Ex parte Ouden

Board of Patent Appeals and Interferences

Jun 26, 2001

08397021 (B.P.A.I. Jun. 26, 2001)

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for publication and is not binding precedent of the Board.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. 38
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOSEPHUS A. A. DEN OUDEN
____________
Appeal No. 1996-3619
Application No. 08/397,021
____________
ON BRIEF
____________
Before JERRY SMITH, RUGGIERO, and LALL, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection
of claims 1, 2, 4, 5, 9, 11, 19, 21, and 22. Claims 7, 18,
and 20 have been canceled. Claims 3, 6, 8, 10, and 12-17 have
been indicated to be allowable by the Examiner subject to
being rewritten independently of a rejected base claim. An
Appeal No. 1996-3619
Application No. 08/397,021
A review of the application file reveals that, despite comments to the1
contrary at page 2 of the Answer, the entry of the amendment after final was
approved as indicated by the written notation on the face of the amendment and
initialed by the Examiner. The Examiner further indicates (Answer, page 2)
that the arguments in the Answer are directed to the claims as amended in the
after final amendment filed November 20, 1995.

2
amendment filed November 20, 1995 after final rejection was
entered by the Examiner. 1
The claimed invention relates to a phase-coupled clock
signal generator which includes a start-stop oscillator that
oscillates in response to a first value of a reference signal
and is refrained from oscillating in response to a second
value of the reference signal. The generated clock signal
frequency is adjustable in response to an adjusting signal
supplied by a controller. This controller includes a counter
which counts the number of pulses of the received clock signal
and a control circuit which compares the counting value with a
desired frequency reference value.
Claim 1 is illustrative of the invention and reads as
follows:
1. A phase-coupled signal generator for generating a
clock signal, comprising:
an input for receiving a reference signal;
Appeal No. 1996-3619
Application No. 08/397,021
3
oscillating means for receiving said reference
signal, and generating said clock signal at an
oscillation frequency in response to a first value of
said reference signal, and refraining from oscillating in
response to a second value of said reference signal; and
control means for receiving said reference signal
and said clock signal, and generating therefrom an
adjusting signal for adjusting said oscillation frequency
so that the difference between the adjusted oscillation
frequency and a predetermined desired frequency does not
exceed a predetermined value.
The Examiner relies on the following prior art:
Kraus et al. (Kraus) 4,672,449 Jun. 09,
1987
Hirao et al. (Hirao) 4,996,596 Feb. 26,
1991
(filed Sep. 01, 1989)
Claims 1, 2, 5, 9, 19, and 21 stand finally rejected
under 35 U.S.C. § 102(b) as being anticipated by Kraus.
Claims 4, 11, and 22 stand finally rejected under 35 U.S.C. §
103 as being unpatentable over Kraus in view of Hirao.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Brief (Paper No. 35) and
Answer (Paper No. 36) for the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the Examiner and the
Appeal No. 1996-3619
Application No. 08/397,021
4
evidence of anticipation and obviousness relied upon by the
Examiner as support for the rejections. We have, likewise,
reviewed and taken into consideration, in reaching our
decision, Appellant’s arguments set forth in the Brief along
with the Examiner’s rationale in support of the rejections and
arguments in rebuttal set forth in the Examiner’s Answer.
It is our view, after consideration of the record before
us, that the disclosure of Kraus fully meets the invention as
recited in claims 1, 2, 5, 9, 19, and 21. We are also of the
view that the evidence relied upon and the level of skill in
the particular art would have suggested to one of ordinary
skill in the art the obviousness of the invention set forth in
claims 4, 11, and 22. Accordingly, we affirm.
We first consider the Examiner’s 35 U.S.C. § 102(b)
rejection of claims 1, 2, 5, 9, 19, and 21 as anticipated by
Kraus. Anticipation is established only when a single prior
art reference discloses, expressly or under the principles of
inherency, each and every element of a claimed invention as
well as disclosing structure which is capable of performing
the recited functional limitations. RCA Corp. v. Applied
Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385,
Appeal No. 1996-3619
Application No. 08/397,021
5
388 (Fed. Cir.); cert. dismissed, 468 U.S. 1228 (1984); W.L.
Gore and Assoc, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554,
220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984).
With respect to claims 1, 2, 5, 9, 19, and 21, the
Examiner has indicated (Answer, pages 3 and 4) how the various
limitations are read on the disclosure of Kraus. In our view,
the Examiner’s analysis is sufficiently reasonable that we
find that the Examiner has as least satisfied the burden of
presenting a prima facie case of anticipation. The burden is,
therefore, upon Appellant to come forward with evidence and/or
arguments which persuasively rebut the Examiner’s prima facie
case. Only those arguments actually made by Appellant have
been considered in this decision. Arguments which Appellant
could have made but chose not to make in the Brief have not
been considered [see 37 CFR
§ 1.192(a)].
In response, Appellant initially argues (Brief, pages 3
and 4), that the Examiner has misinterpreted the disclosure of
Kraus which, in Appellant’s view, is directed to phase control
and not frequency control of an oscillator, and particularly,
Appeal No. 1996-3619
Application No. 08/397,021
6
not to frequency adjustment to a predetermined value, as in
the claims on appeal. After careful review of the Kraus
reference in light of the arguments of record, however, we are
in agreement with the Examiner’s position as stated in the
Answer. As pointed out by the Examiner (Answer, pages 3 and
4), Kraus (at column 3, lines 9-18 and in claim 4) provides a
clear disclosure of the adjustment of oscillator frequency.
We further find Appellant’s contention that Kraus
provides no oscillator frequency adjustment to a desired
predetermined value to be unfounded. In taking this position,
Appellant refers to column 10, lines 10-21 of Kraus which is
part of a description of the embodiment illustrated in Figure
3. In Appellant’s interpretation, Kraus is suggesting
frequency adjustment of the oscillator to achieve a desired
phase relationship and not to reach a predetermined desired
frequency value. We do not agree. In our view, in the very
excerpt from Krause cited by Appellant, i.e. column 10, lines
10-21), we find a clear suggestion to adjust the frequency of
oscillator 10 to achieve a desired value. Since the
description of the circuitry of Figure 3 of Krause is directed
to the embodiment in which the oscillator 10 is locked on to
Appeal No. 1996-3619
Application No. 08/397,021
7
the line frequency (column 8, line 63), we are not persuaded
as to why this line frequency would not be considered a
predetermined desired value as set forth in Appellant’s
claims. We are similarly unpersuaded by Appellant’s
argument (Brief, page 6) that Kraus lacks a teaching of
supplying the start-stop oscillator 10 with an on/off
reference signal as claimed. We note, however, that in making
this argument, Appellant has directed our attention to the
Figure 3 embodiment of Kraus. We agree with Appellant that,
in this embodiment in which the oscillator is locked on to the
line frequency , there is no explicit disclosure of a
reference signal being supplied directly to the start-stop
oscillator. Our review of the Examiner’s analysis in the
Answer, however, reveals that the Examiner specifically
identified start-stop oscillator 10 in the Figure 1 embodiment
which directly receives the reference synchronizing signal fH
as corresponding to the appealed claim limitations. In making
the rejection based on anticipation, the Examiner has made a
finding (Answer, page 7) that the skilled artisan would
appreciate that a start-stop oscillator, as its name implies,
is responsive either to a plurality of input signals or to
Appeal No. 1996-3619
Application No. 08/397,021
The Examiner (Answer, page 7, footnote) has made reference to U.S.2
Patent No. 4,220,964 to Yamagiwa as supporting the finding related to
reference inputs to start-stop oscillators. Also, in the footnote at page 6
of the Answer, the Examiner cites U.S. Patent No. 4,613,827 to Takamori as an
example of a teaching of a phase-locking oscillator providing a control of the
frequency of a start-stop oscillator. As neither of these references are part
of the Examiner’s rejections of the appealed claims, we decline to rule on the
merits of their applicability to the issues to be decided in this appeal. We
would point out however that, to whatever extent the disclosures in these
references support the Examiner’s position, such disclosures remain
unchallenged by any response from Appellant.
8
differing input values of a single input signal. This finding
remains unchallenged by Appellant who, rather than submit a
Reply Brief, has chosen to let his position on the record be
reflected solely by arguments in the main Brief.2
In view of the above discussion, since all of the
claimed
limitations are present in the disclosure of Kraus, the
Examiner’s 35 U.S.C. § 102(b) rejection of claims 1, 2, 5, 9,
19, and 21 is sustained.
Turning to a consideration of the Examiner’s 35 U.S.C. §
103 rejection of claims 4, 11, and 22, we sustain this
rejection as well. As the basis for the obviousness
rejection, the Examiner proposes (Answer, page 4) to modify
the clock signal generator disclosure of Kraus by relying on
Hirao to supply the missing teaching of changing the frequency
Appeal No. 1996-3619
Application No. 08/397,021
9
adjusting signal when a difference between a counting value
and a reference value exceeds a predetermined value.
After reviewing the Examiner’s stated position, it is our
opinion that the Examiner's analysis is sufficiently
reasonable that we find that the Examiner has at least
satisfied the burden of presenting a prima facie case of
obviousness. The burden is, therefore, upon Appellant to come
forward with evidence or arguments which persuasively rebut
the Examiner’s prima facie case of obviousness.
Appellant’s arguments in response (Brief, page 7) do not
argue the Examiner’s interpretation of Hirao, nor the
combinability of Hirao with Kraus. Instead, Appellant’s
arguments center on the alleged deficiency of Kraus in
disclosing the frequency adjustment of a start-stop oscillator
as claimed, arguments which we found to be unpersuasive in our
discussion supra.
In summary, we have sustained both of the Examiner’s
rejections of the claims on appeal. Therefore, the decision
of the Examiner rejecting claims 1, 2, 4, 5, 9, 11, 19, 21,
and 22 is affirmed.
No time period for taking any subsequent action in
Appeal No. 1996-3619
Application No. 08/397,021
10
connection with this appeal may be extended under
37 CFR § 1.136(a).
AFFIRMED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PARSHOTAM S. LALL )
Administrative Patent Judge )
lp
CORPORATE PATENT COUNSEL
US PHILIPS CORPORATION PATENT DEPARTMENT
580 WHITE PLAINS ROAD
TARRYTOWN NY 10591
Leticia
Appeal No. 1996-3619
Application No. 08/397,021
APJ RUGGIERO
APJ SMITH JERRY
APJ LALL
DECISION: AFFIRMED
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s):
Prepared: October 24, 2002
Draft Final
3 MEM. CONF. Y N
OB/HD GAU
PALM / ACTS 2 / BOOK
DISK (FOIA) / REPORT