Ex Parte Allee

Board of Patent Appeals and Interferences

Jul 29, 2004

09400508 (B.P.A.I. Jul. 29, 2004)

The opinion in support of the decision being entered today was not written for publication and
is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DAREN ALLEE
____________
Appeal 2003-0163
Application No. 09/400,508
____________
ON BRIEF
____________
Before THOMAS, BARRETT, and DIXON, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-16,
which are all of the claims pending in this application.
We AFFIRM.
Appeal No. 2003-0163
Application No. 09/400,508
1 The examiner has not specifically rejected claim 16 in the answer, but did include a separate
rejection in the final rejection for claim 16. Appellant acknowledges the status of claim 16 in the Brief at
page 3 as being rejected. The examiner has not indicated that the rejection has been withdrawn.
Therefore, we will treat claim 16 as being rejected as set forth in the final at page 4.
2
Appellant's invention relates to a low noise logic gate. An understanding of the
invention can be derived from a reading of exemplary claim 1, which is reproduced
below.
1. A logic gate, comprising:
a low noise current source coupled between a first terminal of a
voltage supply and an output terminal, said low noise current
source being capable of delivering a preselected voltage
signal to said output terminal having a magnitude responsive
to a first control signal relatively independent of the
magnitude of the voltage on said first terminal of said
voltage supply; and
at least one switching element coupled between the output terminal
and a second terminal of the voltage supply, said switching
element being capable of coupling said output terminal to
said second terminal of said voltage supply in response to
receiving a control signal.
The prior art of record relied upon by the examiner in rejecting the appealed
claims is as follows:
Sundstrom 5,602,494 Feb. 11, 1997
Chang et al. (Chang) 5,955,893 Sep. 21, 1999
(filed Dec. 16, 1996)
Lee 6,078,194 Jun. 20, 2000
(filed Nov. 13, 1995)
Claim 1 stands rejected under 35 U.S.C. § 102 as being anticipated by Lee.
Claims 2 and 161 stands rejected under 35 U.S.C. § 103 as being unpatentable over
Appeal No. 2003-0163
Application No. 09/400,508
2 While we do not sanction the examiner’s brevity and abbreviated statement of the grounds of
rejection, we find this issue moot since appellant elected to group all claims as standing or falling together
at page 5 of the brief.
3
Lee. Claim 3 stands rejected under 35 U.S.C. § 103 as being unpatentable over Lee in
view of Chang. Claim 4 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Lee in view of Thompson. Claim 5 stands rejected under 35 U.S.C. § 103 as
being unpatentable over Lee in view of Sundstrom. Claims 6-15 stand rejected under
the same bases as the above rejections of claims 1-5 and 16. See answer at pages 8
and 9.2
Rather than reiterate the conflicting viewpoints advanced by the examiner and
appellant regarding the above-noted rejections, we make reference to the examiner's
answer (Paper No. 13, mailed May 10, 2002) for the examiner's reasoning in support of
the rejections, and to appellant's brief (Paper No. 12, filed Feb. 27, 2002) and reply
brief (Paper No. 14, filed Jul. 16, 2002) for appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by appellant and the examiner. As a consequence of
our review, we make the determinations which follow.
At the outset, we note that appellant contends that the claims stand or fall
independently. (Brief at page 5.) Therefore, we will select a single representative claim
Appeal No. 2003-0163
Application No. 09/400,508
4
with respect to each ground of rejection, except for the instances in which appellants
have presented separate arguments. See 37 CFR § 1.192(c)(7). See also In re
McDaniel, 293 F.3d 1379, 1383, 63 USPQ2d 1462, 1465 (Fed. Cir. 2002) ("If the brief
fails to meet either requirement [of 37 CFR § 1.192(c)(7)], the Board is free to select a
single claim from each group of claims subject to a common ground of rejection as
representative of all claims in that group and to decide the appeal of that rejection
based solely on the selected representative claim.").
