SEMICONDUCTOR COMPONENTS INDUSTRIES, LLCDownload PDFPatent Trials and Appeals BoardAug 17, 20212020006268 (P.T.A.B. Aug. 17, 2021) Copy Citation 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. 16/169,029 10/24/2018 Bruno DAMIEN ONS02943US 4310 134545 7590 08/17/2021 SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC (DW) 5005 E. McDowell Road, Maildrop A700 Phoenix, AZ 85008 EXAMINER DOUGHERTY, THOMAS M ART UNIT PAPER NUMBER 2837 NOTIFICATION DATE DELIVERY MODE 08/17/2021 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): patents@onsemi.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRUNO DAMIEN Appeal 2020-006268 Application 16/169,029 Technology Center 2800 Before BRADLEY W. BAUMEISTER, MICHAEL J. STRAUSS, and CHRISTA P. ZADO, Administrative Patent Judges. ZADO, 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 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Semiconductor Components Industries, LLC. Appeal Br. 3. Appeal 2020-006268 Application 16/169,029 2 CLAIMED SUBJECT MATTER The instant application relates to a wireless communication system and method powered by an energy harvester. Spec. (title). Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of operating a transceiver comprising: receiving a burst of electrical energy from an energy harvester that produces the burst of electrical energy from mechanical energy, the burst of electrical energy the result of a single actuation of the energy harvester; rectifying the burst of electrical energy to create rectified energy; applying the rectified energy to the transceiver without applying the rectified energy to a switching power converter; and transmitting an electromagnetic signal comprising a frame of multiple bytes, the transmitting using the rectified energy. Appeal Br. 29 (Claims App’x). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Moon US 2011/0140579 A1 June 16, 2011 Webb US 2011/0252845 A1 Oct. 20, 2011 Zalewski US 9,894,471 B1 Feb. 13, 2018 REJECTIONS Claims 1–6, 8–12, and 14 stand rejected under 35 U.S.C. § 102 as anticipated by Zalewski. Final Act. 4–7. Claims 7 and 13 stand rejected under 35 U.S.C. § 103 as unpatentable over the combination of Zalewski and Webb. Id. at 8–9. Appeal 2020-006268 Application 16/169,029 3 Claims 15–19 stand rejected under 35 U.S.C. § 103 as unpatentable over the combination of Zalewski and Moon. Id. at 9–12. Claim 20 stands rejected under 35 U.S.C. § 103 as unpatentable over the combination of Zalewski, Moon, and Webb. Id. at 11. OPINION 1. Claims 1–3 (“without applying the rectified energy to a switching power converter”) Claim 1 recites a negative limitation (negative limitation in italics): “A method of operating a transceiver comprising: . . . receiving a burst of electrical energy from an energy harvester . . . rectifying the burst of electrical energy . . . applying the rectified energy to the transceiver without applying the rectified energy to a switching power converter.” Appeal Br. 29 (Claims App’x). Appellant submits that: 1) Zalewski must expressly disclose the negative limitation in order to anticipate claim 1; 2) Zalewski does not expressly disclose the negative limitation because mere absence of a recitation does not amount to express disclosure of the negative limitation; 3) Zalewski does not expressly disclose the negative limitation because an ordinarily skilled artisan would have understood Zalewski uses a switching power converter; 4) Zalewski does not inherently disclose the negative limitation; and 5) Zalewski does not provide enabling disclosure as to the negative limitation. Appeal Br. 12–17. Appellant’s arguments fail to persuade us of Examiner error. In pertinent part, contrary to Appellant’s assertion, we find that Zalewski expressly discloses the negative limitation. Below we address our reasons for this finding, as well as Appellant’s other arguments. Appeal 2020-006268 Application 16/169,029 4 To support the proposition that a prior art reference must expressly disclose a negative limitation in order to show anticipation, Appellant relies on § 2173.05(i) of the MPEP (Rev. 8). Appeal Br. 15. This section of the MPEP is inapposite because it is directed not to 35 U.S.C. § 102, but rather to the written description requirement under 35 U.S.C. § 112(a). MPEP § 2173.05(i) (Rev. 8). Appellant cites no authority or law requiring a prior art reference to expressly disclose a negative limitation in order to show anticipation. Two Federal Circuit decisions addressing the issue of whether the prior art adequately disclosed a negative limitation— Süd-Chemie and Upsher-Smith—do not apply the bright line rule proposed by Appellant. Süd-Chemie, Inc. v. Multisorb Technologies, Inc. 554 F.3d 1001, 1004–5 (Fed. Cir. 2009)2; Upsher-Smith Labs, Inc. v. Pamlab, LLC, 412 F.3d 1319, 1321–22 (Fed. Cir. 2005)3. Although we know of no bright line rule 2 Süd-Chemie specifically addresses unpatentability under § 103. The issue was whether the prior art, Komatsu, taught the use of desiccant containers comprising packaging material further comprising “uncoated” microporous and laminated films. Süd-Chemie, 554 F.3d at 1004. The term “uncoated” in the claims was construed to mean “uncoated with an adhesive.” Id. Even though Komatsu did not expressly disclose uncoated films, the Federal Circuit upheld the district court’s determination that Komatsu taught uncoated films because Komatsu taught a process of adhering films together by heat sealing (and therefore there was no need for coating to adhere). Id. at 1004–5. 