Ex Parte HuangDownload PDFPatent Trials and Appeals BoardMay 30, 201813609894 - (D) (P.T.A.B. May. 30, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/609,894 09/11/2012 Mingwei Huang 119829 7590 06/01/2018 Green, Howard, & Mughal LLP 5 Centerpointe Dr. Suite 400 Lake Oswego, OR 97035 UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. Ol.P45691 5984 EXAMINER CHEN, PATRICK C ART UNIT PAPER NUMBER 2842 NOTIFICATION DATE DELIVERY MODE 06/01/2018 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): docketing@ghmip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MINGWEI HUANG Appeal2016-006844 Application 13/609,894 Technology Center 2800 Before ADRIENE LEPIANE HANLON, LINDA M. GAUDETTE, and MICHAEL G. McMANUS, Administrative Patent Judges. McMANUS, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 1-3, 5-13, and 15-23 of Application 13/609,894 under 35 U.S.C. §§ 102(a) and 103(a). Final Act. (July 15, 2014) 2-12. Appellant 1 seeks reversal of the rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6. For the reasons set forth below, we AFFIRM-IN-PART. 1 Intel Corporation is identified as the real party in interest. Appeal Br. 1. Appeal2016-006844 Application 13/609,894 BACKGROUND The present application generally relates to a multi-phase fractional divider. Spec. i-f 1. Multi-phase fractional dividers may be useful in clock generation units which may be a digital phase locked loop (DPLL ). Id. i-f 19. Claim 1 is representative and is reproduced below: 1. An apparatus comprising: a multi-modulus divider; and a digital phase provider to receive a multiphase periodic signal derived from an oscillator, wherein the digital phase provider is operable to rotate phases of the multiphase periodic signal to generate an output which is received by the multi-modulus divider, wherein the digital phase provider operates using a clock signal having periodic pulses with frequency which is same as frequency of the multiphase periodic signal, and wherein the digital phase provider comprises a bidirectional phase selector which includes a shift register, and wherein the bidirectional phase selector is operable to dynamically change direction of rotation of the phases of the multiphase periodic signal in either forward or backward direction. Appeal Br. 21 (Claims App.). 2 Appeal2016-006844 Application 13/609,894 REJECTIONS The Examiner maintains the following rejections: 1. Claims 21-23 are rejected under 35 U.S.C. § 102(b) as anticipated by Kim2 . Final Act. 2-3. 2. Claims 1-3, 5-7, 10-13, 15, and 16 are rejected under 35 U.S.C. § 103(a) as obvious over Kim in view ofNorman3. Id. at 3---6. 3. Claims 1, 7, 9-11, and 16-17 are rejected under 35 U.S.C. § 103(a) as obvious over Shen4 in view of Do5. Id. at 7-9. 4. Claim 8 is rejected under 35 U.S.C. § 103(a) as obvious over Shen in view of Do and further in view of Lee 6. Id. at 10. 5. Claims 18-20 are rejected under 35 U.S.C. § 103(a) as obvious over Boerstler7 in view of Kim and Norman. Id. at 10-12. DISCUSSION Rejections 1, 2, and 5. Rejections 1, 2, and 5 rely upon the Examiner's findings that Kim teaches a bi-directional digital phase provider; that such bi-directional phase provider is operable to rotate phases of the multiphase periodic signal to generate an output received by the multi- 2 Kim et al., A 0.3-1.4 GHz All-Digital Fractional-N PLL With Adaptive Loop Gain Controller, IEEE Journal of Solid-State Circuits, Vol. 45, No. 11, November 2010. 3 Norman et al., US 4,748,588, issued May 31, 1988. 4 Shen et al., US 7,639,053 B2, issued Dec. 29, 2009. 5 Do et al., US 2009/0201066 Al, published Aug. 13, 2009. 6 Lee et al., US 2011/0148490 Al, published June 23, 2011. 7 Boerstker et al., US 7,904,264 B2, issued Mar. 8, 2011. 3 Appeal2016-006844 Application 13/609,894 modulus divider; and, that the bi-directional digital phase provider operates using a clock signal having periodic pulses with a frequency which is same as frequency of the multiphase periodic signal. Final Act. 2 (Rejection 1 ), 3 (Rejection 2), and 11 (Rejection 5). Appellant argues these rejections collectively "seeing that the issues raised are substantially the same [and] apply across those claims." Appeal Br. 8. Accordingly, we will treat these rejections collectively. We select claim 1 as representative of the claim limitations at issue. A. Bidirectional Phase Selector Claim 1 requires a phase provider "wherein the digital phase provider comprises a bidirectional phase selector." A phase provider is "bidirectional" where it can "select a previous phase (previous in time domain) clock signal for the clock signal 207 for the divider 202. For instance, phase p7 is a previous phase of phase pO. Selecting a previous phase is analogous to moving the dial counter clockwise." Spec. i-f 27. The Specification further states that "[a] non-limiting analogy of the bi- directional shift register 201 b is that of a dial that can move clockwise or counter clockwise in response to a rotation control signal 211 from the controller 203." Id. i-f 26. Appellant argues that Kim teaches a phase provider that is "only operable to rotate the Multiphase DCO clock input to the MUX in a single (i.e., forward or leading) direction upon receiving the 'Advance' signal." Appeal Br. 9. Accordingly, Appellant argues, Kim fails to teach a bi- directional phase provider. Appeal Br. 9-13; Reply 11-12. In support of this argument, Appellant asserts that Kim teaches only an advance signal, rather than a backward signal. Appeal Br. 9-11. 