Ex parte Bryson et al.

Board of Patent Appeals and Interferences

Mar 27, 1998

08056094 (B.P.A.I. Mar. 27, 1998)

Application for patent filed May 3, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte STEPHEN W. BRYSON,
ALAN T. KONDO and DON N. LEE
_____________
Appeal No.96-0230
Application 08/056,0941
______________
ON BRIEF
_______________
Before THOMAS, JERRY SMITH and BARRETT, Administrative Patent
Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-0230
Application 08/056,094
2
Appellants have appealed to the Board from the examiner’s
final rejection of claims 1 to 20, which constitute all the
claims in the application.
Representative claim 1 is reproduced below:
1. A circuit comprising:
pulse forming means responsive to a data input signal for
providing a pulsed output to an output node, said pulsed output
being timed in accordance with said data input signal and having
high and low voltage levels responsive to respective high and low
reference voltages, said pulse forming means comprising means for
providing charging currents to and discharging currents from said
node; and
means responsive to said high and low reference voltages for
adjusting said charging and discharging currents of said pulse
forming means in accordance with the difference between said high
and low reference voltages.
The following references are relied on by the examiner:
Borrelli 4,070,565 Jan. 24, 1978
Chau et al. (Chau) Re 31,056 Oct. 12, 1982
Murray et al. (Murray) 4,724,378 Feb. 09, 1988
Ugenti 4,837,502 June 06, 1989
After a remand to the examiner from an earlier panel of this
Board, claims 1, 6, 11 and 16 stand rejected under 35 U.S.C. §
102(b) as being clearly anticipated by either Chau, Borrelli,
Murray or Ugenti.
Appeal No. 96-0230
Application 08/056,094
The supplemental reply brief filed on April 10, 1996, in2
response to the remand by the earlier panel of this Board, was
denied entry by the examiner in a communication to appellants
from the examiner on May 2, 1996. As such, we have not
considered it in our deliberations.

3
Their respective dependent claims, claims 2 to 5, 7 to 10,
12 to 15 and 17 to 20, stand rejected under 35 U.S.C. § 103 as
being obvious over each of these references individually.
Rather than repeat the positions of the appellants and the
examiner, reference is made to the briefs and the answers for the
respective details thereof. 2
OPINION
Inasmuch as we find no anticipation of any of the
independent claims 1, 6, 11 and 16 on appeal in light of any one
of the references to Chau, Borrelli, Murray or Ugenti, we reverse
the rejection of these claims under 35 U.S.C. § 102 as well as
their respective dependent claims under 35 U.S.C. § 103.
In reviewing the examiner’s positions, it appears that the
examiner is relying upon inherency in part for the rejections
under 35 U.S.C. § 102 and § 103. We do not agree with the
examiner’s basic position that the structure of each of the four
references relied upon necessarily functions in a manner to
Appeal No. 96-0230
Application 08/056,094
4
achieve the type of adjustability set forth in each independent
claim on appeal. Inherency requires that the type of
adjustability in each independent claim would necessarily or
inevitably occur. In re King, 801 F.2d 1324, 1326, 231 USPQ 136,
138 (Fed. Cir. 1986). Inherency may not be established by
probabilities or possibilities as the examiner appears to be
arguing.
More specifically, independent claims 1 and 6 require in
part some means for adjusting the charging and discharging in
response to a difference between previously recited high and low
reference voltages.
As to each of these two independent claims, our study of the
whole of each of the four references relied upon by the examiner
leads us to find that there is no such difference determination
taught in any one of them. We have also reviewed the individual
portions of each of these references the examiner has made
reference to at the bottom of page 2 of the supplemental
examiner’s answer, but conclude that these identified portions of
Appeal No. 96-0230
Application 08/056,094
5
each of the respective references do not aid us in reaching the
determination of anticipation of claims 1 and 6 on appeal.
Turning lastly to independent claims 11 and 16 on appeal,
each of these claims in some manner recites a means for adjusting
the charging and discharging currents flowing to and from a given
node previously recited in such a manner to optimize slew rate
and overshoot of output driver pulses having selected high and
low voltage levels. These two claims do not recite the
difference determination as a part of the adjusting operation.
Again, even making reference to the portions of the four
references relied upon as pointed out by the examiner at the
bottom of page 2 of the answer, we can find no teaching in the
whole of any of the references for adjusting the charging and
discharging currents in any manner to optimize the slew rates and
overshoots as specified by claims 11 and 16 on appeal. The skew
adjusting circuit 22 in Fig. 1 of Chau does not perform such a
slewing operation. On this point, we are in agreement with
appellants’ basic position. We reach a similar conclusion with
the deskewing operation performed in Fig. 4 of Murray and
discussed beginning at col. 3, line 66.
Appeal No. 96-0230
Application 08/056,094
6
Since we have reversed the rejections of independent claims
1, 6, 11 and 16 under 35 U.S.C. § 102, we find no basis to affirm
the rejection of dependent claims 2 to 5, 7 to 10, 12 to 15 and
17 to 20 under 35 U.S.C. § 103. Therefore, the decision of the
examiner rejecting all claims on appeal is reversed.
REVERSED
)
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Appeal No. 96-0230
Application 08/056,094
7
JERRY SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
LEE E. BARRETT )
Administrative Patent Judge )
Richard M. Sharkansky
Raytheon Co.
Patent Dept.
141 Spring St.
Lexington, MA 02173