FUJI ELECTRIC CO., LTD.

Patent Trials and Appeals Board

Jun 2, 2020

2019002134 (P.T.A.B. Jun. 2, 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.
14/329,024 07/11/2014 Takahiro MORI FUJI-0816 8104
37013 7590 06/02/2020
Rossi, Kimms & McDowell LLP
20609 Gordon Park Square
Suite 150
Ashburn, VA 20147
EXAMINER
LAU, KEVIN
ART UNIT PAPER NUMBER
2683
NOTIFICATION DATE DELIVERY MODE
06/02/2020 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):
EOfficeAction@rkmllp.com
mail@rkmllp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKAHIRO MORI and AKIRA NAKAMORI

Appeal 2019-002134
Application 14/329,024
Technology Center 2600
Before JUSTIN BUSCH, LINZY T. McCARTNEY, and BETH Z. SHAW,
Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–16, which are all the claims pending.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm in part and enter a new ground of rejection. See 37 C.F.R.
§ 41.50(b).

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Fuji Electric Co.,
Ltd. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The disclosed and claimed subject matter relates to alarm signal
generator circuits and methods that generate signals indicating a type of
failure and the phase in which the failure occurred. Spec. ¶ 3, Abstract. In
particular, the claimed subject matter generates a signal indicating failure in
an instrument (e.g., an intelligent power module) that includes a first time
portion of the signal determinative of the type of failure (i.e., overheat,
overcurrent, or undervoltage) and a second time portion of the signal
determinative of the phase in which the failure occurred. Spec. ¶¶ 3, 5, 11,
17, 32. Claims 1 and 6 are independent claims, and representative claim 6 is
reproduced below:
6. An alarm signal generation method for generating a signal
indicative of a failure of an instrument that carries out a plurality
of phase operations, the method comprising:
determining a type of failure or a phase among a plurality
of phases in which a failure has occurred; and
generating, in accordance with the result of the
determination, an alarm signal comprising a pulse corresponding
to the type of failure or to the phase among the plurality of phases
in which the failure has occurred,
wherein the type of failure and the phase in which the
failure has occurred can be determined from the generated alarm
signal, the alarm signal including a first portion that occurs
during a first portion of time of the alarm signal and a second
portion that occurs during a second portion of time of the alarm
signal different from the first portion of time, the first portion of
the alarm signal being determinative of the type of failure that
has occurred and the second portion being determinative of the
phase in which the failure has occurred.
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REJECTIONS
Claims 1, 2, and 6 stand rejected under 35 U.S.C. § 103 as obvious in
view of Kumagai (US 2002/0039269 A1; Apr. 4, 2002), Kajima2 (JP Pub.
2008-216040 A; Sept. 18, 2008), and Hu (US 2011/0176637 A1; July 21,
2011). Final Act. 2–6.
Claims 3 and 7 stand rejected under 35 U.S.C. § 103 as obvious in
view of Kumagai, Kajima, Hu, and Okumura (US 5,869,996; Feb. 9, 1999).
Final Act. 6–7.
Claims 4 and 8 stand rejected under 35 U.S.C. § 103 as obvious in
view of Kumagai, Kajima, Hu, and Buxton (US 6,473,280 B1; Oct. 29,
2002). Final Act. 8.
Claim 9 stands rejected under 35 U.S.C. § 103 as obvious in view of
Kumagai, Kajima, Hu, Okumura, and Buxton. Final Act. 8–9.
Claims 5 and 10 stand rejected under 35 U.S.C. § 103 as obvious in
view of Kumagai, Kajima, Hu, and Isaka (JP 354-93411 A; July 24, 1979).
Final Act. 9–10.
Claim 11 stands rejected under 35 U.S.C. § 103 as obvious in view of
Kumagai, Kajima, Hu, Okumura, and Isaka. Final Act. 10–11.
Claim 12 stands rejected under 35 U.S.C. § 103 as obvious in view of
Kumagai, Kajima, Hu, Buxton, and Isaka. Final Act. 12–13.
Claims 13 and 14 stand rejected under 35 U.S.C. § 103 as obvious in
view of Kumagai, Kajima, Hu, Buxton, and Grek (US 2011/0148378 A1;
June 23, 2011). Final Act. 13–15.

