Ex parte Schultz

Board of Patent Appeals and Interferences

Jul 20, 1999

08546345 (B.P.A.I. Jul. 20, 1999)

Application for patent filed October 20, 1995. According to1
appellant, this application is a continuation of Application 08/194,552,
filed February 10, 1994.
1
Paper No. 20
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte DAVID P. SCHULTZ
______________
Appeal No. 97-0984
Application 08/546,3451
_______________
ON BRIEF
_______________
Before JERRY SMITH, HECKER, and FRAHM, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. §
134 from the examiner’s final rejection of claims 1-5, which
constitute all the claims in the application. After the
Appeal No. 97-0984
Application 08/546,345
2
appeal brief was filed, the examiner indicated that claim 5
contained allowable subject matter and withdrew the rejection
of claim 5 [answer, page 5]. Therefore, this appeal is now
limited to the rejection of claims 1-4.
The disclosed invention pertains to a power-on reset
circuit for resetting components of an integrated circuit
upon initiation of power to the integrated circuit or when
the supply voltage falls sufficiently during operation that
the circuit operation might be affected. One feature of the
invention is that the power-on reset circuit draws no current
in the steady state. Another feature of the invention is
that the power-on reset signal can remain high for a
relatively long period of time.
Representative claim 1 is reproduced as follows:
1. A power-on reset circuit comprising:
a reference node;
a voltage level detector for pulling down a reference
voltage at said reference node when a supply voltage is not
above ground voltage by a first predetermined level; and
a current source for applying a current to said reference
node when said supply voltage is above a second predetermined
level;
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Application 08/546,345
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Appeal No. 97-0984
Application 08/546,345
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an inverter receiving an input signal from said reference
node, said inverter having a threshold voltage sufficiently
higher than a residual voltage to which said reference node
discharge when said supply voltage is not above said first
predetermined level that said residual voltage at said
reference node will cause said inverter to provide a logical
1 output signal;
said inverter comprising:
a PMOS transistor, a first NMOS transistor, and a second
NMOS transistor connected in series, said PMOS transistor
connected to said supply voltage and said second NMOS
transistor connected to said ground voltage, and
means for turning on said second NMOS transistor.
The examiner relied on the following references in
the
final rejection:
Mahabadi 4,885,476 Dec. 05,
1989
Shay 5,323,067 June 21,
1994
(filed Apr. 14,
1993)
Crafts 5,444,401 Aug. 22,
1995
(effectively filed Dec. 28,
1992)
The examiner cited the following additional
references in the examiner’s answer:
Appeal No. 97-0984
Application 08/546,345
Since the newly cited Masuoka and Ludwig references have not been2
applied in the statement of the rejection, we have not considered these
references in determining the propriety of the rejection. See In re Hoch,
428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970).
5
Masuoka 4,460,835 July 17,
1984
Ludwig 5,115,150 May 19,
1992
Claims 1-4 stand rejected under 35 U.S.C. § 103. As
evidence of obviousness the examiner offers Shay or Mahabadi
in view of Crafts . 2
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the
evidence of obviousness properly relied upon by the examiner
as support for the rejection. We have, likewise, reviewed
and taken into consideration, in reaching our decision, the
appellant’s arguments set forth in the briefs along with the
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Application 08/546,345
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examiner’s rationale in support of the rejection and
arguments in rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record
before us, that the evidence properly relied upon and the
level of skill in the particular art would not have suggested
to one of ordinary skill in the art the obviousness of the
invention
as set forth in claims 1-4. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
In so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383
U.S. 1, 17, 148 USPQ 459, 467 (1966), and to provide a reason
why one having ordinary skill in the pertinent art would have
been led to modify the prior art or to combine prior art
references to arrive at the claimed invention. Such reason
must stem from some teaching, suggestion or implication in
the prior art as a whole or knowledge generally available to
Appeal No. 97-0984
Application 08/546,345
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one having ordinary skill in the art. Uniroyal, Inc. v.
Rudkin-Wiley Corp.,
837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert.
denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta
Resins
& Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657, 664
(Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986); ACS
Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577,
221 USPQ 929, 933 (Fed. Cir. 1984). These showings by the
examiner are an essential part of complying with the burden
of presenting a prima facie case of obviousness. Note In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992).
With respect to independent claim 1, the examiner
cites Shay and Mahabadi as each teaching all the features of
claim 1 except for the details of the inverter set forth in
the last seven lines of the claim. The examiner notes that
an inverter as recited in claim 1 was notoriously well-known
in the art and was used for conserving power [answer, pages
3-4]. The examiner points to Masuoka and Ludwig to support
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Application 08/546,345
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this contention (note footnote 2 above). The examiner then
notes that even though Crafts does not teach anything about
power conservation, the artisan would recognize that the
Crafts structure “can be” used in the Shay or Mahabadi power-
on reset circuit [id., page 4].
Appellant first argues that there is no suggestion in
any of Mahabadi, Shay or Crafts to modify the inverter
circuits disclosed in Mahabadi or Shay to conserve power in
the operation of their inverters. We note that the only
cited references dealing with the question of conserving
power in an inverter are the unapplied Masuoka and Ludwig
references. As noted above, we will not consider these
references since they were not indicated in the statement of
the rejection. Therefore, the motivation to modify the Shay
or Mahabadi inverter to be like the Crafts inverter must come
from one of these three references or other knowledge
generally available to the artisan.
The purpose of the inverter in Crafts is to limit the
output current of a driver independent of the supply voltage,
load capacitance, temperature and other processing variables
Appeal No. 97-0984
Application 08/546,345
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as long as they are in a normal range. Appellant argues that
this purpose of Crafts is unlikely to lead to power
conservation [brief, page 7]. We agree with appellant.
There is no evidence on this record that the Crafts inverter
would result in any power savings if substituted for the
inverters of Shay or Mahabadi. Thus, the motivation asserted
by the examiner for combining the teachings of Crafts with
either Shay or Mahabadi is not suggested by any of the
applied references. Therefore, the only reason to make the
substitution proposed by the examiner would be to improperly
reconstruct the invention in hindsight based on appellant’s
own disclosure. Since we find no suggestion within the
applied prior art for combining their teachings in the
claimed manner, we do not sustain the rejection of
independent claim 1. Consequently, we also do not sustain
the rejection of dependent claims 2-4.
Although appellant makes several additional arguments
regarding the propriety of the rejection even if Crafts is
properly combined with Shay or Mahabadi, we need not consider
these arguments in view of our determination above that there
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Application 08/546,345
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is no suggestion to combine the teachings of these
references.
The decision of the examiner rejecting claims 1-4 is
reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
STUART N. HECKER ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
ERIC S. FRAHM )
Administrative Patent Judge )

JS/cam
Appeal No. 97-0984
Application 08/546,345
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Edel M. Young
Xilinx Inc.
2100 Logic Drive
San Jose, CA 95124