Ex parte Okada

Board of Patent Appeals and Interferences

Aug 16, 2000

08583960 (B.P.A.I. Aug. 16, 2000)

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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journal and (2) is not binding precedent of the Board.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. 76
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte KOUJI OKADA
________________
Appeal No. 1997-3956
Application 08/583,960
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ON BRIEF
________________
Before KRASS, FLEMING and RUGGIERO, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claim 6, the only claim pending in the present application.
Claims 1-5 and 7 have been canceled.
The invention relates to an A/D converter for converting
Appeal No. 1997-3956
Application 08/583,960
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an analog signal into a digital signal. On page 9, Appellant
discloses that Figure 3 is a circuit diagram showing a 6-bit
A/D converter according to one embodiment of the present
invention. On pages 10 through 17, Appellant discloses a
first embodiment of the 6-bit A/D converter. In particular,
Appellant discloses on page 15 that four capacitors having the
same capacitance are connected in series. The potential
difference of the middle-level region is applied to both ends
of the series circuit of capacitors C1 to C4 bias switches SE
and FF. The applied voltage is divided by four by the
capacitors C1 to C4. On page 22 of the specification,
Appellant discloses that capacitors C1 to C4 may be replaced
with four resistors having the same resistance. In this case,
the series-connected resistors are connected in parallel to
the resistor R1 so that the replaced resistor should have a
sufficiently large resistance to avoid influencing the
resistance of the string resistance R1.
The only claim in the present application, claim 6, is
reproduced as follows:
6. An A/D converter comprising:
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Application 08/583,960
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upper comparison voltage generating means for dividing a
reference voltage into a plurality of large-level regions with
first voltage-dividing elements and outputting voltages at
boundaries of the individual large-level regions as upper
comparison voltages;
a plurality of upper comparators comparing an analog
input voltage with said upper comparison voltages;
upper determining means for determining, from output
signals of said upper comparators, to which one of said large-
level regions said analog input voltage belongs, wherein said
determining means includes first converting means for
outputting a predetermined upper digital code in accordance
with said determined large-level region;
middle comparison voltage generating means for dividing
said large-level region to which the analog input voltage is
determined to belong by said upper determining means, into a
plurality of middle-level regions with second voltage-dividing
elements and outputting voltages at boundaries of said middle-
level regions as middle comparison voltages, the second
voltage-dividing elements being commonly used with the first
voltage-dividing elements;
a plurality of middle comparators comparing said analog
input voltage with said middle comparison voltages;
middle determining means for determining, from output
signals of said middle comparators, to which one of said
middle-level regions said analog input voltage belongs,
wherein said determining means includes second converting
means for outputting a predetermined middle digital code
corresponding to said determined middle-level region;

lower comparison voltage generating means for dividing
said middle-level region to which the analog input voltage is
determined to belong by said middle determining means, into a
plurality of small-level regions with third voltage-dividing
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Application 08/583,960
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elements and outputting voltages at boundaries of said small-
level regions as lower comparison voltages;
switching means for selectively connecting the lower
comparison voltage generating means in parallel to the
determined middle-level region by the middle determining
means;
a plurality of lower comparators comparing said analog
input voltage with said lower comparison voltages; and
lower determining means for determining, from output
signals of said lower comparators, to which one of said small-
level regions said analog input voltage belongs, wherein said
determining means further incudes a converting means for
outputting a predetermined lower digital code in accordance
with said determined small-level region, wherein [sic;]
said third voltage-dividing elements including one of a
capacitor string comprising a plurality of series-connected
capacitors and a resistor string comprising a plurality of
series-connected resistors, each resistor of the resistor
string having a high resistance sufficient to avoid
influencing the determined regions of the second voltage-
dividing elements.
The Examiner relies on the following references:
Yamada et al. (Yamada) 4,542,370 Sept. 17, 1985
Tsuji et al. (Tsuji) 4,893,124 Jan. 9, 1990
Yahagi et al. (Yahagi) 5,247,301 Sept. 21, 1993
Claim 6 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Tsuji in view of Yamada. In addition, claim
6 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Yahagi in view of Yamada.
