Ex Parte Lubomirsky

Patent Trials and Appeals Board

Mar 26, 2019

14033781 - (D) (P.T.A.B. Mar. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/033,781 09/23/2013
115801 7590
Banner & Witcoff, LTD
1100 13th Street NW
Suite 1200
Washington, DC 20005
03/28/2019
FIRST NAMED INVENTOR
Vadim Lubomirsky
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
007841.00172 1057
EXAMINER
TRAN, NGUYEN
ART UNIT PAPER NUMBER
2838
NOTIFICATION DATE DELIVERY MODE
03/28/2019 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):
PT0-115801@bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte V ADIM LUBOMIRSKY
Appeal2018-004510
Application 14/033,781
Technology Center 2800
Before MARK NAGUMO, A VEL YN M. ROSS, and BRIAND. RANGE,
Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 2, 4--7, 9, 11, 12, 14--17, 19, 20, and 23-27. We
have jurisdiction. 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellant is the Applicant, Solaredge Technololgies Ltd., which, according
to the Appeal Brief, is also the real party in interest. Appeal Br. 2.
Appeal2018-004510
Application 14/033,781
STATEMENT OF THE CASE2
Appellant describes the invention as relating to "a photovoltaic power
harvesting system and, more particularly to a direct current link circuit
connected between a photovoltaic array and a 3-phase inverter circuit."
Spec. ,r 2. Claims 1 and 11, reproduced below, are illustrative of the claimed
subject matter:
1. A method comprising:
connecting, through a resonant circuit, a direct current power
source alternatively across:
a positive output terminal of a dual direct current output and a
neutral terminal during a first portion of a switching cycle, wherein
the first portion of the switching cycle comprises a first switched-on-
period that corresponds to one half of a resonant period of the
resonant circuit; and
a negative output terminal of the dual direct current output and
the neutral terminal during a second portion of the switching cycle,
wherein the second portion of the switching cycle comprises a second
switched-on-period that corresponds to another half of the resonant
period associated with the resonant circuit.
11. An apparatus comprising:
input terminals including a positive input terminal and a
negative input terminal;
output terminals including a positive output terminal and
a negative output terminal;
a resonant circuit; and
switches adapted to connect, through the resonant circuit,
the input terminals alternatively the positive output terminal and
a neutral node during a first portion of a switching cycle, wherein
the first portion of the switching cycle comprises a first switched-
2 In this Decision, we refer to the Final Office Action dated October 11,
2016 ("Final Act."), the Appeal Brief filed July 13, 2017 ("Appeal Br."), the
Examiner's Answer dated January 26, 2018 ("Ans."), and the Reply Brief
filed March 26, 2018 ("Reply Br.").
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Application 14/033,781
on-period that corresponds to one half of a resonant period
associated with the resonant circuit; and
the negative output terminal and the neutral node during a
second portion of the switching cycle, wherein the second
portion of the switching cycle comprises a second switched-on-
period that corresponds to another half of the resonant period
associated with the resonant circuit.
Appeal Br. 11-12 (Claims App.).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Carver
("Carver")
Chang
("Chang")
Schoenlinner et al.
("Schoenlinner")
US 6,002,603 Dec. 14, 1999
US 2002/0047693 Al Apr. 25, 2002
US 2011/0080147 Al Apr. 7, 2011
REJECTIONS
The following rejections are before us on appeal:
Rejection 1. Claims 11, 12, 14--17, 19, 20 and 23-27 on the ground of
nonstatutory double patenting as being unpatentable over claims 1-22 of
U.S. Patent No. 8,570,005. Final Act. 2-3. 3
Rejection 2. Claims 1, 2, 4--7, 11, 12, 14--17, and 23-26 under 35
U.S.C. § 102(b) as being anticipated by Chang. Id. at 4.
3 The Examiner's rejection refers to claims 11-20 and 23-27 (Final Act. 2-
3), but claims 13 and 18 are not before us on appeal.
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Application 14/033,781
Rejection 3. Claim 19 under 35 U.S.C. § 103 as unpatentable over
Chang in view of Carver. Id. at 7.
Rejection 4. Claim 20 under 35 U.S.C. § 103 as unpatentable over
Chang in view of Schoenlinner. Id. at 8.
Rejection 5. Claim 9 under 35 U.S.C. § 103 as unpatentable over
Chang in view of Carver and Schoenlinner. Id.
Rejection 6. Claim 27 under 35 U.S.C. § 103 as unpatentable over
Chang in view of Carver. Id. at 9.
ANALYSIS
Rejection 1. The Examiner rejects claims 11, 12, 14--17, 19, 20, and
23-27 on the ground of nonstatutory double patenting as being unpatentable
over claims 1-22 of U.S. Patent No. 8,570,005. Final Act. 2-3. We
summarily sustain this rejection because Appellant does not dispute it. Ex
parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with
approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has long
been the Board's practice to require an applicant to identify the alleged error
in the examiner's rejections.").
Rejections 2-6. The Examiner rejects the two independent claims on
appeal, claims 1 and 11, as anticipated by Chang. Final Act. 4. The
Examiner also rejects various dependent claims under 35 U.S.C. § 103 by
combining the teachings of additional references, Carver or Schoenlinner,
with the teachings of Chang. Id. at 7-10. Appellant argues that "[t]he
Office does not cite to any portion of Chang to support its contention that the
switching periods of Sal and Sa2 have a relationship to the 'resonant period'
of [any of Chang's] circuit elements." Appeal Br. 5. As explained below,
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Application 14/033,781
