Ex Parte Greither

Patent Trial and Appeal Board

Dec 8, 2016

13448744 (P.T.A.B. Dec. 8, 2016)

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.
13/448,744 04/17/2012 Markus Greither PA17629US;67036-453PUS1 8391
26096 7590 12/12/2016
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
COMBER, KEVIN J
ART UNIT PAPER NUMBER
2836
NOTIFICATION DATE DELIVERY MODE
12/12/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARKUS GREITHER
Appeal 2015-004807
Application 13/448,744
Technology Center 2800
Before JEFFREY T. SMITH, N. WHITNEY WILSON, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a rejection2 of
claims 1—6, 8—13, and 15. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as United Technologies Corp.
(Appeal Brief, filed November 13, 2014 (“App. Br.”), 1.)
2 Final Office Action mailed July 28, 2014 (“Final Office Action,” cited as
“Final Act.”).
Appeal 2015-004807
Application 13/448,744
CLAIMED SUBJECT MATTER
The claims are directed to an active clamped transistor circuit which
“includes a transistor and a transient voltage suppression (TVS) diode
connected across a gate and a drain of said transistor.” (Spec. 1 6.)3 The
active clamped transistor circuit may be used to prevent excessive drain to
source voltages. {Id. 14.) Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. An active clamped transistor circuit comprising:
a transistor; and
a bi-directional transient voltage suppression (TVS) diode
connected across a gate and a drain of said transistor; and
a Zener diode connecting said bi-directional TVS diode to
said drain of said transistor.
(Claims Appendix, App. Br. 8.)
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hshieh US 2008/0258224 A1 Oct. 23, 2008
Baba et al., STATCOM Applying Flat-Packaged IGBTs Connected in Series
1125-1132, IEEE (2005).
Zhou et al., A Practical Series Connection Technique for Multiple IGBT
Devices 2151-2155, IEEE (2001).
3 Application 13/448,744, Active Clamped Transistor Circuit, filed April 17,
2012. We refer to the “’744 Specification,” which we cite as “Spec.”
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Appeal 2015-004807
Application 13/448,744
REJECTION
Claims 1—6, 8—13, and 15 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Baba, and further in view of Hshieh and Zhou.
(Final Act. 6.)
OPINION
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the Examiner’s prior art rejection of representative
claim 1 under 35 U.S.C. § 103(a) for the reasons presented by the Examiner
and add the following for emphasis.
Appellant argues4 that Baba does not teach a circuit having TVS
diodes as recited in claim 1 because the circuit illustrated in Baba is a
theoretical circuit and not an actual circuit. (App. Br. 4.) Appellant argues
that because the actual circuit does not utilize TVS diodes, the Examiner
erred in finding that TVS diodes are included in the theoretical circuit. (Id.)
Appellant, however, does not refute the Examiner’s finding that
Baba’s circuit cited by the Examiner includes a transient voltage suppression
diode between the gate and the collector of an insulated-gate bipolar
transistor. (Compare Ans. 2 (citing Baba Fig. 8) with Reply 2—3.)5
Appellant does not dispute that the theoretical equivalent of an actual circuit
illustrated in Baba uses a transient voltage suppression diode to protect a
4 Appellant does not present separate arguments for the remaining claims
including independent claims 8 and 15. (App. Br. 3.) The remaining claims
therefore stand or fall with claim 1.
5 Examiner’s Answer mailed February 12, 2015 (“Ans.”). Reply Brief filed
March 24, 2015 (“Reply”).
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Appeal 2015-004807
Application 13/448,744
transistor from overvoltage. {Compare Ans. 2 with Reply 2—3.) Appellant
also does not dispute that Baba discloses a circuit having a silicon surge
voltage suppressor which is a TVS diode. (Compare Ans. 2 (citing Baba 3—
4, Figs. 7 & 8) with Reply 2—3.)
To prevail in an appeal to this Board, Appellant must adequately
explain or identify reversible error in the Examiner’s § 103(a) rejections. See
37 C.F.R. § 41.37(c)(1) (iv) (2012); see also In re Jung, 637 F.3d 1356,
1365 (Fed. Cir. 2011). In this case, Appellant does not refute the
Examiner’s finding with regard to the teaching of Baba. Appellant does not
explain why a skilled artisan would have ignored Baba’s teaching of a
circuit having TVS diodes. Appellant’s arguments therefore do not persuade
us of reversible error in this aspect of the rejection.
Appellant next argues that the active clamped transistor circuit as
recited in claim 1 operates reliably under low temperatures and thus achieves
unexpected results. (App. Br. 4.) We are not persuaded. Claim 1, as it is
currently written, does not recite any particular operating parameter of the
recited circuit and Appellant’s argument cannot show patentability as a
result. See In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998)
(unclaimed features cannot impart patentability to claims).
Appellant also argues that a skilled artisan would not have combined
Hshieh and Baba because the circuit in Hshieh has two reverse facing Zener
diodes but not TVS diodes. (App. Br. 4, 6.) Appellant argues that a skilled
artisan would not have combined the references also because Zener diodes
