SEMICONDUCTOR COMPONENTS INDUSTRIES, LLCDownload PDFPatent Trials and Appeals BoardDec 30, 20212020005649 (P.T.A.B. Dec. 30, 2021) Copy Citation 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.). Appeal 2020-005649 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 6 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– Appeal 2020-005649 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 Appeal 2020-005649 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 Copy with citationCopy as parenthetical citation