Ex parte Nystrom

Board of Patent Appeals and Interferences

Oct 15, 1997

07822063 (B.P.A.I. Oct. 15, 1997)

Application for patent filed January 17, 1992.1
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not binding precedent of the Board.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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ROBERT W. NYSTROM
_____________
Appeal No. 95-1844
Application 07/822,0631
______________
HEARD: September 17, 1997
_______________
Before THOMAS, JERRY SMITH, TORCZON, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-1844
Application 07/822,063
2
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner's rejection of claims 1-27, which constitute
all the claims in the application.
The claimed invention pertains to a method and
apparatus for monitoring power drawn by an electrical
apparatus such as a pump.
Representative claim 1 is reproduced as follows:
1. Monitoring apparatus for monitoring power
exchanged with electrical apparatus comprising:
at least first and second conductors connected to said
electrical apparatus,
a multiplier having a current input coupled to at
least one of said conductors for receiving a current signal
representative of the current carried thereby, a voltage input
coupled to said at least one conductor for receiving a voltage
signal representative of the voltage between said first and
second conductors and a power output for providing a power
signal representative of the product of said current and
voltage signal,
and trip circuitry coupled to said power output for
providing a trip signal only when said power signal is outside
a predetermined range.
The examiner relies on the following references:
Lehrmann 3,054,952 Sep. 18, 1962
Leyde 4,034,233 July 05, 1977
Deffenbaugh 4,084,075 Apr. 11, 1978
Béjot et al. (Béjot) 4,419,625 Dec. 06, 1983
Garmong 4,473,338 Sep. 25, 1984
Appeal No. 95-1844
Application 07/822,063
3
Markuson et al. (Markuson) 4,767,280 Aug. 30, 1988
Claims 1-27 stand rejected on prior art as follows:
1. Claim 5 is rejected under 35 U.S.C. § 102(b) as
being anticipated by Lehrmann.
2. Claims 1, 6 and 18-22 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Béjot in view of Markuson.
3. Claims 2, 3 and 7 are rejected under 35 U.S.C. §
103 as being unpatentable over Béjot in view of Markuson and
further in view of Lehrmann.
4. Claim 4 is rejected under 35 U.S.C. § 103 as being
unpatentable over Béjot in view of Markuson and further in
view of Leyde.
5. Claims 8-13 are rejected under 35 U.S.C. § 103 as
being unpatentable over Béjot in view of Markuson and Lehrmann
and further in view of Deffenbaugh.
6. Claims 14-17 and 23 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Béjot in view of Markuson and
Lehrmann and further in view of Leyde and Garmong.
7. Claim 24 is rejected under 35 U.S.C. § 103 as being
unpatentable over Béjot in view of Markuson and Lehrmann.
8. Claim 25 is rejected under 35 U.S.C. § 103 as being
unpatentable over Béjot in view of Markuson and Leyde.
9. Claims 26 and 27 are rejected under 35 U.S.C. § 103
as being unpatentable over Béjot in view of Markuson,
Lehrmann, Leyde and Garmong.
Appeal No. 95-1844
Application 07/822,063
4
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answers 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 anticipation and 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 briefs
along with the examiner's rationale in support of the
rejections and arguments in rebuttal set forth in the
examiner's answers.
It is our view, after consideration of the record
before us, that the disclosure of Lehrmann does fully meet the
invention as recited in claim 5. We are also of the view that
the collective evidence relied upon and the level of skill in
the particular art would have suggested to one of ordinary
skill in the art the obviousness of the invention as set forth
in claims 1-3, 6, 7, 10-24, 26 and 27. We reach the opposite
Appeal No. 95-1844
Application 07/822,063
5
conclusion with respect to the invention as set forth in
claims 4, 8, 9 and 25. Accordingly, we affirm-in-part.
At the outset, we note that the examiner’s answers and
the appeal briefs provide arguments directed to an objection
to either new matter or essential subject matter which was
added to the specification and a requirement that the
objectionable matter be cancelled. Since there are no
rejections before us based upon the sufficiency of the
specification, we will not consider these arguments any
further herein. The propriety of the examiner’s objection is
not within our subject matter jurisdiction.
1. The rejection of claim 5 as
anticipated by Lehrmann.

