NXP B.V.

Patent Trials and Appeals Board

Mar 11, 2022

2021003564 (P.T.A.B. Mar. 11, 2022)

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. 16/435,380 06/07/2019 Jeroen Kleinpenning 82152537US01 8095 65913 7590 03/11/2022 Intellectual Property and Licensing NXP B.V. 350 HOLGER WAY SAN JOSE, CA 95134 EXAMINER LEWIS, MONICA ART UNIT PAPER NUMBER 2838 NOTIFICATION DATE DELIVERY MODE 03/11/2022 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): ip.department.us@nxp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JEROEN KLEINPENNING, JACOBUS GOVERT SNEEP,and TSUNG-PIN TANG Appeal 2021-003564 Application 16/435,380 Technology Center 2800 Before TERRY J. OWENS, JEFFREY R. SNAY, and DEBRA L. DENNETT, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL1 1 In our Decision, we refer to the Specification (“Spec.”) of Application 16/435,380 filed June 17, 2019 (“the ’380 App.”); the Final Office Action dated Sept. 25, 2020 (“Final Act.”); the Appeal Brief filed Dec. 21, 2020 (“Appeal Br.”); the Examiner’s Answer dated Apr. 30, 2021 (“Ans.”); and the Reply Brief filed May 14, 2021 (“Reply Br.”). Appeal 2021-003564 Application 16/435,380 2 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1-22. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER The’380 Application describes a need for a power supply that detects the mains voltage disconnect at the secondary side of a power supply without a communication signal from the primary side. Spec. ¶ 42. Claim 1, reproduced below from the Claim Appendix of the Appeal Brief, illustrates the claimed subject matter: 1. A method for discharging an output capacitor of a power supply, the power supply having a primary side configured to receive a signal to be converted and a secondary side configured to output a converted signal, the method comprising: detecting that the synchronous rectification (SR) circuitry at the secondary side is inactive after no switching activity is sensed for a predetermined time at drains of the SR circuitry; determining that the primary side is disconnected from a mains voltage after the SR circuitry is detected to be inactive; and discharging an output capacitor at the secondary side based on the determination that the primary side is disconnected from the mains voltage. 2 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies NXP USA Inc. as the real party in interest. Appeal Br. 2. Appeal 2021-003564 Application 16/435,380 3 REFERENCE The Examiner relies on US 2009/0016083 A1 to Soldano et al., published Jan. 15, 2009 (“Soldano”). REJECTIONS The Examiner rejects claims 1-22 under 35 U.S.C. §§ 102(a)(1) and 102(a)(2) as anticipated by Soldano. Final Act. 6-12. OPINION Anticipation is a question of fact. In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010). To serve as an anticipatory reference, “the reference must disclose each and every element of the claimed invention, whether it does so explicitly or inherently.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). To meet the requirements of the pending claims, four activities must occur in a specified order: (1) sensing no switching activity for a predetermined time; (2) detecting that SR circuity is inactive; (3) making a determination that the primary side is disconnected from the mains voltage; and (4) discharging the output capacitor at the secondary side once the determination is made that the primary side is disconnected from the mains voltage. See, e.g., Mantech Envir. Corp. v. Hudson Envir. Servs., Inc., 152 F.3d 1368, 1376 (Fed. Cir. 1998) (holding that “the sequential nature of the claim steps is apparent from the plain meaning of the claim language and nothing in the written description suggests otherwise”). The Examiner does not establish that Soldano discloses that these activities take place in the required order. At a result, Soldano does not anticipate any of the claims. Appeal 2021-003564 Application 16/435,380 4 All of the claims require detecting that the synchronous rectification circuitry at the secondary side is inactive after no switching activity is sensed for a predetermined time at drains of the SR circuitry. See Appeal Br. 16-20 (Claims App.). In other words, in the required order of steps, sensing of no switching activity at drains of SR circuitry must occur for a predetermined time before detecting that the SR circuity at the secondary side is inactive. The Examiner finds that Soldano discloses the IC 15 in Figures 1A and 5 “is always detecting the on/off switching activity at the SR drains.” Ans. 5. Appellant argues that Soldano does not teach detecting that the switching is off, but rather commanding the circuitry to be off for a minimum off time. Appeal Br. 9. Appellant’s argument is persuasive that the “detecting” limitation is not met by Soldano. If IC 15 always detects the on/off switching activity at the SR drains, then Soldano does not disclose detecting the SR circuitry is inactive “after no switching activity is sensed for a predetermined time at drains of the SR circuitry.” In addition, the Examiner finds that the circuit shown in Soldano Figure 1A is “capable of” determining that the primary side is disconnected from a mains voltage “after the SR circuity is detected to be inactive.” Adv. Act. 2. The Examiner states that “[m]erely reciting that something occurs after something else does not imply any dependent or causal relationship between the occurrence.” Ans. 5. Dependency or causality are not issues in the claims-but timing of activities is. The Examiner does not establish that Soldano discloses, or would have suggested to one of ordinary skill in the art, the claimed activities occurring in the claimed order. Appeal 2021-003564 Application 16/435,380 5 We do not sustain the rejection of claims 1-22 as anticipated by Soldano. CONCLUSION The Examiner’s rejection of claims 1-22 as anticipated by Soldano is reversed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-22 102(a)(1) 102(a)(2) Soldano 1-22 REVERSED