we agree that the Examiner has not, on the present record, adequately
explained how the cited references teach ( or, for the obviousness rejections,
suggest) the independent claim's recitations concerning switching cycle
periods.
We first address the scope and meaning of independent claims 1 and
11. Claim 1 is a method claim that requires that the first portion of the
switching cycle "comprises a first switched-on-period that corresponds to
one half of a resonant period of the resonant circuit." Appeal Br. 11 (Claims
App.). Claim 1 also requires a second portion of the switching cycle that
corresponds to "another half of the resonant period." Id.
The Specification defines the "period of a resonant circuit" as "a time
period of a substantially periodic waveform produced by the resonant
circuit." Spec. ,r 22. The Specification explains, for example, that inductor
LI and capacitor C3 (as depicted in Figure 3 of the Specification) form "a
series resonant circuit." Id. ,r 32. The Specification further explains that
resonant frequency of the resonant circuit is mathematically defined as a
function of the inductance and capacitance of inductor L 1 and capacitor C3.
Id. The resonant period time Tis mathematically the inverse of the resonant
frequency and is, therefore, also a function of inductor L 1 and capacitor C3.
Id. Therefore, where Claim 1 requires, for example, a switching cycle such
that one switched-on-period equals half of the resonant period of the recited
resonant circuit, the switched-on-period of time is defined by the physical
characteristics of the components of the resonant circuit ( as, for example,
explained in the Specification at paragraph 32).
Claim 11 is an apparatus claim but has similar requirements. Claim
11 recites switches which are "adapted to connect ... input terminals" in a
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Application 14/033,781
particular manner. Appeal Br. 12 (Claims App.). Specifically, the switch
must be adapted in such a way that the input terminals are connected
"alternatively" during a first portion of a switching cycle and a second
portion of switching cycle wherein each portion of time is defined by "a
resonant period associated with the resonant circuit." Because the switches
must be "adapted" to make this connection "alternatively," they are
distinguishable (via programming or other structure) from a generic switch
that is merely capable of switching.
With this construction of claims 1 and 11 in mind, we tum to the
Examiner's rejection. In the Final Office Action, the Examiner cites only
Chang's Figure 3a as teaching the switching cycle period recitations of
claims 1 and 11. Final Act. 4--5. Appellant urges that Chang's Figure 3a,
however, is merely a circuit diagram; it does not address the period of time
switches Sa1 or Sa2 remain in any position. Appeal Br. 5. The Final Office
Action does not address how Chang teaches switching cycle periods relating
to physical characteristics of the components of the resonant circuit. Rather,
Appellant argues, Chang instead teaches on-periods that correspond to on-
periods of the PFC drive (Appeal Br. 6-7). The Examiner does not dispute
this point in the Answer.
The Examiner's Answer likewise does not adequately explain how
Chang teaches switching cycle periods that are a function of physical
characteristics of the resonant circuit. The Answer cites paragraph 19 of
Chang (Ans. 2-3), but that paragraph only describes the physical circuitry of
the discharge loop. The paragraph does not address how long any cycle
periods last, nor has the Examiner shown that the cycle periods correspond
to a resonance period associated with the resonant circuit.
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Application 14/033,781
The Examiner's Answer also reasons that the Specification states that
its switching corresponds to "half of the resonant periodic time T" and that
Chang's similar circuit must therefore have the same correspondence. Ans.
4--5 (quoting Spec. ,r 33). The Examiner's reasoning is flawed because, as
Appellant explains in detail, even assuming arguendo that Chang's circuit
was identical to Appellant's claimed circuit, 4 Chang's switches would not
inherently be required to switch on and off ( or be adapted to switch on and
off) at the same rate taught by Appellant's Specification. Reply Br. 2--4.
Because the Examiner has not explained how Chang teaches all
recitations of claims 1 and 11, we do not sustain the Examiner's rejection of
those claims. Because the Examiner's treatment of the dependent claims
(including the Examiner's citation to additional references when addressing
some dependent claims) does not cure the error addressed above regarding
Chang, we also do not sustain the Examiner's other rejections.
DECISION
For the above reasons, we affirm the Examiner's rejection of (1)
claims 11, 12, 14--17, 18-20, and 23-27 on the ground of nonstatutory
double patenting as being unpatentable over claims 1-22 of U.S. Patent No.
8,570,005. We reverse the Examiner's rejection of (2) claims 1, 2, 4--7, 11,
12, 14--17, and 23-26 under 35 U.S.C. § 102(b) as being anticipated by
Chang, (3) claim 19 as unpatentable over Chang in view of Carver, (4) claim
20 as unpatentable over Chang in view of Schoenlinner, (5) claim 9 as
4 Appellant argues that there are differences in the Chang circuit as
compared to Appellant's circuit. Appeal Br. 5---6. We do not address this
argument because doing so is unnecessary to decide this appeal.
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Application 14/033,781
unpatentable over Chang in view of Carver and Schoenlinner, and ( 6) claim
27 under 35 U.S.C. § 103 as unpatentable over Chang in view of Carver.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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