Fornage, Martin et al.

Patent Trials and Appeals Board

Jan 28, 2020

14586416 - (D) (P.T.A.B. Jan. 28, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/586,416 12/30/2014 Martin Fornage EE047CON 9342
54698 7590 01/28/2020
MOSER TABOADA
1030 BROAD STREET
SUITE 203
SHREWSBURY, NJ 07702
EXAMINER
FINCH III, FRED E
ART UNIT PAPER NUMBER
2838
NOTIFICATION DATE DELIVERY MODE
01/28/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@mtiplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARTIN FORNAGE and DONALD RICHARD ZIMMANCK
____________

Appeal 2019-002866
Application 14/586,416
Technology Center 2800
____________

Before MONTÉ T. SQUIRE, AVELYN M. ROSS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 21–25, 31–36, 38, and 39, which are all of
the claims pending in this application.3 We have jurisdiction under
35 U.S.C. § 6(b).

1 In this Decision, we refer to the Specification filed Dec. 30, 2014
(“Spec.”); Final Office Action dated Mar. 12, 2018 (“Final Act.”); Advisory
Action dated June 20, 2018 (“Advisory Act.”); Appeal Brief filed Sept. 12,
2018 (“Appeal Br.”); Examiner’s Answer dated Dec. 21, 2018 (“Ans.”); and
Reply Brief filed Feb. 21, 2019 (“Reply Brief”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies Enphase Energy, Inc. as the real
party in interest. Appeal Br. 3.
3 Claims 1–20, 26–30, 37, and 40 are cancelled. Appeal Br. 9, 11.
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We AFFIRM.
CLAIMED SUBJECT MATTER
Appellant’s claimed subject matter relates to an apparatus for
operating a DC-DC converter, which, according to the Specification, is
adapted for lossless commutation during DC-DC power conversion. Spec.
¶¶ 2, 6, Fig. 1; Abstract. Claim 21 illustrates the claimed subject matter on
appeal and is reproduced below from the Claims Appendix to the Appeal
Brief:
21. Apparatus for power conversion, comprising:
a power conversion circuit comprising (i) a transformer
having a primary winding and a secondary winding, and (ii) a
current control switch coupled to the transformer for
controlling current flow through the primary winding such that
there is no ringing on a drain-source voltage of the current
control switch during energy transfer between the primary
winding and the secondary winding, wherein a primary
capacitance of the power conversion circuit and a secondary
capacitance of the power conversion circuit are matched based
on a turns ratio of the transformer.
Appeal Br. 9 (key disputed claim language italicized and bolded).
REFERENCE
The Examiner relies on the following prior art reference as evidence
in rejecting the claims on appeal:
Name Reference Date
Wittenbreder, Jr.
(“Wittenbreder”)
US 7,606,051 B1 Oct. 20, 2009
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REJECTIONS
On appeal, the Examiner maintains (Ans. 3) the following rejections:
1. Claims 21–25 and 32 are rejected under pre-AIA
35 U.S.C. § 102(a) and § 102(e) as being anticipated by Wittenbreder
(“Rejection 1”). Final Act. 9.
2. Claims 21–25, 31–36, 38, and 39 are rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1–20 of
U.S. Patent No. 8,937,817 (“Rejection 2”). Id. at 13.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the Examiner’s
rejections based on the fact-finding and reasoning set forth in the Answer,
Advisory Action, and Final Office Action, which we adopt as our own. We
add the following primarily for emphasis.
Rejection 1
The Examiner rejects claims 21–25 and 32 under pre-AIA
35 U.S.C. § 102(a) and § 102(e) as anticipated by Wittenbreder (Final
Act. 9–12), which we refer to as Rejection 1. In response to the Examiner’s
rejection, Appellant argues for the patentability of claim 21 but does not
present separate arguments for the patentability of remaining claims 22–25
and 32. Appeal Br. 5–7. We select claim 21 as representative and claims
22–25 and 32 stand or fall with claim 21. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner determines Wittenbreder discloses an apparatus for
power conversion satisfying all of the elements of claim 21 and thus,
concludes the reference anticipates the claim. Final Act. 9–11 (citing
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Wittenbreder, Fig. 8 and identifying TMAIN (transformer), IPRI (primary
winding), ISEC (secondary winding), SPRIMAIN (current control switch)).
To serve as an anticipatory reference, “the reference must disclose
each and every element of the claimed invention.” In re Gleave, 560 F.3d
1331, 1334 (Fed. Cir. 2009). On the record before us, we find a
preponderance of the evidence supports the Examiner’s findings and
determination (Final Act. 9–11; Ans. 3–8) that Wittenbreder discloses a
power conversion apparatus satisfying all of the elements of claim 21 and
that the reference anticipates the claim. Wittenbreder, Abstract, Figs. 3,
8–12, 7:59–8:59, 8:27–40, 8:49–62, 16:58–17:6, 17:46–51.
