Ex Parte Brueggemann et al

Patent Trial and Appeal Board

Jun 22, 2018

14378292 (P.T.A.B. Jun. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/378,292 08/12/2014
24972 7590 06/26/2018
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
FIRST NAMED INVENTOR
Oliver Brueggemann
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BOSC.P8530US/l 1603663 7008
EXAMINER
TAKAOKA, DEAN 0
ART UNIT PAPER NUMBER
2842
NOTIFICATION DATE DELIVERY MODE
06/26/2018 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):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OLIVER BRUEGGEMANN,
MATTHIAS STEINHAUER, and JUAN PONTES
Appeal2017-008246
Application 14/378,292
Technology Center 2800
Before TERRY J. OWENS, BEYERL YA. FRANKLIN, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant 1 seeks our review of the
Examiner's final rejection of claims 7-12.
We have jurisdiction. 35 U.S.C. § 6.
We reverse.
SUBJECT MATTER
The subject matter on appeal relates to a coupling structure for
crossing transmission lines in a signal conductor layer, such as those used
for millimeter-wave or centimeter-wave signals. Spec. 1: 1-5.
1 Appellant is the Applicant, Robert Bosch GmbH, which is also identified
as the real party in interest. App. Br. 2.
Appeal2017-008246
Application 14/378,292
Figure 1 of the Specification, reproduced below, is illustrative of the
appealed subject matter:
S3
DJ
dJ
23 41 .24 42 Fig. 1
Figure 1, reproduced above, depicts a schematic diagram of a coupling
structure. Spec. 3:17-18, 5:7-16.
Sole independent claim 7 is illustrative of the claimed subject matter
and is copied below with added bracketed matter and the key limitations at
issue in this appeal italicized:
7. A coupling structure [10] for crossing three
transmission lines for one of millimeter-wave signals and
centimeter-wave signals in a signal conductor layer of a circuit
substrate, comprising:
three planar cross-couplers [30, 40, 50] that each includes
two input/output points [33, 34, 43, 44, 53, 54], wherein, for
each of the three planar cross-couplers, each of the input/output
points of the respective cross-coupler is connected, at a
connection point, to a respective input/output point of another
one of the three planar cross-couplers that is adjacent to the
respective cross-coupler, thereby forming at least three
2
Appeal2017-008246
Application 14/378,292
separate connection points [A, B, CJ that are all in a single
plane.
App. Br. 11 (emphasis added).
OPINION
The Examiner rejects claims 7-12 under 35 U.S.C. § 103(a) as
unpatentable over McKay I2 in view of McKay II. 3 Final 2--4. Specifically,
the Examiner finds that McKay I teaches the subject matter recited in claim
7, except for the limitation requiring the formation of "at least three separate
connection points that are all in a single plane." Final 2-3. To address this
admitted deficiency, the Examiner relies on the disclosure of McKay II.
Final 3.
The dispute in this appeal centers on the teachings of McKay II
- specifically, whether McKay II's Figure 4 discloses or suggests a cross-
coupler having at least three separate co-planar connection points. Appeal
Br. 3-10; Reply Br. 1-6.
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) ("[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability"). Here, none of the statements by the Examiner made in the
Final Rejection, the Advisory Action, or the Examiner's Answer establish
that McKay II discloses a cross-coupler containing at least three separate
connection points all in a single plane.
2 James P. McKay, US 6,522,218 Bl, issued Feb. 18, 2003.
3 James P. McKay, US 5,883,552, issued March 16, 1999.
3
Appeal2017-008246
Application 14/378,292
Specifically, the Final Rejection cites to McKay II's Figure 4, but
does not clearly identify where this limitation is disclosed. Final 3. In this
regard, we agree with Appellant (Reply Br. 2) that the rejection is "fatally
ambiguous." The Advisory Action offers no more clarity on this issue
because the Examiner takes the position that McKay II's Figure 4 may "be a
defective illustration," "where the crossing point may or may not be on the
same plane." Adv. Act. 2 (emphasis added). Such statements fall short of
evincing that the recited limitation is taught in the prior art. See In re
Warner, 379 F.2d 1011, 1016 (CCPA 1967) (explaining that "the precise
language of [the statute] clearly places a burden of proof on the Patent
Office which requires it to produce the factual basis for its rejection of an
application" and "[ w ]here such proof is lacking we see no necessity for
resolving doubt in favor of the Patent Office's position").
In the Answer, the Examiner takes the position "that Fig[ ure] 4 of
McKay [II] is planar where the limitation of the claim does not suggest a co-
planarity of the entire device," and asserts that "all input/output connections
are shown as co-planar or being in the same 'single plane."' Ans. 4. As
correctly noted by Appellant, however, (Reply Br. 5) the Examiner fails to
explain what parts of Figure 4, precisely, correspond to the recited inputs
and outputs, and how such connections between such inputs and outputs are
in the same plane.
4
Appeal2017-008246
Application 14/378,292
We have reviewed the referenced portions of McKay II, as well as the
portions of Ohta4 and Kawai5 references relied on by the Examiner to
establish the co-planarity of McKay II's Figure 4, and it seems clear to us
that McKay II's Figure 4 (i.e., Ohta's Figure 1) has two planes -AA' and
BB'. Ohta, p. 119 (explaining how "[t]he cross transmission lines in the
center of the circuit do not intersect with each other," and that "the circuit
possesses two-fold symmetry about the two planes AA' and BB"').
Because the Examiner has failed to provide a factual basis for
asserting that the limitation at issue was taught in the prior art, we cannot
sustain the rejection. Warner, 379 F.2d at 1016.
DECISION
The Examiner's obviousness rejection of claims 7-12 is reversed.
REVERSED
4 Isao Ohta et al., A TRANSMISSION-LINE-TYPE EIGHT-PORT HYBRID, IEEE
MTT-S DIGEST 119-22 (1992).
5 Tadashi Kawai et al., A BRANCH-LINE-TYPE EIGHT-PORT COMPARATOR
CIRCUIT, IEEE MTT-S DIGEST 869-72 (1991).
5