Ex Parte Wolf et al

Board of Patent Appeals and Interferences

May 14, 2003

08813132 (B.P.A.I. May. 14, 2003)

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The opinion in support of the decision being entered
today was not written for publication in a law journal
and is not binding precedent of the Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte RONALD M. WOLF, GLENN R. SKUTT,
and LIMING YE

Appeal No. 2001-0716
Application No. 08/813,132

ON BRIEF

Before JERRY SMITH, BARRETT, and RUGGIERO, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection of
claims 1-3. Claims 4-13 have been indicated to be allowable by
the Examiner subject to being rewritten in independent from to
include all the limitations of the base claim and any intervening
claims.
Appeal No. 2001-0716
Application No. 08/813,132
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The disclosed invention relates to a planar magnetic winding
structure having a core of two or more core components with
mutually facing planar surfaces separated by an air gap having a
height g. Further included in the winding structure are a stack
of winding layers, each layer including one or more turns, in
which the edges of the windings are separated from the air gap by
a distance of at least 2g. According to Appellants
(Specification, pages 4 and 5), a winding structure having an air
gap “keep away” region of at least two times the gap height in
which there are no windings reduces high frequency winding losses
without appreciable increases in low frequency winding losses.
Claim 1 is illustrative of the invention and reads as
follows:
1. A planar magnetic winding structure comprising a core
and a stack of winding layers including one or more turns, the
core comprised of two or more core components having mutually
facing planar surfaces separated by at least one air gap g, and
all surfaces of the winding layers are separated from the air gap
by a distance of at least 2g.
The Examiner relies on the following prior art:
House et al. (House) 4,480,377 Nov. 06, 1984
Estrov 5,010,314 Apr. 23, 1991
Appeal No. 2001-0716
Application No. 08/813,132
1 The Appeal Brief was filed May 3, 2000 (Paper No. 20). In response to
the Examiner’s Answer dated June 26, 2000 (Paper No. 21), a Reply Brief was
filed September 1, 2000 (Paper No. 22), which was acknowledged and entered by
the Examiner as indicated in the communication dated September 13, 2000 (Paper
No. 23).
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Claims 1-3, all of the appealed claims, stand finally
rejected under 35 U.S.C. § 103(a) as being unpatentable over
House in view of Estrov.
Rather than reiterate the arguments of Appellants and the
Examiner, reference is made to the Briefs1 and Answer for the
respective details.
OPINION
We have carefully considered the subject matter on appeal,
the rejection advanced by the Examiner, the arguments in support
of the rejection and the evidence of obviousness relied upon by
the Examiner as support for the rejection. We have, likewise,
reviewed and taken into consideration, in reaching our decision,
Appellants’ arguments set forth in the Briefs along with the
Examiner’s rationale in support of the rejection and arguments in
rebuttal set forth in the Examiner’s Answer.
It is our view, after consideration of the record before us,
that the evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary skill
in the art the invention as set forth in claims 1-3.
Appeal No. 2001-0716
Application No. 08/813,132
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Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the Examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the Examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the Examiner are an essential part
of complying with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
Appeal No. 2001-0716
Application No. 08/813,132
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1443, 1444 (Fed. Cir. 1992).
With respect to independent claim 1, the Examiner, as the
basis for the obviousness rejection, proposes to modify the
laminated winding core structure disclosure of House. According
to the Examiner (Answer, page 3), House discloses the claimed
invention “... except for the wound coils comprising a stack of
winding layers.” To address this deficiency, the Examiner turns
to Estrov which discloses a transformer structure made up of a
stack of layers of planar windings. In the Examiner’s analysis
(id.), the skilled artisan would have been motivated and found it
obvious to substitute the planar winding structure of Estrov for
the coil windings of House in order to “... make the transformer
easy to assemble either by hand or machine.”
In response, Appellants assert that the Examiner has failed
to establish a prima facie case of obviousness since the applied
prior art House and Estrov references, even if combined, do not
teach or suggest all of the limitations of independent claim 1.
In particular, Appellants assert (Brief, pages 6-9; Reply Brief,
pages 2 and 3) that, in contrast to the specific language of
appealed claim 1, neither House nor Estrov provide any disclosure
of a winding structure in which all surfaces of the winding
layers are separated by a distance of at least 2g from an air gap
Appeal No. 2001-0716
Application No. 08/813,132
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which is defined by a distance g between two mutually facing
planar surfaces of the core components.
After careful review of the applied prior art references, in
light of the arguments of record, we are in general agreement
with Appellants’ position as stated in the Briefs. In addressing
Appellants’ arguments, the Examiner (Answer, page 4) directs
attention to the illustration in Figure 2 of House which
illustrates an air gap distance (corresponding to the claimed
dimension g) between the upper surface of center leg 15 and the
lower surface of member 30. Further, again referring to House’s
Figure 2, the Examiner points to the illustration of the distance
between the coil surfaces 25 and the air gap g which, although
the Examiner characterizes it as an “accidental disclosure,” the
Examiner nevertheless concludes (id.) that this distance “...
appears to be 2g or greater” as claimed.
While we agree with the Examiner (Answer, page 5) that a
reference is to be evaluated for all it fairly teaches, our
review of the House reference reveals, however, that no basis
exists for the Examiner’s conclusions. Conclusions based on
illustrated drawing features when the drawings are not to scale
and the disclosure is silent as to dimensions are of little
value. In re Wright, 569 F.2d 1124, 1128, 193 USPQ 332, 336
Appeal No. 2001-0716
Application No. 08/813,132
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(CCPA 1977). Further, from the disclosure of House, it is our
view that any conclusions as to the distance from the coils to
the air gap would be based purely on unwarranted speculation,
since, as alluded to by Appellants (Brief, page 9), House has no
concern with keeping the coils away from the air gap at a certain
distance or, for that matter, any distance at all.
In view of the above discussion, it is our view that, since
all of the limitations of the appealed claims are not taught or
suggested by the applied prior art House and Estrov references,
the Examiner has not established a prima facie case of
obviousness. Accordingly, the 35 U.S.C. § 103(a) rejection of
independent claim 1, as well as claims 2 and 3 dependent thereon,
is not sustained.
Appeal No. 2001-0716
Application No. 08/813,132
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In conclusion, we have not sustained the Examiner’s 35
U.S.C. § 103(a) rejection of any of the claims on appeal.
Therefore, the decision of the Examiner rejecting claims 1-3 is
reversed.
REVERSED

JERRY SMITH )
Administrative Patent Judge)
)
)
)
)
LEE E. BARRETT )BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
)INTERFERENCES
)
)
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge)
JFR/dal
Appeal No. 2001-0716
Application No. 08/813,132
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