Ex Parte Marholev

Board of Patent Appeals and Interferences

Jun 8, 2009

10460570 (B.P.A.I. Jun. 8, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte BOJKO F. MARHOLEV
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Appeal 2009-000800
Application 10/460,570
Technology Center 2800
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Decided:1 June 9, 2009
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Before MAHSHID D. SAADAT, ROBERT E. NAPPI, and
KARL D. EASTHOM, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-000800
Application 10/460,570

This is a decision on appeal under 35 U.S.C. § 134 of the final
rejection of claims 9 through 26.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm the Examiner’s rejections of these claims.

INVENTION
The invention is directed to an electro-static discharge (ESD)
protection circuit for a transmit/receive switch through the use of multiple
clamping elements. See Spec. 5-6. Claim 9 is representative of the
invention and reproduced below:
9. An electro-static discharge (ESD) protection circuit for a
transmit/receive switch having a first switching element and a
second switching element operably coupled to high-speed
signal pins of an integrated circuit, the ESD protection circuit
comprises:
a first string of clamping elements having a collective
capacitance less than capacitance of one clamping element of
the first string of clamping elements, wherein the first string of
clamping elements is operably coupled to the first switching
element and to conduct when a first polarity ESD voltage is
applied to the high-speed signal pins;
a second string of clamping elements having a collective
capacitance less than capacitance of one clamping element of
the second string of clamping elements, wherein the second
string of clamping elements is operably coupled to the first
switching element and to conduct when a second polarity ESD
voltage is applied to the high-speed signal pins;
a third string of clamping elements having a collective
capacitance less than capacitance of one clamping element of

2 Appellant elected to have claims 9-26 examined in response to the
Requirement for Restriction/Election filed 16 September 2005. As a result,
claims 1-8 were withdrawn from consideration.
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Application 10/460,570

the third string of clamping elements, wherein the third string of
clamping elements is operably coupled to the second switching
element and to conduct when a first polarity ESD voltage is
applied to the high-speed signal pins; and
a fourth string of clamping elements having a collective
capacitance less than capacitance of one clamping element of
the fourth string of clamping elements, wherein the fourth
string of clamping elements is operably coupled to the second
switching element and to conduct when the second polarity
ESD voltage is applied to the high-speed signal pins.

REFERENCES

Maloney US 5,719,737 Feb. 17, 1998

Chen US 5,808,342 Sep. 15, 1998

Song US 6,275,089 B1 Aug. 14, 2001

REJECTIONS AT ISSUE
The Examiner rejected claims 9-14 under 35 U.S.C. § 103(a) as being
unpatentable over Maloney in view of Song. Ans. 3-5.
The Examiner rejected claims 15-26 under 35 U.S.C. § 103(a) as
being unpatentable over Maloney in view of Song and Chen. Ans. 5-6.

ISSUES
Rejection of claims 9-14 under 35 U.S.C. § 103(a) as being unpatentable
over Maloney in view of Song

Claim 9
Appellant argues on pages 6-8 of the Appeal Brief and pages 3-4 of
the Reply Brief that the Examiner’s rejection of claim 9 is in error.
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Application 10/460,570

Appellant argues that neither Maloney nor Song disclose a first switching
element and a second switching element. App. Br. 6-8. Thus, with respect
to claim 9 Appellant’s contention presents us with the issue: has Appellant
shown that the Examiner erred in finding that Maloney in view of Song
teaches a first switching element and a second switching element?
Claims 10-14
Appellant argues on page 8 of the Appeal Brief and pages 3-4 of the
Reply Brief that claims 10-14 are allowable based upon their dependency on
claim 9. Thus, Appellant’s arguments with respect to the Examiner’s
rejection of claims 10-14 present us with the same issue as claim 9.

Rejection of claims 15-26 under 35 U.S.C. § 103(a) as being unpatentable
over Maloney in view of Song and Chen

Claim 15
Appellant argues on pages 8-9 of the Appeal Brief and page 4 of the
Reply Brief that the Examiner’s rejection of claim 15 is in error.
Appellant’s arguments rely upon the same reasoning as asserted with respect
to claim 9.
Thus, with respect to claim 15, Appellant’s contentions present us
with the same issue as claim 9.
Claims 16-20
Appellant argues on page 9 of the Appeal Brief and page 4 of the
Reply Brief that claims 16-20 are allowable based upon their dependency on
claim 15. Thus, Appellant’s arguments with respect to the Examiner’s
rejection of claims 16-20 present us with the same issue as claim 15.
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Application 10/460,570

Claim 21
Appellant argues on pages 9-10 of the Appeal Brief and page 4 of the
Reply Brief that the Examiner’s rejection of claim 21 is in error. Appellant
argues that neither Maloney, Song, nor Chen teach protecting a first
switching element with a combination of diode strings in response to an
ESD event while activating a second switching element. App. Br. 10.
Thus, with respect to claim 21, Appellant’s contentions present us
with the issue: has Appellant shown that the Examiner erred in finding that
Maloney in view of Song and Chen teach protecting a first switching
element with a combination of diode strings in response to an ESD event
while activating a second switching element?
Claims 22-26
Appellant argues on page 10 of the Appeal Brief and page 4 of the
Reply Brief that claims 22-26 are allowable based upon their dependency on
claim 21. Thus, Appellant’s arguments with respect to the Examiner’s
rejection of claims 22-26 present us with the same issue as claim 21.

