Ex parte Wessels

Board of Patent Appeals and Interferences

Aug 24, 1999

08515312 (B.P.A.I. Aug. 24, 1999)

Application for patent filed August 15, 1995.1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
__________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________________
Ex parte JOHANNES H. WESSELS
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Appeal No. 97-3672
Application 08/515,3121
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ON BRIEF
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Before THOMAS, FLEMING, and LEE, Administrative Patent Judges.
LEE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the examiner’s final rejection of claims 1-14. Claims 15-18
have been objected to by the examiner as being dependent upon
a rejected base claim, but would be allowable if rewritten in
independent form. No claim has been allowed.
References relied on by the Examiner
1. Shackle Patent 5,412,287 May 2,
1995
Appeal No. 97-3672
Application 08/515,312
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2. Admitted Prior Art as represented by (see Answer at page
5):
Fahnrich et al. Patent 4,782,268 Nov. 1,
1988
(Fahnrich)
For convenience purposes, in this opinion our discussions
will regard Fahnrich as the admitted prior art, as has the
examiner (Answer at 3-4).
The Rejections on Appeal
Claims 1-14 stand finally rejected under 35 U.S.C. § 103
as being unpatentable over the appellant’s admitted prior art
and Shackle.
The Invention
The invention is directed to a circuit arrangement for
operating a discharge lamp. The independent claims 1 and 11
are reproduced below:
1. A circuit arrangement for operating a lamp,
comprising:
terminals for connection to an AC supply voltage
source,
rectifying means provided with a first output and
a second output and coupled to the terminals for
rectifying the AC voltage,
a DC-AC converter provided with a first input and a
second input coupled to the first output and the second
output, respectively,
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a first branch comprising first capacitive means
interconnecting the first and second inputs,
a second branch comprising a series circuit of first
inductive means and second capacitive means and
connecting the first output to the second output,
a third branch comprising a series circuit of two
unidirectional elements which connect a common junction
point of the first inductive means and the second
capacitive means to the first input, and
a fourth branch comprising third capacitive means
for connecting a common junction point of the two
unidirectional elements to a point of the DC-AC converter
at which a high-frequency voltage is present during lamp
operation,
wherein the resonance frequency of a series circuit
formed by the first inductive means and by a parallel
arrangement of the second capacitive means and the third
capacitive means is chosen to lie within a range limited
by 0.1 Fb and 2.0 Fb, where Fb is the operating frequency
of the DC-AC converter.
11. A circuit for operating a discharge lamp
comprising:
first and second terminals for connection to a
source of pulsatory DC supply voltage for the circuit,
a DC-AC converter having first and second inputs,
means coupling said second input to said second
terminal,
a first capacitor coupled across the first and
second inputs of the DC-AC converter,
a first series circuit including a first inductor
and a second capacitor coupled across the first and second
terminals,
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a second series circuit of first and second
unidirectional elements coupling a junction point between
the first inductor and the second capacitor to the first
input of the DC-AC converter,
a third capacitor connecting a junction point
between the first and second unidirectional elements to a
circuit point of the DC-AC converter at which a high
frequency voltage is present during operation of the
lamp, and wherein
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the resonance frequency of a third series circuit
including the first inductor and a parallel circuit of
the second capacitor and the third capacitor lies within
the range 0.1 Fb and 2.0 Fb, where Fb is the operating
frequency of the DC-AC converter.
Opinion
We reverse the rejection of claims 1-14.
A reversal of the rejection on appeal should not be
construed as an affirmative indication that the appellant’s
claims are patentable over prior art. We address only the
positions and rationale as set forth by the examiner and on
which the examiner’s rejection of the claims on appeal is
based.
The examiner finally rejected claims 1-14 as being
unpatentable over the admitted prior art described in the
instant specification (spec. at 1) in view of Shackle. (Paper
No. 8 at 2). The appellant’s specification on page 1
evidently describes as prior art the combination of circuit
components claimed in independent claims 1 and 11.
Apparently, what is novel is the setting of the resonance
frequency of the circuit formed by the serially connected
inductor and the parallel arrangement of second and third
Appeal No. 97-3672
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capacitors to a range between 0.1 Fb and 2.0 Fb, where Fb is
the operating frequency of the DC-AC converter.
The examiner addressed the resonance frequency limitation
as follows (Paper No. 8 at 3):
With regard to determining the optimum range for the
component values used within the specific circuit
arrangement and therefore the resonance frequency, this
would be well within the skill of one of ordinary skill
in the art, i.e., involving only routine skill in the
art.
The examiner further relies on Shackle for its teaching of the
desirability of having a high power factor for a circuit of a
gas discharge lamp. (Answer at 4-6) (Shackle at column 2,
lines 25-27 and column 3, lines 17-21).
The conclusion of obviousness on the basis of
optimization is unsupported by sufficient reasoning and
underlying factual findings. While we may be persuaded that
optimization is commonly desired by one with ordinary skill in
the art, the examiner has not established that the appellant’s
specifically claimed feature is a recognized or obvious means
to achieve the optimization. In that regard, the examiner’s
position is merely conclusory.
The examiner acknowledges that the prior art does not
disclose the resonance frequency setting feature claimed by
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the appellant. (Answer at 5). The examiner then indicates
that because Shackle teaches an equalizing operation to
improve the power factor, the appellant’s claimed feature
would have been obvious. The reasoning is without merit. The
examiner has not explained why the procedure used in Shackle
would have rendered obvious the appellant’s claimed invention
having the particular resonance frequency matching limitation.
The fact that Shackle teaches that it is desirable to improve
the power factor for running a discharge lamp by a different
equalization technique as applied to Shackle’s own lamp
circuit does not render obvious the particular feature
required by the appellant’s claimed circuit.
We agree with appellant that the examiner has failed to
set forth a prima facie case of obviousness. The examiner has
provided no evidence to show that the claimed resonance
frequency range would have been obvious to one having ordinary
skill in the art or even that it would have been desirable to
match the resonance frequency of the circuit formed by the one
inductor and two capacitors to some range of the operating
frequency of the DC-AC converter. While Shackle teaches a
circuit arrangement with a high power factor for a discharge
lamp, much more is needed to support a conclusion of
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obviousness with regard to the appellant’s specifically
claimed invention.
The examiner has failed to demonstrate any suggestion
from the prior art that a relationship between (1) the
resonance frequency of a circuit formed by the serially
connected inductor and first and second capacitors in
parallel, and (2) the operating frequency of the DC-AC
converter, would have been a recognized result-effective
variable for maximizing the power factor. The examiner has
shown nothing to indicate that one with ordinary skill in the
art would have known how such a relationship would have
affected the resulting power factor. Note that to support an
argument that a claim feature constitutes mere optimization by
routine experimentation, one must first demonstrate that the
result-effectiveness of the variable at issue was recognized
by one with ordinary skill in the art. See, e.g., In re
Antonie, 559 F.2d 618, 620, 195 USPQ 6, 8 (CCPA 1977).
Obvious to try varying a parameter to achieve optimization is
not the standard. Id.
For the foregoing reasons, the rejection of claims 1-14
cannot be sustained.
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Conclusion
The rejection of claims 1-14 under 35 U.S.C. § 103 as
being unpatentable over the appellant’s admitted prior art (as
represented by Fahnrich) and Shackle is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
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) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
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JAMESON LEE )
Administrative Patent Judge )
Appeal No. 97-3672
Application 08/515,312
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Corporate Patent Counsel
U.S. Philips Corporation
580 White Plains Road
Tarrytown, NY 10591