Appeal No. 1997-3956
Application 08/583,960
Appellant filed a reply brief on October 6, 1997. 1
Examiner responded with a letter dated December 19, 1997
stating that the reply brief has not been entered into the
record and therefore is not for our consideration.
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Rather than reiterate the arguments of Appellant and
Examiner, reference is made to the brief and answer for1
further details thereof.
OPINION
We will not sustain the rejection of claim 6 under 35
U.S.C. § 103.
The Examiner has failed to set forth a prima facie case.
It is the burden of the Examiner to establish why one having
ordinary skill in the art would have been led to the claimed
invention by the express teachings or suggestions found in the
prior art, or by implications contained in such teachings or
suggestions. In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6
(Fed Cir. 1983). "Additionally, when determining obviousness,
the claimed invention should be considered as a whole; there
is no legally recognizable 'heart' of the invention." Para-
Ordnance Mfg. v. SGS Importers Int'l, Inc., 73 F.3d 1085,
Appeal No. 1997-3956
Application 08/583,960
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1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995), cert. denied, 519
U.S. 822 (1996), citing W. L. Gore & Assocs., Inc. v. Garlock,
Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309 (Fed. Cir. 1983),
cert. denied, 469 U.S. 851 (1984).
In regard to the rejection of claim 6 under 35 U.S.C. §
103 as being unpatentable over Tsuji in view of Yamada,
Appellant argues on page 5 that Tsuji fails to teach "said
third voltage dividing elements including one of a capacitor
string comprising a plurality of series-connected capacitors
and a resistor string comprising a plurality of series-
connected resistors, each resistor of the resistor string
having a high resistance sufficient to avoid influencing the
determined regions of the second voltage dividing elements" as
recited in claim 6. Appellant further argues on page 6 of the
brief, that Yamada discloses capacitor elements for an A/D
converter, however, Yamada fails to disclose the function of
the capacitor elements as the same function as claimed in
claim 6.
On page 3 of the answer, the Examiner admits that Tsuji
does not disclose specific construction of the referenced
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Application 08/583,960
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voltage generators but argues that resistive and capacitive
voltage dividers are typical fare. The Examiner argues that
it would have been obvious to use either resistors or
capacitors in the Tsuji system. The Examiner further argues
that it is common to use the reference voltage generators of
the stages subsequent to the upper stage to often subdivide a
coarse interval of the first reference generator. The
Examiner argues further that this interval subdivision is
typically accomplished by supplying a particular step to the
later stage voltage dividing element constituting some form of
common use. However, the Examiner has provided no evidence in
the record to support the Examiner's assertion. The Federal
Circuit states that "[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 USPQ 1780, 1783-84
n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984). It is further
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Application 08/583,960
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established that "[s]uch a suggestion may come from the nature
of the problem to be solved, leading inventors to look to
references relating to possible solutions to that problem."
Pro-mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d
1568, 1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996), citing In
re Rinehart, 531 F.2d 1048, 1054, 189 USPQ 143, 149 (CCPA
1976)(considering the problem to be solved in a determination
of obviousness). The Federal Circuit reasons in Para-Ordnance
Mfg. Inc. v. SGS Importers Int'l Inc., 73 F.3d 1085, 1088-89,
37 USPQ2d 1237, 1239-40 (Fed. Cir. 1995), cert. denied, 519
U.S. 822 (1996), that for the determination of obviousness,
the court must answer whether one of ordinary skill in the art
who sets out to solve the problem and who had before him in
his workshop the prior art, would have been reasonably
expected to use the solution that is claimed by the Appellant.
However, "[o]bviousness may not be established using hindsight
or
in view of the teachings or suggestions of the invention."
