Ex Parte Olariu

Patent Trial and Appeal Board

Jan 11, 2017

13099723 (P.T.A.B. Jan. 11, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
UTMC155 1456
EXAMINER
CHEN, SIB IN
ART UNIT PAPER NUMBER
2842
NOTIFICATION DATE DELIVERY MODE
13/099,723 05/03/2011 Viorel Olariu
25235 7590 01/13/2017
HOGAN LOVELLS US LLP - Colorado Springs
TWO NORTH CASCADE AVENUE
SUITE 1300
COLORADO SPRINGS, CO 80903
01/13/2017 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):
patentcoloradospring @ hoganlo veils, com
HLU S Docke ting @ hoganlovells. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VIOREL OLARIU
Appeal 2015-007785
Application 13/099,723
Technology Center 2800
Before TERRY J. OWENS, WESLEY B. DERRICK, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1—3 and 5—7. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
1 In our Opinion, we refer to the Specification filed May 3, 2011 (“Spec.”);
the Final Action mailed August 28, 2014 (“Final Act.”); the Appeal Brief
filed January 23, 2015 (“App. Br.”); and the Examiner’s Answer mailed
June 8, 2015 (“Ans.”).
2 Appellant identifies Aeroflex Colorado Springs Inc. as the real party in
interest. App. Br. 1.
Appeal 2015-007785
Application 13/099,723
The claims are directed to a radiation hardened latch circuit. See, e.g.,
claims 1 and 5. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A radiation hardened latch circuit comprising:
a first latch stage having a first input for receiving a data
signal, a second input for receiving a clock signal, and an
output; and
a second latch stage having a first input directly coupled
to the output of the first latch stage, a second input for receiving
an inverted clock signal, and an output for providing an output
signal,
wherein the first and second inputs of the first and second
latch stages comprise a differential input and a dual input,
respectively.
App. Br. 6.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Ganesan US 6,433,601 B1 Aug. 13,2002
Leifso et al. US 7,180,349 B2 Feb. 20, 2007
(“Leifso”)
REJECTIONS
The Examiner rejects claims 1—3 and 5—7 as unpatentable under 35
U.S.C. § 103(a) over Leifso in view of Ganesan. Final Act. 2.
OPINION
The Examiner finds that Leifso
teaches a radiation hardened latch circuit comprising: a first latch
stage [134] having a first input for receiving a data signal, a
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Application 13/099,723
second input for receiving a clock signal, and an output; and a
second latch stage [136] having a first input directly coupled to
the output of the first latch stage, a second input for receiving an
inverted clock signal, and an output for providing an output
signal.
Final Act. 2. The Examiner acknowledges that “Leifso . . . does not teach
the details of the latch as claimed with regards to the dual input.” Id. at 3.
The Examiner concludes, however, that it would have been obvious to one
of ordinary skill in the art at the time of the invention to modify the
invention of Leifso by incorporating the latch design of Ganesan “for the
purpose of utilizing a suitable and well-known type of latch.” Id. The
Examiner does not explain how Ganesan teaches the claimed dual input.
In summarizing the claimed subject matter, Appellant provides no
citation to the Specification in relation to the first and second inputs of the
second latch stage comprising a dual input, as required by the claims. See
App. Br. 2. The term “dual input” is not found in the Specification at all,
and was not a term in any originally-filed claim. See Spec, generally. Each
time that first and second inputs are disclosed in the Specification, they are
disclosed as “differential inputs.” See, e.g., Spec. 2:2—3, 2:15—16, 6:27—29,
and 7:14—17. Review of the prosecution history in this case reveals that the
term “dual input” was first introduced to the claims in a January 14, 2012,
Amendment to claim 4 as a replacement for “differential input.” The
amended form of claim 4 is reproduced below from this Amendment:
4. (currency amended) The latch circuit of claim 1, wherein the first and
second inputs of the first and second latch stages comprise a differential input and a
dual input, respectively differential-inputs.
In the arguments and remarks accompanying the amended claims
Applicant states that “[i]t is apparent from an inspection of Fig. 4 that the
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Appeal 2015-007785
Application 13/099,723
second input is a dual input but is not differential.” Applicant
Remarks/Arguments filed Jan. 14, 2012, p. 6. However, this statement
contradicts that of the Specification, which says “[a]s can be seen in FIG. 4,
the first and second inputs of the first and second latch stages comprise
differential inputs.” Spec. 6:27—28.
The term “dual input” is a salient feature in the claims, i.e., an
essential claim limitation relied on by Appellant in distinguishing over the
prior art which has been cited by the Examiner. Therefore, it is particularly
important that the meaning of the term be reasonably precise and definite.
On the record before us, it is not clear how “dual input” in the claims
would have been interpreted by one of ordinary skill in the art at the time of
Appellant’s invention in light of the Specification. Therefore, the claims fail
to set out and circumscribe a particular area with a reasonable degree of
precision and particularity. Accordingly, we reject the claims as being
indefinite under 35U.S.C. § 112, second paragraph— a new ground of
rejection.
The § 103 prior art rejection is based on a speculative assumption as
to the meaning of the claims. “All words in a claim must be considered in
judging the patentability of that claim against the prior art. If no reasonably
definite meaning can be ascribed to certain terms in the claim, the subject
matter does not become obvious—the claim becomes indefinite.” In re
Wilson, 424 F.2d 1382, 1385 (CCPA 1970). Thus, we reverse the § 103
rejection, pro forma, because rendering a decision on whether it
distinguishes over the cited references would require speculation as to the
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Application 13/099,723
scope of the claimed subject matter. We note that this is a procedural
reversal rather than one based upon the merits of the rejection.
Under 37 C.F.R. § 41.50(b) we enter the following new grounds of
rejection.
Claims 1—3 and 5—7 are rejected under 35U.S.C. § 112, second
paragraph, as indefinite, for the reasons given above.
DECISION/ORDER
The rejection of claims 1—3 and 5—7 under 35 U.S.C. § 1030(a) is
procedurally reversed. A new rejection of claims 1—3 and 5—7 is entered
under 37 .C.F.R. § 41.50(b).
It is ordered that the Examiner’s decision is reversed.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides that, when the Board enters such a non-final
decision, 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 the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .
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Appeal 2015-007785
Application 13/099,723
REVERSED: 37 CE.R. § 41.50(b)
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