Ex parte Shimoda

Board of Patent Appeals and Interferences

Oct 29, 1999

08216807 (B.P.A.I. Oct. 29, 1999)

Application for patent filed March 23, 1994.1
An amendment after the final rejection was filed on July2
17, 1995 [paper no. 6] and entered in the record for the
purposes of this appeal.
1
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not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte SADASHI SHIMODA
__________
Appeal No. 1996-2578
Application 08/216,8071
___________
ON BRIEF
___________
Before KRASS, RUGGIERO and LALL, Administrative Patent Judges.
LALL, 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 to 7, 9, 122
Appeal No. 1996-2578
Application 08/216,807
2
and 14. Claims 8, 10, 11 and 13 have been objected to.
The disclosed invention pertains to an electrical delay
circuit capable of being formed entirely in a single
integrated circuit. The invention is generally used for
providing a supply line delay of a predetermined time period
after application of a supply voltage to an input. The
invention may also be used, for example, for delaying a
standard clock signal. In conventional delay circuits, a
resistor on the order of several hundred megohms and a
capacitor of several microfarads are needed to generate a
delay as small as several hundred milliseconds. It is,
however, impossible to commonly integrate such a large
resistance and capacitance in a single monolithic integrated
circuit. The inventive design accomplishes the same result by
utilizing components of smaller size in a manner that these
components can be easily incorporated in a monolithic
integrated circuit. The invention is further illustrated by
the following claim.
Representative claim 1 is reproduced as follows:
Appeal No. 1996-2578
Application 08/216,807
A reply brief was filed as paper no. 13 and was entered3
in the record. However, no supplemental answer was given.
3
1. An electric signal delay circuit comprising: input
means for detecting an input signal; charge/discharge means
connected to the input means and comprising a plurality of
charge storage elements and means for selectively charging and
discharging the respective charge storage elements in response
to detection of an input signal; and delay signal generating
means for detecting a charge level of the respective charge
storage elements and for
generating an output signal when the detected charge is
indicative of a predetermined delay time from detection of the
input signal.
The Examiner relies on the following references:
Winebarger 4,260,907 Apr. 7, 1981
Shen 4,591,745 May 27, 1986
Claims 1 to 7, 9, 12 and 14 stand rejected under 35
U.S.C. § 102 as being anticipated by either Shen or
Winebarger.
Rather than repeat the arguments of Appellant or the
Examiner, we make reference to the briefs and the answer for3
the respective details thereof.
OPINION
We have considered the rejections advanced by the
Examiner and the supporting arguments. We have, likewise,
Appeal No. 1996-2578
Application 08/216,807
4
reviewed the Appellant’s arguments set forth in the brief.
It is our view that claims 1 to 3, 7, 9, 12 and 14 are
anticipated by either Shen or Winebarger, while claims 4 to 6
are not. Accordingly, we affirm in part.
We take up these rejections in the order they appear in
the answer. In our analysis below, we are guided by the
precedence of our reviewing court that the limitations from
the disclosure
are not to be imported into the claims. In re Lundberg, 244
F.2d 543, 548, 113 USPQ 530, 534 (CCPA 1957); In re Queener,
796 F.2d 461, 464, 230 USPQ 438, 440 (Fed. Cir. 1986). We are
also mindful of the requirements of anticipation under 35
U.S.C. § 102. We must point out, however, that
anticipation under 35 U.S.C. § 102 is established only when a
single prior art reference discloses, either expressly or
under the principles of inherency, each and every element of a
claimed invention. See RCA Corp. V. Applied Digital Data
Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Appeal No. 1996-2578
Application 08/216,807
5
Cir. 1984), cert. dismissed, 468 U.S. 1228 (1984).
Before considering the rejections based on the prior art,
we consider the arguments of Appellant and the Examiner
regarding the application of the 35 U.S.C. § 112, sixth
paragraph as interpreted in In re Donaldson, 16 F.3d 1189,
1193, 29 USPQ2d 1845, 1848-49 (Fed. Cir. 1994). Appellant has
argued at length, [brief, pages 20 to 24 and reply brief,
pages 9 to 13], what Donaldson stands for and what the court
stated in that case. However, Appellant has not effectively
responded to Examiner’s position that “Appellant has not
provided reasons why prior art elements should not be
considered equivalents” [answer, pages 4 and 5]. We agree
with the Examiner and find that Appellant has not provided us
with any specific structure from the specification which is
equivalent to the claimed means plus function. Absent that,
we conclude that the Examiner is correct in giving the claimed
means plus function the interpretation employed in applying
the prior art in the rejections on appeal. Now, we consider
these rejections.
Rejection of claims 1 to 7, 9, 12 and 14 over Shen
Appeal No. 1996-2578
Application 08/216,807
6
The Examiner has rejected these claims as being
anticipated by Shen under 35 U.S.C. § 102. There are three
independent claims, namely, 1, 4 and 14. We first consider
claim 1. After considering the positions of Appellant [brief,
pages 14, 16 to 18 and reply brief, pages 2 to 7] and Examiner
[answer, pages 2 to 3], we agree with the Examiner. Shen does
show plural storage elements c1, c2 , c3 and c4 and they are
being charged and discharged at selective times in response to
a change at the input means such as node A. Shen also shows a
delay means 14 together with an amplifier 16. This delay
means is responsive to the charge level of the storage element
c4 which in turn is indicative of a predetermined time delay.
Therefore, we sustain the anticipation rejection of claim 1.
The other independent
claim, 14, contains similar limitations and in fact is broader
than claim 1 because, for example, it only calls for “a
plurality of charge storing elements” (claim 14, lines 1 and
2) whereas claim 1 further calls for these storing elements
Appeal No. 1996-2578
Application 08/216,807
7
being connected to other parts of the circuit and being
charged/discharged in a prescribed manner. For this reason,
claim 14 is also anticipated by Shen like claim 1 as explained
above.
With respect to the dependent claims 2, 3, 7, 9 and 12,
we note that Appellant has not raised any arguments regarding
the claims under this heading individually. The arguments not
made are considered waived. See 37 CFR § 1.192
(c)(8)(iv)(1995) (“For each rejection under 35 U.S.C. 103, the
argument shall specify the errors in the rejection and, if
appropriate, the specific limiations in the rejected claims
which are not described in the prior art relied on in the
rejection, and shall explain how such limitations render the
claimed subject matter unobvious over the prior art.”). Cf.
In re Baxter Travenol Labs., 952 F.2d 388, 391, 21 USPQ2d
1281, 1285 (Fed. Cir. 1991) (“It is not the function of this
court to examine the claims in greater detail than argued by
an appellant, looking for nonobvious distinctions over the
prior art.”); In Reed Wiechert, 370 F.2d 927, 936, 152 USPQ
247, 254 (CCPA 1967) (“This court has uniformly followed the
Appeal No. 1996-2578
Application 08/216,807
8
sound rule that an issue raised below which is not argued in
this court, even if it has been properly brought here by
reason of appeal is regarded as abandoned and will not be
considered. It is our function as a court to decide disputed
issues, not to create them.”). Therefore, we sustain the
anticipation rejection of claims 2, 3, 7, 9 and 12 over Shen.
Regarding independent claim 4, we again evaluate the
respective positions of Appellant [brief, pages 14 to 17 and
reply brief, pages 2 to 7] and the Examiner [answer, pages 2
to 3]. We find no evidence offered by the Examiner which
meets the limitation “generating a first output signal when
... , and generating a delayed second output signal according
to the number of first output signals” (claim 4, lines 8 to
11). We, therefore, do not sustain the anticipation rejection
of claim 4 and its dependent claims 5 and 6 over Shen.

