Ex Parte Pearson et al

Patent Trial and Appeal Board

Dec 7, 2016

13289945 (P.T.A.B. Dec. 7, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/289,945 11/04/2011 Richard David Pearson 87288.4820 7869
7590 12/09/2016
BAKER & HOSTETLER LLP
WASHINGTON SQUARE, SUITE 1100
1050 CONNECTICUT AVE. N.W.
WASHINGTON, DC 20036-5304
EXAMINER
CHENG, DIANA
ART UNIT PAPER NUMBER
2842
NOTIFICATION DATE DELIVERY MODE
12/09/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD DAVID PEARSON and
LUIGI LANFRANCHI1
Appeal 2015-002726
Application 13/289,945
Technology Center 2800
Before CATHERINE Q. TIMM, WESLEY B. DERRICK, and
LILAN REN, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL2
STATEMENT OF CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner’s decision to reject claims 1—18. We have jurisdiction under
35 U.S.C. § 6(b).
1 Appellants identify the real party in interest as RADIODETECTION LTD.
Br. 3.
2 In our opinion below, we reference the Specification filed November 4,
2011 (Spec.), Final Office Action mailed January 31, 2014 (Final), the
Appeal Brief filed July 3, 2014 (Br.), and the Examiner’s Answer mailed
October 24, 2014 (Ans.).
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Application 13/289,945
We AFFIRM.
The claims are directed to a signal generator including two sets of
oscillators, filters, and terminals. Claim 1 is illustrative:
1. A signal generator for coupling to a concealed
conductor, comprising
a first oscillator configured to generate a first waveform
having a first frequency;
a first terminal coupled to the first oscillator through a
first filter configured to pass signals of the first frequency;
a second oscillator configured to generate a second
waveform having a second frequency; and
a second terminal coupled to the second oscillator
through a second filter configured to pass signals of the second
frequency.
Br. 23 (Claims Appendix).
The Examiner maintains the following rejections:
A. The rejection of claims 1—6, 11—13, and 15 under 35 U.S.C. § 103(a)
as obvious over Stratakos3 in view of Hiraki;4
B. The rejection of claims 7—10 under 35 U.S.C. § 103(a) over Stratakos
in view of Hiraki, and further in view of Odagiri;5 and
C. The rejection of claims 14 and 16—18 under 35 U.S.C. § 103(a) over
Stratakos in view of Hiraki, and further in view of Pearson.6
3 Stratakos et al., US 2012/0044014 Al, published Feb. 23, 2012.
4 Hiraki et al., US 2003/0034823 Al, published Feb. 20, 2003.
5 Odagiri, US 8,115,563 B2, issued Feb. 14, 2012.
6 Pearson et al., US 7,342,537 B2, issued Mar. 11, 2008.
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Application 13/289,945
OPINION
Rejection A
For the rejection of claims 1—6, 11—13, and 15 under 35 U.S.C.
§ 103(a) as obvious over Stratakos in view of Hiraki, Appellants present
separate arguments for claims 1, 2, 3, 4, 5, and 6. Br. 7—18. Thus, we select
those claims as representative for deciding the issues on appeal. Claims 11—
13, and 15 stand or fall with claim 1.
Claim 1
The Examiner finds that Stratakos discloses a signal generator as
shown in Figure 27 that includes a first oscillator configured to generate a
first waveform having a first frequency (pointing to element 2702(1)) and a
second oscillator configured to generate a second waveform having a second
frequency (pointing to element 2702(2)). Final 2. The Examiner further
finds that Stratakos suggests the use of filters, but applies Hiraki to explicitly
show the details of such filters. Final 3; Ans. 16. The Examiner further
finds that the combination of Stratakos and Hiraki teach a first terminal
coupled to the first oscillator through a first filter configured to pass signals
of the first frequency, and a second terminal coupled to the second oscillator
through a second filter configured to pass signals of the second frequency as
required by claim 1. Final 3.
Appellants parse the claim apart and direct arguments to various
portions of the parsed claim. Considering the arguments as they relate to the
claim and rejection, we articulate the issue as: Have Appellants identified a
reversible error in any of the following: (1) the Examiner’s finding that
Stratakos discloses oscillators having the configuration required by claim 1;
(2) the Examiner’s determination that the preamble language “signal
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Application 13/289,945
generator for coupling to a concealed conductor” fails to structurally
distinguish the apparatus of the claim from that of the prior art; and (3) the
Examiner’s finding that together Stratakos and Hiraki would have suggested
to one of ordinary skill in the art including filters in the apparatus of
Stratakos so that a first terminal is coupled to the first oscillator through a
first filter and a second terminal is coupled to the second oscillator through a
second filter?
