MLC INTELLECTUAL PROPERTY , LLC (ASSIGNEE) et al.

Patent Trials and Appeals Board

Mar 1, 2021

2020005915 (P.T.A.B. Mar. 1, 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.
90/014,245 12/18/2018 5764571 4293
37086 7590 03/01/2021
POLSINELLI PC
(NDQ REEXAMINATION GROUP)
1000 LOUISIANA STREET
Suite 6400
HOUSTON, TX 77002
EXAMINER
LEE, CHRISTOPHER E
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
03/01/2021 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MLC INTELLECTUAL PROPERTY, LLC
Patent Owner and Appellant
____________

Appeal 2020-005915
Reexamination Control No. 90/014,245
United States Patent 5,764,571
Technology Center 3900
____________

Before ALLEN R. MacDONALD, JOHN A. JEFFERY, and
KEVIN F. TURNER, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

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Appellant requests rehearing of our decision dated November 2, 2020
(“Dec.”), where we affirmed the Examiner’s decision to reject claims 1, 9,
12, 30, 42, and 45 as obvious over Kitamura and Noguchi1 in the above-
identified ex parte reexamination. Request for Rehearing filed January 4,
2021 (“Req. Reh’g”). For the reasons noted below, we grant Appellant’s
request to rehear our decision only to the extent that we (1) designate our
affirmance as a new ground of rejection; (2) enter the Supplemental
Declaration from Dr. Jack Lee2 submitted with the rehearing request; and (3)
modify our decision solely to address Appellant’s newly-raised arguments
based on that newly-submitted declaration as indicated below.
All other aspects of our earlier opinion, however, remain the same.
Rather than repeat that detailed analysis here, we incorporate it in this
decision, along with all other aspects of our earlier opinion. See 37 C.F.R.
§ 41.52(a) (noting that the Board’s decision on the request for rehearing
incorporates the earlier opinion reflecting its decision except for those
portions specifically withdrawn).
In the Request, Appellant contends, among other things, that our
reliance on Dr. Liu’s testimony that ordinarily skilled artisans would have
understood uniformity between Kitamura’s circuits 10 and 13 can be
achieved by sharing a reference voltage supply, namely by replacing
Kitamura’s single reference voltage supply and voltage dividing element
with four separate voltage supply circuits, is ostensibly meritless. Req.

