Ex Parte Mercier et al

Patent Trial and Appeal Board

Apr 18, 2016

12529740 (P.T.A.B. Apr. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/529,740 0910312009
65913 7590 04/20/2016
Intellectual Property and Licensing
NXPB.V.
411 East Plumeria Drive, MS41
SAN JOSE, CA 95134
FIRST NAMED INVENTOR
Frederic Mercier
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.
00 7768 USl 6095
EXAMINER
STEVENS, GERALD D
ART UNIT PAPER NUMBER
2842
NOTIFICATION DATE DELIVERY MODE
04/20/2016 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):
ip.department.us@nxp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FREDERIC MERCIER, LUCA LOCOCO, and VINCENT
RAMBEAU
Appeal2014-005081
Application 12/529,740
Technology Center 2800
Before ROMULO H. DELMENDO, MARK NAGUMO, and
CHRISTOPHER M. KAISER, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants 1 seek our review under 35 U.S.C. § 134(a) of a final
decision of the Primary Examiner to reject claims 1-19. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 The Appellants state that the Real Party in Interest is "NXP
Semiconductors, as indicated at reel/frame nos. 023187 /0564 to NXP, B.V.,
headquartered in Eindhoven, the Netherlands" (Appeal Brief filed December
17, 2013, hereinafter "Appeal Br.," 2).
Appeal2014-005081
Application 12/529,740
BACKGROlH~D
The subject matter on appeal relates to a radio frequency filter
(Specification, hereinafter "Spec.," 1, 1. 6). Details of the radio frequency
filter are recited in representative claim 1, which we reproduce from page 10
of the Appeal Brief (Claims App.) (emphases added), as follows:
1. A radio frequency filter, for at least a frequency band,
compnsmg:
an input impedance adaption section including a first
branch having at least a switchable capacitor and at least a
second branch having at least a switchable capacitor, each of
the first and second branches electrically coupled in parallel to
an intermediate node; and
a tank capacitor section consisting of circuitry configured
and arranged to provide an overall impedance between the
intermediate node and a reference node that consists of
reactance, the tank capacitor section including a coil in parallel
with a switchable capacitive circuit having a first switchable
capacitor and at least a second switchable capacitor, the coil
and the switchable capacitive circuit being configured and
arranged between the intermediate node and the reference node
for providing a current path between the intermediate node and
the reference node, wherein at least one of the input impedance
adaption section and the tank capacitor section is configured
and arranged to provide a plurality of selectable capacitance
levels including zero capacitance; and
a gain adaption section including a first branch having at
least a switchable capacitor and at least a second branch having
at least a switchable capacitor, each of the first and second
branches thereof electrically coupled in parallel to the
intermediate node, and wherein current at the intermediate node
is electrically isolated from the reference node by both the input
impedance adaption section and the gain adaption section.
2
Appeal2014-005081
Application 12/529,740
THE REJECTIONS
The Examiner rejected the claims under 35 U.S.C. § 103(a) as
follows:
I. Claims 1, 4--6, and 8-19 as unpatentable over Weber et al.
(Weber), 2 Miya et al. (Miya), 3 and Luetzelschwab et al.
(Luetzelschwab ); 4 and
II. Claims 2, 3, and 7 as unpatentable over Weber, Miya,
Luetzelschwab, and Hyun et al. (Hyun). 5
(Examiner's Answer entered January 28, 2014, hereinafter "Ans.," 2; Final
Office Action entered July 24, 2013, hereinafter "Final Act.," 2---6.)
