Ex Parte Vitunic et alDownload PDFPatent Trial and Appeal BoardMar 10, 201411091467 (P.T.A.B. Mar. 10, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MARK ROBERT VITUNIC and EDWARD LLOYD HENDERSON ____________________ Appeal 2011-011809 Application 11/091,467 Technology Center 2800 ____________________ Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-011809 Application 11/091,467 2 STATEMENT OF THE CASE Introduction Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-5 and 10-14. Claims 6-9, 15, and 16 have been objected to (Final Rej. 9-10), and claims 17-20 have been allowed (Final Rej. 10). We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Exemplary Claim Exemplary independent claim 1 under appeal reads as follows: 1. Circuitry for producing an output current, comprising: a current source responsive to an input voltage to produce the output current at a desired level, and an offset correction circuit coupled to the current source for correcting an offset voltage applied to the current source, to prevent the output current from deviating from the desired level. Examiner’s Rejections (1) The Examiner rejected claim 1 as being anticipated under 35 U.S.C. § 102(e) by Telecco (US 7,180,276 B2; Feb. 20, 2007; filed Apr. 12, 2006). Ans. 3-5. (2) The Examiner rejected claims 2 and 3 as being unpatentable under 35 U.S.C. § 103(a) over Telecco and Huijsing (US 6,734,723 B2; May 11, 2004). Ans. 5-6. (3) The Examiner rejected claim 4 as being unpatentable under 35 U.S.C. § 103(a) over Telecco and Radomsky (US 6,701,094 B1; Mar. 2, 2004). Ans. 6-7. Appeal 2011-011809 Application 11/091,467 3 (4) The Examiner rejected claim 5 as being unpatentable under 35 U.S.C. § 103(a) over Telecco and Donnelly (US RE37,452 E; Nov. 20, 2001). Ans. 7. (5) The Examiner rejected claims 10 and 13 as being unpatentable under 35 U.S.C. § 103(a) over Telecco and Radomsky. Ans. 8-9. (6) The Examiner rejected claims 11 and 12 as being unpatentable under 35 U.S.C. § 103(a) over Telecco, Radomsky, and Huijsing. Ans. 9- 10. (7) The Examiner rejected claim 14 as being unpatentable under 35 U.S.C. § 103(a) over Telecco, Radomsky, and Donnelly. Ans. 11. Principal Issue on Appeal Did the Examiner err in rejecting claims 1-5 and 10-14 as being anticipated or obvious because Telecco fails to disclose the specific arrangement for the circuitry for producing an output current, including (i) “a current source responsive to an input voltage,” and (ii) “an offset correction circuit coupled to the current source for correcting an offset voltage applied to the current source,” as recited in independent claim 1, and similarly recited in remaining independent claim 10? PRINCIPLES OF LAW The way in which the elements are arranged or combined in the claim must itself be disclosed, either expressly or inherently, in an anticipatory reference. “Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983) (emphasis added) (citation omitted). The requirement that the prior art elements Appeal 2011-011809 Application 11/091,467 4 themselves be “arranged as in the claim” means that claims cannot be “treated . . . as mere catalogs of separate parts, in disregard of the part-to- part relationships set forth in the claims and that give the claims their meaning.” Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1459 (Fed. Cir. 1984). [U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (emphasis added). ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ contentions in the Appeal Brief (App. Br. 5-16) and the Reply Brief (Reply Br. 1-19) that the Examiner has erred, and the Examiner’s response to Appellants’ arguments (Ans. 12-14). We concur with Appellants’ conclusion the Examiner erred in finding that Telecco, and thus the combinations of Telecco with the other applied references, teaches or suggests “an offset correction circuit coupled to the current source for correcting an offset voltage applied to the current source,” as recited in independent claim 1, and similarly recited in remaining independent claim 10. In view of the requirement that an anticipatory reference discloses all of the claimed limitations arranged in the same way as recited in the claim (discussed supra), we find that Telecco fails to disclose all of the recited Appeal 2011-011809 Application 11/091,467 5 features of “a current source responsive to an input voltage,” and (ii) “an offset correction circuit coupled to the current source for correcting an offset voltage applied to the current source,” as recited in independent claim 1, and similarly recited in remaining independent claim 10. Telecco’s voltage regulator circuit shown in Figure 1 and described in the Abstract and column 3 is not arranged or combined in the same way as set forth in independent claims 1 and 10; thus, Telecco does not anticipate claims 1 and 10. Lindemann, 730 F.2d at 1459; Net MoneyIN, 545 F.3d at 1371. Specifically, we note that the Examiner’s determination