Ex Parte Ooishi

Board of Patent Appeals and Interferences

Apr 23, 2004

08755928 (B.P.A.I. Apr. 23, 2004)

The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board.
Paper No. 66
UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte TSUKASA OOISHI
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Appeal No. 2003-2105
Application No. 08/755,928
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HEARD: Apr. 13, 2004
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Before GROSS, BARRY, and SAADAT, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
A patent examiner rejected claims 32 and 33. The appellant appeals therefrom
under 35 U.S.C. § 134(a). We reverse.
BACKGROUND
The invention at issue on appeal supplies an internal power-source potential to a
predetermined load. Figure 98 of the appellant's specification shows a conventional
circuit for supplying an internal power-source potential in a semiconductor device.
Specifically, an external power-source potential (VCE) is applied as an internal power-
source potential (VCI) to a load (11) via a driving transistor (Q1). A comparator (1)
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Application No. 08/755,928
receives VCI (as a feedback signal) and a reference potential (Vref). Based on its
comparison of the two signals, the comparator provides a control signal (S1) to the gate
of Q1. (Spec. at 1.)
When VCI is lower than Vref, S1 causes Q1 to conduct heavily, which increases
the current supplied from VCE. Consequently, the circuit raises the lower VCI.
Conversely, when VCI is higher than Vref, S1 causes Q1 to conduct lightly, which stops
the current supply from VCE. Consequently, the circuit prevents the higher VCI from
increasing. In this manner, the circuit supplies the internal power-source potential equal
to the reference potential. (Id. at 1-2.) The appellant opines that variations in the
external power-source potential, however, may cause decreased performance of the
circuit, resulting in "difficulties in supplying the internal power-source potential with high
accuracy." (Id. at 3.)
In contrast, Figure 43 of the specification shows the appellant's supply circuit.
More specifically, two connectors (L1 and L2) supply an external power-source
potential (VCE) to a transistor (Q1) and a comparator (1), respectively. The appellant
asserts that, "[s]uch an arrangement prevents the comparator 1 from being affected by
the . . . transistor Q1." (Id. at 66.)
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Application No. 08/755,928
A further understanding of the invention can be achieved by reading the following
claim.
32. A semiconductor device comprising:
an external potential contact means supplied with an external
power-source potential different from a ground level;
a first pad connected to said external potential contact means with
a first connecting member;
a second pad provided separately from said first pad, and
connected to said external potential contact means with a second
connecting member different from the first connecting member;
a first circuit for receiving said external power-source potential from
said first pad as a first drive power-source potential; and
a second circuit for receiving an output signal of said first circuit,
said second circuit being coupled to said second pad and receiving said
external power-source potential as a second drive power-source potential
distinct from said external power source potential used as said first drive
power-source potential.
Claims 32 and 33 stand rejected under 35 U.S.C. § 103(a) as obvious over U.S.
Patent No. 5,194,762 ("Hara") and U.S. Patent No. 5,559,356 ("Yukawa").
OPINION
Rather than reiterate the positions of the examiner or the appellant in toto, we
focus on the main point of contention therebetween. Admitting that "Hara et al. does not
expressly disclose in the description . . . the use of 'a first connecting member' and 'a
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Application No. 08/755,928
second connecting member different from the first', wherein the source potentials
provided to the 'pads' are 'distinct' due to there being different 'connecting members,'"
(Examiner's Answer at 4), the examiner "contends that Fig. 1(d) inherently represents
such. . . ." (Id.) The appellant argues, "[i]n the absence of any reason for connecting
the Hara et al. transistors in the claimed manner, one skilled in the art would understand
that these transistors may be connected in multiple ways different from the claimed
arrangement." (Appeal Br. at 7.)
Observing that "the reference to Yukawa expressly discloses, for example in 19-
22 of Col. 1, the advantage of providing separate individual power lines for each circuit,"
(Examiner's Answer at 4), the examiner further asserts, "it would have been obvious for
one skilled in the art to use separate lines between the external supply voltage and the
circuit in the reference to Hara et al., for the expected advantage of reducing noise."
(Id.) The appellant argues, "[t]he Examiner offered no logical reason, and no such
reason is apparent, to support the conclusion that one having ordinary skill in the art
would have been impelled to provide individual power supply lines for the current mirror
circuit CM of Hara et al. (considered by the Examiner to correspond to the claimed first
circuit), and the constant current circuit 43 of Hara et al. (considered to correspond to
the claimed second circuit)." (Reply Br. at 7.)
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Application No. 08/755,928
In addressing the point of contention, the Board conducts a three-step analysis.
First, we construe the independent claim at issue to determine its scope. Second, we
determine whether the construed claim is anticipated. Third, we determine whether the
construed claim would have been obvious.
1. CLAIM CONSTRUCTION
"Analysis begins with a key legal question -- what is the invention claimed?"
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567, 1 USPQ2d 1593, 1597 (Fed.
Cir. 1987). Here, claim 32 recites in pertinent part the following limitations:
a first pad connected to said external potential contact means with a first
connecting member; a second pad provided separately from said first pad,
and connected to said external potential contact means with a second
connecting member different from the first connecting member; a first
circuit for receiving said external power-source potential from said first pad
as a first drive power-source potential; and a second circuit for receiving
an output signal of said first circuit, said second circuit being coupled to
said second pad and receiving said external power-source potential as a
second drive power-source potential distinct from said external power
source potential used as said first drive power-source potential.
Accordingly, the limitations require a first member and pad and a second member and
pad for respectively connecting an external power-source potential to a first circuit and a
second circuit.
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2. ANTICIPATION DETERMINATION
"Having construed the claim limitations at issue, we now compare the claims to
the prior art to determine if the prior art anticipates those claims." In re Cruciferous
Sprout Litig., 301 F.3d 1343, 1349, 64 USPQ2d 1202, 1206 (Fed. Cir. 2002). "A claim
is anticipated only if each and every element as set forth in the claim is found, either
expressly or inherently described, in a single prior art reference." Verdegaal Bros., Inc.
v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987) (citing
Structural Rubber Prods. Co. v. Park Rubber Co., 749 F.2d 707, 715, 223 USPQ 1264,
1270 (Fed. Cir. 1984); Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548, 220
USPQ 193, 198 (Fed. Cir. 1983); Kalman v. Kimberly-Clark Corp., 713 F.2d760, 771,
218 USPQ 781, 789 (Fed. Cir. 1983)). "To establish inherency, the extrinsic evidence
'must make clear that the missing descriptive matter is necessarily present in the thing
described in the reference, and that it would be so recognized by persons of ordinary
skill.'" In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999)
(quoting Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746,
1749 (Fed. Cir. 1991)) "Inherency . . . may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set of
circumstances is not sufficient." In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326
(CCPA 1981) (citing Hansgirg v. Kemmer, 102 F.2d 212, 214, 40 USPQ 665, 667 (Cust.
& Pat.App. 1939)).
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Application No. 08/755,928
Here, Hara discloses a "MOS-type charging circuit 23. . . ." Col. 5, l. 30. "As
shown in FIG. 1(d), this MOS-type charging circuit 23 comprises . . . a CMOS current
mirror circuit CM constituted by four transistors . . . [and] a constant current circuit 43
interposed between an output terminal N5 of the CMOS current mirror circuit CM and
the gate terminal of the driver transistor Q23 and adapted to set the value of a charging
current supplied to the load at a substantially fixed level and ensure that the value of the
charging current is not dependent on the external supply voltage Vcc (EXT). . . ." We
agree with the appellant that "FIG. 1(d) of Hara et al. does not show distinct power
supply lines to circuits CM and 43." (Appeal Br. at 6.) It is uncontested, moreover, that
"[t]he specification in the Hara et al. patent does not disclose that the circuits CM and 43
are supplied by distinct power lines." (Id.)
For his part, the examiner offers no evidence that the current mirror circuit and
the constant current circuit are necessarily connected to Vcc (EXT) via distinct pairs of
members and pads or would be so recognized by persons of ordinary skill. To the
contrary, the appellant's assertion that "one skilled in the art would realize that a single
power supply terminal Vcc (EXT) is sufficient to supply [both] of them," (Reply Br. at 4),
is uncontested. The absence of evidence that Hara's current mirror circuit and constant
current circuit are necessarily connected to Vcc (EXT) via distinct pairs of members and
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Application No. 08/755,928
pads "negates anticipation." Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565,
1571, 230 USPQ 81, 84 (Fed. Cir. 1986).

