Ex Parte Yamada

Board of Patent Appeals and Interferences

Aug 19, 2008

11166575 (B.P.A.I. Aug. 19, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SHIGEKAZU YAMADA
____________

Appeal 2008-1149
Application 11/166,575
Technology Center 2800
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Decided: August 19, 2008
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Before JOSEPH F. RUGGIERO, MAHSHID D. SAADAT,
and JOHN A. JEFFERY, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1-3 and 14-18. Claims 4-13 and 19-21
have been indicated as allowable. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
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STATEMENT OF THE CASE
Appellant’s invention relates to a voltage control circuit including first
and second switches for coupling capacitors with a given node for
maintaining a constant potential at the node (Spec. 2-5). An understanding
of the invention can be derived from a reading of independent claim 1,
which is reproduced as follows:
1. A voltage control circuit comprising:

capacitors;

first switches that are respectively provided to the capacitors
and selectively couple the capacitors with a given node; and

second switches that are respectively provided between the first
switches and the given node and selectively connect the first switches
to the given node.

The Examiner relies on the following prior art references:
Yamada US 6,166,950 Dec. 26, 2000
Endo US 6,172,576 B1 Jan. 9, 2001

Appellant’s Admitted Prior Art (APA), (Spec. 1-2; Fig. 1).

The rejections as presented by the Examiner are as follows:
Claims 1-3, 17, and 18 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Endo.
Claims 14 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over APA and Endo.
Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over APA, Endo, and Yamada.

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Rather than repeat the arguments here, we refer to the Briefs and
Answer for the respective details. Only those arguments actually made by
Appellant have been considered in this decision. Arguments which
Appellant did not make in the Briefs have not been considered and are
deemed waived. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUES
1. Under 35 U.S.C § 102(b), with respect to the appealed claims 1-3, 17,
and 18, does Endo anticipate the claimed subject matter by teaching
all of the claimed limitations?
2. Under 35 U.S.C § 103(a), with respect to the appealed claims 14-16,
would one of ordinarily skilled in the art have found it obvious to
modify APA with Endo or with Endo in combination with Yamada to
render the claimed invention unpatentable?

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 102, “a single prior art reference
that discloses, either expressly or inherently, each limitation of a claim
invalidates that claim by anticipation.” Perricone v. Medicis
Pharmaceutical Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005), citing
Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976
F.2d 1559, 1565 (Fed. Cir. 1992). Also See In re Paulsen, 30 F.3d 1475,
1478-79 (Fed. Cir. 1994). Anticipation of a “claim requires a finding that
the claim at issue ‘reads on’ a prior art reference.” Atlas Powder Co. v.
IRECO, Inc., 190 F.3d 1342, 1346 (Fed Cir. 1999) (“In other words, if
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granting patent protection on the disputed claim would allow the patentee to
exclude the public from practicing the prior art, then that claim is
anticipated, regardless of whether it also covers subject matter not in the
prior art.”) (internal citations omitted).

ANALYSIS
1. 35 U.S.C. § 102 Rejection
Appellant disagrees with the Examiner’s findings in Endo with
respect to characterizing the switches SX1 and SX2 (shown in Figure 9) as
the first and the second switches, respectively (App. Br. 9-10). Appellant
further argues that the Examiner has not shown how changing the position of
switches SX1 and SX2 affects the connection path between capacitor CX1
and the given node since the connection is maintained in the same manner
through switch SX2 towards the given node (App. Br. 12). Appellant
specifically argues that “[c]laim 1 is directed to connections” (emphasis is
original), and all the capacitors in Endo are indeed electrically connected to
each other and to all nodes (App. Br. 14; Reply Br. 4).
The Examiner asserts that the position of switch SX1 determines
whether a potential is applied across the capacitor CX1 or it is left floating
(Ans. 8). The Examiner further argues that switch SX1 couples the
capacitor CX1 to the given node when the switch is in the rightward position
while no electrical connection is present in the leftward position of the
switch (Ans. 8-9).
Based on our review of Endo, we agree with the Examiner’s
characterization of the switches SX1 and SX2 in Figure 9 of Endo as the
claimed first and second switches. Endo describes capacitors CX0-CXm in
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an array of capacitors such that each capacitor is adapted to be connected to
and disconnected from the circuit by using switches SX1-SXm (col. 19, l. 63
to col. 20, l. 7). Endo further discloses that the capacitors may not only be
connected in series, but also a parallel connection is possible (col. 20, ll. 11-
14). Therefore, the disclosed switches of Endo provide for selectively
coupling and connecting the capacitors to the given node.
Appellant’s arguments (App. Br. 14; Reply Br. 4) regarding the
meaning of the term “connections” do not persuade us of any difference
between the claimed “selectively couple” and “selectively connect” the
capacitors and switches to the given node since Appellant has not suggested
any specific distinction of the claimed term over how Endo connects and
disconnects these elements. We further observe that, as pointed out by the
Examiner (Ans. 9), the broadest reasonable meaning of the claimed terms
“couple” and “connect” do not include any specific requirements related to
the type of coupling or connection or its function. In other words, the claim
does not preclude selective connection to the given node through other
components such as additional capacitors. Whether the connection is
through mechanical or transistors-based switches, contrary to Appellant’s
position (App. Br. 14-15), Endo discloses switches that selectively couple
capacitors to a given node, both individually or through other capacitors.
Additionally, we disagree with Appellant’s position that all the
capacitors in Endo are electrically connected to all the nodes (App. Br. 14;
Reply Br. 4). We find that the switches shown in Figure 9 of Endo clearly
connect or disconnect their corresponding capacitors to the given node such
that the connected capacitor is included in the total capacitance in contrast
with a capacitor that is not connected. Although any of the switches SX2-
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SXm may add another capacitor to the circuit when any of these switches is
in the rightward closed position, each of the switches SX2-SXm,
nonetheless, is provided between the first switch SX1 and the given node
and is in the path extending from the switch SX1 to the given node, as
recited in claim 1 (See Figure 9 of Endo). As such, the first switch SX1 and
the given node are selectively connected through the second switch, e.g.,
SXm, since switch SXm provides two different connections to select from,
one through and the other around the capacitor CXm.
Appellant further asserts that the limitation of claim 17 related to
controlling of first switches is not taught by Endo since, as discussed above
with respect to claim 1, none of the switches has any effect on whether a
capacitor is connected to the given node (App. Br. 15). For the same reasons
we discussed above as to how claim 1 reads on the capacitor and switch
array of Endo and the fact that Endo discloses the control circuit 22 for
controlling the switches, we agree with the Examiner (Ans. 11) that Endo
also anticipates the subject matter of claim 17.
Therefore, under the facts we have here and the arguments presented
by the Examiner and Appellant, we find that Appellant has failed to show
that the Examiner has erred in rejecting the claims. Accordingly, the 35
U.S.C. § 102(b) rejection of claims 1 and 17, as well as claims 2, 3, and 18
dependent thereon, as anticipated by Endo is sustained.
2. 35 U.S.C. § 103 Rejection
With respect to the rejection of claims 14-16, Appellant argues
patentability of these claims by relying on the same arguments presented in
relation with claim 1. Therefore, for the reasons discussed above, we sustain
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the 35 U.S.C. § 103 rejection of claims 14 and 16 over APA and Endo and
of claim 15 over APA, Endo, and Yamada.

DECISION
The decision of the Examiner rejecting the claims 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)(1)(iv).

AFFIRMED

KIS

Paul J. Winters
307 Cypress Point Drive
Mountain View, CA 94043