Ex Parte Fish

Board of Patent Appeals and Interferences

May 18, 2009

11154436 (B.P.A.I. May. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ADAM NICHOLAS FISH
____________

Appeal 2009-1417
Application 11/154,436
Technology Center 2800
____________

Decided:1 May 18, 2009
____________

Before MAHSHID D. SAADAT, KARL D. EASTHOM,
and THOMAS S. HAHN, Administrative Patent Judges.

EASTHOM, 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 2009-1417
Application 11/154,436

2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1, 7-9 and 15 (App. Br. 4).2 The Examiner allowed
claims 16-20 and objected to claims 2-6 and 10-14 as being dependent upon
a rejected base claim, but otherwise allowable if rewritten in independent
form. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s current conveyer circuit 220 improves upon prior art
current conveyer circuits such as 120 in a receiver by providing an increased
input common mode voltage (Figs. 1, 2; Spec. ¶ 0013). Appellant’s
conveyor circuit comprises a PMOS transistor having a source coupled to an
operating voltage Vdd and a drain coupled to a current source. The PMOS
gate is connected to a transmission line 210 via a matching resistor R. (Fig.
2; Spec. ¶¶ 0015, 0028-0029).
Exemplary claim 1 follows:
1. An apparatus for providing an input common mode voltage in a
receiver circuit configured for coupling to a transmission line through a
matching resistor, wherein said apparatus comprises:
an operating voltage Vdd; and
a current conveyor circuit comprising a P-type metal oxide
semiconductor transistor having (1) a source coupled to said operating
voltage Vdd, and (2) a drain coupled to a first constant current source, and
(3) a gate coupled to said transmission line through said matching resistor.

2 Appellant’s Brief (filed Dec. 26, 2007) “(App. Br.”) and Reply Brief (filed
May 15, 2008) (“Reply Br.”) and the Examiner’s Answer (mailed Mar. 10,
2008) (“Ans.”) detail the parties’ positions.
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The Examiner relies on the following prior art reference:

Tan US 5,917,368 Jun. 29, 1999

The Examiner also relies upon Appellant’s admitted prior art Figure 1
and corresponding descriptions in the Specification (“APA”).
The Examiner rejected claim 1 as anticipated under 35 U.S.C.
§ 102(b) based on Tan.
The Examiner rejected claims 7-9 and 15 as obvious under 35 U.S.C.
§ 103(a) based on Tan and the APA.

ISSUES
Did Appellant demonstrate that the Examiner erred in finding that Tan
discloses a transmission line and a matching resistor as set forth in claim 1?
Did Appellant demonstrate that the Examiner erred in finding that it
would have been obvious to use Tan’s current conveyor circuit to replace the
APA current conveyor circuit as set forth in claim 7?3

FINDINGS OF FACT (FF)
1. Tan teaches a PMOS transistor M2 coupled to a current source Ibias.
Tan’s circuit is coupled to a resistor R which is coupled to an input voltage
signal Vi. The input voltage signal is coupled inter alia to transistors M0 and

3 Appellant (App. Br. 17) group claims 7-9 and 15 together. Therefore,
pursuant to 37 C.F.R. § 41.37(c)(1)(vii), claim 7 is selected as representative
of this group.
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M1 which are coupled by an electrical connecting line to a resistor Rf.4
Tan’s circuit converts input analog voltage signals Vi at R to digital current
signals Io at the output. (Abstract, Figs. 2, 3).
2. Tan’s converter circuit avoids a demand on the linearity of passive
components, and states that the converter “can be easily implemented in a
CMOS device” (Abstract, col. 3, ll. 32-43). Tan’s converter integrates high-
voltage and low-voltage circuits and a filter on the same chip at low cost
(id., col. 1, ll. 47-55).
3. Tan’s filter, a low pass filter, is comprised of resistor Rf and a
capacitor Cf. Selecting the value of Rf and Cf determines the bandwidth and
pole of the filter. The pole frequency is also dependent on parasitic
capacitances Cp of the gates of transistors M1 and M2 and the
transconductance of transistor M1. (Tan, Fig. 2, col. 3, ll. 16-54).
4. Appellant admits that the circuit in Figure 1 represents a prior art
mobile pixel link (MPL) receiver. The receiver includes a current conveyor
coupled to a transmission line 110 and a matching resistor R, each having a
resistance of fifty ohms. ( Spec. ¶¶ 0004, 0005; Fig. 1).
5. Appellant implies that the invention is directed to handheld cellular
phones incorporating digital cameras and data service features (Spec.
¶ 0002).
6. One definition of “transmission line” includes: “A coaxial cable,
waveguide or other system of conductors that transfers electrical signals
from one location to another. Sometimes shortened to: line.” Collins

4 The Examiner relies on this line as corresponding to the “transmission
line” of claim 1 (Ans. 3).
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English Dictionary (2000), avail. at
http://www.xreferplus.com/entry.do?id=2703414.
7. One definition of “impedance matching” includes: “The use of
electric circuits, transmission lines, and other devices to make the impedance
of a load equal to the internal impedance of the source of power, thereby
making possible the most efficient transfer of power.” The American
Heritage® Dictionary of the English Language: Fourth Edition (2000), avail.
at http://www.bartleby.com/61/53/I0055300.html.

