Ex Parte Sawyers

Patent Trial and Appeal Board

Jun 22, 2017

13283952 (P.T.A.B. Jun. 22, 2017)

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
13/283,952 10/28/2011 Thomas P.
22879 7590 06/26/2017
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
Sawyers 82828062 9461
EXAMINER
ROSARIO BENITEZ, GUSTAVO A
ART UNIT PAPER NUMBER
2838
NOTIFICATION DATE DELIVERY MODE
06/26/2017 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):
ipa.mail@hp.com
barbl@hp.com
y vonne.bailey @ hp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS P. SAWYERS
Appeal 2016-003172
Application 13/283,952
Technology Center 2800
Before ROMULO H. DELMENDO, GEORGE C. BEST, and MICHAEL G.
McMANUS, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1—20 of Application 13/283,952
under 35 U.S.C § 112,12 as indefinite and under 35 U.S.C § 103(a) as
obvious. Final Act. (January 8, 2015). Appellant1 seeks reversal of these
rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. §6.
For the reasons set forth below, we reverse.
1 Hewlett-Packard Development Co., L.P. is identified as the real party in
interest. Appeal Br. 1.
Appeal 2016-003172
Application 13/283,952
BACKGROUND
The ’952 Application describes transformers for use in alternating
current adapters. Spec. 11. AC adapters are used to provide power to
electronic devices at various voltage levels. Id. In particular, the ’952
Application describes an apparatus comprising a transformer that may
provide either a first voltage or a second voltage to an electronic device. Id.
111. In this case, the first and second voltages are independent of each
other, i.e., one voltage is not an integer multiple of the other. Id.
Claim 1 is representative of the ’952 Application’s claims and is
reproduced below from the Claims Appendix:
1. An apparatus, comprising:
a transformer having a first secondary winding circuit
and a second secondary winding circuit, wherein the first
secondary winding circuit and the second secondary winding
circuit are each to provide a determined voltage;
output contacts; and
a regulating circuit coupled to the transformer, wherein
the regulating circuit is to regulate the transformer to:
provide a first voltage if the output contacts are
coupled to a first connector, and
provide a second voltage if the output contacts are
coupled to a second connector, wherein the second
voltage is independent of the first voltage.
Appeal Br. Claims App. i.
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Application 13/283,952
REJECTIONS
On appeal, the Examiner maintains2 the following rejections:
1. Claims 1—3, 6, 15, and 18—20 are rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Nishino3 and Hua.4 Final
Act. 4.
2. Claims 4 and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Nishino, Hua, and Jacques.5
Final Act. 8.
3. Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Nishino, Hua, and Mullins.6 Final Act. 9.
4. Claims 7 and 10-14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Nishino and Germagian.7
Final Act. 10.
5. Claims 8 and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Nishino, Germagian, and
Jacques. Final Act. 12.
6. Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Nishino, Hua, andUchida.8 Final Act. 14.
2 The Examiner has withdrawn the rejection of claims 1—20 as indefinite
under 35 U.S.C. § 112,12.
3 US 2009/006707 Al, published March 12, 2009.
4 US 6,879,497 B2, issued April 12, 2005.
5 US 2008/0037293 Al, published February 14, 2008.
6 US 2013/0286522 Al, published October 31, 2013.
7 US 2004/0085043 Al, published May 6, 2004.
8 US 2003/0123265 Al, published July 3, 2003.
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Application 13/283,952
DISCUSSION
Rejection 1. In rejecting claim 1, the Examiner found that Nishino
describes each limitation of the claim except the (1) output contacts and (2)
regulating circuit. Final Act. 4. The Examiner found that Nishino describes
a regulating circuit that regulates the transformer to provide either a first
voltage or a second voltage. Id. Because Nishino does not describe output
contacts, it does not describe regulating the transformer to provide a first
voltage if the output contacts are coupled to a first connector and a second
voltage if the output contacts are coupled to a second connector. Id.
The Examiner also found that Hua describes a power adapter
comprising a set of output contacts. Id. (citing Hua Figs. 3, 5, 6). The
Examiner found that Hua describes the provision of a first voltage if a first
connector is coupled to members of the set of output contacts and a second
voltage if a second connector is coupled to two different members of the set
of output contacts. Id.
The Examiner further found that a person of ordinary skill in the art at
the time of the invention would have modified Nishino to include Hua’s
output contacts so that the modified transformer apparatus would be able to
provide different output voltages to different loads or electric circuits. Id. at
4-5.
Based on these findings, the Examiner concluded that the differences
between the subject matter of claim 1, considered as a whole, and the prior
art would have been obvious to a person having ordinary skill in the art at
the time of the invention. Id.
Appellant argues that the rejection of claim 1 should be reversed
because the Examiner has not established a prima facie case of obviousness.
Appeal Br. 9. In particular, Appellant argues that the Examiner (1) erred in
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Application 13/283,952
construing claim 1, id. at 10-11; (2) mischaracterized Hua’s description,
id. at 11—13; (3) improperly combined Nishino and Hua, id. at 14—15; and
(4) failed to provide sufficient motivation to combine Nishino and Hua, id.
at 15—16.
We agree with Appellant that the Examiner erred in finding that a
person having ordinary skill in the art at the time of the invention would
have had a reason to combine Nishino and Hua. We, therefore, reverse the
rejection of claim 1. We express no opinion regarding Appellant’s other
arguments for reversal of the rejection of claim 1.
For the following reasons, we determine that the Examiner erred by
finding that a person having ordinary skill in the art would have been
motivated to combine Nishino and Hua.
In rejecting claim 1, the Examiner found:
It would have been obvious to one of ordinary skill in the
art at the time of the invention to modify the circuit of Nishino
to include output contacts; and first voltage if the output
contacts are coupled to a first connector and a second voltage if
the output contacts are coupled to a second connector as taught
by Hua to provide the different output voltage levels to the
different loads or electric circuits.
Final Act. 4—5; see also Ans. 6—8.
This reasoning is insufficient because Nishino describes automatically
changing the output voltage of a transformer-containing apparatus based
upon changes in the load. See, e.g., Nishino 9, 11, 13. Since Nishino’s
apparatus adjusts its output voltage according to the load attached to the
apparatus, a person having ordinary skill in the art at the time of the
invention would not have had reason to modify Nishino so that the output
voltage was determined by the type of connector attached to the output
contacts.
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Application 13/283,952
In view of the foregoing, we reverse the Examiner’s rejection of
independent claim 1. The Examiner’s rejection of claim 15, the other
independent claim subject to Rejection 1, relies on the same flawed
reasoning. Final Act. 6—7. Thus, we also reverse the rejection of claims 2,
3, 6, 15, and 18—20.
Rejection 2. Appellant argues that Jacques does not cure the
deficiencies in the Examiner’s rejection of independent claims 1 and 15.
Appellant, therefore, argues that the Examiner’s rejection of claims 4 and
16—which depend from claims 1 and 15 respectively—should be reversed.
Appeal Br. 17.
Because we have reversed the rejections of independent claims 1 and
15 and Jacques does not cure the deficiencies in the rejection of these
claims, we also reverse the rejection of claims 4 and 16.
Rejection 3. Appellant argues that Mullins does not cure the
deficiencies in the Examiner’s rejection of independent claim 1. Appellant,
therefore, argues that the Examiner’s rejection of claim 5—which depends
from claim 1—should be reversed for the same reasons as the rejection of
claim 1. Appeal Br. 17—18.
Because we have reversed the rejection of independent claim 1 and
Mullins does not cure the deficiencies in the rejection of this claim, we also
reverse the rejection of claim 5.
Rejection 4. Claim 7 reads:
7. A method, comprising:
regulating, by a power circuit of a particular device, a
transformer provisioned voltage to a first independent voltage if
a first connector associated with a first device is coupled to
output contacts of the particular device;
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Application 13/283,952
regulating, by the power circuit, the transformer
provisioned voltage to a second independent voltage if a second
connector associated with a second device that is different than
the first device is coupled to the output contacts; and
controlling, by the power circuit, the transformer
provisioned voltage if the output contacts are not coupled to
either the first connector associated with the first device or the
second connector associated with the second device.
Appeal Br. Claims Appendix ii.
The Examiner rejected claim 7 as unpatentable over the combination
of Nishino and Germagian. Final Act. 10—11. In particular, the Examiner
found that Chino describes or suggests each limitation of claim 7 except:
Nishino does not teach a second connector associated with a
second device that is different than the first device coupled to
the output contacts; and [sic] if the output contacts are not
coupled to either the first connector associated with the first
device or the second connector associated with the second
device.[9]
Final Act. 10. The Examiner also found that Germagian teaches these
missing claim limitations. See id. at 10—11.
The Examiner further found that a person of ordinary skill in the art
would have combined Nishino and Germagian “to provide multiple outputs
to different loads.” Id. at 11.
9 We assume that the second half of this sentence was intended to read “. . .
contacts, and Nishino does not teach using the power circuit to control the
transferor provision voltage if the output contacts are not coupled to either
the first connector associated with the first device or the second connector
associated with the second device.” Because we are reversing the rejection
of claim 7, the Examiner’s lack of clarity regarding this finding is harmless
error.
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Application 13/283,952
Appellant argues that the rejection of claim 7 should be reversed, inter
alia, because the Examiner has not identified a sufficient reason for a person
of ordinary skill in the art to modify Nishino in view of Germagian. Appeal
Br. 20.
As discussed above, Nishino describes a transformer-containing
apparatus that automatically adjusts its output voltage depending upon the
connected load. E.g., Nishino Tflf 9, 113. Thus, the Examiner’s proffered
reason to combine Nishino and Germagian is insufficient because Nishino is
already capable of supplying independent voltages to different devices.
In view of the foregoing, we reverse the rejection of claim 7.
Accordingly, we also reverse the rejection of claims 10—14, which ultimately
depend from claim 7.
Rejection 5. Appellant argues that the rejection of claims 8 and 9
should be reversed because Jacques does not cure the defects in the rejection
of independent claim 7, from which claims 8 and 9 depend. Appeal Br. 21—
22.
Because we have reversed the rejections of independent claim 7 and
Jacques does not cure the deficiencies in the rejection of this claim, we also
reverse the rejection of claims 8 and 9.
Rejection 6. Appellant argues that the rejection of dependent claim
17 should be reversed because Uchida does not cure the defects in the
Examiner’s rejection of parent independent claim 15. Appeal Br. 22.
Because we have reversed the rejection of independent claim 15 and
Uchida does not cure the deficiencies in the rejection of this claim, we also
reverse the rejection of claim 17.
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Application 13/283,952
CONCLUSION
For the reasons set forth above, we reverse the rejection of claims 1—
20 of the ’952 Application.
REVERSED
9