Ex parte TSAY et al.

Board of Patent Appeals and Interferences

Nov 15, 1999

08251053 (B.P.A.I. Nov. 15, 1999)

Application for patent filed May 31, 1994. 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journal and (2) is not binding precedent of the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. 33
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte CHING-YUH TSAY and HENRY TIN-HANG YUNG
____________
Appeal No. 1996-3591
Application No. 08/251,0531
____________
HEARD: November 2, 1999
____________
Before HAIRSTON, RUGGIERO and HECKER, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1-15, all of the claims pending in the present
application. Amendments after final rejection filed on July
31, 1995 and April 29, 1996 were entered by the Examiner. An
Appeal No. 1996-3591
Application No. 08/251,053
2
amendment after final rejection filed February 16, 1997 was
denied entry by the Examiner.
The disclosed invention relates to a multiplier circuit
which includes feedback circuitry which stabilizes the
multiplier circuit. More particularly, Appellants indicate at
pages 6-9 of the specification that this feedback circuitry
operates such that the feedback voltage tends to equalize a
reference voltage and further that the feedback circuit is
free from capacitance which would unstabilize the feedback
circuit. A voltage divider is coupled to the feedback circuit
to reduce the multiplied voltage as illustrated in Figure 2 of
the drawings.
Claim 1 is illustrative of the invention and reads as
follows:
1. A memory device having a multiplier circuit,
comprising:
a reference generator circuit for producing a reference
voltage;
said multiplier circuit coupled to said reference
generator circuit for increasing a level of the reference
voltage to a multiplied voltage wherein, said multiplier
circuit has a feedback circuit connected to said reference
generator circuit to stabilize the multiplier circuit such
that a feedback voltage of said feedback circuit substantially
equals said reference voltage,
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Application No. 08/251,053
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said feedback circuit being free from capacitance to
unstabilize said feedback circuit of said multiplier circuit;
and
a voltage divider coupled to the feedback circuit to
reduce said multiplied voltage of said multiplier circuit.
Appeal No. 1996-3591
Application No. 08/251,053
A correct copy of appealed claims 1 and 8 appears in the2
Supplemental Examiner’s Answer dated May 12, 1999.
4
The Examiner relies on the following prior art:
Masaki 4,986,385 Jan. 22,
1991
Iyengar 5,063,304 Nov. 05,
1991
Claims 1-15 stand finally rejected under 35 U.S.C. § 103
as being unpatentable over Iyengar in view of Masaki. 2
Claims 8-14 further stand finally rejected under 35
U.S.C. § 112, second paragraph, for failing to particularly
point out and distinctly claim the invention. We note that,
in an advisory office action dated August 18, 1995, the
Examiner had indicated that Appellants’ amendment after final
rejection filed July 31, 1995 had overcome the 35 U.S.C. §
112, second paragraph, rejection of claims 1-7 and 15 made in
the final rejection. In the Examiner’s Answer dated February
23, 1996, however, the Examiner reasserted the 35 U.S.C. §
112, second paragraph, rejection of claims 1-7 made in the
final rejection. Appellants filed a further amendment after
final rejection on April 29, 1996 which the Examiner entered
and indicated, in a supplemental Examiner’s Answer dated May
Appeal No. 1996-3591
Application No. 08/251,053
Appellants’ representative at oral hearing on November3
2, 1999 acknowledged an apparent inadvertent error at line 8
of claim 1 which presently recites “... to unstabilize...”
instead of the intended “...to stabilize...” Appellants’
representative agreed to correct such error by amendment at an
appropriate later time.
The Appeal Brief was filed December 1, 1995. Reply4
Briefs were filed by Appellants on April 29, 1996 and Oct. 18,
1996 (Supplemental) and entered by the Examiner as indicated
in the Supplemental Examiner’s Answers dated May 24, 1996 and
December 11, 1996. The Reply Briefs filed on July 29, 1996
and February 18, 1997 (Supplemental) were considered by the
Examiner as not being limited to new points of argument or to
new grounds of rejection and were not entered. Accordingly,
the arguments in such Reply Briefs have not been considered in
this appeal.
