Ex parte Nepote et al.

Board of Patent Appeals and Interferences

May 26, 2000

08308985 (B.P.A.I. May. 26, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ANDREA NEPOTE
and DARIO DECURTI
_____________
Appeal No. 1997-1231
Application 08/308,985
______________
ON BRIEF
_______________
Before THOMAS, KRASS and LALL, Administrative Patent Judges.
LALL, Administrative Patent Judge.
Appeal No. 1997-1231
Application No. 08/308,985
The first final rejection was mailed as paper no. 6. 1
There was an amendment (paper no. 11) after that final
rejection, which was approved for entry (paper no. 12). As a
result of the amendment, claim 13 was allowed. Claim 12 had
already been indicated to contain allowable matter. Another
final rejection was mailed as paper no. 13. This final
rejection is the same as the first final rejection, except
that claim 10 had been inadvertently omitted from the first
final rejection. The grounds of rejection in both the final
rejections are the same.
2
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 to1
11.
The disclosed invention relates to a ballast for a
gas-discharge lamp, particularly for use in motor vehicles.
The ballast of the present invention comprises a switched
DC/DC converter means comprising a switched DC/DC converter of
the “fly-back” type and a second switched DC/DC converter of
the “feed-forward” type. This structure of the two specific
DC/DC converters is smaller in dimension than previous devices
while being able to start the lamp and a subsequent low
voltage with high electrical power to support the passage of a
large current through the lamp during the warming-up and
steady-state operation of the lamp. The ballast contains an
Appeal No. 1997-1231
Application No. 08/308,985
3
H-shaped bridge switching circuit which is connected to the
DC/DC converter means and in the central branch of which the
discharge lamp and the associated starting means are disposed.
A control circuitry is disposed in the ballast for driving the
DC/DC converter means and the bridge circuit to control the
voltage and the power to the gas-discharge lamp during its
operation. The invention is further illustrated by the
following claim.
1. A ballast for a gas-discharge lamp, particularly for
motor vehicles, comprising:
switched dc/dc converter means which are intended
to be connected to a direct-current voltage source
such as the battery of a motor vehicle, and which
can output a direct-current voltage higher than
that supplied by the source,
an H-shaped bridge switching circuit which is
connected to the dc/dc converter means and in the
central branch of which the discharge lamp and
associated reactive starting means are disposed,
and
control circuitry for driving the dc/dc converter
means and the bridge switching circuit in a manner
such that, each time the lamp is switched on, a
very high voltage is applied initially, in particular
in order to start the lamp, and subsequently a low
voltage is applied, but with a high electrical power,
in order to support the passage of a large current
through the lamp during the heating (warming-
up) of
Appeal No. 1997-1231
Application No. 08/308,985
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the lamp and during the subsequent steady operation
of the lamp;

Appeal No. 1997-1231
Application No. 08/308,985
5
the dc/dc converter means comprising
a switched dc/dc converter of the "fly-back" type
and a second switched dc/dc converter of the
"feed-forward" type,
the control circuitry being arranged to drive the
dc/dc converters in a manner such that, each time
the lamp is switched on, first the "fly-back"
converter is activated in order to generate the very
high
voltage and, subsequently, the "feed-forward"
converter is activated in order to generate the low
voltage with high electrical power.