35 USC § 102
In determining novelty, the first inquiry must be into exactly what the claims
define. In re Wilder, 429 F.2d 447, 450, 166 USPQ 545, 548 (CCPA 1970). Similarly,
a Section 103 analysis begins with a key legal question -- what is the invention
claimed? Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567, 1 USPQ2d
1593, 1597 (Fed. Cir. 1987).
The terms used in the claims bear a "heavy presumption" that they mean what
they say and have the ordinary meaning that would be attributed to those words by
persons skilled in the relevant art. Texas Digital Sys., Inc. v. Telegenix Inc., 308 F.3d
1193, 1202, 64 USPQ2d 1812, 1817 (Fed. Cir. 2002). Dictionaries, encyclopedias, and
treatises are particularly useful resources in determining the ordinary and customary
meanings of claim terms. Id. at 1202, 64 USPQ2d at 1818. Indeed, these materials
may be the most meaningful sources of information in better understanding both the
Appeal No. 2003-0163
Application No. 09/400,508
5
technology and the terminology used by those skilled in the art to describe the
technology. Id. at 1203, 64 USPQ2d at 1818. In the instant case, all the independent
claims contain the terms “low noise current source” and “relatively independent.”
There is no evidence in the record that the terms “low noise current source” and
“relatively independent” had any special meaning to the artisan at the time of
disclosure. Nor do we find any particular definition of the terms in the instant
specification. See In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d 1671, 1674 (Fed.
Cir. 1994) (repeating the principle that where an inventor chooses to be his own
lexicographer and gives terms uncommon meanings, he must set out the uncommon
definition in the patent disclosure). See also Beachcombers Int'I. Inc. v. WildeWood
Creative Prods.. Inc., 31 F.3d 1154, 1158, 31 USPQ2d 1653, 1656 (Fed. Cir. 1994)
("As we have repeatedly said, a patentee can be his own lexicographer provided the
patentee's definition, to the extent it differs from the conventional definition, is clearly
set forth in the specification."); Johnson Worldwide Assocs. Inc. v. Zebco Corp., 175
F.3d 985, 989, 50 USPQ2d 1607, 1610 (Fed. Cir. 1999) (there is a "heavy presumption"
that claim language has its ordinary meaning).
With respect to independent claim 1, we find that the examiner has established a
prima facie case of anticipation, and identified of correlation of each claimed element
to the disclosure of Lee. The examiner has maintained that the above language with
respect to “relatively independent” is vague and presumes that there is a relative
Appeal No. 2003-0163
Application No. 09/400,508
6
dependency as well. (See brief at page 6.) We agree with the examiner, but would
rather categorize the claim language as broad rather than vague. In our interpretation
of the limitation, there is both a relative dependence and independence of the voltage
output from the low noise current source. The language of independent claim 1 states
that “low noise current source coupled between a first terminal of a voltage supply and
an output terminal, said low noise current source being capable of delivering a
preselected voltage signal to said output terminal having a magnitude responsive to a
first control signal relatively independent of the magnitude of the voltage on said first
terminal of said voltage supply.” Here, we find the language of the claim to be rather
broad in that it does not state a range or other limitation which would define the
relationship between the supply voltage and the output in the express language of the
claim. From our review of the specification, we find no express definition of the phrase
“relatively independent.” Therefore, we are left with the ordinary meaning of the phase
which we find to be both independent and dependent. Therefore, this argument is not
persuasive.
Appellant argues that it is well known that variations in the supply voltage
propagate through the system to the control voltages and that the control voltages draw
power from the power plane and that any variation in the voltage on the power planes
leads to some variation in the voltage supplied to the control signals and that therefore
if there is a droop in the supply voltage then there is a droop in the control voltage.
Appellant further argues that “[u]ndesired changes to the input control signal and the
Appeal No. 2003-0163
Application No. 09/400,508
7
power supply typically lead to undesired changes in the output signal, but the present
invention moderates or eliminates the effect of those undesired changes.” [Emphasis
added.] (See brief at page 7.) While we agree with appellant of what is known in the
art, this does not specifically address the teachings of Lee nor does it establish that
there is not some independence. Here, we find that appellant has set forth the desired
end result in broad claim language which we find to be met by the teachings of Lee.
