Ex Parte Esquivel

Board of Patent Appeals and Interferences

Mar 31, 2009

11237499 (B.P.A.I. Mar. 31, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JOHN E. ESQUIVEL
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Appeal 2009-1683
Application 11/237,499
Technology Center 2800
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Decided:1 March 31, 2009
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Before KENNETH W. HAIRSTON, JOHN A. JEFFERY,
and BRADLEY W. BAUMEISTER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-1683
Application 11/237,499

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 (2002) from the Examiner’s
rejection of claims 1-5. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
We affirm.

A. Appellant’s invention
Appellant’s invention relates to a signal switch circuit with backgate
bias protection circuitry (Spec. 2). The switch circuit includes p-channel and
n-channel switches coupled in parallel between a pair of input/output nodes,
an overshoot protection block having three inputs and two outputs, and an
undershoot protection block, also having three inputs and two outputs (Br. 2-
3).

B. The claims
Independent claim 1 is representative.2 It reads as follows:
1. A signal switch circuit comprising:

a p channel switch coupled between a first input/output
node and a second input/output node;

an n channel switch coupled in parallel with the p
channel switch;

an overshoot protection block having a first output
coupled to a backgate of the p channel switch, a first input
coupled to the first input/output node, a second input coupled to
the second input/output node, a third input coupled to a gate of

2 Appellant argues claims 1-5 together as a group. See Br. 5. Accordingly,
we select independent claim 1 as representative.
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the p channel switch, and a second output coupled to a p-rail
voltage node; and
an undershoot protection block having a first output
coupled to a backgate of the n channel switch, a first input
coupled to the first input/output node, a second input coupled to
the second input/output node, a third input coupled to a gate of
the n channel switch, and a second output coupled to an n-rail
voltage node.

C. The references and rejections

The Examiner relies on the following prior art references to show
unpatentability:
Miske US 6,163,199 Dec. 19, 2000

1. Claims 1-5 stand rejected under 35 U.S.C. § 102(b) as anticipated
by Miske.
Rather than repeat the arguments of the Appellant or the Examiner,
we refer to the Brief and the Answer for their respective details.3 In this
decision, we have considered only those arguments actually made by
Appellant. Arguments which Appellant could have made but did not make
in the Brief have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).

3 We refer to (1) the Appeal Brief filed Oct. 31, 2007 (amended Dec. 21,
2007); and (2) the Examiner’s Answer mailed Feb. 11, 2008 throughout this
opinion.

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ISSUE
The Examiner asserts that Miske’s disclosure associated with the
circuit depicted in figure 8 possesses every element of claim 1: (1) the
claimed p-channel switch reads on Miske’s pair of transistors, M0, M1; (2)
the claimed n-channel switch reads on the pair of transistors, M6, M7; (3)
the claimed overshoot block reads on the portion of Miske’s circuit
comprising p-arbiter blocks 100, 101 and inverters I14, I15; (4) the claimed
undershoot block reads on the portion of Miske’s circuit comprising n-
arbiter blocks 102, 103 and inverters I16, I17; and (5) the three input and
two output signals associated with each of the protection blocks read on
various ones of Miske’s depicted inputs and outputs, respectively (Ans. 3-5).
More specifically, the Examiner asserts that the claimed third inputs,
claimed as being respectively coupled to the gate of the p-channel switch
and n-channel switch, read on Miske’s ground input (GND) and high
potential rail input (Vcc), respectively (Ans. 3-5). According to the
Examiner’s interpretation of Miske, under appropriate biasing of the logic
signal (OEN), either the GND input is “coupled” to the p-channel switch
gates M0, M1 indirectly via inverters I14, I15, or alternatively, the Vcc input
is “coupled” to the n-channel switch gates M6, M7 indirectly via inverters
I16, I17 (Ans. 3-5).
Appellant only argues:
[Miske] does not disclose a third input of an overshoot or
undershoot protection circuit coupled to the gate of the P
channel or N channel switch. The only thing coupled to the
gates of the P channel (M0 and M1, in Figure 8) and N channel
(M6 and M7, in Figure 8) switches in [Miske] is the output of
inverters I14, I15, I16 and I17, in Figure 8. The outputs of
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[these inverters] are not inputs of an overshoot or undershoot
protection circuit.

(Br. 5). While not expressly stated, we understand this argument to further
imply that the term “coupled” of claim 1 must be interpreted narrowly,
requiring that the third inputs be “directly coupled” to the respective gates of
the channel switches without the presence of any intervening inverters.
The issue before us, then, is whether Appellant has shown that the
Examiner erred in interpreting the claim term, “coupled,” to mean “at least
indirectly coupled.”

FINDING OF FACT
The record supports the following Findings of Fact (FF) by a
preponderance of the evidence:
1. The Specification does not provide any express definition for the
claim term, “coupled.”

PRINCIPLES OF LAW
1. “A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of California, 814
F.2d 628, 631 (Fed. Cir. 1987).
2. Although the claims are interpreted in light of the specification,
limitations from the specification are not read into the claims. In re Van
Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
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3. Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006).

ANALYSIS
It is well settled that during examination of a patent application,
pending claims are given their broadest reasonable construction consistent
with the specification. In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969);
In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In
the present case, the Examiner explains that the third input for the overshoot
and undershoot protection blocks read on Miske’s low potential power rail
GND and high potential power rail Vcc, respectively (Ans. 3). The
Examiner provides a reasonable rationale for interpreting these inputs to be
coupled to the respective switch gates: “when OEN is logic Low, inverters
I14 & I15 provide an electrical path connected from low-potential power rail
GND to the gate of p-channel switch through the inverters I14 & I15” and
“when OEN is logic High, inverters I16 & I17 provide an electrical path
connected from high-potential power rail Vcc to the gate of n-channel switch
through the inverters I16 & I17” (Ans. 3-4). Accordingly, the Examiner has
established a prima facie showing of anticipation, based upon a reasonable
interpretation of the term “coupled:” to wit, “at least indirectly coupled.”
Therefore, the burden has shifted to the Appellant to show that the
Examiner’s interpretation of “coupled” was unreasonably broad. See Kahn,
441 F.3d at 985-86 (noting that Appellant has the burden on appeal to the
Board to demonstrate error in the Examiner’s position).
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In response, Appellant only argues that Miske’s GND and Vcc lines
can not read on the third inputs, implicitly because they are not directly
coupled to the respective switch gates without any intervening components.
However, the Specification does not provide any express definition for the
claim term, “coupled” (FF 6). Further, Appellant provides absolutely no
reasoning or evidence to support the assertion that one of ordinary skill in
the art would find the more narrow construction, “directly coupled without
any intervening components,” to be the broadest reasonable interpretation of
“coupled.”4 As nothing in the record suggests that the Examiner’s broader
interpretation of “coupled” is unreasonable, we find Appellant’s argument to
be unpersuasive.

CONCLUSION OF LAW
The Appellant has not shown that the Examiner erred in interpreting
the claim term, “coupled,” to mean “at least indirectly coupled.” As such,
Appellant has not shown that the Examiner erred in rejecting claims 1-5
under §102.

DECISION
We sustain the Examiner's rejection with respect to all pending claims
on appeal. Therefore, the Examiner’s rejection of claims 1-5 is affirmed.

4 In fact, the broader construction comports with the ordinary and customary
meaning of “electrically coupled.” See, e.g., US 2003/0065875 A1, at ¶
0021 (noting that “the term ‘couple’ or ‘couples’ is intended to mean either
an indirect or direct electrical connection”) (emphasis added).
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

KIS

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