3 Upsher-Smith specifically addresses unpatentability under § 102. The patents at issue were directed to vitamin supplements, and claimed compositions that expressly excluded antioxidants based on the discovery that antioxidants destroy vitamin B12 and folate. Upsher-Smith, 412 F.3d at 1321 (claiming a composition that includes folic acid and vitamin B12, but is “essentially free of anti[]oxidants”). It was undisputed that the prior art disclosed that antioxidants were optionally included in the prior art vitamin Appeal 2020-006268 Application 16/169,029 5 requiring express disclosure of a negative claim limitation in order to show anticipation, our decision does not rest on whether such rule exists. For reasons discussed below, Zalewski expressly discloses the negative limitation at issue. Zalewski discloses a method that includes, as illustrated in Figure 1B: 1) receiving a burst of electrical energy from an energy harvester (e.g., piezoelectric power pump 102) that produces the energy as the result of a single actuation of the energy harvester; 2) rectifying the burst of electrical energy (see, e.g., “Full wave rectifier”); and 3) transmitting an electromagnetic signal comprising a frame of multiple bytes, the transmitting using the rectified energy (see, e.g., Logic/Wireless Rx/Tx 140). Zalewski Fig. 1B, 34:35–61 (describing application of mechanical force to power pump 102 and harvesting power from the pump using a full wave rectifier), 33:64–34:14 (describing transceiver 140 using power harvested from (piezoelectric) power pump 102 to transmit data); Final Act. 4 (citing Zalewski 31:42–57, claim 14, Figs. 1B, 2). Notably, the wireless coded communication (WCC) device shown in Figure 1B of Zalewski does not include a switching power converter, nor does Zalewski require using a switching power converter in connection with Figure 1B. Zalewski Fig. 1B; Ans. 5–6. Accordingly, Zalewski shows the limitations of claim 1, including the negatively claimed limitation. Ans. 5–6 supplements. Id. at 1322. The Federal Circuit held that the district court did not err in determining that the optional inclusion of antioxidants discloses compositions that both do and do not contain antioxidants. Id. Because the prior art disclosed the negative limitation, the Federal Circuit had no need to (and indeed did not) address the issue of whether a reference must expressly disclose a negative limitation in order to anticipate. Appeal 2020-006268 Application 16/169,029 6 (“Zalewski shows the claimed elements in the claimed arrangement in the U.S.C. 102 rejection”). Appellant acknowledges that Zalewski does not depict a switching power converter in connection with Figures 1B and 2. Appeal Br. 13 (implicitly acknowledging Zalewski Figures 1B and 2 do not show a power switching converter, but arguing that these figures are not exhaustive of all components in Zalewski’s WCC device). Appellant submits, however, that an ordinarily skilled artisan would have assumed the WCC device to include a power switching converter (i.e., a buck-boost converter), even though one is not shown or described. Id. To support this assertion, Appellant relies only on the background of the instant application, which describes a reason why a switching power may be useful. Id. (citing Spec. ¶ 16). Appellant’s argument is not persuasive because the stated reason in the Specification is not applicable to Zalewski. The purpose of the switching power converter, according to the instant application, is to ensure power levels are sufficiently high to actuate the transceiver to transmit information. Spec. ¶ 16 (“The buck-boost converter [i.e., type of switching power converter] may [], during periods of time when the voltage from the rectifier 102 is low, increase the voltage (boost operation). The switching power converter 104 thus ensures that the voltage of the electrical power provided to transceiver 106 is within the transceiver’s operating range”). Zalewski (when implemented as a power harvester using a piezoelectric power pump) does not need a switching power converter to boost power level because Zalewski instead uses a capacitor to store power until the power level is sufficiently high to actuate the transceiver and transmit information. Zalewski 34:8–14 (“when