Markus Dietl et al.

Patent Trials and Appeals Board

Aug 2, 2019

13931492 - (D) (P.T.A.B. Aug. 2, 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.
13/931,492 06/28/2013 Markus DIETL TI-73757 7460
23494 7590 08/02/2019
TEXAS INSTRUMENTS INCORPORATED
P O BOX 655474, M/S 3999
DALLAS, TX 75265
EXAMINER
KIM, JUNG H
ART UNIT PAPER NUMBER
2842
NOTIFICATION DATE DELIVERY MODE
08/02/2019 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 MARKUS DIETL, SOTIRIOS TAMBOURIS, ERICH BAYER,
AND MAURIZIO SKERLJ
Appeal 2018-008286
Application 13/931,492
Technology Center 2800
Before BRADLEY R. GARRIS, CATHERINE Q. TIMM, AND
JEFFREY R. SNAY, Administrative Patent Judges.
TIMM, 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 1–4 and 6–16 under 35 U.S.C. § 103 as

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Applicant is Texas Instruments Deutschland GmbH.
Appellant identifies the real party in interest as Texas Instruments
Incorporated. Appeal Br. 2.
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unpatentable over Feldbaumer2 in view of to Riccio3 and Lien4. Final Act. 4.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The claims are directed to a bus termination circuit (see, e.g., claim 9)
and an integrated circuit containing a bus termination circuit (see, e.g., claim
1). The Specification describes an example integrated circuit 100 containing
a bus termination circuit (termination switch 200). Spec. ¶¶ 18-20.
Integrated circuit 100 is shown in Figure 3, which is reproduced below:

Figure 3 is a circuit diagram of an
example termination switch 200 (Spec. ¶ 18).

We reproduce claim 1 with reference numerals from Figure 3 to
further illustrate the subject matter on appeal:

2 Feldbaumer, US 5,382,841, issued Jan. 17, 1995.
3 Riccio et al., US 2002/0014912, published Feb. 7, 2002.
4 Lien et al., US 7,102,862, issued Sept. 5, 2006.
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1. An integrated circuit [100], comprising:
a plurality of input pins [INPUT0–INPUTX] each to
receive a respective one of a plurality of input signals;
each of the plurality of input pins [INPUT0–INPUTX]
coupled to a common node [218] through a resistor [216];
a bus termination circuit [200] to provide a termination
voltage [Vcenter] at the common node [218] based on a
composite potential of input signals corresponding to a
distribution of “ls” and “0s” received at the input pins
[INPUT0-INPUTX], such that the termination voltage
[Vcenter] is
in a first operating condition, increased when the
composite potential of the input signals falls below a first
threshold voltage, and
in a second operating condition, decreased when the
composite potential of the input signals rises above a second
threshold voltage.
Appeal Br. 12 (claims appendix)(formatting added).

OPINION
Appellant states that claims 1 and 9 stand or fall together (Appeal Br.
5) and does not argue any of the dependent claims separately (Appeal Br. 5–
11). We select claim 1 as representative for resolving the issues on appeal.
The issue is whether Appellant has identified a reversible error in the
Examiner’s finding that the integrated circuit suggested by the combination
of Feldbaumer and Riccio includes a bus termination circuit that has the
structure required by claim 1. Compare Final Act. 5–7, and Ans. 4–7, with
Appeal Br. 7–10, and Reply Br. 2–10.
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Appellant has not identified such an error. For the reasons provided
by the Examiner in the Final Action and Answer, we sustain the rejection.
We add the following primarily for emphasis.
There is no dispute that Feldbaumer, as found by the Examiner,
discloses an integrated circuit including a plurality of input pins (Bus Output
1–Bus Output N) coupled to a common node 14 through resistors (resistors
30, 32, 38, 40, 44, 46). Compare Final Act. 3–4 (citing Feldbaumer Fig. 2),
with Appeal Br. 5–11. Nor is there any dispute that Feldbaumer teaches
using a voltage regulator 12 that provides a constant reference potential at
common node 14. Compare Final Act. 4–5, with Appeal Br. 7. The
Examiner’s conclusion of obviousness is based on the finding of a reason or
suggestion within the art to use the generation circuit 1 depicted in Riccio’s
Figure 1 in the voltage regulator 12 of Feldbaumer. Final Act. 5. Appellant
does not dispute the Examiner’s finding of a reason to make the
combination. Appeal Br. 5–11.
Below, we reproduce an annotated figure to show the circuit
suggested by the combination of Feldbaumer and Riccio:
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The annotated figure reproduces Feldbaumer’s Figure 2 with a callout on the
left including Riccio’s generation circuit 1 from Riccio’s Figure 1.

