Ex Parte 7,613,021 et al

Patent Trial and Appeal Board

Jul 14, 2014

90020034 (P.T.A.B. Jul. 14, 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.
90/020,034 09/14/2012 7,613,021 2086
112006 7590 07/15/2014
Graham Curtin, P.A.
4 Headquarters Plaza
Morristown, NJ 07962
EXAMINER
TIBBITS, PIA FLORENCE
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
07/15/2014 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
____________

Ex parte COMARCO WIRELESS TECHNOLOGIES, INC1
Patent Owner, Appellant
____________

Appeal 2014-006227
Reexamination Control 90/020,034
Patent US 7,613,0212
Technology Center 3900
____________

Before JOSEPH F. RUGGIERO, JEAN R. HOMERE, and
DANIEL N. FISHMAN, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Comarco Wireless Technologies, Inc is the real party in interest. App. Br.
3.
2 Issued November 3, 2009 to Lanni (hereinafter the “Lanni Patent”).
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STATEMENT OF THE CASE
The Patent Owner (hereinafter “Appellant”) appeals under 35 U.S.C.
§§ 134(b) and 306 from the Examiner’s final rejection of claims 28 and 29.
Claims 1-27 have been canceled. App. Br. 3. We have jurisdiction under 35
U.S.C. §§ 134(b) and 306.
We affirm.

Appellant’s Invention
Appellant invented a small form factor power supply including a
transformer with a low profile core, a printed circuit board, and a rectifier
circuit confined within a housing having an area of less than approximately
fourteen square inches and a volume of about 6.1 cubic inches or less while
providing at least 75 watts of DC power. See generally the ‘Lanni Patent’,
Abstract.

Claim 28 is representative of the claimed invention, and reads as
follows:

28. A small form factor power supply comprising:
a switching transformer having a low profile core and primary
and secondary coils;
a printed circuit board adapted to have circuit components
mounted thereon, wherein the printed circuit board defines certain
wiring patterns that are coupled to the primary and secondary coils of
the switching transformer that are magnetically coupled to the low
profile core;
a rectifier circuit that is coupled to the secondary coil to provide
a DC power source capable of delivering at least seventy five watts;
and
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a housing enclosing the switching transformer, the printed
circuit board, the rectifier circuit, and the circuit components, wherein
the product of the length and width of the housing is less than
approximately fourteen square inches.

Prior Art Relied Upon

The Examiner’s Answer cites the following prior art references:
Zeitlin US 5,027,255 June 25, 1991
Hitachi JP 4-364365 June 11, 1991
Nippon JP 5-304764 Feb. 25, 1992

Rejection

The Examiner rejects claims 28 and 29 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of JP’764, JP’365 and
Zeitlin.

ANALYSIS
We consider Appellant’s arguments seriatim, as they are presented in
the Appeal Brief, pages 7-22, and Reply Br. 4-8.3

Dispositive Issue: Under 35 U.S.C. § 103, did the Examiner err in
finding JP’365, JP’764, and Zeitlin are properly combined to teach or

3 Rather than reiterate the arguments of Appellant and the Examiner, we
refer to the Appeal Brief (filed Jan. 27, 2014), the Reply Brief (filed Apr. 3,
2014), and the Answer (mailed Feb. 06, 2014) for the respective details. We
have considered in this Decision only those arguments Appellant actually
raised in the Briefs. Any other arguments Appellant could have made but
chose not to make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2013).
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suggest a small form factor power supply confined within a housing of less
than 14 in2 capable of delivering at least 75 watts, as recited in claim 28?

