Ex parte Nuckolls

Board of Patent Appeals and Interferences

Jan 26, 1999

08145731 (B.P.A.I. Jan. 26, 1999)

Application for patent filed November 4, 1993. 1
According to appellant, this application is a continuation of
Application 07/863,272, filed April 3, 1992, now abandoned.
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(2) is not binding precedent of the Board.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. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JOE A. NUCKOLLS
__________
Appeal No. 96-0447
Application 08/145,7311
__________
HEARD: Jan. 13, 1999
__________
Before THOMAS, KRASS, and BARRETT, Administrative Patent
Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-0447
Application No. 08/145,731
2
This is a decision on appeal from the final rejection of
claims 3, 5 and 9 through 18, all of the claims remaining in
the application.
The invention pertains to an electronic ballast circuit
for starting and operating high intensity discharge (HID)
lamps and is best illustrated by reference to independent
claim 12, reproduced as follows:
12. An electronic ballast circuit including a starting
circuit and an operator circuit for starting and operating a
high intensity discharge lamp from a low voltage AC power
source, said operating circuit comprising:
first circuit means for storing a first voltage at a
first energy level wherein said first circuit means provides
an output to a high intensity discharge lamp and wherein said
first voltage at said first energy level functions to lower an
impedance of said lamp;
second circuit means including a second means for storing
a second voltage at second energy level and providing an
output pulse at said second energy level to said lamp in order
to operate said lamp; and
diode matrixing means connected between said first and
second circuit means for causing said second energy level
pulse to bypass said first circuit means during a half-cycle
operation of said source and immediately following the
lowering of said lamp impedance during said half-cycle,
wherein said first circuit means for storing said first
voltage and said second circuit means for storing said second
voltage are selected so that a value of said first energy
level is of the same order of magnitude as a value of said
second energy level.
The examiner relies on the following references:
Appeal No. 96-0447
Application No. 08/145,731
3
Tenen 3,909,666 Sep. 30, 1975
Nerone et al. 5,059,867 Oct. 22, 1991
(Nerone)
Claims 3, 5 and 9 through 18 stand rejected under 35
U.S.C. § 103. As evidence of obviousness, the examiner cites
Tenen with regard to claims 3, 5, 9, 10, 12 through 14 and 18,
adding Nerone with regard to claims 11 and 15 through 17.
A rejection of claims 5, 10 and 14 under 35 U.S.C. § 112,
second paragraph, has been withdrawn by the examiner and is
not before us on appeal.
Reference is made to the briefs and answer for the
respective positions of appellant and the examiner.
OPINION
We reverse.
Independent claims 12 and 14 are very specific in the
recitation of elements which form an improvement for an
“operating circuit” of an HID lamp. While the ballast circuit
includes both a starting circuit and an operating circuit,
these claims are specifically directed to the “operating
circuit” portion of the electronic ballast. Independent claim
18 is not so direct but, while a starting circuit is not
mentioned as being part of the electronic ballast circuit, the
Appeal No. 96-0447
Application No. 08/145,731
4
circuit of claim 18 is “for operating,” not starting, an HID
lamp. At line 12 of the claim, it is recited that an output
pulse is provided “in order to operate said lamp.”
Accordingly, all of these claims are directed to the
“operation circuit,” and not to the “starting circuit” for a
HID lamp.
Further, independent claims 12, 14, 15 and 18 all require
a “same order of magnitude” limitation. Claim 12 recites that
the first voltage storing means and the second voltage storing
means are selected so that a value of the first energy level
is of the same order of magnitude as a value of the second
energy level while claim 14 recites that the high energy loop
has an energy value of the same order of magnitude as, but
greater than, an energy value of the low energy loop. Claim
18 recites that the value of a first capacitor is the same
order of magnitude as a value of a second capacitor. Claim 15
recites that a value of each of at least two levels of energy
is of the same order of magnitude as a value of another one of
the two levels of energy.
Appeal No. 96-0447
Application No. 08/145,731
5
The primary reference to Tenen appears, at first, to
disclose a similar circuit arrangement, comprising capacitors
and diodes, as the instant invention. However, on a closer
inspection, it is seen that capacitors 27 and 28 are employed
to start the lamp but are essentially out of the circuit
during the operation of the lamp. Note column 2, lines 53-58
of Tenen, wherein it is stated:
When lamp 12 ignites, its impedance drops, the
current through it increases and the voltage between
electrodes 34 and 35 drops because most of the
current then flows through capacitors 16 and 17 of
much lower impedance
than trigger capacitors 27 and 28 so that the voltage
increasing effect of the trigger capacitors is then
negligible.
Accordingly, it does not appear that one could reasonably
conclude that capacitors 27 and 28 in Tenen are part of the
operating circuit, as defined by the instant claims and so the
examiner’s reliance on these capacitors of Tenen as somehow
being part of the operating circuit, which is separate and
distinct from the starting circuit, as claimed, is misplaced.
To the extent that one might consider the starting
circuit and operating circuit to be inseparable and that the
capacitors 27 and 28 of Tenen might be considered to be part
Appeal No. 96-0447
Application No. 08/145,731
The examiner agrees that Tenen does not disclose such2
a ratio as claimed.
6
of the operating circuit for the lamp, we do not find the
“same order of magnitude” limitation of the instant claims to
have been taught or suggested by Tenen (or, with regard to
claim 15, by Tenen in combination with Nerone).
As clearly explained by appellant, at pages 8-9 of the
principal brief, Tenen discloses a ratio between the energy
passed by the large capacitor 16 to the energy passed by the
small capacitor 27 of 122 which indicates that the energy of
the first circuit is not of the same order of magnitude as the
energy delivered by the second circuit. Contrast this with
the instant
invention where [see page 8 of the principal brief] the ratio
of the two energies is calculated to be 1.4, i.e., the same
order of magnitude.
While the examiner argues that it would have been obvious
to change the ratio of Tenen as the mere optimization of2
values within a workable range within general conditions
disclosed by the prior art, we agree with appellant that this
is not the case. First, if the ratio in Tenen were to be so
Appeal No. 96-0447
Application No. 08/145,731
7
changed, the lamp of Tenen would appear to be without the
necessary starting circuit since the capacitors 27 and 28 of
Tenen have magnitudes greater than the operating circuit
capacitors in order to start the lamp. Since the instant
claimed invention requires the delivery of the two energy
values during operating conditions and not during starting
conditions, and the claim limitation of “same order of
magnitude” relates to these two energy values during
operation, not start-up, it was improper for the examiner to
merely dismiss this limitation with the rationale that it
would have been obvious to change the ratio of energy values
in Tenen as the mere discovery of the optimum or workable
ranges of general conditions disclosed by the prior art. The
prior art, as represented by Tenen, does not disclose the
“general conditions” of the instant claimed invention [since
Tenen lacks the necessary disclosure of the claimed operating
circuit] and the “same order of magnitude” limitation relates
to more than a mere optimization of ranges.
The examiner’s decision rejecting claims 3, 5 and 9
through 18 under 35 U.S.C. § 103 is reversed.
REVERSED
Appeal No. 96-0447
Application No. 08/145,731
8
James D. Thomas )
Administrative Patent Judge )
)
)
)
Errol A. Krass ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Lee E. Barrett )
Administrative Patent Judge )
tdc
Appeal No. 96-0447
Application No. 08/145,731
9
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