Ex parte Yasuda

Board of Patent Appeals and Interferences

Sep 12, 2000

08543933 (B.P.A.I. Sep. 12, 2000)

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for publication in a law journal and is not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte YUKIO YASUDA
____________
Appeal No. 1998-1444
Application No. 08/543,933
____________
ON BRIEF
____________
Before THOMAS, KRASS, and BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the rejection of claims 11-13. We reverse.
BACKGROUND
The invention at issue in this appeal relates to battery
charging. A battery charger generally comprises an internal
voltage generator for comparing a battery voltage with a
reference voltage produced by a reference voltage generating
Appeal No. 1998-1444 Page 2
Application No. 08/543,933
circuit and for controlling charging according to the detected
voltage difference.
To account for variations in the optimum charging voltage
of a battery varies with respect to ambient temperature, the
inventive reference voltage generating circuit produces a
reference voltage that changes linearly with changes in
temperature. Figure 2 of the specification shows the
inventive circuit. More specifically, a constant voltage
power supply 1 supplies an output voltage V between a firstcc
output terminal and a grounded, second output terminal. A
voltage divider circuit, which comprises serially-connected
resistors R and R , is connected between the first output1 2
terminal and ground. A constant current source 2 is connected
to a voltage divider junction 3, viz., the junction between
the resistors R and R , and ground. Because the constant1 2
current source 2 produces a linear change with temperature in
the current I flowing into or out of the voltage divider1
junction, which functions as an output terminal, a reference
voltage V that linearly changes with temperature is output. 0
Appeal No. 1998-1444 Page 3
Application No. 08/543,933
Claim 11, which is representative for our purposes, is
reproduced from the brief as follows:
11. A reference voltage generating circuit for
generating a reference voltage that changes linearly
with temperature, the reference voltage generating
circuit comprising:
a constant-voltage power supply for outputting a
constant voltage and having first and second output
terminals;
a voltage divider circuit connected between the
first and second output terminals; and
a constant-current source connected to a voltage
divider junction of said voltage divider circuit for
linearly changing with temperature current flowing
into or out of said voltage divider junction, a
reference voltage linearly changing with temperature
being output from said voltage divider junction.
The references relied on in rejecting the claims follow:
Yum et al. (Yum) 5,327,028 July 5,
1994
Buck et al. (Buck) 4,990,846 Feb. 5, 1991.
Claims 11-13 stand rejected under 35 U.S.C. § 103 as obvious
over Yum in view of Buck. Rather than repeat the arguments of
the appellant or examiner in toto, we refer the reader to the
brief and answer for the respective details thereof.
Appeal No. 1998-1444 Page 4
Application No. 08/543,933
OPINION
In deciding this appeal, we considered the subject matter
on appeal and the rejection advanced by the examiner.
Furthermore, we duly considered the arguments and evidence of
the appellant and examiner. After considering the totality of
the record, we are persuaded that the examiner erred in
rejecting claims 11-13. Accordingly, we reverse.
We begin by noting the following principles from In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993).
In rejecting claims under 35 U.S.C. § 103, the
examiner bears the initial burden of presenting a
prima facie case of obviousness. In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992).... "A prima facie case of obviousness is
established when the teachings from the prior art
itself would appear to have suggested the claimed
subject matter to a person of ordinary skill in the
art." In re Bell, 991 F.2d 781, 782, 26 USPQ2d
1529, 1531 (Fed. Cir. 1993) (quoting In re Rinehart,
531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976)).
If the examiner fails to establish a prima facie
case, the rejection is improper and will be
overturned. In re Fine, 837 F.2d 1071, 1074, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988).
With these principles in mind, we address the examiner's
