Ex Parte Vice

Board of Patent Appeals and Interferences

Jul 12, 2012

11541475 (B.P.A.I. Jul. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MICHAEL WENDELL VICE
____________________

Appeal 2010-001249
Application 11/541,475
Technology Center 2800
____________________

Before: JOSEPH L. DIXON, JEAN R. HOMERE, and
JAMES R. HUGHES, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-001249
Application 11/541,475
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to gate load impedance networks for field
effect transistor attenuators and mixers. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. An electrical circuit, comprising:
a variable resistance shunt circuit having a first field
effect transistor (FET) that includes: a gate with a conductive
channel controlled by the gate; a first channel terminal
connected to one end of the conductive channel; and a second
channel terminal connected to the other end of the conductive
channel, wherein the first channel terminal is coupled to a first
signal-carrying node and the second channel terminal is coupled
to an electrical ground or a virtual ground of the electrical
circuit; and
a linearizing circuit coupled to both the gate of the first
FET and to the virtual ground, wherein the linearizing circuit is
adapted to alter a driving point impedance of the first FET in a
manner as to substantially improve the linearity of the first
FET.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Nishibe
Rofougaran
US 6,542,045 B2
US 6,961,546 B1
Apr. 1, 2003
Nov. 1, 2005
Appeal 2010-001249
Application 11/541,475
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REJECTIONS
Claims 1-17 stand rejected under 35 U.S.C §112 second paragraph as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which applicant regards as the invention.
Claims 1-3, 5-10,13-16, 18 and 19 stand rejected under 35 U.S.C
§102(b) as being anticipated by Nishibe.
Claims 1-3, 12-16 and 18 stand rejected under 35 U.S.C §102(e) as
being anticipated by Rofougaran.
Claims 4, 11, 17, and 20 stand rejected under 35 U.S.C §103(a) as
being unpatentable over Nishibe.

OPINION

35 U.S.C. §112, SECOND PARAGRAPH
Appellant argues claims 1-17 as a group (App. Br. 5). We select
independent claim 1 as the representative claim for this group and address
Appellant's arguments thereto. The Examiner maintains that:
It is unclear to the examiner what is meant by "improving the
linearity of the first FET". Other then [sic] merely mentioning
that the linearity of the FET is improved, the specification
provides no example or explanation as to how the linearity of
the FET is improved. Does it result in the attenuation becoming
more linear? Is the voltage response of the FET more linear?
As a result the claim is unclear, and therefore indefinite.

(Ans. 3). Appellant contends that the standard for reviewing a claim is
based on "reading the claims in light of the supporting specification." (App.
Appeal 2010-001249
Application 11/541,475
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Br. 5; emphasis deleted). Appellant further contends that the definiteness is
analyzed "in light of the teachings of the prior art and of the particular
application disclosure as it would be interpreted by one possessing the
ordinary level of skill in the pertinent art." (App. Br. 6; emphasis deleted).
Appellant identifies paragraphs [0170] and [0230] (App. Br. 6-7) which
mention "linearity" as it relates to a driving point impedance, but does not
identify what aspect of "linearity" with respect to the operation of the FET.
The Examiner maintains that "[s]pecifically the specification fails to
define what is meant by the 'linearity of the FET'. Without first defining
what is meant by the 'linearity of the FET' it is impossible to disclose how
that linearity is improved." (Ans. 11). We agree with the Examiner that
Appellant has not addressed the merits of the rejection with respect to what
aspect of "linearity of the FET" is intended in the claimed invention as set
forth by the Examiner in the statement of the rejection. Therefore, Appellant
has not shown error in the Examiner's rejection based upon a lack of
particularity and distinctness in the claimed invention. Therefore, we will
sustain the rejection of representative independent claim 1 under § 112,
second paragraph.

Appeal 2010-001249
Application 11/541,475
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35 U.S.C. §102
With respect to the Nishibe reference, Appellant argues claims 1-3, 5-
10, 13-16 and 18-19 as a group. (App. Br. 7). We select independent claim
1 as the representative claim for this group and address Appellant's
arguments thereto. The Examiner maintains that:
Since the appellant has failed to properly define the "linearity of
the FET" and thereby how to improve it, the examiner has
taken the broad reasonable interpretation that the linearity of the
FET directly correlates to the slope of the attenuation curve.
Therefore when the linearizing circuit determines the slope of
the determining circuit it is altering the driving the point
impedance of the first FET and thereby improving the linearity
of the FET. This is basic circuit analysis with no reliance on
inherency.

(Ans. 12). We agree with the Examiner that the Nishibe reference teaches
the claimed circuit as broadly recited in independent claim 1. (Ans. 4, 12).
Similarly, we agree with the Examiner that the language of independent
claim 1 should have a broad interpretation (Ans. 12) since there is no recited
field of use, frequency range, or other limitations with which to impart
further context to the claimed "electrical circuit." We further find the
language "wherein the linearizing circuit is adapted to …" to recite a
statement of intended use, which does not distinguish over the prior art
teachings of the Nishibe reference. A statement of intended use does not
distinguish the invention from the prior art. (Boehringer Ingelheim
Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1346 (Fed. Cir.
2003) (“An intended use or purpose usually will not limit the scope of the
claim because such statements usually do no more than define a context in
which the invention operates.”)) Furthermore, the statement does not
provide any meaningful metric to evaluate how linearity is substantially
Appeal 2010-001249
Application 11/541,475
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improved. Therefore, we find Appellant's contentions regarding anticipation
to be insufficient to show error in the Examiner's showing of anticipation of
representative claim 1.

With respect to the Rofougaran reference, Appellant presents
arguments for claims 1-3, 12-16 and 18 as a group (App. Br. 12). We select
independent claim 1 as the representative claim for this group and address
Appellant's arguments thereto. Appellant provides similar arguments as
discussed above with respect to Nishibe (App. Br. 13) and maintains that "a
claim rejection must be based on objective evidence of record, and cannot be
supported merely on subjective belief and unknown authority…No such
concrete evidence has been provided by the Examiner here". (App. Br. 11).
While we agree with Appellant that a rejection must be based upon objective
evidence, we find that the Examiner has provided objective evidence of the
"electrical circuit…" and Appellant has not identified why the circuit of
Rofougaran does not anticipate the broad claim language regarding the
"electrical circuit" of independent claim 1.
The Examiner maintains a similar line of reasoning as discussed
above with the Nishibe reference and showing of the "electrical circuit" of
representative claim 1. (Ans. 8-9; 12-13). We agree with the Examiner and
find that the proffered distinction is directed to a statement of intended use,
which does not distinguish over the prior art teachings of the Rofougaran
reference. Furthermore, the statement does not provide any meaningful
metric to evaluate how linearity is substantially improved. Therefore, we
find Appellant's contentions regarding anticipation to be insufficient to show
error in the Examiner's showing of anticipation of representative claim 1.

Appeal 2010-001249
Application 11/541,475
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35 U.S.C. §103

With respect to the rejection based upon obviousness of claims 4, 11,
17, and 20, Appellant relies upon the arguments advanced with respect to
independent claim 1 which we found unpersuasive of error in the Examiner's
showing anticipation. Since Appellant has identified no further basis for a
showing of error, we find Appellant's argument to be unpersuasive of error
in the Examiner's showing of obviousness.

CONCLUSIONS OF LAW
Appellant did not show that the Examiner erred in rejecting
independent claim 1 based upon a lack of particularity and distinctness in the
claimed invention.
Appellant did not show that the Examiner erred in rejecting
independent claim 1 based upon anticipation.

DECISION
For the above reasons, the Examiner’s § 112, second paragraph
rejection of claims 1-17 is affirmed. The Examiner’s anticipation rejections
of claims 1-3, 5-10, 12-16, 18, and 19 are affirmed. The Examiner’s
obviousness rejection of claims 4, 11, 17, and 20 is affirmed.

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)(iv) (2009). See
37 C.F.R. § 41.50(f).

Appeal 2010-001249
Application 11/541,475
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AFFIRMED

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