Ex Parte 6535719 et al

Board of Patent Appeals and Interferences

Oct 4, 2010

90008754 (B.P.A.I. Oct. 4, 2010)

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.
90/008,754 07/17/2007 6535719 40404.84 2969
54068 7590 10/04/2010
ROHM CO., LTD.
C/O KEATING & BENNETT, LLP
1800 Alexander Bell Drive
SUITE 200
Reston, VA 20191
EXAMINER
NGUYEN, MINH T
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
10/04/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte Rohm Co., Ltd.
Appellant and Patent Owner
____________

Appeal 2010-010808
Reexamination Control 90/008,754
Patent 6,535,719 B1
Technology Center 3900
____________

Before SALLY C. MEDLEY, KEVIN F. TURNER, and
STEPHEN C. SIU, Administrative Patent Judges.

TURNER, Administrative Patent Judge

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
shown on the PTOL-90A cover letter attached to this decision.
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Reexamination Control 90/008,754
United States Patent 6,535,719 B1

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Rohm Co. Ltd.2 3appeals4 5 under 35 U.S.C. §§ 134(b) and 306 from a
final rejection of claims 1, 4, 6, 16, 19, and 20.6 Claims 2, 3, 5, 7-10, 12-15,
17, and 18, the only other pending claims, are not subject to this
reexamination. Therefore, claims 1, 4, 6, 16, 19, and 20 stand before us on
Appeal. We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We AFFIRM.

STATEMENT OF THE CASE
This proceeding arose from a request for ex parte reexamination filed
by Benjamin E. Urcia on July 17, 2007, of United States Patent 6,535,719
B1 issued on March 18, 2003, based on United States Application
09/496,932 filed February 2, 2000.
Patentee’s invention relates to a frequency modulating (FM)
transmitter which generates various frequency signals for both the stereo
modulation and frequency comparison in the PLL frequency synthesizer by
means of a single oscillator. (Col. 2, ll. 55-63.)

2 Rohm Co. Ltd. is the real party in interest and the current owner of the
patent under reexamination.
3 An assignment was executed by Tamotsu Suzuki, Hiroyuki Ashida, and
Masatoshi Tsuji, inventors, on June 1, 2000 to Rohm Co. Ltd.
4 Patent Owner’s Supplemental Appeal Brief (filed January 15, 2010)
[hereinafter App. Br.].
5 Patent Owner’s Reply Brief (filed July 6, 2010) [hereinafter Reply Br.].
6 Ex Parte Reexamination Final Office Action (mailed May 15, 2009).
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Exemplary independent claim 1 reads as follows:
1. (Amended): A frequency modulating (FM)
transmitter, comprising:
a reference frequency generator for generating a
reference frequency;
a reference frequency divider for frequency dividing said
reference frequency;
a stereo modulation circuit for frequency modulating a
right audio signal and a left audio signal by using one output of
said reference frequency divider to supply resultant stereo
modulated signals as FM signals;
an oscillator circuit for generating carrier waves to
transmit said FM signals received from said stereo modulation
circuit;
a program counter for frequency dividing said carrier
waves into variable frequency components; and
a PLL frequency synthesizer which has a phase
comparator circuit for comparing said variable frequency
components output from said program counter with another
output of said reference frequency divider to provide at an
output end of said PLL frequency synthesizer a control signal
for controlling said oscillator circuit; wherein
said output of said reference frequency divider and said
another output of said reference frequency divider are selected
from the group consisting of 100 kHz, 50 kHz, 25 kHz, 10 kHz,
9 kHz, 5 kHz, and 1 kHz.

The prior art reference relied upon by the Examiner in rejecting the
claims is:
Hiroyuki7 JP 09-321720 Dec.12, 1997
(filed May 27, 1996)

7 While Hiroyuki is the named inventor of JP 09-321720, the Applicant for
JP 09-321720 is Rohm Co. Ltd.
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The Examiner rejected claims 1, 4, 6, 16, 19, and 20 under 35 U.S.C.
§ 103(a) as obvious over Hiroyuki. (Ans. 4.)

