Ex Parte Karlsson et al

Patent Trial and Appeal Board

Jul 11, 2018

14002955 (P.T.A.B. Jul. 11, 2018)

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).
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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
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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
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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
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