Rejection of claims 1 to 7, 9, 12 and 14 over Winebarger
The Examiner has rejected these claims as being
anticipated by Winebarger under 35 U.S.C. § 102. We first
take up the independent claim 1. We have considered the
Appeal No. 1996-2578
Application 08/216,807
9
merits of the
positions of Appellant [brief, pages 13 to 14 and 18 to 20 and
reply brief, pages 8 to 9] and the Examiner [answer, pages 2
to 4]. We agree with the Examiner. Winebarger teaches the
selective charging and discharging of the charge storage
elements (i.e., the capacitors) in response to the input
signal at node 12. The output signal POR in Winebarger is
delayed by a predetermined amount of time as represented by 82
in figure 3. Thus, as claimed in claim 1, Winebarger shows
all the elements.
Therefore, we sustain the anticipation rejection of claim 1
over Winebarger. We next consider the other independent claim
14. As pointed out above, this claim is broader than claim 1
and hence anticipated by Winebarger for the same reasons as
claim 1. We sustain the anticipation rejection of claim 14
over Winebarger.
Regarding the dependent claims 2, 3, 7, 9 and 12, we
Appeal No. 1996-2578
Application 08/216,807
10
note again, as above, that Appellant has not presented any
separate arguments on their behalf. We, therefore, sustain
the anticipation rejection of these claims over Winebarger for
the same reasons as claim 1.
With respect to claim 4, after considering the respective
positions of Appellant [brief, pages 15 and 18 to 20 and reply
brief, pages 8 to 9], we find that the Examiner has not
pointed
to any evidence in Winebarger that meets the limitation
“generating a first output signal ..., and generating a
delayed second output signal according to the number of first
output signals” (claim 4, lines 8 to 11). Therefore, we do
not sustain the anticipation rejection of claim 4 and its
dependent claims 5 and 6 over Winebarger.
In summary, we have sustained the anticipation rejection
under 35 U.S.C. § 102 over Shen or Winebarger with respect to
Appeal No. 1996-2578
Application 08/216,807
11
claims 1 to 3, 7, 9, 12 and 14, while we have not so held with
respect to claims 4 to 6. Accordingly, we affirm in part.

No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED IN PART
Appeal No. 1996-2578
Application 08/216,807
12
ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
PARSHOTAM S. LALL )
Administrative Patent Judge )
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