Ex Parte Tokuda

Patent Trial and Appeal Board

Jan 11, 2018

14170248 (P.T.A.B. Jan. 11, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/170,248 01/31/2014 Daisuke TOKUDA 002000-000158 7342
78198 7590 01/16/2018
StiiHehaker & Rraokett PP EXAMINER
8255 Greensboro Drive LU, ZHIYU
Suite 300
Tysons, VA 22102 ART UNIT PAPER NUMBER
2649
NOTIFICATION DATE DELIVERY MODE
01/16/2018 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAISUKE TOKUDA
Appeal 2017-006977
Application 14/170,248
Technology Center 2600
Before JOHN A. JEFFERY, DENISE M. POTHIER, and MATTHEW J.
McNEILL, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-006977
Application 14/170,248
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1 and 6.12 We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.
STATEMENT OF THE CASE
Appellant’s invention is a high-frequency (HF) module with active
and passive elements. The module includes a chip device with a substrate
on which two regions are formed: (1) a passive circuit forming region 902U
with capacitors 120-123, and (2) an active circuit forming region 901 with
respective sections 101-103 for a switch, power amplifiers, and low noise
amplifiers, respectively. See Spec. 41 42; Figs. 2-3. Inductors, however,
are omitted from this device to reduce size. See Spec. 10, 12, 53.
Instead, conductive wires 211-213 provide the requisite inductance due to
1 Although the Examiner’s Final Rejection mailed April 29, 2016 includes
various grounds of rejection for claims 2 to 5, those claims were cancelled in
a subsequent proposed amendment that the Examiner entered. See Advisory
Action mailed Aug. 16, 2016 (“Adv. Act.”), at 1-2 (indicating that the
proposed amendment filed July 29, 2016 would be entered for appeal
purposes); see also App. Br. 2, 8 (noting this cancellation in the Claims
Appendix). These entered amendments incorporated limitations from
original dependent claims 2 and 3 into independent claim 1. Accord Ans. 6
(noting that claim 1 on appeal is actually original claim 3). Therefore,
despite the Examiner’s erroneously indicating that claims 2 to 5 are rejected
(see Ans. 2-5), only claims 1 and 6 remain pending. Accordingly, all
references to claim 1 in this opinion are to the version in the Claims
Appendix of the Appeal Brief unless otherwise indicated.
2 Although the Examiner indicated that the proposed amendment after Final
Rejection would not be entered in an earlier Advisory Action mailed August
4, 2016, the Examiner nonetheless later indicated that the amendment would
be entered in an Advisory Action mailed August 16, 2016.
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Application 14/170,248
their length and shape. See Spec. 12, 48-53; Figs. 3-6. Claim 1 is
illustrative:
1. A high-frequency module comprising
a first circuit composed of a group of passive elements
including at least one inductor and at least one capacitor, and
a second circuit including at least one active element, the at
least one capacitor of the first circuit and the at least one active
element of the second circuit being formed in a single chip device,
wherein
the at least one inductor includes a conductive wire to mount
the single chip device on an external circuit substrate,
the inductor and the capacitor are grounded,
the chip device includes a ground via that grounds the
capacitor, and
a land, which is formed on the external circuit substrate and to
which the conductive wire is bonded, and an electrode, which is
formed on the external circuit substrate and is connected to the
ground via, form an integrated common ground electrode.
THE REJECTION3
The Examiner rejected claims 1 and 6 under 35 U.S.C. § 103 as
unpatentable over Nishimura (US 2004/0152276 Al; Aug. 5, 2004),
3 Because only claims 1 and 6 are pending in this appeal, and the limitations
from claims 2 and 3 were incorporated into independent claim 1 in an
amendment filed after the Examiner’s Final Rejection that was entered as
noted previously, we presume that the Examiner intended to reject amended
claim 1 over the grounds indicated for claims 2 and 3 on pages 5 and 6 of the
Final Rejection mailed April 29, 2016 (and pages 4 and 5 of the Answer
mailed January 27, 2017) that include the Kanno and Okabe references.
Accord App. Br. 3 (noting that claim 1 is “technically” rejected as obvious
over Nishimura, Kemmochi, Kanno, and Okabe). Despite the Examiner’s
erroneously indicating that claims 2 to 5 are rejected on pages 2 to 5 of the
Answer, we nonetheless consolidate those grounds here for clarity. We,
therefore, present the correct ground of rejection here in light of the entered
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Application 14/170,248
Kemmochi (US 2009/0206948 Al; Aug. 20, 2009), Kanno (US
2005/0285234 Al; Dec. 29, 2005), and Okabe (US 2005/0176380 Al; Aug.
