Ex Parte Sackinger

Board of Patent Appeals and Interferences

Mar 3, 2005

09498559 (B.P.A.I. Mar. 3, 2005)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte EDUARD SACKINGER
__________
Appeal No. 2005-0449
Application No. 09/498,559
__________
ON BRIEF
__________
Before GARRIS, TIMM, and JEFFREY T. SMITH, Administrative Patent
Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal which involves claims 1-19.
The subject matter on appeal relates to a circuit for use as
an active inductor on an integrated circuit comprising a
transistor adapted to operate as an active inductor that is
biased using a voltage generated on the integrated circuit which
is outside the range of the voltage supplied by a power supply
Appeal No. 2005-0449
Application No. 09/498,559
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for operating the circuit. Further details of this appealed
subject matter are recited in the appellant’s independent claims
1, 14 and 16 which read as follows:
1. A circuit for use as an active inductor on an integrated
circuit having a power supply voltage supplied at a first power
supply terminal, comprising:
an metal oxide semiconductor (MOS) transistor having a gate
terminal, a drain terminal, and a source terminal, said drain
terminal being coupled to said power supply voltage and said
source terminal being one of the terminals of said active
inductor; and
a resistor having a first terminal coupled to said gate
terminal and a second terminal coupled to a voltage that is
derived from said power supply voltage and has a larger absolute
value than said power supply voltage supplied at said first power
supply terminal and the same sign as said power supply voltage;
said circuit being adapted so that when said circuit is
operating said circuit behaves as an active inductor between said
source terminal and an other terminal of said active inductor on
said integrated circuit.
14. A circuit for use as an active inductor on an integrated
circuit, comprising:
a metal oxide semiconductor (MOS) transistor; and
a beyond voltage generator which generates a beyond voltage
that is either greater than the highest voltage or less than the
lowest voltage being supplied to said integrated circuit by a
power supply;
wherein said MOS transistor is coupled to said beyond
voltage generator so as to bias said MOS transistor with said
beyond voltage and said MOS transistor is adapted to operate as
said active inductor.
16. An integrated circuit comprising a metal oxide
semiconductor (MOS) transistor adapted to operate as an active
Appeal No. 2005-0449
Application No. 09/498,559
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inductor that is biased using a voltage generated on said
integrated circuit that is outside the range of the voltage
supplied by a power supply off of said integrated circuit for
operating said integrated circuit.
The references set forth below are relied upon by the
examiner as evidence of anticipation and obviousness:
Vargha 6,069,516 May 30, 2000
(filed Apr. 28, 1998)
Ko et al. 6,02,496 Feb. 22, 2000
(filed Jun. 3, 1998)
Claims 14-19 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Vargha. On page 4 of the answer, the examiner
expresses his anticipation position as follows:
Vargha discloses in Figure 1 a circuit comprising:
- a metal oxide semiconductor (MOS) transistor (12);
- a beyond voltage generator (10) which generates a
beyond voltage (Vcc+V1) that is either greater than the
highest voltage (Vcc) or less than the lowest voltage
being supplied to said integrated circuit by a power
supply; and
- wherein said MOS transistor (12) is coupled to said
beyond voltage generator (10) so as to bias said MOS
transistor with said beyond voltage (Vcc+V1) and said
MOS transistor (10) is adapted to operate as said
active inductor.
Claims 1-13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Vargha in view of Ko. The examiner’s
obviousness conclusion is set forth on page 5 of the answer and
reads as follows:
Appeal No. 2005-0449
Application No. 09/498,559
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However, Vargha does not disclose a resistor having a
first terminal coupled to said gate terminal of the
transistor (10) and a second terminal coupled to the
beyond voltage (Vcc+V1) that is derived from said power
supply voltage (Vcc) as claimed. Ko et al teaches in
Figure 2 an active inductor comprising resistors (R2,
R4, R6, R8) coupled between the transistors (MT1-MT4)
and a voltage divider (R1, R3, R5, R7, R9) for
protecting the transistors from a rush currents [sic]
from the voltage source (Vdd). It would have been
obvious to a person having skill in the art at the time
the invention was made to employ the resistor taught by
Ko et al in the circuit of Vargha for the purpose of
protecting the transistor.
We refer to the brief and reply brief as well as to the
answer for a complete exposition of the opposing viewpoints
expressed by the appellant and by the examiner concerning the
above noted rejections.
OPINION
For the reasons set forth below, these rejections cannot be
sustained.
Regarding the section 102 rejection, the appellant argues
that the rejected claims distinguish over Vargha by way of the
independent claim 14 recitation “said MOS transistor is coupled
to said beyond voltage generator so as to bias said MOS
transistor with said beyond voltage and said MOS transistor is
adapted to operate as said active inductor” and by way of the
independent claim 16 recitation “a metal oxide semiconductor
(MOS) transistor adapted to operate as an active inductor that is
Appeal No. 2005-0449
Application No. 09/498,559
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biased using a voltage generated on said integrated circuit that
is outside the range of the voltage supplied by a power supply.”
More specifically, it is the appellant’s contention that the
Vargha circuit is not disclosed as being an active inductor and
is not capable of functioning as an active inductor. According
to the appellant, the Vargha circuit actually operates as a
