Ex Parte Muth

Patent Trials and Appeals Board

Jun 27, 2013

10511492 - (D) (P.T.A.B. Jun. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MATTHIAS MUTH
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Appeal 2010-011663
Application 10/511,492
Technology Center 2800
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Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-011663
Application 10/511,492

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STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Exemplary Claim
Exemplary independent claim 1 under appeal, with emphasis added to
disputed portions of the claim, reads as follows:
1. A circuit arrangement for a vehicle for generating at least
two DC output voltages from at learnt one DC input voltage,
wherein the DC output voltages are smaller than the DC input
voltage, the circuit arrangement comprising:
a voltage regulator for generating the DC output voltages,
to supply operating power to a set of circuit elements used for
operating the vehicle, from a voltage regulator input,
a DC/DC converter for converting the DC input voltage
to a lower voltage, the DC/DC converter configured to be
switched on or off responsive to an on-off signal and to supply
the lower voltage to the voltage regulator input as a source for
generating the DC output voltages, and
a logic circuit configured to provide the on-off signal to
the DC/DC converter in response to an idle state in which the
set of circuit elements are switched off, the logic circuit further
configured to receive the DC input voltage to power the logic
circuitry when the DC/DC converter is switched off.

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Application 10/511,492

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The Examiner’s Rejection1
The Examiner rejected claims 1-17 as being unpatentable under
35 U.S.C. § 103(a) over Appellant’s Admitted Prior Art found at page 1,
lines 7-19 (hereinafter “AAPA”), and Kawaguchi (US 5,793,189). Ans. 3-6.

Principal Issue on Appeal
Based on Appellant’s arguments in the Briefs, the following principal
issue is presented on appeal:
Did the Examiner err in rejecting independent claims 1-17 as being
obvious over the combination of AAPA and Kawaguchi because
Kawaguchi, and thus the combination, fails to teach or suggest the logic
circuit recited in representative claim 1?

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
contentions in the Appeal Brief (App. Br. 4-8) and the Reply Brief (Reply
Br. 2-11) that the Examiner has erred.
We disagree with Appellant’s conclusion. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken (Ans. 3-6), and (2) the reasons set forth by the

1 Appellant does not present separate patentability arguments as to
individual ones of claims 1-17 on appeal in the Appeal Brief (see generally
App. Br. 4-8), and Appellant makes reference to claim 1 in some portions of
the Reply Brief by (Reply Br. 2, 5, and 6). Because independent claim 1
contains similar subject matter as remaining independent claims 5 and 13,
primarily that of a logic circuit (claim 5 recites “an on-off logic circuit
configured to generate a switching signal” and claim 13 recites “control
circuitry configured to generate the on-off signal”) and a DC/DC converter,
we select claim 1 as representative of the group of claims 1-17 on appeal.
Appeal 2010-011663
Application 10/511,492

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Examiner in the Examiner’s Answer in response to Appellant’s Appeal Brief
(Ans. 7-12). We concur with the conclusion reached by the Examiner.
We agree with the Examiner’s findings and determinations regarding
independent claim 1 (Ans. 3-4 and 7-12). Kawaguchi teaches or suggests
the logic circuit recited in claim 1 (col. 5, ll. 38-44; col. 6, ll. 56-65; see e.g.
starting control input terminal ST) for providing an on/off signal to a DC/DC
converter 6 (see Fig. 1; col. 5, ll. 56-62). We also agree with the Examiner
that the limitations of claim 1 do not require that (i) the voltage actually
received by the logic circuit is exactly the same as the DC input voltage
being supplied to the DC/DC converter (Ans. 7-8), and/or (ii) the logic
circuit must always receive the DC input voltage (Ans. 10), instead, the
claim merely recites that the logic circuit is “configured to receive the DC
input voltage” (claim 1).
With regard to Appellant’s argument (Reply Br. 9-10) concerning the
lack of motivation to combine AAPA with Kawaguchi, we note that
Appellant does not present any arguments regarding motivation in the
Appeal Brief, and instead presents this argument for the first time in the
Reply Brief.
“Any bases for asserting error, whether factual or legal, that are not
raised in the principal brief are waived.” Ex parte Borden, 93 USPQ2d
1473, 1474 (BPAI 2010) (informative); see also Optivus Tech., Inc. v. Ion
Beam Appl’ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) ((“[A]n issue not
raised by an appellant in its opening brief . . . is waived.”) (citations and
quotation marks omitted)).
Here, the Examiner’s finding(s) in the Examiner’s Answer that AAPA
and Kawaguchi are (i) analogous and from the same field of endeavor of
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vehicle power distribution systems, and (ii) can be combined “in order to
reduce power consumption in the vehicle by turning off the converter when
it is not needed” (Ans. 4 (citation omitted)) are not challenged in the Appeal
Brief (see generally App. Br. 4-8). Indeed, because the Examiner recognizes
in the response to the Appeal Brief that Appellant “do[es] not challenge the
combination of references” (Ans. 7), we find nothing that would have
prompted the new argument in the Reply Brief. Appellant could have made
the argument in the Appeal Brief. The term “Reply Brief” is exactly that, a
brief in reply to new rejections or new arguments set forth in an Examiner’s
Answer. Appellant may not present arguments in a piecemeal fashion,
holding back arguments until an examiner answers the original brief. To the
contrary, such bases for asserting error are waived. See 37 C.F.R.
§ 41.37(c)(1)(iv).
With regard to Appellant’s arguments (Reply Br. 10-11) concerning
Figure 5 of Kawaguchi, we note that the appropriate venue for Appellant to
object to any new grounds of rejection of claims 1-17 under § 103(a) is by
petition to the Supervisory Patent Examiner under MPEP § 1002.02(d),
Petitions and Matters Decided by Supervisory Patent Examiners [R-2], Rev.
2, May 2004. No such petition has been filed in the instant case.

CONCLUSION
The Examiner has not erred in rejecting independent claims 1-17 as
being obvious over the combination of AAPA and Kawaguchi because
Kawaguchi teaches or suggests the logic circuit recited in representative
claim 1.

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DECISION
The Examiner’s rejection of claims 1-17 is affirmed.
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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