ISSUE8
Appellant argues that Hiroyuki fails to teach or suggest “a reference
frequency divider for frequency dividing said reference frequency . . . said
output of said reference frequency divider and said another output of said
reference frequency divider are selected from the group consisting of 100
kHz, 50 kHz, 25 kHz, 10 kHz, 9 kHz, 5 kHz, and 1 kHz,” as recited by claim
1. (App. Br. 10). Specifically, Appellant argues the Examiner “has failed to
provide any evidence that any applications require these particular
frequencies or any explanation as to why one of ordinary skill in the art
would have chosen these particular frequencies.” (App. Br. 11; see also
Reply Br. 5.)
In response, the Examiner finds that “an artisan can apply a known
technique (such as using a shift register as taught in Hiroyuki or many other
known technique[s]) to a known device (frequency divider) so that []
Hiroyuki’s transmitter can be used in other applications and the result is
predictable (different output frequencies).” (Ans. 17.) Additionally, the
Examiner finds that Appellant is not arguing that Hiroyuki does not teach
that its reference frequency divider generates output frequencies, but instead

8 Appellant has chosen to group claims 1, 4, 6, 16, 19, and 20 so that claims
4, 6, 16, 19, and 20 stand and fall with independent claim 1. Accordingly,
we will make reference solely to independent claim 1.
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Appellant is arguing that it would not have been obvious to modify
Hiroyuki’s reference frequency divider to generate output frequencies in the
group consisting of 100 kHz, 50 kHz, 25 kHz, 10 kHz, 9kHz, 5 kHz, and
1kHz, as claimed by Appellant, rather than the group of output frequencies
taught by Hiroyuki consisting of 19 kHz, 38 kHz, and 76 kHz. (Ans. 15.)
Thus, the sole issue arising from the respective positions of Appellant
and the Examiner is:
Did the Examiner err in concluding that it would have been obvious to
modify the frequency divider circuit taught in Hiroyuki’s FM transmitter to
generate frequencies of output signals selected from the group of frequencies
consisting of 100 kHz, 50 kHz, 25 kHz, 10 kHz, 9kHz, 5 kHz, and 1 kHz?

FINDINGS OF FACT
Facts Related to Appellant’s Specification
1. In the Background of the Invention section of Appellant’s
Specification, Appellant discloses that “[t]he PLL frequency synthesizer 44
is used to generate reference frequencies, for example, 100 kHz, 50 kHz, 25
kHz, 10 kHz, 9 kHz, 5 kHz, and 1 kHz for radio broadcasting.” (Col. 2, ll.
9-12.)

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Hiroyuki9
2. Hiroyuki is directed to an FM transmitter which uses a single
crystal oscillator. (¶ [0017].)
3. Hiroyuki describes that its FM transmitter oscillates on a frequency
of 76 kHz and can generate signal frequencies of 38 kHz and 19 kHz by
dividing the input frequency through counting down circuit 13. (¶¶ [0024],
[0025].)
4. Hiroyuki describes that its shift register latch 8 controls the division
ratio of the reference divider 3. (¶ [0008])

PRINCIPLES OF LAW
Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)

9 English translation provided by Appellant for Hiroyuki, JP 09-321720, on
July 17, 2007.
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the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir.
2007) (quoting KSR, 550 U.S. at 416). “One of the ways in which a patent’s
subject matter can be proved obvious is by noting that there existed at the
time of invention a known problem for which there was an obvious solution
encompassed by the patent’s claims.” KSR, 550 U.S. at 419-20.

ANALYSIS
Initially, consistent with the Examiner (Ans. 16), we determine the
level of ordinary skill in the art, based on Hiroyuki, to be one with a
bachelor’s of science in electrical engineering, specializing in frequency
modulating circuits. See Okajima v. Bourdeau, 261 F.3d 1350,1355 (Fed.
Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art
does not give rise to reversible error ‘where the prior art itself reflects an
appropriate level and a need for testimony is not shown’”) (quoting Litton
Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir.
1985)). Here, in Appellant’s arguments, Appellant does not contest any of
the Examiner’s findings with respect to Hiroyuki other than to argue that
Hiroyuki fails to teach or suggest “a reference frequency divider for
frequency dividing said reference frequency . . . said output of said reference
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frequency divider and said another output of said reference frequency
divider are selected from the group consisting of 100 kHz, 50 kHz, 25 kHz,
10 kHz, 9 kHz, 5 kHz, and 1 kHz,” as recited by claim 1. (App. Br. 10; see
also Reply Br. 5.)
We are not persuaded by Appellant’s argument and agree with the
Examiner that while Hiroyuki teaches a frequency divider (FF 3), Hiroyuki
does not explicitly disclose that the “output of said reference frequency
divider are selected from the group consisting of 100 kHz, 50 kHz, 25 kHz,
10 kHz, 9 kHz, 5 kHz, and 1 kHz.” (Ans. 8.) However, we agree with the
Examiner that it would have been both obvious and within ordinary skill in
the art of FM transmitters, discussed supra, to modify the frequency divider
taught by Hiroyuki (FF 4) to generate the output frequencies claimed by
Appellant with a reasonable expectation of success.
Further, we find that one having ordinary skill in the art at the time of
the invention would have known that using the shift register latch as taught
by Hiroyuki to control the division ratio of the reference divider would have
resulted in a change in output frequencies. (FF 4.) Determining the specific
output frequencies of a FM transmitter absent any structural differences
between the structure of Appellant’s FM transmitter and that of Hiroyuki’s
FM transmitter (FF 2) is simply routine optimization of the invention
suggested by the prior art. See In re Aller, 220 F.2d 454, 456 (CCPA 1955)
(“[I]t is not inventive to discover the optimum or workable ranges by routine
experimentation.”); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)
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(“A person of ordinary skill is also a person of ordinary creativity, not an
automaton.”). Therefore, since Appellant has not pointed to any unexpected
results arising from the use of the particular frequencies recited in claim 1,
we find that modifying Hiroyuki’s FM transmitter to output frequencies
from the group consisting of 100 kHz, 50 kHz, 25 kHz, 10 kHz, 9 kHz, 5
kHz, and 1 kHz, rather than the signal frequencies of 76 kHz, 38 kHz, and
19 kHz as taught by Hiroyuki, would have been an obvious to try solution or
a mere application of known methods to modify the output frequency of a
FM transmitter without unpredictable results.
Additionally, in KSR the Court recognized that “[w]hen there is a
design need or market pressure to solve a problem and there are a finite
number of identified, predictable solutions, a person of ordinary skill has
good reason to pursue the known options within his or her technical grasp.”
KSR, 550 U.S. at 421. In such circumstances, “the fact that a combination
was obvious to try might show that it was obvious under § 103.” KSR, 550
U.S. at 421. Appellants have neither pointed to teachings in Hiroyuki which
teach away from output frequencies from the group consisting of 100 kHz,
50 kHz, 25 kHz, 10 kHz, 9 kHz, 5 kHz, and 1 kHz nor have they presented
any evidence of secondary considerations negating a conclusion of
obviousness.
In fact, in describing the prior art related to Appellant’s invention,
Appellant’s Specification describes that it is known to generate frequencies
of 100 kHz, 50 kHz, 25 kHz, 10 kHz, 9 kHz, 5 kHz, and 1 kHz for radio
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broadcasting in FM transmitters with more than one oscillator. (FF 1.)
Thus, based upon the finite amount of identified frequencies utilized within
the FM spectrum, we find that it would be within the technical grasp of one
of ordinary skill in the art to modify the output frequencies of Hiroyuki’s
FM transmitter to be from the group consisting of 100 kHz, 50 kHz, 25 kHz,
10 kHz, 9 kHz, 5 kHz, and 1 kHz.
Accordingly, we agree with the Examiner’s conclusion of obviousness
and find that “a reasonable expectation of success, not absolute
predictability” supports a conclusion of obviousness. In re Longi, 759 F.2d
887, 897 (Fed. Cir. 1985). See also In re Merck & Co., Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986) (“Obviousness does not require absolute
predictability.”).

CONCLUSION
The Examiner did not err in concluding that it would have been
obvious to modify the frequency divider circuit taught in Hiroyuki’s FM
transmitter to generate frequencies of output signals selected from the group
of frequencies consisting of 100 kHz, 50 kHz, 25 kHz, 10 kHz, 9kHz, 5 kHz,
and 1 kHz.

DECISION
The decision of the Examiner to reject claims 1, 4, 6, 16, 19, and 20 is
AFFIRMED.
Appeal 2010-010808
Reexamination Control 90/008,754
United States Patent 6,535,719 B1

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Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

KMF
Appeal 2010-010808
Reexamination Control 90/008,754
United States Patent 6,535,719 B1

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cc:

PATENT OWNER:

ROHM CO., LTD.
C/O KEATING & BENNETT, LLP
1800 Alexander Bell Drive, Suite 200
Reston, VA 20191

THIRD-PARTY REQUESTER:

BENJAMIN E. URCIA
BACON & THOMAS PLLC
625 Slaters Lane- Fourth Floor
Alexandria, VA 22314