DISCUSSION
With respect to representative claim 1, the Examiner found that
Weber describes a wideband bandpass filter 8 comprising: an input tapping
circuit 12 that corresponds to the Appellants' specified "input impedance
adaption section"; a tank circuit 10 that corresponds to the Appellants'
specified "tank capacitor section" and includes an inductor 20; and an output
tapping circuit 14 that corresponds to the Appellants' specified "gain
adaption section," wherein the input tapping circuit 12 is connected serially
to the output tapping circuit by a balancing node 16 (i.e., an intermediate
node) (Final Act. 2-3) (citing, e.g., Weber, Fig. 3). Comparing Weber and
the subject matter of claim 1, the Examiner found (Final Act. 3--4) that
Weber
2 US 5,541,558 issued July 30, 1996.
3 US 5,697,087 issued December 9, 1997.
4 US 6,992,543 B2 issued January 31, 2006.
5 US 2007/0096842 Al published May 3, 2007.
3
Appeal2014-005081
Application 12/529,740
fails to disclose a coil, the first and second branches of each
input impedance and gain adaption section being coupled in
parallel to the intermediate node, and at least one of the input
impedance adaption section and the tank capacitor section being
configured and arranged to provide a plurality of selectable
capacitance levels that includes zero capacitance.
Regarding the "coil" limitation, the Examiner found that Miya
discloses an exemplary embodiment in which an inductor is provided in the
form of a distributed coil (Final Act. 4) (citing Miya, Fig. 12, element LI).
The Examiner concluded from the collective teachings of Weber and Miya
that a person of ordinary skill in the art would have "made the inductor such
as taught by Weber ... as a distributed coil such as taught by Miya" because
"it is well within the purview of one having ordinary skill in the art to have
used a specific art recognized equivalent distributed coil such as taught by
Miya ... in the place of a generic equivalent inductor such as taught by
Weber" (Final Act. 4).
Regarding the other differences, identified above, the Examiner found
that Luetzelschwab "exemplarily discloses forming a variable capacitor
(e.g., see 140 & 160) as a plurality of parallel circuits (i.e., a first branch and
at least a second branch) composed of series connected capacitors (e.g.,
142a, 142b, 142n; 162a, 162b, 162n) and MEMS [ microelectromechanical
systems (col. 1, 11. 47--48)] switches (e.g., 144a-144n; 164a-164n), i.e.,
passive devices" (id.) (citing Luetzelschwab Fig. 1). Based on this
additional finding, the Examiner concluded:
It would have been further obvious to one having ordinary skill
in the art ... to have replaced each of the variable capacitors
such as taught by the above combination [of Weber and Miya]
with an art recognized equivalent variable capacitor composed
of a plurality of parallel circuits such as taught by
Luetzelschwab ... because the variable capacitor as disclosed
4
Appeal2014-005081
Application 12/529,740
by Luetzelschwab ... provides the benefit of ensuring the
reliable achievement of high efficiency and high output power
over a relatively wide frequency range by minimizing MEMS
switch failure, e.g., see col. 2, lines 33-44 in
Luetzelschwab ....
The Appellants contend that the "rejections are improper because a
valid rationale has not been presented to combine the asserted references"
(Appeal Br. 4). Specifically, the Appellants argue that "the asserted
combination is presented to solve a problem (MEMS switch failure) that
does not (and could not) exist in the primary reference [Weber], and thus
would not be relevant to the primary reference or the alleged rationale to
combine the references (to solve a nonexistent problem)" (id.).
Additionally, the Appellants contend that while Weber's goal "is to provide
a wideband bandpass filter that includes a tank circuit having a capacitor to
determine a center frequency by utilizing variable capacitors 'to provide a
continuously variable frequency response"' (Appeal Br. 6), the Examiner
failed to explain how the proposed replacement of Weber's variable
capacitors with Luetzelschwab's three switchable capacitor branches would
be implemented in a manner consistent with Weber's disclosed requirement
(id.). See also Reply Brief filed March 28, 2014, at 5.
We agree with the Appellants that the Examiner failed to articulate a
sufficient reason with some rational underpinning to support a conclusion
that a person of ordinary skill in the art would have combined Weber and
Luetzelschwab in the manner claimed. KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007) (citing In re Kahn, 441F.3d977, 988 (Fed. Cir.
2006)).
