Ex Parte Jeurissen et al

Patent Trial and Appeal Board

Sep 4, 2013

12989909 (P.T.A.B. Sep. 4, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DENNIS JEURISSEN, GERBEN WILLEM De JONG, and
JAN VAN SINDEREN
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Appeal 2013-007475
Application 12/989,909
Technology Center 2800
____________________

Before RICHARD TORCZON, JOHN G. NEW, and HUNG H. BUI,
Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge
HUNG H. BUI.

Opinion Dissenting in part filed by Administrative Patent Judge
RICHARD TORCZON.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1-2 and 6-15.2 We have jurisdiction
under 35 U.S.C. § 6(b).

1 Real Party in Interest is NXP B.V.
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We AFFIRM.3
STATEMENT OF THE CASE
Appellants’ Invention
Appellants’ invention relates to an arrangement, shown in FIG. 4, for
measuring a transfer function of a device under test (DUT) such as a
feedback amplifier. See Appellants’ Spec., ¶¶ [0001], [0008], and Abstract.
FIG. 4 is reproduced below:

FIG. 4 shows Appellants’ arrangement for measuring a transfer
function of a device under test (DUT).
As shown in FIG. 4, the arrangement comprises a test signal
generator 410 to generate a test signal to excite a device under test (DUT)
such as a feedback amplifier 420; a sample-and-hold (S&H) circuit or
buffer 440 (FIG. 6) arranged to sample and hold samples of a response
signal from the DUT 420; a trigger unit or timer 430 provided with delay

2 The rejections of claims 3-5 under 35 U.S.C. §102 and §103 have been
withdrawn, as per Examiner’s Answer dated May 9, 2013. As such, only the
rejections of claims 1-2 and 6-15 remain on appeal.
3 Our decision refers to Appellants’ Appeal Brief filed April 12, 2013
(“App. Br.”); Examiner’s Answer mailed May 9, 2013 (“Ans.”); and the
original Specification filed October 27, 2010 (“Spec.”).
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elements 432 to trigger the S&H function so that an optimization logic 460
can collect a sequence of samples of discrete values of the response signal
output from the S&H circuit 440, via an analog/digital converter (ADC) 450,
and derive a transfer function from the sequence of samples. Id., ¶[0011].
Claims on Appeal
Claims 1 and 11 are the independent claims on appeal. Claim 1 is
illustrative of Appellants’ invention, and is reproduced below with disputed
limitation emphasized:
1. An arrangement configured to measure a transfer
function of a linear time-invariant system, the arrangement
comprising:

a test signal generator connected to an input of the
system and configured to input a test signal for exciting of the
linear time-invariant system;

a buffer configured to store an instantaneous sample of a
response signal at an output of the system;

a trigger unit configured to trigger the buffer to store and
provide at an output of the buffer, in response to the test signal,
at least one respective instantaneous value of the response
signal, wherein the arrangement is further configured to
generate a sequence of samples of discrete values of the
response signal by iteratively exciting, at predetermined
instances of time increasing by a predetermined duration, the
linear time-invariant system with the test signal, until enough
samples have been taken to derive the transfer function.

Evidence Considered
Moriyasu US 5,243,343 Sep. 7, 1993
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Examiner’s Rejections
(1) Claims 1, 11-13, and 15 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Moriyasu. Ans. 3-5.
(2) Claims 2, 6-10, and 14 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Moriyasu. Ans. 5-6.

Issues on Appeal
Based on Appellants’ arguments, the arguments proffered by
Appellants, and the findings of the Examiner, the dispositive issues on
appeal are:
(1) Whether the Examiner erred in rejecting claims 1, 11-13, and
15 under 35 U.S.C. § 102(b) as being anticipated by Moriyasu. In particular,
the issue turns on whether Moriyasu discloses the above disputed limitations
of Appellants’ independent claim 1 and its dependent claims 11-13 and 15;
and
(2) Whether the Examiner erred in rejecting claim 2, 6-10, and 14
under 35 U.S.C. § 103(a) as being unpatentable over Moriyasu. Again, the
issue turns on whether Moriyasu discloses or renders obvious limitations of
Appellants’ claims 2, 6-10, and 14.

