Ex Parte Song

Patent Trial and Appeal Board

Jun 22, 2017

13645833 (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 INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/645,833 10/05/2012 Young-jun Song 2455.1016 9017
21171 7590 06/26/2017
STA AS fr HAT SFY T T P
EXAMINER
SUITE 700 HOANG, ANN THI
1201 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005 ART UNIT PAPER NUMBER
PTAB
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):
ptomail @ s-n-h.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOUNG- JUN SONG
Appeal 2016-008237
Application 13/645,8331
Technology Center 2800
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1—19.2 We have jurisdiction under 35 U.S.C. §
6(b).
We affirm.
1 The Applicant (hereinafter “Appellant”) states that the real party in interest
is “Samsung Electronics Co., Ltd.” (Appeal Brief filed on December 22,
2015, hereinafter “Appeal Br.,” 2).
2 Appeal Br. 10—22; Reply Brief filed on September 1, 2016, hereinafter
“Reply Br.,” 1—6; Examiner’s Answer (notice emailed on July 1, 2016),
hereinafter “Ans.,” 2—7.
Appeal 2016-008237
Application 13/645,833
BACKGROUND
The subject matter on appeal relates to switching mode power
supplies, image forming apparatuses including a switching mode power
supply, power supply apparatuses, electronic devices including a power
supply to power a particular electronic device, and a method of providing
power to an electronic device. See, e.g., Appeal Br., Claims App. (claims 1,
9, and 17—19). The Appellant discloses a conventional (i.e., prior art)
switching mode power supply (SMPS) that includes a surge protection
circuit. Specification, hereinafter “Spec.,” 115. That conventional SMPS is
illustrated in Figure 1, which is reproduced below:
FIG. 1
Figure 1 depicts a circuit diagram of a conventional SMPS.
The Appellant discloses that the conventional SMPS of Figure 1
includes a power supplier 10, a first rectifier 20, a switching unit 30, a
transformer 40, a second rectifier 50, a voltage output unit 60, a feedback
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unit 70, a Zener diode 1, an auxiliary coil unit 90, and a pulse width
modulation (PWM) controller 100. Spec. 126. The PWM controller 100
includes a power pin 110, a control pin 120, and a protection pin 130. Id.
28—30. The Appellant states that although the Zener diode 1 assists in the
operation of the SMPS, it is difficult to maintain stable Zener diode
performance due to variations in the response speed of Zener diodes from
different vendors. Id. 133.
In view of the above, the Appellant discloses an exemplary
embodiment of the claimed SMPS with a surge protection circuit. This
embodiment is depicted in Figure 2, which is reproduced below:
FIG. 2
Figure 2 depicts an embodiment of the Appellant’s claimed SMPS.
The Appellant discloses that “[t]he configuration of the SMPS of FIG.
2 is the same as that of the SMPS illustrated in FIG. 1 and described above
except for the surge protection circuit 80.” Id. 135. The surge protection
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Application 13/645,833
circuit 80 includes a Zener diode 81 connected to the protection pin 130 of
the PWM controller 100. Id. The Appellant discloses that the surge
protection capacity of the surge protection unit 80 is the size of a surge
voltage that the unit 80 can block, which is the breakdown voltage of the
Zener diode 81. Id. 138. The Appellant discloses that the SMPS of Figure
2 prevents the PWM controller 100 from operating in a protective mode
under undesired conditions. Id.
Representative claim 1 is reproduced from page 23 of the Appeal
Brief (Claims Appendix), as follows (emphases added):
1. A switching mode power supply (SMPS) comprising:
a feedback unit to output a predetermined feedback
voltage when an output voltage of the SMPS is not within a
predetermined range;
a pulse width modulation (PWM) controller that includes
a protection pin and cuts off a power supply of the SMPS when
a voltage that is applied to the protection pin exceeds a
predetermined threshold voltage; and
a surge protection unit that is connected to the protection
pin, the surge protection unit to block an external surge voltage
lower than a surge protection capacity of the surge protection unit
for blocking a surge voltage input from outside thereof, and,
when the output voltage of the SMPS is not within the
predetermined range, the surge protection unit to apply a voltage
obtained by subtracting the surge protection capacity of the
surge protection unit from the predetermined feedback voltage
output from the feedback unit to the protection pin,
wherein the surge protection capacity is set higher than the
predetermined threshold voltage of the protection pin.
