Ex Parte Huynh

Patent Trial and Appeal Board

Feb 26, 2019

13453649 (P.T.A.B. Feb. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/453,649 04/23/2012 Steven Huynh
47713 7590 02/26/2019
IMPERIUM PATENT WORKS
P.O. BOX607
Pleasanton, CA 94566
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.
ACT-041 6467
EXAMINER
0 TOOLE, COLLEEN J
ART UNIT PAPER NUMBER
2842
MAIL DATE DELIVERY MODE
02/26/2019 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
Appeal2018-003468
Application 13/453,649 1
Technology Center 2800
Before JEFFREY T. SMITH, GEORGIANNA W. BRADEN, and
SHELDON M. McGEE, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the non-final
rejection dated September 16, 2015 of claims 1-21 and 23. We have
jurisdiction under 35 U.S.C. § 6(b).
1 According to Appellant, the real party in interest is Active-Semi, Inc.
(BVI). (App. Br. 1 ).
Appeal2018-003468
Application 13/453,649
The appealed invention relates to an integrated circuit comprising
first, second and third terminals, P-channel and N-channel field effect
transistors, and a tracking and clamping circuit. (Spec. 8-10). Independent
claim 1 is representative of the appealed subject matter and reproduced
below:
1. An integrated circuit comprising:
a first terminal;
a second terminal;
a third terminal;
a P-channel field effect transistor, wherein a source of the
P-channel transistor is coupled to the first terminal,
wherein a drain of the P-channel transistor is coupled to
the second terminal;
an N-channel field effect transistor, wherein a drain of
the N-channel transistor is coupled to the second
terminal, wherein a source of the N-channel transistor is
coupled to the third terminal, wherein an N type isolation
structure is disposed between a substrate and the drain of
the N-channel transistor; and
a tracking and clamping circuit connected to the drain of
the N-channel field effect transistor and that in a tracking
mode provides a relatively low resistance path between
the drain and the isolation structure such that when a
voltage V d on the drain is substantially positive that a
voltage Viso on the isolation structure tracks V d, whereas
the tracking and clamping circuit in a clamping mode
provides a relatively high resistance path between the
drain and the isolation structure such that when V d is
substantially negative that Viso is clamped to be no more
negative than approximately -0. 7 volts.
Claims Appendix, App. Br. 18.
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Appeal2018-003468
Application 13/453,649
Appellant (see App. Br., generally) requests review of the following
rejections:
I. Claims 1-3, 5, 7, 8, 11, 13, 15, and 16 as unpatentable under 35
U.S.C. § 103(a) over Ker (US 6,885,529 B2, issued Apr. 26, 2005) in view
of Parthasarathy (US 6,573,562 B2, issued June 3, 2003). 2
II. Claim 14 as unpatentable under 35 U.S.C. § 103(a) over Ker and
Parthasarathy and in further view of Kayama (US 5,227,655, issued July 13,
1993).
III. Claims 4, 6, 9, 10, 12, 17-21, and 23 as unpatentable under 35
U.S.C. § 103(a) over Sinow (US 8,558,583 B2, issued Oct. 15, 2013) in
view of Ker and Parthasarathy.
The complete statement of the rejections on appeal appear in the Non-
Final Office Action dated September 16, 2015. (Non-Final Act. 2-9).
OPINION3
After consideration of Appellant's arguments and evidence and the
Examiner's position in the Non-Final Office Action that is the basis of this
appeal and the Answer to the Appeal Brief, we REVERSE the appealed
prior art rejections. Our reasons follow.
The Examiner finds Ker teaches an integrated circuit that does not
include the tracking and clamping circuit as recited in claim 1. (Non-Final
Act. 2). The Examiner finds Parthasarathy teaches a tracking and clamping
2 The Examiner erroneously includes claim 14 in the summary of this
rejection. Non-Final Act. 2.
3 Our discussion applies to independent claims 1, 7 and 11.
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Appeal2018-003468
Application 13/453,649
circuit having a tracking mode and clamping mode as recited in claim 1.
(Non-Final Act. 2-3). The Examiner concludes it would have been obvious
to use the tracking and clamping circuit taught by Parthasarathy in the circuit
of Ker to prevent premature breakdown within the transistor. (Col. 6, 11. 12-
16). (Non-Final Act. 3).
Appellant contends the combination of Ker and Parthasarathy does
not teach a tracking and clamping circuit having a tracking mode and a
clamping mode as set forth in claim 1. (App. Br. 9-12). Appellant argues
Parthasarathy does not perform a tracking mode as recited in claim 1.
Appellant specifically argues:
[f]or example, if the input voltage (vin) is greater than
substantially positive voltages applied to the terminal 122, then
diode 370 will be reversed biased (providing no low resistance
path) and the voltage on the doped region 126 will be determined
from the input voltage (vin) and will not track the substantially
positive voltages applied to terminal 122.
(App. Br. 10).
Appellant argues further Parthasarathy does not perform a clamping
mode as recited in claim 1. First, Appellant argues Parthasarathy does not
teach a clamping mode that provides a high resistance path as recited in
claim 1. Appellant specifically argues:
Parthasarathy teaches that when the voltage on terminal 122 is
substantially negative, the diode 370 is reversed biased so that
the terminal 122 is electrically disconnected from the doped
region 126. A high resistance path as recited in Claim 1 still
allows current to flow through the path. However, a reversed
biased diode as taught by Parthasarathy does not form a high
resistance path since current does not flow through the reversed
biased diode.
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Appeal2018-003468
Application 13/453,649
(App. Br. 11).
Second, Appellant argues Parthasarathy's diode 370--identified by
the Examiner as the tracking and clamping circuit- does not operate to
clamp the voltage on the isolation structure to be no more negative than
approximately -0. 7 volts. Appellant specifically argues:
[f]or example, when the voltage at terminal 122 is substantially
negative, the voltage on the isolation structure is dependent on
the input voltage (vin). For example, if the voltage at terminal
122 is negative and the voltage at (vin) is positive, the diode 370
will be reversed biased and the voltage on the isolation structure
will not be clamped but will be determined from the input voltage
(vin).
(App. Br. 12).
During examination, the Examiner bears the initial burden of
establishing a prima facie case of obviousness. In re Oetiker, 977 F .2d
1443, 1445 (Fed. Cir. 1992). "Rejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." KSR Int 'l v. Teleflex, Inc., 550 U.S. 398, 418
(2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); see also,
Ball Aerosol and Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F .3d
984, 993 (Fed. Cir. 2009) ("[T]he analysis that 'should be made explicit'
refers not to the teachings in the prior art of a motivation to combine, but to
the court's analysis.").
The Examiner has not addressed Appellants' argument that the
operation of Parthasarathy's diode 370 is fundamentally different from the
claimed invention. Specifically, regarding the tracking mode, the Examiner
does not address Appellant's argument "when a voltage Vd on the drain is
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Appeal2018-003468
Application 13/453,649
substantially positive but less than the input voltage (vin), the voltage on the
isolation structure will not track Vd, as recited in Claim 1." (App. Br. 10-
11 ). Furthermore, regarding the clamping mode, the Examiner does not
address Appellant's argument "[a] high resistance path as recited in Claim 1
still allows current to flow through the path. However, a reversed biased
diode as taught in Parthasarathy does not form a high resistance path since
current does not flow through the reversed biased diode." (App. Br. 11 ).
Rather, in the Answer, the Examiner simply points back to the relied-upon
disclosures of Parthsarathy cited in the underlying rejection (i.e., cols. 3: 13-
14, 5 :40-44, 46-49) and asserts, without explanation, that the limitations are
taught. (Ans. 3--4). The Examiner has not provided a proper factual basis
for the rejection of independent claims 18 and 21. When discussing these
claims, the Examiner does not address the limitations in claims 18 and 21
but repeats the language from independent claim 1. (Non-Final Act. 7-8).
Appellant has provided arguments identifying why Parthasarathy does not
function as required by the claimed invention. Yet, the Examiner has not
adequately explained why the tracking and clamping circuit of Parthasarathy
functions as required by independent claim 1. And the Examiner has not
adequately explained why the claims should be interpreted differently than
presented in the Specification and argued by Appellant.
For the foregoing reasons and those presented by Appellant, we
determine that the Examiner's conclusion of obviousness is not supported by
facts. "Where the legal conclusion [ of obviousness] is not supported by
facts it cannot stand." In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
Therefore, we cannot sustain the Examiner's decision to reject claims 1-21
and 23.
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Appeal2018-003468
Application 13/453,649
Accordingly, we reverse the Examiner's rejections of independent
claims 1, 7, 11, 18, and 21 for the reasons presented by Appellant and given
above. We likewise reverse the Examiner's decision to reject dependent
claims 2---6, 8-10, 12-17, 19, 20, and 23 since these rejections are premised
on the Examiner's unsupported combination of Ker and Parthasarathy. We
need not reach whether the Examiner's reliance on other references in
addition to Ker and Parthasarathy for the rejection of the dependent claims
was supported by the evidence of record because the base combination of
Ker and Parthasarathy cannot stand.
DECISION
The rejections under 35 U.S.C. § 103(a) of claims 1-21 and 23 are
reversed.
REVERSED
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