Ex parte Hill

Board of Patent Appeals and Interferences

Aug 15, 2000

08566270 (B.P.A.I. Aug. 15, 2000)

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The opinion in support of the decision being entered today was
not written for publication and is not precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOHN P. HILL
____________
Appeal No. 1998-0165
Application No. 08/566,270
____________
ON BRIEF
____________
Before THOMAS, JERRY SMITH, and BLANKENSHIP, Administrative
Patent Judges.
BLANKENSHIP, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the examiner’s final rejection of Claims 1-6, 10, 11, 14, and
17-19.
We affirm.
BACKGROUND
Appeal No. 1998-0165
Application 08/566,270
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The invention is directed to a frequency shift key
modulating oscillator. Claim 1 is reproduced below.
Appeal No. 1998-0165
Application 08/566,270
We have not considered an initial brief (Paper No. 15) which the1
examiner held to lack compliance with 37 CFR § 1.192.
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1. A system for selectably oscillating at a first or a
second oscillating frequency, the system comprising:
an oscillator for providing an oscillating output; and
a switching device for selecting a first or a second
impedance in response to a select signal having a voltage,
each of said impedances being fixed independently of the
select signal voltage, said oscillating output oscillating at
the first oscillating frequency if said first impedance is
provided and oscillating at the second oscillating frequency
if said second impedance is provided, wherein said switching
device comprises a transistor driven into a saturation mode if
said select signal is at a first voltage and driven into an
off mode if said select signal is at a second voltage.
The examiner relies on the following reference:
Anderson 5,367,537 Nov. 22, 1994
Claims 1-6, 10, 11, 14, and 17-19 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Anderson.
We refer to the Final Rejection (Paper No. 10) and the
Examiner's Answer (Paper No. 19) for a statement of the
examiner's position and to the Brief (Paper No. 18) for1
appellant’s position. Subsequent to the Final Rejection,
amendments have been entered to Claims 5 and 9 (Paper No. 12)
and to Claim 13 (Paper No. 15), consistent with the examiner’s
statement on page 3 of the Answer.
Appeal No. 1998-0165
Application 08/566,270
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OPINION
The rejection of the claims as anticipated by Anderson is
set forth on page 4 of the Final Rejection. According to the
examiner, all limitations are met by the circuitry shown in
Figure 2 of the reference.
Appellant does not submit arguments with respect to
separate patentability of any of the claims. Appellant refers
to substantially identical language appearing in the two
independent claims (1 and 10) on appeal as allegedly
distinguishing over the prior art. (See Brief, page 9.) In
accordance with the arguments, we consider Claims 1 and 10 as
representative of the subject matter on appeal, and decide
disposition on that basis. See 37 CFR § 1.192(c)(7).
Appellant argues that the language which purportedly
distinguishes over the reference sets forth “a switching
device [Claim 1; or a “modulator,” Claim 10] comprising a
transistor driven into a saturation mode if a select signal is
at a first voltage and driven into an off mode if the select
signal is at a second voltage.” (Id.)
Appeal No. 1998-0165
Application 08/566,270
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As stated in the Abstract of the reference, Anderson
discloses a frequency shift keying modulating circuit that
produces two different frequencies depending upon “the state
of a PIN switching diode in parallel with the reactive
element.” Anderson’s detailed description of the invention
discloses how the selection of frequencies is implemented.
[W]ith reference to FIG. 2, dashed block 20
shows a pair of selectable low impedance signal
path[s] from the base of transistor 17 to ground. A
high logic level from data stream 23' on data line
[40] causes transistor switch 29 to turn on
resulting in a forward biased PIN diode 27' through
bias resistors 22 and 28. With PIN diode 27'
conducting, inductor 26' is bypassed as a circuital
element and the effective low impedance signal path
is through SAW transducer 21' [sic, 21]. SAW
transducer 21' [sic, 21] has a natural stand-alone
resonant frequency of nominally 300 MHZ consistent
with the Colpitts oscillator central frequency.
Capacitor 24 is nominally 27 pF and provides for DC
blocking but has no consequential effect upon the
oscillatory loop. A low logic level on data line
23' [sic, 40] causes transistor switch 29 to turnoff
resulting in a non-conducting PIN diode 27'. With
