Ex Parte Cohen

Patent Trial and Appeal Board

Sep 29, 2017

13630181 (P.T.A.B. Sep. 29, 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.
13/630,181 09/28/2012 ISAAC COHEN TI-71526 8228
23494 7590 10/03/2017
TEXAS INSTRUMENTS INCORPORATED
P O BOX 655474, M/S 3999
DALLAS, TX 75265
EXAMINER
TRAN, NGUYEN
ART UNIT PAPER NUMBER
2838
NOTIFICATION DATE DELIVERY MODE
10/03/2017 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):
uspto@ti.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PATENT TRIAL AND APPEAL BOARD
Ex parte ISAAC COHEN1
Appeal 2016-006585
Application 13/630,181
Technology Center 2800
Before MARK NAGUMO, CHRISTOPHER L. OGDEN and
DEBRA L. DENNETT Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Texas Instruments Incorporated (“TI”) timely requests rehearing2 of
our Decision3 affirming the rejection of all pending claims 1—20. We have
considered TI’s arguments but we decline to grant the relief requested.
1 The applicant under 37 C.F.R. § 1.46, and hence the appellant under
§ 134(a), is the real party in interest, identified as Texas Instruments
Incorporated (“TI”). (Appeal Brief, filed 5 November 2015 (“Br.”), 1.)
2 Request for Rehearing Under 37 C.F.R. § 41.52, 14 September 2017
(“Request,” cited as “Req.”).
3 Decision communicated 19 July 2017 (cited as “Op.”).
Appeal 2016-006585
Application 13/630,181
OPINION
TI urges we adopted new technical facts by applying a new technical
argument, namely that “the claims, properly interpreted, do not exclude the
capacitor Cout in the circuit described by Huang.” (Request 1, quoting
Op. 11,11. 4—7 (emphasis by TI omitted).) Accordingly, in TI’s view, they
are entitled to submit new evidence and arguments. (Req. 2,1. 8.)
We do not agree that we applied a new technical argument or that we
adopted new technical facts. The Primary Examiner set out an equivalent
claim interpretation in the Final Rejection, stating, “[similarly, Huang
discloses (see figure 2 below) a tank circuit of the converter in figure 2
having a capacitor Cout connected to the diode D1 and couplable in parallel
to the load RL.” (FR 3, last sentence.) The Examiner presented an
annotated version of Figure 2 with the added legend “Tank Circuit” labelling
a dotted box enclosing part of the circuit including the disputed
capacitor Cout. The Examiner maintained this interpretation in the Answer.
(Ans. 3, last full para., through 4, first full para.) Our somewhat more
detailed discussion further explains, but does not change the thrust of the
rejection maintained by the Examiner.
Nonetheless, we observe that TI has submitted an excerpt from a
textbook, Erikson,4 and a definition from a technical dictionary.5 Our
reviewing court has instructed that “technical treatises and dictionaries . . .
4 R.W. Erickson, Fundamentals of Power Electronics, 1st ed., (1997),
chapter 19, page 6, showing a labeled diagram of a dc-high-frequency-ac
inverter.
5 Christopher J. Booth, Ed., The New IEEE Standard Dictionary of
Electrical and Electronics Terms, 5th ed. (1993).
2
Appeal 2016-006585
Application 13/630,181
are worthy of special note. Judges are free to consult such resources at any
time . . . and may also rely on dictionary definitions when construing claim
terms . . . Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 n.6,
(Fed. Cir. 1996).
The difficulty with these references—and with TI’s arguments
(Req. 2—3), which are more detailed than those presented previously—is that
while they are not inconsistent with the definitions advanced by TI, they do
not define the term “tank circuit.” Claim 1 characterizes the tank circuit as
“having an inductor and a capacitor . . . .” (Claims App., Br 13; emphasis
added). The transitional term “having,” while not necessarily “open,” like
the term of art “comprising,” is not necessarily closed, like the term of art
“consisting of.” See, e.g., Crystal Semiconductor Corp. v. Tritech
Microelectronics Int’l, Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001) (“the term
‘having’ does not convey the open-ended meaning as strongly as
‘comprising.’ ‘Having,’ for instance, does not create a presumption that the
body of the claim is open. Therefore, this court examines the claim in its
full context to determine whether Crystal’s use of ‘having’ limits claim 1 to
its recited elements.”) We engaged in such a consideration (e.g., Op., para,
bridging 10—11) and concluded that, in light of the Specification and the
evidence and arguments of record, the term “resonant tank circuit” should be
interpreted broadly.
In the present posture, in which TI as the appellant bears the burden of
demonstrating harmful error in the decision below,6 we decline to alter our
6 The Federal Circuit has explained that on appeal, the appellant must not
only show the existence of error, but also that the error was harmful because
it affected the decision below. In re Chapman, 595 F.3d 1330, 1338 (Fed.
3
Appeal 2016-006585
Application 13/630,181
Decision in response to the newly proffered evidence, which again, although
not inconsistent with TI’s interpretation, is not definitive. We are well
aware of our lack of expertise and familiarity with this art that would arise
from daily contact with it in our work, and therefore decline to inject in the
first instance our own impressions that are based on our limited view of the
art. Therefore, in the event of further examination, our Decision should not
be read as controlling. Rather, as our reviewing court has instructed
repeatedly,
[a]n earlier decision should not... be considered as set in
concrete, and applicant’s rebuttal evidence then be evaluated
only on its knockdown ability. Analytical fixation on an
earlier decision can tend to provide that decision with an
undeservedly broadened umbrella effect. ... [A] final finding
of obviousness may of course be reached, but such finding
will rest upon evaluation of all facts in evidence,
uninfluenced by any earlier conclusion reached by an earlier
board upon a different record.
In re Piasecki, 745 F.2d 1468, 1472-73 (Fed. Cir. 1984), quoting In re
Rinehart, 531 F.2d 1048, 1052 (CCPA 1976). The search here is not for an
absolute and rigorous definition, the existence of which is unlikely in a
practical field. Rather, the search is for how a person of ordinary skill in the
art would have understood the term “tank circuit” as used in the claims, in
light of the supporting disclosure, and whether other elements, such as a
capacitor that functions as a filter, would nonetheless be regarded as being
within the scope of the term “tank circuit.”
Cir. 2010), quoting Shinseki v. Sanders, 556 U.S. 396, 409 (2009) (“the
burden of showing that an error is harm fill normally falls upon the party
attacking the agency’s determination.”).
4
Appeal 2016-006585
Application 13/630,181
In conclusion, we have considered TTs request for reconsideration
and the evidence and arguments submitted, but decline to alter our Decision.
C. Order
It is ORDERED that the request for rehearing of the rejection of
claims 1—20 is denied.
DENIED
5