2 We refer to the translations in the record for the Japanese references.
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Claims 15 and 16 stand rejected under 35 U.S.C. § 103 as obvious in
view of Kumagai, Kajima, Hu, Grek, and Isaka. Final Act. 15–16.
OPINION
REJECTION OF CLAIMS 1, 2, AND 6
The Examiner rejects claims 1, 2, and 6 as obvious in view of
Kumagai, Kajima, and Hu. Final Act. 2–6. Appellant argues the rejection
of claims 1, 2, and 6 as a group. Accordingly, we select independent claim 6
as representative of claims 1, 2, and 6. See 37 C.F.R. § 41.37(c)(iv).
The Examiner finds Kumagai teaches the majority of the subject
matter recited in representative claim 6. Final Act. 5 (citing Kumagai ¶¶ 2,
56). Specifically, the Examiner finds Kumagai teaches determining a phase
and type of failure in a device and generating an alarm signal from which the
phase and type of failure can be determined including a pulse corresponding
to the phase or type of failure. Final Act. 5. The Examiner finds Kumagai
does not explicitly disclose a single alarm signal including a first time
portion determinative of a failure type and a second time portion
determinative of the phase. Final Act. 5–6.
However, the Examiner finds Kajima discloses an alarm signal with
two portions as recited in representative claim 6 and Hu teaches the general
concept that two pieces of information can be contained in one signal. Final
Act. 5–6 (citing Kajima ¶¶ 71, 77, 78; Hu ¶ 18). The Examiner finds the
Kumagai-Kajima combination does not explicitly disclose that both the first
(failure type) and second (failure phase) portions are included in one signal.
Final Act. 6. The Examiner finds Hu teaches including two pieces of
information in a single signal, and the Examiner concludes incorporating
Hu’s teaching into the Kumagai-Kajima system would have been obvious to
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a person of ordinary skill in the art because combining signals results in “a
more efficient signal communicating system.” Final Act. 6; Ans. 5 (noting a
“motivation to combine may be implicit and may be found in the knowledge
of one of ordinary skill in the art, or, in some cases, from the nature of the
problem to be solved” (citing DyStar Textilfarben GmbH v. C.H. Patrick
Co., 464 F.3d 1356, 1366 (Fed. Cir. 2006)) and that an implicit motivation
to combine may exist if the modification “is technology-independent and the
combination of references results in a product or process that is more
desirable, for example because it is . . . more efficient” (quoting DyStar, 464
F.3d at 1368)).
Appellant argues (1) Hu is not analogous art to Appellant’s invention,
(2) the Examiner’s rationale is unsupported by a rational underpinning, and
(3) a person of ordinary skill in the art would not have modified Kajima’s
system for detecting a type and phase of failure of a power distribution
system with Hu’s teachings to arrive at the claimed subject matter. Appeal
Br. 5–12; Reply Br. 2–5.3 We address each of these arguments below.
Analogous Art
Prior art is analogous if it is (1) from the same field of endeavor
regardless of the problem addressed, or (2) even if the reference is not within
the field of the inventor’s endeavor, the reference is reasonably pertinent to
the particular problem with which the inventor is involved. In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004).
Appellant contends Hu is not analogous art because it is neither in the
same field of endeavor as Appellant’s invention nor reasonably pertinent to

3 Although Appellant’s Reply Brief is not numbered, we refer to page
numbers starting with the cover page as page 1.
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the problems faced by the inventors of Appellant’s invention. Appeal Br. 5–
9; Reply Br. 2–3. Appellant asserts the inventors were “concerned with
solving problems associated with a driver IC installed in an IPM to detect a
temperature of, and current flowing through, an IGBT chip.” Appeal Br. 7
(citing Spec. ¶ 5). Appellant notes that conventional systems using only one
pad for outputting an alarm signal were not able to indicate the phase in
which a failure occurred. Appeal Br. 7 (citing Spec. ¶¶ 9, 10).
Appellant argues Hu, on the other hand, relates to mobile terminals
transmitting acknowledgments and negative acknowledgments over a
communications network. Appeal Br. 7–8 (citing Hu ¶¶ 2–4, 7–11).
Appellant argues that for these reasons, Hu is not from the same field of
endeavor as the invention and not reasonably pertinent to the problems the
inventors faced. Appeal Br. 8. Appellant asserts the Examiner applied the
wrong test and failed to explain how Hu “would have logically commended
itself to the inventor’s attention” because the Examiner found Hu was
reasonably pertinent to the problem faced by Kumagai and merely concludes
Hu teaches the claimed features. Appeal Br. 8–9 (citing Final Act. 17;
Advisory Action (Jan. 31, 2018)); see Reply Br. 1–2 (citing Ans. 3–4).
The Examiner explains that, “[a]s stated by appellant, the problem to
be solved is conveying the phase information and type of failure using a
single pad which is to be combined into the single alarm signal from the
single terminal 100.” Ans. 3–4 (citing Spec. ¶¶ 9, 10, 36, Fig. 1). The
Examiner finds Hu is reasonably pertinent to the problem the inventors faced
(i.e., including multiple pieces of information in a single signal from a single
output) because Hu provides known techniques for conveying separate
pieces of information within a single signal, specifically by time dividing the
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signal. Advisory Act. 2. The Examiner further finds that, although Hu’s
signal is used for telecommunications, Hu’s relied-upon disclosure would
have logically commended itself to a person of ordinary skill in the art
looking to solve a problem of combining two pieces of information into a
single alarm signal output using a single terminal. Ans. 4.
We agree with Appellant’s assertion that “the inventor of this
application was concerned with solving problems associated with a driver IC
[(integrated circuit)] installed in an IPM [(intelligent power module)] to
detect a temperature of, and current flowing through, an IGBT [(insulated
gate bipolar transistor)] chip.” See Appeal Br. 7 (citing Spec. ¶ 5). This
provides at least one reasonable characterization of Appellant’s field of
endeavor. However, even assuming Appellant’s invention is in a different
field of endeavor than Hu does not persuade us of Examiner error because
the Examiner does not find Hu is in the same field of endeavor. Rather, the
Examiner finds Hu is analogous art because it is reasonably pertinent to a
problem addressed by the inventors of the Appellant’s invention.
To the extent Appellant contends that the problem the inventors of
Appellant’s invention faced is limited to intelligent power module alarm
signals, we disagree. As noted above, field of endeavor and reasonably
pertinent to the problem faced are two alternative tests for determining
whether prior art is analogous. Thus, even when in a different field of
endeavor, prior art is analogous if it is reasonably pertinent to a problem
faced by the inventors.
The Examiner noted the Specification indicates the problem addressed
by Appellant’s invention was conveying both the type and phase of a
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detected failure in a single signal using a single pad. See Ans. 3–4 (citing
Spec. ¶¶ 9, 10, 36). We agree.
After describing that an intelligent power module has only one pad for
outputting an alarm signal, the Specification explains that adding another
pad would add cost and increase the chip size. Spec. ¶ 9. The Specification
then explains that “even though it can be determined that a failure has
occurred, it is not possible to determine in which phase the failure has
occurred.” Spec. ¶ 9. Accordingly, at least one problem faced by the
inventors of the presently claimed subject matter was indicating both the
phase and type of failure in a single alarm signal. See Spec. ¶¶ 33–35, 53–
54 (explaining that the known problems of conveying both the phase and
type of failure in a single alarm signal is solved by encoding the failure
phase (either using a pulse number or a pulse width) in one portion of an
alarm signal and encoding the failure type in another portion of the alarm
signal), Figs. 5, 6, 11.
Here, although from a different field of endeavor (i.e., mobile devices
transmitting and receiving a code corresponding to a predetermined message
over a telecommunications network), Hu addresses the same problem the
inventors of the claimed subject matter faced—conveying multiple pieces of
information in a single signal. Hu ¶ 18; see Hu ¶¶ 1, 11 (“proposing a more
efficient ACK/NACK bundling scheme” and noting “the proposed solution
has a wider application, and does not solely relate to an ACK/NACK
bundling scheme”), Abstract; see also Hu ¶¶ 12–17 (describing
communicating multiple pieces of data using an encoding scheme from
which the receiving device is able to determine the signal’s meaning).
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Appellant’s argument that the Examiner applied the wrong test is not
persuasive. The Examiner finds Hu is analogous art because it is reasonably
pertinent to the problem faced by the inventors of the presently claimed
subject matter—namely, as discussed in the Answer and the preceding
paragraphs, conveying phase and type information in a single signal. See
Ans. 3–4 (citing Spec. ¶¶ 9–10). Thus, the Examiner identified a problem
faced by the inventors of Appellant’s invention and found that Hu was
reasonably pertinent to this problem. See Ans. 3–4. This is consistent with
Appellant’s assertion that conventional systems used only one pad for
outputting an alarm signal and, thus, could not indicate the phase in which a
failure occurred. Appeal Br. 7 (citing Spec. ¶¶ 9, 10).
Rationale
Appellant argues the Examiner’s conclusion that incorporating Hu’s
teaching of combining information into a single signal with the Kumagai-
Kajima system would have been obvious because it would allow for a more
efficient communication signaling system is insufficient. Appeal Br. 9–10;
Reply Br. 3–4. Specifically, Appellant argues the Examiner’s statement is
conclusory, unsupported by rationale or evidence of record, mere conjecture,
and could be applied to any proposed modification made to a signal
communicating system. Appeal Br. 10; Reply Br. 4.
We are not persuaded the Examiner erred. The Examiner relies on Hu
for the very limited teaching that it was known to combine two pieces of
information into a single signal. Final Act. 6. Although the Examiner’s
statement that the combination would have been obvious to improve
signaling efficiency sounds generic on its face, that is partly because the
relied-upon teaching itself is the generic and basic concept of splitting a
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signal into portions in time to convey different pieces of information. Hu
¶ 18 (explaining that “the signal may comprise two or more fields (i.e. two
or more portions of the signal which can be distinguished from each other by
the receiver, perhaps by their location within the signal, or by some other
means)” and “[t]he fields may comprise distinct portions of the signal, for
example, a chronologically first half (or ‘hop’) of the signal and a second
half (or ‘hop’)”).
Given this simple teaching and combination, the level of ordinary skill
in the art, and the knowledge a person of ordinary skill in the art would
possess, we are persuaded the provided rationale of more efficient signaling
is sufficient. “When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the
same field or a different one.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007); see also id. (“If a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability.”). “For the same
reason, if a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” Id.
Resulting Combination
Appellant contends that, even assuming Hu is analogous art, a person
of ordinary skill in the art would not have modified Kajima’s track current
based on Hu’s disclosures. Appeal Br. 11–12; Reply Br. 4–5. Appellant
argues Kajima teaches easily and reliably specifying an accident point using
its track current such that there is no reason to modify Kajima based on Hu’s
unrelated teachings. Appeal Br. 11; Reply Br. 5.
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As already noted, the Examiner relies on Hu merely to teach
conveying two pieces of information using a single signal. Notably, the
Examiner does not propose modifying Kajima’s track current. Rather, as
discussed above, the Examiner finds Kumagai teaches an alarm signal
indicating a failure type and phase but does not explicitly disclose an alarm
signal including first and second portions respectively determinative of a
type of failure and a phase in which the failure occurred. Final Act. 5. The
Examiner finds Kajima teaches an alarm signal having two distinct portions,
one portion indicating the failure type and one portion indicating the failure
phase. Final Act. 5–6 (citing Kajima ¶¶ 71, 77, 78). Therefore, the
Examiner proposes modifying Kumagai’s alarm signal, which already
indicates both the type of failure and the phase during which the failure
occurred, to explicitly include two distinct portions. Final Act. 5–6.
The Examiner also finds that, although Kumagai-Kajima teaches an
alarm signal indicating both the failure type and the phase in which the
failure occurred, neither Kumagai nor Kajima clearly indicates whether
those two portions are part of one signal. Final Act. 6. Thus, the Examiner
proposes modifying the Kumagai-Kajima alarm signal to explicitly
incorporate Hu’s teaching to combine multiple pieces of information into a
single signal with each piece of information conveyed in a different time-
portion of the signal. Final Act. 6.
Accordingly, contrary to Appellant’s assertion, the Examiner does not
propose modifying Kajima’s track current at all. Rather, as discussed, the
Examiner proposes modifying Kumagai’s alarm signal to explicitly include
two portions, as taught by Kajima. Kajima’s track current itself is not part
of the proposed Kumagai-Kajima system or method. Thus, the Examiner
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does not propose modifying Kajima’s track current with Hu’s teaching.
Instead, the Examiner’s proposed modification merely incorporates Hu’s
teaching to combines the Kumagai-Kajima alarm signal’s two portions into a
single signal.
Moreover, because Hu discloses conveying two pieces of information
in two distinct time-portions of the same signal, Hu also teaches a signal
including a first portion determinative of a first piece of information and a
second portion determinative of a second piece of information. See Hu ¶ 18.
Therefore, given the Examiner’s findings regarding Hu, the Examiner’s
finding that Kajima teaches two alarm signal portions is duplicative.
Because Kumagai and Hu teach every limitation recited in representative
claim 6, the Examiner’s findings regarding Kajima are unnecessary, which
renders moot Appellant’s arguments regarding modifying Kajima. Thus, we
alternatively affirm the Examiner’s rejection of representative claim 1 as
obvious over Kumagai and Hu. See In re Kronig, 539 F.2d 1300, 1302
(CCPA 1976) (Board limiting affirmance of obviousness rejection to three
of the four references cited by the Examiner is not new grounds); In re Bush,
296 F.2d 491, 495–96 (CCPA 1961); Manual of Patent Examining
Procedure § 1207.03(a)(II) (January 2018).
For these reasons, we are not persuaded the Examiner erred in
concluding representative claim 6 would have been obvious in view of
Kumagai, Kajima, and Hu or, alternatively, obvious in view of Kumagai and
Hu. For the same reasons, we are not persuaded the Examiner erred in
rejecting independent claim 1 or dependent claim 2, not argued separately
with particularity. Accordingly, we sustain the Examiner’s rejection of
claims 1, 2, and 6.
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REJECTION OF CLAIMS 3 AND 7
Dependent claims 3 and 7 additionally recite a latch circuit that
receives a signal output from the instrument and a monostable multivibrator
that outputs a pulse width corresponding to a failure type based on the
timing transition of the latch circuit. Appeal Br. 17–18. The Examiner finds
Kumagai teaches the recited latch circuit and Okumura teaches or suggests
outputting “a pulse of a width corresponding to the type of failure based on
the transition timing of the output of the latch circuit,” as recited in claims 3
and 7. Final Act. 7. The Examiner takes official notice that monostable
multivibrators were known in the art to create pulse width signals. Final
Act. 7.
Appellant acknowledges that Okumura teaches pulse widths
corresponding to failure types, but Appellant argues there is no disclosure
that the “signals are output based on the transition timing of the output of the
latch circuit, as required by claim 3.” Appeal Br. 13.
We are not persuaded of error. The Examiner notes that
nonobviousness cannot be established by attacking references individually
when the rejection is based on a combination of references. Ans. 5–6 (citing
In re Keller, 642 F.2d 413 (CCPA 1981); In re Merck & Co., 800 F.2d 1091
(Fed. Cir. 1986)). The Examiner finds Kumagai teaches the recited latch
circuit. Final Act. 7. Appellant does not contest this finding, and Appellant
acknowledges that Okumura generates alarm signals having pulse widths
corresponding to failure types. Thus, by the nature of the proposed
combination, the Examiner finds the combination of Kumagai and Okumura
teaches or suggests outputting the alarm signals based on the transition
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timing of the output of the latch circuit because the Examiner does not rely
on Okumura as teaching the recited latch circuit.
A person of ordinary skill in the art would understand that the
proposed combination includes Kumagai’s latch circuit providing the
latched alarm signal to Okumura’s system that generates an alarm signal
having pulse widths corresponding to the type of failure. Accordingly, we
are not persuaded the Examiner erred in rejecting claims 3 and 7 as obvious
in view of Kumagai, Kajima, Hu, and Okumura, and we sustain the
Examiner’s rejection of claims 3 and 7.
REJECTION OF CLAIM 13 AND 14
Dependent claim 13 additionally recites, in relevant part, “the second
portion of the alarm signal includes a number of pulses that varies according
to the phase in which the failure has occurred.” Appeal Br. 19. The
Examiner finds Buxton’s counters, which determine the phase in which a
failure occurred, disclose this limitation. Final Act. 14. Specifically, the
Examiner finds “Buxton discloses using counters to count to determine the
phase of failure, in which the count would be determined based on the
number of pulses counted (as seen in Fig. 1 a-b).” Ans. 6.
Appellant argues the Examiner fails to consider the claim as a whole
because neither Grek nor Buxton teach that their disclosed signals are part of
an alarm signal. Appeal Br. 14. The Examiner notes that nonobviousness
cannot be established by attacking references individually when the rejection
is based on a combination of references. Ans. 5–6 (citing Keller, 642 F.2d
413; Merck, 800 F.2d 1091). The Examiner finds the combination of
Kumagai, Kajima, and Hu teaches or suggests conveying both a failure type
and the phase in which the failure occurred in a single alarm signal, and the
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Examiner finds Grek and Buxton teach the particular way the type and phase
are embedded or encoded within their respective portions of the signal. See
Ans. 6.
As the Examiner noted, the Examiner merely relies on Grek and
Buxton to teach or suggest particular methods for encoding data. See Final
Act. 13–14. In particular, the Examiner finds Grek teaches using a pulse
width to convey failure type and Buxton teaches using a number of pulses
that vary according to the phase in which the failure occurred. Final
Act. 13–14. Accordingly, Appellant’s argument that Grek and Buxton do
not teach their signals are part of an alarm signal does not address the
Examiner’s findings. Thus, we agree with the Examiner that Appellant’s
attack on the individual teachings of Grek and Buxton when the Examiner
finds a combination of Kumagai, Kajima, Hu, Grek, and Buxton teaches or
suggests the disputed limitations.
Appellant also argues Buxton’s PHASE1FAIL and PHASE2FAIL
signals merely toggle off and on in response to a failure in the first and
second phase, respectively. Appeal Br. 14; Reply Br. 6. Appellant asserts
Buxton fails to teach or suggest these signals teach or suggest a number of
pulses that vary according to the phase. Appeal Br. 14; Reply Br. 6.
Appellant further argues the circuits in Buxton’s Figures 1a and 1b do not
even identify the phase in which a failure occurred. Reply Br. 6.
Buxton discloses a failure detection circuit connected to a switching
regulator. Buxton 2:6–14. In a multi-phase switching regulator, Buxton
discloses either a single failure detection circuit that identifies only that a
failure occurred in at least one of the phases or a failure detection circuit for
each phase that output signals indicating that the respective regulator phase
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failed. Buxton 6:63–7:1 (explaining that a single failure detection circuit
used for all three phases “indicates a failure condition for the sensed
parameter in at least one of the three phases,” and, if “it is desirable to
identify the specific phase in which a failure occurs, separate failure
detection for each of the phases may be employed”), Fig. 4 (depicting a two-
phase regulator with two failure detection circuits).
Each of Buxton’s failure circuits includes a decision circuit, which
senses whether the regulator is operating normally by determining whether a
sensed parameter (e.g., current or voltage) transitions from on to off during
every clock cycle and toggles a signal from a first to a second state every
clock cycle. Buxton 3:3–19. The decision circuit’s output is connected to a
respective counter’s reset input, and, if the output does not toggle, the
counter increments its internal count once per clock cycle. Buxton 3:20–26.
If the counter reaches a predetermined value, the counter toggles its output,
which indicates a failure. Buxton 3:26–28, 3:43–45; see Buxton 6:24–33.
As mentioned above, in order to identify the phase in which the
failure occurs, Buxton a counter for each phase. Buxton 7:12–22; see
Buxton 6:63–7:1. Accordingly, even in embodiments that identify the phase
in which a failure occurred, the phase failure signals (i.e., PHASE1FAIL and
PHASE2FAIL) merely teach or suggest toggling the PHASE1FAIL signal to
an “on” value when the circuit detects a failure in the first phase and
toggling the PHASE2FAIL signal to an “on” value when the circuit detects a
failure in the second phase. Buxton 7:23–35.
Thus, it is true that Buxton teaches counting a number of pulses and,
when that count exceeds a predetermined number, outputting a failure signal
indicating the phase to which the counter is connected failed. However,
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Buxton merely teaches failure signals that toggle when the circuit
determines the respective phase failed. Buxton does not explicitly indicate
the counter output values that indicate a circuit failure but merely describes
the output as being toggled from one value to another. Notably, although
Buxton does not explicitly disclose “on” and “off” values for either the
PHASE1FAIL signal or the PHASE2FAIL signal, Buxton at least suggests
that the two signals toggle between the same “on” and “off” values.
Accordingly, we agree with Appellant that Buxton’s failure signals fail to
teach or suggest signals having “a number of pulses that varies according to
the phase in which the failure has occurred,” as recited in claim 13. Claim
14 depends from claim 13 and incorporates the limitations of claim 13.
Thus, we reverse the Examiner’s rejection of claims 13 and 14 as obvious in
view of Kumagai, Kajima, Hu, Grek, and Buxton.
REJECTION OF CLAIM 15
Dependent claim 15 additionally recites “a first pulse having a width
that varies according to the type of failure that has occurred, and . . . a
second pulse having a width that varies according to the phase in which the
failure has occurred.” Appeal Br. 19. The Examiner finds Grek’s disclosure
of a pulse width indicating an alarm type teaches or suggests the recited first
pulse and Isaka’s disclosure of a pulse width indicating a failure’s phase
teaches or suggests the recited second pulse. Final Act. 15–16.
Appellant argues the Examiner fails to consider the claim as a whole
because neither Grek nor Isaka teach that their disclosed signals are part of
an alarm signal. Appeal Br. 15. The Examiner notes that nonobviousness
cannot be established by attacking references individually when the rejection
is based on a combination of references. Ans. 6–7 (citing Keller, 642 F.2d
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413; Merck, 800 F.2d 1091). The Examiner finds the combination of
Kumagai, Kajima, and Hu teaches or suggests conveying both a failure type
and the phase in which the failure occurred in a single alarm signal, and the
Examiner finds Grek and Isaka teach the particular way the type and phase
are embedded or encoded within their respective portions of the signal. See
Ans. 6–7.
As the Examiner noted, the Examiner merely relies on Grek and Isaka
to teach or suggest particular methods for encoding data. See Final Act. 15–
16. In particular, the Examiner finds Grek teaches using a pulse width to
convey failure type and Isaka teaches using a pulse width to convey the
phase in which the failure occurred. Final Act. 15–16. Accordingly,
Appellant’s argument that Grek and Isaka do not teach their signals are part
of an alarm signal does not address the Examiner’s findings. Thus, we agree
with the Examiner that Appellant’s attack on the individual teachings of
Grek and Isaka demonstrates an error in the rejection because the Examiner
finds a combination of Kumagai, Kajima, Hu, Grek, and Isaka teaches or
suggests the disputed limitations.
REJECTIONS OF CLAIMS 4, 5, 8–12, 14, AND 16
Appellant does not argue dependent claims 4, 5, 8–12, 14, and 16
separately with particularity. Therefore, we sustain the Examiner’s rejection
of these claims as obvious over Kumagai, Kajima, and Hu in further view of
one or more of Buxton, Okumura, Isaka, and Grek for the same reasons.
NEW GROUND OF REJECTION OF CLAIMS 13 AND 15
We enter a new ground of rejection pursuant to our authority under
37 C.F.R. § 41.50(b). In particular, we newly reject dependent claim 13 and
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15 under 35 U.S.C. § 103 as obvious in view of Kumagai, Kajima, Hu, and
Okumura.
Okumura generally relates to “a method of detecting abnormal