REJECTIONS ON APPEAL
On appeal, the Examiner maintains two rejections, which are as
follows (Final Office Action (notice emailed on April 28, 2015), hereinafter
“Final Act.,” 2-5):
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Application 13/645,833
I. claims 1—4, 9—12, and 17—19 under 35 U.S.C. § 103(a) as
being unpatentable over acknowledged (i.e., admitted)
prior art (APA)3 in view of Hodgins;4 and
II. claims 5—8 and 13—16 under 35 U.S.C. § 103(a) as being
unpatentable over APA in view of Hodgins and further in
view of Bishop.5
DISCUSSION
Rejection I
The Examiner rejects claims 1—4, 9-12, and 17—19 under § 103(a) as
unpatentable over APA in view of Hodgins. Final Act. 2-4. We select
claim 1 as representative of the issues discussed below.
Citing Figure 1 of the Appellant’s disclosure, the Examiner finds the
APA discloses an SMPS including a feedback unit and a PWM controller
having a protection pin (i.e., PWM controller 100 and protection pin 130 in
Figure 1). Id. at 3. The Examiner finds the APA does not include the surge
protection unit recited in claim 1. Id. The Examiner finds Hodgins discloses
a surge protection unit (i.e., Zener diodes 70) connected to a pin (i.e., pin
16), wherein the surge protection unit blocks an external surge voltage lower
than a surge protection capacity of the surge protection unit. Id. (referring to
Hodgins, Fig. 1). The Examiner concludes it would have been obvious “to
incorporate the surge protection unit of Hodgins into the SMPS of the APA
3 The Examiner refers to Figure 1 of the Appellant’s disclosure as the
acknowledged prior art. Ans. 3.
4 US 3,970,900, issued on July 20, 1976.
5 US 2004/0264087 Al, published on December 30, 2004.
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Application 13/645,833
in order to provide an effective means for protecting the protection pin and
PWM controller of the APA from high voltage breakdown.” Id. The
Examiner determines that when the output voltage of the SMPS is not within
a predetermined range, the combination of APA and Hodgins would provide
a surge protection unit that applies a voltage obtained by subtracting a surge
protection capacity of the surge protection unit from the predetermined
feedback voltage between the feedback unit and the protection pin, as recited
in claim 1.
The Appellant contends Hodgins discloses Zener diodes 70 connected
between a transistor base 62 and the ground side of a DC source via an input
pin 16 of an integrated circuit 10, not a protection pin of a PWM controller,
as recited in claim 1. Appeal Br. 12—13; Reply Br. 2—3. The Appellant
further argues these pins have different technical effects and one of ordinary
skill in the art would not have modified the APA in view of Hodgins.
Appeal Br. 13.
The Appellant’s arguments are unpersuasive. As the Examiner states,
Ans. 2, Hodgins discloses Zener diodes 70 connected to the pin 16 of an
integrated circuit 10 to protect the integrated circuit 10 from a high-voltage
breakdown. See column 2, lines 17—25, of Hodgins, which supports the
Examiner’s findings. Therefore, the surge protection unit of Hodgins is
disclosed as useful for protecting an electronic device. The Examiner
further finds the PWM controller of the Appellant’s Figure 1 includes a
protection pin 130. Final Act. 3. This finding is supported by paragraph 30
of the Appellant’s Specification, which describes Figure 1 of the Appellant’s
disclosure. Thus, the APA discloses a protection pin to which the surge
protection unit of Hodgins would be connected.
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Moreover, as the Examiner states on page 3 of the Final Office
Action, the combination of APA and Hodgins would provide a surge
protection unit that applies a voltage obtained by subtracting a surge
protection capacity of the surge protection unit from a predetermined
feedback voltage between a feedback unit and a protection pin, as recited in
claim 1. Hodgins discloses an exemplary overvoltage condition of 50 volts.
Hodgins, col. 2,11. 43—48. In such a situation, the surge protection unit of
Hodgins minimizes the voltage applied to the integrated circuit. Id. at col. 2,
11. 48—53. Specifically, the Zener diodes 70 limit the voltage through a
transistor 50 of the surge protection unit to 24.7—27.7 volts. Id. at col. 2,11.
58—60. After a voltage drop of 0.7 volts at an emitter 54 of the transistor 50,
the integrated circuit 10 is subjected to 24—27 volts, not the full 50 volts of
the overvoltage condition. Id. at col. 2,11. 60-64. Therefore, not only does
the surge protection unit of Hodgins protect a device from high-voltage
breakdown, the surge protection unit of Hodgins increases the safe operating
voltage for such a device, as taught by Hodgins. Id. at col. 1,11. 24—27; col.
2,1. 67, to col. 3,1. 2.
As a result, the Examiner has provided a sufficient rationale for why
one of ordinary skill in the art would have modified the APA in view of
Hodgins. The Appellant’s arguments fail to identify a reversible error in the
Examiner’s rejection.
