Ex Parte Ahuja et al

Patent Trial and Appeal BoardDec 3, 2012

11054546 (P.T.A.B. Dec. 3, 2012)

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. 11/054,546 02/10/2005 Rajendra Ahuja 87304.1901 9394 7590 12/03/2012 Baker & Hostetler LLP Washington Square, Suite 1100 1050 Connecticut Avenue, N.W. Washington, DC 20036 EXAMINER MAI, TIEN HUNG ART UNIT PAPER NUMBER 2836 MAIL DATE DELIVERY MODE 12/03/2012 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 RAJENDRA AHUJA, JOSEPH NGUYEN, and MOSTAFA JAFARNIA _____________ Appeal 2010-005093 Application 11/054,546 Technology Center 2800 ______________ ROBERT E. NAPPI, DAVID M. KOHUT, and JOHNNY A. KUMAR, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the final rejection of claims 1-7, 9, 11-15, 25, and 26. Claims 8, 10, and 16-24 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm the Examiner’s rejection of these claims. Appeal 2010-005093 Application 11/054,546 2 STATEMENT OF THE CASE The invention is directed to a transformer. Spec. ¶0001. Claims 1, 6, and 9 are representative of the invention and are reproduced below: 1. A three-phase transformer circuit, comprising: a supply side including three sets of windings selectably configurable between a delta connection and a wye connection; a load side including a first set of load windings and a delta-wye switch, coupled to the first set of load windings, to selectably configure the first set of load windings between a delta connection and a wye connection independently from the supply side winding configuration. 6. The three-phase transformer circuit of claim 3, wherein the supply side includes a non-linear device connected in parallel with each of the inner windings. 9. The three-phase transformer circuit of claim 1, wherein the load side includes a second set of load windings. REFERENCES Gay US 1,896,398 Feb. 7, 1933 Montague US 4,611,190 Sep. 9, 1986 Dallhammer US 4,670,829 Jun. 2, 1987 Johnson US 5,920,474 Jul. 6, 1999 REJECTIONS ON APPEAL 1 Claims 1-5, 7, 11-15, 25, and 26 are rejected as unpatentable under 35 U.S.C. 103(a) over Montague. Ans. 3-7. Claims 1-5, 7, 11-15, 25, and 26 are alternatively rejected as unpatentable under 35 U.S.C. 103(a) over the combination of Gay and Montague. Ans. 8-13. 1 Throughout this opinion we refer to Appellants’ Appeal Brief dated September 23, 2009 and the Examiner’s Answer mailed on November 30, 2009. Appeal 2010-005093 Application 11/054,546 3 Claim 6 is rejected as unpatentable under 35 U.S.C. 103(a) over the combination of Montague in view of Dallhammer. Ans. 7. Claim 6 is alternatively rejected as unpatentable under 35 U.S.C. 103(a) over the combination of Gay, Montague, and Dallhammer. Ans. 13. Claim 9 is rejected as unpatentable under 35 U.S.C. 103(a) over the combination of Montague and Johnson. Claim 9 is alternatively rejected as unpatentable under 35 U.S.C. 103(a) over the combination of Gay, Montague, and Johnson. Ans. 14. APPELLANTS’ CONTENTIONS 2 1. Appellants contend that the Examiner erred in rejecting exemplary claim 1 under 35 U.S.C. § 103(a) for numerous reasons including but not limited to: (1) because Montague (Br. 6-8, 10-13) or alternatively, the combination of Gay and Montague (Br. 15-20) fails to suggest “a load side …switch,” as recited in independent claim, (2) teaching away, and (3) use of impermissible hindsight. (Br. 6-8, and 15- 20). Appellants separately repeat these arguments for claim 11. (Br. 10-13). 2. Appellants contend that the Examiner erred in rejecting claim 3 because Montague (Br. 8-10) or alternatively, the combination of Gay 2 Separate patentability is not argued for claims 2, 4-5, 7, 12-15, 25 and 26. Except for our ultimate decision, these claims are not discussed further herein. Appeal 2010-005093 Application 11/054,546 4 and Montague fails to suggest “three sets of windings each include inner windings and outer windings,” as recited in claim 3. 3. Appellants contend that the Examiner erred in rejecting claim 6 because there is a lack of motivation to combine the cited references to practice Applicants’ claimed invention. In particular, Appellants contend that the combination of Montague and Dallhammer (Br. 13-14.), or alternatively, the combination of Gay, Montague, and Dallhammer (Br. 23-24) fails to suggest “supply side includes a non-linear device connected in parallel with each of the inner windings,” as recited in claim 6. 4. Appellants contend that the Examiner erred in rejecting claim 9 because Montague fails to teach “a transformer that needs to match a desired load requirement.” Id. at 15. In particular, Appellants contend that the Examiner erred in rejecting claim 9 because the combination of Montague and Johnson (Br. 14-15) or alternatively, the combination of Gay, Montague, and Johnson (Br. 24-25) fails to suggest “the load side includes a second set of load windings,” as recited in claim 9. ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments (Appeal Brief) that the Examiner has erred. We disagree with Appellants’ conclusions. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief. We concur with the conclusions reached by the Examiner. Appeal 2010-005093 Application 11/054,546 5 35 U.S.C. § 103(a) –Montague Claims 1 and 11 Regarding above contention 1, Appellants contend that Montague discloses a supply side switching device but does not teach or suggest a load side switch. App. Br. 6-8. The Examiner finds that Montague discloses the supply side of the multiphase transformer to be selectively configurable between delta and wye connections, and it would have been obvious to one of ordinary skill in the art at the time of the invention was made to control the load side in the same manner as the supply side to match the desired load requirement and provide the user with flexibility to set the voltage to the load side. Ans. 4. The Examiner also finds that it would “would have been obvious [to control the load side in the same manner as the supply side] because the design incentives or market forces provided a reason to make an adaptation, and . . . it is advantages to introduce switching on the load side since such switching of the load side will address needs of individual/group of customer, thereby providing particular customer with the voltage they need.” Id. Thus, the Examiner finds that the substitution is an obvious matter of design choice. We agree with the Examiner’s findings because to the extent Appellants are looking for an explicit motivation, suggestion, or teaching in the art, this rigid test has been foreclosed by the Supreme Court's holding in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007). In KSR, the Court characterized the teaching, suggestion, motivation test as a “helpful insight” but found that when it is rigidly applied, it is incompatible with the Court’s Appeal 2010-005093 Application 11/054,546 6 precedents. Id. at 418-19. Thus, we find that an explicit teaching for substituting a supply side switch with a load side switch is a design choice and not required. See also In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (use of claimed feature solves no stated problem and presents no unexpected result and “would be an obvious matter of design choice within the skill of the art” (citing Graham v. John Deere Co., 383 U.S. 1 (1966) and In re Gazda, 219 F. 2d 449 (1955))). As to Appellants’ teaching away argument, the Examiner finds that Montague’s transformer is fully capable of functioning if the supply side switch were substituted with a load side switch. Ans. 4, 16. As such, merely substituting Montague’s supply side switch with a load supply switch, is not necessarily teaching away, but rather is an alternative or equivalent method of selecting that arrives at the same result. “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Teaching an alternative or equivalent method, however, does not teach away from the use of a claimed method. See In re Dunn, 349 F.2d 433, 438 (CCPA 1965). In this case, since Montague’s supply side switch is an alternative teaching to the claimed load side switch, Appellants have not shown that Montague teaches away from the load side switch recited in claim 1. Additionally, we do not agree that the Examiner’s rejection is an improper hindsight reconstruction as it does not include knowledge gleaned only from the Appellant's disclosure, but rather takes into account the Appeal 2010-005093 Application 11/054,546 7 knowledge which was within the level of ordinary skill at the time the claimed invention was made. Any judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant's disclosure, such a reconstruction is proper. In re McLaughlin 443 F.2d 1392, 1395 (CCPA 1971). Further, we deem matching the desired load requirement and providing the user with flexibility to set the voltage to the load side to be well within the skill of an artisan. Ans. 4, 6. Contrary to Appellants’ allegation, the Examiner has not resorted to hindsight. Accordingly we sustain the Examiner’s rejection of claim 1 and claims 2, 5, 11-15, 25, and 26 are rejected as unpatentable under 35 U.S.C. 103(a) over Montague. 35 U.S.C. § 103(a) –Montague Claim 3 Regarding above contention 2, we disagree with Appellants’ argument that the Examiner erred because the Examiner correctly points out that this limitation is shown in Figures 2 and 3. (Ans. 5, 16-17). As explained by the Examiner (Id.), the three sets of windings in Montague include inner windings (coils 31-36 that are divided into two portions by center taps 43, 46, 49, 53, 56, 59), and outer windings (coils 31 and 32; coils 33 and 34; coils 35 and 36), wherein the outer windings have respective first portions (31, 33, and 35) and second portions (32, 34, and 36), that are configurable between a series connection and a parallel connection. In other words, the Appeal 2010-005093 Application 11/054,546 8 Examiner found that “[W]hile each of the half windings, such as, for example 31 and 32 is considered as inner winding of the auto transformer while both half windings together represent outer windings of auto transformer.” (Id.). We agree with the Examiner because the coils in Montague correspond to the three sets of windings each including inner windings and outer windings. Accordingly, we sustain the Examiner’s rejection of claim 3 and claims 4, and 7 under 35 U.S.C. 103(a) over Montague. 