Ex Parte Tramoni

Patent Trial and Appeal Board

Sep 29, 2016

13663319 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/663,319 10/29/2012
38106 7590 10/03/2016
Seed IP Law Group LLP/ST (EP ORIGINATING)
701 FIFTH AVENUE, SUITE 5400
SEATTLE, WA 98104-7092
Alexandre Tramoni
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
859063.658 4761
EXAMINER
HESS, DANIEL A
ART UNIT PAPER NUMBER
2876
NOTIFICATION DATE DELIVERY MODE
10/03/2016 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
following e-mail address( es):
Patentlnfo@SeedIP.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXANDRE TRAMONI
Appeal2015-004376
Application 13/663,319
Technology Center 2800
Before KAREN M. HASTINGS, DONNA M. PRAISS, and
JEFFREY R. SNAY, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1-23 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Keen et al. (US 2008/0194200 Al, published August 14,
2008) ("Keen") and Charrat et al. (US 2007 /0045418 Al, published March 1,
2007) ("Charrat"). We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
WE AFFIRM.
1 The real party in interest is STMicroelectronics (Rousset) SAS. (App. Br.
2).
Appeal2015-004376
Application 13/663,319
Claim 1 is illustrative of the claimed subject matter:
1. An antenna circuit coupleable to a device of
transmission/reception by inductive coupling, comprising:
a first inductive element in parallel with a capacitive
element;
a first dual purpose inductance coupled between a first node
of the parallel association and a first terminal of a switch; and
a second dual purpose inductance coupled between a
second node of the parallel association and a second terminal of
the switch, the first and second dual purpose inductances
configurable by the switch to cooperate as a second inductive
element in the parallel association.
App. Br. 23 (Claims Appendix).
Appellant's arguments focus on the limitations of claim 1 (App. Br.
17-21 ). We choose independent claim 1 as representative. Appellant relies
on the same arguments for each of independent claims 1, 9, 14, and 20, and
do not present separate arguments for dependent claims 2-8, 10-13, 15-19,
and 21-23 (e.g.; App. Br. 21). Therefore; claims 2-23 will stand together
with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
Upon consideration of the evidence on this appeal record and each of
Appellant's contentions, we find that the preponderance of evidence supports
the Examiner's conclusion that the subject matter of Appellant's claims is
unpatentable over the applied prior art. We sustain the Examiner's§ 103
rejection essentially for the reasons set out by the Examiner in the Answer,
including the Response to Argument section.
We add the following for emphasis.
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Application 13/663,319
Appellant's main arguments are that "[i]n the present application, the
prior art capacitive elements C 1 have been replaced with inductive elements
L'" (App. Br. 20), "the absence of such capacitors are an inventive feature
expressly recited in claim 1" (id.), "[t]he capacitors of Keen are not nodes"
(id. at 15), and "[ t ]he C 1 a and C 1 b capacitors of Charrat provide similar
signal modification functions as capacitors 75, 74 in Keen" (id. at 17).
Appellant also contends that the capacitors of Keen and Charrat "teach away
from the claims," specifically, the recitation of first and second nodes in
claim 1, and that modification of Keen or Charrat to eliminate their
capacitors would change the principle of operation of the prior art (App. Br.
20). See also Reply Br. generally.
Applicant's arguments are unpersuasive of error by the Examiner
because claim 1 does not preclude the presence of the prior art capacitors in
the claimed antenna circuit. The term "comprising" is a term of art that
means "'including but not limited to."' CIAS, Inc. v. Alliance Gaming Corp.,
504 F.3d 1356, 1360 (Fed. Cir. 2007). The use of the word "comprising" in
the preamble of claim 1 means that the antennae circuit may also include
additional capacitive elements. The fact that the Specification comparatively
describes the functional block diagram of Figure 2 as replacing two
capacitive elements depicted as C 1 in Figure 1 with two inductive elements
L' does not limit the plain language of the claims that are broader than the
disclosed embodiment. See Electro Med. Sys., S.A. v. Cooper Life Sci., Inc.,
34 F.3d 1048, 1054 (Fed. Cir. 1994).
Regarding Appellant's argument that Keen's capacitors 74, 75 and
Charrat' s capacitors C 1 a, C 1 b are not nodes as required by claim 1, we do
not see an appreciable difference between the dictionary definitions identified
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Appeal2015-004376
Application 13/663,319
by the Examiner and the Appellant for this term. According to the Examiner,
the term means "'[a] point of junction between two connectors. The location
where a line has a defined position. The point where signals leave one
system and enter another.'" Ans. 2. According to Appellant, the term means
"[ w ]ithin a circuit, a point of interconnection between two or more
components such as input and output terminals." Reply Br. 3. Appellant
does not direct us to any specific definition in their Specification for what
constitutes "node" as recited in claim 1. Reply Br. 3. As such, the Examiner
has reasonably determined that this claim term encompasses the capacitors of
Keen and Charrat because the identified capacitors have "a point of junction
between two connectors at each of the capacitor terminals," they "also define
a specific position of a line in a circuit," and they each "couple a transceiver
system with an antenna system" (Ans. 2). In re ICON Health and Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (if the specification does not
provide a definition for claim terms, the broadest reasonable interpretation
consistent with the specification is applied).
Appellant asserts that "[i]n view of [Appellant's definition of node],
the analysis provided in the Examiner's Answer that 'the capacitors including
the capacitor terminals and the position defined by the capacitors are nodes'
is insufficient to establish a prima facie case of obviousness." Reply Br. 4.
Because we fail to see an appreciable difference between the two proffered
definitions of node, we likewise find Appellant's argument insufficient for
failing to point out the significance of any difference. Appellant merely
identifies the Examiner's definition as being associated with broadband local
area networks while "[t]he claims at issue are more closely aligned with
electronic circuits than broadband local area networks," but concedes "[i]t is
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Appeal2015-004376
Application 13/663,319
not to say that the present claims could not apply to a circuit having
applicability in broadband networks or any other communication technology
for that matter." Id. at 3.
Because we agree with the Examiner that the capacitors of Keen and
Charrat are nodes as required by claim 1, we do not find persuasive
Appellant's argument that "both Charrat and Keen discourage the first and
second nodes recited in the independent claims." Reply Br. 7. "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). As
noted by the Examiner, Keen and Charrat cannot be said to discourage the
use of a first and second dual purpose inductor as claimed because both
disclose capacitors "which 'couple' first and second dual purpose
inductances in a parallel association with a first inductive element and a
capacitive element when a switch is closed" (Ans. 5).
Accordingly, we affirm the Examiner's rejection.
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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