SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC

Patent Trials and Appeals Board

Aug 17, 2021

2020006268 (P.T.A.B. Aug. 17, 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.
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.
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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.
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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
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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.
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(“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
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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.
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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
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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
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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
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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
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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.
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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.
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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;
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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