DENSO CORPORATION

Patent Trials and Appeals Board

Nov 18, 2020

2020002945 (P.T.A.B. Nov. 18, 2020)

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.
15/954,904 04/17/2018 Akifumi ARARAGI 180919 1819
25944 7590 11/18/2020
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
EXAMINER
KIM, JUNG H
ART UNIT PAPER NUMBER
2842
NOTIFICATION DATE DELIVERY MODE
11/18/2020 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):
OfficeAction25944@oliff.com
jarmstrong@oliff.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AKIFUMI ARARAGI
____________

Appeal 2020-002945
Application 15/954,904
Technology Center 2800
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–3, which are all the claims on appeal. Claims 4,
5, and 7 are withdrawn. Claim 6 is objected to as being dependent upon a
rejected base claim. See Final Act. 6. The Examiner indicates that claim 6
would be allowable if rewritten in independent form including all of the
limitations of the base claim and any intervening claims. Id. We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b). An oral hearing
was conducted on November 4, 2020.
We reverse.

1 The real party in interest is DENSO CORPORATION. Appeal Br. 1. We
use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42.
Appeal 2020-002945
Application 15/954,904

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STATEMENT OF THE CASE
Introduction
Appellant’s invention “relates to drive circuits for switches.” Spec. ¶
3.
Independent Claim 1
1. A drive circuit that drives a switch, the switch having a
first terminal, a second terminal and a control terminal,
the switch being configured to be turned to an ON state
when a potential difference of the control terminal with
respect to the second terminal becomes higher than or
equal to an ON threshold voltage and turned to an OFF
state when the potential difference becomes lower than
an OFF threshold voltage, the switch allowing electric
current to flow from the first terminal to the second
terminal in the ON state and blocking electric current
from flowing from the first terminal to the second
terminal in the OFF state, the drive circuit comprising:

a discharge path provided to connect the control terminal
and the second terminal of the switch and discharge
electric charge from the control terminal;

a capacitor provided in the discharge path and having a
high-potential terminal connected to the second terminal
side and a low-potential terminal connected to the
control terminal side;

an AC suppressor configured to suppress an AC
component of electric current, the AC suppressor having
a first end and a second end, the first end being
connected to a part of the discharge path between the
high-potential terminal of the capacitor and the second
terminal of the switch; and

a DC voltage generator that generates a reference DC
voltage, the DC voltage generator having a connection
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terminal connected to the second end of the AC
suppressor, the DC voltage generator being configured to
regulate electric current flowing between the connection
terminal and the AC suppressor so as to keep a potential
of the part of the discharge path between the high-
potential terminal of the capacitor and the second
terminal of the switch higher than a potential of the low-
potential terminal of the capacitor.

Claim 1, Claims Appendix, Appeal Br. A-1. (Disputed “capacitor”
limitation emphasized.)

Evidence
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Domingo et al.
(“Domingo”)
US 2013/0278300 A1 Oct. 24, 2013

Rejection
Claims 1–3 are rejected under 35 U.S.C. § 102(a)(1) as being
anticipated by Domingo. See Final Act. 3.

Issue on Appeal
Did the Examiner err in rejecting claims 1–3 under 35 U.S.C.
§ 102(a)(1) as being anticipated by Domingo?
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ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. 2 Based upon the record before us, we find a preponderance of
the evidence supports Appellant’s arguments for essentially the same
reasons as articulated in the Briefs. We highlight and address specific
findings and arguments for emphasis in our analysis below.
Throughout this Decision we refer to Appellant’s Specification as
published on October 25, 2018, as U.S. Patent Pub. No. US 2018/0309429
A1. We refer to paragraphs of Appellant’s Patent Application Publication
for convenience, because Appellant’s Specification, as originally filed, has
no numbered paragraphs.
Rejection of Independent Claim 1 Under 35 U.S.C. § 102(a)(1)
Under 35 U.S.C. § 102(a)(1), we focus our analysis on the argued
limitation of a “capacitor provided in the discharge path,” as recited in
independent claim 1.

Issue: Did the Examiner err by finding Domingo expressly or
inherently discloses the disputed, dispositive capacitor, arranged as claimed?
a capacitor provided in the discharge path and having a high-
potential terminal connected to the second terminal side and a
low-potential terminal connected to the control terminal side;
Claim 1 (emphasis added).

