Ex Parte Mayes et al

Patent Trial and Appeal Board

Sep 27, 2017

14169084 (P.T.A.B. Sep. 27, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/169,084 01/30/2014 Michael Keith Mayes P-00556 US 3064
122390 7590
VLP Law Group LLP
19900 Price Avenue
Cupertino, CA 95014
09/29/2017 EXAMINER
TRA, ANH QUAN
ART UNIT PAPER NUMBER
2842
NOTIFICATION DATE DELIVERY MODE
09/29/2017 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):
ekwok@ vlplawgroup. com
patents @ vlplawgroup. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LINEAR TECHNOLOGY CORPORATION, MICHAEL KEITH
MAYES, TODD STUART KAPLAN, and DAVID EDWARD BLISS
Appeal 2016-008716
Application 14/169,084
Technology Center 2800
Before BEVERLY A. FRANKLIN, KAREN M. HASTINGS, and
DEBRA L. DENNETT, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1—14 under 35 U.S.C. § 103(a) as unpatenable over
at least the combined prior art of Morie et al., (US 7,911,369 B2) and Choy
1 Appellants identify the real party in interest as “Linear Technology
Corporation” (Appeal Br. 1).
Appeal 2016-008716
Application 14/169,084
et al., (US 7,348,829 B2)2. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We AFFIRM.
Claims 1 and 8 are illustrative of the subject matter on appeal
(emphasis added to highlight key limitations for purposes of this appeal):
1. An electronic circuit, comprising:
an analog-to-digital converter operated according to a first clock
signal; and
a charge pump circuit providing a negative power supply voltage to
the analog-to-digital converter, the charge pump circuit being operated
according to a second clock signal having a frequency that is different from
a frequency of the first clock signal, such that a noise level introduced by the
charge pump is less than an average noise level of the analog-to-digital
converter.
8. A method for providing a reduced noise power supply circuit for an
analog-to-digital converter, comprising:
providing a first clock signal of a first frequency to operate the analog-
to-digital converter, wherein the analog-to-digital converter receives a first
power supply voltage, a second power supply voltage and a ground
reference voltage; and
providing a second clock signal of a second frequency different from
the first frequency to operate a charge pump circuit that generates the
negative power supply voltage, such that a noise level introduced by the
charge pump is less than an average noise level of the analog-to-digital
converter.
2 The Examiner adds Fujiwara (US 2003/0229815 Al) for the rejection of
dependent claims 2-6 and 9-13 (e.g., as listed at Appeal Br. 3). Appellants
do not present separate arguments for this rejection (Appeal Br. 6, merely
stating “Fujiwara does not cure the deficiencies of Morie and Choy”).
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Application 14/169,084
ANALYSIS
Upon consideration of the evidence on this record and each of
Appellants’ contentions, we find that the preponderance of evidence on this
record supports the Examiner’s conclusion that the subject matter of
Appellants’ claims is unpatentable over the applied prior art. We sustain the
Examiner’s § 103 rejections because we are unpersuaded of reversible error
in the Examiner’s determination of obviousness essentially for the reasons
set out by the Examiner in the Answer.
We add the following primarily for emphasis.
It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int 7 Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264-
65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
With respect to the § 103 rejection of claim 1, Appellants’ argument
that neither reference discusses noise and that it is “impossible that their
combination discloses or suggests that their respective operating frequencies
allow for the specific noise relationship to be satisfied” is unpersuasive
(App. Br. 4). First of all, claim 1 is directed to the device of a control
circuit. Appellants have not specifically disputed the Examiner’s position
that it would have been obvious to use the charge circuit of Choy to generate
the negative voltage for the analog-to-digital converter of Morie; rather, they
have only argued that the combination does not explicitly teach or suggest
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Application 14/169,084
being operated at the recited frequency relationship (App. Br.; Reply Br.
generally). However, how the control circuit is “operated” does not appear
to patentably differentiate the claimed circuit by means of further limiting its
structure. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (where
there is reason to conclude that the structure of the prior art is inherently
capable of performing the claimed function, the burden shifts to the