Anticipation under 35 U.S.C. § 102 requires that each
element of the claim in issue be found, either expressly
described or under principles of inherency, in a single prior
art reference. Kalman v. Kimberly-Clark Corp., 713 F.2d 760,
771, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465
U.S. 1026 (1984). Appellant argues that Lehrmann does not
disclose “a current input constructed and arranged in the form
of an opening adapted to receive a load current-carrying
Appeal No. 95-1844
Application 07/822,063
6
conductor passing through the opening” [brief, page 9]. The
examiner responds that the schematic representation of current
transformer 30 in Lehrmann is understood to indicate that
current-carrying conductor L3 passes through an opening formed
by the windings of the current transformer [answer, page 9].
Appellant responds that there is no current sensing or hole
window in Lehrmann comparable to the detection window 16 as
disclosed [reply brief, pages 5-6]. The examiner also notes
that the monitoring circuitry of Lehrmann can be considered to
be a box having an opening 30 for receiving the current-
carrying conductor L3 [answer, page 10]. We find ourselves in
agreement with the examiner on both points.
First, we agree that the schematic representation of
current transformer 30 in Lehrmann was known to the artisan to
represent the windings of a coil surrounding the conductor L3.
As the examiner has pointed out, the coil was known to have an
[axial] opening through which the current-carrying conductor
[L3] passes. This arrangement is sufficient to meet the broad
language of claim 5. Even though appellant argues that
Lehrmann itself does not explicitly show the claimed opening,
Appeal No. 95-1844
Application 07/822,063
Fink et al. (Fink), Standard Handbook For Electrical2
Engineers, McGraw-Hill Book Company, 1968, pages 10-21 and 10-
7
a reference anticipates a claim if it discloses the claimed
invention “such that a skilled artisan could take its
teachings in combination with his own knowledge of the
particular art and be in possession of the invention.” In re
Graves, 69 F.3d 1147, 1152, 36 USPQ2d 1697, 1701 (Fed. Cir.
1995), quoting from In re LeGrice, 301 F.2d 929, 936, 133 USPQ
365, 372 (CCPA 1962). We agree with the examiner as to what
the schematic representation of current transformer 30
indicates. Although appellant seeks to have us import his
preferred embodiment into the claim, we decline to do so. A
claim is given its broadest reasonable interpretation during
prosecution before the Patent and Trademark Office, and the
examiner’s interpretation of claim 5 is reasonable and
correct. Appellant’s argument regarding the property
possessed by his invention of tolerating reversed phases is
not required by the language of claim 5.
Although we agree with the examiner’s finding that the
current transformer of Lehrmann meets the language of claim 5,
we also note that Fink substantiates this view [a copy of2
Appeal No. 95-1844
Application 07/822,063
22. This handbook is considered a standard reference work and
is relied upon by us only to substantiate facts in the
evidentiary showing already made by the examiner. This
evidence does not constitute a basis for a new ground of
rejection. See In re Boon, 439 F.2d 724, 727, 169 USPQ 231,
234 (CCPA 1971).
8
pages 10-21 and 10-22 is attached to this decision]. Fink
indicates that a current transformer is “installed around a
cable, or conductor in a bushing” [emphasis added]. In order
to be installed around a cable, there must be an opening in
the current transformer through which the cable passes. This
definition substantiates the examiner’s position.
Additionally, we note that appellant has declined to
respond to the alternate position taken by the examiner. The
examiner has determined that the measuring circuit 4 of
Lehrmann would be contained within a housing, and the
conductor L3 must enter this housing through an opening in the
housing for the current to be measured. We agree that there
appears to be no way that the conductor L3 in Lehrmann can get
into the measurement housing except through an opening adapted
to receive the current-carrying conductor through that
opening. Such an interpretation would also meet the broad
Appeal No. 95-1844
Application 07/822,063
9
language of claim 5. Accordingly, we sustain the examiner’s
rejection of claim 5.
The remaining rejections are all based on obviousness
under 35 U.S.C. § 103. As a general proposition in an appeal
involving a rejection under 35 U.S.C. § 103, an examiner is
under a burden to make out a prima facie case of obviousness.
If that burden is met, the burden of going forward 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 In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); 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).
The examiner has pointed out the teachings of each of
the prior art references, has pointed out the perceived
differences between this prior art and the claimed invention,
and has reasonably indicated how and why this prior art would
Appeal No. 95-1844
Application 07/822,063
10
have been modified and/or combined to arrive at the claimed
invention. The examiner has, therefore, at least satisfied
the burden of presenting a prima facie case of obviousness.
The burden is, therefore, upon appellant to come forward with
evidence or arguments which persuasively rebut the examiner's
prima facie case of obviousness. Appellant has presented
several arguments in response to the examiner’s rejections.
Therefore, we consider obviousness based upon the totality of
the evidence and the relative persuasiveness of the arguments.