2 Throughout this opinion we give the contested claim limitations the
broadest reasonable interpretation consistent with the Specification. See In
re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
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Regarding the capacitor recited in claim 1, the Examiner finds
Domingo’s Figure 4 discloses:
a capacitor (e.g., C3) provided in the discharge path and
having a high-potential terminal (e.g., the junction between R3
and C3) connected to the second terminal side (e.g., the
junction between C3 and R3 is coupled to S of 210b indirectly
via R5) and a low-potential terminal (e.g., the junction between
C3 and D2) connected to the control terminal side (e.g., via 03
when 03 is on).
Final Act. 3.
We reproduce Domingo’s Figure 4 below, depicting capacitor C3:

As reproduced above, Figure 4 of Domingo illustrates a
schematic of a high-side Metal-Oxide-Semiconductor Field-
Effect Transistor (MOSFET) switch system designed to prevent
“a large current flowing from the power supply to the capacitive
load for a short time after the connection is made.” Domingo
¶ 12.
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We also reproduce Appellant’s Figure 2 below, depicting capacitor Cs
44, which provides the written description support for the disputed capacitor
limitation of claim 1:

As depicted above, Appellant’s Figure 4 is a graphical
representation illustrating the relationship between the
resistance Rs of a limiting resistor, the resistance Rp of a pull-
down resistor, a source voltage Vs and loss occurring in an
operational amplifier in the drive circuit according to the first
embodiment.