Appellant argues that the Examiner’s rejection of claim 21 should be
reversed because Wittenbreder does not disclose “a current control switch
coupled to the transformer for controlling current flow through the primary
winding such that there is no ringing on a drain-source voltage of the current
control switch during energy transfer between the primary winding and the
secondary winding,” as recited in the claim. Appeal Br. 5–6; Reply Br. 2–3.
In particular, Appellant contends that, because Wittenbreder is “silent with
respect to the operation of a current control switch to achieve no ringing,”
the reference fails to teach or suggest operating a current control switch
“such that there is no ringing,” as required by the claim. Appeal Br. 5, 6.
We do not find Appellant’s argument persuasive of reversible error in
the Examiner’s rejection based on the fact-finding and reasons provided by
the Examiner at pages 3–5 of the Answer and pages 10–11 of the Final
Office Action. Contrary to what Appellant argues, a preponderance of the
evidence supports the Examiner’s determination that Wittenbreder discloses
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the “such that there is no ringing” recitation of the claim. Wittenbreder,
Abstract, Figs. 3, 8–12, 7:59–8:59, 8:27–40, 8:49–62, 16:58–17:6, 17:46–51.
In particular, as the Examiner finds (Ans. 4), Wittenbreder discusses
and explicitly teaches operating the power conversion apparatus it describes
to eliminate ringing through the use of clamped circuits. Wittenbreder,
Abstract (disclosing that “overshoot and ringing associated with leakage
inductance . . . is entirely eliminated”), 8:20–22 (disclosing that “there can
be no ringing or overshoot at the primary and secondary windings of
TMAIN”), 8:55–59 (“The FIG. 8 circuit has successfully used its leakage
inductance to provide the benefit of zero voltage switching without the
detriment of overshoot and ringing, which is usually the consequence of
leakage inductance in prior art converters.”), 16:58–60 (disclosing that the
power conversion circuit “can totally eliminate overshoot and ringing”).
As the Examiner further finds (Ans. 4), Wittenbreder teaches that the
ringing is eliminated by controlling the current control switch on the primary
side (SPRIMAIN) and the clamp switch (SPRICLAMP). Wittenbreder 7:59–8:59
(describing the operation of the converter during the two phases which make
up a full switching cycle, including the control of switches SPRIMAIN and
SPRICLAMP to eliminate ringing on the primary side). As the Examiner also
finds (Ans. 4), Wittenbreder teaches that no ringing occurs specifically in the
voltages at the terminals of each transformer winding. Wittenbreder, Fig. 8,
8:49–62.
Appellant’s arguments do not reveal reversible error in the
Examiner’s factual findings and analysis in this regard. Appellant’s
contention that Wittenbreder is “silent with respect to the operation of a
current control switch to achieve no ringing” is misplaced because, as
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discussed above, Wittenbreder is in fact not silent on this teaching, and
actually does describe controlling a current control switch such that there is
no ringing, as claimed.
Appellant also argues the Examiner’s interpretation of the phrase
“during energy transfer between the primary winding and the secondary
winding” to mean during any period during operation of the converter is
incorrect because “[a]s is well-known in the art, energy transfer between the
transformer winding does not occur during all periods of power converter
operation.” Id. at 5.
We do not find Appellant’s argument persuasive of reversible error in
the Examiner’s rejection. Rather, we determine the Examiner’s
interpretation of the phrase “during energy transfer between the primary
winding and the secondary winding” constitutes the broadest reasonable
interpretation consistent with the Specification.
During prosecution, claims are given their broadest reasonable
interpretation consistent with the specification. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The words used in a claim must
be read in light of the specification, as they would have been interpreted by
one of ordinary skill in the art at the time of the invention. Id.
As the Examiner points out (Ans. 5), the claim does not recite any
specific time period, switching cycle, or phase of operation for the power
converter. The Specification also does not provide any special definition for
the phrase “during energy transfer between the primary winding and the
secondary winding” beyond the language recited in the claim. Further,
Appellant does not identify or direct us to any description in Specification
indicating that the phrase must narrowly be construed to mean a specific
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time period, switching cycle, or phase of operation beyond the language of