11,2005). See Ans. 2-5.* * 4
CONTENTIONS
Regarding independent claim 1, the Examiner finds that Nishimura’s
high-frequency (HF) module includes a “first circuit” (bandpass filter 602)
with passive elements, and a “second circuit” (Tx/Rx switch 610) with at
least one active element. Ans. 2. Although the Examiner acknowledges that
the passive elements in Nishimura’s first circuit do not include at least one
inductor and capacitor, the Examiner cites Kemmochi for teaching this
feature. Ans. 3. The Examiner also cites Kanno for teaching an inductor
including a conductive wire to mount a single chip device on an external
substrate. Ans. 4. Lastly, the Examiner cites (1) Kemmochi for teaching
grounding an inductor and capacitor, (2) Kanno for teaching a chip device
including a ground via, and (3) Okabe for teaching connecting electronic
circuit blocks of a HF circuit to a common ground. Ans. 5. In light of these
collective teachings, the Examiner concludes that claim 1 would have been
obvious. See Ans. 2-9.
Appellant argues that the cited prior art does not teach or suggest a
circuit on a chip with an inductor and capacitor that are both grounded, let
alone an integrated common ground electrode as claimed. App. Br. 3-6.
amendment after final rejection, and treat the Examiner’s error in this regard
as harmless.
4 Throughout this opinion, we refer to (1) the Appeal Brief filed October 18,
2016 (“App. Br.”); (2) the Examiner’s Answer mailed January 27, 2017
(“Ans.”); and (3) the Reply Brief filed March 27, 2017 (“Reply Br.”).
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Application 14/170,248
Appellant adds that Nishimura does not form a capacitor and an active
element in a single chip device. Reply Br. 1-2. Appellant argues other
recited limitations summarized below.
ISSUES
Under § 103, has the Examiner erred by finding that Nishimura,
Kemmochi, Kanno, and Okabe collectively would have taught or suggested:
(1) the single chip device recited in claim 1?
(2) the first circuit is a band pass filter connected to an antenna as
recited in claim 6?
ANALYSIS
Claim 1
We begin by noting that claim 1 recites, in pertinent part, that at least
one capacitor of the first circuit and at least one active element of the second
circuit are formed in a single chip device. We emphasize “device” here, for
the Examiner apparently distinguishes a single chip from a single chip
device in construing the claim. See Ans. 9 (noting that claim 1 does not
preclude a substrate from being part of a “chip device,” and citing Kanno’s
Figure 13 as an example of such a device).
Appellant, however, apparently construes the recited single chip
device as a single chip. See Reply Br. 2 (arguing that claim 1 requires
forming the capacitor and active element in a single chip); see also App. Br.
5 (arguing that the cited prior art lacks a circuit on a chip with an inductor
and capacitor that are both grounded, and asking where in the cited prior art
a ground via is located in a chip that grounds the capacitor).
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Application 14/170,248
Appellant’s Specification does not define the term “chip device,” but
does describe a semiconductor chip device 20 whose electrode patterns form
capacitors of a bandpass filter BPF and field effect transistors (FETs) of a
switch and various amplifiers. See Spec. 35 42. As shown in
Appellant’s Figure 2 reproduced below, the chip device 20 includes a base
substrate on which two regions are formed: (1) a passive circuit forming
region 902U with capacitors 120-123, and (2) an active circuit forming
region 901 with respective sections 101-103 for the switch, power
amplifiers, and low noise amplifiers, respectively. See Spec. 41 42.
20
/'
153 121 552
131
Appellant’s Figure 2 showing chip device 20
Noticeably absent from this chip device is an inductor, for a key
aspect of the invention is deliberately omitting inductors from this device to
reduce size. See Spec. 10, 12, 53. Instead, conductive wires 211-213
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Application 14/170,248
provide the requisite inductance due to their length and shape. See Spec.
HU 12, 48-53; Figs. 3-6.
When interpreted in light of this disclosure, then, a “single chip
device” is a device whose respective elements, when integrated, collectively
form a chip. Although a chip device may have a substrate, such as the base
substrate 100 in Figure 2, the device’s substrate must nevertheless be distinct
from the external circuit substrate to which the chip device is mounted (e.g.,
substrate 300 in Figures 3 and 4). See Spec. HH 48-50. This distinction is
consistent with claim 1 where this mounting is achieved with a conductive
wire. See Spec. H 11 •
Turning to the rejection, there is no dispute that Nishimura’s
integrated circuit 903 can be formed as a chip, and include a capacitor and
active element in light of Nishimura’s paragraphs 100 and 127. See Ans. 6-
8; see also Reply Br. 1 (acknowledging this point). Therefore, Nishimura
forms a capacitor and active element as a single chip device, namely a
device whose respective elements, including the capacitor and active
element, collectively form a chip.
Although Nishimura is silent regarding whether this chip device has a
via that grounds the capacitor, we nonetheless see no error in the Examiner’s
reliance on Kanno and Okabe for at least suggesting that ground vias are
known in the art, and that providing such vias to ground the capacitor in
Nishimura’s chip device would have been obvious. See Ans. 8-9.