the power storage 106 has Appeal 2020-006268 Application 16/169,029 7 received a sufficient amount or a threshold amount of power in the capacitor or capacitors or array of capacitors, the logic 140 can process a predefined function and the wireless transceiver 140 can transmit data to a desire[d] end node”); Ans. 4 (explaining that Appellant’s modified version of Zalewski’s figure 1B (Appeal Br. 10) removes the capacitor, effectively ignoring it). We, therefore, are not persuaded that a skilled artisan would have assumed that Zalewski uses a switching power converter in the devices shown in Figures 1B and 2. Our above findings are consistent with other portions of Zalewski that, contrary to Appellant’s arguments, expressly disclose the negative limitation at issue. Ans. 6–7 (“at col. 45, ll. 58–61, Zalewski explicitly notes that a power converter is not required”).4 In particular, with regard to Figure 5B, Zalewski discloses optional inclusion of a buck converter (i.e., switching power converter) in a bridge circuit embodiment. Figure 5B illustrates an exemplary bridge circuit comprising piezoelectric power pump 104b, wherein the bridge circuit may be used in Zalewski’s WCC devices. Zalewski 43:53–58, Fig. 5. Zalewski expressly discloses that a buck converter may be included to provide efficient energy extraction from sources with high open circuit voltages. Id. at 45:58–61 (“in one embodiment, the bridge circuit may include a low loss, efficient rectifier and one or more buck converters to provide efficient energy extraction”) (emphasis added). 4 In quoting Zalewski the Answer erroneously cites column 44, lines 58 to 61. Ans. 6. The quoted language appears at column 45, lines 58 to 61 of Zalewski. Appeal 2020-006268 Application 16/169,029 8 Optional inclusion of a buck converter expressly discloses configurations that both do and do not include a buck converter. Upsher- Smith Labs, Inc. v. Pamlab, LLC, 412 F.3d 1319, 1322 (Fed. Cir. 2005) (with regard to a negative limitation reciting a composition “essentially free of anti[oxidants,” finding no error in the district court’s determination that prior art disclosing that the antioxidants were optionally included in the prior art vitamin supplements disclosed compositions that both do and do not contain antioxidants). Accordingly, Zalewski discloses an embodiment of an energy harvester that expressly does not use a power switching converter. Appellant also asserts Zalewski does not provide enabling disclosure of the negative limitation, but Appellant provides no persuasive evidence to support this assertion. Appeal Br. 16–17. Appellant relies on its argument that a skilled artisan would have assumed Zalewski requires a buck-boost converter in order to operate, and Zalewski does not enable a skilled artisan to practice the claimed invention without the converter. Id. For reasons we discussed above regarding whether Zalewski uses a buck-boost converter, Appellant’s argument is not persuasive For the foregoing reasons, Appellant has not shown the Examiner erred in the rejection of claim 1, and we sustain the Examiner’s rejection of this claim. Furthermore, we sustain the rejection of claims 2 and 3, which Appellant groups with claim 1. Appeal Br. 12. 2. Claim 4 (“wherein receiving the burst of electrical energy further comprises receiving no more than 500 micro-Joules”) The Examiner finds Zalewski inherently discloses the limitation, “wherein receiving the burst of electrical energy further comprises receiving no more than 500 micro-Joules,” as recited in claim 4, because the structure Appeal 2020-006268 Application 16/169,029 9 in Zalewski is the same as the claimed structure. Final Act. 5 (citing In re Best, 195 USPQ 430, 433 (C.C.P.A. 1977)) (“Note that it has been held that where the structure recited in a reference is the same as the claimed structure, claimed properties and functions are presumed to be inherent.”). As stated in in re Best, where the claimed and prior art products or processes are identical or substantially identical, “the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of [the] claimed product.” In re Best, 562 F.2d 1252, 1255 (C.C.P.A. 1977). Because the structure in Zalewski that performs the claimed process (i.e., piezoelectric power pump 102) is identical or substantially identical to the structure disclosed in the instant application for performing the claimed process (i.e., piezoelectric device configured to generate a burst of electrical energy, Spec. ¶ 14), the Examiner has properly placed the burden on Appellant to prove that Zalewski does not necessarily or inherently possess the claimed characteristic that receiving the burst of electrical energy further comprises “receiving no more than 500 micro-Joules” of electrical energy. Appellant has failed to make such showing. Appeal Br. 17–18; Reply Br. 9. Rather than present evidence and argument showing