2021000612 (P.T.A.B. Dec. 6, 2021)

Infineon Technologies AG

Patent Trials and Appeals BoardDec 6, 2021

2021000612 (P.T.A.B. Dec. 6, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/094,316 04/08/2016 Robert Illing INF 2015 P 51740 US 4355 48154 7590 12/06/2021 SLATER MATSIL, LLP/INFINEON 17950 PRESTON ROAD SUITE 1000 DALLAS, TX 75252 EXAMINER THOMAS, LUCY M ART UNIT PAPER NUMBER 2836 NOTIFICATION DATE DELIVERY MODE 12/06/2021 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): docketing@slatermatsil.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROBERT ILLING, CHRISTIAN DJELASSI, MARKUS LADURNER, DAVID JANSSON, MARIO TRIPOLT, BERNHARD MARINELLI, and ALEXANDER MAYER ____________ Appeal 2021-000612 Application 15/094,316 Technology Center 2800 ____________ Before JEFFREY T. SMITH, JEFFREY R. SNAY, and LILAN REN, Administrative Patent Judges. SNAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–6, 8–18, and 20–22.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Infineon Technologies AG as the real party in interest. Appeal Br. 2. 2 The Examiner states claims 7 and 19 would be allowable but for their dependence from a rejected claim. Non-Final Act. 7. Appeal 2021-000612 Application 15/094,316 2 CLAIMED SUBJECT MATTER The invention relates to electronic switching and protection. Spec. ¶ 1. Claim 1 reads as follows: 1. An electronic circuit, comprising: an electronic switch comprising a load path; and a control circuit configured to drive the electronic switch, wherein the control circuit is configured to operate in one of at least two operation modes, wherein the at least two operation modes comprise a first operation mode and a second operation mode, wherein the control circuit, in the first operation mode, is configured to perform a set of basic functions and at least one additional function, the set of basic functions comprising monitoring a load current and switching off the electronic switch when the load current reaches a predefined overcurrent threshold, wherein the control circuit, in the second operation mode, is configured to perform the set of basic functions and not the at least one additional function, wherein the at least one additional function comprises generating a first protection signal based on a current-time- characteristic of a load current of the electronic switch and driving the electronic switch based on the first protection signal, and wherein the control circuit is configured to operate in the first operation mode when the monitored load current exceeds a first threshold, and is configured to operate in the second operation mode when the monitored current does not exceed the first threshold. Appeal Br. 19 (Claims Appendix). Claim 13 recites a method comprising operating a control circuit to drive an electronic switch in at least two operation modes similar to the operation modes recited in claim 1. Each remaining claim on appeal depends from claim 1 or 13. Appeal 2021-000612 Application 15/094,316 3 REJECTION Claims 1–6, 8–18, and 20–22 stand rejected under 35 U.S.C. § 102(a)(1) as anticipated by Baba.3 OPINION The Examiner has the initial burden of establishing a prima facie case of anticipation by pointing out where all of the claim limitations appear in a single reference. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986). Claim 1 recites, inter alia, a control circuit configured to operate in a first operation mode when a monitored load current exceeds a first threshold, and to operate in a second operation mode when the monitored load current does not exceed the first threshold. In both the first and second operating modes, the recited control circuit performs a set of basic functions including turning off an electronic switch when a load current reaches a predefined overcurrent threshold. Claim 1. In only the second operating mode, the recited control circuit additionally drives the electronic switch based on a current-time-characteristic of a monitored load current. Id. Claim 13 includes these same recitations. The Examiner points to Figures 3 and 5 of Baba to support the finding that Baba describes a control circuit which operates in both the first and second operation modes recited in each of claims 1 and 13. Non-Final Act. 3. Particularly, with reference to Baba’s Figure 5, the Examiner finds Baba’s steps SP5 and SP9–14 correspond to the recited first operation mode 3 US 5,894,394, issued April 13, 1999. Appeal 2021-000612 Application 15/094,316 4 whereas steps SP4 and SP6–8 correspond to the recited second operation mode. Non-Final Act. 4. Appellant argues Baba’s steps SP4 and SP6–8 do not include a turning off a switch when a load current reaches a predefined overcurrent threshold and, for that reason, cannot teach the second operation mode recited in the claims. Appeal Br. 12 (“None of these steps are directed to ‘switching off the electronic switch’.”). We reproduce Baba’s Figure 5 below. Appeal 2021-000612 Application 15/094,316 5 Figure 5 is a flow chart of a switching control process. At step SP4, a CPU determines whether a voltage Vo exceeds an offset voltage. Baba Fig. 5, Spec. 15:56–58. If not, the control process proceeds to steps SP6 to determine whether the voltage Vo is substantially zero. Id. Fig. 5, Spec. 16:60–64. When Vo is not substantially zero, the control process proceeds to and ends at step SP7, at which a display is caused to display a load has opened. Id. Fig. 5, Spec. 16:3–5. When Vo is substantially zero, the control process proceeds to and ends at step SP8, at which a display is caused to display that the voltage is excessively high. Id. Fig. 5, Spec. 16:5–14. In either instance, Baba describes the above-noted control process steps SP4 and SP6–8 as directing operation of a display, not a switch. In light of the foregoing, we are persuaded the Examiner erred in finding Baba’s control process steps SP4 and SP6–8 meet the second operation mode functionality recited in the independent claims. Particularly, the Examiner has not identified description in Baba that shows any of steps SP4 and SP6–8 including turning off an electronic switch, whereas the recited second operation mode includes turning off a switch.4 The Examiner’s rejection is not sustained. 4 The Examiner states in the Answer that the closing of a switch can be inferred from Baba’s description because Figure 5 shows steps SP7 and SP8 each leading to “END.” Ans. 7. The Examiner does not identify adequate description in Baba to support such an inference, nor does the Examiner provide an adequate explanation as to why the prior art components are capable of the recited operations. Appeal 2021-000612 Application 15/094,316 6 CONCLUSION The Examiner’s decision rejecting claims 1–6, 8–18, and 20–22 is reversed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–6, 8–18, 20–22 102(a)(1) Baba 1–6, 8–18, 20–22 REVERSED