WARNES, Frank

Patent Trials and Appeals Board

Nov 7, 2019

14855560 - (D) (P.T.A.B. Nov. 7, 2019)

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.
14/855,560 09/16/2015 Frank WARNES 36857.98 7089
74686 7590 11/07/2019
Murata Power Solutions
c/o Keating & Bennett, LLP
1800 Alexander Bell Drive
SUITE 200
Reston, VA 20191
EXAMINER
ROSARIO BENITEZ, GUSTAVO A
ART UNIT PAPER NUMBER
2838
NOTIFICATION DATE DELIVERY MODE
11/07/2019 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):
jkeating@kbiplaw.com
pmedley@kbiplaw.com
uspto@kbiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK WARNES
Appeal 2019-001342
Application 14/855,560
Technology Center 2800
Before LINDA M. GAUDETTE, MERRELL C. CASHION, JR., and
JANE E. INGLESE, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 17 and 18.3
We REVERSE.

1 This Decision includes citations to the following documents: Specification
filed September 16, 2015, as amended (“Spec.”); Final Office Action dated
June 22, 2017 (“Final”); Appeal Brief filed February 16, 2018 (“Appeal
Br.”); Examiner’s Answer dated June 14, 2018 (“Ans.”); and Reply Brief
filed August 13, 2018 (“Reply Br.”).
2 We use the word “Appellant” to refer to the “Applicant” as defined in
37 C.F.R. § 1.42(a). The Appellant identifies the real party in interest as
Murata Manufacturing Co., Ltd. Appeal Br. 2.
3 We have jurisdiction under 35 U.S.C. § 6(b).
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Application 14/855,560

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CLAIMED SUBJECT MATTER
The “invention relates to a multipurpose power supply suitable for
power switch driver applications, and in particular to a power switch driver
power supply circuit that is capable of being used with multiple variants of
power switch driver circuits.” Spec. ¶ 1. Claim 17, reproduced below, is
illustrative of the claimed subject matter:
17. A system comprising:
a power supply; and
a power electronics device; wherein
the power supply comprising:
a first output stage to produce a first voltage;
a second output stage to produce a second voltage;
a third output stage to produce a third voltage;
a first output terminal connected to a first side of
the first output stage;
a second output terminal connected to a second
side of the first output stage and connected to a first side
of the second output stage;
a third output terminal connected to a second side
of the second output stage and connected to a first side of
the third output stage; and
a fourth output terminal connected to a second side
of the third output stage; wherein the power electronics
device includes a transistor;
one terminal selected from the first output terminals
through the fourth output terminals is connected to ground;
two terminals selected from the first output terminals
through the fourth output terminals are connected to the
transistor, supplying a positive voltage and a negative voltage
to the transistor; and
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one terminal selected from the first output terminals
through the fourth output terminals is unconnected.
Appeal Br. 16–17. (Claims Appendix)
REJECTION
Claims 17 and 18 are rejected under 35 U.S.C. § 103 as unpatentable
over Combs (US 5,162,663, issued November 10, 1992) in view of
Applicant Admitted Prior Art, i.e., Specification Figure 1 (AAPA Figure 1)
and Specification paragraphs 27–33 (AAPA). See Final 2–5.
OPINION
The Examiner cites Combs Figure 1 and AAPA Figure 1 as evidence
of obviousness. See Final 2–5. Combs Figure 1 is reproduced below.
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Combs Figure 1 is a schematic diagram showing a known, two
converter power supply 10 comprising a switching-type, first converter 12
and a separate, second converter 14 having transformer T1 with primary
winding Y1 and secondary winding Y2. Combs 3:43–46, 62–63, 4:47–48.
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Combs discloses that “[s]witching converters derive their voltage and
current from a. c. line power VIN, and use power switching transistors or
similar devices to regulate the output voltages [(e.g., V1, V2, V3)] and
currents that they supply.” Id. at 3:46–49. Combs discloses that “through
operation of the switch S0 . . ., the drive signal and thereby the multiple
output voltages V1, V2, and V3 are effectively disconnected.” Id. at 3:58–
61. Combs discloses that “second power converter 14 converts power from
the level of the a. c. line voltage VIN to a level which powers the random
access memory 18 and keeps the battery B1 from discharging.” Id. at 4:44–
47. Combs’s invention, illustrated in Figure 2, is a single converter power
supply 20 that Combs describes as “provid[ing] all of the output voltages,
currents and disconnecting functions that are available from the two
converter power supply 10.” Id. at 4:54–57. In other words, Combs’s “single
converter provides a set of multiple outputs which may be switchably
disconnected from the electronic circuits that they supply with power,” and
an “unswitched output that continuously powers a back-up battery that is
connected to a random access memory when the converter is connected to
a. c. line power.” Id. at 2:9–15.
As to claim 17, the Examiner found that Combs discloses “a system
(10) comprising: a power supply (Vin); and a power electronics device (12)
[that] . . . includes a transistor (S1).” Final 2–3. The Examiner found that
Combs’s “power supply compris[es]: a first output stage to produce a first
voltage (producing V1); a second output stage to produce a second voltage
(producing V2); [and] a third output stage to produce a third voltage
(producing V3 or V4).” Id. at 2. The Examiner further found that Combs
discloses four output terminals connected to the output stages as recited in
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claim 17. Id. at 2–3. The Examiner found that Combs discloses that one of
the output terminals is connected to ground and that one of the “output
terminals is unconnected (disconnected/not selected).” Id. at 3. The
Examiner found that Combs does not teach that two of the “output terminals
are connected to the transistor, supplying a positive voltage and a negative
voltage to the transistor.” Id. However, the Examiner found that AAPA
(Specification Figure 1, ¶¶ 27–33) teaches this feature. Id.
AAPA Figure 1 is reproduced below.

