Ex parte Nilssen

Board of Patent Appeals and Interferences

Mar 23, 2000

07952303 (B.P.A.I. Mar. 23, 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(2) is not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte OLE K. NILSSEN
________________
Appeal No. 1997-3995
Application 07/952,303
________________
ON BRIEF
________________
Before THOMAS, JERRY SMITH and LALL, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
Appeal No. 1997-3995
Application No. 07/952,303
Appellant’s claims 30-40 added by amendment on August 29, 1995 were respectively1
renumbered by the examiner as claims 33-43 pursuant to 37 CFR § 1.126.
2
DECISION ON APPEAL

This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 1-9, 17-20, 28, 29 and
33-43 , which constitute all the claims remaining in the1
application.
The disclosed invention pertains to a self-oscillating
inverter ballast for supplying power to a load such as a
fluorescent lamp.
Representative claim 1 is reproduced as follows:
1. An inverter powered from a constant-magnitude DC
voltage by way of a first sub-assembly and providing, between
a first and a second output terminal, an alternating output
voltage having a periodic and substantially sinusoidal
waveshape, said waveshape having a cyclical period, said first
sub-assembly being operative to cause any current flowing from
the DC voltage supply to the inverter to remain substantially
constant during the time-length of said cyclical period, said
inverter comprising:
a first and a second pair of series-connected
switching transistors, each transistor having a control input
Appeal No. 1997-3995
Application No. 07/952,303
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terminal, said first pair of transistors each having a
terminal that is connected with a first junction, said second
pair of transistors each having a terminal that is connected
with a second junction; the first and second junctions being
galvanically connected with the first and second output
terminals, respectively; and
second sub-assembly connected between said junctions and
in circuit with each transistor’s control terminal, said
second
sub-assembly comprising a tuned circuit and a third sub-
assembly functional to cause said transistors to switch on and
off in a time-pattern operative to cause said output voltage
to have said periodic and substantially sinusoidal waveshape.
The examiner relies on the following references:
Burke 4,277,726 July 07, 1981
Walden 4,346,332 Aug. 24, 1982
Nilssen 5,189,342 Feb. 23, 1993
The following rejections have been made against the
claims:
1. Claims 1-9, 17-20 and 33-43 stand rejected under
35 U.S.C. § 103 as being unpatentable over the teachings of
Walden in view of Burke.
2. Claims 28 and 29 stand rejected under 35 U.S.C. §
103 as being unpatentable over the teachings of Burke taken
alone.
3. Claims 1-9, 17-20, 28, 29 and 33-43 stand rejected
under the judicially created doctrine of double patenting over
Appeal No. 1997-3995
Application No. 07/952,303
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claims 1-19 of Nilssen “since the claims, if allowed, would
improperly extend the ‘right to exclude’ already granted in
the patent” [answer, page 4]. Although this rejection was
designated as a new ground of rejection in the answer,
appellant had been responding to a double patenting rejection
made on this basis all during the prosecution. Therefore,
appellant’s failure to
respond to this “new” rejection does not lead to dismissal of
the appeal as indicated by the examiner.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the brief and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the
evidence of obviousness relied upon by the examiner as support
for the rejections. We have, likewise, reviewed and taken
into consideration, in reaching our decision, the appellant’s
arguments set forth in the brief along with the examiner’s
rationale in support of the rejections and arguments in
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Application No. 07/952,303
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rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record
before us, that the examiner has failed to provide us with a
record which establishes a prima facie case of obviousness or
of double patenting for any of the claims on appeal.
Accordingly, we reverse.
We consider first the rejections of the claims under
35 U.S.C. § 103. In rejecting claims under 35 U.S.C. § 103,
it is incumbent upon the examiner to establish a factual basis
to support the legal conclusion of obviousness. See In re
Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir.
1988). In so doing, the examiner is expected to make the
factual determinations set forth in Graham v. John Deere Co.,
383 U.S. 1, 17, 148 USPQ 459, 467 (1966), and to provide a
reason why one having ordinary skill in the pertinent art
would have been led to modify the prior art or to combine
prior art references to arrive at the claimed invention. Such
reason must stem from some teaching, suggestion or implication
in the prior art as a whole or knowledge generally available
to one having ordinary skill in the art. Uniroyal, Inc. v.
Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438
Appeal No. 1997-3995
Application No. 07/952,303
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(Fed. Cir.), cert. denied, 488 U.S. 825 (1988); Ashland Oil,
Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 293,
227 USPQ 657, 664 (Fed. Cir. 1985), cert. denied, 475 U.S.
1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732
F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These
showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). If that burden is met,
the burden then shifts to the applicant to overcome the prima
facie case with argument and/or evidence. Obviousness is then
determined on the basis of the evidence as a whole and the
relative persuasiveness of the arguments. See Id.; In re
Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir.
1986); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984); and In re Rinehart, 531 F.2d 1048, 1052, 189
USPQ 143, 147 (CCPA 1976). 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
brief have not been considered [see 37 CFR § 1.192(a)].
With respect to independent claims 1, 17, 38 and 42,
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the examiner points out certain teachings of Walden and Burke
and concludes that “[i]t would have been obvious to person of
ordinary skill at the time the invention was made to combine
the references of Burke and Walden in the configuration set
forth by applicant’s invention because Walden switches allow
for the convenient switching to drive a discharge lamp and
Burke allows the rapid starting of fluorescent lamp system
over a first and second time interval thereby facilitating
timing and controlling of the oscillator circuit” [final
rejection, page 4].
With respect to claim 1, appellant argues that Walden
does not generate an output voltage that is periodic and
substantially sinusoidal as asserted by the examiner. The
examiner does not respond to this argument. Appellant points
to additional specific features of claim 1 and asks the
examiner to point out how these specific features are rendered
obvious by the applied prior art. The examiner does not
respond to this argument. Appellant points to the examiner’s
reasoning in support of obviousness quoted above and argues
that the reasoning makes no sense because there is no
motivation to combine the teachings of Burke with Moore and
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Application No. 07/952,303
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there is no benefit to be gained as asserted by the examiner.
The examiner does not respond to this argument. The examiner
simply refers to the final rejection which never responded to
these arguments and only addressed a rejection made on
references to Burke and Steigerwald but not to the rejection
based on Walden and Burke.
It is sufficient to note that the examiner has utterly
failed to establish a prima facie case of obviousness. In our
view, appellant has raised several legitimate questions
regarding the teachings of the applied prior art which have
gone unanswered by the examiner. Since the examiner has not
addressed the differences asserted by appellant between the
invention of claim 1 and the teachings of the applied prior
art, the examiner has not met his burden of establishing a
prima facie case of obviousness. Therefore, we do not sustain
the rejection of claim 1 or of claims 2-9 which depend
therefrom. Since independent claim 42 has limitations similar
to claim 1, we do not sustain the rejection of claim 42.
With respect to independent claim 17, appellant again
points to specific features of the claim and argues that the
examiner has not identified any elements in the applied prior
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art which teach or suggest these claim limitations. The
examiner again offers no response. Therefore, we do not
sustain the rejection of claims 17-20 for the same reasons
discussed above.
With respect to independent claim 28, the examiner
points out certain teachings of Burke and concludes that “it
would have been obvious to a person of ordinary skill at the
time the invention was made to have a center [tap] on the
input side to filter out any residual frequencies as noted by
the use of filtering capacitors (32, 33) of Burke” [final
rejection, page 5].
Appellant argues that Burke does not teach the
specific features of the DC voltage source. The examiner does
not respond to this argument. Appellant addresses the
examiner’s reasoning behind his conclusion of obviousness and
disputes that a center tap would filter out residual
frequencies as claimed. The examiner does not respond to this
argument. Appellant argues that the claimed arrangement is
operative to provide an AC voltage between the inverter output
terminal and the center tap and that the examiner has failed
to address this feature. The examiner does not respond to
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Application No. 07/952,303
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this argument. Appellant argues that the specific features of
the inverter recited in claim 28 have not been addressed by
the examiner. The examiner does not respond to this argument.
For the same reasons discussed above, the examiner has
failed to establish a prima facie case of obviousness.
Therefore, we do not sustain the rejection of independent
claim 28 or of claims 29 and 33-37 which depend therefrom.
Since independent claim 38 has limitations similar to the
limitations discussed above with respect to other claims, we
do not sustain the rejection of independent claim 38 or of
claims 39-41 and 43 which depend therefrom.
We now consider the rejection on double patenting.
The complete rejection is set forth as follows:
Claims 1-9, 17-20, 28-29 and 33-43 are rejected
under the judicially created doctrine of double
patenting over claims 1-19 of U. S. Patent No.
5,189,342 since the claims, if allowed, would
improperly extend the “right to exclude” already
granted in the patent.
The subject matter claimed in the instant
application is fully disclosed in the patent and
is covered by the patent since the patent and
the application are claiming common subject
matter, as follows: They are both directed to
the same kind of self-oscillatory inverter
ballast circuits..
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Application No. 07/952,303
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Furthermore, there is no apparent reason why
applicant was prevented from presenting claims
corresponding to those of the instant
application during the prosecution of the
application which matured into a patent. In re
Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA
1968). See also MPEP § 804 [answer, pages
4-5].
Appellant argues that the examiner has offered nothing
more than his unsupported assertion that improper double
patenting is present here. Appellant points to differences
between the claims of the instant application and the claims
of the Nilssen patent, and appellant argues that these claimed
differences preclude the application of the double patenting
rejection. The examiner does not respond to these arguments.
The examiner has termed this rejection as a judicially
created rejection which may be overcome by the filing of a
terminal disclaimer [answer, page 3]. Accordingly, we view
this rejection as being based on the judicially created
doctrine of obviousness-type double patenting.
As with all rejections, the examiner has the burden of
presenting a prima facie case of unpatentability. In re
Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In
making an obvious double patenting rejection, the examiner
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must demonstrate that each claim of the application is
unpatentable over a single claim of a patent. This
demonstration should contain a showing of what is recited in
each respective claim of the application and the corresponding
respective single claim of the patent. An analysis of the
differences between these claims should then be provided.
Finally, a discussion as to why the artisan would have found
it obvious to modify the claim of the patent or to combine the
claim with additional prior art teachings to arrive at the
application claim must be presented by the examiner. The
examiner’s demonstration here contains none of these showings.
Since the examiner has not made a proper obviousness analysis
with respect to each of the appealed claims, we will not
sustain the double patenting rejection because the examiner
has not met his initial burden of presenting a prima facie
case of unpatentability.
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Application No. 07/952,303
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In summary, we have not sustained any of the
examiner’s rejections in this appeal because the examiner has
failed to establish a prima facie case of unpatentability.
Therefore, the decision of the examiner rejecting claims 1-9,
17-20, 28, 29 and 33-43 is reversed.
REVERSED
James D. Thomas )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Jerry Smith )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Parshotam S. Lall )
Administrative Patent Judge )
JS/dm
Appeal No. 1997-3995
Application No. 07/952,303
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Ole K Nilssen
Caesar Drive
RR 5
Barrington IL 60010