Regarding independent claim 1, Appellant contends:
“Domingo fails to disclose ‘a capacitor . . . having a high-potential terminal
connected to the second terminal side [of the switch] and a low-potential
terminal connected to the control terminal side [of the switch].’”
Appeal Br. 5.
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In support, Appellant argues that capacitor C3 in Domingo is:
connected to circuit 220 in the opposite manner, with the high-
potential terminal connected to the control terminal side and the
low-potential terminal connected to the second terminal side.
As can be seen in Fig. 4, C3 is oriented such that its upper
terminal is oriented more closely to the DC power supply 204
than the lower terminal of C3, making it the high potential
terminal. The upper terminal is also more closely orientated to
gate G of switch 210b than the lower terminal of C3, and the
lower terminal of C3 is directly connected to the source of
switch 210b. This is the opposite configuration from what is
claimed. Thus, the Final Rejection’s assertion that capacitor C3
in Fig. 4 is connected in the claimed manner is improper.
Appeal Br. 5–6.
Appellant further explains:
By contrast, Fig. 2 of the present application (shown
below) shows an example of “a capacitor . . . having a high-
potential terminal connected to the second terminal side [of the
switch] and a low-potential terminal connected to the control
terminal side [of the switch]” as recited in claim 1. As can be
seen in Fig. 2, the capacitor 44 has a high-potential terminal
(+) connected directly to the second terminal (source) of switch
SW via line 45. The low-potential terminal (-) of capacitor 44 is
connected via transistor 52 and resistor 42 to the control
terminal (gate) of switch SW.
Appeal Br. 6.
Appellant clarifies that the “[s]ource and gate of switch SW are
identified as second and control terminals, respectively, on page 7, lines 21-
24 of the original specification.” Appeal Br. 6, footnote 1.
The Examiner disagrees with Appellant, and further explains the basis
for the rejection. The Examiner finds that Appellant’s Specification
supports an interpretation that “according to Fig. 2, the low-potential
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terminal (-) of capacitor Cs, corresponding to the claimed capacitor, is
connected to the control terminal side of SW, corresponding to the claimed
control terminal side, indirectly via 52 and 42.” Ans. 5. The Examiner
asserts that Appellant admits that the word “connection” is interpreted to
include indirect connections. Id. (citing Appeal Br. 6, last three lines).
A determination that a claim is anticipated under 35 U.S.C. § 102(b)
involves two analytical steps. First, we must interpret the claim language,
where necessary. Because the PTO is entitled to give claims their broadest
reasonable interpretation, a court’s review of the Board’s claim construction
is limited to determining whether it was reasonable. Morris, 127 F.3d at
1055. Secondly, the Board must compare the properly construed claim to a
prior art reference and make factual findings that “each and every limitation
is found either expressly or inherently in [that] single prior art reference.”
In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004). Anticipation of a patent
claim requires a finding that the claim at issue “reads on” a prior art
reference. See Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed
Cir. 1999).
As applicable to apparatus claim 1 before us on appeal, “[a]nticipation
requires the presence in a single prior art reference disclosure of each and
every element of the claimed invention, arranged as in the claim.”
Lindemann Maschinenfabrik GmbH v. Am. Hoist & Derrick Co., 730 F.2d
1452, 1458 (Fed. Cir. 1984) (citation omitted) (emphasis added).
We begin our analysis by noting that Appellant specifically argues the
polarity of supporting capacitor 44, as depicted in Figure 2 of Appellant’s
drawings:
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As can be seen in Fig. 2, the capacitor 44 has a high-potential
terminal (+) connected directly to the second terminal (source)
of switch SW via line 45. The low-potential terminal (-) of
capacitor 44 is connected via transistor 52 and resistor 42 to the
control terminal (gate) of switch SW.
Appeal Br. 6.
As is known in the art, such polarized capacitors are electrolytic
capacitors, which have two polarized terminals designated by (+) and (–),
respectively. The Examiner reads the capacitor recited in claim 1 on
Domingo’s capacitor C3, as depicted in Figure 4.
However, we note that Domingo’s capacitor C3 is not shown in
Figure 4 as a polarized capacitor, because the (+) and (–) terminal
designations are absent from the schematic diagram representation of
capacitor C3, as depicted in Figure 4. For at least this reason, we find that
capacitor C3, as shown in Domingo’s Figure 4, is not an anticipatory
structure to the capacitor recited in claim 1.
To the extent that the “high-potential” and “low-potential” terminals
of the capacitor recited in claim 1 may be interpreted under BRI as not
limiting the capacitor to being a polarized (electrolytic) capacitor (i.e.,
having two terminals designated by (+) and (–)), we additionally find that
the Examiner has not shown that Domingo’s capacitor C3 is connected in
the circuit shown in Domingo’s Figure 4, in a manner that is arranged as
claimed. We note claim 1 requires a specific arrangement of the capacitor
within the recited drive circuit:
a capacitor provided in the discharge path and having a
high-potential terminal connected to the second terminal
side and a low-potential terminal connected to the
control terminal side.
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Claim 1 (emphasis added).
To the extent that the “high-potential terminal connected to the second
terminal side and a low-potential terminal connected to the control terminal
side” (claim 1) are construed under a broad but reasonable interpretation as
referring to high and low potential voltages, we note that such potential
voltages only exist between identified points (e.g., the respective high-
potential or low-potential terminals of Domingo’s capacitor C3), as
measured with respect to some reference point, typically an electrical circuit
ground, or to some other defined point in the circuit.
On this record, we find the Examiner has not established that either of
the two ground reference points (as depicted directly under Microcontroller
250, and resistor R7, respectively in Domingo’s Figure 4) is the ground
reference point with respect to the high and low potential voltages the
Examiner finds are disclosed by Domingo at the top terminal of Domingo’s
capacitor C3, and at the bottom terminal of capacitor C3, respectively.
Because the bottom terminal of capacitor C3 is not depicted as being
directly connected to a ground reference point, we find that to affirm the
Examiner on this record would require some degree of speculation on our
part regarding any potential voltages that may exist at either the top or
bottom terminals of capacitor C3 (with respect to the circuit ground or any
other defined reference point in the circuit), and we emphasize that during
the operation of Domingo’s electrical circuit such voltages will change over
time. We decline to engage in speculation in the anticipation rejection.
To the extent that the Examiner finds the upper terminal of
Domingo’s capacitor C3 is at a high-potential voltage because of its closer
proximity in the circuit to Vcc (i.e., in which Vcc is the DC power supply
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positive voltage as shown in Figure 4 at two points), we do not find any
express or inherent description in Domingo regarding specific voltage levels
that satisfies the rigorous requirements of anticipation. In this regard, the
Examiner has not fully developed the record by providing objective
evidence to support the Examiner’s finding of anticipation.
Regarding the arrangement of the capacitor in the drive circuit of
claim 1, we emphasize that claim 1 requires the disputed capacitor to be
“provided in the discharge path.” We construe the “discharge path” of
claim 1 as any path in which the charge accumulation that occurs at the gate
of MOSFET switch SW (as represented by the charge accumulation
temporarily stored by (dotted line) capacitors 21 and 22, as shown in
Appellant’s Figure 2) is discharged, so as to prevent false triggering of
MOSFET switch SW. Based upon our review of the record, we find a
preponderance of the evidence supports Appellant’s responsive argument in
the Reply Brief:
C3 in Domingo does not act as a discharge path for the
gate of 210b because it is charged and discharged in tangent
with 210b during operation. This is explained in the Appeal
Brief on pages 8 and 9. The existence of some leakage of
current through C3 is not material because such leakage is C3
discharging itself, not gate 210b. Unlike the circuit shown in
e.g. Fig. 2 of the present application, C3 is not oriented to
accept current from the gate of 210b, and cannot be used to
discharge the gate of 210b. C3 is not oriented such that its low
potential terminal is connected to the gate, for the reasons set
forth on pages 5-8 of the Appeal Brief. Thus, it does not accept
charge from the gate of 210b. Instead, both the gate 210b and
C3 simultaneously accept charge when a high voltage is applied
to the line they are connected to.
Reply Br. 5.
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We also note that paragraph 33 of Appellant’s Specification defines
the respective claimed control terminal, first terminal, and second terminal:
“for each of the switches SW of the inverter 20, the gate of the switch SW
corresponds to a control terminal (or ON/OFF control terminal); the drain
of the switch SW corresponds to a first terminal; and the source of the
switch SW corresponds to [the] second terminal.” Spec. ¶ 33 (emphasis
added). See Appeal Br. 6, footnote 1.
Based upon our review of the record, we find a preponderance of the
evidence also supports Appellant’s argument that the claimed arrangement
of the disputed capacitor element of claim 1 is not found in Domingo’s
Figure 4 circuit:
Fig. 2 of the present application and Fig. 4 of Domingo show
capacitors having the exact opposite connection orientation
with respect to the switches in their respective circuits. For this
reason, the Final Rejection’s assertion that Domingo discloses
“a capacitor . . . having a high-potential terminal connected to
the second terminal side and a low-potential terminal connected
to the control terminal side” is improper.
Appeal Br. 8.
The Examiner reads the claimed “capacitor provided in the discharge
path” . . . “having a high-potential terminal connected to the second
terminal side” (of the switch), on Domingo’s capacitor C3, as shown in
Figure 4. Claim 1 (emphases added). See Final Act. 3. But we note that the
top (“high potential terminal” as found by the Examiner) of capacitor C3 is
shown in Domingo’s Figure 4 as connected indirectly through resistor R3 to
the gate of MOSFET switch 210b.
As noted above, Appellant defines the gate of switch SW in
paragraph 33 of the Specification as corresponding to the control terminal,
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not the second terminal (“the gate of the switch SW corresponds to a control
terminal.”). We emphasize that the “second terminal” of claim 1 is defined
in paragraph 33 of the Specification as corresponding to the source of
MOSFET switch SW (“the source of the switch SW corresponds to a second
terminal.”). See Appeal Br. 6, footnote 1.
Therefore, it is our view that the Examiner has erred in finding that
capacitor C3, as depicted in Domingo’s circuit in Figure 4, is arranged as
claimed, under a broad but reasonable interpretation of claim 1 that is
consistent with the Specification.3 See Final Act. 3. Although the Examiner
broadly interprets the claim language “connected to” as including indirect
connections (Ans. 5), we find Appellant’s Specification (¶ 33) guides against
such a broader interpretation. See Fifth Gen. Computer Corp. v. I.B.M.
Corp., 416 Fed.Appx. 74, 79 (Fed. Cir. 2011) (“On the contrary, the
specification repeatedly suggests a ‘direct’ connection and supports the plain
reading of the claims.”). See also Ethicon Endo-Surgery, Inc. v. U.S.
Surgical Corp., 93 F.3d 1572, 1578 (Fed. Cir. 1996).4

