Ex Parte Vice

Board of Patent Appeals and Interferences

May 23, 2005

10072676 (B.P.A.I. May. 23, 2005)

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The opinion in support of the decision being entered
today was not written for publication and is not
binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte MICHAEL WENDELL VICE

Appeal No. 2005-0364
Application No. 10/072,676

ON BRIEF

Before KRASS, GROSS and BLANKENSHIP, Administrative Patent
Judges.
KRASS, Administrative Patent Judge.
Decision On Appeal
This is a decision on appeal from the final rejection of
claims 1 and 2. Claims 3-25 have been indicated by the examiner,
in the answer (page 2), as being directed to allowable subject
matter and no longer form part of the appeal.
The invention relates to a linear, real time control system
that acts to remove harmonic and spurious distortion and noise
Appeal No. 2005-0364
Application No. 10/072,676
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from an external source of AC power, best illustrated by
reference to independent claim 1, reproduced as follows:
1. A series active power line conditioner, comprising:
an isolation transformer having a primary winding and a
first secondary winding, said primary winding for receiving power
from a source of alternating current power; and
a feedback control loop comprised of a voltage reference, an
output sampler, and an amplifier, said output sampler functioning
to provide a scaled sampling of the output voltage of said power
line conditioner to a first input of said amplifier, said voltage
reference connected to provide a desired voltage to a second
input of said amplifier; an output of said amplifier connected to
a first terminal of said first secondary winding of said
isolation transformer, and a second terminal of said first
secondary winding of said isolation transformer connected to an
input of said output sampler, said second terminal of said first
secondary winding of said isolation transformer also constituting
the output of said power line conditioner.
The examiner relies on the following reference:
Estes, Jr. (Estes) 5,013,931 May 7, 1991
Claims 1 and 2 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Estes.
Reference is made to the briefs and answer for the
respective positions of appellant and the examiner.
OPINION
A rejection for anticipation under section 102 requires that
the four corners of a single prior art document describe every
element of the claimed invention, either expressly or inherently,
Appeal No. 2005-0364
Application No. 10/072,676
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such that a person of ordinary skill in the art could practice
the invention without undue experimentation. In re Paulsen, 30
F.3d 1475, 1478-79, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994).
The examiner points to Figure 2 of Estes and contends that
there is an isolation transformer (35, [sic, 34]) having a
primary winding (on left) and a first secondary winding (on
right), with the primary winding receiving power from a source of
alternating current (12, 30, 32, 165, and 166). The examiner
contends that the remainder of the circuit constitutes a feedback
control loop comprised of a voltage reference (ground), an output
sampler (136, 138, 140a, 140b, and 168), and an AM amplifier
(175), with the output sampler functioning to provide a scaled
sampling (138, 140a, 140b sample the output and provide a scaled
version thereof) of the output voltage (VOUT) of the power line
conditioner to a first input (inverting input, via 168) of the
amplifier (175), and the voltage reference (ground) connected to
provide a desired voltage (zero volts) to a second input (non-
inverting input) of the amplifier (175). The examiner further
indicates an output of the amplifier connected (via 167, 138, and
136) to a first terminal (top terminal) of the isolation
transformer (34), and a second terminal (bottom terminal) of the
first secondary winding of the isolation transformer (34)
Appeal No. 2005-0364
Application No. 10/072,676
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connected to an input (at 140a) of the input sampler, with the
second terminal (bottom terminal) of the first secondary winding
of the isolation transformer (34) also constituting the output
(VOUT) of the power line conditioner. The examiner also points
out that Estes expressly shows the “first port” (the port at the
primary) and the “second port” (the port at the secondary). (See
pages 4-5 of the answer).
While appellant argues certain perceived differences
regarding structure between Estes and the instant claimed
invention, we find the most telling argument to pertain to the
claim preamble. Independent claim 1, and therefore, dependent
claim 2, recites, in the preamble, a “series active power line
conditioner.” The preamble of a claim will not limit the scope
of a claim when it simply states a purpose or intended use of the
invention. Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 868,
228 USPQ 90, 94 (Fed. Cir. 1985). The recitation of a “power
line conditioner” in the instant claims is more than a mere
intended use of the invention because the preamble clearly