that Zalewski does not inherently possess the claimed trait, Appellant argues that the rejection fails to address the limitations of claim 4 in relation to claim 1. Appeal Br. 17. Appellant argues, more specifically, that claim 1 (from which claim 4 depends) requires that a single actuation of the energy harvester (i.e., a single burst of electrical energy received from the energy harvester) must be no more than 500 micro-Joules. Id. at 17–18. Appellant presumes the Examiner’s rejection applied the claim language in a manner Appeal 2020-006268 Application 16/169,029 10 contrary to the limitation of claim 1 reciting that “the burst of electrical energy [is] the result of a single actuation of the energy harvester.” Id. However, Appellant provides no basis for the presumption that the Examiner ignored the recitation from claim 1 requiring a single actuation of the energy harvester. Id. For the foregoing reasons, Appellant has not shown the Examiner erred in the rejection of claim 4, and we sustain the Examiner’s rejection of this claim. 3. Claims 5, 6 (“receiving the burst of electrical energy within a time window of 10 milliseconds or less, and the burst of electrical energy ceasing thereafter”) Claim 5 recites the method of claim 4, “wherein receiving the burst of electrical energy further comprises receiving the burst of electrical energy within a time window of 10 milliseconds or less, and the burst of energy ceasing thereafter.” Appeal Br. 30 (Claims App’x). The Examiner finds Zalewski discloses this feature because Zalewski’s energy harverster—i.e., a hammer-based piezoelectric power pump—creates a voltage “burst.” Ans. 8 (citing Zalewski 31:49–54). The Examiner’s finding is supported by the evidence of record, namely, as explained by the Examiner, Zalewski describes a “short burst” of AC power caused by the bridge circuit comprising the hammer-based piezoelectric power pump. Id. (citing Zalewski 45:63–66). Because Zalewski discloses that the short burst of energy generated by the hammer-based pump is generated by the “strike” of the hammer, the Examiner reasonably finds that the burst is of short duration, and in particular, less than 10 ms. Zalewski 14:2–3. In other words, we discern no error in the Examiner finding that the time it takes a hammer to “strike” an Appeal 2020-006268 Application 16/169,029 11 element is of short duration, i.e., less than 10 ms. Indeed, Appellant does not dispute the Examiner’s finding that Zalewski’s energy harvester outputs a burst of energy within a time window of 10 or fewer milliseconds. Appeal Br. 18–19 (submitting that “[t]he issue is not finding an energy harvester that produces energy in a time of window of 10 milliseconds or less.”). Instead, Appellant argues claim 5 requires more than simply a harvester that produces electrical energy in 10 or fewer milliseconds. Id. The claim requires, according to Appellant, that the entire sequence of steps recited in claim 1—i.e., “rectifying the burst of electrical energy,” “applying the rectified energy to the transceiver,” and “transmitting an electromagnetic signal”—must take place within a time window of 10 milliseconds or less. Id. at 19. This argument is unpersuasive because it is not commensurate with the scope of claim 5. Claim 5, as we noted above, recites “receiving the burst of electrical energy within a time window of 10 milliseconds or less.” Therefore, the claimed time window applies only to the step of receiving the burst of electrical energy. The claim language neither recites nor requires that the other steps of claim 1 occur within the 10 millisecond time window. For the foregoing reasons, Appellant has not shown the Examiner erred in the rejection of claim 5, and we sustain the Examiner’s rejection of this claim. Furthermore, we sustain the rejection of claim 6, which Appellant groups with claim 5. Appeal Br. 18. 4. Claims 8–12, 14 Independent claim 8 recites a transceiver system comprising an energy harvester configured to produce a burst of electrical energy upon each actuation of the harvester, wherein each burst has “a duration of 10 Appeal 2020-006268 Application 16/169,029 12 milliseconds or less.” Appeal Br. 30 (Claims App’x). As with claims 5 and 6, here Appellant argues that the issue is not whether Zalewski’s hammer-based piezoelectric power pump can generate a burst of electrical energy having a duration of 10 milliseconds or less, but rather is whether the transceiver can transmit a frame during the burst of 10 or less milliseconds. Id. at 20–21.5 As to the “transceiver,” claim 8 recites “a transceiver defining a power input coupled directly to the DC output of the rectifier,” and “the transceiver configured to transmit an electrical signal comprising a frame of a plurality of bytes during each burst of electrical energy.” Id. at 30 (Claims App’x). Appellant does not explain the basis for its assertion that the transceiver must be able to transmit a frame during the burst of 10 or less milliseconds, but it appears Appellant relies on the claimed requirement that the transceiver is configured to transmit a frame “during each burst of electrical energy.” 