3. OBVIOUSNESS DETERMINATION
The next inquiry is whether the subject matter would have been obvious. “[T]o
establish obviousness based on a combination of the elements disclosed in the prior art,
there must be some motivation, suggestion or teaching of the desirability of making the
specific combination that was made by the applicants.” In re Kotzab, 217 F.3d 1365,
1370, 55 USPQ2d 1313, 1316 (Fed. Cir. 2000) (citing In re Dance, 160 F.3d 1339,
1343, 48 USPQ2d 1635, 1637 (Fed. Cir. 1998); In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984)). “[T]he factual inquiry whether to combine
references must be thorough and searching.” McGinley v. Franklin Sports, Inc., 262
F.3d 1339, 1351-52, 60 USPQ2d 1001, 1008 (Fed. Cir. 2001). “This factual
question . . . [cannot] be resolved on subjective belief and unknown authority.” In re
Lee, 277 F.3d 1338, 1343-44, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002). “It must be
based on objective evidence of record.” Id. at 1343, 61 USPQ2d at 1434.
Here, Yukawa addresses a problem facing analog/digital hybrid devices.
Specifically, "[i]n a complementary MOS analog/digital hybrid large scale
integrated (LSI) device, digital circuits where voltages are fully swung and analog
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Application No. 08/755,928
circuits where a very small voltage less than some mV is significant are mixed.
Therefore, noise easily penetrates from the digital circuits via power supply lines and a
substrate to the analog circuits." Col. 1, ll. 13-18. The passage of the reference cited
by the examiner explains that "[t]he noise from the digital circuits via the power supply
lines to the analog circuits can be reduced by providing individual power supply lines for
the digital circuits and the analog circuits. . . ." Id. at ll. 19-22.
Here, in contrast to the problem addressed by Yukawa, we are unpersuaded that
Hara's current mirror circuit and constant current circuit constitute an analog/digital
hybrid. To the contrary, "the Examiner appears to conclude that all circuits in the Hara's
arrangement are digital circuits." (Reply Br. at 7.) Absent an analog/digital hybrid, we
are unpersuaded that it would have been desirable to provide individual power supply
lines for the current mirror circuit and the constant current circuit. Therefore, we reverse
the rejection of claim 32 and of claim 33, which depends therefrom.
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CONCLUSION
In summary, the rejection of claims 32 and 33 under § 103(a) is reversed.
REVERSED
ANITA PELLMAN GROSS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LANCE LEONARD BARRY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
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Application No. 08/755,928
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