Issue (1): Oscillators
Appellants contend that Stratakos does not disclose that elements
2702(1) and 2702(2) are oscillators, and then further contend that Stratakos
and Hiraki fail to teach signal generator to ‘generate a first waveform
having a first frequency’ and ‘generate a second waveform having a second
frequency’” as purportedly recited by claim 1. Br. 7—9 (emphasis added).
Appellants’ arguments do not identify a reversible error in the
Examiner’s findings with regard to the oscillator limitations of the claim.
First, Appellants’ arguments misconstrue the requirements of the
claim. Claim 1 does not require the “signal generator” generate the
waveforms; rather, the claim requires oscillators be “configured” to perform
the generating function.
Second, considering that the claim is directed to an apparatus and
further considering that the structural elements at issue are first and second
oscillators configured to generate waveforms having frequencies, the issue is
whether Stratakos’ switching circuits 2702 have the structure of the
oscillators required by the claim. See Hewlett-Packard Co. v. Bausch &
Lomb Inc^, 909 F.2d 1464, 1468 (Fed. Cir. 1990) (“apparatus claims cover
what a device is, not what a device does.”); In re Nuijten, 500 F.3d 1346,
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1355 (Fed. Cir. 2007) (“[t]he Supreme Court has defined the term ‘machine’
as ‘a concrete thing, consisting of parts, or of certain devices and
combination of devices.’” (quoting Burr v. Duryee, 68 U.S. (1 Wall.) 531,
570 (1863)).
To answer the question, we first look to the Specification to determine
what Appellants mean by “oscillator” and what structures are encompassed.
As pointed out by the Examiner (Ans. 12), Appellants’ Specification
describes an embodiment with a first oscillator that “generates an AC signal
having a frequency of 33 kHz” and a second oscillator that “generates a
signal having a second frequency,” for example, a frequency of 66 kHz.
Spec. 135. This portion of the Specification states that Figure 1 illustrates
oscillators 102 and 104. Figure 1 shows oscillators 102 and 104 as black
boxes without any particular structure. It is not known from this disclosure
whether an oscillator configured to generate a first waveform having a first
frequency has a different structure than a second oscillator configured to
generate a second waveform having a second frequency.
Appellants also describe schematic diagrams of embodiments (Fig. 2,
3A) that use controllers (e.g., 202 in Fig. 2) to generate a first waveform
having a first frequency and a second waveform having a second frequency
that feeds the waveform through amplifiers (204 in Fig. 2) containing
switching devices in half-bridge formation (e.g., 218, 220 in Fig. 2). Spec.
40, 44. In an embodiment that is an alternative to the embodiment of
Figure 2, the Specification discloses using a pair of crystal oscillator circuits
running independently of one another as “the oscillators controlling the half-
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bridges.” Spec. 143.7 The Specification does not provide details of the
crystal oscillator circuits.
Given the lack of guidance in the Specification, we determine that any
circuit structure that generates oscillating electric currents or voltages is an
“oscillator.”
Stratakos is directed to an apparatus for maximizing the amount of
power extracted from an electric power source with a non-linear power
curve, such as a photovoltaic device, a battery, or a fuel cell. Stratakos 196.
In one embodiment, the electric power system includes multiple switching
circuits 2702 as shown in Figure 27. Stratakos 1251. Figure 27 shows three
such switching circuits 2702(1), 2702(2), and 2702(3).
The switching circuits 2702 are each an embodiment of switching
circuit 504 shown in Figure 5, which are in turn an embodiment of the
switching circuits 404 of Figure 4. Stratakos Tflf 117, 251. The switching
devices within the switching circuits switch at a frequency of, for example
20 kHz, or at higher frequencies of from about 500 kHz to 800 kHz.
Stratakos 101—102. The frequencies may be fixed, varied, or displaced in
phase, and the duty cycle controlled. Stratakos 103—104. Thus, the
switching circuits 2702 of Stratakos are “oscillators” within the meaning of
claim 1.