PRINCIPLES OF LAW
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Under § 102, anticipation is established when a single prior art
reference discloses expressly or under the principles of inherency each and
every limitation of the claimed invention. Atlas Powder Co. v. IRECO, Inc.,
190 F.3d 1342, 1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79
(Fed. Cir. 1994).
Under § 103, KSR Int’l v. Teleflex, Inc., 550 U.S. 398 (2007), after
outlining certain principles to demonstrate obviousness, stated:
Following these principles may be more difficult in other
cases than it is here because the claimed subject matter may
involve more than the simple substitution of one known
element for another or the mere application of a known
technique to a piece of prior art ready for the improvement.
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
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skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue. . . . “[T]here must be some
articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness” . . . . [H]owever,
the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.

Id. at 417-18 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).
If the Examiner makes such a demonstration, the burden then
shifts to the Appellant to overcome the prima facie case with
arguments and/or evidence. Obviousness is then determined on the
basis of the evidence as a whole and the relative persuasiveness of the
arguments. See Oetiker, 977 F.2d at 1445.
During examination of a patent application, the PTO “is
obligated to give claims their broadest reasonable interpretation
during examination.” In re Am. Acad. Of Sci. Tech. Ctr., 367 F.3d
1359, 1369 (Fed. Cir. 2004). “[T]he words of a claim ‘are generally
given their ordinary and customary meaning.’” Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal
citations omitted). “‘[C]laims must be construed so as to be consistent
with the specification, of which they are part.’” Id. at 1316 (citation
omitted). However:
Though understanding the claim language may be aided by the
explanations contained in the written description, it is important
not to import into a claim limitations that are not part of the
claim. For example, a particular embodiment appearing in the
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written description may not be read into a claim when the claim
language is broader than the embodiment.

Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir.
2004).
“It is the applicant’s burden to precisely define their invention,
not the PTO’s.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997)
(“The problem in this case is that the appellants failed to make their
intended meaning explicitly clear.”).

ANALYSIS
Appellant argues (App. Br. 15, 16) that the Examiner erred in finding
that Tan anticipates claim 1, contending that Tan fails to disclose a
“transmission line” and a “matching resistor.” The Examiner found that Tan
discloses a transmission line between Rf and the transistor M0 (see FF 1,
n.4). Appellant responds (Reply Br. 2) as follows:
In the field of electrical engineering the term “transmission
line” has a generally understood meaning. That meaning may
be found by looking in the IEEE Standard Dictionary of
Electrical and Electronics Terms. A “transmission line” is a
line that is used for electric power transmission or signal power
transmission. The unusual interpretation that has been
suggested by the Examiner is that a “transmission line” is a line
or wire that transmits an electrical signal.
According to Appellant’s argument,5 the only implied difference
between Appellant’s transmission line and Tan’s is that Appellant’s line
provides “signal power transmission” while Tan’s “transmits an electrical
signal.” Appellant’s argument provides no meaningful distinction between

