Ex Parte Karlsson et alDownload PDFPatent Trial and Appeal BoardJul 11, 201814002955 (P.T.A.B. Jul. 11, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/002,955 09/03/2013 27045 7590 ERICSSON INC. 6300 LEGACY DRIVE MIS EVR 1-C-11 PLANO, TX 75024 07/13/2018 FIRST NAMED INVENTOR Magnus Karlsson 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. P33811-US1 8141 EXAMINER RIVERA-PEREZ, CARLOS 0 ART UNIT PAPER NUMBER 2838 NOTIFICATION DATE DELIVERY MODE 07/13/2018 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): michelle.sanderson@ericsson.com pam.ewing@ericsson.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex PARTE MAGNUS KARLSSON, ANDERS KULLMAN, FREDRIK W AHLEDOW, HENRIK BORGENGREN, JONAS MALMBERG, and OSCAR PERSSON Appeal2017-007313 Application 14/002,955 Technology Center 2800 Before KAREN M. HASTINGS, RAEL YNN P. GUEST, and MICHAEL G. McMANUS, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 seek our review under 35 U.S.C. § 134 of the Examiner's final decision rejecting claims 24, 30, 32-35, 41 and 43--45 under 35 U.S.C. § 102(b) as being anticipated by Ortiz et al. (US 2005/0110474 Al, published May. 26, 2005)2. We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). 1 "Telefonaktiebolaget LM Ericsson (publ)" is stated to be the real party in interest (Appeal Br. 1 ). 2 The Examiner also rejected dependent claims 26-28 and 37-39 under 35 U.S.C. § 103(a) as unpatentable over Ortiz in combination with Brooks et al. (US 4,347,474, issued: Aug. 31, 1982) and Ojanen et al. (US 2009/0200996 Appeal2017-007313 Application 14/002,955 We REVERSE. Claim 24 is illustrative of the appealed subject matter ( emphasis added to identify disputed limitation): 24. A switched mode power supply having a control circuit operable to generate a control signal to control the duty cycle of the switched mode power supply, the control circuit comprising: an input reference voltage generator operable to receive a signal indicative of an input voltage (Vin) of the switched mode power supply and operable to generate a reference signal (ViJ directly proportional to the input voltage (Vtn); an error signal generator operable to receive a signal indicative of an output voltage (Vout) of the switched mode power supply and operable to generate an error signal (VE) based on the reference signal (VR) and based on the output voltage (Vout); and, a duty cycle control signal generator operable to generate the control signal (D) to control the duty cycle of the switched mode power supply in dependence upon the error signal (VE). Appeal Br. 12 (Claims App'x). Independent claim 3 5 is directed to a corresponding method in a switched power mode supply which recites a similar disputed limitation as in claim 24; that is, "generating a reference signal (VR) directly proportional to the input voltage (Vin)" (Appeal Br. 14; Claims App'x). As an initial matter, we note that the Examiner made two provisional obviousness type double patenting rejections in the Final Action mailed June 15, 2016. The first provisional obviousness type double patenting rejection was made over claims of Application No. 14/395,323, which is now Al, published: Aug. 13, 2009), and dependent claims 31 and 42 as unpatentable over Ortiz and Huang et al. (US 2001/00262675 Al, published: Feb. 3, 2011) (Final Act. 9-12). Appellants rely upon the arguments made with respect to the anticipation rejection as the basis for reversal of all claims (Appeal Br. 10). 2 Appeal2017-007313 Application 14/002,955 abandoned. Accordingly, that rejection is moot. The second provisional obviousness type double patenting rejection was made based on the claims of Application No. 14/375,394, which is now US 9,391,531, issued July 12, 2016. As the claims of the issued patent were amended subsequent to the Examiner's provisional rejection, we leave it to the Examiner to assess whether any provisional obviousness type double patenting rejection should be converted to a non-provisional obviousness type double patenting rejection based on the issued claims of US 9,391,531. Cf, Ex parte Jerg, 2012 WL 1375142 at *3 (BPAI 2012) (informative) ("Panels have the flexibility to reach or not reach provisional obviousness-type double- patenting rejections.") ( citing Ex parte Moncla, 95 USPQ2d 1884 (BP AI 2010) (precedential)). ANALYSIS The only dispute in this case is whether Ortiz identically discloses "an input reference voltage generator ... operable to generate a reference signal (V R) directly proportional to the input voltage (Vin)" as required in claim 24 (and corresponding method limitation in claim 35). Appellants argue that the Examiner has not met the burden to show that Ortiz identically discloses the disputed feature of "an input reference voltage generator ... operable to generate a reference signal (V R) directly proportional to the input voltage (Vin)" as recited in claim 24 ( and corresponding limitation in claim 35). A preponderance of the evidence supports Appellants' position. [U]nless a reference discloses within the four comers of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited 3 Appeal2017-007313 Application 14/002,955 in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). The Examiner relies upon Ortiz's formula for VE and makes a determination that this equation leads to the conclusion that the reference signal (i.e., Vx as annotated by both the Appellants and the Examiner in Fig. 6 of Ortiz) is directly proportional to the input voltage, that is, Vx = Vin(RF/Rl) (Ans. 3-5). As pointed out by Appellants, the formula for VE in Ortiz is not a linear sum of the inverting and non-inverting inputs to the amplifier (Appeal Br. 1 O; Reply Br. 3, 4). Appellants urge that the Examiner doesn't adequately justify or explain why the circuit of Ortiz necessarily functions so that "the contribution of the inverting input is Vx = Vin(RF/Rl)" (Ans. 5; Appeal Br. 1 O; Reply Br. 3, second paragraph). It is well established that inherency "may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient." Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (quoting In re Oelrich, 666 F.2d 578,581 (CCPA 1981)). An inherent characteristic must be inevitable. See Oelrich, 666 F .2d at 5 81. The Examiner also relies upon a "Figure from NPL Reference (http://electronicdesign.com/ideas-design/ efficiently-designop-amp-summer- circuit )" (Ans. 4) to further demonstrate why this feature is inherent in Ortiz (Ans. 5). However, a preponderance of the evidence supports Appellants' position that the Examiner has not adequately explained how Ortiz's formula for VE leads to the conclusion that Vx = Vin(RF/Rl) (Appeal Br. 10; Reply Br. 4 ). The Examiner has also not adequately explained why the relied upon 4 Appeal2017-007313 Application 14/002,955 NPL reference demonstrates why this feature is inherent in Ortiz (e.g., Reply Br. 3 (Appellants reasonably point out "there is no basis on which to conclude the input to the summing amplifier is V[x]=V[in](RF/Rl) solely from the fact that" it is a term in the equation for the summing amplifier's output;) Reply Br. 4 (Appellants state that "the Examiner's contention ignores the rest of the circuit disclosed in Ortiz")). Therefore, we agree with Appellants that the Examiner has not met the burden of presenting a prima facie case of anticipation based on an inherent or explicit disclosure of the claimed subject matter for the reasons explained in the Briefs and, in doing so, erred in finding that Ortiz necessarily discloses the claimed subject matter. In re Oetiker, 977 F .2d 1443, 1445 (Fed. Cir. 1992) ("[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability."). As such, we cannot sustain the anticipation rejection. Because the remaining rejections on appeal rely on the same rationale set forth in the anticipation rejection of claims 24 and 35, and the Examiner does not rely upon any other reference to overcome this deficiency of Ortiz, all of the Examiner's 35 U.S.C. §§ 102 and 103 rejections on appeal are reversed. DECISION The Examiner's decision is reversed. ORDER REVERSED 5 Copy with citationCopy as parenthetical citation