ANALYSIS
§ 102(b) Rejection of Claims 1, 11-13, and 15
With respect to independent claim 1, Appellants contend that
Moriyasu does not disclose “iteratively exciting, at predetermined instances
of time increasing by a predetermined duration, the linear time-invariant
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system with the test signal, until enough samples have been taken to derive
the transfer function.” App. Br. 7-8 (emphasis in the original). In
particular, Appellants argue that the recitation “for measuring a transfer
function of a linear-invariant system” in the preamble of Appellants’
claim 1 is not an “intended use” and should, therefore, be accorded
patentable weight relative to Moriyasu because:
During examination, statements in the preamble reciting
the purpose or intended use of the claimed invention must be
evaluated to determine whether the recited purpose or intended
use results in a structural difference (or, in the case of process
claims, manipulative difference) between the claimed invention
and the prior art. If so, the recitation serves to limit the claim.
See, e.g., In re Otto, 312 F.2d 937,938 (C.C.P.A. 1963). In this
case, "derive the transfer function" appears in the body of the
claim and reflects a structural difference in the trigger unit of
claim 1 and a manipulative difference for the method of
claim 11.

(App. Br. 7).
We are not persuaded. First, we note that Appellants only present
arguments regarding claim 1 but group claim 11 together with claim 1. As
such, claims 1 and 11 stand or fall together. Second, we also note that
Appellants do not identify any structural difference resulted in any circuit
component of Appellants’ claimed invention because of the intended use
statement in the preamble or the same “transfer function” in the body of
Appellants’ claim 1.
As correctly found by the Examiner, Moriyasu discloses an
arrangement utilizing a time range stimulus response digitizer for measuring
transient response of a device under test (DUT) representing various types of
electronic components. Ans. 3-4. According to the Examiner, such a
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digitizer comprises all the circuit components of Appellants’ arrangement,
including: (1) a test signal generator which corresponds to a stimulus
circuit 1 of Moriyasu; (2) a buffer which corresponds to a sample and hold
circuit 21 of Moriyasu; and (3) a trigger unit which corresponds to a trigger
circuit 31 of Moriyasu. Ans. 4. Appellants do not dispute the Examiner’s
findings regarding these circuit components. If Moriyasu’s arrangement is
capable of performing the “intended use” as recited in the preamble, which
Appellants do not dispute, then it meets the claim. See, e.g., In re Schreiber,
128 F.3d 1473, 1477 (Fed. Cir. 1997). Moreover, Appellants have not
pointed out anything in the preamble that would limit the structure of
Appellants’ claimed invention.
Even if the recitation of measuring/deriving a “transfer function” were
considered as a claim limitation, we agree with the Examiner that such a
limitation would not distinguish over Moriyasu because: (1) a transfer
function is simply a mathematical representation of the relationship between
input and output signals of a device under test (DUT); and (2) Moriyasu
does in fact disclose component time response measurements, including a
logarithmic signal compression which is a specific type of transfer function,
as evidenced, for example, by claims 3 and 14 of U.S. Patent No. 7,133,724.
See Advisory Action dated January 11, 2013, pp. 2-3.
Appellants disagree with the Examiner’s broad construction of the
term “transfer function”, but provide no explanation as to why the
Examiner’s broad construction is inconsistent with Appellants’
Specification. App. Br. 8. As an initial matter, we note that Appellants’
Specification does not define the claim term “transfer function.” As such,
the Examiner may adopt the broadest reasonable definition of the term
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consistent with the Specification. In re Morris, 127 F.3d 1048, 1053-54
(Fed. Cir. 1997). In the instant appeal, the Examiner has construed
Moriyasu’s logarithmic signal compression as a type of “transfer function”,
i.e., that “transfer function” encompasses any component time response
measurement including a logarithmic signal compression of a device under
test (DUT). See Advisory Action, p. 2. We find the Examiner’s
construction of Appellants’ claimed “transfer function” reasonable and
consistent with Appellants’ own Specification.
Appellants further argue that “Moriyasu is silent regarding the use of
samples to derive the transfer function as claimed.” App. Br. 8. We
disagree. The Examiner finds Moriyasu’s arrangement generates a sequence
of samples of discrete values of the response signal from the device under
test (DUT) by iteratively exciting, at predetermined instances of time
increasing by a predetermined duration, the device under test (DUT) with
the test signal until those samples are taken for measurement. Ans. 4 (citing
Moriyasu, col. 4, ll. 25-35; col. 5, ll. 10-19; and col. 5, l. 55 – col. 6, l. 10).
Appellants do not dispute the Examiner’s finding regarding this feature. As
such, we see no reason to disturb the Examiner’s finding.
With respect to dependent claims 12-13, Appellants present no
separate patentability arguments. Instead, Appellants merely repeat the
arguments set forth in relation to independent claim 11.
With respect to dependent claim 15, Appellants argue that:
modification of a derived transfer function is not a recitation of
an intended use. Moreover, the Office Action entirely fails to
address the subject matter of evaluating stability criteria as
claimed. Because Moriyasu lacks evaluated stability criteria,
Moriyasu cannot modify a derived transfer function based upon
such criteria.
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App. Br. 11 (emphasis added).
Again, we are not persuaded. Initially, we note that Appellants’
Specification is silent regarding the claim term “stability criteria.” In the
absence of an explicit definition, we construe the term to encompass any
suitable criteria used to modify the transfer function. In the instant appeal,
Moriyasu discloses the derived transfer function or any other component
time response measurements such as a logarithmic signal compression of a
device under test (DUT) can be modified or changed based on certain
criteria. See Moriyasu, col. 11, ll. 31-45. For example, Moriyasu discloses
various types of electronic components can be tested at both low speeds and
high speeds, via different time domain measurements, and operate in
different modes which meet the limitation of Appellants’ claim 15. Id..
For the reasons set forth above, we do not find error in the Examiner’s
construction of the claim term “transfer function”. Appellants have not
persuaded us of error in the Examiner’s anticipation rejection of claims 1,
11-13 and 15. Accordingly, we will sustain the Examiner’s anticipation
rejection of claims 1, 11-13, and 15.

