Ex Parte Purcell et al

Board of Patent Appeals and Interferences

Jun 30, 2009

11040074 (B.P.A.I. Jun. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MATTHEW PURCELL
and ARNAUD LAFLAQUIERE
____________

Appeal 2008-005723
Application 11/040,074
Technology Center 2800
____________

Decided:1 June 30, 2009
____________

Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI,
and JEFFREY B. ROBERTSON, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 11 through 22, which are all of the claims

1 The two-month time period for filing an appeal or commencing a civil action,
as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date shown on
this page of the decision. The time period does not run from the Mail Date
(paper delivery) or Notification Date (electronic delivery).

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Application 11/040,074

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pending in the above-identified application. We have jurisdiction pursuant to
35 U.S.C. § 6.
We AFFIRM.

STATEMENT OF THE CASE
The subject matter on appeal is directed to, inter alia, an image sensor.
Claim 11 is illustrative
11. An image sensor comprising:

at least one pixel; and

at least one power supply ripple rejection circuit including an input
connected to a supply voltage, and an output providing an output voltage
to said at least one pixel, said at least one power supply ripple rejection
circuit for reducing variations in the supply voltage.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies upon the following references2:
Suwa JP 2003-044152 A Feb. 14, 20033
Misek US 2003/0038230 A1 Feb. 27, 2003
Zhang US 6,977,490 B1 Dec. 20, 2005

2 The Examiner also refers to U.S. Patent 6,952,015 B2 issued to Kameshima
on October 4, 2005, at page 7 of the Answer. The Examiner, however, does not
include this reference in any statement of rejection set forth in the Answer. (See
Ans. 3-6). Therefore, we will not consider this reference in determining the
propriety of the Examiner’s rejection. See In re Hoch, 428 F.2d 1341, 1342 n.3
(CCPA 1970) (“[W]here a reference is relied on to support a rejection, whether
or not in a ‘minor capacity,’ there would appear to be no excuse for not
positively including that reference in the statement of the rejection.”).
3 Our reference to Suwa is to the translation thereof prepared for the U.S. Patent
and Trademark Office by FLS, Inc. (PTO 07-6940 September 2007).

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Appellants appeal the following rejections of the Examiner:
1) Claims 11-13, 15-18, and 20-22 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combined disclosures of Misek and Suwa;
2) Claims 14 and 19 under 35 U.S.C. § 103(a) as being unpatentable
over the combined disclosures of Misek and Suwa as applied to claims 13 and
18 above, and further in view of the disclosure of Zhang; and
3) Claim 21 under 35 U.S.C. § 103(a) as being unpatentable over the
disclosure of Suwa.

Rejection (1): The rejection of claims 11-13, 15-18, and 20-22 under 35 U.S.C.
§ 103(a) as being unpatentable over the combined disclosures of Misek and
Suwa
Appellants separately argue the rejection of independent claim 11. (App.
Br. 6-10 and Reply Br. 1-3). Appellants do not advance any specific argument
regarding the rejection of the remaining claims. Accordingly, we address
Appellants’ arguments regarding the rejection with respect to claim 11 only.
See 37 C.F.R. § 41.37(c)(1)(vii)(2008).
The Examiner determines that it would have been obvious to employ
Suwa's ripple rejection circuit in Misek's power supply. (Ans. 3-5).
Appellants argue that "there is no proper motivation for modifying Misek
in view of Suwa to produce the claimed invention." (App. Br. 9).
In addition, Appellants argue that “it would not have been obvious to use
power supply ripple rejection circuits providing output voltages to pixels within
an image sensor. To do so is based on hindsight reconstruction." (App. Br. 9).
Appellants make the following three allegations: (1) that "Appellants have
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realized that the image quality of an image sensor is affected by varying
reference voltages. This goes against the view commonly held at the time of
filing the present application which was that variations in reference voltages
had a negligible effect on the image quality;" (2) that "[t]he supply voltage for
an image sensor may have been regulated, but the variation of reference
voltages has not previously been thought of as either being a significant
magnitude, or as having a significant effect on the image quality of the image
which is rendered by the sensor;" and (3) that "[t]he addition of this extra
circuitry goes against the pressures that the designers are currently under, which
are to reduce components and to reduce the size of circuits." (App. Br. 8-9).

ISSUES
The issues are: (1) Have Appellants shown reversible error in the
Examiner's reason to employ Suwa's ripple rejection circuit in Misek's power
supply within the meaning of § 103(a)? (2) If not, then would the combination
of the Examiner’s applied prior art considered anew in light of Appellants'
arguments of what was known at the time of filing have been indicative of non-
obviousness? We decide these issues in the negative.