According to the Examiner, the Feldbaumer/Riccio circuit would
generate the termination voltage at common node 14 based on the composite
portion of input signals at Bus Output 1–Bus Output N. Final Act. 5; Ans. 3.
With regard to the further language within the bus termination circuit clause
of claim 1, the Examiner determines this language reflects an intended use of
the integrated circuit and does not structurally distinguish the claimed
integrated circuit from that suggested by the combination of Feldbaumer and
Riccio. Final Act. 5–6. The Examiner finds that the Feldbaumer/Riccio
circuit is capable of functioning according to the operating conditions recited
in claim 1. Id.
The Examiner’s analysis is supported by the law.
It has long been held that “apparatus claims cover what a device is,
not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909
F.2d 1464, 1468 (Fed. Cir. 1990). An inventor of a structure (machine or
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article of manufacture) is entitled to benefit from all of its uses, even those
not described, Roberts v. Ryer, 91 U.S. 150, 157 (1875), and conversely,
patentability of the structure cannot turn on the use or function of the
structure. In re Michlin, 256 F.2d 317, 320 (CCPA 1958) (“It is well settled
that patentability of apparatus claims must depend upon structural
limitations and not upon statements of function.”). Therefore, the courts
have devised a test: Structures such as machines and articles of manufacture
must be distinguished from the prior art on the basis of structure, and where
there is reason to believe that the structure of the prior art is inherently
capable of performing the claimed function, the burden shifts to the
applicant to show that the claimed function patentably distinguishes the
claimed structure from the prior art structure. See In re Schreiber, 128 F.3d
1473, 1478 (Fed. Cir. 1997); In re Hallman, 655 F.2d 212, 215 (CCPA
1981).
Appellant’s contentions that Riccio does not disclose controlling the
voltage as required by claim 1 does not address the Examiner’s finding that
Riccio’s structure is capable of controlling the voltage as required by the
functional recitations of claim 1. The Examiner provides a specific analysis
(Final Act. 6–7; Ans. 3). Appellant’s bare assertion that the voltage control
is not taught does not address the specific analysis advanced by the
Examiner.
Claim 1 defines the bus termination in terms of its function of
providing a termination voltage at the common node. This function is said
to be “based on a composite potential of input signals corresponding to a
distribution of ‘ls’ and ‘0s’ received at the input pins” (claim 1). According
to the Specification, a high voltage represents a “1” and a low voltage
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represents a “0”. Spec. ¶ 13. Claim 1 further defines the termination
voltage as having two operating conditions. We note that things like
voltages and signals are not structures. As stated in In re Nuijten:
A transitory signal made of electrical or electromagnetic
variances is not made of “parts” or “devices” in any mechanical
sense. While such a signal is physical and real, it does not
possess concrete structure in the sense implied by these
definitions. No part of the signal—the crests or troughs of the
electromagnetic wave, or perhaps the particles that make it up
(modern physics teaches that both features are present
simultaneously) is a mechanical “device” or “part.” A
propagating electromagnetic signal is not a “machine” as that
term is used in § 101.
In re Nuijten, 500 F.3d, 1346, 1355 (Fed. Cir. 2007).
Appellant has not persuaded us that the Examiner reversibly erred in
finding that the Feldbaumer/Riccio circuit has a structure meeting the
requirements of claim 1. Like Appellant’s regulator circuit, which is shown
in Appellant’s Figure 3, Riccio’s circuit contains inverters (INV2, INV3)
and transistors (M2, M3). Appellant’s Figure 3 is reproduced below:

Figure 3 is a circuit diagram of
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an example termination switch 200 (Spec. ¶ 18)

We note that Appellant’s claim 1 does not affirmatively recite
structures such as the inverters, transistors, or capacitor. In reproducing
claim 1 in the Appeal Brief and Reply Brief, Appellant inserts reference
numerals to the inverters, transistors, and capacitor, but Appellant has not
persuaded us that claim 1, in fact, requires any more structure than taught by
the combination of Feldbaumer and Riccio. Although Appellant contends
throughout the arguments that the structure is different, Appellant does not
explain what specific structure the claim requires that distinguishes the
claimed structure from the structure suggested by the combination of
Feldbaumer and Riccio.

DECISION
The Examiner’s rejection is affirmed.

Claims
Rejected
Basis  Affirmed Reversed
1–4 and 6–
16
§ 103  1–4 and 6–
16

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