2. The rejection of claims 1, 6 and
18-22 as unpatentable over Béjot and
Markuson.
These claims stand or fall together [brief, page 6].
With respect to representative, independent claim 1, the
examiner applies Béjot as a power monitoring device which
teaches all the features of claim 1 except for the trip
circuitry. The examiner cites Markuson to provide a teaching
of trip circuitry and presents reasons for combining the
teachings of Markuson with Béjot to arrive at the invention of
claim 1 [final rejection, pages 4-5]. Appellant argues that
there is no suggestion to combine the teachings of the
Appeal No. 95-1844
Application 07/822,063
11
references, that the trip circuitry is not taught by Markuson,
and that the combination of teachings does not provide a
substantially instantaneous indication of power [brief, pages
10-17].
With respect to appellant’s first two points, Markuson
teaches a power monitoring device which measures and indicates
overload conditions, underload conditions and other conditions
[column 4, line 24]. Markuson also teaches that the detected
conditions result in the motor being slowed down, shut down or
restarted as desired [column 6, lines 61-63]. We agree with
the examiner that a trip signal is the same as a shut down
signal, and the shut down signal of Markuson would meet the
trip signal recitation of claim 1. Considering the breadth of
claim 1, we conclude that it would have been obvious to the
artisan to broadly provide trip circuitry as taught by
Markuson in order to shut down a device in an overload state
of power consumption such as the motor of Béjot. It is not
necessary that a suggestion to combine references be expressly
stated in the references themselves. The artisan would have
Appeal No. 95-1844
Application 07/822,063
12
recognized the obviousness of applying the Markuson shut down
signal to other motors such as the Béjot motor.
Although we agree with the examiner that claim 1
recites nothing about the instantaneous indication of power
and such a property is not inherent in the claim language as
argued by appellant, we also agree with the examiner that the
measurement of power in the applied references is sufficiently
instantaneous to meet the recitations of the claims in any
case. Therefore, we sustain the rejection of claims 1, 6 and
18-22.
3. The rejection of claims 2, 3 and 7
as unpatentable over Béjot, Markuson
and Lehrmann.
These claims stand or fall together [brief, page 6].
Lehrmann is added to the previous combination to show that it
was known to use a Hall device to perform the multiplication
of current and voltage to derive a power output. Appellant
relies on the arguments presented in support of the
patentability of claim 1 to support the patentability of this
group of claims [brief, pages 17-18]. Since we determined
above that the arguments with respect to claim 1 were not
Appeal No. 95-1844
Application 07/822,063
13
persuasive, we also sustain the rejection of claims 2, 3 and
7.
4. The rejection of claim 4 as
unpatentable over Béjot, Markuson and
Leyde.
Claim 4 adds absolute value circuitry to the apparatus
of claim 1. The examiner cites Leyde as a teaching that it
was known to use absolute value circuitry in power monitoring
devices. The examiner asserts that the use of absolute value
circuitry in the Béjot-Markuson combination would have been
obvious to the artisan because it would reduce circuitry and
cut costs [final rejection, page 7]. Appellant argues that
there is no suggestion in the applied references to use
absolute value circuitry to provide a signal representative of
the absolute value of the power signal.
Even though the absolute value circuitry is recited
extremely broadly in claim 4, we agree with appellant that the
use of an absolute value detector in Leyde for a different
purpose would not have suggested its use with the Béjot power
detector. The examiner’s theory that an absolute value
detector would cut costs is purely conjectural on his part.
Appeal No. 95-1844
Application 07/822,063
14
There is no evidence that an absolute value detector requires
less components or cost than a regular detector with polarity
detectors added thereto. The examiner’s combination of
references basically takes the position that because absolute
value detectors were known, it would have been obvious to use
them anywhere. We are of the view that the record in this
case does not support that position. Therefore, we do not
sustain the rejection of claim 4.
5. The rejection of claims 8-13 as
unpatentable over Béjot, Markuson,
Lehrmann and Deffenbaugh.
These claims are indicated to stand or fall together
[brief, page 6]. Although the examiner listed these claims as
part of a single rejection, the final rejection makes it clear
that this was a mistake. The examiner only refers to
Deffenbaugh to support the rejection of claims 8 and 9. In
discussing the rejection of claims 10-13, the examiner
indicates that the features of these claims are taught by
Béjot, Markuson or Lehrmann. Thus, it is apparent from the
final rejection that the rejection of claims 10-13 requires
only the patents to Béjot, Markuson and Lehrmann, whereas the
Appeal No. 95-1844
Application 07/822,063
15
rejection of claims 8 and 9 also requires Deffenbaugh.
