Ex Parte Westerman

Board of Patent Appeals and Interferences

Sep 27, 2004

09735439 (B.P.A.I. Sep. 27, 2004)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte STEPHEN J. WESTERMAN
____________
Appeal No. 2003-2072
Application No. 09/735,439
____________
ON BRIEF
____________
Before KRASS, FLEMING, and GROSS, Administrative Patent Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 and 4. Claims 2, 3 and 5 have been allowed.
Invention
The invention relates to a transfer switch that is adapted
for use in network analyzers. In a network analyzer, a transfer
switch connects the test signal source to one port of the device
under test and terminates the remaining ports in a low-reflection
load. The ideal transfer switch has a low, repeatable loss in
Appeal No. 2003-2072
Application No. 09/735,439
2
the test signal path. In addition, the transfer switch must
provide a high degree of isolation in all of the terminated
paths. See page 1 of Appellant's specification. Figure 1 is a
schematic drawing of a two port transfer switch 10 according to
Appellant's invention. See page 2 of Appellant's specification.
As shown in Figure 1, switch 10 utilizes a routing switch 11 and
two port termination switches 19 and 29. Routing switch 11
receives test signal input and provides a first and second
output. Routing switch 11 is constructed from two coupled
dividers shown as 15 and 25. Each divider includes two switches
shown at 16 and 17 for divider 15 and 26 and 27 for divider 25.
The switches are coupled such that switches 16 and 26 are in
opposite states with respect to one another, and switches 17 and
27 are also in opposite states with respect to one another.
Thus, one of the outputs is connected to the input and the other
output is connected to ground. See page 3 of Appellant's
specification. Figure 1 further shows that each of the output
terminals of the routing switch 11 is connected to a port
terminal switch 19 and 29. Port terminal switches 19 and 29 each
include a common-base transistor 13 and 23 respectively. See
page 3 of Appellant's specification.
Appeal No. 2003-2072
Application No. 09/735,439
3
In operation, when switch 17 is closed and switch 16 is
open, output of routing switch 11 at node 18 is biased at a
negative potential and common-based transistor 13 in port
terminal switch 19 is in a conducting state. The input signal
hence, is routed to port 1. In this configuration, divider 25
has switch 26 closed and switch 27 open. Hence, the signal is
blocked by switch 27. In addition, the output of routing switch
11 at node 28 is shorted to ground, and hence, the common-base
transistor 23 in port terminal switch 29 is non-conducting, which
provides additional isolation. See page 3 of Appellant's
specification.
Claim 1 is representative of Appellant's invention and is
reproduced as follows:
1. A transfer switch having a test signal input and first and
second ports, said transfer switch comprising:
a first routing switch having a routing switch input for
receiving said test signal input and first and second outputs,
each output being connected to said routing switch input by a
first switching element and each output being connected to ground
by a second switching element; and
first and second port termination switches connected to said
first and second outputs, respectively, of said first routing
switch, each termination switch comprising a common-base
transistor.
Appeal No. 2003-2072
Application No. 09/735,439
1 On December 9, 2002, Appellant filed a second supplemental
brief in response to the reopening of prosecution. We will
simply refer to the second supplemental brief as simply the
brief. Appellant filed a reply brief on April 24, 2003. The
Examiner mailed out an Office communication on May 8, 2003,
stating that the reply brief has been entered into the record.
4
References
Hamano et al. (Hamano) 5,293,087 Mar. 8, 1994
Miyata JP 06-085641 Mar. 25, 1994
Rejection at Issue
Claims 1 and 4 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Miyata and Hamano.
Throughout our opinion, we will make reference to the
briefs1 and the answer for the respective details thereof.
OPINION
With full consideration being given to the subject matter on
appeal, the Examiner's rejection and arguments of Appellant and
the Examiner, for the reasons stated infra, we will sustain the
Examiner's rejection of claims 1 and 4 under 35 U.S.C. § 103.
At the outset, we note that Appellant states on page 3 of
the brief that claims can be considered as a single group.
Furthermore, we note that Appellant has argued the claims as a
single group in the brief and reply brief.
Appeal No. 2003-2072
Application No. 09/735,439
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37 CFR § 1.192(c)(7) (July 1, 2001) as amended at 62 Fed.
Reg. 53196 (October 10, 1997), which was controlling at the time
of Appellants filing the brief, states:
For each ground of rejection which [A]ppellants contest
and which applies to a group of two or more claims, the
Board shall select a single claims from the group and
shall decide the appeal as to the ground of rejection
on the basis of that claim alone unless a statement is
included that the claims of the group do not stand or
fall together and, in the argument under paragraph
(c)(8) of this section, Appellants explains why the
claims of the group are believed to be separately
patentable. Merely pointing out differences in what
the claims cover is not an argument as to why the
claims are separately patentable.
