Ex parte NILSSEN

Board of Patent Appeals and Interferences

Dec 30, 1997

07839065 (B.P.A.I. Dec. 30, 1997)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
This opinion (1) was not written for publication and
(2) is not binding precedent of the Board.
Paper No. 59
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte OLE K. NILSSEN
____________
Appeal No. 95-3616
Application 07/839,065
____________
ON BRIEF
____________
Before HAIRSTON, MARTIN, and TORCZON, Administrative Patent
Judges.
TORCZON, Administrative Patent Judge.
FINDINGS OF FACT AND CONCLUSIONS OF LAW
FINDINGS OF FACT
We have reviewed the record in its entirety in light of the
arguments of Appellant and the examiner. Our decision presumes
familiarity with the entire record. A preponderance of the
evidence of record supports each of the following fact findings.
A. The nature of the case
1. This is an appeal under 35 U.S.C. § 134 from the final
rejection of claims 62, 63, and 66-73. (Paper 51 at 1.) The
examiner also rejected claim 64 in the answer. (Paper 54 at 1
Appeal No. 95-3616 Page 2
Application 07/839,065
& 4.) Claims 45 and 61 have been allowed. The examiner objects
to the form of claim 65. No other claims are pending.
2. Appellant filed the subject application on 19 February
1992. He claims the benefit under 35 U.S.C. § 120 of United
States patent application 07/158,104 ('104 application) filed
16 February 1988, now abandoned; U.S. patent application
06/541,489 ('489 application), filed 13 October 1983, now
abandoned; and U.S. patent application 06/342,107, filed
25 January 1982, now abandoned.
B. The subject matter of the invention
3. The application is entitled "Electronic ballast for
fluorescent lamps". (Paper 1 at 1.) The ballast has a
transistor inverter connected in parallel to a rectifier and
center-tapped, series-connected filter capacitors. The lamp
circuit connects the capacitors to the inverter via an inductor.
A fluorescent lamp is connected in parallel with a capacitor,
which is connected in parallel with a resistor. (Paper 1 at 2;
Fig. 1.) Claim 66, reproduced below, is representative of the
claims on appeal.
66. An arrangement comprising:
a DC source operative to provide a DC voltage
at a set of DC terminals;
a ballast circuit connected with the DC
terminals; the ballast circuit having a pair of ballast
terminals which, when connected to a proper load
circuit, will supply a load current to this load
circuit; the ballast circuit being further
Appeal No. 95-3616 Page 3
Application 07/839,065
The answer indicates that the examiner also intended to1
apply the following references to claim 64 in the new ground of
rejection (Paper 54 at 3):

Neusbaum 3,305,697 21 Feb. 1967
Barriball 3,250,952 10 May 1966
The examiner only applies Genuit, however, in actually rejecting
the claim. (Paper 54 at 4.) We only consider references
positively recited in the rejection to be part of the rejection.
Ex parte Movva, 31 USPQ2d 1027, 1028 n.1 (Bd. Pat. App. & Int.
1993).
characterized by providing an output voltage across the
ballast terminals only when connected with said proper
load circuit; and
a lamp circuit assembly operable to connect
with the ballast terminals and, when indeed so
connected, to constitute said proper load circuit; the
lamp circuit being characterized by including a gas
discharge lamp and a resistor.
C. The rejections
4. The examiner rejected claims 63 and 67 under 35 U.S.C.
§ 112 as indefinite because the phrase "the capacitor" in each
claim lacked antecedent basis.
5. The examiner also rejected claims 62-64 and 66-73 under
35 U.S.C. § 103 in view of:1
Genuit 3,263,122 26 July 1966
C. Findings concerning obviousness
6. Genuit teaches an electronic ballast for fluorescent
lamps. (1:56-2:53.) Although Appellant argues that "Genuit's
ballast circuit draws current from the DC source whenever it is
connected thereto" (Paper 53 at 3), we find support in Genuit for
Appeal No. 95-3616 Page 4
Application 07/839,065
Coincidently, claims 63 and 67 are missing from the2
appendix of appealed claims filed with Appellant's brief.
We note also that claim 69 appears to be missing a3
word. We understand the claim to read, in part, as follows:
. . . the ballast circuit being further characterized
by providing the AC voltage only after having received
a trigger signal . . .
(Paper 50 at 4, underlined word added.) We encourage Appellant
to amend the claim to clarify its meaning.
the examiner's position that no current passes through the
ballast circuit. Genuit teaches that the ballast circuit must be
initiated by momentary contact with the voltage source 13 through
a 15 kS resistor. We also find, however, that Genuit does not
teach a resistor or capacitor as part of the lamp circuit.
7. Appellant has neither contested the level of skill in
the art nor presented evidence of secondary considerations for us
to consider on this appeal.
CONCLUSIONS OF LAW
A. Claims 63 and 67 are indefinite
1. The examiner rejected claims 63 and 67 because the
phrase "the capacitor" in those claims lacks any antecedent
basis. The Appellant has not responded to this rejection. We2
see no fault in the rejection. Consequently, we affirm the
rejection of these claims pro forma.3
Appeal No. 95-3616 Page 5
Application 07/839,065
Appellant neither includes claim 63 as part of the4
group nor argues it separately. Since we have affirmed a
section 112 rejection against claim 63, for simplicity's sake we
will assume Appellant intended claim 63 to stand or fall with its
parent, claim 62, for the purposes of the obviousness
determination. Nevertheless, Appellant and the examiner should
take care to ensure that the argued groups account for all
rejected claims. Otherwise, we may conclude that Appellant did
not intend to appeal any claims not argued.
B. Claims 62-64 and 66-73 are unpatentable for obviousness
2. Appellant has argued all claims but claim 64 as one4
group. (Paper at 2.) All of the claims in the group require a
resistor, a resistive path, or resistance means associated with
the lamp circuit assembly except claim 69, which requires a
capacitor associated with the lamp circuit assembly. The
difference is not important since the examiner's rationale
requires a resistor in parallel with a capacitor. (Paper 54
at 7.) Genuit's lamp circuit contains neither a resistor nor a
capacitor, so it is not clear why a person having ordinary skill
in the art would have been motivated to add a capacitor or
resistor, respectively, to the lamp circuit. Appellant correctly
notes (Paper 53 at 4) that simply because standard circuit
components could have been added does not mean that it would have
been obvious to do so. In re Gordon, 733 F.2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir. 1984).
3. Claim 64 depends from claim 62 and the examiner has
rejected both over the same reference. Since we reverse the
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Application 07/839,065
rejection of claim 62, we reverse the rejection of claim 64 pro
forma.
DECISION
The examiner's rejection of claims 63 and 67 under
section 112 is affirmed. The examiner's rejection of
claims 62-64 and 66-73 under section 103 is reversed.
AFFIRMED-IN PART
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN C. MARTIN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
RICHARD TORCZON )
Administrative Patent Judge )
Appeal No. 95-3616 Page 7
Application 07/839,065
Ole K. Nilssen
200 North Harrison
Algonquin, IL 60102