Ex Parte Mitchell

Patent Trial and Appeal Board

Feb 26, 2019

14546009 (P.T.A.B. Feb. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/546,009 11/18/2014
23494 7590 02/28/2019
TEXAS INSTRUMENTS IN CORPORA TED
PO BOX 655474, MS 3999
DALLAS, TX 75265
FIRST NAMED INVENTOR
Allan T. Mitchell
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.
TI-75173 7642
EXAMINER
SUN, YU-HSI DAVID
ART UNIT PAPER NUMBER
2895
NOTIFICATION DATE DELIVERY MODE
02/28/2019 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):
uspto@ti.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte ALLAN T. MITCHELL 1
Appeal 2018-003 063
Application 14/546,009
Technology Center 2800
Before BEYERL YA. FRANKLIN, CHRISTOPHER C. KENNEDY, and
MONTE T. SQUIRE, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-18. We have jurisdiction under 35 U.S.C.
§ 6(b ). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to methods of manufacturing
integrated circuits. E.g., Spec. ,r 3; Claims 1, 10. Claim 1 is reproduced
below from page 30 (Claims Appendix) of the Appeal Brief:
1 The Appellant is the Applicant, Texas Instruments Incorporated, which is
also identified as the real party in interest. See Br. 3.
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Application 14/546,009
1. A method of setting a trim level of an analog circuit in a
semiconductor integrated circuit, the analog circuit including a
floating-gate device, the method comprising the steps of:
electrically programming the floating-gate device to a first trim
level
including periodically sensing an output voltage of the analog
circuit to control the programming to stop at a desired first
output voltage level;
then baking the integrated circuit at an elevated temperature for
a selected duration;
then again electrically programming the floating-gate device to a
second trim level equal to or greater than the first trim level
including periodically sensing the output voltage of the
analog circuit to control the programming to stop at a desired
second output voltage level.
REJECTIONS ON APPEAL
The claims stand rejected as follows:
1. Claims 1, 2, 4--12, and 14--18 under 35 U.S.C. § 102(a)(l) as
anticipated by Holler (US 5,268,320, issued Dec. 7, 1993);
2. Claims 3 and 13 under 35 U.S.C. § 103 as unpatentable over Holler
in view of Blyth (US 5,969,987, issued Oct. 19, 1999).
ANALYSIS
After review of the cited evidence in the appeal record and the
positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in the Examiner's rejections.
Accordingly, we affirm the rejections for reasons set forth below, in the
Non-Final Action dated May 17, 2017 ("Office Action" or "Act."), and in
the Examiner's Answer. See generally Act. 2---6; Ans. 2-3.
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Application 14/546,009
Rejection 1
The Examiner finds that Holler anticipates the method of claim 1.
Act. 3--4. Relevant to the issues on appeal, the Examiner finds that Roller's
disclosure of "repeatedly monitoring" or "repeatedly measuring" a
"threshold voltage" is equivalent to claim 1 's requirement of "periodically
sensing an output voltage." Id.; Holler at, e.g., col. 6.
The Appellant argues that "repeatedly" monitoring or measuring a
"threshold voltage" is not the same as "periodically" sensing an "output
voltage." Br. 10-12. In particular, the Appellant repeats the portions of
Holler cited by the Examiner, quotes the relevant claim language, and asserts
without persuasive elaboration that disclosures of "repeatedly monitoring"
or "repeatedly measuring" a "threshold" voltage "teach[] away" from
"periodically sensing an output voltage," as claimed. Id. at 11.
That argument is not persuasive. To "teach away" a reference must
"criticize, discredit, or otherwise discourage" the claimed invention. See In
re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). The Appellant identifies
nothing in Holler that criticizes, discredits, or otherwise discourages
periodically sensing an output voltage. Accordingly, the Appellant fails to
show that Holler teaches away from the claimed invention.
To the extent that the Appellant's argument is based on differences
between a "threshold voltage" and an "output voltage," in the Answer the
Examiner finds that Holler teaches (1) that "output voltage is the product of
an input signal/voltage and a weight value," (2) that "weight value is the
threshold voltage," and (3) that "sensing the threshold voltage therefore
inherently requires sensing the output voltage." Ans. 2 (citing Holler at
1:54--56, 2:40--41). The Examiner makes similar findings in the Office