conditions in an inverter device.” Okumura 1:11–18. Okumura notes
problems with conventional elements for detecting failures—namely, “that
the particular abnormal condition cannot be identified from the abnormality
signal thus outputted.” Okumura 3:10–12. Okumura addresses this problem
by providing different abnormality signals “as outputs according to the three
respective abnormal conditions.” Okumura 3:17–22. In particular,
Okumura teaches outputting a pulse having a width that varies according to
the type of abnormality signal (e.g., overcurrent, control supply voltage
reduction, and overheat). Okumura 9:23–30. Okumura also discloses that
pulse width is merely one exemplary method for distinguishing the failure
type, but the system may alternatively use “any signals which are
distinguished from one another,” such as “different amplitudes, frequencies,
or the like.” Okumura 9:30–35 (emphasis added).
As discussed above, we agree with the Examiner that, in combination,
Kumagai, Kajima, and Hu teach or suggest the subject matter recited in
claim 2, from which claims 13 and 15 depend. In particular, Kumagai
already teaches or suggests an alarm signal that indicates both the failure
type and the phase in which the failure occurred. Kumagai ¶¶ 2, 9, 56. We
find this disclosure in Okumura—various encoding methods (pulse width,
amplitude, and frequency) may be used to identify the type of failure—
teaches or suggests the general concept of encoding a signal to convey one
value out of a set of choices.
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Notably, “the question under 35 USC § 103 is not merely what the
references expressly teach but what they would have suggested to one of
ordinary skill in the art at the time the invention was made.” Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (emphasis added)
(quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)); see also MPEP
§ 2123. Given Okumura’s disclosure of known methods to encode the three
failure types using a pulse width or frequency, the combination of Kumagai,
Kajima, and Hu, as modified by Okumura teaches or suggests an alarm
signal in which (1) the failure type is encoded using a pulse width, as taught
by Okumura and (2) the phase in which the failure occurred is encoded using
either a pulse width or a frequency, as suggested by Okumura. Applying
Okumura’s teachings to the Kumagai-Kajima-Hu system and method merely
requires applying Okumura’s known technique of encoding one of a set of
values to a known system that yields no more than predictable results. See
KSR, 550 U.S. at 417.
For the reasons discussed above, we conclude dependent claims 13
and 15 are obvious under 35 U.S.C. § 103 in view of the teachings and
suggestions of Kumagai, Kajima, Hu, and Okumura. The Patent Trial and
Appeal Board is a review body rather than a place of initial examination.
We have made a new rejection regarding dependent claims 13 and 15 under
35 U.S.C. § 103, pursuant to 37 C.F.R. § 41.50(b). However, we have not
reviewed the remaining claims to the extent necessary to determine whether
these claims are unpatentable over this combination or any other
combination not before us. We leave it to the Examiner to ascertain the
appropriateness of any further rejections based on these or other references.
Our decision not to enter a new ground of rejection for all claims (i.e., claim
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14), however, should not be considered as an indication regarding the
appropriateness of further rejection or allowance of the non-rejected claims.
See MPEP § 1213.02.
DECISION SUMMARY
Claims
Rejected 35 U.S.C. § References Affirmed Reversed
New
Ground
1, 2, 6 103 Kumagai, Kajima, Hu 1, 2, 6

3, 7 103 Kumagai, Kajima, Hu, Okumura 3, 7

4, 8 103 Kumagai, Kajima, Hu, Buxton 4, 8

9 103
Kumagai, Kajima,
Hu, Okumura,
Buxton
9

5, 10 103 Kumagai, Kajima, Hu, Isaka 5, 10

11 103
Kumagai, Kajima,
Hu, Okumura,
Isaka
11

12 103 Kumagai, Kajima, Hu, Buxton, Isaka 12

13, 14 103 Kumagai, Kajima, Hu, Grek, Buxton 13, 14

15, 16 103 Kumagai, Kajima, Hu, Grek, Isaka 15, 16

13, 15 103 Kumagai, Kajima, Hu, Okumura
13, 15
Overall
Outcome 1–12, 15, 16 13, 14
13, 15
TIME PERIOD FOR RESPONSE
Section 41.50(b) provides “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM
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THE DATE OF THE DECISION, must exercise one of the following two
options with respect to the new grounds of rejection to avoid termination of
the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be remanded
to the examiner.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record.

Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART; 37 C.F.R. § 41.50(b)