Furthermore, appellant argues the limitations broadly and in general terms only
addresses the specific teachings of Lee. Therefore, we do not find appellant’s
arguments persuasive.
Appellant argues that there is at least one factor that contributes to the
independence of the output of the current source relative to the supply voltage is the
use of a “p-type transistor (66 or 84) when the voltage supply (62) is a positive voltage.”
(See brief at page 7.) We find no limitation in the language of independent claim 1 that
requires a p-type transistor or that the supply voltage be positive. Therefore, this
argument is not persuasive.
Appellants argue that Lee does not teach or suggest “controlling noise as with
the present invention.” (See brief at page 8.) We find no limitation in the language of
independent claim 1 that requires controlling noise. Claim 1 merely recites a “low noise
current supply” without reciting any limitation to achieve this function. Therefore, this
argument is not persuasive. Appellant argues that Lee discloses an output voltage that
Appeal No. 2003-0163
Application No. 09/400,508
8
is very dependent on the supply voltage, but as discussed above, we find these terms
to be broad and within the teachings of Lee.
Appellant disagrees with the examiner’s position that if the n-type transistor of
Lee were replaced with a p-type transistor the system would operate “relatively
independent”. We do not reach this argument with respect to independent claim 1
since the claim does not recite a p-type transistor. Therefore, this argument is not
persuasive, and we will sustain the rejection of independent claim 1.
35 USC § 103
With respect to dependent claim 2, we find the examiner’s line of reasoning to
replace a n-type transistor with a p-type transistor to be well within the knowledge and
level of skill of one of ordinary skill in the art and that those skilled in the art would have
known the respective changes that would have to be made for proper operation of the
p-type circuit. Appellant argues that the substitution would cause significant
misoperation of the circuit in Lee. (See brief at page 10.) We disagree and find this
change within the level of ordinary skill in the art. Therefore, this argument is not
persuasive, and we will sustain the rejection of dependent claim 2. Therefore, the
remainder of claims 3-16 should similarly fall with claim 2 since appellant elected to
group all the claims as standing or falling together. (See brief at page 5.) But,
appellant has included a specific argument to independent claim 6 at page 11 of the
brief. Therefore, we will address this argument.
Appeal No. 2003-0163
Application No. 09/400,508
9
Appellant argues that claim 6 recites that the current source has an “intrinsic
transistor” and that the specification teaches the significant benefits of enhancing
independence. Here, we find that appellant’s argument adds further support to the
broad claim interpretation given to independent claim 1 since the limitation to an
intrinsic transistor is not recited until dependent claim 3. Therefore, claim 1 is entitled to
a broader interpretation than independent claim 6. But for claim 6 the examiner has
relied upon the teaching of Chang with respect to the suggestion to use an intrinsic
transistor. Appellant argues that Chang does not suggest modifying the n-type
transistor of Lee to a p-type transistor. (See brief at page 11.) Again, we find no
limitation in the language of the claim that requires a p-type transistor. We find that the
language of the claim is generic to either a p-type or n-type transistor. Therefore, this
argument is not persuasive. Appellant argues that the examiner’s rejection is based
upon improper hindsight reconstruction. We disagree with appellant and find that the
examiner’s rejection is based upon a broad and correct interpretation of the language of
the claims discussed above. Therefore, we will also sustain the rejection of
independent claim 6 and the claims that depend therefrom.
CONCLUSION
To summarize, the decision of the examiner to reject claim 1 under 35 U.S.C.
§ 102 is affirmed, and the decision of the examiner to reject claims 2-16 under
35 U.S.C. § 103 is affirmed.
Appeal No. 2003-0163
Application No. 09/400,508
10
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
JD/RWK
Appeal No. 2003-0163
Application No. 09/400,508
11
TERRY D. MORGAN
WILLIAMS MORGAN & AMERSON
7676 HILLMONT
SUITE 250
HOUSTON, TX 77040