Ex parte Fujisaki

Board of Patent Appeals and Interferences

Nov 17, 1998

08176287 (B.P.A.I. Nov. 17, 1998)

Application for patent filed December 30, 1993. According to appellant, the1
application is a continuation of Application 07/847,998, filed April 21, 1992.
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publication in a law journal and (2) is not binding precedent of the Board.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. 39
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte HIROTAKA FUJISAKI
__________
Appeal No. 95-3742
Application 08/176,2871
___________
HEARD: November 4, 1998
___________
Before HAIRSTON, KRASS, and TORCZON, Administrative Patent
Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 6. In an Amendment After Final (paper number 25),
claims 1 and 4 were amended, and claims 2 and 3 were canceled.
Accordingly, claims 1 and 4 through 6 remain before us on
appeal.
Appeal No. 95-3742
Application 08/176,287
2
The disclosed invention relates to a high frequency
voltage controlled oscillator that includes a microstrip line
resonator,
and a trimming stub for adjusting the free-running frequency
of the oscillator by changing the inductance of the resonator.
The triming stub is located parallel to the resonator.
Claim 1 is the only independent claim on appeal, and it
reads as follows:
1. A high-frequency voltage controlled oscillator
comprising:
a capacitance circuit comprising a voltage controlled
variable capacitance element, a fixed capacitance element and
means for applying a control voltage to said voltage
controlled variable capacitance element;
a microstrip line serving as a resonator, said microstrip
line having a first end connected to said capacitance circuit
and a second end connected to ground; and
a trimming stub for adjusting a free-running frequency,
said trimming stub being provided in parallel with said
microstrip line so that an oscillation frequency of said high-
frequency voltage controlled oscillator is controlled in
accordance with said control voltage and said free-running
frequency is finely adjusted by using said trimming stub to
change an inductance of said microstrip line.
The reference relied on by the examiner is:
Stajcer 4,818,956 April 4, 1989
Appeal No. 95-3742
Application 08/176,287
3
Clams 1 and 4 through 6 stand rejected under 35 U.S.C. §
103 as being unpatentable over admitted prior art Figures 2
and 3 in view of Stajcer.
Reference is made to the final rejection, the brief and
the answer for the respective positions of the appellant and
the examiner.
OPINION
We have carefully considered the entire record before us,
and we will reverse the obviousness rejection of claims 1 and
4 through 6.
Stajcer discloses (column 2, lines 10 and 11) a plurality
of tuning pads 28 located adjacent to metalization 24 (Figure
2). Based upon this disclosure in Stajcer, the examiner
contends (final rejection, pages 2 and 3) that:
[I]t would have been obvious to
one having ordinary skill in the
art at the time the invention was
made to use trimming stubs in
parallel with strip line L1
[admitted prior art Figure 3]
instead of in series, because the
two ways of providing trimming
stubs are functional equivalents.
Further, if it was desired to
ground one end of strip line L1,
as shown in applicant’s Fig. 1,
then parallel trimming stubs
would be the logical choice since
Appeal No. 95-3742
Application 08/176,287
4
series trimming stubs could not
be used.

Appellant argues (Brief, page 3) that the trimming stub
in admitted prior art Figure 3 is in series with the
microstrip line resonator, and that it would be “impossible to
connect one end of the microstrip line to ground.” With
respect to Stajcer, appellant argues (Brief, page 3 and 4)
that “[t]he device of Stajcer is not a voltage controlled
oscillator,” and that:
As shown in Fig. 2 of Stajcer,
tuning pads 28 are provided alongside
a low-impedance transformer including
metallization 24. This low-impedance
transformer is not provided as a
microstrip line resonator for
adjusting an oscillation frequency,
but is instead provided together with
open-circuited microstrip stub 26 for
matching an output of the FET relative
to a 50-ohm output transmission line.
Accordingly, tuning pads 28 have no
role in adjusting an oscillation
frequency, but instead are provided
for matching the 50-ohm output
transmission line to maximize the
output signal.
Appellant then concludes (Brief, pages 4 and 5) that:
As explained above, Stajcer’s
tuning pads 28 are provided for
matching the output impedance, but not
for adjusting the frequency. Thus,
the combination suggested in the Final
Appeal No. 95-3742
Application 08/176,287
5
Rejection would not have resulted in
the instant claimed invention.
Indeed, because of the above-noted
differences between the device of
Stajcer and a voltage-controlled
oscillator, a person having ordinary
skill in the art would not have been
taught that Stajcer’s tuning pads
would have any use in a voltage-
controlled oscillator like that of the
appellant’s admitted prior art. As a
consequence, the references provide no
motivation to make the combination
suggested in the Final Rejection.
The Final Rejection, at the
bottom of page 2, argues that if it
were desired to ground one end of
strip line L1 of Fig. 1 of the instant
application, parallel trimming stubs
would be the logical choice. However,
because the Final Rejection includes
no showing that a person having
ordinary skill in the art would have
desired to ground one end of strip
line L1, this argument rests on
impermissible hindsight. In addition,
even if a person having ordinary skill
in the art so desired, neither of the
applied references teaches or suggests
even the possibility of arranging
trimming stubs in parallel with a
microstrip line serving as a
resonator.
The penultimate sentence in appellant’s conclusion is in
error because Figure 2 of the admitted prior art shows a
grounded microstrip line L1. The ultimate sentence in
appellant’s conclusion is, however, correct because “neither
Appeal No. 95-3742
Application 08/176,287
6
of the applied references teaches or suggests even the
possibility of arranging trimming stubs in parallel with a
microstrip line serving as a resonator.” Appellant’s
conclusion concerning the trimming stubs or tuning pads 28 in
Stajcer is correct because the tuning pads 28 “are located
adjacent to the metalization 24" (column 2, lines 10 and 11)
to maximize the output power from the drain 22 (column 4,
lines 11 through 13), and not to adjust an oscillation
frequency.
In summary, it is apparent that the only teaching or
suggestion of a grounded microstrip resonator with a parallel
trimming stub is appellant’s disclosed and claimed invention,
and such teachings are not available to the examiner in the
formulation of a prima facie case of obviousness. Thus, the
obviousness rejection of claims 1 and 4 through 6 is reversed.
DECISION
The decision of the examiner rejecting claims 1 and 4
through 6 under 35 U.S.C. § 103 is reversed.
REVERSED
Appeal No. 95-3742
Application 08/176,287
7
Kenneth W. Hairston )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Errol A. Krass )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Richard Torczon )
Administrative Patent Judge )
KWH/kis
James E. Ledbetter, Esq.
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