PIN diode 27' not conducting, inductor 26' in
combination with SAW transducer [21] is the
effective low impedance signal path.
Anderson, column 3, lines 18 through 35.
Thus, the “switching device” includes transistor switch
29, which, corresponding to a high and low voltage level from
Appeal No. 1998-0165
Application 08/566,270
The artisan knew that a transistor used as a switch -- as opposed to2
functioning as a linear amplifier -- most commonly operates in saturation mode
when “on.” See, e.g., Raymond B. Yarbrough, Electrical Engineering Reference
Manual, Fifth Edition (1990) at 10-9 (“Most logic circuits use these two
extreme regions [i.e., saturation and cutoff regions for an NPN transistor] to
define the two states needed in binary logic.”)(copy enclosed).
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data stream 23', has an “on” state (saturation mode ) and an2
“off” state. The impedance of the combination including PIN
diode 27' and inductor 26' changes in accordance with the “on”
and “off” state of transistor switch 29. In the terms of
appellant’s Claims 1 and 10, the PIN diode forms a part of the
“first or a second impedance” selected by the “switching
device,” which includes transistor switch 29. The argued
differences between the claims and Anderson are thus found in
the reference.
Appellant’s main argument regarding the reference appears
to be that the Anderson device requires a PIN diode for proper
operation. The argument is simply irrelevant with respect to
the claims as drafted. Appellant appears to be comparing
disclosure to disclosure, rather than addressing the claims at
issue. However, claims are to be given their broadest
reasonable interpretation during prosecution, and the scope of
a claim cannot be narrowed by reading disclosed limitations
Appeal No. 1998-0165
Application 08/566,270
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into the claim. See In re Morris, 127 F.3d 1048, 1054, 44
USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319,
321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989); In re Prater, 415
F.2d 1393, 1404, 162 USPQ 541, 550 (CCPA 1969).
Appellant may also be arguing that the PIN diode in the
reference, rather than the switching transistor, should be
considered as comprising the “switching device” or the
“modulator.” Although the Abstract of Anderson, standing
alone, might suggest that the PIN diode performs the functions
claimed with respect to the “switching device” or “modulator,”
the noted detailed description of Anderson’s disclosure
establishes that circuitry including transistor switch 29
performs the functions recited in appellant’s Claims 1 and 10.
Although it is axiomatic that claims are broader than any
disclosed embodiment, we note another argument that compares
disclosure to disclosure:
Applicant submits that the impedance of his recited
transistor changes depending on the transistor’s
mode of operation (saturation mode or off mode). By
this arrangement, no additional components, such as
inductor 26' or PIN diode 27' of Anderson, are
necessary to facilitate switching between a first
and second oscillator frequency.
Appeal No. 1998-0165
Application 08/566,270
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(Brief, page 10.) The argument is contrary to appellant’s
disclosure. As disclosed, for example, in the specification
at page 31, lines 16 through 23 and in Figure 12, the
combination of at least transistor Q , resistor R , and12 28
capacitor C is necessary for selecting between two different21
impedances and ultimately two different frequencies. In the
sense that inductor 26' and PIN diode 27' are necessary in the
reference “to facilitate switching between a first and second
oscillator
Appeal No. 1998-0165
Application 08/566,270
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frequency,” appellant’s disclosed embodiment requires resistor
R and capacitor C for the same purpose -- as circuit28 21
elements in addition to the transistor which are necessary to
yield the “first” and the “second” impedance.
Since appellant has failed to show that the examiner
erred in the finding of anticipation, we sustain the rejection
of Claims 1 and 10 over Anderson. We also sustain the
rejection of the claims dependent on 1 and 10, as appellant
has not argued their limitations separately.
CONCLUSION
The rejection of Claims 1-6, 10, 11, 14, and 17-19 is
affirmed.
Appeal No. 1998-0165
Application 08/566,270
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
)
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
Appeal No. 1998-0165
Application 08/566,270
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Christopher W. Quinn
Brooks & Kushman P.C.
1000 Town Center, 22nd Floor
Southfield, Michigan 48075
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