switch and lacks the structure (i.e., the resistor arrangement
disclosed in the subject specification) necessary to bias
patentee’s transistor in such a way as to operate as an active
inductor.
In response to these arguments, the examiner urges:
Figure 1 of Vargha will perform the same function as
the claimed circuit because both circuits have similar
structures. Further, since the gate terminal of the
MOS transistor (12) of Vagha [sic, Vargha] is biased in
the same condition as the gate terminal of the claimed
transistor, i.e., by “a gate voltage (Vcc + V1) outside
the range of a supply voltage (Vcc)”, the circuit of
Vargha would perform the function of an inductor when
the transistor is turned on [answer, page 6].
It is well settled that, where an examiner 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, the examiner
possesses the authority to require an applicant to prove that the
subject matter shown to be in the prior art does not possess the
Appeal No. 2005-0449
Application No. 09/498,559
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characteristic relied on. For example, See In re Swinehart, 439
F.2d 210, 212, 169 USPQ 226, 228 (CCPA 1971). Nevertheless, it
is also well settled that, before an applicant can be put to this
burdensome task, the examiner must provide some evidence or
scientific reasoning to establish the reasonableness of the
examiner’s belief that the functional limitation is an inherent
characteristic of the prior art. See Ex parte Skinner, 2 USPQ2d
1788, 1789 (Bd. Pat. App. & Int. 1986). Also see Ex parte Levy,
17 USPQ2d 1461, 1463-64 (Bd. Pat. App. & Int. 1990).
Here, the examiner’s rationale for believing that the
circuit of Vargha can perform the active inductor function
required by claims 14 and 16 is that the Vargha and here claimed
circuits “have similar structures” and that patentee’s transistor
“is biased in the same condition as the gate terminal of the
claimed transistor.” Id. It is true that, like the circuit of
claims 14 and 16, the Figure 1 circuit of Vargha includes a
transistor and a bias is supplied to this transistor using a
voltage generated on the circuit. However, as thoroughly
explained by the appellant in the brief and reply brief, the
aforementioned commonalities are inadequate to establish that
patentee’s Figure 1 circuit is capable of performing the active
inductor function of the appellant’s claimed circuit.
Appeal No. 2005-0449
Application No. 09/498,559
1 On the contrary, as properly indicated by the appellant,
this Figure 1 circuit is disclosed as functioning “to control the
turn-on or turn-off of a load circuit” such as “an inductor”
(column 1, lines 12-14). The fact that this Figure 1 circuit
functions to control the turn-on and turn-off of an inductor load
circuit militates against the examiner’s position that the Figure
1 circuit is capable of performing an active inductor function.
7
Furthermore, this last mentioned determination is meaningfully
reinforced by the fact that Vargha’s Figure 1 circuit is in no
way described as possessing an active inductor capability1 and by
the fact that this prior art circuit lacks the structure
disclosed by the appellant as being necessary to perform an
active inductor function.
Under the circumstances recounted above, it is clear that
the examiner has failed to carry his burden of providing
persuasive evidence or scientific reasoning to establish the
reasonableness of his belief that Vargha’s Figure 1 circuit is
capable of performing the active inductor function required by
appealed independent claims 14 and 16. It follows that the
examiner likewise has failed to carry his burden of establishing
a prima facie case of anticipation with respect to these claims
or the claims which depend therefrom. Thus, we cannot sustain
the examiner’s section 102 rejection of claims 14-19 as being
anticipated by Vargha.
Appeal No. 2005-0449
Application No. 09/498,559
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For a number of reasons, we also cannot sustain the
examiner’s section 103 rejection of claims 1-13 as being
unpatentable over Vargha in view of Ko. First, the applied prior
art does not support the examiner’s conclusion that it would have
been obvious “to employ the resistor taught by Ko . . . in the
circuit of Vargha for the purpose of protecting the transistor”
(answer, page 5). This is because Ko does not teach that his
resistors perform the aforequoted function of “protecting the
transistor.” Even if Ko contained such a teaching, the
examiner’s obviousness conclusion still would be unsupported by
the applied prior art. This is because Vargha contains no
teaching that his Figure 1 transistor requires the protection of
a resistor. Indeed, for all we know based on the references
applied by the examiner, the provision of a resistor would render
the Figure 1 circuit of Vargha unsuitable for its earlier
discussed purpose of controlling the turn-on or turn-off of a
load circuit. Finally, the section 103 rejection still would be
improper even disregarding each of these aforementioned
infirmities. This is because the examiner has not established
(or even attempted to establish) that the proposed combination of
the applied reference teachings would supply the functional
deficiency of Vargha’s Figure 1 circuit. That is, the record
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Application No. 09/498,559
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before us contains no evidence or reasoning to support the
necessary determination that the Figure 1 circuit, if modified to
include a resistor, would thereby be capable of performing the
active inductor function required by the appellant’s claimed
circuit.
The decision of the examiner is reversed.
REVERSED
Bradley R. Garris )
Administrative Patent Judge )
)
)
)
Catherine Timm ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Jeffrey T. Smith )
Administrative Patent Judge )
Appeal No. 2005-0449
Application No. 09/498,559
10
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