To be sure, Kanno’s vias 14 in Figure 1A and paragraph 83 are in
substrate 1 and not HF functional element 2, which both Appellant and the
Examiner acknowledge is a chip. See App. Br. 6; Ans. 9. But the Examiner
finds that Kanno’s chip 2 would also have a ground via of its own for chip
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Application 14/170,248
circuit grounding (Ans. 9)—a finding that has not been squarely addressed,
let alone persuasively rebutted on this record. See App. Br. 3-6; Reply Br.
1-2. Nor has Appellant squarely addressed—let alone persuasively
rebutted—the Examiner’s finding that Okabe grounds circuit components
with respective ground vias that lead to a common ground in Figure 2. See
Ans. 9.
Given these undisputed findings, the weight of the evidence on this
record favors the Examiner’s position at least to the extent that providing a
via that grounds the capacitor in Nishimura’s chip device would have been
at least an obvious variation to those of ordinary skill in the art, namely
electrical engineers with several years of related industry experience.5 That
Okabe’s Figure 2 and paragraph 56 discloses grounding, among other
components, capacitors 22a, 22b with respective vias to a common ground
plane 480 only further bolsters the Examiner’s position in this regard.
Nor do we see error in the Examiner’s reliance on Kanno for teaching
providing a conductive wire 5 to function as an inductor, and that grounding
this inductor (along with the capacitor) would have been obvious in light of
Kemmochi’s Figure 3 that shows grounding both inductors and capacitors in
filter circuit 30. See Ans. 4-5, 8. That Kanno accounts specifically for the
inductance of wire 5 in Figures 7A and 7B and paragraphs 112 and 113 only
further bolsters the notion that using a wire as an inductor in a HF module is
5 Cf. In reMouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012) (“The Board
properly found that an electrical engineer with several years of related
industry experience would indeed have recognized that Falk’s arithmetic
processor could have been combined with Das’s wired crossbar array to
predictably yield Mouttet’s claimed computing device.”) (emphasis added).
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Application 14/170,248
known in the art, and that grounding this inductor as well as a capacitor in a
filter circuit would have been obvious in view of Kemmochi’s Figure 3.
Doing so using an integrated common ground electrode in light of Okabe as
the Examiner proposes (Ans. 5, 9) uses prior art elements predictably
according to their established functions—an obvious improvement. See KSR
Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). Appellant’s arguments
regarding the cited references’ individual shortcomings (App. Br. 5-6; Reply
Br. 1-2) do not show nonobviousness where, as here, the rejection is based
on the cited references’ collective teachings. See In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986).
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1.
Claim 6
We also sustain the Examiner’s rejection of claim 6 reciting, in
pertinent part, that the first circuit is a band pass filter connected to an
antenna. It is undisputed that Nishimura’s band pass filter 602 is connected
indirectly to antennas 611 in Figure 6. See App. Br. 6 (acknowledging this
indirect coupling). Despite Appellant’s arguments to the contrary (App. Br.
6-7), nothing in the claim requires connecting the recited band pass filter to
the antenna directly as the Examiner indicates; the claim also encompasses
indirect connections as well, namely those with intervening components.
See Ans. 10.
Indeed, this distinction between direct and indirect electrical
connections was addressed by the Federal Circuit, which found no error in
construing the recited term “electrically coupled” as “arranged so that
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Application 14/170,248
electrical signals may be passed either directly, or indirectly via intervening
circuitry, from one component to another.” Mems Tech. Berhad v. Int’l
Trade Comm’n, No. 2010-1018, 2011 WL 2214091 (Fed. Cir. 2011)
(unpublished), at *6-9. Notably, the court declined to limit the recited
electrical coupling to direct electrical coupling in view of the term’s plain
meaning. Id. at *7-9.
Although Appellant’s Figures 1A and IB show connecting a band
pass filter to an antenna directly as Appellant indicates (App. Br. 6), we
decline to import that embodiment into the claim. See Phillips v. A WH
Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (enbanc) (“[Although the
specification often describes very specific embodiments of the invention, we
have repeatedly warned against confining the claims to those embodiments. .
. . [CJlaims may embrace different subject matter than is illustrated in the
specific embodiments in the specification.”) (citations and internal quotation
marks omitted). To the extent that Appellant contends that the recited band
pass filter must necessarily be connected directly to an antenna with no
intervening components, there is no persuasive evidence on this record to
substantiate such a contention. Although a direct connection is shown in the
embodiment of Appellant’s Figures 1A and IB, we nevertheless find nothing
on this record precluding an indirect connection as well—an interpretation
that is not only reasonable on this record, but is also consistent with Berhad
as noted above.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 6.
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CONCLUSION
The Examiner did not err in rejecting claims 1 and 6 under § 103.
DECISION
We affirm the Examiner’s decision to reject claims 1 and 6.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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