Ex Parte Chen et al

Board of Patent Appeals and Interferences

Jul 25, 2012

12051273 (B.P.A.I. Jul. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FRED F. CHEN and VLADIMIR M. STOJANOVIC
____________

Appeal 2010-006266
Application 12/051,273
Technology Center 2800
____________

Before MARC S. HOFF, THOMAS S. HAHN, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

HAHN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants invoke our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

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STATEMENT OF THE CASE
Exemplary Claim
Appealed independent claim 1 is exemplary and reads:
1. A signaling device comprising:

a first output driver circuit including a first transistor, the first
transistor having a control input to receive a first data value and an output
coupled to a first output node; and

a second output drive circuit including second transistor, the second
transistor having a control input to receive a second data value and an output
coupled to the first output node, the second transistor having a width-length
ratio that is smaller than a width-length ratio of the first transistor.

Rejections
Claims 1, 2, and 14 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Shieh (US Patent No. 5,563,549; issued Oct. 8, 1996).
Claims 1 and 2 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Fletcher (US Patent No. 6,580,294 B1; issued June 17, 2003
(filed Dec. 18, 2001)).
The Examiner, under 35 U.S.C. § 103(a), rejected
 Claims 1-6, 8, 10-13, and 15-17 as being obvious over Takemae (US
Patent No. 5,767,712; issued June 16, 1998);1

1 The statement of rejection lists only claims 1-3 (Ans. 6). However, these
and also claims 4-6, 8, 10-13, and 15-17 are addressed in the reasons for
rejection (Ans. 6-7). Appellants rely on the identified reasons for rejection
and understand the rejection to be directed to at least the above fourteen
listed claims (App. Br. fn.1). Appellants further include claim 7 in this
rejection. However, including claim 7 is incorrect because it is not
addressed in the reasons for rejection. Accordingly, we list the above
identified fourteen claims. The Examiner’s statement of rejection includes
harmless typographical errors that do not affect our decision.
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 Claim 7 as being obvious over Takemae and Soltesz (US Patent
Publication No. 2007/0228257 A1; published October 4, 2007); and
 Claims 1 and 9 as being obvious over Admitted Prior Art (Application
Fig. 2) (APA).
Appellants’ Contentions
A. ANTICIPATION BY SHIEH
Appellants argue that independent claim 1 is patentable because Shieh
fails to explicitly or inherently teach (i) a “‘signaling device’ having ‘output
driver circuit[s]’” (App. Br. 8) and (ii) a “‘second transistor ha[ving] a
width-length ratio that is smaller than a width-length ratio of [a] first
transistor’” (id.).
Appellants argue that dependent claim 2 is patentable because Shieh
fails to explicitly or inherently teach the recited “second transistor having a
width-length ratio that is smaller than a width-length ratio of [a] first
transistor by a predetermined amount dependent upon the ratio of maximum
expected drive strength to be contributed by the second transistor to
maximum expected drive strength to be contributed by the first transistor”
(see App. Br. 9).
B. ANTICIPATION BY FLETCHER
Appellants pivotally argue that independent claim 1 is patentable
because the record fails to show that Fletcher explicitly or inherently teaches
the recited “first output node” (App. Br. 10).
C. OBVIOUSNESS REJECTIONS
Appellants pivotally argue that independent claim 1 is patentable
because the record fails to show that Takemae or APA teach or suggest the
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recited transistor control inputs receiving first or second data values, or a
first output node (App. Br. 13, 16).
ANALYSIS2
Anticipation by Shieh
A. Claim 1
Reviewing the rejection of claim 1 as being anticipated by Shieh, and
Appellants’ arguments, we find that the Examiner has not erred.
Appellants contend that Shieh fails to explicitly or inherently teach the
claim 1 recited “‘signaling device’ having ‘output driver circuit[s]’” (App.
Br. 8). The Examiner disagrees and responds that “the Appellant[s] merely
rel[y] on the terminology to distinguish the claimed invention over the prior
art rejection . . . since the circuits of the invention and the prior art are
similar” (Ans. 8). In the Reply Brief, Appellants repeat the contention as to
Shieh being deficient (Reply Br. 4) without addressing whether claimed
subject matter reads on Shieh disclosed circuits. Appellants rely on the
assertion that the reference “discloses a low power trim circuit that provides
a reference voltage” (id.). Reviewing the record, we find Appellants’
argument unavailing. See State Contracting & Eng’g Corp. v. Condotte
America, Inc., 346 F.3d 1057, 1068 (Fed. Cir. 2003) (A reference may be
directed to an entirely different problem than the one addressed by the
inventor, or may be from an entirely different field of endeavor than that of
the claimed invention, yet the reference is still anticipatory if it explicitly or
inherently discloses every limitation recited in the claims.). In this instance,

