguments regarding claims
3 and 4. We decline to read these features into claims 2-4.
Because Appellant has not shown the Examiner erred in rejecting
claims 2-4, we affirm the Examiner’s rejection of claims 2-4 under
35 U.S.C. § 103(a) as being unpatentable over Nilssen in view of Jungreis
and Haas.

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CONCLUSIONS
Based on the findings of facts and analysis above, we conclude the
following:
Appellant has not shown the Examiner erred in determining that the
cited references teach that the first half bridge and second half bridge
operate independently of each other.
Appellant has not shown the Examiner erred in combining Nilssen
and Jungreis.
Appellant has not shown the Examiner erred in determining that
Jungreis teaches a filter coupled to the output of the first half-bridge circuit
and a resonant circuit coupled to the output of a second half bridge circuit.
Therefore, claims 1-4 and 8-14 are not patentable over the prior art of
record.

DECISION
The decision of the Examiner rejecting claims 1-4 and 8-14 under
35 U.S.C. § 103(a) is affirmed.

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Appeal 2008-2743
Application 10/500,507

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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