Ex Parte Mirzaei et alDownload PDFPatent Trial and Appeal BoardSep 11, 201311823079 (P.T.A.B. Sep. 11, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte AHMAD MIRZAEI and HOOMAN DARABI ____________________ Appeal 2011-010781 Application 11/823,079 Technology Center 2800 ____________________ Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and ANDREW J. DILLON, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-010781 Application 11/823,079 2 STATEMENT OF THE CASE Introduction Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1, 5-9, and 11-20. Claims 2-4 and 10 have been canceled. Although the Notice of Appeal is silent regarding which claims are appealed (see Notice of Appeal of June 18, 2010, appealing from the “last decision of the Examiner”), the Appeal Brief unambiguously states that only pending claims 12-20 are appealed (App. Br. 2 and 5). Accordingly, we confine our decision to those claims specifically appealed (claims 12-20). See Ex parte Ghuman, 88 USPQ2d 1478 (BPAI 2008) (precedential) (holding that when appellants are silent in the notice of appeal as to the specific claims being appealed, and then clearly state in the appeal brief that some of the finally rejected claims are not being pursued in the appeal, appellants should cancel those claims not pursued). Following our decision, the Examiner should cancel the non-appealed claims (claims 1, 5-9, and 11). See id.; see also Manual of Patent Examining Procedure (MPEP) § 1215.03, Rev. 8, July 2010. We have jurisdiction under 35 U.S.C. § 6(b) over the appeal of claims 12-20. We affirm. Exemplary Claim Exemplary independent claim 12 under appeal, with emphases added, reads as follows: Claim 12: A buffer circuit for reducing differential-mode phase noise and quadrature phase error, said buffer circuit comprising: Appeal 2011-010781 Application 11/823,079 3 first and second switching branches driven by an in- phase signal, said first and second switching branches being loaded by respective first and second resonators having a common output node; third and fourth switching branches driven by a quadrature-phase signal, said third and fourth switching branches being loaded by respective third and fourth resonators having another common output node; a common node of said first and second switching branches and said third and fourth switching branches being directly connected to a common bias current source to reduce said differential-mode phase noise and quadrature phase error at an output of said buffer circuit; said first, second, third, and fourth resonators not sharing a common node. The Examiner’s Rejections (1) The Examiner rejected claims 12-20 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim what Appellants consider to be their invention, because it is not definite “if the resonators share a common node or not.” Final Rej. 2. (2) The Examiner rejected claims 1, 5, 6, and 11 as being unpatentable under 35 U.S.C. § 103(a) over Gierkink (US 2004/0127172 A1) and Bojer (US 6,029,059).1 Final Rej. 2-5. 1 Appellants do not present any arguments for claims 1, 5, 6, and 11 (see App. Br. 5; Reply Br. 3). Because Appellants have not addressed the rejection of claims 1, 5, 6, and 11 over the combination of Gierkink and Bojer in the briefs, and Appellants specifically do not appeal this rejection, we will not address the § 103(a) rejection of claims 1, 5, 6, and 11 in our analysis. In view of the foregoing, our discussion in our analysis is limited to Appellants’ arguments as to the indefiniteness rejection of claims 12-20 Appeal 2011-010781 Application 11/823,079 4 (3) The Examiner rejected claims 7-9 and 12-20 as being unpatentable under 35 U.S.C. § 103(a) over Gierkink, Bojer, and Molnar (US 2005/0164669 A1).2 Ans. 3-7. Principal Issues on Appeal Based on Appellants’ arguments in the Appeal Brief (Br. 6-12) and the Reply Brief (Reply Br. 4-11), the following two principal issues are presented on appeal: (1) Are Appellants’ claims 12-20 indefinite under § 112, second paragraph? (2) Did the Examiner err in rejecting claims 12-20 as being obvious because the combination of Gierkink, Bojer, and Molnar fails to teach or suggest the resonator and node limitations at issue in representative claim 12? under § 112 and the obviousness rejection of claims 12-20 under § 103(a) over the combination of Gierkink, Bojer, and Molnar. 2 Appellants do not present any arguments for claims 7-9 (see App. Br. 5; Reply Br. 3). Separate patentability is not argued for claims 13-20, and Appellants present specific arguments only for independent claim 12 (see generally App. Br. 6-11; Reply Br. 4-11). In view of the foregoing, we select claim 12 as representative of the group of claims consisting of claims 12-20. With regard to claims 7-9, because Appellants have not addressed the rejection of claims 7-9 over the combination of Gierkink, Bojer, and Molnar in the briefs, and Appellants specifically do not appeal the rejection of claims 7-9, we will not address the § 103(a) rejection of claims 7-9 in our analysis. Appeal 2011-010781 Application 11/823,079 5 ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments in the Appeal Brief (App. Br. 6-12) and Reply Brief (Reply Br. 4- 11) that the Examiner has erred. We disagree with Appellants’ conclusions. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Final Rej. 2-10; Ans. 3-7), and (2) the reasons set forth by the Examiner in the Examiner’s Answer (Ans. 7- 9) in response to Appellants’ Appeal Brief. We concur with the conclusions reached by the Examiner. REJECTION UNDER 35 U.S.C. § 112, SECOND PARAGRAPH The test for definiteness under 35 U.S.C. § 112, second paragraph, is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). Claims must “particularly point[] out and distinctly claim[] the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112, second paragraph. Representative claim 12 recites “first and second resonators having a common output node,” “third and fourth resonators having another common output node,” “a common node of said first and second switching branches and said third and fourth switching branches being directly connected to a common bias current source,” and “said first, second, third, and fourth resonators not sharing a common node” (claim 12) (emphases added). According to 37 C.F.R. § 1.75(d)(1), “The claim or claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or Appeal 2011-010781 Application 11/823,079 6 antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description (See § 1.58(a).)” Notably, Appellants’ Figure 6 fails to show dots or separate numbered drawing elements representing the “common output node” and “another common output node” recited in claim 12 (compare this with Appellants’ numbering of elements 640, which represent a common node connected to the common bias current source 604 in Figure 6). “Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. (Ex parte Good, 1911 C.D. 43, 164 O.G. 739 (Comm’r Pat. 1911).)” MPEP § 608.02(d). Because Appellants have not shown the nodes common to the inputs of the resonators with separate numbered elements in Figure 6, the Specification as a whole fails to show the structural details essential for a proper understanding of claim 12. This conclusion is further bolstered by the fact that Appellants admit that claim 12 “may present some basis for confusion” (App. Br. 8). Appellants’ assertion (App. Br. 8-9) that the proposal to amend claim 12 by substituting “resonator node” and “another resonator node” for “common output node” and “another common output node” would render claim 12 definite under § 112, second paragraph, is irrelevant as such an amendment has not yet been entered. In view of the foregoing, we are not persuaded by Appellants’ arguments, and conclude that the Examiner did not err in determining that claim 12 is indefinite as to whether or not the resonators share a common node or not. Appellants have not established that the Examiner erred in rejecting claims 12-20 under § 112, second paragraph, as being indefinite. Accordingly, we sustain the § 112 rejection of claims 12-20. Appeal 2011-010781 Application 11/823,079 7 REJECTION OF CLAIMS 12-20 UNDER 35 U.S.C. § 103 OVER GIERKINK, BOJER, AND MOLNAR Appellants’ argument (App. Br. 10-11) that Molnar fails to show, disclose, or suggest first and second resonators coupled to a common resonator node, and third and fourth resonators coupled to another common resonator node, are not commensurate in scope with the actual language of claim 12. Claim 12 recites “a common node” and “another common node,” and fails to recite a resonator node. Thus, Appellants’ argument is not persuasive. Appellants’ argument that Molnar’s Figure 8 “shows four distinct resonators no two of which can be reasonably characterized as sharing a resonator node in common” (App. Br. 11) (emphahsis added), is also not persuasive for similar reasons as just discussed, and because Gierkink’s Figure 2 is relied upon by the Examiner as teaching this feature. Gierkink teaches or suggests first and second resonators having a common output node and third and fourth resonators having another common output node. Notably, Gierkink’s Figure 2 is very similar to Appellants’ Figure 6. And, although we agree with the Examiner (Ans. 5) that Bojer teaches a common bias current source Ibias (Fig. 6), we also find that Gierkink teaches or suggests a common node of the first, second, third, and fourth switching branches being directly connected to a common bias current source (see ¶ [0032], “bias current generator 210 may also be coupled to the plurality of transistors 220 at the common source 230”), as recited in representative claim 12. Molnar (Fig. 8) teaches or suggests first, second, third, and fourth resonators not sharing a common node, as recited in representative claim 12. Thus, we agree with the Examiner that the Appeal 2011-010781 Application 11/823,079 8 combination of Gierkink, Bojer, and Molnar teaches or suggests the limitations of claim 12. In view of the foregoing, we sustain the rejection of representative claim 12 as well as claims 13-20 grouped therewith as being obvious over the combination of Gierkink, Bojer, and Molnar. CONCLUSIONS (1) Appellants’ claims 12-20 are indefinite under § 112, second paragraph, because representative claim 12 does not clearly specify whether or not the first, second, third, and fourth resonators share common node. (2) The Examiner did not err in rejecting claims 12-20 as being unpatentable under 35 U.S.C. § 103(a) over Gierkink, Bojer, and Molnar because Gierkink teaches or suggests (i) first and second resonators having a common output node and third and fourth resonators having another common output node, and (ii) a common node of the first, second, third, and fourth switching branches being directly connected to a common bias current source (see ¶ [0032], “bias current generator 210 may also be coupled to the plurality of transistors 220 at the common source 230”), and Molnar teaches or suggests first, second, third, and fourth resonators not sharing a common node, as recited in representative claim 12. DECISION (1) The Examiner’s § 112 rejection of claims 12-20 is affirmed. (2) The Examiner’s prior art rejection of claims 12-20 over the combination of Gierkink, Bojer, and Molnar is affirmed. (3) Following this decision, non-appealed claims 1, 5-9, and 11 should Appeal 2011-010781 Application 11/823,079 9 be canceled by the Examiner. 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)(iv). AFFIRMED llw Copy with citationCopy as parenthetical citation