Ex Parte Akita

Patent Trial and Appeal Board

Jan 31, 2017

13519804 (P.T.A.B. Jan. 31, 2017)

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.
13/519,804 08/10/2012 Hironobu Akita Q140900 3743
23373 7590 02/02/2017
SUGHRUE MION, PLLC
2100 PENNSYLVANIA AVENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
EXAMINER
KOETH, MICHELLE M
ART UNIT PAPER NUMBER
2632
NOTIFICATION DATE DELIVERY MODE
02/02/2017 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIRONOBU AKITA
Appeal 2016-005933
Application 13/519,804
Technology Center 2600
Before ERIC S. FRAHM, KIMBERLY McGRAW, and
MATTHEW J. McNEILL, Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-005933
Application 13/519,804
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1—14, all of the pending claims on appeal. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
Claim 1 is exemplary, and is reproduced below, with emphasis added
to the disputed portion of the claim:
1. A transmitting device comprising:
a clock transmitting part that generates and transmits a
clock intermittently phase-shifted according to one of a first
predetermined time interval spanning at least two pulses of the
clock and a second predetermined time interval spanning at
least three pulses of the clock, and
a data transmitting part that transmits data in sync with
the clock transmitted from the clock transmitting part.
We have reviewed Appellant’s arguments in the Appeal Brief (App.
Br. 6—11) and the Reply Brief (Reply Br. 4—9) that the Examiner’s rejections
of (i) claims 1, 7, 13, and 14 under 35 U.S.C. § 103(a) as being unpatentable
over Lavelle (US 2009/0274218 Al; published Nov. 5, 2009) and Zhou (US
2007/0019773 Al; published Jan. 25, 2007) (see Final Act. 3—9); and
(ii) claims 2—6 and 8—12 as being unpatentable over Lavelle, Zhou, and
Ozawa (US 7,043,202 B2; issued May 9, 2006) (see Final Act. 10-20) are in
error, and the Examiner’s response to Appellant’s arguments in the Appeal
Brief (Ans. 3—7).
We agree with the Examiner that (i) Lavelle teaches or suggests (a) a
transmitting device having a clock transmitting part 102 with a phase shifted
clock 110 (see Final Act. 3 (citing Lavelle 1242, Main PLL 110; Fig. 7)),
(b) a data transmitting part 108 (see Final Act. 3 (citing Lavelle ]Hf 242 and
244; Fig. 7)); and (ii) Zhou teaches a an intermittently phase-shifted clock
2
Appeal 2016-005933
Application 13/519,804
(see Final Act. 4 (citing Zhou ]Hf 26—30; Fig. 6)), as recited in each of
independent claims 1, 7, and 10-12. However, the Examiner has not
rationally articulated how/why one of ordinary skill in the art at the time of
Appellant’s invention would modify the combination, and in particular
Zhou, to “generate^ and transmit^ a clock intermittently phase-shifted
according to one of a first predetermined time interval spanning at least two
pulses of the clock and a second predetermined time interval spanning at
least three pulses of the clock” (see, e.g., claim 1 (emphasis added)) as
claimed.
We do not find, and the Examiner does not even assert, that the
intervals shown in Zhou’s Figure 6, taken with the accompanying
description found in Zhou’s paragraphs 25—30 describing the operation of
the phase detector 202, data clock 212, and phase controller 300, suffice to
meet the claim requirement of performing intermittent phase-shifting
“according to one of a first predetermined time interval spanning at least two
pulses of the clock and a second predetermined time interval spanning at
least three pulses of the clock” as recited in independent claim 1, and
similarly recited in remaining independent claims 7 and 10—12. And,
although (i) Zhou discloses “shift[ing] the phase of the data clock 212 at a
rate positively related to the length of time the second signal 318 indicates
the data clock 212 leads or lags the input data stream 210” (Zhou 130); and
(ii) we agree with the Examiner that Zhou suggests a method of phase-
shifting such “that unnecessary adjustments can be avoided” so as “to make
phase-shifting more efficient” (Ans. 7), and “teaches in para. [0026], and
fig. 6 that the threshold value 64 that is directly proportional to a number of
clock pulses, wherein the clock pulses represent a time interval” (Ans. 6),
3
Appeal 2016-005933
Application 13/519,804
the Examiner still has not rationally articulated how/why one of ordinary
skill in the art at the time of Appellant’s invention would modify Zhou to
“generate[] and transmit^ a clock intermittently phase-shifted according to
one of a first predetermined time interval spanning at least two pulses of the
clock and a second predetermined time interval spanning at least three
pulses of the clock” (see, e.g., claim 1 (emphasis added)) as claimed.
Based on the foregoing, we concur with Appellant’s assertions (see
App. Br. 6—8 and 10; Reply Br. 4—6) that Zhou, and thus the base
combination of Lavelle and Zhou, fails to teach or suggest “generat[ing] and
transmitting] a clock intermittently phase-shifted according to one of a first
predetermined time interval spanning at least two pulses of the clock and a
second predetermined time interval spanning at least three pulses of the
clock” as recited in independent claim 1, and similarly recited in remaining
independent claims 7 and 10—12.
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 1,7, and 10-12, as well as corresponding dependent
claims 2—6, 8, 9, 13, and 14 depending therefrom.
CONCLUSION
The Examiner erred in rejecting claims 1—14 under 35 U.S.C. § 103(a)
as being unpatentable over the base combination of Lavelle and Zhou and
claims 2—6 and 8—12 over the combination of Lavelle, Zhou, and Ozawa.
4
Appeal 2016-005933
Application 13/519,804
DECISION1
The Examiner’s rejections of claims 1—14 are reversed.
REVERSED
1 We have decided the appeal before us. However, we request that the
Examiner review the claims and the prior art to determine whether the
limitation, “according to one of a first predetermined time interval spanning
at least two pulses of the clock and a second predetermined time interval
spanning at least three pulses of the clock” is nothing more than a mere
design choice and therefore obvious in light of the cited prior art. We
specifically request the Examiner to consider whether the arrangement of
these known elements (the clock and transmitting part) to generate and
transmit the phase-shift according to the recited intervals provides any novel
or unexpected results. A design choice may be an acceptable rationale for
an obviousness rejection when a claimed product merely arranges known
elements in a configuration that provides no novel or unexpected results.
See In re Kuhle,_526 F.2d 553, 555 (CCPA 1975). We leave to the Examiner
to consider the appropriateness of further rejections under 35 U.S.C.
§ 103(a) over the cited references applied differently or in combination with
additional references. Although the Board is authorized to reject claims
under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board
elects not to do so. See Manual of Patent Examining Procedure (MPEP)
§ 1213.02.
5