Ex Parte Miles

Board of Patent Appeals and Interferences

Apr 12, 2012

10729183 (B.P.A.I. Apr. 12, 2012)

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.
10/729,183 12/04/2003 Marshall Miles P/144-327 2389
7590 04/13/2012
OSTROLENK, FABER, GERB & SOFFEN, LLP
1180 Avenue of the Americas
New York, NY 10036-8403
EXAMINER
VU, BAO Q
ART UNIT PAPER NUMBER
2838
MAIL DATE DELIVERY MODE
04/13/2012 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 MARSHALL MILES
____________________

Appeal 2010-002110
Application 10/729,183
Technology Center 2800
____________________

Before: JEAN R. HOMERE, ST. JOHN COURTENAY III, and
ANDREW J. DILLON, Administrative Patent Judges.

PER CURIAM

DECISION ON APPEAL

Appeal 2010-002110
Application 10/729,183

2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-9. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.
Invention
Appellant’s invention relates to AC power adapters. More
particularly, the invention on appeal is directed to an AC power adapter with
a DC output. (Spec. 1). Claim 1 is illustrative:
1. A power adapter comprising:

a first housing;

a second housing remote from the first housing;

an AC input receptacle provided in the first housing;

a voltage converting circuit enclosed within the first
housing and electrically connected to the AC input receptacle,
the voltage converting circuit converting input AC power into a
DC voltage; and

a voltage regulating circuit electrically connectable to the
voltage converting circuit and enclosed within the second
housing, the voltage regulating circuit maintaining and
outputting the DC voltage from the voltage converting circuit.

REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Youn US 6,459,604 B1 Oct. 1, 2002
Appeal 2010-002110
Application 10/729,183

3
REJECTION
The Examiner rejected claims 1-9 under 35 U.S.C §102(a) as being
clearly anticipated by Youn.

GROUPING OF CLAIMS
Based on Appellant’s arguments in the Brief, we decide the appeal on
the basis of representative claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).

ANALYSIS
On this record, the preponderance of the evidence supports the
Examiner’s finding that the subject matter of representative claim 1 is
anticipated by Youn. In particular, we observe that Appellant fails to
substantively argue what specific claim limitations are purportedly not
disclosed by Youn. 1 (App. Br. 3-4). We decline to examine the claims sua
sponte, looking for patentable distinctions over the prior art. Cf. In re Baxter
Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of
this court to examine the claims in greater detail than argued by an appellant,
looking for distinctions over the prior art.”). See also Ex parte Belinne, No.
2009-004693, 2009 WL 2477843 at *3-4 (BPAI Aug. 10, 2009)
(informative).
Although Appellant argues certain manufacturing advantages of the
invention (App. Br. 3-4), we decline Appellant’s invitation to read

1 See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir 2008) (“When the
appellant fails to contest a ground of rejection to the Board, section
1.192(c)(7) [(now section 41.37(c)(1)(vii))] imposes no burden on the Board
to consider the merits of that ground of rejection. . . . [T]he Board may treat
any argument with respect to that ground of rejection as waived.”).
Appeal 2010-002110
Application 10/729,183

4
limitations from the Specification into the claims. See In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993). Moreover, in reviewing the record, we
agree with the Examiner’s findings. (See Ans. 3-4; Youn, Figs. 2-3).
Accordingly, for the reasons set forth in the Answer (3-4), we sustain
the Examiner’s anticipation rejection of representative claim 1, and claims 2-
9 which fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii).

DECISION
We affirm the Examiner’s § 102 rejection of claims 1-9.
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.
§ 41.50(f).
ORDER
AFFIRMED

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