the claim. Thus, absent any special or scope-limiting definition in the
Specification, we find the Examiner correctly applied the broadest
reasonable interpretation of the phrase to mean during any period during
operation of the converter. In re ICON Health & Fitness, Inc., 496 F.3d
1374, 1379 (Fed. Cir. 2007) (“[W]e look to the specification to see if it
provides a definition for claim terms, but otherwise apply a broad
interpretation.”).
Moreover, applying the broadest reasonable interpretation of the
recitation “during energy transfer between the primary winding and the
secondary winding,” we discern no reversible error in the Examiner’s
finding that Wittenbreder discloses that element of the claim. In particular,
we find a preponderance of the evidence supports the Examiner’s finding
(Ans. 5) that Wittenbreder describes, for example, an “off state” during
which the primary switch SPRIMAIN is turned off and stored energy in the
primary winding IPRI is transferred to the secondary winding ISEC as a
flowing output current (Wittenbreder, Figs. 8, 10, 8:27–36, 8:40–42
(disclosing that “[c]urrent is transferred gradually to the secondary winding
during the off state”)), which falls within the scope of “during energy
transfer between the primary winding and the secondary winding,” as recited
in the claim.
Appellant’s assertion that it “is well-known in the art, energy transfer
between the transformer winding does not occur during all periods of power
converter operation” (Appeal Br. 5) is conclusory and, without more, does
not rebut or otherwise establish reversible error in the Examiner’s factual
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findings and analysis in this regard. In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984).
Lastly, Appellant argues Wittenbreder does not disclose the “wherein
a primary capacitance of the power conversion circuit and a secondary
capacitance of the power conversion circuit are matched based on a turns
ratio of the transformer” recitation of the claim. Id. at 6. In particular,
Appellant contends Wittenbreder is actually “silent” with respect to this
element of the claim, and the “Examiner merely hypothesizes about what
one could do to achieve the claimed matched capacitances.” Id. at 6.
We do not find Appellant’s contentions in this regard persuasive of
reversible error because they are conclusory and unsupported by persuasive
evidence in the record. Attorney argument is not evidence. De Blauwe, 736
at 705; see also In re Lovin, 652 F.3d 1349, 1356–57 (Fed. Cir. 2011)
(holding that a “naked assertion” that the prior art fails to disclose a claim
limitation is not an argument in support of separate patentability).
Moreover, based on the fact-finding and detailed analysis provided by
the Examiner at pages 5–8 of the Answer and pages 10–11 of the Final
Office Action, we find that a preponderance of the evidence does support the
Examiner’s finding that Wittenbreder discloses the “wherein a primary
capacitance of the power conversion circuit and a secondary capacitance of
the power conversion circuit are matched based on a turns ratio of the
transformer” recitation of the claim. Wittenbreder, Fig. 8, 7:59–8:59.
Accordingly, we affirm the Examiner’s rejection of claims 21–25 and
32 under pre-AIA 35 U.S.C. § 102(a) and § 102(e) as anticipated by
Wittenbreder.
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Rejection 2
Appellant does not present any substantive argument in the Appeal
Brief or Reply Brief in response to the Examiner’s rejection of claims
21–25, 31–36, 38, and 39 on the ground of nonstatutory double patenting as
being unpatentable over claims 1–20 of U.S. Patent No. 8,937,817 (Final
Act. 13). See generally Appeal Br., Reply Br.
Accordingly, because the Examiner’s rejection of claims 21–25,
31–36, 38, and 39 for nonstatutory double patenting has not been withdrawn
(see Ans. 3; Final Act. 13–14) and is not disputed by Appellant, we
summarily affirm this rejection. Cf. Hyatt v. Dudas, 551 F.3d 1307, 1314
(Fed. Cir. 2008); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (“If an appellant fails to present arguments on a particular
issue — or, more broadly, on a particular rejection — the Board will not, as
a general matter, unilaterally review those uncontested aspects of the
rejection”) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011)).
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
21–25, 32 102(a) Wittenbreder 21–25, 32
21–25, 32 102(e) Wittenbreder 21–25, 32
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Claim(s)
Rejected
35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
21–25,
31–36, 38,
39
Nonstatutory double
patenting
21–25,
31–36, 38,
39

Overall
Outcome
21–25,
31–36, 38,
39

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (1)(iv).
AFFIRMED