5
24, 1996, that the response overcame the 35 U.S.C. § 112,
second paragraph, rejection of claims 1-7. Therefore, the
rejection of claims 8-14 under the second paragraph of 35
U.S.C. § 112 remains an issue to be decided in this appeal.3
Rather than reiterate the arguments of Appellants and the
Examiner, reference is made to the Briefs and Answers for the4
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the Examiner, the arguments
in support of the rejections and the evidence of obviousness
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Application No. 08/251,053
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relied upon by the Examiner as support for the rejections.
We have, likewise, reviewed and taken into consideration, in
reaching our decision, Appellant’s arguments set forth in the
Briefs along with the Examiner’s rationale in support of the
rejections and arguments in rebuttal set forth in the
Examiner’s Answers.
It is our view, after consideration of the record before
us, that claims 8-14 particularly point out the invention in a
manner which complies with 35 U.S.C. § 112, second paragraph.
We are also of the view that the evidence 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 set forth in claims 1-7 and 15. We reach the
opposite conclusion with respect to claims 8-14. Accordingly,
we affirm-in-part.
We consider first the rejection of claims 8-14 as being
indefinite under the second paragraph of 35 U.S.C. § 112. The
Examiner’s basis for this rejection stems from the alleged
lack of clarity in the use of the term “band” in the phrase “.
. . voltage range band of said reference voltage . . .” at
line 4 of independent claim 8.
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The general rule is that a claim must set out and
circumscribe a particular area with a reasonable degree of
precision and particularity when read in light of the
disclosure as it would be by the artisan. In re Moore, 439
F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971). Acceptability
of the claim language depends on whether one of ordinary skill
in the art would understand what is claimed in light of the
specification. Seattle Box Co. v. Industrial Crating &
Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 574 (Fed. Cir.
1984).
After reviewing the arguments of record, we are in
agreement with Appellant that no ambiguity or lack of clarity
exists in the claim language. While the term “band” is
perhaps superfluous when used in conjunction with the term
“range”, the inclusion of same does not alter our conclusion
that the claim sets forth the limitation on the reference
voltage with the required specificity. It is our view that
the skilled artisan, having considered the specification in
its entirety, would have no difficulty ascertaining the scope
of the invention recited in independent claim 8. Therefore,
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the rejection of claim 8, and claims 9-14 dependent thereon,
under the second paragraph of
35 U.S.C. § 112 is not sustained.
We now consider the 35 U.S.C. § 103 rejection of claims
1-15 as unpatentable over Iyengar and Masaki. 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 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
Appeal No. 1996-3591
Application No. 08/251,053
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(Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986); ACS
Hospital Systems, Inc. v. Montefiore Hospital, 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).
As the basis for the obviousness rejection, the Examiner
has initially relied on Iyengar for teaching the claimed
limitations directed to a multiplier with a stabilizing
feedback circuit. In recognizing Iyengar’s apparent failure
to disclose a voltage divider coupled to the feedback circuit,
the Examiner turns to Masaki which teaches a monitoring
circuit having a voltage divider which accepts a reference
voltage as an input. The Examiner reasons (Answer, page 5)
that, since Masaki places no restrictions on the origin of the
reference voltage, one of ordinary skill would have found it
obvious to use the output of Iyengar’s multiplier circuit as
the input reference voltage to Masaki’s voltage divider. The
resulting combination, the Examiner concludes, would then meet
the claimed requirement
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of “. . . a voltage divider coupled to the feedback
circuit . . .”.
In response, Appellants argue a lack of suggestion or
motivation in the references for combining or modifying the
teachings to establish a prima facie case of obviousness.
Appellants assert at pages 6 and 7 of the Brief:
The claimed invention cannot be used as a
template to piece together the teachings of
the prior art. In Re Fritch [sic], 23 USPQ 2d 1780
(CAFC 1983). Therefore, the Examiner has found
a voltage divider circuit from the prior art
merely piecing together the alleged teachings
of this reference with an alleged teaching from
the prior art without finding the desirability
of such a modification from the prior art.