4 Appeal2016-006844 Application 13/609,894 Appellant further asserts that Kim teaches that backward selection will lead to "unwanted glitches in switching MUX [multiplexer] selection signals." Id. at 11. The Examiner relies upon Kim's teaching in making rejections based on both anticipation (Rejection 1) and obviousness (Rejections 2 and 5). "A reference is no less anticipatory if, after disclosing the invention, the reference then disparages it. Thus, the question whether a reference "teaches away" from the invention is inapplicable to an anticipation analysis." Celeritas Techs., Ltd. v. Rockwell Int'! Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998). Kim describes the advance signal, then provides that "[r]epeating this process achieves the fractional division, which may also be achieved by moving the output phase backward as shown in Fig. 9. In that case, however, glitches will appear in the multiplexed output, and the divider will malfunction." Kim 2305 (emphasis added). Thus, Kim discloses that phase selection may be forward or backward but disparages backward selection. As in Celeritas, however, such disparagement would not have negated anticipation. Appellant similarly argues that the preferred embodiment of Kim teaches a multiplexer output that signals either advance or remain constant. Appeal Br. 12-13. Accordingly, Appellant argues, it is not "operable" to change the direction of rotation of the phase of the multiphase periodic signal. Id. The embodiment described by Appellant reflects the primary thrust of Kim's teachings. Such embodiment, however, does not negate its teaching regarding rotating the output phase backwards. A reference may be cited for all that it teaches. See In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006). 5 Appeal2016-006844 Application 13/609,894 In view of the foregoing, we do not find Appellant's arguments regarding the "bidirectional phase selector" limitation to be persuasive in the context of anticipation. Such determination is not, however, dispositive of the appeal of Rejections 2 and 5 which are predicated on obviousness. The Supreme Court has held that "known disadvantages in old devices which would naturally discourage the search for new inventions may be taken into account in determining obviousness." United States v. Adams, 383 U.S. 39, 52 (1966). "A reference teaches away when it suggests that the line of development flowing from the reference's disclosure is unlikely to be productive of the result sought by the applicant." Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1354 (Fed. Cir. 2012) (quoting Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (quotations omitted)). Generally, a reference that "teaches away" will not create a prima facie case of obviousness. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). As noted above, Kim teaches that "glitches will appear in the multiplexed output, and the divider will malfunction" if the device is arranged to permit backward selection of the clock input. Kim 2305. Kim further teaches that "we implemented the fractional divider with a Gray-code counter to further minimize unwanted glitches in switching MUX selection signals." Id. (emphasis added). Such language indicates that the authors implemented the Gray counter in addition to the forward selection. That is, the authors did not present the Gray counter as remediating the glitches that arise in connection with backward selection. Accordingly, Kim teaches away from backward selection and Appellant has shown error in the Examiner's prima facie case of obviousness predicated upon Kim's teaching of a bidirectional shift register. 6 Appeal2016-006844 Application 13/609,894 B. "Digital Phase Provider Operates Using a Clock Signal Having Periodic Pulses with Frequency Which Is Same as Frequency of the Multiphase Periodic Signal" Appellant additionally argues that the Examiner has not made an adequate showing that Kim teaches a "digital phase provider [which] operates using a clock signal having periodic pulses with frequency which is [the] same as [the] frequency of the multiphase periodic signal." Appeal Br. 14. Appellant asserts that the Examiner has implicitly taken official notice of the manner of operation of the device taught by Kim. Id. Specifically, Appellant argues that the Examiner has erroneously concluded that "Kim's Fig. 10 necessarily shows that its MUX operates using a clock signal having periodic pulses with a frequency which is the same frequency as frequency of the multiphase periodic signal." Id. The Examiner finds that this assertion is in error. Answer 3. The Examiner determines that the claimed "digital phase provider" comprises both the MUX (multiplexer) and the Gray Counter of Kim. Id. Figure 8 of Kim is reproduced below. M~•klphCopy with citationCopy as parenthetical citation