§ 103(a) Rejection of Claims 2, 6-10, and 14
Dependent claim 2 further defines that a device under test (DUT) or
Appellants’ claimed “linear time-invariant system” is “an amplifier circuit”
comprising “at least one amplification stage, and at least one feedback path.”
Similarly, dependent claim 6 further defines that a test signal comprises a
step function and a “test signal generator comprises a Square Wave
Generator.”
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The Examiner acknowledges Moriyasu does not disclose a device
under test (DUT) as Appellants’ claimed “amplifier circuit” and a test signal
generator as Appellants’ claimed “Square Wave Generator.” However, the
Examiner finds “it nevertheless would have been obvious to any person
having ordinary skill in the art that the device under test [“DUT”] 10 can be
any type of circuit, including, inter alia, an amplifier circuit having a
feedback path, and the test signal output … can be any type of known
pattern generator, including, inter alia, a square wave generator which
outputs a step function.” Ans. 5-6.
Nevertheless, Appellants argue:

Official notice unsupported by documentary evidence
should only be taken by the examiner where the facts asserted
to be well-known, or to be common knowledge in the art are
capable of instant and unquestionable demonstration as being
well-known. See In re Ahlert, 424 F.2d 1088, 1091 (C.C.P.A.
1970), In re Knapp Monarch Co., 296 F.2d 230 (C. C.P.A.
1961) and M.P.E.P. § 2144.03.

Here, the Office Action relies upon an improper form of
Official Notice. Rather than presenting a prima facie case of
obviousness, the Office Action presents a conclusory statement
that does not address the claimed subject matter. The Office
Action fails to present any articulated reasoning to support the
use of both an amplification stage and a feedback path as
claimed.

