Ex Parte Kobayashi

Board of Patent Appeals and Interferences

May 19, 2004

09324237 (B.P.A.I. May. 19, 2004)

1 No rejection has been set forth for claim 20. Note appellant’s
brief, page 1.
1
The opinion in support of the decision being entered
today was not written for publication and
is not binding precedent of the Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte KEVIN W. KOBAYASHI

_______________
Appeal No. 2003-0522
Application No. 09/324,237
_______________
ON BRIEF
_______________
Before THOMAS, BARRETT, and DIXON, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant has appealed to the Board from the examiner’s
final rejection of claims 1, 2, 8 through 14 and 211 through 30.
Representative claim 1 is reproduced below:
Appeal No. 2003-0522
Application No. 09/324,237
2
1. A harmonic mixer comprising:
a pair of complementary transistors coupled together;
an input port; and
an output port.
The following reference is relied on by the examiner:
Cerny, Jr. et al. (Cerny) 4,193,036 Mar. 11, 1980
Claims 1, 2, 8, 10, 11, 26 and 27 stand rejected under
35 U.S.C. § 102(b) as anticipated by Cerny. This rejection is
noted at the top of page 3 of the answer where the examiner makes
reference to the statement of the rejection in the final
rejection, Paper No. 7, for the details of this rejection.
We note here that the additional rejection of the remaining
claims on appeal under 35 U.S.C. § 103 over this reference to
Cerny has not be stated by the examiner to have been maintained
in the answer. Therefore, since the examiner has not maintained
the rejection of the remaining claims on appeal, claims 9, 12
through 14, 21 through 25 and 28 through 30, the rejection of
them under 35 U.S.C. § 103 in the final rejection is considered
to have been withdrawn, either intentionally or inadvertently.
Rather that repeat the details of the examiner’s positions,
reference is made to the final rejection and the answer for the
examiner’s positions and to the brief for appellant’s positions.
Appeal No. 2003-0522
Application No. 09/324,237
2 A copy of this relevant material is attached to this opinion.
3
OPINION
Generally for the reasons set forth by appellant in the
brief, we reverse the rejection of all claims on appeal under
35 U.S.C. § 102.
All rejected claims on appeal in some manner recite
“complementary transistors”. The discussion in the paragraph
bridging specification pages 5 and 6 with respect to the initial
circuit embodiment in Figure 3a appears to define generally that
complementary transistors are in the form of a transistor pair of
NPN and PNP bipolar transistors or complementary metal oxide
semiconductor (CMOS) transistors formed from NMOS and PMOS
devices. Appellant’s submission of selected pages from the book
in Appendix 2 attached to the brief attempts to confirm this.
As is known in the art, the terms complementary and
complementary transistors have specific meanings. In this
regard, we make reference to the McGraw-Hill Dictionary of
Scientific and Technical Terms, Fifth Edition, page 421, (McGraw-
Hill, Inc., NY, 1994).2
These terms are defined in this manner:
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Application No. 09/324,237
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complementary [ELECTR] Having pnp and npn or p- and n–
channel semiconductor elements on or within the same
integrated-circuit substrate or working together in the
same functional amplifier state.
complementary transistors [ELECTR] Two transistors of
opposite conductivity (pnp and npn)in the same
functional unit.

The initial circuit in Fig. 1 of Cerny relates to his
balanced active mixer circuit 101 which is modified in various
minor forms in the succeeding Figs. 2 through 5. Transistors
120, 121 relied upon by the examiner, such as in initial Figs. 1
through 3, are both NPN transistors and thus would not be
considered to be complementary transistors in the art.
Additionally, the embodiment in Cerny’s Figs. 4 and 5 relate to
FET transistors rather than the bipolar transistors of the same
conductivity type in Figs. 1 through 3. Since these transistors
in Figs. 4 and 5 of Cerny are of the same transistor type, they
are not considered by the artisan as complementary transistors.
In view of the foregoing, the decision of the examiner
rejecting various claims on appeal under 35 U.S.C. § 102 is
reversed.
Under the provisions of 37 CFR 1.196(b) all of the pending
claims 1, 2, 8 through 14 and 20 through 30 are rejected under
the second paragraph of 35 U.S.C. § 112 as being vague and
indefinite. This rule permits us to reject any pending claim.
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Application No. 09/324,237
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In the context of all claims on appeal, there is no
recitation in the body of the claims of anything being harmonic
nor is there any recitation of a mixer or a harmonic mixer of any
type even though the preamble indicates such of each claim.
Thus, there is no recitation in any of the claims on appeal of
any (harmonic) frequencies that are mixed in any manner
harmonically or otherwise. As such, the scope of the applicable
prior art is significantly expanded.
Among the independent claims on appeal, there is also no
recitation of any interconnectability of the recited elements to
form any single circuit. For example, there is no recitation of
the manner in which an input port and the output port recited
separately are connected to the other recited elements of the
complementary transistor pair coupled together. Also, in claims
2 and 8, the respective output port is noted, but it is not
connected to any other recited elements. In claim 8 as well, in
the “first filter” clause the “said port”, is indefinite since it
is not stated whether the language refers to the previously
recited input port or output port. As in the other earlier noted
claims, claim 10 recites an output port, but it is not connected
to any other circuit element. The recitation in the “first
filter” clause of said “output terminal” has no antecedent basis,
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Application No. 09/324,237
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but it is surmised that this term refers to the previously
recited output port. The other independent claims on appeal
reflect similar problems and indefiniteness.
In summary, we have reversed the examiner’s rejection of
various claims on appeal under 35 U.S.C. § 102. We have also
instituted a new ground of rejection under the second paragraph
of 35 U.S.C. § 112 of all pending claims, claim 1, 2, 8 through
14 and 20 through 30.
This decision contains a new ground of rejection pursuant to
37 CFR § 1.196(b). 37 CFR § 1.196(b) provides that, “A new ground
of rejection shall not be considered final for purposes of
judicial review.”
37 CFR § 1.196(b) also provides that the appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of
rejection to avoid termination of proceedings (§ 1.197(c)) as to
the rejected claims:
(1) Submit an appropriate amendment of the claims
so rejected or a showing of facts relating to the
claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
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Application No. 09/324,237
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(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED
37 CFR § 1.196(b)
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
JDT/vsh
Appeal No. 2003-0522
Application No. 09/324,237
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PATENT COUNSEL
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SPACE & ELECTRONICS GROUP
ONE SPACE PARK E2/6072
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