After careful review of the Iyengar and Masaki references
in light of the arguments of record, we are in agreement with
Appellants’ stated position in the Brief. Even if one could
utilize the multiplier circuit output voltage of Iyengar as
the reference input to the voltage divider of Masaki, as
proposed by the Examiner, the question arises as to why would
the skilled artisan do so? Where is the suggestion for this
combination other than Appellants’ own disclosure? A finding
of obviousness, within the meaning of 35 U.S.C. § 103 requires
something more than that one “could” modify the prior art to
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Application No. 08/251,053
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arrive at the claimed subject matter. We can find no
motivation for the skilled artisan to apply Iyengar’s output
voltage to the reference input of Masaki’s voltage divider.
The only basis for applying Iyengar’s teachings to Masaki
comes from an improper attempt to reconstruct Appellants’
invention in hindsight. Accordingly, we cannot sustain the
Examiner’s obviousness rejection of independent claims 1 and
15, each of which requires a voltage divider coupled to a
stabilizing feedback circuit of a multiplier. Since all of
the limitations of independent claim 1 are not suggested by
the prior art, we also can not sustain the Examiner’s
rejection of appealed claims 2-7 which depend therefrom.
Turning now to a consideration of independent claim 8, we
note that, while we found Appellants’ arguments to be
persuasive with respect to the obviousness rejection of claims
1-7 and 15, we reach the opposite conclusion with respect to
claims 8-14. Contrary to the recitations in independent
claims 1 and 15 which require a voltage divider “. . . coupled
to the feedback circuit . . .”, the recitation in claim 8
places no limitation on the location of the voltage divider
within the multiplier circuit. Initially, in view of the
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language of Appellants’ claim 8, we find Masaki’s teaching of
a voltage divider to be cumulative to that of Iyengar which
clearly illustrates a voltage divider 118, 120 in the
multiplier circuit of Figure 7. Further, after considering
the Examiner’s analysis (Answer, page 5) of the limitations of
Appellants’ claim 8, it is our view that all of the claimed
elements exist in the multiplier circuit illustrated in Figure
7 of Iyengar. The claimed comparator is illustrated at 94 of
Iyengar’s Figure 7 and is shown coupled to a stabilizing
feedback circuit with the voltage at node 108 equaling the
voltage at line MVA (Iyengar, col. 17, lines 48-53). The
voltage divider 118, 120 of Iyengar in turn operates to reduce
the multiplied voltage dependent on the values of resistors
118 and 120 as described at column 16, lines 38-42. Further,
we agree with the Examiner’s analysis (Answer, page 6) that
Iyengar’s P-channel transistors 110 and 112 and voltage
divider resistors 118 and 120 meet all of the requirements of
dependent claims 9-14. Accordingly, all of the elements of
claims 8-14 have been shown to be fully disclosed by Iyengar.
A disclosure that anticipates under 35 U.S.C. § 102 also
renders the claim unpatentable under 35 U.S.C. § 103, for
Appeal No. 1996-3591
Application No. 08/251,053
The Board may rely on one reference alone in an5
obviousness rationale without designating it as a new ground
of rejection. In re Bush, 296 F.2d 491, 496, 131 USPQ 263,
266-67 (CCPA 1961); In re Boyer, 363 F.2d 455, 458, n.2, 150
USPQ 441, 444, n.2 (CCPA 1966).
13
"anticipation is the epitome of obviousness." Jones v. Hardy,
727 F.2d 1524, 1529, 220 USPQ 1021, 1025 (Fed. Cir. 1984).
See also In re Fracalossi, 681 F.2d 792, 794, 215 USPQ 569,
571 (CCPA 1982); In re Pearson, 494 F.2d 1399, 1402, 181 USPQ
641, 644 (CCPA 1974). Thus, we sustain the examiner's
rejection of appealed claims 8-14 under 35 U.S.C.
§ 103.5
In summary, we have not sustained the 35 U.S.C. § 112,
second paragraph, rejection of claims 8-14. In addition, we
have not sustained the 35 U.S.C. § 103 rejection of claims 1-7
and 15, but have sustained the 35 U.S.C. § 103 rejection of
claims 8-14. Therefore, the Examiner’s decision rejecting
claims 1-15 is affirmed-in-part.
Appeal No. 1996-3591
Application No. 08/251,053
14
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
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART N. HECKER )
Administrative Patent Judge )
jrg
Appeal No. 1996-3591
Application No. 08/251,053
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W. Daniel Swayze Jr.
Texas Instruments Incorporated
P.O. Box 655474 MS 219
Dallas, TX 75265