applicant to show that the claimed function patentably distinguishes the
claimed structure from the prior art structure). See also In re Hallman, 655
F.2d 212, 215 (CCPA 1981). Appellants have not shown error in the
Examiner’s de facto determination that the device of Choy/Morie is capable
of being operated as recited in claim 1.
Furthermore, Appellants’ arguments that the applied prior art does not
explicitly teach the required relationship in claim 1 and method claim 8 (e.g.,
App. Br. 4, 5; Reply Br. 5-9) are not persuasive for essentially the reasons
set out by the Examiner (e.g., Ans. 2-5). One of ordinary skill in the art
would have readily inferred from the applied prior art that appropriate
frequencies must be chosen to efficiently and effectively operate the circuit.
Appellants have not shown reversible error in the Examiner’s determination
that one of ordinary skill would have reasonably determined, using no more
than ordinary creativity, the appropriate frequency to operate the charge
circuit to minimize unwanted noise from the overall circuit operation.
Indeed, the Specification states that “a conventional charge pump circuit”
may be used, as well as a “conventional programmable clock divider” (Spec.
4). KSR Int’l Co., 550 U.S. at 417 (2007) (the predictable use of known
prior art elements (or steps) performing the same functions they have been
known to perform is normally obvious; the combination of familiar elements
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Application 14/169,084
or steps is likely to be obvious when it does no more than yield predictable
results); Ball Aerosol and Specialty Container, Inc. v. Limited Brands, Inc.,
555 F.3d 984, 993 (Fed. Cir. 2009) (Under the flexible inquiry set forth by
the Supreme Court, the PTO must take account of the “inferences and
creative steps,” as well as routine steps, that an ordinary artisan would
employ).
Appellants for the first time in the Reply Brief characterize the noise
reduction limitation as based on an “unexpected result” (Reply Br. 1). Any
new arguments and new facts relied upon in the Reply Brief which were not
raised or relied upon in the Appeal Brief will not be considered by the Board
unless good cause is shown. 37 C.F.R. § 41.37(c)(l)(iv) (“Except as
provided for in §§ 41.41,41.47 and 41.52, any arguments or authorities not
included in the appeal brief will be refused consideration by the Board for
purposes of the present appeal.”); see also Ex parte Borden, 93 USPQ2d
1473, 1474 (BPAI2010).
In any event, a party asserting unexpected results as evidence of
nonobviousness has the burden of proving that the results are unexpected. In
re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997). We do not find
Appellants’ contention that there are unexpected results supporting the
patentability of the claims well-founded. Critically, Appellants do not direct
us to any statement in the Specification attesting to the unexpected nature of
the results or to any persuasive evidence that the results obtained would have
been unexpected at the time of the invention. Absent such, Appellants
cannot meet their burden. In re Geisler, 116 F.3d at 1471 (“Geisler made no
such assertion [that results were unexpected] in his application. Nor did
Geisler submit any such statement through other evidentiary submissions,
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Application 14/169,084
such as an affidavit or declaration under Rule 132 .. . Instead, the only
reference to unexpected results was a statement by Geisler’s counsel. . . that
Geisler’s results were ‘surprising.’”).
It is also noted that Appellants state that “any prime number greater
than 10 [as value N in the conventional programmable clock divider] would
introduce less than average noise” (Spec. 4; emphasis added). Similar to
Appellants, Choy uses a frequency divider for the signal fed to the charge
pump. Appellants have not shown that choosing any prime number greater
than 10 is outside the ordinary level of skill in the art, and thus has also not
shown that it was “unexpected” to determine an appropriate frequency to
minimize the noise level introduced by an admittedly conventional charge
pump.
We have considered Appellants’ evidence and arguments, but the
proffered evidence is ultimately unpersuasive. Consequently, after
consideration of Appellants’ arguments, we are unpersuaded of reversible
error in the Examiner’s determination of obviousness. Accordingly, we
affirm the Examiner’s prior art rejections under 35 U.S.C. § 103(a) of all the
claims on appeal for the reasons given above and presented by the Examiner.
DECISION
The Examiner’s § 103 rejections are affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
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