7 The main embodiment of Figure 2 uses a controller 202 to generate
waveforms at a first frequency of 33 kHz and a second frequency of 66 kHz
and does not specifically state that two oscillators generate the two
waveforms. Thus, it is not clear that the embodiment of Figure 2 is
encompassed by claim 1. Similarly, it is not clear that the embodiment of
Figure 3 A is encompassed by claim 1.
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A preponderance of the evidence supports the Examiner’s finding that
switching circuits 2702(1) and 2702(2) are first and second oscillators
configured as required by claim 1. Each switching circuit generates a
waveform having a frequency and the frequency may vary.
Issue (2): The preamble
Appellants contend that Stratakos does not teach a “signal generator
for coupling to a concealed conductor” as recited by claim 1. Br. 10. As
pointed out by the Examiner, this language is found in the preamble of claim
1. Ans. 15. “Whether to treat a preamble term as a claim limitation is
‘determined on the facts of each case in light of the claim as a whole and the
invention described in the patent.’” Am. Med. Sys., Inc. v. Biolitec, Inc., 618
F.3d 1354, 1358 (Fed. Cir. 2010) (quoting Storage Tech. Corp. v. Cisco Sys.,
Inc., 329 F.3d 823, 831 (Fed. Cir. 2003). Generally, the preamble does not
limit the claim, although it may be limiting if it recites essential structure or
steps or is otherwise necessary to give life and meaning to the claim. Id.
But “the preamble has no separate limiting effect if, for example, ‘the
preamble merely gives a descriptive name to the set of limitations in the
body of the claim that completely set forth the invention.’” Id. (quoting IMS
Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434—35 (Fed. Cir.
2000).
As pointed out by the Examiner, “coupling to a concealed conductor”
is merely the intended use of the signal generator. Appellants do not provide
any persuasive evidence that the intended use provides any additional
structure to the signal generator, nor do Appellants provide any evidence
that the moniker “signal generator” adds any structure to the claim that is not
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Application 13/289,945
already recited in the body of the claim. Thus, Appellants’ argument fails to
identify a reversible error in the Examiner’s rejection.
Issue (3): Terminals coupled to oscillators through filters
As we stated above, the Examiner finds that the combination of
Stratakos and Hiraki would have suggested the terminal and filter
arrangement of the claims. Appellants urge that neither reference teaches
the terminals, filters, or the arrangements required by the claim, and one of
ordinary skill in the art would not have combined the teachings of Stratakos
and Hiraki “to render obvious ‘a signal generator for coupling to a concealed
conductor’ as recited in claim 1.” Br. 10—13.
First, the combination need not teach the intended use in order to
teach or suggest an apparatus having all of the structures required by the
claim.
Second, the Examiner finds that Stratakos suggests the use of a filter.
Ans. 16, citing Stratakos 1102. Given that teaching, we are not persuaded
that there is no suggestion within the prior art for using a filter in the
location required by claim 1.
Claims 2—4
Claims 2-4 each depends from claim 1 and further limits either the
second frequency or the first waveform recited in the functional portion of
the “configured to” clauses of claim 1. For instance, claim 2 requires the
second frequency be a harmonic of the first frequency. Thus, the second
oscillator of claim 1 must be “configured to generate a second waveform
having a second frequency” that “is a harmonic of the first frequency.”
Claim 3 requires the second frequency be “twice the first frequency.” Claim
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4 requires the first waveform be “selected to suppress a third harmonic
frequency of the first frequency.”
We agree with the Examiner that Stratakos suggests using oscillators
meeting the requirements of claims 2-4. Final 3^4; Ans. 20—24. Stratakos
suggests using oscillators that can generate various waveforms at various
frequencies. Stratakos Tfl[ 101—103. Appellants have not persuaded us that
the claimed oscillators are structurally distinguishable from the switching
circuits of Stratakos.
Claim 5
Claim 5 depends from claim 1 and further requires a power supply
that provides a supply voltage and a ground voltage for the first and second
oscillators.
The Examiner finds 2706 and 2704 and Hiraki Vcc and Vss suggest
the necessary power supply. Final 4. Stratakos teaches each switching
circuit 2702 includes input terminals 2704, 2706 for connecting to a
respective power source such as a photovoltaic device. Stratakos 1252.
Thus, Stratakos suggests connecting to a power supply. The Examiner
explains that “[it] is physically impossible to operate the first and second
oscillators without a power supply that provides a supply voltage and a
ground voltage.” Ans. 24. Appellants do not respond. No reply brief was
filed.
A preponderance of the evidence supports the Examiner’s findings.