Para-Ordnance MFG. v. SGS Inporters Int'l, 73 F.3d at 1087, 37
Appeal No. 1997-3956
Application 08/583,960
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USPQ2d at 1239, citing W. L. Gore & Assocs., Inc. v. Garlock,
Inc., 721 F.2d at 1551, 1553, 220 USPQ at 311, 312-313. In
addition, our reviewing court requires the PTO to make
specific findings on a suggestion to combine prior art
references. In re Dembiczak, 175 F.3d 994, 1000-01, 50 USPQ2d
1614, 1617-19 (Fed. Cir. 1999).
We fail to find that the Examiner has provided evidence
as to why one of ordinary skill in art would have been led to
provide an upper comparison voltage generating means for
dividing reference voltage into a plurality of large level
regions with first voltage-dividing elements, a middle
comparison voltage generating means for dividing said large
level regions to which the analog input voltage is determined
to belong by said upper determining means, into a plurality of
middle-level regions with second voltage-dividing elements,
and a third voltage dividing element including one of the
capacitor string comprising a plurality of series-connected
capacitors and resistor string comprising a plurality of
series-connected resistors, each resistor of the resistor
string having a high resistance sufficient to avoid
Appeal No. 1997-3956
Application 08/583,960
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influencing determined regions of the second voltage elements.
We are not inclined to dispense with proof by evidence
when the proposition at issue is not supported by a teaching
in a prior art reference or shown to be common knowledge of
unquestionable demonstration. Our reviewing court requires
this evidence in order to establish a prima facie case. In re
Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88 (Fed.
Cir. 1984); In re Knapp-Monarch Co., 296 F.2d 230, 232, 132
USPQ 6, 8 (CCPA 1961); In re Cofer, 354 F.2d 664, 668, 148
USPQ 268, 271-72 (CCPA 1966). Furthermore, our reviewing
court states in In re Piasecki, 745 F.2d at 1472, 223 USPQ at
788 the following:
The Supreme Court in Graham v. John Deere Co., 383
U.S. 1 (1966), focused on the procedural and
evidentiary processes in reaching a conclusion under
Section 103. As adapted to ex parte procedure,
Graham is interpreted as continuing to place the
"burden of proof on the Patent Office which requires
it to produce the factual basis for its rejection of
an application under section 102 and 103". Citing
In re Warner, 379 F.2d 1011, 1020, 154 USPQ 173, 177
(CCPA 1967).
In regard to the rejection based upon Yahagi in view of
Yamada, Appellant argues that neither Yahagi nor Yamada
Appeal No. 1997-3956
Application 08/583,960
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teaches a third voltage dividing element which includes one
compacitor string and a resistor string wherein the resistor
string has a high resistance sufficient to avoid influencing
the determining region of second voltage providing element.
Appellants argue that this suppresses a direct current flow
into the third voltage-dividing element thereby avoiding
influencing of the reference voltage.
The Examiner states on page 4 that Yahagi discloses a
three stage ADC in Figure 7. The Examiner further states that
the first reference voltage generator is shared by the upper
string and medium stage. A second reference voltage generator
supplies the lower stage with the particular step level as
determined by the medium encoder output. The Examiner admits
that Yahagi does not disclose the makeup of the reference
voltage generators as claimed by Appellant. Examiner argues
that resistive or capacitive dividers can be interchangeably
used as taught by Yamada.
As we pointed out above we fail to find any evidence in
Yamada of a teaching or suggestion of providing Appellant's
claimed upper comparison voltage generating means for dividing
a reference voltage, no comparison voltage generating means
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for dividing said large-level region into a plurality of
middle-level regions the second voltage-dividing elements and
or comparison voltage generating means for dividing said
middle-level regions into a plurality of small-level regions
with third voltage dividing elements wherein said third
voltage dividing elements include one of a capacitor string
comprising a plurality of series-connected capacitors and a
resistor string comprising a plurality of series-connected
resistors, each resistor of the resistor string having a high
resistance sufficient to avoid influencing the determined
regions of the second voltage-dividing elements.
We have not sustained the rejection of claim 6 under 35
U.S.C. § 103.
Finally, the Examiner's decision is reversed.
