Ex Parte Gaeta et al

Board of Patent Appeals and Interferences

Jun 2, 2009

10931469 (B.P.A.I. Jun. 2, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARCO GAETA, GIACOMINO BOLLATI,
and MARCO BONGIORNI
____________

Appeal 2008-006344
Application 10/931,469
Technology Center 2800
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Decided:1 June 2, 2009
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Before KENNETH W. HAIRSTON, JOSEPH F. RUGGIERO,
and JOHN A. JEFFERY, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

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 2008-006344
Application 10/931,469

2
DECISION ON REQUEST FOR REHEARING
Appellants, pursuant to 37 C.F.R. § 41.52, have submitted a timely
Request for Rehearing dated March 23, 2009 (hereafter the “Request”),
requesting rehearing of our original decision in this appeal dated January 21,
2009. The Examiner rejected: (1) claims 6-27 under 35 U.S.C. § 112,
second paragraph as being indefinite; (2) claims 6, 8, 9, 16, 17, 19, 20, 22,
23, 25, and 26 under 35 U.S.C. § 103(a) as being as being unpatentable over
Helfenstein and Chaiken; and (3) claims 7, 10-15, 18, 21, 24, and 27 under
35 U.S.C. § 103 as being unpatentable over Helfenstein, Chaiken, and Iorga.
In that decision, we affirmed the rejection of claims 6-27 under 35 U.S.C.
§ 112, second paragraph and did not reach the merits of the rejections under
35 U.S.C. § 103 because of the indefiniteness of the claims.
We have reconsidered our opinion of January 21, 2009 in light of
Appellants’ comments in the Request, and we find no errors therein. We,
therefore, decline to change our prior decision for the following reasons.
In the January 21, 2009 Opinion, we defined the term “node” since no
definition was provided by Appellants or the Examiner. See generally
Specification, the Appeal Brief filed January 17, 2007, and the Examiner’s
Answer. As we indicated in the decision, a “node” is “[a] point at which two
or more elements have a common connection”2 or “[t]he terminal point at
which two or more branches of a circuit meet, or a point that is common to
two circuits.”3 Thus, we relied on an electrical engineering circuit textbook
and an electronics dictionary to provide the ordinary and customary meaning

2 William H. Hayt, Jr. & Jack E. Kemmerly, Engineering Circuit Analysis 34
(3rd ed. 1978).
3 Stan Gibilisco, The Illustrated Dictionary of Electronics 477 (8th ed.
2001).
Appeal 2008-006344
Application 10/931,469

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of a “node” as understood by an ordinarily skilled artisan. See Phillips v.
AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (citations
omitted) (noting “the words of a claim ‘are generally given their ordinary
and customary meaning.’”); see also In re Am. Acad. Of Sci. Tech Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004) (internal quotation marks and citations
omitted) (noting a claim is given its broadest reasonable construction “in
light of the specification as it would be interpreted by one of ordinary skill in
the art.”) Based on these definitions, we concluded that Figure 2 of
Appellants’ disclosure only shows two nodes connecting M1 and M2 and
not four as required in claim 1. See Opinion 8-9 (discussing and labeling the
two nodes in Figure 2).
In response, Appellants argue that transistors of M1 and M2 in Figure
2 are field effect transistors (FETs) and the gate of each FET is a “control
node.” Request 4. Appellants contend that a control node is a generic term
used to describe a transistor, “as the base of a bipolar transistor is also
commonly referred to as its control node.” Id. However, Appellants have
provided no support for this position. Arguments made by counsel do not
take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602
(CCPA 1965); see also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
Therefore, without any supporting evidence, Appellants have not persuaded
us that the ordinary and customary meaning of a “control node” to a person
of ordinary skill in the art would include a gate of a FET.
Appellants also argue that we have found a “control node” and “input
node” to have the same meaning. Request 4. We do not agree. Using the
customary meaning of the term, one node, control or otherwise, must be
located between the transistors of M1 and M2 so as to define a point where
Appeal 2008-006344
Application 10/931,469

4
two elements (e.g., (a) left transistor of M1 and right transistor of M2 or (b)
right transistor of M1 and left transistor of M2) have a common connection.
Moreover, neither the Specification nor claim 6 defines a control node
distinct from the input node. See generally Specification and claim 6 in the
Appendix of the Appeal Brief filed January 17, 2007. Thus, claim 6 does
not exclude an interpretation that the control nodes are located as shown in
Figure 2 on page 8 of the Opinion.
Also, claim 6 recites “a second differential pair of transistors . . .
comprising . . . respective control nodes connected in parallel to the control
nodes of said first differential pair of transistors . . . .” Appellants argue that
the control nodes (e.g., gates of M2) of the second differential pair of
transistors are in parallel with the control nodes (e.g., gates of M1) of the
first differential pair of transistors. Request 5. However, apart from
Appellants’ mere assertions, we have no evidence before us proving that the
gates of the transistors (e.g., M1 and M2) are “nodes” under the ordinary and
customary meaning of the term, let alone “control nodes” as Appellants
assert. Notably, claim 6 does not recite a gate, and absent any evidence that
a gate is a “node” as understood in the art, determining whether Figure 2 of
the present disclosure shows the gates of transistors (e.g., M2) are in parallel
with the gates of other transistors (e.g., M1) is tangential to the issues before
us.
Lastly, Appellants discuss the “control node” limitation found in
claims 6-15. Request 2-5. Claims 16-27 recite a “control terminal” and not
a “control node.” Since the “control terminal” limitations are not addressed
in the Request, we incorporate our previous discussion in the January 21,
2009 Opinion by reference for these claims. See Opinion 10-11.
Appeal 2008-006344
Application 10/931,469

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We have carefully considered the arguments raised by Appellants in
the Request, but the arguments are not persuasive that the original decision
was in error. We are still of the view the invention set forth in claims 6-27
remains indefinite based on the record before us now and in the original
appeal.
We have granted the Request to the extent that we have reconsidered
our decision of January 21, 2009, but we deny the request with respect to
making any changes therein.

REHEARING DENIED

pgc

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