Weber's Figure 3 is reproduced as follows:
5
Appeal2014-005081
Application 12/529,740
12
l ___ l __ l
In-\ I
I I
~-+~--- /-35 i
26 ! i 24, I
-l- I i
c: I I
--- I
I
L_. ___ _J
101 16
I --- i_ /---- - --1
I
I
I
If.·---.... ( I /18 I
I /
I • 20 ../
I - --- -
I I
L. - -- --- ---- - - J
Figure 3
Weber's Figure 3 above depicts a wideband bandpass filter 8 including, inter
alia: an input tapping circuit 12 provided with first and second variable
impedance elements 22, 24; a tank circuit 10 provided with a variable
capacitor 18 and inductor 20; and an output tapping circuit 14 provided with
first and second output variable impedance elements 28, 30 (col. 2, 11. 43-
62). Weber discloses that variable capacitors (i.e., input and output variable
impedances) are used to provide a continuously variable frequency response
(col., 1, 1. 66-col. 2, 1. 10), which results in a variable bandwidth filter that
does not introduce distortion (col. 1, 11. 61-63).
By contrast, Luetzelschwab describes a tuned radio frequency power
amplifier, in which a circuit for matching the impedance of an output load to
an active device includes a transformer a plurality of taps (col. 1, 11. 17-20;
col. 2, 11. 47-56). Specifically, Luetzelschwab's Figure 1 is reproduced as
follows:
6
Appeal2014-005081
Application 12/529,740
102
120s
,..-100 I 130 ,)
------- -- --~--
128
)
.f7G. 1
Luetzelschwab' s Figure 1 above depicts a MEMS tuned power amplifier 100
including matching circuit 102 for matching the impedance of an output load
172 to an active device 104 (i.e., a bipolar junction transistor), wherein the
matching circuit 102 includes, inter alia, a transformer 106 and a MEMS
controllable reactive network 130 of a first network of shunt capacitors 140
in which MEMS RF switches 144a-144n are coupled to a corresponding
plurality of capacitors 142a-142n, a network series of inductors 150, and a
second network of shunt capacitors 160 in which MEMS RF switches 164a-
164n are coupled to a corresponding plurality of capacitors 162a-162n (col.
5, 1. 21---col. 6, 1. 29).
The Examiner has not established-in the first instance-that the
array of MEMS RF switches and fixed capacitors as shown in
Luetzelschwab would be interchangeable with Weber's variable capacitors
7
Appeal2014-005081
Application 12/529,740
for the purpose of providing "continuously variable frequency response,"
which is required for Weber's bandpass filter (Weber, col. 1, 1. 66-col. 2, 1.
1 ). Indeed, the provision of Luetzelschwab 's MEMS RF switches and fixed
capacitors appears to be inconsistent with Weber's design requirements, and
the Examiner has not established sufficient interrelatedness between Weber
and Luetzelschwab to support their combination in the proposed manner.
KSR, 550 U.S. at 417-18 ("[T]he claimed subject matter may involve more
than the simple substitution of one known element for another or the mere
application of a known technique to a piece of prior art ready for
improvement. Often, it will be necessary ... to look to interrelated
teachings of multiple patents .... ").
The Examiner's position that Luetzelschwab' s design in Weber would
provide "the benefit of ensuring the reliable achievement of high efficiency
and high output power over a relatively wide frequency range by minimizing
MEMS switch failure" (Final Act. 4--5) (citing Luetzelschwab col. 2, 11. 33-
44) is not sound. As argued by the Appellants (Appeal Br. 4), Weber does
not describe the use MEMS switches and, therefore, Luetzelschwab' s goal
of minimizing MEMS switch failure is inapposite in Weber.
Because the Examiner failed to articulate a sufficient reason with
some rational underpinning to support the conclusion that a person of
ordinary skill in the art would have combined Weber and Luetzelschwab in
the manner as required by claim 1, we cannot affirm the rejection of claim 1
and claims dependent thereon.
Claim 16, the only other independent claim on appeal, recites the
same or similar disputed limitations as claim 1. Therefore, our reasons in
support of our decision apply equally for all claims on appeal.
8
Appeal2014-005081
Application 12/529,740
The Examiner's final decision to reject claims 1-19 is reversed.
REVERSED
9