Ex Parte Huynh

Patent Trial and Appeal Board

Sep 9, 2013

11452713 (P.T.A.B. Sep. 9, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/452,713 06/13/2006 Steven Huynh ACT-006 4804
47713 7590 09/10/2013
IMPERIUM PATENT WORKS
P.O. BOX 607
Pleasanton, CA 94566
EXAMINER
RAHMAN, FAHMIDA
ART UNIT PAPER NUMBER
2116
MAIL DATE DELIVERY MODE
09/10/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEVEN HUYNH
____________

Appeal 2011-004126
Application 11/452,713
Technology Center 2100
____________

Before HOWARD B. BLANKENSHIP, JENNIFER L. McKEOWN,
and DAVID C. McKONE, Administrative Patent Judges.

McKONE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-201, which constitute all the claims pending in this application. See
2.2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 The Examiner has withdrawn the rejections of claims 4, 11-15, and 20. See
Ans. 2.
2 Throughout this opinion, we refer to the Appeal Brief filed June 1, 2010
(“App. Br.”), the Examiner’s Answer mailed August 30, 2010 (“Ans.”), and
the Reply Brief filed October 29, 2010 (“Reply Br.”).
Appeal 2011-004126
Application 11/452,713

2
THE INVENTION
Appellant’s invention relates to a scalable and programmable power
management integrated circuit. See Spec. ¶ 0001. Claim 1, which is
illustrative of the invention, reads as follows:
1. An integrated circuit for scalable and
programmable power management, the integrated circuit
comprising:
a master controller module;
a communication network in operable
communication with said master controller module; and
a first slave module in operable communication
with said communication network, said first slave
module performing a power management or conversion
function that is at least in part controlled by a control
command communicated from said master controller
module to said first slave module, said control command
being communicated and received through said
communication network, and said control command
being decoded by said first slave module.

THE REJECTIONS
Claims 1-3, 6-10, and 16-19 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Zhang (US 2006/0212138 A1; published Sept. 21,
2006; filed Mar. 17, 2006) and Applicant’s Admission of Prior Art
(“AAPA”). See Ans. 3-8.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Zhang, AAPA, and Mar (US 6,792,553 B2; issued Sept. 14, 2004). See Ans.
8.

Appeal 2011-004126
Application 11/452,713

3
ISSUE
The dispositive issue raised by Appellant’s contentions is whether
Zhang teaches away from a master module and a slave module in the same
integrated circuit. See App. Br. 6-7; Reply Br. 4-7.
Appellant’s contentions raise additional issues. Because we are
persuaded of Examiner error by the identified issue, which is dispositive of
the appeal, we do not reach the additional issues.

ANALYSIS
REJECTION OF CLAIMS 1-3, 6-10, AND 16-19 UNDER 35 U.S.C. § 103(a)
The Examiner finds that Zhang teaches a master controller module, a
communication network in operable communication with the master
controller module, and a first slave module in operable communication with
the communication network, as recited in claim 1. See Ans. 3-4. However,
the Examiner concedes that Zhang does not teach a single integrated circuit
(“IC”) comprising these components. See Ans. 4. Rather, Zhang teaches
plural ICs for its plural modules. See id. (citing Zhang, ¶ 0013). The
Examiner points to Figure 1 of the Specification (Applicant’s Admission of
Prior Art, or “AAPA”), as teaching plural slave power regulators and a
master controller provided in a single IC. See Ans. 4. According to the
Examiner, a person of ordinary skill in the art would have combined Zhang’s
teachings with those of AAPA to arrive at the master and slave modules
taught by Zhang in a single IC, “since this saves space and facilitates ease of
design.” Id.
Appellant contends that Zhang teaches away from putting a master
module and slave modules in the same IC. See App. Br. 6-7. According to
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Application 11/452,713