App. Br. 14.
Similar arguments are also made with respect to Appellants’ claimed
“square wave generator” as recited in claim 6.
However, Appellants’ arguments are misplaced and are not
persuasive. The Examiner has taken Official Notice of Appellants’ claimed
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“amplifier circuit” and Appellants’ claimed “Square Wave Generator.” Ans.
5-6. In response thereto, a traversal of an Examiner’s finding of Official
Notice must “contain adequate information or argument” to create on its face
“a reasonable doubt regarding the circumstances justifying the . . . notice” of
what is well known to one with ordinary skill in the art. In re Boon, 439
F.2d 724, 728 (CCPA 1971). “To adequately traverse such a finding [of
Official Notice], an [A]pplicant must specifically point out the supposed
errors in the [E]xaminer’s action, which would include stating why the
noticed fact is not considered to be common knowledge or well-known in
the art.” Manual of Patent Examining Procedure (“MPEP”) § 2144.03(C).
See also 37 CFR 1.111(b); In re Chevenard, 139 F.2d 711, 713 (CCPA
1943). “If [A]pplicant does not traverse the [E]xaminer’s assertion of
[O]fficial [N]otice or [A]pplicant’s traverse is not adequate, . . . the common
knowledge or well-known in the art statement is taken to be admitted prior
art . . . .” MPEP § 2144.03(C).
In this case, Appellants do not present sufficient information or
argument to create on its face a reasonable doubt regarding the
circumstances justifying the Examiner’s Official Notice. None of
Appellants’ above-noted arguments provide a reasonable explanation
indicating why Appellants’ claimed “amplifier circuit” and “Square Wave
Generator” would not have been considered common knowledge or well-
known to one with ordinary skill in the art. As a result, Appellants’ traversal
of the Examiner’s finding of Official Notice is inadequate.
Nonetheless, the Examiner provides documentary evidence to support
the finding of Official Notice. In particular, the Examiner finds that the
device under test (DUT) can be any type of electronic components,
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including Appellants’ claimed “amplifier circuit,” and the test signal
generator can be any type of known pattern generators, including
Appellants’ claimed “Square Wave Generator.” Ans. 5-6; see also
Moriyasu, col. 11, ll. 31-41 (transient response is measured for various types
of electronic components including, but not limited to, capacitors, inductors
and semiconductors). Appellants’ claimed “amplifier circuit” is nothing
more than a basic electronic component, an off-the-shelf “feedback
amplifier”4 available since the 1930’s. Likewise, Appellants’ claimed
“square wave generator” is also well-known, off-the-shelf test equipment.
Appellants do not challenge the Examiner’s findings in that regard. As such,
we do not discern that the Examiner’s findings are incorrect.
With respect to dependent claims 7-9, Appellants make similar
arguments, that is, “the Examiner has failed to show” features of these
claims. App. Br. 16-19. Such skeletal arguments as offered here are not
arguments in support of separate patentability pursuant to 37 C.F.R.
§41.37(c)(1)(vii) and, therefore, need not be addressed. In re Lovin,
652 F.3d 1349, 1356-57 (Fed. Cir. 2011). Even if Appellants’ sole
arguments regarding claims 7-9 are arguments in support of separate
patentability, we still find them unavailing because Appellants failed to
dispute the Examiner’s findings regarding features of claims 7-9. Ans. 6.

4 A feedback amplifier is an amplifier which combines a fraction of the
output with the input so that a negative feedback original signal. The applied
negative feedback improves performance (gain stability, linearity, frequency
response, step response) and reduces sensitivity to parameter variations due
to manufacturing or environment. See U.S. Patent No. 2,102,671 issued in
1937 to H.S. Black.
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With respect to dependent claims 10 and 14, Appellants present no
separate patentability arguments. Instead, Appellants merely repeat the
arguments set forth in relation to independent claims 1 and 11.
For the same reasons discussed in connection with Appellants’
independent claims 1 and 11, we also sustain the Examiner’s obviousness
rejection of claims 2, 6-10, and 14.

CONCLUSION
On the record before us, we conclude that the Examiner has not erred
in rejecting: (1) claims 1, 11-13, and 15 under 35 U.S.C. § 102(b) as being
anticipated by Moriyasu; and (2) claims 2, 6-10, and 14 under 35 U.S.C.
§ 103(a) as being unpatentable over Moriyasu.

DECISION
As such, we AFFIRM the Examiner’s final rejections of claims 1-2
and 6-15.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

TORCZON, Administrative Patent Judge, dissenting in part.
I join the majority in affirming the rejection except with regard to
claim 15, for which rejection I see no support in the cited reference.

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