5 Appellant does not provide the full IEEE definition referenced in the
passage above.
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the two transmission lines. Tan’s circuit accepts and transmits electrical
signals through Rf (FF 1-3). Therefore, Tan’s transmission line carries
power (see id.). As such, Appellant fails to meet the burden on appeal.
The Examiner’s finding (Ans. 4) regarding Tan’s “transmission line”
also comports with the usual meaning of the term (see FF 6). Further,
contrary to Appellant’s arguments (Reply Br. 3), the Examiner’s finding is
consistent with Appellant’s Specification, because Appellant’s disclosed
transmission line similarly implies a data transmitting line inside a cellular
telephone (see FF 5). Under an alternative finding, for similar reasons, the
input analog voltage signal Vi to Tan’s converter also implies a transmission
line at the input to R coupled to the matching resistor Rf (FF 1, 6).
Appellant’s submission (Reply Br. 3) “that the burden of introducing
evidence to change a well accepted definition of the term ‘transmission line’
is on the Examiner” improperly shifts the burden and assumes Appellant has
provided a “well accepted definition” that the Examiner has changed. “It is
the applicant’s burden to precisely define their invention, not the PTO’s.” In
re Morris, 127 F.3d at 1056 (“The problem in this case is that the appellants
failed to make their intended meaning explicitly clear.”).
Appellant’s argument (App. Br. 15) that “the resistor Rf . . . is not a
matching transistor [sic] for a transmission line” is not commensurate in
scope with claim 1. As the Examiner reasoned, claim 1 does not recite “‘a
matching resistor for a transmission line’” (Ans. 4). Therefore, any implied
significance Appellant attaches to the definition of “matching resistor” based
on its disclosed relationship in a preferred embodiment to a transmission
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line6 does not apply to the broader term “matching resistor” as set forth in
the claim. See Superguide Corp., 358 F.3d at 875 (quoted supra).
Hence, as the Examiner found (Ans. 4), “[t]here are many type[s] of
matching resistors: input matching resistor, output impedance matching
resistor . . . etc.” and Tan’s resistor “matches its desired impedance.”
Appellant fails to explain how this finding is in error or why it is not
consistent with the Specification. Therefore, Appellant fails to meet the
burden on appeal of demonstrating error with respect to this limitation.
Moreover, the Examiner’s finding regarding “matching resistor” comports
with the normal meaning of the term (see FF 7). That is, Tans’ resistor Rf
determines, in part, the pass-band and pole of a Rf Cf low-pass filter based
on other relative circuit component impedances; therefore, Rf determines, in
part, which signal frequencies (i.e., low frequencies) pass unabated through
the filter (and transmission line/circuit) (FF 3). Thus, Rf “matches” other
converter circuit components “making possible the most efficient transfer of
power” (FF 7) of lower signal frequencies.
In other words, the Examiner’s findings regarding Tan’s matching
resistor and transmission line are consistent with the Specification which
does not preclude interpretations consistent with known art-specific
definitions “when the claim language is broader than the embodiment,” see
Superguide Corp. 358 F.3d at 875, i.e., the disclosed embodiment matching
a resistor to a transmission line (n.6, supra). Accordingly, we will sustain
the Examiner’s rejection of claim 1.

6 See Spec. ¶ 0028 (matching resistor and transmission line of 50 ohms
each).
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With respect to claims 7-9 and 15, Appellant argues that the Examiner
erred in finding that Tan’s teaching of cost savings (Ans. 5, FF 2) is a legally
sufficient motivation to combine Tan with the APA. Appellant also argues
(App. Br. 18-20) that the Examiner erred by failing to make an explicit
finding of the level of ordinary skill in the art.
Contrary to the arguments, the Examiner did not rely on cost savings
alone. Implicit in the Examiner’s findings were the “interrelated teachings”
of Tan and the APA, with “demands . . . present in the market place” and
“the background knowledge possessed by a person having ordinary skill in
the art.” See KSR, 550 U.S. at 418.7
The Examiner found, inter alia, (Ans. 5) that “one skilled in the art
would have [sic] motivated to use Tan’s current conveyor for the prior [art]
figure 1’s current conveyor in order to take advantage of the benefit of Tan’s
current conveyor and to save cost.” Thus, the Examiner implicitly found the
skill level to involve sufficient technical background and education
necessary to enable recognition of the interrelated similarities of the two
MOS current conveyor circuits and the cost benefits of substituting Tan’s
circuit, which beneficially includes an integrated filter, for the APA circuit.
Appellant does not challenge the Examiner’s finding that the two circuits are
each “current conveyor” circuits nor the cost benefit finding (as recognized

7 While the Court stated that “[o]ften, it will be necessary for a court to look
to [these factors] all in order to determine whether there was an apparent
reason to combine the known elements in the fashion claimed by the patent
at issue,” the sentence preceding the quoted sentence indicates that “[o]ften”
refers to more “difficult cases” in which more than a “simple substitution” is
involved (i.e., cases unlike this case). See Id. at 417-18 (quoted
supra)(emphasis added).
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by skilled artisans). The record supports the Examiner’s findings (see FF 1-
4).
Accordingly, “there was an apparent reason to combine the known
elements in the fashion claimed,” KSR, 550 U.S. at 418, which Appellant
failed to rebut. As such, we will sustain the Examiner’s rejection of claim 7,
and claims 8-9 and 15, which were not separately argued and fall with claim
7.

CONCLUSION
Appellant did not demonstrate that the Examiner erred in finding that
Tan discloses a transmission line and a matching resistor as set forth in claim
1. Appellant also did not demonstrate that the Examiner erred in finding that
it would have been obvious to use Tan’s current conveyor circuit to replace
the APA current conveyor circuit recited in claim 7.

DECISION
We affirm the Examiner's decision rejecting claims 1, 7-9 and 15.
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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