Therefore, we will consider claims 8 and 10 separately for
patentability since they should not have been grouped together
based upon the examiner’s explanation.
Claim 8 adds a distortion-reducing impedance network
to the apparatus of claim 7. The examiner cites Deffenbaugh
to support his position that it would have been obvious to
provide such a network to the power monitoring device of
Béjot. It is the examiner’s position basically that reducing
distortion is an inherent property of the circuitry of each of
the applied references. Appellant argues that any distortion
reduction in the references individually does not suggest its
use in a power monitoring apparatus as recited in claim 8.
Our position on this point is basically the same as we
discussed above with respect to the absolute value circuitry.
Although the recitations of the distortion-reducing impedance
network are very broadly recited in claim 8, we agree with
appellant that the examiner’s rationale for combining the
teachings of the references is not supported by the record in
this case. There is no evidence on the record that a network
Appeal No. 95-1844
Application 07/822,063
16
coupled as recited in claim 8 is either necessary or desirable
in the monitoring device of either Béjot, Lehrmann or
Markuson. Therefore, we do not sustain the rejection of
claims 8 and 9.
As noted above, claims 10-13 do not recite the
impedance network of claims 8 and 9 and do not require the
teachings of Deffenbaugh for support of the rejection. The
final rejection clearly points out how the teachings of Béjot,
Markuson and Lehrmann are applied to meet the recitations of
claims 10-13 [pages 9-10]. We are in agreement with the
examiner as to the manner in which the references suggest the
limitations in claims 10-13. Appellant argues that there is
no teaching of a terminal to electrically connect the
transformer to a device being powered. We are of the view
that the transformer in Lehrmann clearly has at least one
terminal connected to the load which is being powered.
Therefore, we sustain the rejection of claims 10-13. This is
not a new ground of rejection since we simply are not relying
on the teachings of Deffenbaugh to support the rejection of
these claims. The collective teachings of the references as
Appeal No. 95-1844
Application 07/822,063
17
applied by the examiner are still sufficient to sustain the
rejection of claims 10-13.
6. The rejection of claims 14-17 and
23 as unpatentable over Béjot,
Markuson, Lehrmann, Leyde and Garmong.
These claims stand or fall together [brief, page 6].
Appellant relies on the arguments made above with respect to
claim 7, and also argues that the trip circuitry of claims 16
and 17 is not suggested by Markuson. We have considered the
arguments with respect to claim 7 and the obviousness of trip
circuitry in our discussion above. In both cases we were
unpersuaded that the examiner had erred in finding obviousness
in these features. Therefore, we sustain the rejection of
claims 14-17 and 23.
7. The rejection of claim 24 as
unpatentable over Béjot, Markuson and
Lehrmann.
Claim 24 depends from claim 3, and appellant relies on
the patentability of claim 3 to support the patentability of
claim 24 [brief, page 26]. Since the rejection of claim 3 was
sustained above, we also sustain the rejection of claim 24.
Appeal No. 95-1844
Application 07/822,063
18
8. The rejection of claim 25 as
unpatentable over Béjot, Markuson and
Leyde.
Claim 25 depends from claim 4 and is rejected on the
same combination of references. Since we determined above
that the subject matter of claim 4 was not obvious in view of
the applied references, it follows that the subject matter of
claim 25 is also not suggested by the applied references.
Therefore, we do not sustain the rejection of claim 25.
9. The rejection of claims 26 and 27
as unpatentable over Béjot, Markuson,
Lehrmann, Leyde and Garmong.
These claims stand or fall together [brief, page 6].
These claims depend respectively from claims 15 and 17 which
were previously discussed. Appellant relies on the
patentability of claims 15 and 17 to support the patentability
of these claims as well as on a broad general assertion that
the subject matter of these claims is not taught by the
references with no accompanying analysis [brief, page 29].
Neither of these contentions is sufficient to persuade us that
the examiner erred in rejecting these claims. Therefore, we
sustain the rejection of claims 26 and 27.
Appeal No. 95-1844
Application 07/822,063
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In summary, the prior art rejections of the claims
have been sustained with respect to claims 1-3, 5-7, 10-24, 26
and 27, but have been reversed with respect to claims 4, 8, 9
and 25. Therefore, the decision of the examiner rejecting
claims 1-27 is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
)
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
RICHARD TORCZON )
Administrative Patent Judge )
Appeal No. 95-1844
Application 07/822,063
20
Charles Hieken
FISH & RICHARDSON
225 Franklin Street
Boston, MA 02110-2804