Ex Parte Fouquet et al

Patent Trial and Appeal Board

Sep 19, 2014

12059979 (P.T.A.B. Sep. 19, 2014)

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
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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.
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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
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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.
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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