Based upon our review of the record before us, we do not find error
in the Examiner’s obviousness rejection of claim 28. We therefore adopt as
our own the findings and reasons set forth by the Examiner in the action
from which this appeal is taken and as set forth by the Examiner in the
Examiner’s Answer in response to Appellant’s Appeal Brief (see Ans. 15-
28). However, we highlight and address specific arguments and findings for
emphasis as follows.
Appellant argues the proffered combination of references does not
teach or suggest the disputed limitations emphasized above. App. Br. 6-22,
Reply Br. 5-8. First, Appellant argues because JP’365 and Zeitlin discuss
heat dissipation as a difficult endeavor in a reduced size power supply, the
cited references fail to account for the inherent properties of the heat
dissipation problem in a reduced size power supply. App. Br. 7-8, Reply Br.
4-6. This argument is not persuasive. We agree with the Examiner that
because the claim does not recite heat dissipation, such argument is not
commensurate with the scope of the claim. Ans. 15-16. We further agree
with the Examiner that even if overcoming the problem of heat dissipation in
a reduced size power supply were recited in the claim, JP’365’s disclosure of
reducing the volume necessary for heat dissipation in a downsized power
supply [0009] would teach the disputed limitations. Ans. 16. We note while
Appellant has alluded to paragraph [0009] of JP’365 relied upon by the
Examiner for teaching overcoming the heat dissipation problem in a reduced
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size power supply, Appellant has not presented any argument rebutting the
Examiner’s finding. Thus, while the claim may inherently invoke the
properties of heat dissipation due to the amount of power delivered by the
power supply in such a confined area (Reply Br. 4-6), because Appellant has
failed to rebut this specific finding relied upon by the Examiner, Appellant
has not shown that the cited disclosure of JP’365 does not teach or suggest
the alleged heat dissipation limitation. For these same reasons, we find
unavailing Appellant’s argument that the Examiner failed to consider
Appellant’s declaration. Id. at 6-7, App. Br. 18-22.
Second, Appellant argues although JP’365 provides a power supply
capable of delivering up to 100 watts, JP’365 does not teach a housing
having an area of at least 14in2. Thus, while JP’365 discloses dimensions
for a DC-DC converter within the power supply, the stated dimensions do
not constitute a stand-alone housing for the power supply. Rather, the
dimensions are provided for a section of the power supply. App. Br. 9-10.
Further, Appellant argues even though JP’764 discloses a reduced size
power supply having a housing of 7.156 in2, because the disclosed housing
can only support a maximum of 20 watts, which is far below the 75 watt
required by the claim, JP’764 does not cure the noted deficiencies of JP’365.
App. Br. 10-12. Similarly, Appellant argues although Zeitlin discloses a
power supply capable of delivering up to 300 watts, because it has a housing
of 37 in2 that far exceeds the required housing area of 14in2 recited in the
claim, it does not cure the noted deficiencies of JP’365. Id. These
arguments are not persuasive. In considering the general form of
Appellant’s arguments in the principal Brief, Appellant initially attacks the
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individual teachings of JP’365, JP’764, and Zeitlin separately, as opposed to
the combined disclosures proffered by the Examiner. We note that one
cannot show non-obviousness by attacking the references individually where
the rejections are based on combinations of references. In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, the respective references relied
on by the Examiner must be read, not in isolation, but for what the
combination teaches or suggests when considered as a whole. As
recognized by Appellant, JP’365 discloses a power supply of an unspecified
size capable of delivering up to 100 watts, JP’764 discloses a power supply
contained within a housing of 7.16 in2 capable of delivering up to 20 watts,
and Zeitlin discloses a power supply contained in a housing of 37.63 in2
capable of delivering up to 300 watts. App. Br. 12. We agree with the
Examiner the cited disclosure of JP’365, when taken in combination with the
teachings of JP’764 and Zeitlin would have predictably resulted in a reduced
size power supply contained in a housing of 14in2 or less that delivers at
least 75 watts. Ans. 20. According to the Examiner, the reduced size
housing of JP’764 and Zeitlin would provide an enclosure to protect the
power supply of JP’365 from environmental conditions, and to protect the
IC from damage. Id. We find that because JP’365 recognizes the need for
reducing heat dissipation in a downsized power supply as provided in
JP’764, the ordinarily skilled artisan would have appreciated the reduced
sized power supply taught by JP’764 would complement the teachings of
JP’365 to thereby produce a downsized power supply capable of delivering
at least 75 watts. Additionally, because the claimed housing area range and
power range overlap with the broader ranges of values taught by Zeitlin, we
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find the cumulative weight and the totality of the evidence on this record
favor the Examiner’s position that the combined disclosures of JP’365,
JP’764, and Zeitlin would have taught or suggested the disputed limitations.4
Thus, while we agree with Appellant that the references do not teach or
suggest individually the claimed power range and housing area range, we
find the proffered combination of the cited references does.
Third, Appellant argues JP’365, JP’764, and Zeitlin are not
combined properly to teach the disputed limitations set forth above. In
particular, Appellant argues the Examiner’s rationale is at best conclusory
because the Examiner has not provided an explanation of how to modify the
references to overcome the heat dissipation problem. App. Br. 13.
Appellant is reminded the U.S. Supreme Court has held “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR Int'l Co.
v. Teleflex, Inc., 550 U.S. 398, 416 (2007). The Court further instructs that:
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; . . . and the background knowledge
possessed by a person having ordinary skill in the art, all in order to

