Ex Parte MilesDownload PDFBoard of Patent Appeals and InterferencesApr 12, 201210729183 (B.P.A.I. Apr. 12, 2012) Copy Citation 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 tkl Copy with citationCopy as parenthetical citation