Ex Parte Fouquet et alDownload PDFPatent Trial and Appeal BoardSep 19, 201412059979 (P.T.A.B. Sep. 19, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JULIE E. FOUQUET, GARY R. TROTT, RICHARD BAUMGARTNER, and GEK-YONG NG ____________ Appeal 2012-004623 Application 12/059,979 Technology Center 2800 ____________ Before PETER F. KRATZ, BEVERLY A. FRANKLIN, and MARK NAGUMO, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1–7, 12–21, and 26–30. We have jurisdiction under 35 U.S.C. § 6. STATEMENT OF THE CASE Claim 1 is representative of the subject matter on appeal and is set forth below (with text in bold for emphasis): 1. A coil transducer, comprising: a generally planar electrically insulating substrate comprising opposing upper and lower surfaces, the substrate comprising an electrically insulating, non-metallic, non-semiconductor low dielectric Appeal 2012-004623 Application 12/059,979 2 loss material having a dielectric loss tangent at room temperature that is less than or equal to 0.05; a first electrical conductor forming a first coil, the first coil being disposed upon, in or near the upper surface, and a second electrical conductor forming a second coil, the second coil being disposed upon, in or near the lower surface; wherein the first coil is separated from the second coil by at least portions of the substrate, no electrical conductors, vias or terminals are located in portions of the substrate disposed between the first coil and the second coil, the first and second coils are spatially arranged and configured respecting one another such that at least one of power and data signals may be transmitted by the first coil to the second coil across a dielectric barrier comprising the non-semiconductor low dielectric loss material disposed therebetween, the dielectric barrier exceeds about 1 mil in thickness, and a breakdown voltage between the first coil and the second coil exceeds 2,000 volts RMS. The prior art relied upon by the Examiner in rejecting the claims on appeal is: Bando et al. US 5,363,081 Nov. 8, 1994 (hereafter “Bando”) Zsamboky et al. US 5,716,713 Feb. 10, 1998 (hereafter “Zsamboky”) Kahlmann et al. US 2004/0056749 A1 Mar. 25, 2004 (hereafter “Kahlmann”) Takaya et al. US 2005/0003199 A1 Jan. 6, 2005 (hereafter “Takaya”) Hui et al. US 6,888,438 B2 May 3, 2005 (hereafter “Hui”) Whittaker et al. US 2006/0152322 A1 July 13, 2006 (hereafter “Whittaker”) THE REJECTIONS 1. Claims 1–7, 13–15, and 29 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Kahlmann view of Bando, Takaya, and Zsamboky. Appeal 2012-004623 Application 12/059,979 3 2. Claim 6 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Kahlmann in view of Bando et al., Takaya, and Zsamboky, as applied to claim 1 above, and further in view of Whittaker. 3. Claim 12 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Kahlmann, in view of Bando, Takaya, Zsamboky, as applied to claim 1 above, and further in view of Hui. 4. Claims 16–21, 27–28, and 30 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Kahlmann in view of Bando and Zsamboky. 5. Claim 20 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Kahlmann in view of Bando and Zsamboky, as applied to claim 16 above, and further in view of Whittaker. 6. Claim 26 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Kahlmann in view of Bando and Zsamboky, as applied to claim 16 above, and further in view of Hui. ANALYSIS We REVERSE the Examiner’s determinations, for substantially the reasons provided by Appellants in their Brief and Reply Brief. We add the following for emphasis. With regard to the claim limitation of “no electrical conductors, vias or terminals are located in portions of the substrate disposed between the first coil and the second coil”, the Examiner admits that Kahlmann does not teach this claim feature, but relies upon Bando for so doing, and concludes that it would have been obvious “to have no electrical conductors, vias or Appeal 2012-004623 Application 12/059,979 4 terminals are located in portions of the substrate as taught by Bando et al. disposed between the first coil and the second coil as disclosed by the Kahlmann et al. to provide a compact design for facilitating insulation and operating characteristics (Col. 1, Lines 41-47).” Ans. 6–7. Appellants argue, inter alia, that the modification of Kahlmann according to the teachings of Bando as proposed by the Examiner would be detrimental to the transformer of Kahlmann for the reasons provided on pages 35–37 of the Brief. Appellants reiterate this position on pages 12–16 of the Reply Brief. In other words, it is Appellants’ position that the proposed modification of Kahlmann would change the principle of operation of Kahlmann for the reasons provided by Appellants in the record. Notably, the Examiner does not address this point made in the response to argument section of the Answer, as correctly pointed out by Appellants on page 12 of the Reply Brief.1 Hence, the Examiner has not addressed the substance of Appellants’ argument as presented by Appellants in their Brief, contrary to MPEP § 2677 I.(L). In addition to this noted error, we add that Appellants’ position is compelling regarding the failings of the proposed modification for the reasons stated in the Brief and Reply Brief, as noted supra, and point out that if the proposed modification or combination of the prior art would change the principle of operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious. In re Ratti, 270 F.2d 810, 813 (CCPA 1959). 1 Therein, Appellants correctly explain that the issue raised by them is whether the proposed combination is insufficient based upon a change in the principle of operation of Kalhmann rather than based upon whether or not the applied art is analogous art. Appeal 2012-004623 Application 12/059,979 5 In view of the above, we reverse Rejection 1. We also reverse Rejections 2–6 because the other applied references do not cure the stated deficiencies of the combination of Kahlmann view of Bando. CONCLUSIONS OF LAW AND DECISION Each rejection is reversed. REVERSED cdc Copy with citationCopy as parenthetical citation