rejection and the appellant's argument.
Appeal No. 1998-1444 Page 5
Application No. 08/543,933
The examiner asserts, "Yum discloses the claimed device
... except for constant voltage power supply. Buck discloses
that it is known in the art to provide a constant voltage
power supply." (Examiner's Answer at 4.) The appellant
argues, "Yum does not extract a reference voltage from the
junction of the voltage divider circuit to which the
temperature compensating current source is connected."
(Appeal Br. at 4.)
“‘[T]he main purpose of the examination, to which every
application is subjected, is to try to make sure that what
each claim defines is patentable. [T]he name of the game is
the claim ....’” In re Hiniker Co., 150 F.3d 1362, 1369,
47 USPQ2d 1523, 1529 (Fed. Cir. 1998) (quoting Giles S. Rich,
The Extent of the Protection and Interpretation of
Claims--American Perspectives, 21 Int'l Rev. Indus. Prop. &
Copyright L. 497, 499, 501 (1990)). Here, claims 11-13 each
specifies in pertinent part the following limitations: "a
reference voltage linearly changing with temperature being
output from said voltage divider junction." Accordingly, the
Appeal No. 1998-1444 Page 6
Application No. 08/543,933
limitations require outputting a reference voltage from a
voltage divider junction.
The examiner fails to show a suggestion of the
limitations in the prior art. “Obviousness may not be
established using hindsight or in view of the teachings or
suggestions of the inventor.” Para-Ordnance Mfg. v. SGS
Importers Int’l, 73 F.3d 1085, 1087, 37 USPQ2d 1237, 1239
(Fed. Cir. 1995)(citing W.L. Gore & Assocs., Inc. v. Garlock,
Inc., 721 F.2d 1540, 1551, 1553, 220 USPQ 303, 311, 312-13
(Fed. Cir. 1983)). “The mere fact that the prior art may be
modified in the manner suggested by the Examiner does not make
the modification obvious unless the prior art suggested the
desirability of the modification.” In re Fritch, 972 F.2d
1260, 1266, 23 USPQ2d 1780, 1783-1784 (Fed. Cir. 1992) (citing
In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed.
Cir. 1984)). “It is impermissible to use the claimed
invention as an instruction manual or ‘template’ to piece
together the teachings of the prior art so that the claimed
invention is rendered obvious.” Id. at 1266, 23 USPQ2d at
Appeal No. 1998-1444 Page 7
Application No. 08/543,933
1784, (citing In re Gorman, 933 F.2d 982, 987, 18 USPQ2d 1885,
1888 (Fed. Cir. 1991)).
Here, the examiner alleges that, excepting a constant
voltage power supply, Yum shows all the claimed invention. He
specifically alleges, "Yum discloses the claimed device ...
except for constant voltage power supply." (Examiner's Answer
at 4.) The reference, however, belies the allegation.
Although Yum teaches a reference voltage V and a voltageREF
divider junction 118, col. 6, ll. 49-55, the reference voltage
is not output from the voltage divider junction. To the
contrary, the reference voltage is output from output
terminals. Specifically, "[t]he reference voltage V appearsREF
between the negative and positive output terminals 114 and
116." Figure 4 of Yum shows that the output terminals 114 and
116 straddle the voltage divider network comprising resistors
R3 and R4. The examiner fails to allege, let alone show, that
Buck remedies the defect of Yum.
Appeal No. 1998-1444 Page 8
Application No. 08/543,933
Because Yum teaches outputting a reference voltage from
output terminals rather than from a voltage divider junction,
we are not persuaded that teachings from the prior art would
have suggested the limitations of "a reference voltage
linearly changing with temperature being output from said
voltage divider junction." The examiner fails to establish a
prima facie case of obviousness. Therefore, we reverse the
rejections of claims 11-13 as obvious over Yum in view of
Buck.
CONCLUSION
In summary, the rejection of claims 11-13 under 35 U.S.C.
§ 103 as obvious over Yum in view of Buck is reversed.
Appeal No. 1998-1444 Page 9
Application No. 08/543,933
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
Appeal No. 1998-1444 Page 10
Application No. 08/543,933
LEYDIG, VOIT AND MAYER
700 THIRTEENTH STREET NW
SUITE 300
WASHINGTON, DC 20005
APPEAL NO. 1998-1444 - JUDGE
BARRY
APPLICATION NO. 08/543,933
APJ BARRY - 2 copies
APJ THOMAS
APJ KRASS
DECISION: REVERSED
Prepared By: APJ BARRY
DRAFT SUBMITTED: 27 Apr 01
FINAL TYPED:
GJH