Murata Manufacturing Co., Ltd.

Patent Trials and Appeals Board

Aug 21, 2020

15480584 - (D) (P.T.A.B. Aug. 21, 2020)

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.
15/480,584 04/06/2017 Satoshi TANAKA MURATA-57129 1228
116 7590 08/21/2020
PEARNE & GORDON LLP
1801 EAST 9TH STREET
SUITE 1200
CLEVELAND, OH 44114-3108
EXAMINER
NGUYEN, LONG T
ART UNIT PAPER NUMBER
2842
NOTIFICATION DATE DELIVERY MODE
08/21/2020 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):
patdocket@pearne.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
Ex parte SATOSHI TANAKA, TETSUAKI ADACHI,
KAZUO WATANABE, MASAHITO NUMANAMI, and
YASUHISA YAMAMOTO
____________
Appeal 2019-004994
Application 15/480,584
Technology Center 2800
____________

Before KAREN M. HASTINGS, BRIAN D. RANGE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejections under 35 U.S.C. § 103 of claims 1, 2, and 17 as unpatentable over
Kryshtopin (US 9,490,753 B1, Nov. 8, 2016) with Sinitsky (US 8,704,605
B1, Apr. 22, 2014) and of claims 1, 2, 5, 6, 9, 10, 13, 14, and 17–20 as

1 We use the word “Appellant” to refer to the “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies Murata Manufacturing Company,
Ltd. as the real party in interest (Appeal Br. 2).

Appeal 2019-004994
Application 15/480,584

2
unpatentable over Ni (US 2015/0171797 A1, June 18, 2015), Okuma (US
7,839,217 B2, Nov. 23, 2010), and Sinitsky.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Claim 1 is representative of the subject matter claimed and is
reproduced below (emphasis added to highlight key disputed limitation):
1. A bias circuit that supplies a first bias current or voltage
to an amplifier that amplifies a radio frequency signal, the bias
circuit comprising:
a field-effect transistor (FET), wherein a power supply
voltage is supplied to a drain of the FET and a source of the
FET outputs the first bias current or voltage;
a first bipolar transistor, wherein a collector of the first
bipolar transistor is connected to a gate of the FET, a base of
the first bipolar transistor is connected to the source of the FET,
the first bipolar transistor has a common emitter, and a constant
current is supplied to the collector of the first bipolar transistor;
and
a first capacitor, wherein a first end of the first capacitor
is connected to the collector of the first bipolar transistor and
the first capacitor suppresses variations in a collector voltage of
the first bipolar transistor, wherein
a capacitance value of the first capacitor is larger than a
value of a parasitic capacitance between the gate of the FET
and the source of the FET, and
the capacitance value of the first capacitor is between 2pF
and 6pF.

OPINION
Upon consideration of the evidence relied upon and each of
Appellant’s contentions as set forth in the Appeal Brief, as well as the Reply
Appeal 2019-004994
Application 15/480,584

3
Brief, we determine that Appellant has not demonstrated reversible error in
the Examiner’s rejections (e.g., generally Ans.). In re Jung, 637 F.3d 1356,
1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of
requiring Appellant to identify the alleged error in the Examiner’s rejection).
We sustain the rejections for the reasons expressed by the Examiner in the
Final Office Action and the Answer.
We add the following primarily for emphasis.
It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264–
65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
At the outset, it is noted that Appellant’s arguments focus on the
failure of Sinitsky to teach or suggest the limitations reciting a capacitance
value being between 2pF and 6pF for each rejection (Appeal Br. 5–7).
Accordingly, both rejections stand or fall together and the dependent claims
all stand or fall with the independent claim.
Furthermore, while Appellant alleges that the Examiner fails to
appreciate fundamental differences between Kryshtopin and Sinitsky such
that there is no reason “to think that the rationale for setting capacitor C1 of
Sinitsky to be greater than the parasitic capacitance of the transistor would
also apply to capacitor 144 of Kryshtopin” (Appeal Br. 4), Appellant makes
no specific arguments regarding the circuit of Ni/Okuma (Appeal Br. 7).
Appeal 2019-004994
Application 15/480,584

