Ex Parte Steffen

Board of Patent Appeals and Interferences

Feb 28, 2008

10182101 (B.P.A.I. Feb. 28, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MICHAEL STEFFEN
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Appeal 2007-4443
Application 10/182,101
Technology Center 2800
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Decided: February 28, 2008
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Before KENNETH W. HAIRSTON, SCOTT R. BOALICK,
and MARC S. HOFF, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1 to 9 and 16 to 20. We have jurisdiction under 35 U.S.C. § 6(b).
We will sustain the rejections.
STATEMENT OF THE CASE
Appellant has invented a frequency converter for an immersion
vibrator. The frequency converter converts electrical mains voltage to a
special voltage needed to power the immersion vibrator. The frequency
converter plugs into the electrical mains voltage supply source with a mains
Appeal 2007-4443
Application 10/182,101

plug, and the immersion vibrator plugs into the frequency converter via a
main1 plug (Figure 1; Specification 3 and 4).
Claim 1 is representative of the claims on appeal, and it reads as
follows:
1. A frequency converter for a stand-alone2 immersion vibrator having
a main plug configured to plug into a special voltage network so as to
receive a special voltage, the frequency converter comprising:
a mobile converter housing;
a converter circuit, which is arranged in the converter housing, for
converting an electrical mains voltage to the special voltage;
a supply cable which is mechanically connected to the converter
housing and which is electrically coupled to the converter circuit, and at
whose end facing away from the converter housing is a plug part that is
configured to receive the electrical mains voltage; and
a plug socket which is fed with the special voltage from the converter
circuit, wherein the plug socket is configured to removably receive the main
plug of the stand-alone immersion vibrator.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Clark US 3,410,528 Nov. 12, 1968
Janonis US 5,612,580 Mar. 18, 1997

1 In the disclosure, it appears that “main” and “mains” are interchangeably
used by Appellant.
2 At the oral hearing, the panel noted that the disclosure lacks written
description support for this term.
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Application 10/182,101

Grande EP 0 964 116 A1 Dec. 15, 1999
(European Patent Application)
The Examiner rejected claims 1 to 3 and 5 to 9 under 35 U.S.C.
§ 103(a) based upon the teachings of Grande and Clark.
The Examiner rejected claims 4 and 16 to 20 under 35 U.S.C. § 103(a)
based upon the teachings of Grande, Clark, and Janonis.
ISSUE
Appellant contends inter alia that Grande and Clark, whether
considered alone or in combination, do not provide “a frequency converter
for a stand-alone immersion vibrator including the claimed plug socket
configured to removably receive the main plug of a stand-alone immersion
vibrator” (Br. 8). The issue before us, therefore, is does the applied prior art
teach or would the applied prior art have suggested to the skilled artisan a
frequency converter for a stand-alone immersion vibrator that includes a
plug socket configured to removably receive a main plug of a stand-alone
immersion vibrator?
FINDINGS OF FACT
Appellant describes a frequency converter that converts an electrical
mains voltage to a special voltage needed to power an immersion vibrator.
As indicated supra, the frequency converter plugs into an electrical mains
voltage supply source with a mains plug, and the immersion vibrator plugs
into the frequency converter via a main plug.
Grande describes a frequency converter 6 in plug-in driving unit B
that is used to provide a special voltage to a stand-alone immersion vibrator
A. The stand-alone immersion vibrator A plugs into the frequency converter
6 via main plug 4 to receive the special voltage from the frequency converter
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Application 10/182,101

6. The frequency converter 6 comprises a mobile converter housing 7, a
converter circuit arranged in the converter housing for converting an
electrical mains voltage to the special voltage, a supply cable 11
mechanically connected to the converter housing 7 at one end and to a plug
part at the other end that is configured to receive the electrical mains
voltage, and a plug socket 5 that is fed with the special voltage from the
converter circuit. The plug socket 5 is configured to removably receive the
main plug 4 of the stand-alone immersion vibrator A (Abstract; paragraphs
0008 to 0011).
Clark was cited by the Examiner because of its disclosure of “a stand-
alone concrete vibrator that has a control switch that feeds the immersion
vibrator with the mains voltage (figure 1 ref # 18 and col. 2 lines 31-68) and
has an electrical supply cable connected to the immersion vibrator (figure 1
ref# 16)” (Ans. 4).
Janonis was cited by the Examiner for its disclosure of “an
uninterruptible power system having a transfer switch (figure 1 ref# 24) for
routing power received from the power line source directly to the load when
the AC signal from the power line source is acceptable and for routing
power received form [sic] the power line source through a line booster
circuit and internal supply circuit (figure 1 ref# 56, 58 and) when the power
received from the power line source is unacceptable (column 2 line 26
through column 4 line 9)” (Ans. 6).
PRINCIPLES OF LAW
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). If that
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Application 10/182,101

