Ex Parte 7558083 et al

Patent Trial and Appeal BoardSep 19, 2014

95001405 (P.T.A.B. Sep. 19, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 95/001,405 07/23/2010 7558083 X43411 4311 7055 7590 09/22/2014 GREENBLUM & BERNSTEIN, P.L.C. 1950 ROLAND CLARKE PLACE RESTON, VA 20191 EXAMINER HEYMAN, JOHN S ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 09/22/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ SYNQOR, INC. Patent Owner and Appellant v. MURATA MANUFACTURING CO., LTD. Requester and Respondent ________________ Appeal 2013-008867 Inter partes Control No. 95/001,405 Patent No. 7,558,083 Technology Center 3900 ________________ Before KARL D. EASTHOM, JUSTIN T. ARBES, and GLENN J. PERRY, Administrative Patent Judges. PERRY, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING I. INTRODUCTION Third-Party Requester Murata Manufacturing Co., Ltd. (“Murata” or “Requester”) requests rehearing (“R. Rqst.”) of our decision of March 6, 2014 (“Dec.”) in which we reversed the Examiner’s rejection of claims 1, 5, Appeal 2013-008867 Inter Partes Reexamination Control No. 95/001,405 Patent No. 7,558,083 2 6, 8, 9, 11, 13-16, 18, 20-22, 26, 27, 29-33, 35, 37-40, 42, 45, 46, 49, 51, 52, 55, and 56. We have considered the arguments presented in the Rehearing Request and are not persuaded that we overlooked or misapprehended a material point. See 37 C.F.R. § 41.79(b)(1). II. ANALYSIS Short Transition Claim Limitation Requester argues that we misapprehended the short transition claim limitation (e.g., claim 1 1 ). R. Rqst. 5-14. Once again, Requester argues that the claim limitation merely requires that the transition be shorter than the total of the on-time state plus off-time state of the controlled rectifiers. We adopted the same construction made by the District Court in related litigation and we are not now persuaded to change our construction. The construction we adopted requires a transition of the primary voltage waveform that is not merely “shorter than” the on and off states of the controlled rectifiers, but shorter than that. We reviewed the evidence, including references to the “duty cycle” and “transition” of the primary winding voltage waveform, leading to our claim construction at pages 11-14 of the Decision. Requester argues that our claim construction does not explicitly exclude sine waves and therefore must be wrong because the District Court’s construction does not exclude “resonant” converters that use sine waves. R. Rqst. 6. We are not persuaded to change our technical conclusion that the voltage waveform at the primary winding is more square-like than sine-like. 1 Claim 1 is set forth in our Decision at page 11. Appeal 2013-008867 Inter Partes Reexamination Control No. 95/001,405 Patent No. 7,558,083 3 As our Decision explains, Requester’s arguments and evidence do not demonstrate persuasively how the claimed combinations at issue suggest a primary winding voltage waveform having the claimed short transitions. See e.g., Dec. 20-21. In addition, Requester does not show persuasively that a sine wave, which is a smooth continuous wave, would be considered to have short transitions as set forth in the ’083 Patent Specification and claims. See Dec. 12-14, 20-21. As described in the ’083 Patent Specification, square or pulse-like waves typically involve duty cycles and transition times. See Dec. 12 (discussing Specification). See id. The arguments now presented were considered, and we are not persuaded that we overlooked or misapprehended a material point. Steigerwald ’090 Rejections Requester argues that we misapprehended the Steigerwald ’090 rejections. R. Rqst. 15-22. The Steigerwald rejections depend upon modifying Steigerwald ’090 in two ways: 1) to use synchronous rectification and driving techniques taught by Cobos; and 2) to use switching regulators as taught by Pressman. R. Rqst. 15. Requester argues once again that we misapprehend that synchronous rectifiers do not require inductors. The issue before us is not whether synchronous rectifiers require inductors. Rather, the issue before us is whether in 1997 Steigerwald ’090 and Cobos would have fairly suggested to one of only ordinary skill the claimed combinations rejected by the Examiner. Our conclusion was that they would not have done so. Our reasoning, set forth in our Decision at pages 14-21, reviewed in detail evidence of seeming incompatibilities of these references. Steigerwald ’090 Appeal 2013-008867 Inter Partes Reexamination Control No. 95/001,405 Patent No. 7,558,083 4 prohibited use of inductors in its operative output paths. See Dec. 18-19. The Cobos circuits pointed to by the Examiner utilized inductors. We also analyzed arguments relating to whether or not efficiencies could be gained (motivation) by making the suggested combination. We also noted why the “short transition” claim limitation argued against making the Steigerwald ’090 and Cobos combination. See Dec. 20. Our task was not to re-engineer the combination of references to overcome apparent incompatibilities. Rather, our task was to ascertain what the references would have fairly suggested to one of only ordinary skill in the art in 1997. We reviewed the technical arguments and counterarguments with respect to the combination of references and concluded that in 1997, Steigerwald ’090 and Cobos would not have suggested to one of only ordinary skill to make the claimed combinations. Pressman Rejections Requester argues that we misapprehended the Pressman rejections. R. Rqst. 25-33. In particular, Requester argues that we overlooked that even though Requester argued a phantom embodiment constituted by combining Pressman Fig. 3-3 with Pressman