that the voltage difference between input terminals 15 and 41 in Telecco’s Figure 1 constitute the offset voltage which maintains the desired output voltage at output terminal 19 (see Ans. 12-13) is in direct conflict with the Examiner’s determination that the voltage on line 39 is an offset voltage and reference generator 13 is an output voltage, while output terminal 19 is an output current (see Ans. 4-5). Telecco refers to element 19 as an output voltage (Abs.; col. 3; Fig. 1), to element 13 as a band gap reference generator, to element 15 as a stable output voltage, and to element 41 as an input terminal (see col. 3). In contrast, Appellants’ claims 1 and 10 pertain to controlling an output current. Ultimately, “[t]he construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention will be, in the end, the correct construction.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). Where there is an equal choice between a broader and a narrower meaning of a claim, and there is an enabling disclosure that indicates that the applicant is at least entitled to a Appeal 2011-011809 Application 11/091,467 6 claim having the narrower meaning, we consider the notice function of the claim to be best served by adopting the narrower meaning. Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1581 (Fed. Cir. 1996). Thus, even if the two proposed constructions before us presented an “equal choice”—and they do not—the narrower construction would be more appropriate. In the instant case of Appellants’ claim 1, when the claim is read as a whole and in light of the Specification (see, e.g., Spec. ¶ [0026]), the claim is limited to a transconductance amplifier by the nature of the arrangement of the elements in the claim (i.e., how the offset correction circuit for correcting an offset voltage, current source, input voltage, and output current are interrelated to each other). Namely, Appellants’ transconductance amplifier 12 (Fig. 1) is described as producing a current at its output in response to a difference between voltages at its inputs. Thus, “a procedure for autozeroing a transconductance amplifier differs from a procedure for autozeroing a voltage amplifier because zero net output current rather than zero output voltage has to be achieved during autozeroing” (Spec. ¶ [0026]). In this light, Telecco’s comparator 17 (or voltage amplifier) that operates to control an output voltage, and not a current as would a transconductance amplifier such as Appellants’ amplifier 12, cannot be found to anticipate the circuits recited in Appellants’ independent claims 1 and/or 10 and/or be arranged in the same manner for the same effect (regulating output current). In other words, although claim 1 is not on its face or by its specific language limited to a “transconductance amplifier,” and thus could be construed to include either a voltage amplifier or a transconductance amplifier (for purposes of autozero correction), the correct Appeal 2011-011809 Application 11/091,467 7 construction of claim 1 is the narrower construction (e.g., an offset correction circuit that regulates an output current such as the transconductance amplifier 12 shown in Appellants’ Figure 1 and described in paragraph [0026] of Appellants’ Specification). Accordingly, we find Appellants’ contentions (App. Br. 5-10; Reply Br. 1-7) that Telecco fails to disclose the circuitry for producing an output current including an offset correction circuit as recited in claim 1 to be persuasive. Because we agree with Appellants’ arguments that Telecco, applied by the Examiner as an anticipatory reference, fails to disclose an offset correction circuit as arranged and recited in claim 1, we do not sustain the Examiner’s anticipation rejection of independent claim 1 based on Telecco. Telecco, taken individually or as combined by the Examiner with the various other references applied under § 103(a), fails to disclose an offset correction circuit as set forth in claims 2-5 and 10-14. Appellants’ arguments (App. Br. 10-16; Reply Br. 7-18) that the combined teachings of Telecco and the other applied references do not teach or suggest the subject matter of claims 2-5 and 10-14 are therefore persuasive. Accordingly, we do not sustain the Examiner’s obviousness rejections of claims 2-5 and 10-14. CONCLUSIONS (1) Telecco fails to disclose the specific arrangement for an offset correction circuit, as recited in independent claim 1, and as similarly recited in claim 10. The other applied references fail to cure the noted deficiencies with regard to Telecco for claims 1 and 10. Appeal 2011-011809 Application 11/091,467 8 (2) The Examiner erred in rejecting claim 1 under 35 U.S.C. § 102(e) as being anticipated by Telecco, and as a result also erred in rejecting claims 2-5 and 10-14 under 35 U.S.C. § 103(a). DECISION The Examiner’s rejections of claims 1-5 and 10-14 are reversed. REVERSED bab Copy with citationCopy as parenthetical citation