FINDINGS OF FACT (FF)
1. Appellants do not dispute the Examiner's finding that Misek teaches all
of the features recited in claim 11, except for the power supply ripple
rejection circuit. (Compare Ans. 3-5 with App. Br. 2-14 and Reply Br. 1-
3). In this regard, Misek teaches an image sensor, which uses a power
supply voltage, for converting an optical image into electrical images.
(Misek, ¶¶ [0001] and [0020]-[0023]).
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2. Appellants do not dispute the Examiner's finding that Suwa teaches a
ripple rejection circuit. (Compare Ans. 3-5 with App. Br. 2-14 and Reply
Br. 1-3). In this regard, Suwa teaches a device including a stabilized
power circuit (i.e., a ripple rejection circuit) that provides "stable and
highly precise reference voltage from the reference voltage generation
circuit used for semiconductor integrated circuits." (Suwa, ¶¶ [0001];
[0016]). Suwa teaches that "the device can be operated stably even over
a wide range of power source voltage." (Suwa, ¶ [0035]).
3. Appellants have not directed us to any objective evidence in an affidavit
or declaration to support their arguments of what was known at the time
of filing regarding the variation of reference voltages or the addition of
extra circuitry.

PRINCIPLES OF LAW
“Any judgment on obviousness is in a sense necessarily a reconstruction
based upon hindsight reasoning . . .” In re McLaughlin, 443 F.2d 1392, 1395
(CCPA 1971). Reconstruction is proper if it relies upon knowledge within the
level of ordinary skill at the time of the invention and not upon knowledge
gained solely from Appellants' disclosure. Id.
“[W]here the prior art gives reason or motivation to make the claimed
[invention] . . . the burden (and opportunity) then falls on an applicant to rebut
that prima facie case. Such rebuttal or argument can consist of . . . [any]
argument or presentation of evidence that is pertinent.” In re Dillon, 919 F.2d
688, 692-93 (Fed. Cir. 1990) (en banc) (emphasis omitted).
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It is well settled that objective evidence must be factually supported by
an appropriate affidavit or declaration. See In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984).
"A reference may be said to teach away when a person of ordinary skill,
upon reading the reference, would be discouraged from following the path set
out in the reference, or would be led in a direction divergent from the path that
was taken by the applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).

ANALYSES AND CONCLUSIONS
Issue (1): Have Appellants shown reversible error in the Examiner's reason to
employ Suwa's ripple rejection circuit in Misek's power supply within the
meaning of § 103(a)?

As noted above in our factual findings, Misek’s invention uses a power
supply voltage to convert optical images to electrical images. Suwa discloses a
device that includes a ripple rejection circuit to provide stable and highly
precise reference voltage from a power source voltage (e.g., power supply
voltage).
Thus, like the Examiner, we determine that one of ordinary skill in the art
would have been led to employ Suwa's ripple rejection circuit in Misek's image
sensor power supply to stabilize the voltage through the sensor. Moreover, the
Examiner does not use impermissible hindsight but, rather, the knowledge of
those skilled in the art at the time of the invention as a reason for employing
Suwa's ripple rejection circuit in Misek's power supply.
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Therefore, it follows that Appellants have not shown reversible error in
the Examiner's reason to employ Suwa's ripple rejection circuit in Misek's
power supply within the meaning of § 103(a).

Issue (2): Since Appellants have not shown reversible error in the Examiner's
reason to employ Suwa's ripple rejection circuit in Misek's power supply within
the meaning of § 103(a), then would the combination of the Examiner’s applied
prior art considered anew in light of Appellants' arguments of what was known
at the time of filing have been indicative of non-obviousness?

Appellants make the following three allegations: (1) that "Appellants
have realized that the image quality of an image sensor is affected by varying
reference voltages. This goes against the view commonly held at the time of
filing the present application which was that variations in reference voltages
had a negligible effect on the image quality;" (2) that "[t]he supply voltage for
an image sensor may have been regulated, but the variation of reference
voltages has not previously been thought of as either being a significant
magnitude, or as having a significant effect on the image quality of the image
which is rendered by the sensor;" and (3) that "[t]he addition of this extra
circuitry goes against the pressures that the designers are currently under, which
are to reduce components and to reduce the size of circuits." (App. Br. 8-9).
We understand Appellants' position to be that the state of the prior art
would have taught away from the claimed invention. It is well established that
a reference teaches away only when a person of ordinary skill in the art, upon
examining the reference, would be discouraged from following the path set out
in the reference, or would be led in a direction different from the path that was
taken by the applicant. Gurley, 27 F.3d at 553. Appellants have not provided
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evidence to show that the above allegations would have necessarily discouraged
one of ordinary skill in the art from using the ripple rejection circuit of Suwa in
the image sensor power supply of Misek.
Moreover, Appellants' allegations are merely attorney arguments with no
basis in fact. It is well settled that objective evidence must be factually
supported by an appropriate affidavit or declaration. See De Blauwe, 736 F.2d
at 705.
Thus, it follows that the combination of the Examiner’s applied prior art
considered anew in light of Appellants' arguments of what was known at the
time of filing would not have been indicative of non-obviousness.
Accordingly, based on the factual findings set forth in the Answer and
above, we determine that the preponderance of evidence weighs most heavily in
favor of obviousness of the subject matter defined by claims 11-13, 15-18, and
20-22 within the meaning of 35 U.S.C. § 103.