5 Appellant also submits that the Examiner has failed to make a prima facie showing of unpatentability because the rejection fails to adequately cite where Zalewski discloses the limitation at issue. Appeal Br. 20. Specifically, the Examiner mistakenly cites to paragraph 74 of Zalewski, whereas Zalewski does not have paragraph reference numbers, but rather has column and line numbers. Final Act. 6 (referring to “output code noted in paragraph 0074”). Appellant’s argument is unavailing. The Examiner’s reference to “output code” provided sufficient notice to direct Appellant to Zalewski’s discussion of “output code” at column 8, lines 20–24. Ans. 8 (explaining that the discussion of “output code” in the Final Rejection referred to Zalewski 8:20–24). Moreover, Appellant has had a full opportunity in the Reply Brief to respond to the Examiner’s clarification, with correct column and line numbers, in the Answer. Appeal 2020-006268 Application 16/169,029 13 We find the Examiner has shown sufficiently that Zalewski’s transceiver is configured to transmit a frame during each burst of electrical energy, as recited in claim 8. As explained by the Examiner, Zalewski’s WCC generates a burst of power and outputs data from that power generation. Ans. 9 (citing Zalewski 8:20–24). Appellant asserts Zalewski does not provide enabling disclosure of a transceiver capable of transmitting data within the requisite time window, but provides no persuasive evidence to support this assertion. Appeal Br. 21–22. Appellant merely relies on its argument that a skilled artisan would have assumed Zalewski requires a buck-boost converter in order to operate, and Zalewski does not enable a skilled artisan to practice the claimed invention without the converter. Id. For reasons we discussed above for claim 1, this argument is not persuasive. For the foregoing reasons, Appellant has not shown the Examiner erred in the rejection of claim 8, and we sustain the Examiner’s rejection of this claim. Furthermore, we sustain the rejection of claims 9–12 and 14, which Appellant groups with claim 8. Appeal Br. 19. 5. Claims 7, 13, and 15 Appellant argues claim 7 is allowable for the same reasons as argued for claim 1. Appeal Br. 22. For the same reasons we discussed above for claim 1, Appellant’s arguments are not persuasive. We, therefore, sustain the Examiner’s rejection of claim 7. Appellant argues claims 13 and 15 are allowable for the same reasons as argued for claim 8. Id. For the same reasons we discussed above for claim 8, Appellant’s arguments are not persuasive. We, therefore, sustain the Examiner’s rejection of claims 13 and 15. Appeal 2020-006268 Application 16/169,029 14 6. Claims 16, 17, 19 Appellant argues claims 16, 17, and 19 together. Appeal Br. 22–24. As with claim 8, here Appellant submits that claims 16, 17, and 18 require a transceiver configured to transmit a frame within a time window of 10 or less milliseconds. Id. In support of its submission, Appellant makes the same arguments as it did for claim 8. For the same reasons we discussed above for claim 8, Appellant’s arguments are not persuasive. We, therefore, sustain the Examiner’s rejection of claims 16, 17, and 19. 7. Claim 18 Appellant submits that claim 18 requires an energy harvester that operates with 500 or less micro joules within a time window of 10 milliseconds or less. Appeal Br. 25–25. In support of its submission, Appellant makes the same arguments as it did for claim 4. For the same reasons we discussed above for claim 4, Appellant’s arguments are not persuasive. We, therefore, sustain the Examiner’s rejection of claim 18. 8. Claim 20 Appellant argues claim 20 is allowable for the same reasons as argued for claim 16. Appeal Br. 25. For the same reasons we discussed above for claim 16, Appellant’s arguments are not persuasive. We, therefore, sustain the Examiner’s rejection of claim 20. CONCLUSION The Examiner’s rejections are affirmed. More specifically, we sustain the rejection of: Claims 1–6, 8–12, and 14 under 35 U.S.C. § 102 as anticipated by Zalewski; Appeal 2020-006268 Application 16/169,029 15 Claims 7 and 13 under 35 U.S.C. § 103 as unpatentable over the combination of Zalewski and Webb; Claims 15–19 under 35 U.S.C. § 103 as unpatentable over the combination of Zalewski and Moon; and Claim 20 under 35 U.S.C. § 103 as unpatentable over the combination of Zalewski, Moon, and Webb. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–6, 8–12, 14 102 Zalewski 1–6, 8–12, 14 7, 13 103 Zalewski, Webb 7, 13 15–19 103 Zalewski, Moon 15–19 20 103 Zalewski, Moon, Webb 20 Overall Outcome 1–20 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation