Ex parte Inoue

Board of Patent Appeals and Interferences

Sep 11, 2000

08242881 (B.P.A.I. Sep. 11, 2000)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KOICHI INOUE
____________
Appeal No. 1997-2844
Application No. 08/242,881
____________
ON BRIEF
____________
Before JERRY SMITH, FLEMING, and GROSS, Administrative Patent
Judges.
GROSS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 6, which are all of the claims
pending in this application.
Appellant's invention relates to a hysteresis circuit
which varies a threshold level for inverting the condition of
an output of a comparator according to the condition of the
Appeal No. 1997-2844
Application No. 08/242,881
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output. The comparator is provided with an input voltage and
with a threshold voltage equal to the output of a voltage
dividing circuit. A switching circuit is set to an ON
condition when a constant current output from a constant
current circuit is provided to the voltage dividing circuit
and set to an OFF condition when the
constant current is not provided to the voltage dividing
circuit. Claim 1 is illustrative of the claimed invention,
and it reads as follows:
1. A hysteresis circuit comprising:
a voltage dividing circuit which outputs a voltage
resulting from a division of a reference voltage by resistors;
a comparator is provided with a) said output voltage
of the voltage dividing circuit as a threshold voltage and b)
an input voltage;
a constant current circuit which converts a
temperature-compensated reference voltage into a current using
a resistor; and
a switching circuit being ON and OFF controlled
according to an output of the comparator, said switching
circuit being set to an ON condition where a constant current
output from the constant current circuit is provided to the
voltage dividing circuit and being set to an OFF condition
where the constant current is not provided to the voltage
dividing circuit,
wherein an output voltage of the voltage dividing
circuit differs between when the constant current is provided
Appeal No. 1997-2844
Application No. 08/242,881
We note that on page 2 of the Answer the examiner withdrew the1
rejection of claims 1 through 6 under 35 U.S.C. § 112, second paragraph, as
being indefinite and the rejection of claim 3 under 35 U.S.C. § 102(b) as
being anticipated by Stakely.
3
to the voltage dividing circuit and when the constant current
is not provided to the voltage dividing circuit, so that the
threshold level of the comparator differs.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Bufano, Jr. et al. (Bufano) 4,751,405 Jun. 14,
1988
Fujita 4,926,068 May 15,
1990
Stakely et al. (Stakely) 5,122,680 Jun.
16, 1992
Thelen, Jr. 5,231,316 Jul. 27,
1993
Claims 1, 2, 5, and 6 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Stakely.1
Claims 4 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Stakely.
Appeal No. 1997-2844
Application No. 08/242,881
4
Claims 1 through 6 stand rejected under 35 U.S.C. § 103
as being unpatentable over Fujita in view of Bufano and
Thelen.
Reference is made to the Examiner's Answer (Paper No. 16,
mailed July 8, 1996) and the first Supplemental Examiner's
Answer (Paper No. 18, mailed October 11, 1996) and the second
Supplemental Examiner's Answer (Paper No. 20, mailed February
20, 1997) for the examiner's complete reasoning in support of
the rejections, and to appellant's Brief (Paper No. 15, filed
May 1, 1996), Reply Brief (Paper No. 17, filed September 9,
1996), and Supplemental Reply Brief (Paper No. 19, filed
December 11, 1996) for appellant's arguments thereagainst.
OPINION
We have carefully considered the claims, the applied
prior art references, and the respective positions articulated
by appellant and the examiner. As a consequence of our
review, we will affirm the anticipation rejection of claims 1,
2, 5, and 6 and the obviousness rejection of claim 4 over
Stakely and reverse the obviousness rejection of claims 1
through 6 over Fujita, Bufano, and Thelen.
Appeal No. 1997-2844
Application No. 08/242,881
5
Appellant's sole argument against the anticipation of
claims 1, 5, and 6 by Stakely is that Stakely "does not show,
teach or suggest that when the switching circuit is set to an
ON condition, a constant current output from a constant
current circuit is provided to a voltage dividing circuit (or
voltage dividing point)." (See Brief, page 12). Stated
another way, appellant contends (Brief, page 13) that "the
switch 18 of Stakely et al controls the input to a comparator
and does not control the input to a voltage dividing circuit
(or voltage dividing point)."
The claim limitation in question for claims 1 and 6
reads, "said switching circuit being set to an ON condition
where a constant current output from the constant current
circuit is provided to the voltage dividing circuit." In
Stakely, if we consider resistor R1 as part of the constant
current circuit and resistors R3, R5, and R8 as the voltage
divider, as the examiner has done, the switch means 18 is set
to ON (or connected to node N5) where the current output from
the constant current circuit (or from R1) is provided to node
N5 through R3 of the voltage dividing circuit. On the other
hand, when the switch means is set to OFF (or connected to
Appeal No. 1997-2844
Application No. 08/242,881
6
node N4), the output from the constant current circuit (or
from R1) is provided to node N4 without going through the
voltage dividing circuit (R3, R5, and R). Therefore, when the
output of the comparator controls which switching threshold,
N4 or N5, is being used, it likewise controls whether the
output from the constant current circuit is provided to the
voltage dividing circuit, as recited in the claims.
Consequently, the claim language for claims 1 and 6 is met by
Stakely, and we will affirm the anticipation rejection of
claims 1 and 6.
Claim 5 was not argued separately from claims 1 and 6.
Accordingly, we will affirm the anticipation rejection of
claim 5. Further, as to claim 2, appellant merely restates
the claim limitation, which is insufficient as an argument for
separate patentability. As stated in 37 CFR § 1.192(c)(7),
For each ground of rejection which appellant
contests and which applies to a group of two or more
claims, the Board shall select a single claim from
the group and shall decide the appeal as to the
ground of rejection on the basis of that claim alone
unless a statement is included that the claims of
the group do not stand or fall together and, in the
argument under paragraph (c)(8) of this section,
appellant explains why the claims of the group are
believed to be separately patentable. Merely
pointing out differences in what the claims cover is
Appeal No. 1997-2844
Application No. 08/242,881
7
not an argument as to why the claims are separately
patentable. (Underlining added for emphasis)
Therefore, we will affirm the anticipation rejection of claim
2.
Regarding the obviousness rejection of claim 4 over
Stakely, appellant argues (Reply Brief, page 2) that "nothing
in Stakely et al. shows, teaches, or suggests that it is
obvious to include the comparator, constant current circuit
and switching circuit in addition to the voltage divider in a
one chip semiconductor integrated circuit." However, as
asserted by the examiner (Answer, page 7, and Supplemental
Answer, page 2), it is well known in the art to form multiple
elements on the same semiconductor chip to match or make
uniform the effects of process parameters. Further, the
examiner's rejection of claim 4 is not a hindsight
reconstruction based on information from applicant's own
specification, as contended by appellant (Supplemental Reply
Brief, page 3). Instead, the examiner has used the common
knowledge of a person of ordinary skill in the art, which the
court has said may be properly relied upon for a conclusion of
obviousness without any specific teaching in a particular
Appeal No. 1997-2844
Application No. 08/242,881
8
reference. See In re Bozek, 416 F.2d 1385, 1390, 163 USPQ
545, 549 (CCPA 1969). Therefore, we will sustain the
rejection of claim 4 over Stakely.
On the other hand, we generally agree with appellant's
arguments against the rejection of claims 1 through 6 over
Fujita, Bufano, and Thelen. Specifically, appellant explains
(Brief, page 17) that in Fujita "it is necessary that the
resistor R should have one end connected to ground V and theGND
other end not connected to any voltage. This is because the
voltages V + and V - are generated at the other end of theREF REF
resistor R where the constant current flows." Appellant
continues (Brief, page 18),
On the other hand, at the voltage dividing point 12
of Bufano, Jr. et al a voltage is generated by
dividing Vdd. Therefore, it is impossible to
combine Bufano, Jr. et al with Fujita since the
combination would not allow the generation of a
positive and negative voltage so that the ground
voltage V which is a [sic] stable is symmetricalGND
with respect to the generated voltages V .REF
In other words, the combination of Bufano and Fujita would not
allow the comparator of Fujita to operate as intended. "[A]
proposed modification [is] inappropriate for an obviousness
inquiry when the modification render[s] the prior art
Appeal No. 1997-2844
Application No. 08/242,881
9
reference inoperable for its intended purpose. In re Gordon,
733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984)." In
re Fritch,
972 F.2d 1260, 1265-66 n.12, 23 USPQ2d 1780, 1783 n.12 (Fed.
Cir. 1992). Therefore, Bufano is not properly combinable with
Fujita.
The examiner applies Thelen for a teaching of a constant
current circuit which converts a temperature compensated
reference voltage into a current. However, Thelen does not
cure the deficiency in the combination of Bufano and Fujita.
Accordingly, we cannot sustain the rejection of claims 1
through 6 under 35 U.S.C. § 103 over Fujita, Bufano, and
Thelen.
CONCLUSION
We have affirmed the decision of the examiner rejecting
claims 1, 2, 5, and 6 under 35 U.S.C. § 102 and rejecting
claim 4 under 35 U.S.C. § 103 over Stakely is affirmed. We
have reversed the decision of the examiner rejecting claims 1
through 6 under 35 U.S.C. § 103 over Fujita, Bufano, and
Thelen. Therefore, the decision of the examiner rejecting
claims 1 through 6 is affirmed-in-part.
Appeal No. 1997-2844
Application No. 08/242,881
10
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
apg/vsh
Appeal No. 1997-2844
Application No. 08/242,881
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