Ex parte Miyashita

Board of Patent Appeals and Interferences

Sep 24, 1998

08094220 (B.P.A.I. Sep. 24, 1998)

Application for patent filed July 21, 1993. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision
being entered today (1) was not written
for publication in a law journal and (2)
is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MIYO MIYASHITA
____________
Appeal No. 95-4545
Application No. 08/0942201
____________
ON BRIEF
____________
Before THOMAS, SMITH, and CARMIICHAEL, Administrative Patent
Judges.
CARMICHAEL, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-4,
which constitute all the claims remaining in the application.
Claim 1 reads as follow:
1. A level shift circuit which drops an output
voltage of a prior stage circuit to an input voltage level
required at a next stage circuit comprising:
Appeal No. 95-4545
Application No. 08/094220
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a level shift diode having an anode and a cathode;
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a source follower enhancement-type field effect
transistor having a gate connected as an input
terminal of the circuit, a drain connected to a positive
power supply, and a source connected to the anode of the
level shift diode;
a constant current source having first and second
terminals;
a current adjusting enhancement-type field effect
transistor having a drain connected to the cathode of the
level shift diode as an output terminal of the circuit
and to the first terminal of the constant current
source, a gate connected to the second terminal of the
constant current source, and a source connected to a
negative terminal of a power supply; and
a resistor connected between the source and the gate
of the current adjusting enhancement-type field effect
transistor whereby a gate-to-source voltage of the
current adjusting enhancement-type field effect transistor
is controlled by a current flowing through the resistor
to enhancement-type field effect transistor.
The examiner’s Answer cites the following prior art:
Sharp 4,584,492 Apr. 22, 1986
Shinohara et al. (Shinohara) 4,645,998 Feb. 24,
1987
MacMillan et al. (MacMillan) 4,926,071 May 15,
1990
Nagasawa 5,177,378 Jan. 5, 1993
Seshita et al. (Seshita) 5,225,718 Jul. 6,
1993
OPINION
Appeal No. 95-4545
Application No. 08/094220
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Claims 1 and 2 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Nagasawa in view of Shinohara. Claim
3 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Nagasawa in view of Shinohara and Seshita. Claim 4
stands
rejected under 35 U.S.C. § 103 as being unpatentable over
Nagasawa in view of Sharp and McaMillian.
Claim 1
The examiner finds that Nagasawa discloses the claimed
invention except that Nagasawa’s pull down circuit 61 is
different. The recited pull down circuit comprises a constant
current source, a current adjusting enhancement-type field
effect transistor, and a resistor connected in a certain way.
The examiner finds that the recited pull down circuit is
disclosed by Shinohara. Appellant does not take issue with
those findings. In any event, we agree with those findings
and adopt them as our own.
According to the examiner, Shinohara suggested replacing
Nagasawa’s pull down circuit 61 with Shinohara’s pull down
circuit so that Nagasawa would have a pull down circuit
impervious to fluctuations in power supply. We agree with the
Appeal No. 95-4545
Application No. 08/094220
5
examiner. Shinohara does indeed make such a suggestion to one
of ordinary skill in the art. Column 3, lines 39-49.
Appellant argues that such a combination would not
achieve his result, of providing a level shift that is immune
to variations in the threshold values and/or gain coefficients
in the FET’s that comprises that circuit. However, such a
result is
not recited. Claims undergoing examination are given their
broadest reasonable interpretation consistent with the
specification, and limitations appearing in the specification
are not to be read into the claims. In re Etter, 756 F.2d
852, 858, 225 USPQ 1, 5 (Fed. Cir. 1985) (in banc).
Appellant’s argument is not commensurate in scope with his
claims and is not persuasive.
Moreover, as long as some motivation or suggestion to
combine the references is provided by the prior art taken as a
whole, the law does not require that the references be
combined for the reasons contemplated by the inventor. In re
Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir.
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Application No. 08/094220
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1992); In re Kronig, 539 F.2d 1300, 1304, 190 USPQ 425 427-28
(CCPA 1976);
In re Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA
1972). Therefore, the fact that the prior art suggested
replacing Nagasawa’s pull down circuit 61 with Shinohara’s
pull down circuit for a reason different than disclosed by
appellant, does not change the fact that the prior art
suggested a level shift circuit within the scope of Claim 1.
The rejection will be sustained.
Claims 2 and 3
Claims 2 and 3 stand or fall together with claim 1
because appellants have presented no arguments for the
separate patentability of Claim 1-3 under 37 CFR § 1.192.
Because we sustain the rejection of Claim 1, we also sustain
the rejections of claim 2 and 3.
Claim 4
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The examiner’s rejection of Claim 4 proposes to replace
Sharp’s resistor 11 with an FET shown in MacMillan’s Figure
14, and use the modified Sharp device as Nagasawa’s bias
voltage Vb. The examiner relies on "designs choice" for
modifying Sharp. Examiner’s Answer at 6.
Appellants argues:
"In making the rejection, the Examiner is essentially
substituting the transistor of one reference for a
resistor in another reference to build the present
invention because the present invention utilizes a transistor
in its constant current source and not a resistor. Impetus
for this substitution is not provided by the
references themselve nor by knowledge in the art. Thus,
prima racie obviousness has not been established and,
accordingly, the rejection of claim 4 is erroneous and
should be reversed".
Appeal Brief at page 11, line 26, through page 12, line 8.
We agree with appellant. The mere fact that the prior
art may be modified in the manner suggested by the examiner
does not make the modification obvious unless the prior art
suggested the
desirability of the modification. In re Fritch, 972 F.2d
1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir.
1992). In the present case, the examiner has identified no
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Application No. 08/094220
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prior art suggestion that it would be desirable to modify
Sharp as proposed in the rejection.
Because the examiner has not established a prima facie
case of obviousness, we will not sustain the rejection of
Claim 4.
CONCLUSION
The rejections of Claim 1-3 are sustained. The rejection
of claim 4 is not sustained.
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Application No. 08/094220
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No period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRED IN PART
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JAMES T. CARMIICHAEL )
Administrative Patent Judge )
Appeal No. 95-4545
Application No. 08/094220
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