Ex Parte Paidimarri et alDownload PDFPatent Trial and Appeal BoardSep 6, 201613406849 (P.T.A.B. Sep. 6, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/406,849 02/28/2012 23494 7590 09/08/2016 TEXAS INSTRUMENTS IN CORPORA TED P 0 BOX 655474, MIS 3999 DALLAS, TX 75265 FIRST NAMED INVENTOR Arun Paidimarri 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. TI-71324 3775 EXAMINER GANNON, LEVI ART UNIT PAPER NUMBER 2842 NOTIFICATION DATE DELIVERY MODE 09/08/2016 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): uspto@ti.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ARUN P AIDIMARRI, DANIELLE GRIFFITH, and ALICE WANG1 Appeal2014-004718 Application 13/406,849 Technology Center 2800 Before CHUNG K. PAK, JEFFREY T. SMITH, and MARK NAGUMO, Administrative Patent Judges. PAK, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134(a) from the Examiner's decision2 finally rejecting claims 21, 22, and 29-38. 3 We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 The real party in interest is said to be Texas Instruments Incorporated. Appeal Brief filed November 20, 2013 ("App. Br.") at 1. 2 Final Action entered August 23, 2013 ("Final Act.") at 2-13 and the Examiner's Answer entered January 2, 2014 ("Ans.") at 2-10. 3 The Examiner withdrew the rejection of claims 21-38 under 35 U.S.C. § 112, first paragraph set forth in the Final Action. Ans. 2. Appeal2014-004718 Application 13/406,849 STATEMENT OF THE CASE The subject matter on appeal is directed to a system and a method "of low power clocking for sleep mod radio." Spec. ,-i,-i 8 and 9. "[O]ne example embodiment of the system ... can be implemented as follows: a high frequency, accurate oscillator; and a low power less accurate oscillator enabled during a sleep mode of a radio, the lower power less accurate oscillator (LPLAO) configured to be calibrated using the high frequency accurate oscillator." Id at ,-i 8. "[O]ne embodiment of such a method .... can be broadly summarized by the following steps: generating an oscillation frequency with low accuracy and low power for use during a sleep mode of at least one of a receiver, a transmitter, or a transceiver; and calibrating the oscillation frequency with a higher accuracy and higher power oscillator." Id at ,-i 9. The lower power less accurate oscillator (LPLAO) includes, for example, a conventional crystal oscillator or a conventional RC oscillator. Id at ,-i 2-6, 22, 23, and 25. The conventional crystal oscillator may be "purposefully mistuned to achieve lower power consumption, and then synchronized using a high frequency crystal oscillator." Id at ,-i 22. "Comparing the inaccurate low frequency clock to a highly accurate high frequency clock allows the real time clock to be generated by digitally adjusting the inaccurate low frequency clock by a known amount." Id. This system or method can be used in connection with "a cell phone" and may be used to decrease power consumption dramatically "without affecting the accuracy of the time keeping." Id at ,-i,-i 18 and 21. "In the past, the accuracy versus power consumption has been a trade off , so the more accurate the oscillator, the more power consumed." Id at ,-i 22. 2 Appeal2014-004718 Application 13/406,849 Details of the appealed subject matter are recited in illustrative claim 21, which is reproduced below from the Claims Appendix of the Appeal Brief (with disputed limitations in italicized form): 21. A communications apparatus, comprising: a real time unit configured for tracking real time based on a first clock; application circuitry that executes a communications application based on a second clock during an operational mode, said application circuitry configured to enter a sleep mode for a period of real time measured by said real time unit during said sleep mode; a high-accuracy oscillator configured to provide said second clock at a frequency that is higher than a frequency of said first clock; a low-power low-accuracy oscillator (LPLAO) configured to provide said first clock, said LPLAO purposely mistuned to provide said first clock using less power but with less accuracy than if correctly tuned; and a calibration unit configured for comparing said first clock with said second clock, and adjusting said tracking in accordance with a digital adjustment amount determined by said comparing. App. Br., Claims Appendix 1. Claim 34 is directed to a method of operating the communications apparatus recited in claim 21. Id. at 2. The Examiner has maintained the rejection of claims 21, 22, and 29-38 under 35 U.S.C. §102(b) as anticipated by Romao (US 6,650,189 Bl issued to Romao on November 18, 2003). Final Act. 5-7 and Ans. 2. DISCUSSION Upon consideration of the evidence on this appeal record in light of the respective positions advanced by the Examiner and Appellants, we determine that a preponderance of the evidence supports the Examiner's finding that Romao describes the subject matter recited in claims 21, 22, and 29-38 within the meaning of 35 U.S.C. § 102(b). Accordingly, we sustain the Examiner's§ 102(b) rejection of the above claims essentially for the reasons set forth in the Final 3 Appeal2014-004718 Application 13/406,849 Action and the Answer. We add the following primarily for emphasis and completeness. We initially note that Appellants only focus on common limitations in claims 21 and 34 and do not separately argue claims 22, 29-33, and 35-38. App. Br. 4-8 and Reply Br. 1-5. Therefore, we decide the appeal as to all claims on the basis of claims 21 and 34 on appeal. 