Ex Parte Jin et al

Board of Patent Appeals and Interferences

Jul 28, 2010

10811031 (B.P.A.I. Jul. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte XIAODONG JIN, SEHAT SUTARDJA,
LAWRENCE TSE, and KING CHUN TSAI
____________

Appeal 2009-004129
Application 10/811,031
Technology Center 2800
____________

Before JAMES D. THOMAS, MAHSHID D. SAADAT, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-004129
Application 10/811,031

2
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-3, 5, 8-11, 13, 16-19, 21, 24-26, 28, 31, 32,
and 34.2 (Appeal Brief 7). We have jurisdiction over the appeal under 35
U.S.C. § 6(b).
We affirm.
Claim 1, which further illustrates the invention, follows:
1. A low noise amplifier, comprising:
a radio frequency input; and
an electrostatic discharge protection circuit including,
a pair of diodes each having a first and a second terminal;
a first diode of the pair having a first terminal coupled to the radio
frequency input and a second terminal directly coupled to a first supply;
a second diode of the pair having a second terminal coupled to the
radio frequency input and a first terminal directly coupled to the first supply;
and
a separate electrostatic discharge clamp directly coupled between a
high voltage supply and a low voltage supply so as to provide a discharge
path there between during an electrostatic discharge event;
the electrostatic discharge protection circuit operable to shunt electrostatic
discharge current during positive and negative electrostatic discharge events
away from the radio frequency input and through the first supply.

2 Appellants argue the patentability of claims 6, 7, 14, 15, 22, 23, 29, 30, 35,
and 36. Appeal Brief 11-15. However, these claims were objected to by the
Examiner. See Final Rejection 11-12; Answer 12-13. Notwithstanding
Appellants’ arguments, this matter is not before us since we lack jurisdiction
over petitionable matters. See, e.g., MPEP § 706.01 (“[T]he Board will not
hear or decide issues pertaining to objections and formal matters which are
not properly before the Board.”); see also MPEP § 1201 (“The Board will
not ordinarily hear a question that should be decided by the Director on
petition . . . .”).
Appeal 2009-004129
Application 10/811,031

3
Appellants appeal the following rejections:
Claims 1-3, 5, 8-11, 13, and 16 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Jenkins (US 6,738,248 B1; May 18,
2004), Duclos (US 5,994,760; November 30, 1999), and Rutfors (WO
02/05380 A1; January 17, 2002). Answer 3-8.
Claims 17-19, 21, 24-26, 28, 31, 32, and 34 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Jenkins and Duclos. Answer 8-
12.
Rather than repeat Appellants’ arguments or the Examiner’s positions
in their entirety, we refer to the Appeal Brief (filed April 3, 2008), the Reply
Brief (filed October 6, 2008), and the Answer (mailed August 5, 2008) for
their respective details. In this decision, we have considered only those
arguments actually made by Appellants. Arguments which Appellants could
have made but did not make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2008).

ISSUE
Does the combination of Jenkins, Duclos, and Rutfors disclose a low
noise amplifier having an ESD clamp coupled between high and low voltage
supplies wherein the input to the low noise amplifier is a radio frequency?

PRINCIPLES OF LAW
“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.” In re Kahn, 441 F.3d 977, 990
Appeal 2009-004129
Application 10/811,031

4
(Fed. Cir. 2006) (citation omitted) (internal quotation marks omitted). See
also In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (noting that merely
disclosing more than one alternative does not teach away from any of these
alternatives if the disclosure does not criticize, discredit, or otherwise
discourage the alternatives).
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See
Kahn, 441 F.3d at 987-88; In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991);
In re Keller, 642 F.2d 413, 425 (CCPA 1981). The Examiner can satisfy
this test by showing “‘some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.’” KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting Kahn, 441 F.3d at
988).

ANALYSIS
Appellants argue that the Examiner misunderstood the import of
Appellants’ arguments with respect to Jenkins’ Figure 3. Reply Brief 1. It
is Appellants’ position that Jenkins’ Figure 3 negates the Examiner’s
reasonable rationale for combining Duclos’ ESD clamp with Jenkins’
circuit. Id. Appellants conclude that Jenkins knew about the technique of
using an ESD clamp directly coupled between a high voltage supply and a
low voltage supply but consciously rejected the configuration, therefore
teaching away from the Examiner’s combination of Jenkins and Duclos.
Reply Brief 1-2; see also Appeal Brief 9.
However, Appellants’ conclusion that Jenkins teaches away from
employing Duclos’ clamp is merely speculation because Jenkins does not
discredit or discourage Duclos’ ESD clamp configuration. See Kahn, 441
Appeal 2009-004129
Application 10/811,031

5
F.3d at 990. The Examiner relied upon Duclos’ ESD clamp to modify
Jenkins for the purpose of providing bidirectional protection to Jenkins’s
circuit, thus establishing a prima facie case of obviousness. See Answer 5.
Therefore, we disagree with Appellants’ assertion that the Examiner did not
carry out his burden of establishing a prima facie case of obviousness with
respect to the Jenkins and Duclos combination.
Appellants argue that the Examiner merely stated the advantages of a
particular limitation, i.e., merely noted that adding ESD protection would be
desirable to prevent damage to an amplifier, and therefore failed to carry out
his burden of establishing a prima facie case of obviousness with respect to
the asserted combination of Jenkins and Rutfors. Appeal Brief 10.
However, the Examiner stated that it would have been obvious to one skilled
in the art to incorporate the protection of Jenkins into the device of Rutfors
to provide ESD protection to a wireless circuit, thus preventing Rutfors’s
low noise amplifier from being damaged. See Answer 4. Thus, Examiner
provided a rational foundation to support his obvious rejection. See KSR,
550 U.S. at 418. Therefore, we do not find Appellants’ arguments to be
persuasive.

DECISION
The Examiner’s rejections of claims 1-3, 5, 8-11, 13, 16-19, 21, 24-
26, 28, 31, 32, and 34 are sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1) (2009).

Appeal 2009-004129
Application 10/811,031

6
ORDER
AFFIRMED

babc

FISH & RICHARDSON P.C.
P.O BOX 1022
MINNEAPOLIS, MN 55440-1022