We will, thereby, consider Appellant's claims as standing or
falling together and we will treat claim 1 as a representative
claim of that group. See In re McDaniel, 293 F.3d 1379, 1383,
63 USPQ2d 1462, 1465 (Fed. Cir. 2002) ("If the brief fails to
meet either requirement [of 37 CFR § 1.192(c)(7)], the Board is
free to select a single claim from each group of claims subject
to a common ground of rejection as representative of all claims
in that group and to decide the appeal of that rejection based
solely on the selected representative claim.") See also, In re
Watts, 354 F.3d 1362, 1368, 69 USPQ2d 1453, 1457 (Fed. Cir.
2004).
Appeal No. 2003-2072
Application No. 09/735,439
6
In rejecting claims under 35 U.S.C. § 103, the Examiner
bears the initial burden of establishing a prima facie case of
obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443,
1444 (Fed. Cir. 1992). See also In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984). The Examiner can
satisfy this burden by showing that some objective teaching in
the prior art or knowledge generally available to one of ordinary
skill in the art suggests the claimed subject matter. In re
Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
Only if this initial burden is met does the burden of coming
forward with evidence or argument shift to the Appellants.
Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. See also Piasecki,
745 F.2d at 1472, 223 USPQ at 788.
An obviousness analysis commences with a review and
consideration of all the pertinent evidence and arguments. "In
reviewing the [E]xaminer's decision on appeal, the Board must
necessarily weigh all of the evidence and argument." Oetiker,
977 F.2d at 1445, 24 USPQ2d at 1444. "[T]he Board must not only
assure that the requisite findings are made, based on evidence of
record, but must also explain the reasoning by which the findings
are deemed to support the agency's conclusion." In re Lee,
Appeal No. 2003-2072
Application No. 09/735,439
7
277 F.3d 1338, 1344, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002). With
these principles in mind, we commence review of the pertinent
evidence and arguments of Appellant and Examiner.
Appellant argues that the Examiner has not pointed to any
teachings in Miyata or Hamano to configure a common-based
transistor to act as a switch. See page 3 of the brief and reply
brief.
The Examiner has shown that Miyata's Figure 1 shows a
transfer switch having a test signal input and first and second
ports, the transfer switch comprising a first routing switch
having a routing switch input for receiving said test signal
input and said first and second outputs, each output being
connected to the routing switch by a first switching element and
each output being connected to ground by a second switching
element as recited in Appellant's claim 1. See page 3 of the
Examiner's answer. The Examiner agrees that Miyata does not
teach first and second port termination switches connected to
said first and second outputs, respectively, of said first
routing switch, each termination switch comprising a common-base
transistor as recited in Appellant's claim 1. However, the
Examiner points to Hamano's Figure 10 which shows a low-pass
filter for filtering very high frequency. The Examiner points
Appeal No. 2003-2072
Application No. 09/735,439
8
out that Hamano's low-pass filter has a common-base transistor.
The Examiner proposes to modify Miyata's Figure 1 by providing
Hamano's low-pass filter to be connected to each output of
Miyata's first routing switch. The Examiner points out that in
this way the combination would provide first and second port
termination switches connected to the first and second outputs
respectively, of said first routing switch, each termination
switch comprising a common-base transistor as recited in
Appellant's claim 1.
The question before us is whether Hamano's first and second
low-pass filters used in the Examiner's proposed combination
would read on Appellant's claimed first and second port
termination switches. As pointed out by our reviewing court, we
must first determine the scope of the claim. "[T]he name of the
game is the claim." In re Hiniker Co., 150 F.3d 1362, 1369,
47 USPQ2d 1523, 1529 (Fed. Cir. 1998). "In examining a patent
claim, the PTO must apply the broadest reasonable meaning to the
claim language, taking into account any definitions presented in
the specification." In re Bass, 314 F.3d 575, 577, 65 USPQ2d
1156, 1158 (Fed. Cir. 2002) citing In re Yamamoto, 740 F.2d 1569,
1571, 222 USPQ 934, 936 (Fed. Cir. 1984). Words in a claim are
to be given their ordinary and accustomed meanings unless the
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Application No. 09/735,439
9
inventor chooses to be his own lexicographer in the
specification. In re Bass, 314 F.3d at 577, 65 USPQ2d at 1158,
citing Lantech, Inc. v. Keip Mach. Co., 32 F.3d 542, 547,
31 USPQ2d 1666, 1670 (Fed. Cir. 1994).
We note that Appellant has not argued that the term
"switches" as recited in claim 1 has a definition other than the
ordinary and accustomed meaning. Furthermore, we note that the
ordinary and accustomed meaning of switches does not preclude
functioning in the frequency domain as well as the time domain.
