Ex Parte 7714558 et al

Board of Patent Appeals and Interferences

Aug 23, 2012

95001625 (B.P.A.I. Aug. 23, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,625 05/19/2011 7714558 6160
67394 7590 12/07/2012
Perkins Coie LLP - Monolithic Power Systems
P.O. BOX 1247
SEATTLE, WA 98111-1247
EXAMINER
TIBBITS, PIA FLORENCE
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/07/2012 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
______________

SILERGY TECHNOLOGY, INC.,
Third Party Requester and Appellant

v.

MONOLITHIC POWER SYSTEMS, INC.,
Patent Owner and Respondent
______________

Appeal 2012-008582
Reexamination Control No. 95/001,625
Patent 7,714,558
Technology Center 3900
______________

Before JOHN C. MARTIN, KARL D. EASTHOM, and KEVIN F. TURNER,
Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

ORDER REMANDING INTER PARTES REEXAMINATION UNDER
37 C.F.R. § 41.77(d) TO THE EXAMINER

In a Decision on Appeal (hereinafter “Decision”) dated August 27, 2012, the
Board, inter alia, reversed the Examiner’s refusal to enter a proposed rejection of
claims 1-10 under 35 U.S.C. § 102(b) for anticipation by MAX7961 and designated
the reversal of that determination as a “NEW GROUND OF REJECTION”
pursuant to 37 C.F.R. § 41.77(a) and (b). Decision 47. As noted in the Decision

1 MAXIM, Step-Down Controllers with Synchronous Rectifier for CPU Power
(MAX796/MAX797/MAX799), Data Sheet, Rev 3a, November 1997.
Appeal 2012-008582
Reexamination Control 95/001,625
Patent 7,714,558 B2

2

(at 48), 37 C.F.R. § 41.77(b) provides that the Patent Owner, within two months
from the date of the decision, must exercise one of the following two options with
respect to any new ground of rejection to avoid termination of the appeal as to the
claims thus rejected:
(1) Reopen prosecution. The owner may file a response
requesting reopening of prosecution before the examiner. Such a
response must be either an amendment of the claims so rejected or
new evidence relating to the claims so rejected, or both.
(2) Request rehearing. The owner may request that the
proceeding be reheard under § 41.79 by the Board upon the same
record. . . .
On September 21, 2012, within the allotted two-month time period, Patent
Owner/Respondent Monolithic Power Systems, Inc., elected to reopen prosecution
by filing a “Respondent’s Response to the Decision on Appeal” (hereinafter
“Response”) proposing to: (i) amend independent claims 1 and 6 (the only
independent claims) by adding additional limitations thereto; and (ii) add new
dependent claims 11-14. Although Requester Silergy Technology, Inc., was
authorized by 37 C.F.R. § 41.77(c) to file responsive comments, no such comments
were filed.
We have reviewed the proposed amendments and find that their effect is to
narrow the scope of the subject matter recited in the rejected claims without
broadening the claims in any respect. We are therefore satisfied that the
amendments constitute a proper “amendment of the claims so rejected” under
37 C.F.R. § 41.77(b).
Accordingly, all of the proposed amendments and Patent Owner’s
accompanying comments are ENTERED for consideration by the Examiner
pursuant to this remand under 37 C.F.R. § 41.77(d).
Appeal 2012-008582
Reexamination Control 95/001,625
Patent 7,714,558 B2

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For Patent Owner:

Perkins Coie LLP - Monolithic Power Systems
P.O. BOX 1247
Seattle, WA 98111-1247

For Third Party Requester:

Haynes and Boone, LLP
IP Section
2323 Victory Avenue, Suite 700
Dallas, TX 75219

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