35 U.S.C. § 103(a) –Montague and Dallhammer Claim 6 Regarding above contention 3, we are not persuaded by Appellants’ contention that Montague is not combinable with Dallhammer (Br. 8-10). The Examiner equates Dallhammer’s thyristor T2 (Figure 1) to be the “non- linear device,” as recited in claim 6. Ans. 7, 17-18. Appellants’ citation to Montague sections that explain the three phase voltage transformation device, and to Dallhammer sections about how unwanted pulses or transients are eliminated with a thyristor, amounts to challenging the references individually which is not convincing of error in the Examiner's position. That is, all of the features of the structure in the secondary reference need not be bodily incorporated into the primary reference, but consideration should be given to what the combined teachings, knowledge of one of ordinary skill in the art, and the nature of the problem to be solved as a whole would have suggested to those of ordinary skill in the art (see In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Appeal 2010-005093 Application 11/054,546 9 In that regard, the Supreme Court has indicated that: [It is error to] assum[e] that a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem. . . . Common sense teaches . . . that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) (citation omitted). Furthermore, the artisan is not compelled to blindly follow the teaching of one prior art reference over the other without the exercise of independent judgment (see Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984)). As such, we find that Montague would be adjusted to accommodate teachings from Dallhammer by one of ordinary skill in the art. In particular, we find that when Dallhammer explains (as correctly cited by the Examiner) that the benefit of connecting a thyristor in parallel to primary winding (W1) so that the asymmetry of the excitation of the high voltage transformer in the course of the transmission of a pulse is eliminated (Id., citing Dallhammer, col. 4, lines 25-43), one of ordinary skill would incorporate this concept into Montague without incorporating every feature of the Dallhammer structure into Montague. We find that Montague would be adjusted with the non-linear device teaching from Dallhammer because the combination as a whole would have taught one of ordinary skill in the art to make any additional modifications or adjustments to Montague that may be needed to reduce unwanted transients. Accordingly, we sustain the Examiner’s rejection of claim 6 under 35 U.S.C. 103(a) over Montague in view of Dallhammer. Appeal 2010-005093 Application 11/054,546 10 35 U.S.C. § 103(a) –Montague and Johnson Claim 9 We disagree with Appellants’ above contention 4. Appellants’ arguments about Montague are not commensurate with the scope of the claim language. Claim 9 does not recite “a transformer that needs to match a desired load requirement.” We also agree with the Examiner’s finding that Johnson discloses “a load side [that] includes a second set of load winding[s] (46, 48, 50).” Ans. 8. The Examiner found that it would have been obvious to one of ordinary skill in the art at the time of the invention was made to further modify the circuit of Montague and add a second set of load winding, as taught by Johnson, in order to match the desired load requirement, thereby obtaining a higher voltage different necessary for particular needs of customer. Id. We find that the Examiner’s proposed combination is reasonable with some rational underpinning and we are not persuaded that the teachings of Montague and Johnson are limited to Appellants’ proposed characterization. Accordingly, we sustain the Examiner’s rejection of claim 9 under 35 U.S.C. 103(a) over Montague in view of Johnson. 35 U.S.C. § 103(a) – Gay and Montague As noted above, we sustain the Examiner’s rejections under 35 U.S.C. § 103(a) as being unpatentable over Montague alone or in combination Dallhammer or Johnson. Therefore, Appellants’ arguments (App. Br. 15 through 25) with respect to the Examiner’s alternative rejections under 35 U.S.C. § 103(a) as being unpatentable over the combination of Gay and Montague are moot. Appeal 2010-005093 Application 11/054,546 11 CONCLUSIONS The Examiner did not err in finding that claims 1-7, 9, 11-15, 25, and 26 are unpatentable over the various combinations of Gay, Montague, Dallhammer, and Johnson. SUMMARY The Examiner’s decision to reject claims 1-7, 9, 11-15, 25, and 26 is affirmed. 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 ELD