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Application 14/546,009
Action. See Act. 3--4 ("Thus sensing the threshold voltage requires sensing
the output voltage .... ").
Beyond reciting Roller's general description of what a threshold
voltage is ("a measure of the weight stored within a synapse sell," see Br.
11 ), and implying that a threshold voltage is not an output voltage, in the
Appeal Brief the Appellant does not persuasively address the Examiner's
relevant findings, see Br. 11, and the Appellant did not file a Reply Brief to
rebut or contest the Examiner's findings. Thus, the Appellant fails to
identify error in the Examiner's determination that "sensing the threshold
voltage requires sensing the output voltage." See Act. 4. In that regard, we
observe that, given a known input signal and a measured threshold voltage, a
person of ordinary skill in the art would have at once recognized the output
voltage based on the Examiner's uncontested identification of the
relationship between output, input, and threshold. See Ans. 2; Act 3--4. On
this record, the Appellant's argument is not persuasive of reversible error in
the Examiner's findings concerning threshold voltage and output voltage.
See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has long been the
Board's practice to require an applicant to identify the alleged error in the
examiner's rejections .... "); cf SmithKline Beecham Corp. v. Apotex Corp.,
439 F.3d 1312, 1320 (Fed. Cir. 2006) ("[M]ere statements of
disagreement ... as to the existence of factual disputes do not amount to a
developed argument.").
To the extent that the Appellant's argument is based on an alleged
difference between "repeatedly monitoring" and "periodically sensing," the
Appellant provides no explanation as to how or why "repeatedly
monitoring" does not fall within the scope of the term "periodically
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Application 14/546,009
sensing." For example, the Appellant does not identify any portion of the
Specification that defines how frequently something may occur and still be
considered to be "periodic." The Appellant's arguments amount to little
more than a naked assertion that the cited portions of the prior art do not
disclose the claim limitations. Such arguments are unpersuasive. See In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[T]he Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.").
The Appellant also argues, without meaningful elaboration, that
Holler teaches away from the claimed invention because Holler includes a
"third step" that involves "measuring the amount of threshold voltage shift."
Br. 10-11. To the extent that argument concerns "threshold voltage" as
opposed to "output voltage," it fails for the reasons set forth above. To the
extent the argument concerns an additional step in Holler that is not required
by claim 1, the argument fails because claim 1 is a "comprising" claim that
does not exclude additional steps, and also because the Appellant has not
identified any portion of Holler that "criticize[ s ], discredit[ s ], or otherwise
discourage[s]" any aspect of the claimed subject matter. See Fulton, 391
F.3d at 1201.
On this record, we are not persuaded of reversible error in the
Examiner's rejection. See Jung, 637 F.3d 1365; Lovin, 652 F.3d at 1357.
We affirm the Examiner's rejection of claim 1.
As to the remaining claims subject to Rejection 1, the Appellant
includes separate headers for each claim, but the Appellant's discussion of
those claims is either a naked assertion that Holler does not teach the
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claimed subject matter (claims 2, 4--9, 11, 12, and 14--18), or a repetition of
the arguments discussed and rejected above with respect to claim 1
( claim 10). Accordingly, we are not persuaded of reversible error in the
Examiner's rejection of claims 2, 4--12, and 14--18. See Jung, 637 F.3d
1365; Lovin, 652 F.3d at 1357.
Rejection 2
Although the Appellant includes a separate discussion of the claims
subject to Rejection 2, the discussion of each claim is simply a recitation of
the claim language followed by a naked assertion that the prior art does not
teach or suggest the claimed subject matter. See Br. 25-28. The Appellant's
discussion fails to address the Examiner's findings and conclusions or to
otherwise show error in the Examiner's rejection. See Jung, 637 F.3d 1365;
Lovin, 652 F.3d at 1357. We affirm the rejection.
CONCLUSION
We AFFIRM the Examiner's rejections of claims 1-18.
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
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