4 It has been held that “[D]iscovery of an optimum value of a result effective
variable in a known process is ordinarily within the skill of the art.” Pfizer,
Inc. v. Apotex, Inc., 480 F.3d 1348, 1368 (Fed. Cir. 2007) (quoting Boesch,
617 F.2d 272, 276 (CCPA 1980)). “[I]t is not inventive to discover the
optimum or workable ranges by routine experimentation.” Pfizer, 480 F.3d
at 1368 (quoting In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) and In
re Aller, 220 F.2d 454, 456 (CCPA 1955)). See also In re Luck, 476 F.2d
650, 653-54 (CCPA 1973) (holding that the use of routine testing to identify
optimum amounts of silane to be employed in a lamp coating, without
establishing a critical upper limit or demonstrating any unexpected result,
lies within the ambit of the ordinary skill in the art).
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determine whether there was an apparent reason to combine the
known elements in the fashion claimed by the patent at issue.

Id. at 418.
The Court also instructs that:
“[R]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal
conclusion of obviousness”. . . [H]owever, the analysis need not seek
out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.

Id. (citation omitted).
Additionally, the Court instructs that “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. at 417.
This precedent is controlling here, and the application of the cited
legal principles to the facts of this appeal provides us with the necessary
guidance in affirming this obviousness rejection. First, we agree with the
Examiner that, at the time of invention, incorporating a reduced size housing
as prescribed by Zeitlin as a protective cover for the power supply of JP’365
would have been an obvious endeavor within the purview of the ordinarily
skilled artisan as it would have yielded a miniaturized power supply as
taught by JP’764. Ans. 18-19. Such a modification would allow the
resulting miniaturized power supply to effectively deliver at least 75 watts
without overheating. Thus, while Appellant correctly argues the Examiner’s
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findings must be supported by substantial evidence, Appellant is also
reminded that such evidence should be viewed consistent with controlling
authorities.
Thus, to the extent Appellant’s arguments challenge the Examiner’s
rationale to combine the references, we find the ordinarily skilled artisan,
being a creative individual, would have been able to fit the cited teachings of
JP’365, JP’764, and Zeitlin together like pieces of a puzzle to predictably
result in the disputed limitations.5 In particular, we agree with the Examiner
that the proffered combination would predictably result in a reduced size
power supply confined with a housing of less than 14in2 capable of
delivering at least 75 watts without overheating. Id. While it may be
necessary for an Examiner to identify a reason for modifying the familiar
elements obtained from the prior art in establishing a prima facie case of
obviousness, the identification of such a reason is not a sine qua non
requirement. So long as the Examiner provides an articulated reasoning
with some rational underpinning to substantiate the obviousness rejection,
such a conclusion is proper. In this case, the afore-cited rationale provided
by the Examiner is more than just a mere conclusory statement. In our view,
such a statement suffices as an articulated reason with a rational
underpinning to support the proffered combination. As noted above, the
case law allows the Examiner to look to the state of the prior art, including

5 “It is common sense that familiar items may have obvious uses beyond
their primary purposes, and a person of ordinary skill often will be able to fit
the teachings of multiple patents together like pieces of a puzzle.” KSR, 550
U.S. at 402. Courts should “take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at
418.
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the knowledge of the ordinarily skilled artisan, to arrive at such a reason for
combining the known elements of the prior art. Consequently, the
Examiner’s reliance upon widely available knowledge in order to arrive at
an articulated reason with a rational underpinning to support the proffered
combination is proper.
It follows Appellant has not shown error in the Examiner’s rejection
of claim 28.
Regarding the rejection of claim 29, because Appellant has reiterated
substantially the same arguments as those previously discussed for
patentability of claim 28 above, claim 29 falls therewith. See 37 C.F.R. §
41.37(c)(1)(iv) (2013).

CONCLUSION OF LAW
Based on the analysis above, we conclude that the Examiner did not
err in rejecting claims 28 and 29 as being unpatentable under 35 U.S.C.
§ 103(a).

DECISION
We affirm the Examiner’s decision rejecting claims 28 and 29 under
35 U.S.C. § 103(a).

TIME PERIOD FOR RESPONSE
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

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AFFIRMED

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