Ex Parte Huang

Patent Trial and Appeal Board

May 30, 2018

13609894 (P.T.A.B. May. 30, 2018)

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.).
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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.
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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.
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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).
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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.
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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.
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