SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC

Patent Trials and Appeals Board

Dec 30, 2021

2020005649 (P.T.A.B. Dec. 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.
15/957,153 04/19/2018 Richard Scott BURTON ONS02180C01US 7595
142229 7590 12/30/2021
SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC (RS)
5005 E. MCDOWELL ROAD, Maildrop A700
PHOENIX, AZ 85008
EXAMINER
CADEAU, WEDNEL
ART UNIT PAPER NUMBER
2632
NOTIFICATION DATE DELIVERY MODE
12/30/2021 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):
PATENTS@ONSEMI.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD SCOTT BURTON and KAREL PTACEK

Appeal 2020-005649
Application 15/957,153
Technology Center 2600

Before JAMES R. HUGHES, JENNIFER L. McKEOWN, and
BETH Z. SHAW, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Claims 1–19 are pending, stand rejected, are appealed by Appellant,
and are the subject of our decision under 35 U.S.C. § 134(a).1 See Final Act.
1; Appeal Br. 3.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Semiconductor
Components Industries, LLC. Appeal Br. 3.
2 We refer to Appellant’s Specification (“Spec.”), filed Apr. 19, 2018
(claiming benefit of US 15/296,627, filed Oct. 18, 2016 and US 15/296,660,
filed Oct. 18, 2016); Appeal Brief (“Appeal Br.”), filed Mar. 30, 2020; and
Reply Brief (“Reply Br.”), filed July 28, 2020. We also refer to the
Appeal 2020-005649
Application 15/957,153
2
CLAIMED SUBJECT MATTER
The claimed subject matter, according to Appellant, generally relates
to an integrated circuit design that “segregate[s] device components into
different modules” to “reduce fabrication costs and improve system
performance.” Spec. ¶ 2. More specifically, Appellant’s claims are directed
to integrated circuits, systems, and a method for galvanically isolated
signaling. That is, isolating sections of electrical circuits to prevent current
flow among the isolated sections. Appellant’s galvanically isolated system
includes a first integrated circuit having a transmitter that produces a
modulated carrier signal on a primary conductor, a first transfer conductor
connected to a first connection terminal, and a first floating loop that is
resonant at a carrier frequency of the modulated carrier signal and is
electromagnetically coupled to the primary conductor and the transfer
conductor. The first integrated circuit conveys the modulated carrier signal
from the primary conductor to the transfer conductor. Appellant’s
galvanically isolated system also includes a second integrated circuit having
a second transfer conductor connected to a second connection terminal,
which is electrically connected to the first connection terminal, a receiver
that demodulates the modulated carrier signal, and a second floating loop
that is also resonant at the carrier frequency and is electromagnetically
coupled to the second transfer conductor and the receiver to convey the
modulated carrier signal from the second transfer conductor to the receiver.
See claim 1 (Appeal Br. 14 (Claims App.)); Spec. ¶¶ 4–7; Abstr. Claim 1
(directed to a system), claim 8 (directed to method), and claim 14 (directed

Examiner’s Final Office Action (“Final Act.”), mailed Sept. 6, 2019; and
Answer (“Ans.”) mailed June 18, 2020.
Appeal 2020-005649
Application 15/957,153
3
to an integrated circuit) are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A system for galvanically isolated signaling,
comprising:
a first integrated circuit including:
a transmitter that modulates a carrier signal having
a carrier frequency to produce a modulated carrier signal on a
primary conductor;
a first transfer conductor connected to a first
connection terminal; and
a first floating loop electromagnetically coupled to
the primary conductor and electromagnetically coupled to the
transfer conductor to convey the modulated carrier signal from
the primary conductor to the transfer conductor,
wherein the first floating loop is resonant at the carrier
frequency; and
a second integrated circuit including:
a second transfer conductor connected to a second
connection terminal, the second connection terminal being
electrically connected to the first connection terminal;
a receiver that demodulates the modulated carrier
signal; and
a second floating loop electromagnetically coupled
to the second transfer conductor and electromagnetic coupled to
the receiver to convey the modulated carrier signal from the
second transfer conductor to the receiver,
wherein the second floating loop is resonant at the carrier
frequency.
Appeal Br. 14 (Claims App.).
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Application 15/957,153
4
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Canipe US 5,786,763 July 28, 1998
Dean et al. (“Dean”) US 5,841,621 Nov. 24, 1998
Dupuis US 2005/0269657 A1 Dec. 8, 2005
Ichikawa et al.
(“Ichikawa”)
US 2014/0285029 A1 Sept. 25, 2014

REJECTION3
The Examiner rejects claims 1–19 under 35 U.S.C. § 103 as being
unpatentable over Dupuis, Ichikawa, and Dean. See Final Act. 6–12.
ANALYSIS
Appellant argues independent claim 1, independent claim 14, and
dependent claims 2–5, 7, 15, and 17–19 together as a group. See Appeal Br.
10–12. Appellant does provide nominal separate arguments with respect to
independent claim 8 and argues independent claim 8 and dependent claims
6, 9–13, and 16 together as a group. See Appeal Br. 12–13. We select
independent claim 1 as representative of Appellant’s arguments with respect
to claims 1–5, 7, 14, 15, and 17–19. We select independent claim 8 as
representative of Appellant’s arguments with respect to claims 6, 8–13, and
16. 37 C.F.R. § 41.37(c)(1)(iv) (2019).