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Application 10/460,570

FINDINGS OF FACT (FF)
1. Maloney discloses a prior art electrostatic discharge (ESD) circuit
that is used to protect an integrated power supply. The circuit
contains a resistive bias network that comprises two transistors
(123 and 125), a six stage cantilevered diode string (129), and a
termination circuit that consists of one transistor (121). Col. 1, ll.
38-39, 44-47, and Fig. 1.
2. Maloney further discloses an ESD circuit containing a resistive
bias network comprising three transistors (323, 325, and 327), a
cantilevered diode string (329), and a termination circuit that
consists of one transistor (321). This circuit operates in much the
same way as the circuit described in Figure 1. Col. 4, ll. 26-33, 41-
44 and Figs. 1 and 3.
3. During operation of the ESD circuit, transistors 323, 325, and 327
operate as cladded resistors when a voltage is supplied at node 317.
Col. 4, ll. 27-30 and Fig. 3.
4. Once the cladded resistors are biased, the cladded resistors in turn
bias the cantilevered diode string (329) in a weak forward bias.
This causes a drop in the excess voltage that is created during an
ESD pulse. Col. 4, ll. 27-33 and Fig. 3.

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Application 10/460,570

PRINCIPLES OF LAW
Office personnel must rely on Appellant’s disclosure to properly
determine the meaning of the terms used in the claims. Markman v.
Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc).
“[I]nterpreting what is meant by a word in a claim is not to be confused with
adding an extraneous limitation appearing in the specification, which is
improper.” In re Cruciferous Sprout Litigation, 301 F.3d 1343, 1348 (Fed.
Cir. 2002) (internal quotation marks and citations omitted; emphasis in
original).
On the issue of obviousness, the Supreme Court has stated that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 416 (2007).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. . . . [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.

Id. at 417. “One of the ways in which a patent’s subject matter can be
proved obvious is by noting that there existed at the time of the invention a
known problem for which there was an obvious solution encompassed by the
patent’s claims.” Id. at 419-420.
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Application 10/460,570

It is well settled that when a claimed product reasonably appears to be
substantially the same as a product disclosed in the prior art, the burden of
proof is shifted to applicant to prove that the prior art product does not
inherently or necessarily possess the characteristics attributed to the claimed
product. In re Spada, 911 F.2d 705, 708-709 (Fed. Cir. 1990); In re Best,
562 F.2d 1252, 1255 (CCPA 1977). “Whether the rejection is based on
‘inherency’ under 35 U.S.C. § 102, on ‘prima face obviousness’ under
35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and
its fairness is evidenced by the PTO’s inability to manufacture the products
or to obtain and compare prior art products.” Best, 562 F.2d at 1255 (CCPA
1977).
The Examiner bears the initial burden of presenting a prima facie case
of obviousness, and Appellant has the burden of presenting a rebuttal to the
prima facie case. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Appellant has the burden, on appeal to the Board, to demonstrate error in the
Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006).
ANALYSIS
Rejection of claims 9-14 under 35 U.S.C. § 103(a) as being unpatentable
over Maloney in view of Song