1 Because these references are cited in full on page 3 of our earlier decision,
we omit their full citations here for brevity.
2 Supplemental Expert Declaration of Dr. Jack Lee In Support of Patent
Owner’s Request for Rehearing, dated Jan. 3, 2021 (“Supp. Lee Decl.”).
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Reh’g 6. According to Appellant, Dr. Liu’s testimony pertains to a circuit of
his own design, and lacks explanation or analysis as to how or why
ordinarily skilled artisans would have created this circuit, let alone
reasonably expected its success in achieving the desired uniformity. Id. at
6–8. Appellant further contends that ordinarily skilled artisans would not
share four separate reference supply voltages because, among other things,
Dr. Liu’s proposed modification is ostensibly inconsistent with the normal
operation of analog-to-digital (A/D) and digital-to-analog (D/A) converters,
including those of Kitamura that use a single reference voltage supply. Id. at
8–9. According to Appellant, ordinarily skilled artisans would not know of
a feasible way to replace the single reference voltage supply in Kitamura’s
A/D circuit 13 with four separate reference voltage supplies, let alone do so
in a way that preserves uniformity. Id. Appellant adds that not only would
any attempt to share four separate reference voltages eliminate shared
circuitry, including the shared voltage dividing element needed to maintain
Kitamura’s operating margin between verification and reading in Kitamura’s
memory cell, but doing so would increase the system’s complexity to obtain
inferior results. Id. at 9–10.
These contentions are unavailing. We reach this conclusion despite
Dr. Lee’s view that ordinarily skilled artisans would be unaware of a way to
replace the single reference voltage supply in Kitamura’s circuit 13 with four
separate reference voltage supplies, much less do so in a way that preserves
uniformity between Kitamura’s circuits 10 and 13. Supp. Lee Decl. ¶¶ 28–
30. Although we appreciate Dr. Lee’s insights in this regard, his testimony
merely disagrees with Dr. Liu’s countervailing views in this regard. Apart
from Dr. Lee’s disagreement with Dr. Liu, there is no persuasive evidence
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on this record to corroborate Dr. Lee’s views, let alone discredit Dr. Liu’s
countervailing opinion. On this record, then, we find no persuasive basis to
credit Dr. Lee’s testimony over that of Dr. Liu. Accordingly, we remain
persuaded by Dr. Liu’s testimony despite Dr. Lee’s contrary averments in
his supplemental declaration.
Lastly, although Appellant contends that substitution or bodily
incorporating references is ostensibly not at issue here (Req. Reh’g 4 n.4),
the fact remains that the propriety of the Examiner’s obviousness rejection is
not based on whether Noguchi’s features can be bodily incorporated into
Kitamura’s structure, but rather what the combined teachings of the
references would have suggested to those of ordinary skill in the art. See In
re Keller, 642 F.2d 413, 425 (CCPA 1981). Accord Dec. 15 (noting this
point).
Furthermore, as we emphasized on pages 15 and 16 of our earlier
opinion, obviousness determinations based on teachings from multiple
references, as is the case here, do not require an actual, physical substitution
of elements. See In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012).
Rather, obviousness is based on what the cited references’ collective
teachings would have suggested to ordinarily skilled artisans. See id. To the
extent Appellant considers this fundamental obviousness principle is
somehow inapplicable to the Examiner’s obviousness rejection because the
rejection is ostensibly limited to substituting one circuit for another,3 we

3 See Req. Reh’g 4 n.4; see also Oral Hearing Transcript filed Nov. 5, 2020,
at 13:8–14 (acknowledging that bodily incorporation is not the test for
obviousness, but nonetheless contending that because the Examiner doesn’t
go beyond the phrase “a simple substitution,” or explain any other changes
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disagree. Nevertheless, to the extent that the Examiner’s articulated basis
for the rejection and Answer somehow ignores or otherwise discounts this
fundamental obviousness principle, we nonetheless reiterate it here as an
independent basis for obviousness as part of our new ground of rejection.
For the foregoing reasons, then, we maintain our affirmance of the
Examiner’s obviousness rejection for the reasons noted above and in our
earlier opinion, but designate our affirmance as a new ground of rejection.
We, therefore, grant Appellant’s request to rehear our decision of November
2, 2020 only to the extent that we (1) designate our affirmance as a new
ground of rejection; (2) enter the Supplemental Declaration from Dr. Jack
Lee submitted with the rehearing request; and (3) modify our decision solely
to address Appellant’s newly-raised arguments based on that newly-
submitted declaration as indicated above. All other aspects of our earlier
opinion, however, remain the same.

CONCLUSION
Outcome of Decision on Rehearing:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Denied Granted New
Ground
1, 9, 12,
30, 42, 45
103 Kitamura,
Noguchi
1, 9, 12,
30, 42, 45
1, 9, 12,
30, 42, 45

or modifications being made, “it’s hard to interpret the examiner’s argument
as anything other than a suggestion of bodily incorporation in this
instance”).
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Final Outcome of Appeal after Rehearing:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed New
Ground
1, 9, 12,
30, 42, 45
103 Kitamura,
Noguchi
1, 9, 12,
30, 42, 45
1, 9, 12,
30, 42, 45

TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection under 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .
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).

GRANTED; 37 C.F.R. § 41.50(b)

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Patent Owner:

POLSINELLI PC
(NDQ REEXAMINATION GROUP)
1000 LOUISIANA STREET
Suite 6400
HOUSTON, TX 77002

Third Party Requester:

SMITH BALUCH LLP
376 Boylston St.
Ste. 401
Boston, MA