The references relied on by the Examiner are:
Ruff et al. (Ruff) 4,469,981 Sep. 4, 1984
Roberts 4,709,188 Nov. 24, 1987
Oda et al. (Oda) 5,151,631 Sep. 29, 1992
Claims 1, 4 to 6, 7, 8 and 9 stand rejected under 35
U.S.C. § 103 over Roberts and Oda, while 2, 3, 10 and 11 stand
rejected over Roberts, Oda and Ruff.
Reference is made to Appellants’ brief and the
Examiner's answer for their respective positions.
OPINION
We have considered the record before us, and we will
reverse the rejection of claims 1 to 11.
With respect to claims 1 to 11, the Examiner has failed
to set forth a prima facie case of obviousness. It is the
Appeal No. 1997-1231
Application No. 08/308,985
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burden of the Examiner to establish why one having ordinary
skill in the art would have been led to the claimed invention
by the express teachings or suggestions found in the art, or
by implications contained in such teachings or suggestions.
In re Sernaker,
702 F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983).
“Additionally, when determining obviousness, the claimed
invention should be considered as a whole; there is no legally
recognizable ‘heart’ of the invention.” Para-Ordnance Mfg.
Inc. v. SGS Importer Int’l, Inc., 73 F.3d 1085, 1087, 37
USPQ2d 1237, 1239 (Fed. Cir. 1995); cert. denied, 117 S. Ct.
80 (1996)
citing W. L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540,
1548, 220 USPQ 303, 309 (Fed. Cir. 1983), cert. denied,
469 U.S. 851 (1984).
Analysis
Claims 1, 4 to 6, 7, 8 and 9
We first take claim 1, the only independent claim. After
discussing Roberts and Oda individually, the Examiner asserts
(answer, page 4) that “it would have been obvious . . . . to
Appeal No. 1997-1231
Application No. 08/308,985
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utilize a well known type of DC-DC converter such a
conventional push-pull ‘feed-forward type’ so as to allow the
use of inverter ballast arrangement . . . . , as taught by
Oda.”
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Application No. 08/308,985
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After discussing Roberts and Oda (brief, pages 12 to 18),
Appellants conclude that “neither reference, nor the
combination, disclose a ballast including two-separate DC/DC
converters, one of the ‘fly-back’ type and a second of the
‘feed-forward’ type, as specifically recited in Claim 1 of the
present application
. . . . Accordingly, a prime facie care [sic, case] of
obviousness has not been made out . . . . ” (Id. 18).
The Examiner responds by concluding that “[t]he crux of
the invention lies in the two DC sources . . . . , Roberts
shows a sort of fly-back converter arrangement in figure 3
that produces a DC voltage . . . . The use of another [DC
source] for the main powering is taught by Oda . . . . [T]he
use of the optimum converter for the particular circuit would
have been obvious
. . . . These converters are well known. That is the crux of
the invention and it is taught by the prior art.” (Answer,
page 7) (emphasis added).
While we agree with the Examiner that DC/DC converters
are well known, as are most of the other things which go to
Appeal No. 1997-1231
Application No. 08/308,985
9
make up any invention, the particular structure recited in
claim 1 is not shown by Roberts and Oda, either singly or in
combination. The Examiner has not shown the reason why an
artisan would have incorporated a DC/DC converter in Roberts
which is designed to be operated on an AC power line. Even if
one were to introduce such a DC/DC converter in Roberts, the
Examiner has not demonstrated how the control circuitry of
Roberts would have been modified to meet the claimed “control
circuitry being arranged to drive the dc/dc converters in a
manner such that, each time the lamp is switched on, first the
‘fly-back’ converter is activated in
order to generate the very high voltage and, subsequently, the
‘feed-forward’ converter is activated in order to generate the
low voltage with high electrical power.” The Federal Circuit
states that “[the] mere fact that the prior art may be
modified in the manner suggested by the Examiner does not make
the modification obvious unless the prior art suggested the
desirability of the modification.” In re Fritch, 972 F.2d
1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir.
1992), citing In re Gordon, 773 F.2d 900, 902, 221 USPQ 1125,
Appeal No. 1997-1231
Application No. 08/308,985
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1127 (Fed. Cir. 1984). “Obviousness may not be established
using hindsight
or in view of the teachings or suggestions of the inventor.”
Para-Ordnance Mfg. v. SGS Importers Int’l, Inc., 73 F.3d at
1087,
37 USPQ 2d at 1239 (Fed. Cir. 1995), citing W. L. Gore &
Assoc. v. Garlock, Inc., 721 F.2d at 1540, 1553, 220 USPQ at
303,
312-13 (Fed. Cir. 1983).
Appeal No. 1997-1231
Application No. 08/308,985
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Therefore, we conclude that the suggested combination of
Roberts and Oda is improper and the Examiner has not
established a prima facie case of obviousness to reject the
independent claim 1. Therefore, we do not sustain the
rejection of claim 1 and its dependent claims 4 to 6, 7, 8 and
9 over Roberts and Oda.
Claims 2, 3, 10 and 11
These claims are rejected over Roberts, Oda and Ruff.
Since all these claims depend on claim 1, directly or
indirectly, they each contain at least the limitations
discussed above with respect to claim 1. Furthermore, the
additional reference, Ruff, does not cure the deficiencies
noted above in the rejection of
claim 1. Therefore, we do not sustain the rejection of claims
2, 3, 10 and 11 over Roberts, Oda and Ruff for the same
rationale as claim 1 above.
Appeal No. 1997-1231
Application No. 08/308,985
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In conclusion, the decision of the Examiner rejecting
claims 1 to 11 under 35 U.S.C. § 103 over the various
combinations of Roberts, Oda and Ruff is reversed.
REVERSED

)
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ERROL A. KRASS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
PARSHOTAM S. LALL )
Administrative Patent Judge )
PSL:hh
Appeal No. 1997-1231
Application No. 08/308,985
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