3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284 (2011), amended 35 U.S.C. § 103. Because the present application
has an effective filing after the AIA’s effective date (March 16, 2013), this
decision refers to 35 U.S.C. § 103.
Appeal 2020-005649
Application 15/957,153
5
Obviousness Rejection of Claims 1–5, 7, 14, 15, and 17–19
The Examiner rejects independent claim 1 (as well as independent
claim 14 and dependent claims 2–5, 7, 15, and 17–19) as obvious in view of
Dupuis, Ichikawa, and Dean. See Final Act. 5–8; Ans. 3–7. Specifically,
the Examiner finds that each of the references teach galvanic isolation (Final
Act. 6) and Dupuis teaches the majority of features of claim 1 except for the
specific manner of resonant electromagnetic coupling. See Final Act. 7
(citing Dupuis ¶¶ 7, 64 83; Figs. 6, 16–16c, 17b, 23). The Examiner relies
on Ichikawa for teaching “resonators” (for increased efficiency (i.e.,
resonant loops)) such that it would have been obvious to include “a floating
loop electromagnetically coupled to the primary conductor and
electromagnetically coupled to the transfer conductor on both side[s] of the
conductor (at 1614 for example [(see Dupuis Fig. 16a–16c)]) in order to
provide isolation while allowing efficient power transfer and
communication.” Final Act. 8 (citing Ichikawa ¶¶ 4, 12; Fig. 6). The
Examiner relies on Dean to teach a “[c]arrier isolation network 16 . . .
forming a parallel resonant circuit wherein the resonance frequency would
be set to the carrier frequency (Dean col. 2 lines 33-54, fig. 1 element 16).”
Final Act. 8 (citing Dean col. 2, ll. 33–54; Fig. 1). See Ans. 3–7.
In the Answer, the Examiner explains that it is well-known to use
floating loops for non-contact energy transfer such as communication
signaling and that antennas “are commonly built using such transfer loop[s]
to pass wireless signal[s] from one side to the other.” “See for example
Canipe (US 5786763), where floating loops made using inductors (coil[s])
and capacitors are used as a non-contact antenna[] to receive [a] wireless
signal and transfer the signal to receiver or to transmit [the] signal.” Thus,
“the floating loop of Ichikawa can be used in the system of Dupuis without
Appeal 2020-005649
Application 15/957,153
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undue burden to one or ordinary skill in the art.” Ans. 6 (citing Canipe,
generally); see Ans. 3–7.
Appellant contends that Dupuis, Ichikawa, and Dean do not render
claim 1 (or the other pending claims) obvious. See Appeal Br. 10–12; Reply
Br. 1–2. Specifically, Appellant contends that Dupuis, Ichikawa, and Dean
are not properly combinable and that “no motivation can be found in the
cited art to combine the references in the proposed manner, and the office’s
proposed reasoning is inadequate.” Appeal Br. 10. More specifically,
Appellant contends Ichikawa uses loops for power transfer, “Dupuis is
directed to on-chip signaling,” and that Dean “is intended to block a carrier
signal,” and “Dean is not combinable with Dupuis or Ichikawa in the
proposed fashion.” Appeal Br. 10–11. In the Reply Brief, Appellant
reiterates these arguments and contends “a PHOSITA would not be
motivated to adopt the resonance characteristics of Ichikawa or Canipe (or of
Dupuis for previously-provided reasons).” Reply Br. 2.
Appellant’s arguments do not persuade us that the Examiner erred.
We disagree with Appellant’s arguments, find the Examiner has provided a
rationale for combining the references, and we provide the following
analysis for emphasis. Initially, we note that Appellant does not explicitly
dispute the Examiner’s fact-finding with respect to the references. Appellant
does not contend that the features the Examiner finds in the prior art are not
in-fact disclosed therein. Instead, Appellant contends that one would not
have combined the references. See Appeal Br. 10–12; Reply Br. 1–2.
With respect to Appellant’s contentions disputing the Examiner’s
combination, Appellant contends that the references themselves do not
include a teaching or suggestion to combine the references to produce
resonant electromagnetic coupling as recited in claim 1. See Appeal Br. 10–
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Application 15/957,153
7
12; Reply Br. 1–2. But the Supreme Court has rejected such a narrow
inquiry in determining obviousness. See KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 419 (2007) (“The obviousness analysis cannot be confined by a
formalistic conception of the words teaching, suggestion, and motivation, or
by overemphasis on the importance of published articles and the explicit
content of issued patents.”). Rather, “the analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claims, for
a court can take account of the interferences and creative steps that a person
of ordinary skill in the art would employ.” Id. at 418.
It is well settled that “a determination of obviousness based on
teachings from multiple references does not require an actual, physical
substitution of elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir.
