Ex Parte Nash et al

Patent Trial and Appeal Board

Sep 26, 2016

12778821 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121778,821 05/12/2010
20995 7590 09/28/2016
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
FIRST NAMED INVENTOR
Eamon Nash
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.
ADIRE.016A 7207
EXAMINER
VALONE, THOMAS F
ART UNIT PAPER NUMBER
2858
NOTIFICATION DATE DELIVERY MODE
09/28/2016 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):
j ayna.cartee@knobbe.com
efiling@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EAMON NASH, DALE WILSON, and CARLOS CAL V0 1
Appeal2014-006790
Application 12/778,821
Technology Center 2800
Before BRADLEY R. GARRIS, WESLEY B. DERRICK, and
BRIAND. RANGE, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection under 35 U.S.C. § 103(a) of claims 1--4, 7-15, 17, and 18 over
AD83642 in view of Mini-Circuits3 and of claims 6 and 16 in further view of
Honeywell. 4 We have jurisdiction pursuant to 35 U.S.C. § 6.
We REVERSE.
1 Analog Devices, Inc. is identified as the real party in interest. Appeal
Br. 3.
2 The status of the Analog Devices AD8364 Product Data Sheet ("AD8364")
as prior art is not contested. Generally Appeal Br.; Reply Br.
3 The status of the Mini-Circuits document as prior art is not contested.
Generally Appeal Br.; Reply Br.
4 The status of the Honeywell HRF-SWl 000 Product Data Sheet
("Honeywell") as prior art is not contested. Generally Appeal Br.; Reply Br.
Appeal2014-006790
Application 12/778,821
BACKGROUND
Appellants' claimed invention is directed to apparatus and methods
for radio frequency (RF) power detection. Spec. Abstract. The apparatus
includes a directional coupler and an RF switch where the RF switch can
selectively change coupling between the directional coupler and the RF
power detector. Spec. Abstract.
There are three independent claims-I, 8, and 12.
Independent claims 1 and 12 are illustrative:
1. An apparatus comprising:
a switch having at least a first node, a second node, and a
third node, wherein the switch is configured to selectively
operatively couple at least one of the first node or second node
to the third node in response to a control signal; and
a radio frequency (RF) power detector having a detector
input, wherein the RF power detector is configured to generate
a signal indicative of RF power at the detector input as an
output of the detector, wherein the detector input is electrically
coupled to the third node of the switch, wherein the signal
indicative of power of the RF signal represents a forward RF
power when the first node of the switch is operatively coupled
to the third node of the switch, and wherein the signal
indicative of power of the RF signal represents a reflected RF
power when the second node of the switch is operatively
coupled to the third node of the switch.
12. An apparatus comprising:
an RF switch having at least a first node, a second node,
and a third node, wherein the RF switch is configured to
selectively electrically couple at least one of the first node and
the second node to the third node in response to a control
signal; and
a directional coupler having a first terminal, a second
terminal, a third terminal, and a fourth terminal, wherein the
third terminal is operatively coupled to the first node of the RF
switch, wherein the fourth terminal is operatively coupled to the
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Appeal2014-006790
Application 12/778,821
second node of the RF switch, wherein the third terminal is
configured to provide to the third node of the RF switch a
portion of an RF signal traveling in a direction from the first
terminal to the second terminal when the first node of the RF
switch is electrically coupled to the third node of the RF switch,
wherein the fourth terminal is configured to provide to the third
node of the RF switch a portion of an RF signal traveling in a
direction from the second terminal to the first terminal when
second node of the RF switch is electrically coupled to the third
node of the RF switch.
Appeal Br. (Claims Appendix) 32, 34.
Independent claim 8-directed to a method of calculating a ratio of
forward RF power and reflected RF power-is similar to claim 1 in that it
recites providing "a directional coupler, a switch, an RF power detector, and
a processor wherein the switch is configured to selectively operatively
couple ... [terminals] of the directional coupler to an input of the RF power
detector."
Claims 6 and 16, depending from independent claims 1 and 12,
respectively, recite that "the switch comprises a double throw absorptive RF
switch."
DISCUSSION
Upon consideration of the record, we are persuaded that the Examiner
has failed to meet the burden of establishing the unpatentability under
35 U.S.C. § 103 of claims 1--4, 7-15, 17, and 18 over AD8364 in view of
Mini-Circuits and of claims 6 and 16 in further view of Honeywell. 5 We
are, therefore, constrained to reverse the Examiner's rejections. In re
5 We refer to the Final Office Action mailed July 24, 2013, the Appeal Brief
filed January 10, 2014, the Examiner's Answer mailed March 20, 2014, and
the Reply Brief filed May 19, 2014.
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Application 12/778,821
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) ("[T]he Examiner bears the
initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability. ").
Claims 1-4, 7-15, 17, and 18 over AD8364 and Mini-Circuits
The Examiner relies on an internally programmable single chip RF
power detector-AD8364-as providing a first node (INHA, channel A,
Fig. 50), a second node (INHB, channel B, Fig. 50), and a third node
(OUTP, Fig. 50) and finds that "[t]he AD8364 is already configured to
selectively operatively couple at least one of the first node or second node to
the third node in response to a control signal ... in the same manner for the
same purpose as the claimed switch." Ans. 2-3. The Examiner explains
that the "independent 'pull-down capabilities' for the intermediate OUTA
and OUTB pins (from the INHA and INHB inputs) ... switches off (to
ground) one node" and thus couples the other node to "to the OUTP third
node." Ans. 3; AD8364 21 Fig. 58. The Examiner also finds that AD8364
discloses use of the AD8364 power detector with a "simple three-terminal
'directional coupler or power splitter"' (Ans. 3, citing AD8364 26, 28, 30),
but concedes "AD8364 does not explicitly teach a common directional
coupler with four terminals" (Ans. 3).
The Examiner relies on Mini-Circuits for its disclosure of a directional
coupler having a first terminal, a second terminal, a third terminal, and a
fourth terminal wherein the Examiner finds the third terminal (terminated
port) and fourth terminal (coupled port) are configured to extract a portion of
RF signals traveling from the first terminal (input port) to the second
terminal (output port) and from the second terminal to the first terminal,
respectively. Ans. 3--4. The Examiner further relies on Mini-Circuits for
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Appeal2014-006790
Application 12/778,821
suggesting "the benefit of measuring incident and reflected power to
determine the common VSWR (voltage standing wave ratio). Ans. 4 (citing
Mini-Circuits 2).
As set forth by the Examiner, "the 'coupled port' of the Mini-Circuits
coupler [] ... would be the input INHA to Channel A for forward power
switching ... and the 'terminated port' would be the input INHB to Channel
B for reflected power switching." Ans. 8-9 (citing AD8364 26, Fig. 62).
The Examiner reasons that "a single AD8364 can take the detector input
(equivalently Channel A TruPwr or Channel B TruPwr) and switch the
output in an obviousness combination with a common directional coupler."
Ans. 9. The Examiner concludes one of ordinary skill in the art at the time
of invention would have found it obvious to have connected the AD83 64
switched power detector to a Mini-Circuits directional coupler in order to
determine the VSWR. Ans. 4.
Having considered the record, we do not find the Examiner's decision
well-founded because it fails to provide a sufficient basis for arranging the
elements in the manner set forth in the claims. See In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness."), quoted with approval in KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007).
As to independent claims 1 and 8, both require that the third node of
the switch is coupled to an input of the RF power detector. Claim 1 recites,
inter alia, that "the detector input is electrically coupled to the third node of
the switch." Claim 8 recites, inter alia, that the provided "switch is
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Application 12/778,821
configured to selectively operatively couple ... [terminals] of the directional
coupler to an input of the RF power detector."
The rejection of these claims, however, is grounded on AD8364 as
providing both the switch and RF power detector functions where the relied
on TruPwrTM Detectors lie between the INHA and INHB inputs and the
portion of AD83 64 that function as a switch-a portion including the
intermediate OUTA and OUTB pins-and OUTP is taken to be the third
node. Ans. 3; AD8364 21 Fig. 58. In this arrangement, the input at the first
and second nodes each provides an input to a RF power detector and the two
corresponding detector outputs are selectively coupled to the third node by
operation of the switch. This is not, as explained above, the arrangement set
forth in claims 1 and 8, as highlighted by Appellants' arguments. See, e.g.,
Appeal Br. 10, 14; Reply Br. 1-3.
Likewise, the Examiner's alternative reliance on Figure 50 "show[ing]
a straight wiring from the output of each of the power detectors channel A, B
to OUTA (pin 15) and OUTB (pin 10)" (Ans. 7-8) does not support the
arrangement of the elements as in claims 1 and 8 because there is no basis
for first and second nodes being selectively coupled to a third, but rather
direct connection of the first node to one detector and the second node to a
second and, as highlighted by Appellants (Reply Br. 3), it addresses only
outputs of the power detectors.
We further find the Examiner's position "that the order in which
electronic components are connected is not critical" (Ans. 9) and that "there
are insubstantial differences or structural equivalents between the prior art
and the claim" (Ans. 10) to be unfounded for the reasons set forth above.
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Application 12/778,821
As to further modifying the combination, we find the Examiner's
explanation lacks the necessary specificity as to the changes to be made
because rather than clearly setting forth the modification, the Examiner
instead discusses the functions to be accomplished, supposed benefits
obtained, and that the motivation to do so the same as disclosed in the instant
Specification. Ans. 7. Particularly where the Examiner has erroneously
reasoned that the order in which the components are connected is not
critical, and continues to rely on AD8364 as the detector, the Examiner has
failed to establish a sufficient basis for the elements arranged in the manner
set forth in the claims. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967)
("The Patent Office has the initial duty of supplying the factual basis for its
rejection. It may not ... resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in its factual basis.").
Further, on this record, we determine that the Examiner has failed to
properly establish the requisite motivation to modify the combination of
AD8364 and Mini-Circuits to include a switch where the switching function
is already provided by AD8364. See, e.g., Belden Inc. v. Berk-Tek LLC, 805
F.3d 1064, 1073 (Fed. Cir. 2015) ("[O]bviousness concerns whether a
skilled artisan not only could have made but would have been motivated to
make the combinations or modifications of prior art to arrive at the claimed
invention.") (emphasis in original).
As to independent claim 12, the switch required is "an RF switch
having at least a first node, a second node, and a third node."
The Examiner, as explained above, relies on AD8364 as providing the
switch function where the switching is the switching of detector output
signals rather than an RF input.
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Appeal2014-006790
Application 12/778,821
Appellants argue, inter alia, that AD8364 is not an RF switch.
Appeal Br. 23.
The Examiner fails to address Appellants' argument except to state
that "claim 12 resembles claim 1 and claim 8 with most of the same
limitations so that the answers to the arguments are the same as before" and
to maintain that "it would have been obvious for one of ordinary skill to put
known elements together such as the three that are claimed, for the same
purpose." Ans. 13.
In reply, Appellants emphasize that the Examiner has failed to address
the recitation of an RF switch and that the Examiner's statement regarding
putting known elements together is not sufficient to establish that claim 12 is
obvious. Reply Br. 6.
On this record, we cannot clearly discern what elements the Examiner
is relying on to provide the RF switch or what basis there is for elements to
be put together in a manner according to the claim. It follows that the
Examiner has failed to provide the requisite articulated reasoning necessary
to support the legal conclusion of obviousness. In re Kahn, 441 F.3d at 988.
For the reasons set forth above, we are constrained to reverse the
Examiner's rejection of claims 1-4, 7-15, 17, and 18.
Claims 6 and 16 over AD8364, Mini-Circuits, and Honeywell
The Examiner relies on AD8364 and Mini-Circuits as applied to
independent claims 1, 8, and 12. Ans. 5. The Examiner relies on Honeywell
for its teaching of an absorptive double throw RF switch that has an RF
input and two separate RF outputs. Ans. 5. The Examiner concludes it
would have been obvious to one of ordinary skill in the art at the time of the
invention to have included or substituted Honeywell's switch in the
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Appeal2014-006790
Application 12/778,821
combination "for the benefit of only a -1 dB insertion loss for the worst case
and requiring minimum power for use in a wireless base station and handset
applications." Ans. 5 (citing Honeywell 1-4).
Appellants argue, inter alia, that the combination does not provide all
of the elements of claims 6 and 16 and that the Examiner has failed to
provide a legally sufficient reason to make the proposed combination.
Appeal Br. 26-30. In addition to relying on the arguments as to claims 1
and 12, Appellants explain that "the Honeywell HRF-SWlOOO switch
provides an RF input RF In to either RF Outl or RF Out 2." Appeal Br. 27.
As to the Examiner's basis for adding the double throw absorptive switch,
Appellants argue that "not including [the switch] would [also] eliminate the
switch's insertions loss." Appeal Br. 28-30.
In response to Appellants' arguments, the Examiner maintains that
"the prior art Honeywell RF switch can be used as long as connections are
properly made by one of ordinary skill" and that the "terminate and coupled
out ports [can be] easily connected to the RF Out 1 and RF Out2 ports of the
'high performance single pole double throw (SPDT) absorptive RF switch'
made by Honeywell (HRF-SWlOOO) which then could easily be connected
to an input of the AD8364 for a power measurement." Ans. 14.
Appellants maintain, however, that the Honeywell HRF-SWlOOOO
switch cannot be reversed as set forth by the Examiner in the Answer to
accept two inputs and provide one output. Reply Br. 8 ("it can only provide
a single RF input to one of two different RF outputs"); 9 ("by connecting RF
Output pins of the Honeywell HRF-SWlOOO switch to a directional coupler
as proposed on page 14 of the Answer, no signals from the directional
coupler would be provided from the directional coupler").
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Application 12/778,821
As to claim 6, the Examiner's rejection grounded on substituting the
Honeywell HRF SWlOOO switch in AD8364 wholly fails to remedy the
deficiencies as to the rejection of claim 1. Even assuming arguendo that one
skilled in the art would have been motivated to replace the switching
function provided by AD8364 with an actual switch, the Examiner has failed
to establish a sufficient basis for arranging the elements in the manner set
forth in the claims.
As to the rejection of claim 6 grounded on addition of the Honeywell
HRF SWl 000 switch, we are persuaded by Appellants' unrebutted argument
that the relied on motivation-to obtain the "benefit of only a -1 dB insertion
loss ... and requiring minimum power"-is not sufficient because the
switching function is already met by AD8364 and simply omitting the
switch also avoids the insertion loss. Again, the issue is not whether a
skilled artisan could have made the combination or modification, but rather
whether they would they have been motivated to do so. Belden Inc. v. Berk-
Tek LLC, 805 F.3d at 1073.
Further, as to both substitution and addition of the Honeywell HRF
SWlOOO switch relied on by the Examiner, the Appellants have argued and
maintained that the Honeywell HRF-SWlOOO switch only provides an RF
input RF In to either RF Outl or RF Out2 and because of this cannot be
reversed to function as relied on by the Examiner because no signals would
be provided. Appeal Br. 27; Reply Br. 8-9. Having continued to rely on
substitution of this particular switch functioning in reverse (Ans. 5, 14), on
this record, which includes Appellants' unambiguous statements the switch
would not work, it is our opinion that the Examiner has not established that
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Application 12/778,821
the combination including the Honeywell HRF SWlOOO switch would
provide the apparatus of claim 6.
As to claim 16, the Examiner likewise fails to address Appellants'
argument as to the motivation to add a switch when the switching function is
already provided by AD8364 while continuing to rely on the need to wire a
directional coupler to the power detector AD8364. Ans. 14 (addressing "the
real issue of how to wire a Honeywell RF switch to the power detector
AD8364 and a four-terminal directional coupler"). Where the Examiner's
articulated reasoning for motivation to modify the prior art is grounded on
ease of connection "to an input of the AD8364 for a power measurement"
(Ans. 14), we also find an insufficient basis for how or why one of ordinary
skill in the art would have replaced the switching function of AD8364.
Further, as with claim 6, in light of the Examiner's reliance on the
Honeywell HRF SWl 000 switch operating in reverse orientation and
Appellants' unambiguous statements that the switch in that orientation
would not function, we likewise find the Examiner has not established that
the combination including the Honeywell HRF SWl 000 switch would
provide the apparatus of claim 16.
For the reasons set forth above, we are constrained to reverse the
Examiner's rejection of claims 6 and 16.
CONCLUSION
The Examiner's rejections of claims 1--4 and 6-18 under 35 U.S.C.
§ 103(a) are REVERSED.
REVERSED
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