4
Appellant argues that, even though the Examiner found Sinitsky
“teaches that a capacitor could have a value greater than a parasitic
capacitance of a connected transistor,” the Examiner relied upon
impermissible hindsight in combining the references because there is “no
reason to think that the rationale for setting capacitor C1 of Sinitsky . . .
would also apply to capacitor 144 of Kryshtopin” (Appeal Br. 4) and further
that “the desired signal levels . . . are different” in these references (Reply
Br. 4).
Appellant also states that “even if it is determined [that] one of
ordinary skill in the art would have been motivated” to combine the
references, the “claimed range of 2pF-6pF is critical and thus the conclusion
of obviousness is still improper” (Appeal Br. 6).
These arguments fail to show reversible error in the Examiner’s
rejections for reasons explained by the Examiner (Ans. 10–20). Appellant’s
arguments are also not persuasive of error as they fail to consider the applied
prior art as a whole and the inferences that one of ordinary skill would have
made. Under the flexible inquiry set forth by the Supreme Court, the PTO
must take account of the “inferences and creative steps,” or even routine
steps, that an ordinary artisan would employ. Ball Aerosol and Specialty
Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009)
(citation omitted). As the Examiner explains (Final Act. 9–10; Ans. 19–20)
setting capacitance values for a specific circuit’s parameters to, e.g., between
2pF and 6pF, would have been within the skill and creativity of one of
ordinary skill in the art to provide for a specific circuit’s parameters.
Appellant contends that the claimed values of 2pF to 6pF represent
critical capacitance values based on the discussion on paragraphs 25–27 of
Appeal 2019-004994
Application 15/480,584

5
the Specification. Appeal Br. 6. However, this discussion only points to
these values as an example without identifying any criticality. See Spec ¶ 27
(“For example, the capacitance value of the capacitor . . . be a capacitance
value of such a size that the transistor 220 suitably operates (for example,
around 2 pF to 6 pF”). Moreover, claim 1 recites an apparatus (bias circuit)
and it is well established that claims directed to an apparatus must be
distinguished from the prior art in terms of structure rather than function,
see, e.g., In re Schreiber, 128 F.3d 1473, 1477–78 (Fed. Cir. 1997).
On this record, Appellant has not sufficiently explained why the
claimed subject matter is “more than the predictable use of prior art elements
[or steps] according to their established functions.” KSR, 550 U.S. at 417.
As discussed, above, it is also well established that when there is a
reason to conclude that the structure of the prior art is capable of performing
the claimed function, the burden shifts to the applicant to show that the
claimed function patentably distinguishes the claimed structure from the
prior art structure. In re Schreiber, 128 F.3d at 1478. Appellant’s
contention that the Examiner’s position is based on improper use of design
choice appears misdirected, since the Examiner’s position was premised on
the circuit of the applied prior art combination(s) being capable of being
designed for (or operating at) the recited capacitance values in accordance
with the ultimate use of the circuit (Ans. 17–20).
In any event, the law is replete with cases in which the difference
between the claimed invention and the prior art is the claimed range or other
variable within the claims. These cases have consistently held that the
Appellant must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results relative to the
Appeal 2019-004994
Application 15/480,584

6
prior art range. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).
Moreover, as pointed out by the Examiner (Ans. 19), it is well settled that it
would have been obvious for an artisan with ordinary skill to develop
workable or even optimum ranges for result-effective parameters. In re
Woodruff, 919 F.2d at 1577; In re Boesch, 617 F.2d 272, 276 (CCPA 1980);
In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Furthermore, “[a] recognition in the prior art that a property is
affected by the variable is sufficient to find the variable result-effective.” In
re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) (“The
Board primarily rested its finding that the dimensions were result-effective
variables on Applied’s admission . . . . The Board did not err in relying on
Applied’s admission because the admission indicates that the prior art taught
that the dimensions could be modified and that modification would affect
pad performance, which was sufficient to find the dimensions to be result-
effective variables. While Applied also stated that the prior art ‘is silent as
to the impact of the groove pitch and width on performance,’ the prior art
did not need to disclose the result with any greater specificity than it already
did. . . . . [T]he prior art need not provide the exact method of optimization
for the variable to be result-effective.”). Here, it is apparent to one of
ordinary skill in the art that the capacitance range of the capacitor affects the
operation of final circuit (e.g., Ans. 18, 19). Further, Appellant does not
explain adequately how the capacitance values distinguish the structure of
the claimed bias circuit from the structure of the bias circuit from the
combined teachings of the cited art.
Accordingly, substantial evidence supports the Examiner’s
obviousness determination of the capacitance range recited in claim 1.
Appeal 2019-004994
Application 15/480,584

7
In light of these circumstances, we affirm the Examiner’s § 103
rejections of the appealed claims.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 17 103 Kryshtopin,
Sinitsky
1, 2, 17
1, 2, 5, 6, 9,
10, 13, 14,
17–20
103 Ni, Okuma,
Sinitsky
1, 2, 5, 6,
9, 10, 13,
14, 17–20

Overall
Outcome
1, 2, 5, 6,
9, 10, 13,
14, 17–20

TIME PERIOD FOR RESPONSE
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