4
Appellant, Zhang teaches several benefits of a multi-IC solution that would
not be realized by combining the plurality of modules onto a single IC,
including:
1. Greater safety and reliability, because each slave IC is a stand-alone
module that, once calibrated, can act independently for a time. If the
master goes down, the slaves can continue to operate. See App. Br. 6
(citing Zhang, ¶ 0031); Reply Br. 6 (same);
2. Cost savings, because cheap analog circuits can be used for the slave
ICs while an expensive mixed signal circuit can be limited to the
master IC. See App. Br. 6 (citing Zhang, ¶ 0033). This way,
expensive technology is only used for one component, while
inexpensive technology is used for the rest. See Reply Br. 6 (citing
Zhang, ¶ 0043). Good operational results can still be obtained
because the expensive master can control the slaves to be more
precise. See Reply Br. 5-6 (citing Zhang, ¶¶ 0027, 0031); and
3. Easier optimization, as the master IC and the slave ICs can be made
using different IC processes, allowing each to be individually
optimized. See App. Br. 6 (citing Zhang, ¶ 0047); Reply Br. 6-7
(same).
According to the Federal Circuit:
A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was
taken by the applicant. . . . [I]n general, a reference will teach
away if 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.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Appeal 2011-004126
Application 11/452,713

5
The Examiner responds that Zhang does not discourage a single-chip
implementation, and provides no indication that it is at odds with a single-
chip implementation. See Ans. 9. We agree with Appellant. As Appellant
has shown, Zhang repeatedly states that its architecture includes multiple ICs
and that such an implementation provides several benefits, including
reliability and cost savings. See Zhang, ¶¶ 0013, 0031, 0033, 0043, 0044,
0047, 0048. The implication in Zhang is that a single-chip implementation
would not yield those benefits. For example, Zhang teaches that cost
savings can be realized by limiting expensive and more precise technology
to the master IC while implementing the slave ICs with cheaper and less
precise technology. See Zhang, ¶¶ 0027, 0031, 0033, 0043. This teaching
suggests that if the master and the slaves are all incorporated in the same IC,
the entire IC would have to be implemented using the more expensive
technology in order to meet the precision requirements of the master.
Similarly, the ability to individually optimize the master and slave ICs using
different IC processes would be lost if all of those components were
combined in the same IC. Such teachings would have led a person of
ordinary skill in the art in a direction divergent from the single-IC solution
taken by Appellant.
The Examiner finds that the AAPA’s design is fixed and non-scalable
because it has parallel connections, and that Zhang instead uses serial
communication. See Ans. 10 (citing Spec. ¶ 6, Zhang, ¶¶ 0008, 0010).
However, Appellant points out in reply that Zhang also teaches a parallel bus
architecture for the address bus, limiting the number of slaves to 32. See
Reply Br. 7 (citing Zhang, ¶ 0023). The Examiner further finds that a
skilled artisan would have known that redoing the routing layer of an IC is
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6
easier than redoing the IC die layout. See Ans. 10 (citing Spec. ¶ 0036).
However, the Examiner’s citation to the Specification is not to AAPA.
Thus, the Examiner does not provide a factual basis for this finding.
Accordingly, the Examiner erred in concluding that it would have
been obvious to modify Zhang to incorporate its plural modules in a single
IC per AAPA’s teaching.
Independent claim 16 also recites an IC that comprises at least a
power conversion device and a means for orchestrating the real-time
behavior of the power conversion device. The Examiner rejects claim 16 for
essentially the same reasons as claim 1. See Ans. 6-7; 9-10. For reasons
similar to those for claim 1, the Examiner has not shown that putting both of
these components on a single IC would have been obvious. Therefore, the
Examiner’s conclusion of obviousness as to claim 16 is erroneous for the
same reasons as claim 1.
Accordingly, we do not sustain the rejection of (1) independent claims
1 and 16; (2) claims 2, 3, and 6-10, which depend on claim 1; and (3) claims
17-19, which depend on claim 16.

REJECTION OF CLAIM 5 UNDER 35 U.S.C. § 103(a)
Claim 5 depends on claim 1. Thus, it includes a recitation of subject
matter we find not taught by the cited prior art. The Examiner does not rely
on Mar to cure the above-noted deficiency of Zhang and AAPA.
Accordingly, we do not sustain the rejection of claim 5.

Appeal 2011-004126
Application 11/452,713

7
ORDER
The decision of the Examiner to reject claims 1-3, 5-10, and 16-19 is
reversed.

REVERSED

kis