Claim 6
Claim 6 depends from claim 5 and requires “the first and/or second
oscillator [further] comprises a current sensor and the power supply is
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configured to reduce the supply voltage if a current detected by the current
sensor exceeds a predetermined value.”
Appellants contend that “[t]he Examiner makes a general assertion
that Stratakos teaches the features of claim 6, but fail [sic, fails] to provide
any support for a current sensor.” Br. 17. But, as pointed out by the
Examiner, Stratakos teaches that the system helps to maximize the “amount
of electric power extracted from an electric power source with a non-linear
power curve, such as a photovoltaic device” (Stratakos 196), but which does
not “exceed the predetermined value that the device is capable of
extracting.” Final 4—5. Stratakos supports this finding at paragraph 96 and
also at paragraph 110, which states that the switching circuits “may include
current measurement circuitry to achieve over-current protection.” Stratakos
1110. Moreover, Appellants do not respond to the Examiner’s finding. No
reply brief was filed.
A preponderance of the evidence supports the finding of the
Examiner. Appellants have not identified a reversible error in the
Examiner’s rejection of claim 6.
Rejection B
In addressing the rejection of claims 7—10 under 35 U.S.C. § 103(a)
over Stratakos in view of Hiraki, and further in view of Odagiri, Appellants
do not argue any claim apart from the others. We select claim 7 as
representative for resolving the issue on appeal.
Claim 7 requires that the signal generator of claim 1 further comprise
“a first amplifier configured to amplify the first waveform and a second
amplifier configured to amplify the second waveform.”
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Appellants’ Specification discloses amplifiers (e.g., 204, 210 in Fig.
2), for instance, as formed from a driver 216 that drives two switching
devices 218 and 220 arranged in a half-bridge formation. Spec. 140.
The Examiner acknowledges that neither Stratakos nor Hiraki teach
the required amplifiers. The Examiner finds that Odagiri, in Figure 4,
teaches a first amplifier configured to amplify the first waveform (3 A) and a
second amplifier configured to amplify the second waveform (3B).
According to the Examiner, “[i]t would have been obvious to one of
ordinary skill in the art to use the teachings of Odagiri to further drive the
circuit taught in Stratakos et al. and Hiraki et al., as a whole, for the purpose
of ‘making the power consumption smaller’. (Odagiri, Col. 2, line 45).”
Final 6.
Odagiri is directed to a voltage-feedback class-D amplifier circuit for
improving the frequency characteristic of a circuit part which performs pulse
width modulation by comparing an input signal with a triangular wave.
Odagiri, col. 1,11. 15—20. According to Odagiri,
Generally, a voltage-feedback class-D amplifier circuit is
used as a circuit which drives an actuator or a motor. Using the
voltage-feedback class-D amplifier circuit has a purpose of
making the power consumption smaller, compared with a BTL
(Bridged Transformer-Less) amplifier of an analog drive.
Odagiri, col. 2,11. 42-47.
Appellants state that Odagiri is directed to a positive-side command
value generation circuit 3A and contend that:
There is no motivation to utilize a positive-side command
value generation circuit 3A which utilizes pulse width
modulation in conjunction with DC power supply of either
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Stratakos or Hiraki. It would be unsatisfactory for the intended
purpose of Stratakos or Hiraki of supplying a DC power.
Br. 19.
This argument is not persuasive for the reasons set forth by the
Examiner in the Answer. Ans. 27. The Examiner’s rejection is not based on
using positive-side command value generation circuit 3A of Odagiri,
specifically, but on the concept of using driving circuits, such as the ones
taught by Odagiri, to drive circuits within the Stratakos power extraction
apparatus.
Rejection C
In arguing against the rejection of claims 14 and 16—18 under
35 U.S.C. § 103(a) over Stratakos in view of Hiraki, and further in view of
Pearson, Appellants do not argue any claim apart from the others. Instead,
Appellants argue that it would not have been obvious to combine the
teachings of Stratakos, Hiraki, and Pearson. Br. 20-21. According to
Appellants, using the DC power source of Stratakos and/or Hiraki would
render Pearson inoperative because Pearson requires the use of an
alternating current. Br. 21.
Appellants’ argument is not persuasive because Pearson uses
batteries, a DC power source, to supply power. Pearson, col. 5,11. 57—59.
CONCLUSION
We sustain the Examiner’s rejections.
DECISION
The Examiner’s decision is affirmed.
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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
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