Appeal No. 2001-1627
Application No. 09/289,420 Page 6
core. In any event, the specification (page 5) discloses that
the embodiment of the invention does not employ a transformer,
and that (page 6) a less expensive component such as inductor 160
may be used instead of a transformer. However, we need not
decide the issue of whether inductor 160 is in fact a transformer
because claim 1 neither claims nor precludes a transformer. The
claim requires a two-coiled conductor. Cuk discloses a
transformer T which includes two coiled inductors L1 and L2. From
the use of the transitional phrase "comprising", we consider the
claim to be open-ended, and find no language in claim 1 which
would preclude a transformer. Accordingly, because the
transformer of Cuk includes two inductor coils, we find that Cuk
meets the claimed two-coiled inductor.
Appellant further asserts (brief, page ) that the recitation
of a ratio of the input voltage to the output voltage is capable
of being equal to, greater than, or less than one, is not met.
The examiner's position (answer, page 5) is that the claim
language does not constitute a limitation in a patentable sense,
but only requires the ability to perform. The examiner adds that
assuming arguendo that the language was considered to be a
limitation in a patentable sense, that the limitation is met
because for any converter, the ratio of the output to the input
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