provides an antecedent basis for certain terms in the body of the
claim (note the recitation of “said power line conditioner” on
the third line of the paragraph reciting the feedback control
loop and at the end of the claim). The power line conditioner of
Appeal No. 2005-0364
Application No. 10/072,676
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independent claim 1 includes a circuit having a feedback loop
with an output sampler functioning to provide a scaled sampling
of the output voltage of the “power line conditioner” to an
amplifier input, and the second terminal of the first secondary
winding of the isolation transformer constitutes the output of
the “power line conditioner.”
If a prior art structure is capable of performing the
intended use as recited in the preamble, then it meets the claim.
In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed.
Cir. 1997). It was the examiner’s burden to show that the
circuit structure of Estes is, indeed, capable of performing the
function of a power line conditioner.
The reference to Estes is directed to a converter for
converting square waves (shown as element 12 in Figures 1 and 2)
into triangle waves (shown on the right side of these figures).
The reference is not capable of acting as a power line
conditioner, as required by the instant claims, and the examiner
has nowhere indicated that it may. The examiner does not even
address this claim limitation in the statement of rejection
appearing in the answer. In the response section of the answer,
the examiner addresses this issue very briefly, merely contending
that the purpose of Estes is to convert the square wave source
Appeal No. 2005-0364
Application No. 10/072,676
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into a triangle wave output by way of a feedback loop and that
the artisan “would deem it reasonable to consider this to be
power conditioning” (answer-page 8).
We view the examiner’s position as interpreting the claim
language, “series active power line conditioner” in an
unreasonably broad manner. The mere processing, or converting,
of a signal does not, in itself, constitute a “power line
conditioning” function. Appellant has asserted this term to be
well understood by artisans to mean the “removal spectral
impurities from an AC power line so as to provide power that is
substantially sinusoidal and devoid of harmonic, spurious and
random noise components” (reply brief-page 8). To substantiate
this claim, appellant has provided evidence in the form of
technical journals and technical dictionary definitions, attached
to the reply brief as appendices. For example, on the first page
of the submission, entitled “Juice From Cans,” at the bottom of
the third column, it is indicated that power conditioners are “to
ensure...purity” of an AC signal. On the first page of a
publication by S&VC (Chris Steinwand, author), it is indicated
that “in order to be considered a power conditioner in the
generally accepted sense of the term, the unit must incorporate
surge protection, electromagnetic-interference/radio frequency
Appeal No. 2005-0364
Application No. 10/072,676
1The examiner permitted entry of the reply brief without
comment so the examiner would be hard-pressed to argue that the
examiner had no chance to respond.
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interference (EMI/RFI) noise filtering, and voltage regulation.”
Thus, it appears that there must be some cleaning function, or
noise filtering, or the removal of some impurity, in order for a
function to be considered a “power conditioner.” Conversion of a
signal from one type to another is not enough. Even in the
Energy Technologies, Inc. Glossary submitted by appellant, a
power, or line, conditioner, is defined as “A unit that provides
clean, well regulated power. Input and output voltages may also
be converted as well.” Thus, while a conversion may take place,
there must, at a minimum, be some type of cleaning of the input
signal.
In view of the evidence provided, and lack of response by
the examiner1 challenging appellant’s submitted definition, we
accept appellant’s definition of a power line conditioner as
constituting an element which must “remove spectral impurities
from an AC power line so as to provide power that is
substantially sinusoidal and devoid of harmonic, spurious and
random noise components” (reply brief-page 8) and we interpret
the instant claim language to require such. The examiner has not
Appeal No. 2005-0364
Application No. 10/072,676
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shown any removal of spectral impurities or noise components of
an input signal from an AC power line in Estes.
Since the examiner has failed to show that the circuit
structure of Estes has the capability of acting as a “power line
conditioner,” as claimed, we find that Estes does not anticipate
the instant claimed subject matter and we will not sustain the
rejection of claims 1 and 2 under 35 U.S.C. § 102(b).
The examiner’s decision is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
)
ANITA PELLMAN GROSS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
EK/RWK
Appeal No. 2005-0364
Application No. 10/072,676
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