3 See In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017).
4 Ethicon Endo-Surgery, 93 F.3d at 1578:
We acknowledge that the term “connected to” could, in other
contexts, be broadly construed. Nevertheless, in the context of
this claim, the district court correctly concluded that the entire
phrase “connected to said longitudinal slots” must be read
narrowly. First, in what meaningful sense is it possible to
“connect” the restraining member, which is a physical item,
with the longitudinal slots, which are hollow passageways,
unless “connected to” is understood to mean that the restraining
member operatively interacts with the longitudinal slots by
blocking them? Second, Ethicon’s argument proves too much.
If, as Ethicon argues, “connected to” should be read broadly to
include elements which are connected directly or indirectly,
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Here, we find the disputed capacitor limitation of claim 1 is not
expressly nor inherently disclosed arranged as claimed by capacitor C3, as
depicted in the circuit of Domingo’s Figure 4, contrary to the Examiner’s
findings. See Final Act. 3.
Accordingly, for essentially the same reasons argued in the Briefs, as
further discussed above, we find a preponderance of the evidence supports
Appellant’s contentions that Domingo’s arrangement of capacitor C3 does
not anticipate the capacitor arrangement as recited in sole independent
apparatus claim 1 on appeal.
Because Appellant has persuaded us the Examiner erred, we are
constrained on this record to reverse the Examiner’s anticipation Rejection
under 35 U.S.C. § 102(a)(1) of independent claim 1. For the same reasons,
we also reverse the anticipation rejection of associated dependent claims 2
and 3.

CONCLUSION
The Examiner erred in rejecting claims 1–3, as being anticipated by
Domingo under 35 U.S.C. § 102(a)(1).

then this language would read on a lockout mechanism located
anywhere in the surgical stapler, and the “connected to”
limitation would be meaninglessly empty.
Emphasis added.

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DECISION SUMMARY

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3 102(a)(1) Domingo 1–3

REVERSED