Furthermore, we note that a low-pass filter when viewed in the
frequency domain is a switch. Therefore, we find that the
Examiner's proposed combination of having a first and second
Hamano's low-pass filter connected to the first and second
outputs of the first routing switch reads on all the limitations
recited in Appellant's claim 1.
Even if the claim was rewritten to preclude this
interpretation, we further find that the Hamano's low-pass
filters would act as switches in the time domain as well.
Turning to Miyata's Figure 1, when transistor 6 is open (i.e.,
non-conducting) then transistor 10 is closed (i.e., conducting).
The result is that output terminal 2 is connected to ground 11
through conducting transistor 7. When Hamano's low-pass filter
Appeal No. 2003-2072
Application No. 09/735,439
10
is connected to terminal 2 under this condition, Hamano's common-
base transistor is connected to ground and is non-conducting,
hence, acting as a switch. Therefore, we find that the
combination proposed by the Examiner would provide a switching
function in the time domain as well.
Appellant further argues that the Examiner has not pointed
to any suggestion in Miyata that any form of output filtering is
needed. Appellant points out that Miyata teaches a microwave
switching circuit. Appellant argues that the proposed
combination of using Hamano's low-pass filter would block the
signals of interest. See page 4 of Appellant's brief.
When determining obviousness, "[t]he factual inquiry whether
to combine references must be thorough and searching." In re
Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433 (Fed. Cir. 2002),
citing McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1351-52,
60 USPQ2d 1001, 1008 (Fed. Cir. 2001). "It must be based on
objective evidence of record." Id. Our reviewing court further
states that "[w]hile this court indeed warns against employing
hindsight, its counsel is just that - a warning. That warning
does not provide a rule of law that an express, written
motivation to combine must appear in prior art references before
Appeal No. 2003-2072
Application No. 09/735,439
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a finding of obviousness. Stated differently, this court has
consistently stated that a court or examiner may find a
motivation to combine prior art references in the nature of the
problem to be solved." Ruiz v. A.B. Chance Co., 357 F.3d 1270,
1276, 69 USPQ2d 1686, 1690 (Fed. Cir. 2004). Also see Pro-Mold &
Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573,
37 USPQ2d 1626, 1630 (Fed. Cir. 1996); Display Techs. Inc. v.
Paul Flum Ideas, Inc., 282 F.3d 1340, 1346-47 (Fed. Cir. 2002);
In re Huang, 100 F.3d 135, 139, 40 USPQ2d 1685, 1689 (Fed. Cir.
1996).
The Examiner points out that it is notoriously well known in
the art to add a low-pass filter at the output of a circuit for
rejecting unwanted high frequency signals. Furthermore, the
Examiner points out that Hamano's low-pass filter would not
filter out all of the signals of interests provided by the Miyata
circuit. The Examiner points out that Hamano's Figure 10 shows
that the low-pass filter would allow microwaves from the range of
30Mz to 35 Ghz to pass through and only the very high frequency
signals would be blocked. See pages 5 and 6 of the answer.
Upon our review of Hamano, we agree with the Examiner's
findings that Hamano's low-pass filter, shown in Figure 10, would
Appeal No. 2003-2072
Application No. 09/735,439
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indeed allow passage of microwave signals in the frequency range
of 30Mz to 35 Ghz range. We note that this is taught in Hamano
Figure 14 which shows a graph of the frequency characteristics of
the low-pass filter.
We note that Miyata teaches a microwave switch. See page 1
of Miyata. We further find that Hamano teaches a filter circuit
that would be used in radio communications using high speed
signals of several gigabits per second, in other words in the
microwave range. See Hamano, column 1, lines 5-17. Hamano
further teaches that for microwave communication systems, there
is often time a need for a low-pass filter to suppress the high
frequency noise induced in the communication system. See column
1, lines 10-22. Therefore, we find that Hamano would have
suggested to those skilled in the art to use Hamano's low-pass
filter shown in Figure 10 in the Miyata microwave switch as
proposed by the Examiner in order to provide a signal free from
higher frequency noise.
In view of the foregoing, we have sustained the Examiner's
rejection of claims 1 and 4 under 35 U.S.C. § 103 as being
unpatentable in view of the Examiner's proposed combination of
Miyata and Hamano.
Appeal No. 2003-2072
Application No. 09/735,439
13
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
MRF/lbg
Appeal No. 2003-2072
Application No. 09/735,439
14
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