Claim 9
Appellant’s arguments have not persuaded us that the Examiner erred
in rejecting claim 9. Independent claim 9 recites “a first switching element
and a second switching element operably coupled to high-speed signal pins.”
Thus, the scope of the claim does not require that the switching elements
actually perform a switching function. The scope of the claim only requires
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that there be elements that have the ability to switch and that the switching
elements are coupled to high-speed signal pins.
The Examiner has found that the Maloney transistors are switching
elements since the transistors partially conduct in order to supply a voltage
to the diode string. Ans. 8. Appellant argues that the Maloney transistors
are not switching elements because they are biasing elements. App. Br. 7.
In addition, Appellant argues that the plain meaning of a switching element
requires that the element be controlled between an ON-state and an OFF-
state. Reply Br. 3. However, Appellant did not specifically define the term
“switching element” in the Specification, Appellant did not specifically
claim that the switching elements must perform an ON/OFF function, and
Appellant did not provide evidence that the plain meaning of a “switching
element” requires that it perform a solely ON/OFF function. In the absence
of such evidence, the Examiner’s interpretation of a switching element as a
device that partially switches ON/OFF is reasonable.
Maloney discloses an electrostatic discharge (ESD) circuit that is used
to protect an integrated circuit power supply. FF 1. The circuit contains a
resistive bias network that includes two transistors (123 and 125), a six stage
cantilevered diode string (129), and a termination circuit that consists of one
transistor (121). FF 1. The Examiner finds that transistors 123 and 125
comprise the claimed first and second switching elements. Ans. 8. Figure 3
also shows a resistive bias network that comprises three transistors (323,
325, and 327), a cantilevered diode string (329), and a termination circuit
that consists of one transistor (321). FF 2. The Examiner also finds that
transistors 323, 325, and 327 comprise the claimed switching elements.
Ans. 9. The circuit in Figure 3 operates in the same manner as the circuit in
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Figure 1. FF 2. During operation, transistors 323, 325, and 327 operate as
cladded resistors when the transistors are biased with a voltage supplied at
node 317. FF 3. In turn, the cladded resistors bias the cantilevered diode
string (329) in a weak forward bias in order to drop the excess voltage
created during an ESD pulse. FF 4. Therefore, the transistors (acting as
cladded resistors) are switched “partially” on in order to direct the voltage to
the diode string. As a result, the transistors are switching devices as broadly
interpreted by the Examiner. Thus, the Examiner’s rejection of claim 9 is
sustained.
Claims 10-14
Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of claims 10-14. Claims 10-14 are dependent upon
claim 9. Appellant’s arguments present the same issues discussed with
respect to claim 9. App. Br. 8. Therefore, we sustain the Examiner’s
rejection of claims 10-14 for the reasons discussed supra with respect to
claim 9.

Rejection of claims 15-26 under 35 U.S.C. § 103(a) as being unpatentable
over Maloney in view of Song and Chen

Claim 15
Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of claim 15. Claim 15 contains similar limitations to
claim 9. Appellant’s arguments present the same issues discussed with
respect to claim 9. App. Br. 8-9. Therefore, we sustain the Examiner’s
rejection of claim 15 for the reasons discussed supra with respect to claim 9.
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Application 10/460,570

Claims 16-20
Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of claims 16-20. Claims 16-20 are dependent upon
claim 15. Appellant’s arguments present the same issues discussed with
respect to claim 15. App. Br. 9. Therefore, we sustain the Examiner’s
rejection of claims 16-20 for the reasons discussed supra with respect to
claim 15.
Claim 21
Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of claim 21. Appellant presents similar arguments for
claim 21 as for claim 9. App. Br. 9-10. As discussed above, the arguments
with respect to claim 9 are not found to be persuasive and therefore the
similar arguments presented with respect to claim 21 are also not found to be
persuasive of error.
However, Appellant additionally argues that Maloney, Song, and
Chen do not teach “the combination of diode strings for protecting the first
switching element in response to an ESD event while activating the second
switching element.” App. Br. 10. The Examiner has found that Chen
teaches that it is known to use a string of diodes as claimed. Ans. 5.
Appellant’s statement merely concludes that this finding is in error without
citing evidence or further explanation. We consider such a conclusory
assertion without supporting explanation or analysis particularly pointing out
errors in the Examiner’s reasoning to fall short of persuasively rebutting the
Examiner’s prima facie case of obviousness. See Oetiker, 977 F.2d at 1445.
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Application 10/460,570

Once the Examiner has satisfied the burden of presenting a prima
facie case of obviousness, the burden then shifts to Appellant to present
evidence and/or arguments that persuasively rebuts the Examiner’s prima
facie case. Id. Since Appellant did not particularly point out errors in the
Examiner’s reasoning to persuasively rebut the Examiner’s prima facie case
of obviousness, the rejection of claim 21 is therefore sustained.
Claims 22-26
Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of claims 22-26. Claims 22-26 are dependent upon
claim 21. Appellant’s arguments present the same issues discussed with
respect to claim 21. App. Br. 10. Therefore, we sustain the Examiner’s
rejection of claims 22-26 for the reasons discussed supra with respect to
claim 21.

CONCLUSIONS OF LAW
Appellant has not shown that the Examiner erred in finding that
Maloney in view of Song teaches a first switching element and a second
switching element.
Appellant has not shown that the Examiner erred in finding that
Maloney in view of Song and Chen teach protecting a first switching
element with a combination of diode strings in response to an ESD event
while activating a second switching element.

SUMMARY
The Examiner’s decision rejecting claims 9-26 is affirmed.
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Appeal 2009-000800
Application 10/460,570

No time period for taking any subsequent action in connection
with this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

ELD

GARLICK HARRISON & MARKISON
P.O. BOX 160727
AUSTIN, TX 78716-0727

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