burden is met, then the burden shifts to the Appellant to overcome the prima
facie case with argument and/or evidence. See id.
The Examiner’s articulated reasoning in the rejection must possess a
rational underpinning to support the legal conclusion of obviousness. In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1739 (2007).
During ex parte prosecution, claims must be interpreted as broadly as
their terms reasonably allow since Applicants have the power during the
administrative process to amend the claims to avoid the prior art. In re Zletz,
893 F.2d 319, 321-22 (Fed. Cir. 1989).
The reading of a claim in the light of the specification to interpret
broadly worded limitations explicitly recited in the claim is a quite different
thing from reading limitations of the specification into a claim to thereby
narrow the scope of the claim by implicitly adding disclosed limitations
which have no express basis in the claim. In re Prater, 415 F.2d 1393,
1395-96 (CCPA 1969).
ANALYSIS
As indicated supra in the findings of fact, Grande describes a
frequency converter that is configured to supply a special voltage to a stand-
alone immersion vibrator A as set forth in claim 1 on appeal. Appellant’s
argument that “[t]he vibrating unit or vibrating needle (A) lacks components,
such as a main plug, a switching housing, and a cable, that are common to a
stand-alone immersion vibrator” is without merit, since Appellant’s
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disclosure is completely silent as to what is needed to form a “stand-alone”3
immersion vibrator. Nothing in claim 1 on appeal limits the broadly claimed
“electrical mains voltage” to “a public or conventional electrical mains
system” (Br. 9). Appellant’s argument that “[t]he threaded
electromechanical coupling member 5 is not a ‘plug socket’ within any
accepted sense of that term as understood in the art” (Br. 10) is equally
without merit since, as indicated supra, the Grande reference specifically
refers to the electromechanical coupling member 4 as a plug, and to the
threaded member 5 as a socket. With respect to Appellant’s argument that
“the Examiner mistakenly attempts to modify or give new meaning to the
alleged plug socket 5 disclosed in the Grande reference that contradicts the
meaning in the present application” (Br. 10), we hereby decline the
Appellant’s invitation to read the limitations from the disclosure into the
claims on appeal. Thus, even if Grande did not possess a “plug socket” as
set forth in the claims on appeal, we agree with the Examiner that it would
have been obvious to the skilled artisan to provide Grande with a “plug
socket” on a conventional “supply cable” as taught by Clark (Ans. 5 and 6;
Br. 11). Accordingly, we agree with the Examiner’s finding of obviousness
for claim 1 and the claims grouped with claim 1 (i.e., claims 2, 3, and 5 to 9)
(Ans. 3 to 5; Br. 6 and 11).
Turning to claims 4 and 16, we agree with the Examiner’s finding that
it would have been obvious to the skilled artisan to provide Grande with an
uninterruptible power supply circuit that uses a transfer/changeover

3 If “the ‘entire’ device A, B, and C disclosed in the Grande reference is a
stand alone immersion vibrator” (Br. 8), then the entire stand-alone device in
the disclosed and claimed invention is comprised of both the frequency
converter and the immersion vibrator.
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switching system that can switch between a modified voltage and an
unmodified voltage as taught by Janonis, “to prevent the immersion vibrator
from being damaged by being supplied with an improper operating voltage”
(Ans. 6). Appellant’s use of a changeover switch with the frequency
converter “does no more than yield predictable results.” KSR, 127 S. Ct. at
1739. In summary, the obviousness rejection of claims 4 and 16, and the
claims grouped therewith (i.e., claims 17 to 20) (Br. 6 and 15) is sustained.
CONCLUSION OF LAW
The Examiner has established the obviousness of claims 1 to 9 and 16
to 20.
ORDER
The obviousness rejection of claims 1 to 9 and 16 to 20 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a)(1)(iv).
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AFFIRMED

eld

BOYLE FREDRICKSON S.C.
840 NORTH PLANKINTON AVENUE
MILWAUKEE WI 53203
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