4 There is no dispute that Romao teaches a communication apparatus (mobile phone) comprising the recited real time unit, the recited application circuitry, a fast quartz oscillator corresponding to the recited high-accuracy oscillator, an RC type slow oscillator corresponding to the recited low-power low-accuracy oscillator (LPLAO), and the recited calibration unit. Compare Final Act. 6-7 with App. Br. 5-11. Nor is there any dispute that the above features of Romao' s communication apparatus provide functions that correspond to the steps recited in claim 34, except for using the recited "LPLAO purposely mistuned to provide said first clock using less power but with less accuracy than if correctly tuned" in its time tracking step. Compare Final Act. 6-7 and Ans. 5 with App. Br. 5-11, Reply Br. 1-5, and claim 34. Thus, the only claimed limitation argued by Appellants to be missing in 4 Appellants argue for the first time that the Specification describes the power consumption of a crystal oscillator as being dependent on a load capacitance. Reply Br. 4-5. However, we decline to consider this belated argument drawn to the subject matter not recited in claims 21and34. 37 C.F.R. § 41.37(c)(l)(iv) ("Except as provided for in§§ 41.41, 41.47 and 41.52, any arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal."); see also Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (Informative) (explaining that under the previous rules, which are similar to the current rules, "the reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner's rejections, but were not."). 4 Appeal2014-004718 Application 13/406,849 Romao is employing or using "LP LAO purposely mistuned to provide said first clock using less power but with less accuracy than if correctly tuned" in its apparatus or its method, as recited in claims 21 and 34. App. Br. 6-11. However, we do not find Appellants' argument directed to this functionally defined mis tuned LPLAO recited in claims 21 and 34 persuasive of harmful error in the Examiner's § 102 rejection. As found by the Examiner and acknowledged by Appellants, "the low-power oscillator 10 of Romao [corresponding to the recited LPLAO] is mistuned by way of lack of temperature compensation[.]" See App. Br. 8 citing the Advisory Action ofNovember 1, 2013. As explained by the Examiner, "[b]y choosing to use the uncompensated oscillator (10) [(LPLAO)] of [F]igure 1, Romao is [purposely] choosing to use a ... mistuned oscillator (10), by allowing temperature-induced frequency drift to occur in oscillator (10) without any frequency correction/tuning[.]" Ans. 4. The use of this mistuned, less accurate, LPLAO, according to Romao, causes a significant power saving. Romao, col. 4, 11. 42--45 ("The switch-over from the oscillator 6 to the oscillator 10 is done by means of the selector 11. The power saving thus obtained is significant but may be further improved.") Because Romao, like Appellants, employs a less-accurate mistuned conventional LPLAO in its system and method to significantly reduce the power consumption, there is a reasonable basis to believe that Romao' s mistuned, less- accurate, oscillator is capable of providing the first clock "using less power but with less accuracy than if correctly tuned" at least some point during the operation of the communication apparatus. See also Spec.iJ22 ("In the past, the accuracy versus power consumption has been a trade off, so the more accurate the oscillator, the more power consumed.") As our reviewing court stated in In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997): 5 Appeal2014-004718 Application 13/406,849 A patent applicant is free to recite features of an apparatus either structurally or functionally. See In re Swinehart, 439 F.2d 210 (CCPA 1971) ("[T]here is nothing intrinsically wrong with [defining something by what it does rather than what it is] in drafting patent claims."). Yet, choosing to define an element functionally, i.e., by what it does, carries with it a risk. As our predecessor court stated in Swinehart, 439 F.2d at 213: where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. See also In re Best, 562 F.2d 1252, 1255 (CCPA 1977) ("Where ... the claimed and prior art products are identical or substantially identical, ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.) Nevertheless, on this record, Appellants do not identify any credible evidence to demonstrate that the mistuned LPLAO recited in claim 21 or 34 does not include the mistuned, less-accurate, low-power oscillator of Romao. See App. Br. generally. Accordingly, we find no harmful error in the Examiner's finding that Romao anticipates the subject matter recited in claims 21, 22, and 29-38 within the meaning of 35 U.S.C. § 102(b). ORDER In view of the foregoing, the decision of the Examiner to reject claims 21, 22, and 29-38 under 35 U.S.C. § 102(b) is AFFIRMED. 6 Appeal2014-004718 Application 13/406,849 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l.136(a)(l)(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation