ZACHARY KEANE

Patent Trials and Appeals Board

Apr 30, 2021

2020003128 (P.T.A.B. Apr. 30, 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.
15/868,557 01/11/2018 ZACHARY KYLE KEANE NG(ES)026837 US PRI 9993
109501 7590 04/30/2021
Tarolli, Sundheim, Covell & Tummino
LLP and Northrop Grumman Systems Corporation
1300 East Ninth Street
Suite 1700
Cleveland, OH 44114
EXAMINER
KIM, JUNG H
ART UNIT PAPER NUMBER
2842
NOTIFICATION DATE DELIVERY MODE
04/30/2021 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):
docketing@tarolli.com
rkline@tarolli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ZACHARY KYLE KEANE
Appeal 2020-003128
Application 15/868,557
Technology Center 2800
Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s July 25, 2019 decision to finally reject claims 1–7 and 10 (“Final
Act.”). We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the word Appellant to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Northrop
Grumman Systems Corporation (Appeal Br. 2).
Appeal 2020-003128
Application 15/868,557

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CLAIMED SUBJECT MATTER
Appellant’s disclosure is generally directed to a tunable coupler
(Abstract). The claims are said to be directed to system containing quantum
objects of a particular type which are coupled by a coupler having a
particular configuration (Appeal Br. 5). The claims on appeal generally
relate to a superconducting system that couples first and second quantum
objects (e.g., qubits or resonators) each having a ground end required to be
connected to a DC path to a low-voltage rail (e.g., a circuit ground) and an
open end required not to be connected to a DC path to the low-voltage rail
(Appeal Br. 2). Claim 1, reproduced below from the Claims Appendix, is
illustrative of the claimed subject matter:
1. A superconducting capacitively-driven tunable coupler system
comprising:
first and second quantum objects each having a ground end
required to be connected to a DC path to a low-voltage rail and an
open end required not to be connected to a DC path to the low-
voltage rail;
a coupler comprising:
a first coupling capacitor connected between the open end
of the first quantum object and a first connecting node;
a radio-frequency superconducting quantum interference
device (RF SQUID) connected between the first
connecting node and a second connecting node, the RF
SQUID comprising a Josephson element connected
between the first connecting node and the second
connecting node, wherein the entirety of a path between
the first coupling capacitor and the Josephson element
is electrically short; and
at least one flux injection element configured to bias the
Josephson element to variably weaken the strength of
coupling between the first and second quantum objects,
wherein the objects are coupled together to pass signals
between them in the absence of injected flux.
Appeal 2020-003128
Application 15/868,557

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REFERENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Naaman US 9,768,771 B2 September 19, 2017

REJECTION
Claims 1–7 and 10 are rejected under 35 U.S.C. §102(a)(1) as
anticipated by Naaman.
DISCUSSION
Because the claims are not argued separately, we focus our analysis
on the anticipation rejection of claim 1. The remaining claims will stand or
fall with claim 1. Upon consideration of the arguments and evidence set
forth in the Final Action, the Examiner’s Answer, the Appeal Brief, and the
Reply Brief, we agree with Appellant that the Examiner has erred in finding
that Naaman anticipates claim 1.
“A prior art reference anticipates a patent claim under 35 U.S.C.
§ 102(b) if it discloses every claim limitation.” In re Montgomery, 677 F.3d
1375, 1379 (Fed. Cir. 2012) (citing Verizon Servs. Corp. v. Cox Fibernet
Va., Inc., 602 F.3d 1325, 1336–37 (Fed. Cir. 2010)). In this instance,
Appellant contends that Naaman “does not expressly or inherently teach first
and second quantum objects each having a ground end required to be
connected to a DC path to a low-voltage rail and an open end required not to
be connected to a DC path to the low-voltage rail end” (Appeal Br. 5).
The Examiner finds that the claimed first and second quantum objects
in claim 1 are inherently disclosed by Naaman as the components coupled to
provide SIGIN and to receive SIGOUT1, as shown in Naaman’s FIG. 2:
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Application 15/868,557

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Naaman’s FIG. 2 illustrates a schematic diagram of an example of a
single-pole double-throw switch circuit.

The Examiner finds that the inherent components corresponding to the
claimed first and second quantum objects would:
each hav[e] a ground end (e.g., the inherent component coupled
to provide SIGIN and an inherent component coupled to receive
SIGOUT1 would inherently have ground connections) required
to be connected to a DC path to a low-voltage rail and an open
end (e.g., SIGIN and SIGOUT1 coupled to CCA and CCB,
respectively) required not to be connected to a DC path to the
low-voltage rail end (e.g., SIGIN and SIGOUT1 are coupled
galvanically via CCA and CCB, respectively)[.]

(Final Act. 3). In the Answer, the Examiner further finds that under the
broadest reasonable interpretation standard, the terms “first quantum object”
and “second quantum object” includes “any objects coupled to a quantum
device” regardless of whether the objects are themselves quantum devices
(Final Act. 4–5). Because, according to the Examiner, the inherent
components coupled to provide SIGIN and SIGOUT1 are coupled to
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Application 15/868,557

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quantum devices SQUID2 32 and SQUID 34, those inherent components
correspond to the claimed first and second quantum objects (Final Act. 5).
The evidence of record does not support the Examiner’s findings.
Appellant contends that it is likely that Naaman’s system has transmission
lines – rather than quantum objects – attached to the SIGIN and SIGOUT1
ports shown in Naaman’s FIG. 2 (id.). The Examiner does not dispute this
point (see, Answer 3–6). To properly rely on the doctrine of inherency in a
rejection, “the [E]xaminer must provide a basis in fact and/or technical
reasoning to reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art.”
Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990). The fact that a certain
result or characteristic may occur or be present in the prior art is not
sufficient to establish the inherency of that result or characteristic. In re
Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993). In this case, there is no
dispute that whatever component may be providing the SIGIN or SIGOUT1
signals, it might not be a quantum object. Accordingly, the anticipation
rejection, which relies on that component inherently being a quantum object,
must be reversed.
The Examiner’s position that the broadest reasonable construction of
“quantum object” includes any object coupled to a quantum device (see,
Ans. 4–5) is not adequately supported by the evidence of record. It is well
established that “the PTO must give claims their broadest reasonable
construction consistent with the specification. Therefore, we look to the
specification to see if it provides a definition for claim terms, but otherwise

2 SQUID is an acronym for Superconducting Quantum Interference Device
(Final Act. 5).
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Application 15/868,557

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apply a broad interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d
1374, 1379 (Fed. Cir. 2007) (citation omitted, emphasis added). The
Examiner’s explanation of why the broadest reasonable interpretation of
“quantum objects” includes any or all components coupled to a quantum
device is that the Specification does not “limit the quantum objects to be
qubits or resonators or any other particular object” (Ans. 5). However, the
Examiner does not provide adequate reasoning as to why a person of skill in
the art would understand “quantum object” to include any component
coupled to a quantum device, nor are we able to discern why a person of
skill in the art would reasonably understand the term so broadly.
Accordingly, we determine that Appellant has demonstrated reversible
error in the anticipation rejection over Naaman.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–7, 10 102(a)(1) Naaman 1–7, 10

REVERSED