37 CFR § 1.196B
A new ground of rejection of claim 6 is entered under 35
CFR 1.196(b). The specification is objected to under 35
U.S.C.
§ 112, first paragraph, as failing to provide an adequate
written description of the invention. Claim 6 is rejected
under 35 U.S.C. § 112, first paragraph, for the reasons set
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Application 08/583,960
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forth in objection to the specification.
"The function of the description requirement [of the
first paragraph of 35 U.S.C. § 112] is to ensure that the
inventor had possession, as of the filing date of the
application relied on, of the specific subject matter later
claimed by him." In re Wertheim, 541 F.2d 257, 262, 191 USPQ
90, 96 (CCPA 1976). "It is not necessary that the application
describe the claim limitations exactly, . . . but only so
clearly that persons of ordinary skill in the art will
recognize from the disclosure that Appellant's invented
processes including those limitations." Wertheim, 541 F.2d at
262, 191 USPQ at 96, citing In re Smythe, 480 F.2d 1376, 1382,
178 USPQ 279, 284 (CCPA 1973). Furthermore, the Federal
Circuit points out that "[i]t is not necessary that the
claimed subject matter be described identically, but the
disclosure originally filed must convey to those skilled in
the art that applicant had invented the subject matter later
claimed." In re Wilder, 736 F.2d 1516, 1520, 222 USPQ 369,
372 (Fed. Cir. 1984), cert. denied, 469 U.S. 1209 (1985),
citing In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096
Appeal No. 1997-3956
Application 08/583,960
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(Fed. Cir. 1983).
Appellant's claim 6 recites "said third voltage-dividing
element including one of a capacitor string comprising a
plurality of series-connected capacitors and a resistor string
comprising a plurality series-connected resistors, each
resistor of the resistor string having a high resistance
sufficient to avoid influencing the determined regions of the
second voltage-dividing elements." In the appeal brief on
page 3, Appellant states that the compacitor string as claimed
is shown as C1 to C4 shown in Figure 3 and disclosed on page
5, line 13, in the
Appellant's specification. Appellant further states that the
resistive string comprising a plurality of series-connected
resistors is shown as R1 in Figure 3 and disclosed on page 11,
line 3.
We find that the disclosure as originally filed does not
provide a description of the R1 resistor string having
resistors of this resistor string having a high resistance
sufficient to avoid influencing the determined region of the
second-voltage element as claimed in Appellant's claim 6. We
note that the specification as pointed to by the Appellant on
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page 11 only states that Figure 3 shows a high reference
voltage VRH and a low reference voltage VRL are divided by the
resistor string formed by 16 series-connected resistors R1.
Those resistors R1 have the same resistance. The
specification does not disclose that the resistance must be
sufficient to avoid influencing the determined regions of the
second voltage-dividing element.
We further note that on page 22 of the specification that
Appellant discloses that the present invention is not limited
to the above described embodiments that may be modified in
various manners as follows. Appellant further discloses that
the capacitors R1 to R4 may be replaced by four resistors
having the same resistance. Appellant does disclose that the
series-connected resistors are connected and parallel to the
resistors R1, so that the replaced resistors could have a
sufficiently large resistance to avoid influencing resistant
R1. However, the specification does not describe that the
resistor value for R1 should be sufficiently large to avoid
influencing the determined regions of the second voltage-
dividing elements.
In view of the above rationale we find that claim 6 is
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unpatentable over 35 U.S.C. § 112, first paragraph.
This decision contains a new ground of rejection pursuant
to 37 CFR 1.196(b).
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR
§ 1.196(b) provides that, “A new ground of rejection shall not
be considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the Appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the
application will be remanded to the Examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Appeal No. 1997-3956
Application 08/583,960
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REVERSED, 37 CFR 1.196(b)
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
MICHAEL R. FLEMING ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
Appeal No. 1997-3956
Application 08/583,960
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Paul F. Daebeler
Staas & Halsey
Suite 500
700 Eleventh Street, NW
Washington, DC 20001
MRF/ki