and TVS diodes are similar in terms of switching speed and temperature
behavior and both are less expensive than the recited bi-directional TVS
diode. (Id. at 4—5.)
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Application 13/448,744
The Examiner responds by explaining that because Zener diodes and
TVS diodes are indeed similar, a skilled artisan would have used either to
mitigate transient voltages. (Ans. 3.) The Examiner explains that the two
reverse facing Zener diodes disclosed in Hsheih perform as a bi-directional
Zener diode and a skilled artisan would have known how to modify the
circuit in Baba based on Hshieh’s teaching to better handle operating
conditions including higher frequencies and lower voltages. {Id. at 5—6;
Final Act. 7.) The Examiner explains that the diodes in Hshieh and Baba
operate similarly during an overvoltage event. (Ans. 7.)
Based on the current evidence of record, Appellant’s arguments do
not persuade us of reversible error in the Examiner’s rejection. “The
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). “[I]f 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.
In this case, Appellant does not refute the Examiner’s finding that
both Zener diodes and TVS diodes may be used to mitigate transient
voltages and that a skilled artisan would have known how to implement
either in an active clamped transistor circuit. {Compare Ans. 3 with Reply
2—3.) Nor does Appellant refute the Examiner’s finding that the two reverse
facing Zener diodes disclosed in Hshieh perform as a bi-directional Zener
diode. {Compare Ans. 5—6 with Reply 2—3.) Appellant does not refute the
Examiner’s finding that the diodes in Hshieh and Baba operate similarly.
{Compare Ans. 7 with Reply 2—3.) Appellant also does not identify
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Application 13/448,744
reversible error in the Examiner’s analysis that claim 1 is no more than an
arrangement of known elements according to their respective known
functions. (Compare Ans. 3 with Reply 2—3.)
Upon careful review of the record before us, Appellant’s arguments
have not adequately shown that a person of ordinary skill in the art, using no
more than ordinary creativity, would not have recognized the suitability of
utilizing known bi-directional TVS diode in an active clamped transistor
circuit. KSR, 550 U.S. at 418 (holding that in making an obviousness
determination one “can take account of the inferences and creative steps that
a person of ordinary skill in the art would employ”).
With regard to the argument that the Examiner’s Answer fails to
designate a new ground of rejection based on a reference known as Blakes
(Reply 1), we first note that the Appellant has not shown that claim 1 is
patentably distinguished over Baba, Hshieh, and Zhou as we analyzed
supra.6 In any case, Appellant should have filed a petition under 37 CFR §
1.181(a) within two months from the mailing of the examiner’s answer
requesting that the rejection set forth in the answer be designated as a new
ground of rejection. MPEP § 1207.03.
Our review of the record of the application underlying the present
appeal reveals that Appellant did not file a petition under 37 C.F.R. §
1.181(a) within two months from the mailing of the Examiner’s Answer
requesting that a ground of rejection set forth in the Answer be designated as
a new ground of rejection. Thus, in accordance with MPEP § 1207.03,
6 Because Appellant has not identified reversible error in the obviousness
rejection based on Baba, Hshieh, and Zhou, we decline to address other
references cited by the Examiner. (See Ans. 3; see also Reply 1—3.)
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Appeal 2015-004807
Application 13/448,744
because Appellant did not timely raise the issue of the undesignated ground
of rejection in the Answer by filing a petition under 37 C.F.R. § 1.181 (a),
Appellant has waived any argument that the Examiner's Answer contains an
improper undesignated new ground of rejection.
Appellant next argues that Zhou does not disclose Zener diodes.
(App. Br. 5.) Appellant also argue that a skilled artisan would not have
combined Zhou with Baba and/or Hshieh because the insulated-gate bipolar
transistors (IGBTs) taught in Baba and Zhou are not interchangeable with
the field-effect-transistor (FETs) taught in Hshieh. (App. Br. 5.)
Appellant, however, does not persuasively refute the Examiner’s
explanation that the ’744 Specification and the prior art references are
directed to the same problem of protecting a transistor from transient
voltages that would cause damage to the transistor. (Compare Ans. 6 with
Reply 2—3.) Appellant does not refute the Examiner’s finding that both
IGBTs and FETs are transistors which can be used as power switches and
that a skilled artisan would have known how to protect different types of
circuits (FET or IGBT) in the same power switch application using prior art
components and the prior art circuitries. (Compare Ans. 6, 7—8 with Reply
2—3.) Appellant has not established reversible error in this aspect of the
obviousness analysis.
DECISION
The Examiner’s rejection of claims 1—6, 8—13, and 15 is affirmed.
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Appeal 2015-004807
Application 13/448,744
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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