2 Only Arguments actually made by Appellants have been considered for
this decision. Arguments not made in the Briefs have not been considered
and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
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the Examiner identified that Shieh’s Fig. 3 shows “a first output driver
circuit including a first transistor (98) . . . and a second output driver circuit
including a second transistor (100)” (Ans. 4). Appellants have not submitted
persuasive evidence or arguments as to why these Shieh disclosed circuits do
not teach the elements of claim 1. Accordingly, we do not find that the
Examiner erred.
Appellants also contend that Shieh fails to teach the claim 1 recited
“second transistor having a width-length ratio that is smaller than a width-
length ratio of the first transistor” (App. Br. 8). Appellants acknowledge
that “Shieh states that a size of a transistor is dependent on the emitter area,”
but Appellants assert that this is “not necessarily ‘ratio of length/width’ [sic;
width/length]” (id.). The Examiner, relying on evidence earlier entered, e.g.,
Lee (US 7,486,119 B2; issued Feb. 3, 2009 (filed July 6, 2006)) (Ans. 4),
disagrees and identifies that “the size . . . of a transistor is proportional to its
width-length ratio” (Ans. 8). We agree with the Examiner because Lee in
col. 7, lines 4-10, discloses that a transistor has “size (width-to-length, or
W/L ratio).” We do not find that Appellants have persuasively addressed
this finding, but, instead, Appellants continue in the disagreement and
reproduce a Shieh disclosure that a “first transistor is made bigger than the
second transistor by making the emitter of the first transistor bigger (i.e. a
greater area) than the emitter of the second transistor” (Reply Br. 6; see
Shieh col. 7, lines 9-11). Relying on this disclosure, Appellants contend that
“Shieh does not disclose ‘the second transistor h[as] a width-length ratio that
is smaller than a width-length ratio of the first transistor’ as called for in
claim 1” (id.). We disagree because, as addressed above, transistor size is
proportional to its width-length ratio and, therefore, claim 1 reads on Shieh’s
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disclosure for a bigger first transistor versus a smaller second transistor.
Accordingly, we disagree that the Examiner erred.
For the foregoing reasons, we will sustain the rejection of claim 1 as
being anticipated by Shieh.
B. Claim 2
Appellants argue that dependent claim 2 is patentable because Shieh
fails to explicitly or inherently teach the recited “second transistor having a
width-length ratio that is smaller than a width-length ratio of [a] first
transistor by a predetermined amount dependent upon the ratio of maximum
expected drive strength to be contributed by the second transistor to
maximum expected drive strength to be contributed by the first transistor”
(see App. Br. 9). The Examiner disagrees and identifies that “it is well
known by one of ordinary skill in the art that the large size transistor has
large drive strength (US 7,271,642)” (Ans. 8). Appellants do not dispute
that large size transistors have large drive strengths, but do respond that:
In regard to claim 2, the Examiner's Answer has not identified the
“predetermined amount dependent upon...” The Examiner's Answer
has also not identified where Figure 3 illustrates “the ratio of
maximum expected drive strength to be contributed by the second
transistor to maximum expected drive strength to be contributed by
the first transistor.” The Examiner’s Answer has also not identified
the “maximum expected drive strength to be contributed by” either
“transistor 98” or “transistor 100.” Appeal Brief, page 9.
(Reply Br. 5.).
As addressed supra, we agree with the Examiner that Shieh teaches
the recited second transistor having a width-length ratio that is smaller than a
width-length ratio of a first transistor. Based on the record, we further agree
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with the Examiner that it was known that transistor size is related to drive
strength. Accordingly, we find the remaining disputed limitations to be
drafted as qualitative functional versus structural limitations. Functional
claimed limitations however do not distinguish over prior art. In re
Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997) (A claimed device must
be distinguished from prior art in terms of structure rather than function.).
Accordingly, we do not find that the Examiner erred, and we will sustain the
rejection of claim 2 as being anticipated by Shieh.
C. Claim 14
Appellants nominally argue claim 14 separately with sole reliance on
arguments made for claim 1 (App. Br. 9). We are not persuaded by these
arguments for the reasons previously discussed, and we will sustain the
rejection of claim 14 as being anticipated by Shieh.
Anticipation by Fletcher
Appellants pivotally argue that independent claim 1 is patentable
because the record fails to show that Fletcher explicitly or inherently teaches
the claimed “first output node” (App. Br. 10). Reviewing the record,
including the identified reasons for rejection (Ans. 5) and the Examiner’s
Response to Argument section in the Answer (Ans. 8), we find Appellants’
argument to be correct and not addressed. Appellants have shown that the
Examiner erred, and we will not sustain the rejection of claim 1 as being
anticipated by Fletcher.
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Appellants further argue that dependent claim 2 is patentable for the
reasons asserted above for why independent base claim 1 is not anticipated
by Fletcher (App. Br. 11). We agree with Appellants for the reason
discussed above, and we will not sustain the rejection of claim 2.
Obviousness Rejection over Takemae
A. Claims 1, 3, 5, 6, 8, and 10-133
Appellants solely argue independent claim 1 from this group (App.
Br. 11-13), and pivotally assert that claim 1 is patentable because the record
fails to show that Takemae teaches or suggests the recited transistor control
inputs receiving first or second data values, or a first output node (App. Br.
13). Reviewing the record, including the identified reasons for rejection
(Ans. 6) and the Examiner’s Response to Argument section in the Answer
(Ans. 8), we find Appellants’ argument is correct and not addressed.
Appellants have shown that the Examiner erred, and we will not sustain the
rejection of claim 1 as being obvious over Takemae nor will we sustain the
obviousness rejection of dependent claims 3, 5, 6, 8, and 10-13.
B. Claims 2 and 4
Appellants pivotally argue that dependent claims 2 and 4 are
patentable for the reasons stated above for independent base claim 1 (App.
Br. 13-14). We agree with Appellants’ reasons as addressed above and we,
accordingly, will sustain the obviousness rejection of claims 2 and 4.

