Robert C. Taft et al.

Patent Trials and Appeals Board

Jul 18, 2019

13847261 - (R) (P.T.A.B. Jul. 18, 2019)

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.
13/847,261 03/19/2013 Robert C. TAFT TI-73466 8039
23494 7590 07/18/2019
TEXAS INSTRUMENTS INCORPORATED
P O BOX 655474, M/S 3999
DALLAS, TX 75265
EXAMINER
COMBER, KEVIN J
ART UNIT PAPER NUMBER
2836
NOTIFICATION DATE DELIVERY MODE
07/18/2019 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):
uspto@ti.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT C. TAFT and ALEXANDER BODEM
____________

Appeal 2018-001793
Application 13/847,261
Technology Center 2800
____________

Before KAREN M. HASTINGS, DONNA M. PRAISS, and
JEFFREY R. SNAY, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
This is in response to a Request for Rehearing (“Req. Reh’g”), dated
July 2, 2019, of our Decision, mailed May 2, 2019 (“Decision”), wherein we
affirmed the Examiner’s § 102 rejection of appealed claims 1, 7, 13, and 19–
21 as well as the § 103 rejection of claim 6.
We have reconsidered our Decision, in light of Appellant’s1
comments in the Request for Rehearing, and we find no error in the
disposition of the §§ 102 and 103(a) rejections.

1 The real party in interest is stated to be Texas Instruments Incorporated,
which is also the Applicant/Appellant (Appeal Br. 2).
Appeal 2018-001793
Application 13/847,261

2
We have reviewed the arguments set forth by Appellant in the
Request. However, we remain of the opinion that the subject matter of the
claims is properly rejected and unpatentable under 35 U.S.C. § 103(a).
Appellant appears to merely reargue their position that the Examiner
has unreasonably interpreted the claim language to encompass Yue2 (Req.
Reh’g 2, 3).3
This argument is not persuasive of any error in our Decision.
Appellant states that the differentiation of the shunt node and sense node is
“an essential ‘feature’” where the “sense” node is “in front of the inductor”
and the “shunt” node is “behind the inductor” (Req. Reh’g 4). However, the
claim language does not recite that the “sense” node must be “in front of the
inductor” and that the “shunt” node must be “behind the inductor.” As
currently recited in claim 1, a sense node is “connected to the input node”
and a shunt node is “coupled to controllably receive an inductive current
based on the input voltage signal received at the input node” (Claim 1).
Limitations not appearing in the claims cannot be relied upon for
patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Although Appellant continues to argue that the sensing and shunt
nodes are at the same location in Yue, this is contrary to the Examiner’s
position (Ans. generally). As depicted on Fig. 3 of Yue, the “Desired
Signal” is sensed at the point labeled A, which would be used to create an

2 Yue et al., US 2002/0121924A1, published Sept. 5, 2002 (hereinafter
“Yue”).
3 Appellant appears to fail to explicitly set forth “the points believed to have
been misapprehended or overlooked by the Board” as required by 37 C.F.R.
§ 41.52(a)(1). Thus, the request appears to be improper. Nonetheless, we
have responded to Appellant’s apparent reargument of their position on
appeal.
Appeal 2018-001793
Application 13/847,261

3
input for the ESD Protection Circuit 40 after the inductor 110. As explained
by the Examiner, the signal detected at A cannot be the same signal that
comes out of inductor 110 (labeled 35 on Fig. 3 of Yue) because the inductor
has its own resistivity which alters the original signal that was at point A
(e.g., Ans. 4). Therefore, the node near the label 35 immediately before the
ESD would be encompassed by the shunt node recited in claim 1 because the
resulting signal is what is fed into the ESD and shunted if voltage is of the
appropriate strength, as explained by the Examiner (id.).
Accordingly, no persuasive merit is present in Appellant’s argument
that the Examiner, and the Board, erred in interpreting the claim language
(Req. Reh’g 2).
Thus, we decline to modify our decision to affirm the Examiner’s
§§ 102 and 103(a) rejections.
In conclusion, based on the foregoing, Appellant’s Request is granted
to the extent that we have reconsidered our Decision, but is denied with
respect to making changes to the final disposition of the rejection therein.
This Decision on the Request for Rehearing incorporates our
Decision, mailed May 2, 2019, and is final for the purposes of judicial
review. See 37 C.F.R. § 41.52 (a)(1).
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)(v).

DENIED