AAPA Figure 1 “illustrates a known DC-to-DC converter” 100 that “accepts
an input voltage Vin relative to the 0 V rail.” Spec. ¶¶ 27–28. “[I]nput
voltage Vin is switched across the converter circuitry 104 by switching
circuitry 102.” Id. ¶ 29. Switching circuitry 102 “includes a Metal Oxide
Field Effect Transistor (MOSFET) TR1 which is controlled to either be in a
conducting or non-conducting state,” and “Pulse Width Modulation (PWM)
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controller U1 which is used to provide a switching signal to the primary
windings Pl [of transformer TX1] via MOSFET TR1.” Id. ¶¶ 29–30. When
transistor TR1 is conducting, input voltage Vin is applied across transformer
TX1’s primary windings P1 in converter circuitry 104, thereby storing
energy in transformer TX1 in the resulting magnetic field. Id. ¶ 29. When
transistor TR1 is non-conducting, a current is allowed to flow through
transformer TX1’s secondary windings S1, resulting in a converted DC
voltage being applied between the Output and Return terminals. Id. “The
converted voltage is then used to supply, for example, transistors in
switched-mode power supplies or power electronics devices.” Id.
The Examiner found that “AAPA teaches (Fig. 1) two terminals
selected from the first output terminals through the fourth output terminals
[that] are connected to the transistor . . . , supplying a positive voltage and a
negative voltage to the transistor.” Final 3. The Examiner determined that
one of ordinary skill in the art at the time of the invention would have
modified the circuit of Combs to connect two terminals, selected from the
first output terminals through the fourth output terminals, to the transistor in
order to supply positive and negative voltages to the transistor, as taught by
AAPA, in order to provide power to the transistor circuit. Id.
Claim 18 recites limitations similar to those in claim 17. See Appeal
Br. 17–18 (Claims Appendix). The Examiner found that Combs teaches all
of the claim 18 limitations with the exception of a connection between the
transistor and two output terminals. Final 3–5. As in the rejection of claim
17, the Examiner contends the ordinary artisan would have modified
Combs’s circuit to include this feature based on the disclosure in AAPA. Id.
at 5.
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The Appellant argues that the Examiner erred reversibly in finding
that the claim 17 and claim 18 transistors read on Combs’s switch S1.
Appeal Br. 6. The Appellant argues that Combs’s switch S1 is not connected
to any of Combs’s output terminals. Id. at 7. The Appellant contends that
AAPA’s transistor TR1 most closely corresponds to Combs’s switch S1, and
that transistor TR1 is not connected to either of the output terminals (Output,
Return). The Appellant further argues that nothing in AAPA teaches or
suggests connecting Combs’s switch S1 to any output terminals. Id. at 7.
The Examiner responds that “Combs . . . is only used to teach ‘a
power electronic device’ and a ‘power electronic device includ[ing] a
transistor’” and that AAPA is relied on for a teaching of a power electronic
device including transistors that receives an output voltage from the Output
and Return terminals, as illustrated in AAPA Figure 1. Ans. 7; see also Final
7 (“[A]s clearly shown in . . . [AAPA] Fig. 1, the two terminals at the output
are connected to a load having transistors.”).
The Appellant does not dispute that AAPA Figure 1 illustrates a
power electronics device that includes a transistor connected to Output and
Return terminals. Reply Br. 3. The Appellant argues, however, that the
Examiner has not explained why one of ordinary skill in the art would have
connected Combs’s switch S1 to the converter’s output terminals, as switch
S1 is already powered. Id. at 3–4.
The Appellant has argued persuasively that the Examiner has not
explained clearly how and why the ordinary artisan would have combined
Combs and AAPA to achieve the invention recited in claims 17 and 18. In
addition to the lack of explanation regarding the modification of Combs’s
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switch S1, discussed above, we note the following inconsistencies and lack
of clarity in the Examiner’s findings.
In the Final Office Action, the Examiner finds that the claimed power
electronics device reads on Combs’s first converter 12. Final 2; see also
Ans. 7. The Examiner also reads the claimed power electronics device on
second converter 14. See Final 3 (finding that “the power electronics device
includes a transistor (S1)”). As noted above, see supra p. 5, Combs describes
single converter power supply 20 as “provid[ing] all of the output voltages,
currents and disconnecting functions that are available from the two
converter power supply 10.” Combs 4:54–57. However, although Combs
describes Figure 2’s single converter power supply 20 essentially as
equivalent to the combination of Combs’s Figure 1’s first and second
converters 12, 14, the Examiner finds that the claimed power supply reads
on Figure 2’s single converter power supply 20 and the claimed power
electronics device reads on Combs’s Figure 1’s first and second converters
12, 14. See Final 2–3. Adding to the confusion is the Examiner’s finding that
the claimed power supply also reads on Combs’s VIN. Id. at 2. In other
words, it is unclear why the ordinary artisan would have combined two
systems (i.e., Combs’s Figure 1 and Figure 2 systems) that provide the same
outputs and functions. The Examiner has not explained clearly how the
systems would have been combined to achieve a system comprising all of
the features recited in claims 17 and 18 with the exception of a connection
between the power electronics device’s transistor and two output terminals
of the power supply.

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CONCLUSION
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
17, 18 103 Combs, AAPA 17, 18

REVERSED