3 Appellants also list claim 7 under this rejection (App. Br. 11). However, as
addressed in fn.1 supra, claim 7 is not rejected as being obvious over
Takemae alone.
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C. Claims 15-17
Appellants collectively argue that claims 15-17 are patentable because
they depend from independent claim 14 that has not been rejected under
35 U.S.C. § 103(a) (App. Br. 14). Appellants conclude claims 15-17 are
patentable because their independent base claim 14 has not been rejected as
being obvious over Takemae (id.). Reviewing the record, we agree that
claim 14 is not rejected as being obvious over Takemae (see Ans. 6-8).
Accordingly, we will not sustain the obviousness rejection of claims 15-17
that depend from independent claim 14.
Obviousness Rejection over Takemae and Soltesz
Appellants pivotally argue that dependent claim 7 is patentable for the
reasons stated above for why independent base claim 1 is not obvious over
Takemae (App. Br. 15). We agree with Appellants’ reasons as addressed
above. Reviewing the record, we do not find that Soltesz addresses or
overcomes the identified Takemae deficiencies. Accordingly, we will not
sustain the obviousness rejection of claim 7 that depends from independent
claim 1.
Obviousness Rejection over APA
Appellants pivotally assert by reference to prior arguments that
independent claim 1 is patentable because the record fails to show that the
APA teaches or suggests the recited transistor control inputs receiving first
or second data values, or a first output node (App. Br. 16). Reviewing the
record, including the identified reasons for rejection (Ans. 7-8) and the
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Examiner’s Response to Argument section in the Answer (Ans. 8), we find
Appellants’ argument is correct and not addressed. Appellants have shown
that the Examiner erred, and we will not sustain the rejection of claim 1 as
being obvious over APA nor will we sustain the obviousness rejection of
dependent claim 9.
CONCLUSIONS
1. The Examiner has not erred in rejecting claims 1, 2, and 14 under
35 U.S.C. § 102(b) as being anticipated by Shieh.
2. The Examiner erred in rejecting claims 1 and 2 under
35 U.S.C. § 102(e) as being anticipated by Fletcher.
3. The Examiner erred under 35 U.S.C. § 103(a) in rejecting:
a. Claims 1-6, 8, 10-13, and 15-17 as being obvious over
Takemae;
b. Claim 7 as being obvious over Takemae and Soltesz; and
c. Claims 1 and 9 as being obvious over APA.
4. Based on this record, claims 1, 2, and 14 are not patentable, and
claims 3-13 and 15-17 are patentable.
DECISION
The Examiner’s decision rejecting claims 1, 2, and 14 is affirmed.
The Examiner’s decision rejecting claims 3-13 and 15-17 is reversed.

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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).
AFFIRMED-IN-PART

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