The Appellant asserts the Examiner relies upon paragraphs of the
Detailed Description of the Appellant’s Specification, which are not prior
art. Reply Br. 2, 4—5. This argument is unpersuasive because the
paragraphs cited by the Examiner and the Appellant (i.e., paragraphs 26, 30,
and 34 of the Appellant’s Specification) describe the Appellant’s Figure 1,
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which is disclosed as “[a] conventional switching mode power supply
(SMPS).” Spec. 125. Therefore, one skilled in the relevant art would have
understood that the cited paragraphs relate to the acknowledged or admitted
prior art embodied in Figure 1 of Appellant’s disclosure.
The Appellant further asserts the Examiner has not provided evidence
to indicate the skill level for a person of ordinary skill in the art. Appeal Br.
13. We do not find this argument persuasive because the prior art applied by
the Examiner provides sufficient evidence of the ordinary skill level in the
art, and the Appellant provides no further evidence to establish that a
different skill level applies, much less a different conclusion regarding
obviousness. In re GPACInc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (the
Board did not err in adopting the approach that the level of skill in the art
was best determined by the references of record).
The Appellant argues independent claims 9 and 17—19 separately but
presents arguments similar to those for the rejection of claim 1. Appeal Br.
14—18. These arguments are unpersuasive for the reasons discussed above.
The Appellant further asserts Hodgins does not disclose a feedback
operation based upon an output voltage, as recited in claims 9 and 17—19.
Id. at 15—18. This argument is not germane to the Examiner’s rejection
because the Examiner finds the APA discloses a feedback unit for outputting
a predetermined feedback voltage when the output voltage of an SMPS is
not within a predetermined range. Final Act. 3.6 Thus, the Appellant’s
argument does not direct us to a reversible error in the Examiner’s finding.
The Appellant argues dependent claims 2—\ and 10-12, asserting the
6 For the rejection of claims 9 and 17—19, the Examiner refers to the reasons
for rejecting claim 1. Final Act. 4.
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combination of APA and Hodgins does not disclose the limitations of these
claims. Appeal Br. 18—19. However, these “separate” arguments amount to
no more than a recitation of the additional limitations of the dependent
claims and a generic denial that the references teach or suggest the
additional limitations or cure the deficiencies of the principal references.
We and our reviewing court have long held that such “argument” does not
merit separate consideration. See, e.g., In reLovin, 652 F.3d 1349, 1357
(Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted
Rule 41.37 to require more substantive arguments in an appeal brief than a
mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art.”).
For these reasons and those discussed in the Examiner’s Answer, we
uphold the Examiner’s § 103(a) rejection of claims 1—4, 9—12, and 17—19.
Rejection II
The Examiner rejects claims 5—8 and 13—16 under § 103(a) as being
unpatentable over the APA in view of Hodgins and further in view of
Bishop. Final Act. 4—5.
The Appellant disputes the rejection of claims 5—8 and 13—16 by
arguing Bishop does not cure the deficiencies of the references applied in the
rejection of claim 1. Appeal Br. 19—20. For the reasons set forth above,
there are no deficiencies in the rejection of claim 1 that require curing by
Bishop. Additionally, the Appellant contends the Examiner has not
provided evidence of the level of skill for one having ordinary skill in the
art. Id. at 20. As discussed above, this argument is unpersuasive in view of
the evidence of the ordinary skill level in the art provided by the applied
references. The Appellant further argues against the rejection of claims 5—8
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and 13—15 by reciting the limitations of these claims and asserting the
applied references do not disclose the limitations. Such arguments do not
merit distinct consideration, as discussed above.
Claim 16, which depends from independent claim 9, further recites
that the surge protection unit further comprises “a varistor, wherein one end
of the varistor is connected to the anode or the cathode of the Zener diode
and the other end of the varistor is connected to ground.” Appeal Br. 26.
The Appellant argues dependent claim 16 separately by contending
Bishop merely discloses that residual transient energy present across the gas
discharge tubes of Bishop will be coupled through inductors while varistors
remain in a non-conducting state until the clamping voltage of a varistor is
reached, which permits the residual energy to be coupled to a common
ground. Appeal Br. 21. The Appellant further asserts one of ordinary skill
in the art would not have modified the APA and Hodgins in view of Bishop.
Id. at 21—22.
These arguments are unpersuasive. To the extent the Appellant
contends the varistors of Bishop are not used for surge protection, as argued
at pages 5—6 of the Reply Brief, Bishop discloses varistors as components of
a surge protector. Bishop Ull, 14; Fig. 1. Moreover, the Examiner
provides a rationale for modifying the APA and Hodgins in view of Bishop.
Final Act. 5; Ans. 6. The Appellant’s arguments do not identify a reversible
error in the Examiner’s rejection.
For these reasons and those discussed in the Examiner’s Answer, we
uphold the Examiner’s § 103 rejection of claims 5—8 and 13—16.
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SUMMARY
Rejections I and II are affirmed. Therefore, the Examiner’s final
decision to reject claims 1—19 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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