Rejection (2): The rejection of claims 14 and 19 under 35 U.S.C. § 103(a) as
being unpatentable over the combined disclosures of Misek and Suwa as
applied to claims 13 and 18 above, and further in view of the disclosure of
Zhang

Appellants argue dependent claims 14 and 19 as a group. (App. Br.
11-14 and Reply Br. 1-3). Accordingly, we address Appellants’ arguments
regarding the rejection with respect to claim 14 only. See 37 C.F.R.
§ 41.37(c)(1)(vii)(2008).
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The Examiner determines that Zhang teaches an Ahuja compensation
transistor and that it would have been obvious to combine Misek, Suwa, and
Zhang to arrive at the claimed invention. (Ans. 5).
Appellants argue that "Zhang et al. discloses that the Ahuja compensation
circuit is provided by a capacitor Cp and resistor ro, and not a transistor 220 as
in the claimed invention." (App. Br. 13).
Appellants also argue that "[t]here is simply no teaching, suggestion or
motivation to add a power supply ripple rejection circuit from Suwa to the
image sensor disclosed in Misek, and to make the power supply ripple rejection
circuit comprising an Ahuja compensation transistor as disclosed in Zhang et
al." (App. Br. 14).

ISSUES
The issues are: (1) Have Appellants shown reversible error in the
Examiner's determination that Zhang teaches an Ahuja compensation transistor
as required by claim 14? (2) If not, then have Appellants shown reversible error
in the Examiner's determination that it would have been obvious to combine
Misek, Suwa, and Zhang within the meaning of § 103(a)? We decide these
issues in the negative.

ADDITIONAL FINDINGS OF FACT (FF)
4. Appellants do not dispute the Examiner's finding that Misek teaches all
of the features required by claim 14, except for the power supply ripple
rejection circuit and the Ahuja compensation transistor. (Compare Ans.
3-5 with App. Br. 2-14 and Reply Br. 1-3).
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5. Zhang teaches that an Ahuja compensation circuit is used to stabilize a
voltage regulator. (Zhang, col. 5, ll. 29-64). As correctly stated by the
Examiner, "Zhang discloses a transistor (fig. 5, Gma) that functions with
the capacitor . . . to provide [an] Ahuja compensation via feedback."
(Ans. 8). Indeed, Zhang teaches that
[the] Ahuja compensation introduces a zero-pole pair in which the zero
and pole cancel one another:

[where gma is a transistor and Ca is the Ahuja compensation capacitor]
(Zhang, col. 7, ll. 18-40).

ADDITIONAL PRINCIPLES OF LAW
“[A]nalysis [of whether the subject matter of a claim would have been
obvious] need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
“In determining whether the subject matter of a patent claim is obvious,
neither the particular motivation nor the avowed purpose of the patentee
controls.” KSR, 550 U.S. at 419; see also In re Lintner, 458 F.2d 1013, 1016,
(CCPA 1972) ("The fact that [A]ppellant[s] use[] sugar for a different purpose
does not alter the conclusion that its use in a prior art composition would be
prima facie obvious from the purpose disclosed in the references").

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ANALYSES AND CONCLUSIONS
Issue (1): Have Appellants shown reversible error in the Examiner's
determination that Zhang teaches an Ahuja compensation transistor as required
by claim 14?

Appellants argue that "Zhang et al. discloses that the Ahuja compensation
circuit is provided by a capacitor Cp and resistor ro, and not a transistor 220 as
in the claimed invention." (App. Br. 13). We do not agree. As correctly stated
by the Examiner, "Zhang discloses a transistor (fig. 5, Gma) that functions with
the capacitor . . . to provide [an] Ahuja compensation via feedback." (FF 4).
Indeed, Zhang teaches that
Ahuja compensation introduces a zero-pole pair in which the zero and
pole cancel one another:

[where gma is a transistor and Ca is the Ahuja compensation capacitor]

(FF 4). In other words, Zhang discloses that the Ahuja compensation circuit
employs both Ca, a capacitor, and gma a transistor (Ahuja compensation
transistor), to ensure a zero-pole pair.
Thus, we agree with the Examiner that Zhang teaches an Ahuja
compensation transistor as required by claim 14.
Therefore, it follows that Appellants have not shown reversible error in
the Examiner's determination that Zhang teaches an Ahuja compensation
transistor as required by claim 14.

Issue (2) If Zhang teaches an Ahuja compensation transistor, then have
Appellants shown reversible error in the Examiner's determination that it would
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have been obvious to combine Misek, Suwa, and Zhang within the meaning of
§ 103(a)?

As noted above in our factual findings, Misek’s invention uses a power
supply voltage to convert optical images to electrical images. Suwa discloses a
device that includes a ripple rejection circuit to provide stable and highly
precise reference voltage from a power source voltage (e.g., power supply
voltage). Zhang teaches a voltage regulator having an Ahuja compensation
circuit to stabilize the voltage regulator. (FF 5).
Thus, we agree with the Examiner's determination that one of ordinary
skill in the art would have been led to employ Suwa's ripple rejection circuit
and Zhang's Ahuja compensation transistor in Misek's image sensor to stabilize
the voltage therein.
Moreover, we note that Appellants' allegation that their "approach [unlike
Zhang's] improves power supply ripple rejection at high frequencies" is not
dispositive to resolving the issue raised because Zhang need not serve the same
purpose in order to be properly combinable with Misek and Suwa. See KSR,
550 U.S. at 418; Lintner, 458 F.2d at 1016.
Therefore, because a prima facie case of obviousness has been
established, we determine that the burden properly shifted to Appellants to
present persuasive arguments or evidence refuting the prima facie case.
Appellants, however, have not done so.
Thus, it follows that Appellants have not shown reversible error in the
Examiner's determination that it would have been obvious to combine Misek,
Suwa, and Zhang within the meaning of § 103(a).
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Accordingly, based on the factual findings set forth in the Answer and
above, we affirm the Examiner's decision rejecting claims 14 and 19 under
35 U.S.C. 103(a) as being unpatentable over the combined disclosures of Misek
and Suwa as applied to claims 13 and 18 above, and further in view of the
disclosure of Zhang.

Rejection (3): The rejection of claim 21 under 35 U.S.C. § 103(a) as being
unpatentable over the disclosure of Suwa.
Appellants argue that "[f]or the reasons discussed above, it is submitted
that there is no proper motivation for modifying the Suwa patent to produce the
claimed invention." (App. Br. 10-11).

ISSUE
Have Appellants shown reversible error in the Examiner's determination
that Suwa would have suggested a plurality of power supply ripple rejection
circuits as required by claim 21 within the meaning of 35 U.S.C. § 103(a)?
We decide this issue in the negative.

ADDITIONAL FINDING OF FACT (FF)
6. Appellants do not dispute the Examiner's determination that Suwa
teaches or would have suggested all of the features recited in claim 21,
except for the plurality of power supply ripple rejection circuits.
(Compare Ans. 5-6 with App. Br. 2-14 and Reply Br. 1-3).

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PRINCIPLES OF LAW
We rely on the principles of law noted above.

ANALYSIS AND CONCLUSION
Appellants solely contend that "[f]or the reasons discussed above [i.e.,
providing a ripple rejection circuit], it is submitted that there is no proper
motivation for modifying the Suwa patent to produce the claimed invention."
(App. Br. 10-11).
We are unpersuaded by these arguments for the same reasons explained
above.
Thus, Appellants have not shown reversible error in the Examiner's
determination that one of ordinary skill in the art would have been led to
employ multiple ripple rejection circuits in Misek's power supply. In doing so,
one of ordinary skill in the art would have a reasonable expectation of
successfully providing stabilized voltages to all of the reference voltages.
Accordingly, based on the factual findings set forth in the Answer and
above, we affirm the Examiner's decision rejecting claim 21 under 35 U.S.C.
103(a) as being unpatentable over the disclosure of Suwa.

ORDER
In summary:
1) The § 103(a) rejection of claims 11-13, 15-18, and 20-22 over the
combined disclosures of Misek and Suwa is affirmed;
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3) The § 103(a) rejection of claims 14 and 19 over the combined
disclosures of Misek and Suwa as applied to claims 13 and 18 above, and
further in view of the disclosure of Zhang is affirmed; and
4) The § 103(a) rejection of claim 21 over the disclosure of Suwa is
affirmed.
On this record, the decision of the Examiner is affirmed.

TIME PERIOD
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v)(2008).

AFFIRMED

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