Integrated Technology Corporation

Patent Trials and Appeals BoardMar 25, 2021

2020002694 (P.T.A.B. Mar. 25, 2021)

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. 15/455,810 03/10/2017 Steven T. Clauter IT12103US 5149 22203 7590 03/25/2021 KUSNER & JAFFE Paragon Center II 6150 Parkland Boulevard Suite 105 Mayfield Heights, OH 44124 EXAMINER ZAKARIA, AKM ART UNIT PAPER NUMBER 2868 NOTIFICATION DATE DELIVERY MODE 03/25/2021 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): mail@kusnerjaffe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEVEN T. CLAUTER, GARY B. ROGERS, NORVELL ERIC AUSTIN, and BRADLEY T. WOLFORD Appeal 2020-002694 Application 15/455,810 Technology Center 2800 Before TERRY J. OWENS, JEFFREY B. ROBERTSON, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON APPEAL1 1 This Decision includes citations to the following documents: Specification filed March 10, 2017 (“Spec.”); Final Office Action mailed April 17, 2019 (“Final Act.”); Appeal Brief filed October 21, 2019 (“Appeal Br.”); Examiner’s Answer mailed December 31, 2019 (“Ans.”), and Reply Brief filed February 20, 2020 (“Reply Br.”). Appeal 2020-002694 Application 15/455,810 2 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1 and 3–14. See Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. CLAIMED SUBJECT MATTER Appellant states the invention relates to recovery of unused energy in testing of a device, and more particularly, to an apparatus for directing unused electrical energy remaining in an inductive element to a storage device after a test cycle of testing a device. Spec. 1. Claim 1, the only independent claim on appeal is reproduced below as illustrative of the claimed subject matter (Appeal Br., Claims Appendix 25): 1. An energy supply for a test device, comprising: an energy source including an energy storage device and an inductive element, the energy source configured to provide energy stored in the energy storage device to the inductive element for use by test circuitry; a first switching element operative to selectively couple a first terminal of the energy storage device to a first terminal of the inductive element to transfer energy to the inductive element; and an energy recovery circuit electrically couplable to the energy source and configured to direct unused energy from the inductive element to the energy source, the energy recovery circuit including a second switching element different from the first switching element, the second switching element operative 2 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Integrated Technology Corporation. Appeal Br. 2. Appeal 2020-002694 Application 15/455,810 3 to selectively couple a second terminal of the inductive element to the first terminal of the energy storage device. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Gray et al. (“Gray”) US 2011/0062935 A1 March 17, 2011 Peting et al. (“Peting”) US 2012/0217950 A1 Aug. 30, 2012 Keller et al. (“Keller”) US 2013/0027825 A1 January 31, 2013 REJECTIONS 1. Claims 1, 3, 4, 7–9, and 11–14 under 35 U.S.C. § 103 as unpatentable over Peting and Keller. Final Act. 5–11; Ans. 4–11. 2. Claims 5, 6, and 10 are rejected under 35 U.S.C. § 103 as unpatentable over Peting, Keller, and Gray. Final Act. 11–14. OPINION Rejection 1 We limit our discussion to claim 1, which is sufficient for disposition of this rejection. The Examiner’s Rejection At the outset, the Examiner has provided further detailed and/or different positions in rejecting claim 1 as unpatentable over Peting and Keller in the Answer relative to the positions set forth in the Final Action. Compare Final Act. 5–7 with Ans. 4–11; see Reply Br. 1. As a result, we largely confine our discussion to the positions set forth by the Examiner in the Answer and Appellant’s arguments as set forth in the Reply Brief. Appeal 2020-002694 Application 15/455,810 4 In rejecting claim 1, the Examiner found that Peting meets the recited “first switching element” in either of two ways: (1) by transistor switching element 761, selectively coupling via an indirect connection through common ground and other elements, the first terminal (“-”) of inductor 762 to the first terminal of energy storage device 751; or (2) clamp diode (indirect switching) element 763 selectively coupling the first terminal (“-”) of inductor 762 to the first terminal of energy storage device 751. Ans. 5. As to the energy recovery circuit recited in claim 1, the Examiner found Peting discloses a second switching element, transistor 743, which is operative to selectively couple a second terminal of the inductive element 762 (“+”) to the first terminal of the energy storage device 751. Ans. 6 (annotated drawing of Peting’s Fig. 7A); Final Act. 6. Appellant’s Arguments Appellant contends that neither of the two interpretations of Peting for the first switching element result in the claimed invention. Reply Br. 3–7, 9–12. Appellant argues further that in view of the Examiner’s interpretations for the first switching element, the Examiner does not explain how the transistor 743 is operative to selectively couple a second terminal of the inductor 762 to the first terminal of the energy storage device, capacitor 751 in Peting. Reply Br. 7–8, 10–12. Issue Did the Examiner err in determining that claim 1 would have been obvious over Peting and Keller? Appeal 2020-002694 Application 15/455,810 5 Discussion We are persuaded by Appellant’s arguments. The Examiner bears the initial burden, on review of prior art or on any other ground, of presenting a prima facie case of unpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “‘[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Figure 7A of Peting as annotated by the Examiner, which represents the Examiner’s first interpretation of how Peting renders claim 1 obvious, is reproduced below from the Answer (p. 6): Figure 7A illustrates a diode-based electrical circuit for catching excess current and for a creating a voltage that may be used to reverse bias an inductor. Peting ¶ 15. The Examiner has annotated Figure 7A to indicate the “-” terminal of inductive element 762 as the first terminal and the “+” terminal as the second terminal recited in claim 1. The Examiner has further Appeal 2020-002694 Application 15/455,810 6 annotated Figure 7A to indicate transistor 761 as the first switching element, the transistor (FET) 743 as the second switching element, and capacitor 751 as the energy storage device. See Peting ¶¶ 71, 72. The Examiner has also indicated a path that purports to show how the first switching element is operative to selectively couple the first terminal of the energy storage device to a fist terminal of the inductive element under the Examiner’s first interpretation.3 Ans. 5. As to the Examiner’s first interpretation, we agree with Appellant that the Examiner has not provided sufficient support that Peting discloses the transistor 761 is operative to “selectively couple” a first terminal of the capacitor 751 to the “-” terminal of the inductive element 762 “to transfer energy to the inductive element” as recited in claim 1. Peting does not describe any such relationship among the components 761, 764, 765, and 755–758. See Peting ¶¶ 70–74.4 Further, the Examiner provides no support for the position that one of ordinary skill in the art would have understood that the existence of a common ground would mean the first terminal of the capacitor 751 would be able to transfer energy to the inductive element 762 as required by claim 1. See Reply Br. 5–6. We also agree with Appellant that under either interpretation, the Examiner has not provided sufficient support for how FET 743 as the second 3 We observe that although the Examiner indicates the path is in green, the copies of record are not in color. We make a similar observation as to Appellant’s annotated Figure 7A in the Reply Brief indicating that certain connections are shown in red and green. Reply Br. 4–5. However, we find that the color coding is unnecessary in deciding this appeal. 4 In this regard, we are unable to find any description of Peting of components 759, 764, and 765. See Peting generally. Appeal 2020-002694 Application 15/455,810 7 switching element couples the positive terminal of the inductive element 762, the “second terminal” in claim 1, to the first terminal of capacitor 751, the energy storage device in claim 1. See Reply Br. 8–10, and Appellant’s annotated versions of Peting’s Fig. 7A. As pointed out by Appellant, Peting discloses that when FET 743 is turned on, it drives the VClamp 712 voltage back down to the Vsupply 711. Reply Br. 10–11; Peting ¶ 72. Although the Examiner states that excess current is diverted from the inductive element 762 to the energy source 710 and that the second switching element 743 is operative to couple a second terminal of the second inductive element to the first terminal of the energy storage device 751 (Final Act. 6), the Examiner does not sufficiently explain how the general disclosure in Peting meets the recitation of the second switching element in claim 1. Accordingly, we reverse the Examiner’s decision to reject claims 1, 3, 4, 7–9, and 11–14 as unpatentable over Peting and Keller. Rejection 2 Claims 5, 6, and 10 depend indirectly from claim 1. The additional citation to Gray does not remedy the deficiencies discussed above with respect to claim 1. See Final Act. 11–14. Accordingly, we reverse the Examiner’s rejection of claims 5, 6, and 10 for similar reasons as discussed above with respect to claim 1. Appeal 2020-002694 Application 15/455,810 8 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 4, 7–9, 11–14 103 Peting, Keller 1, 3, 4, 7–9, 11–14 5, 6, 10 103 Peting, Keller, Gray 5, 6, 10 Overall Outcome 1, 3–14 REVERSED