Fig. 3-4(B), the claims also were rejected based on Pressman’s Figure 3-3 (in combination). R. Rqst 25. In Chapter 3 of Pressman, Pressman describes both one and two stage power supplies and discusses tradeoffs in various circuits. Requester correctly asserts that Pressman does not say that a PWM single stage must, or even should, be used. Requester argues modifying Pressman’s two-stage approach is to increase efficiency by using synchronous rectifiers. We Appeal 2013-008867 Inter Partes Reexamination Control No. 95/001,405 Patent No. 7,558,083 5 concluded that one of ordinary skill would not have been motivated to modify Pressman based on Kassakian. See Dec. 21-23. Pressman describes both multi-stage and single stage power supply circuits, with the single stage approach yielding the highest efficiency. Pressman discusses relative advantages and disadvantages of using a single stage power supply versus a two-stage power supply (as in the present invention) and according to Requester, finds them to be “competitive.” R. Rqst. 26. Nevertheless, Pressman suggests the “preferred approach” to be a single-stage PWM dc-dc converter. We are not persuaded that the possibilities of modification of the two-stage approach would have suggested to one of ordinary skill in 1997 to follow the approach taken in the claims at issue. Requester again argues the merits of Kassakian as providing a “simple” solution to synchronous rectification, but provides nothing new. We continue to conclude that the complexities of combining seemingly incompatible references would not have suggested the claimed approach to one of ordinary skill in 1997. JP ’446 Rejections Requester argues that because we misapprehended the “short- transition” limitation, our decision with respect to JP ’446 (combination with Steigerwald ’539) was flawed. R. Rqst. 33-37. According to Requester, if we correctly construed the “short-transition” limitation, we would have determined that Steigerwald ’539 meets the claim limitation. Requester continues to make inferences about the primary winding voltage waveform based on Figures 10d, 10e and 10f (set forth in page 34 of the Rehearing Appeal 2013-008867 Inter Partes Reexamination Control No. 95/001,405 Patent No. 7,558,083 6 Request). As we noted in our Decision at pages 25-28, the illustrated voltage waveforms are gate driving waveforms. We decline to make the same inferences from the Steigerwald ’539 drawings concerning the primary voltage waveform that Requester would have us make. Despite Requester’s mathematical argument, we are not persuaded to adopt the view that the Steigerwald ’539 primary voltage waveform meets the claim limitation in question. We continue to conclude that the preponderance of the evidence suggests that neither Steigerwald ’539 nor JP ’446 describes the required “short transitions.” Objective Evidence Requester argues that we misapprehended the objective evidence of non-obviousness and that this body of evidence should have been given little or no weight. R. Rqst. 37-43. Requester reiterates the argument previously made that we should not have found a nexus between claims that are only directed to the isolation stage and not the complete IBA architecture. No new reasoning is presented. We made clear in our Decision that the evidence suggests that the isolation stages are intended to be paired with regulator stages to form the complete IBA power supply architecture. There is insufficient evidence to counter that view. Requester’s arguments regarding the Board’s independent review of the evidence, the benefits of IBA being attributable to unclaimed features (remoteness), market share, long-felt need, and copying were fully dealt with in our Decision at pages 28-39. Requester does not persuade us that we have viewed the evidence incorrectly. Appeal 2013-008867 Inter Partes Reexamination Control No. 95/001,405 Patent No. 7,558,083 7 Dickens Declaration Requester argues that we misapprehended the availability of the Dickens Declaration. R. Rqst. 43-44. Once again Requester argues that the lack of a § 1001 statement in the original submission of the Dickens Declaration requires us to ignore it and all the evidence submitted with it despite its presence in the record from the Central Reexamination Unit. Requester relies upon M.P.E.P. § 2207, which provides guidance to the Examining Corps. It does not require the Board to ignore evidence from the related District Court litigation. Our Decision reviews the procedural objections raised by Requester and our reasoning as to why we considered the entire record. We noted the efforts by Requester to expunge evidence. For reasons stated in our Decision, we were not persuaded to ignore the Dickens Declaration and its attached evidence and we are not now persuaded to do so. As stated in our Decision, we found Patent Owner’s technical arguments to be persuasive that, based on the references of record, the claims at issue would not have been obvious in 1997 to one of only ordinary skill. The objective evidence, some of which was associated with the Dickens Declaration, reinforced our conclusion. Appeal 2013-008867 Inter Partes Reexamination Control No. 95/001,405 Patent No. 7,558,083 8 CONCLUSION For the reasons stated above, Requester has not shown that we overlooked or misapprehended a consideration warranting a material modification of our Decision. Therefore, the sought-after relief is DENIED. For PATENT OWNER: Bruce H. Stoner Greenblum & Bernstein, P.L.C. 1950 Roland Clarke Place Reston, VA 20191 For THIRD-PARTY REQUESTER MURATA MANUFACTURING COMPANY, LTD c/o KEATING & BENNETT, LLP 1800 Alexander Bell Drive, Suite 200 Reston, VA 20191