2012) (citations omitted). Nor is the test for obviousness whether a
secondary reference’s features can be bodily incorporated into the structure
of the primary reference. See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
As to Appellant’s arguments to the sufficiency of the Examiner’s
rationale for the combination, a rejection based on obviousness need only be
supported by “some articulated reasoning with some rational underpinning”
to combine known elements in the manner required by the claim. KSR, 550
U.S. at 418.
Here the Examiner finds that each of the cited references (Dupuis,
Ichikawa, Dean, and also Canipe) describe galvanic isolation, Dupuis
teaches signaling using loops and is not strictly directed to on-chip signaling.
(see Final Act. 6–7; Ans. 3–6), Ichikawa further teaches resonant loops for
energy (power) transfer (see Final Act. 7–8; Ans. 5–7), Dean also teaches
resonant loops, including a parallel resonant circuit where the resonance
frequency is a carrier frequency (see Final Act. 7–8; Ans. 6–7), and Canipe
Appeal 2020-005649
Application 15/957,153
8
teaches floating loops used in digital communications (see Ans. 6–7). The
Examiner determines that galvanic isolation and energy transfer using
resonant floating loops are well-known techniques that one of ordinary skill
in the art could have used with Dupuis’ circuits to provide the recited
features of claim 1—“transfer loops in cascade provide isolation while
allowing efficient energy transfer that includes power signal[s] and RF or
communication signal[s] since communication signals and power signals are
energy signal[s].” “Therefore, the same technique can be used for signal
communication transfer as it is well-known in the art and [taught] by
Dupuis. Ichikawa was cited to show that the loops can be cascaded and
Dean” as well as Canipe were cited “to show that the floating loop can be
made to resonant at a particular frequency such as carrier frequency.” Ans.
7.
We agree with the Examiner that it would have been within the skill
of one of ordinary skill in the art to combine such known techniques
(signaling using floating resonant loops), as taught by Ichikawa, Dean, and
Canipe, with the integrated circuits taught by Dupuis (an “integrated circuit
having a transformer for isolating signaling via [a] connection terminal or
connection to each die” (Final Act. 6) (italics omitted)). See KSR, 550 U.S.
at 417 (“[I]f a technique has been used to improve one device, and a person
of ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill”). Appellant has not presented
evidence sufficient to persuade us that combining the respective familiar
elements of the cited references in the manner proffered by the Examiner
would have been “uniquely challenging or difficult for one of ordinary skill
in the art” at the time of Appellant’s invention. Leapfrog Enters., Inc. v.
Appeal 2020-005649
Application 15/957,153
9
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418).
Thus, we are not persuaded that the Examiner erred in combining the
cited teachings of Dupuis with those of Ichikawa, Dean, and also Canipe.
The Examiner provided “articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006). Appellant has not identified any
knowledge relied upon by the Examiner that was gleaned only from
Appellant’s disclosure and that was not otherwise within the level of
ordinary skill in the art at the time of invention. See In re McLaughlin, 443
F.2d 1392, 1395 (CCPA 1971). Nor has Appellant provided objective
evidence of secondary considerations, which “operates as a beneficial check
on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys., Inc.,
725 F.3d 1341, 1352 (Fed. Cir. 2013). Accordingly, we sustain the
Examiner’s obviousness rejection of independent claim 1, independent claim
14 and dependent claims 2–5, 7, 15, and 17–19 not separately argued with
particularity. See 37 C.F.R. § 41.37(c)(1)(iv).
Obviousness Rejection of Claims 6, 8–13, and 16
The Examiner rejects independent claim 8 and dependent claims 6
(dependent on claim 1), 9–13 (dependent on claim 8), and 16 (dependent on
claim 14) as obvious in view of Dupuis, Ichikawa, and Dean. See Final Act.
6, 9–12. Although Appellant separately argues independent claim 8,
Appellant presents substantially the same arguments as for claim 1—that the
cited references are not properly combinable. See Appeal Br. 12–13. Thus,
we are not persuaded of error in the Examiner’s obviousness rejection of
independent claim 8 and dependent claims 6, 9–13, and 16 for the same
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Application 15/957,153
10
reasons set forth with respect to claim 1 (supra). Therefore, we sustain the
Examiner’s obviousness rejection of claims 6, 8–13, and 16.
CONCLUSION
Appellant has not shown that the Examiner erred in rejecting claims
1–19 under 35 U.S.C. § 103 as obvious in view of Dupuis, Ichikawa, and
Dean (and Canipe). We, therefore, affirm the Examiner’s rejection of claims
1–19.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–19 103 Dupuis, Ichikawa,
Dean
1–19

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). See 37
C.F.R. § 41.50(f).
AFFIRMED