Ex Parte DING et al

Patent Trial and Appeal Board

Mar 21, 2016

13289791 (P.T.A.B. Mar. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/289,791 11/04/2011 WeiqiDING
15610 7590 03/22/2016
Okamoto & Benedicto LLP
PO Box 641330
San Jose, CA 95164-1330
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.
10006.004600 (A03766) 8993
EXAMINER
AGHDAM, FRESHTEH N
ART UNIT PAPER NUMBER
2632
MAILDATE DELIVERY MODE
03/22/2016 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
Ex parte \VEIQI DING, SERGEY SHU1\11ARA YEV, PENG LI,
and SRIRAYv1 NARAYAN
Appeal2014-007889
Application 13/289,791
Technology Center 2600
Before JOHN A. EVANS, CATHERINE SHIANG, and
MATTHEW J. McNEILL, Administrative Patent Judges.
EV ANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of Claims 2-10, 12-16, and 18-20, which
constitute all the pending claims in this application. See App. Br. 7, 11, 12,
13, and 14; Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
1 The Appeal Brief identifies Altera Corporation as the real party in interest.
App. Br. 2.
Appeal2014-007889
Application 13/289,791
We REVERSE.2
STATEMENT OF THE CASE
The claims relate to a receiver circuit having at least a first signal
path, a second signal path, and a path selector circuit. See Abstract.
Claims 2, 12, and 18 are independent. The claims have not been
argued separately and therefore stand or fall together. 37 C.F.R.
§ 41.37(c)(l)(iv). An understanding of the invention can be derived from a
reading of exemplary Claim 2, which is reproduced below with some
paragraphing added:
2. A receiver circuit for a data link, the receiver circuit
compnsmg:
a first signal path including first equalization circuitry;
a second signal path including second equalization
circuitry; and
a path selector circuit which selects one signal path of the
first and second signal paths and outputs an equalized signal from
said one signal path;
a latch circuit which receives said equalized signal from
said one signal path and outputs a regenerated serial data signal;
and
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed March 12, 2014, "App. Br."), the Reply Brief
(filed July 14, 2014, Reply Br."), the Examiner's Answer (mailed May 23,
2014, "Ans."), the Final Action (mailed November 20, 2013, "Final Act."),
and the Specification (filed November 4, 2011, "Spec.") for their respective
details.
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Application 13/289,791
a serial-input parallel-output circuit which receives the
regenerated serial data signal from the latch circuit,
wherein the first signal path comprises a decision feedback
equalizer circuit and the second signal path comprises linear
equalization without decision feedback equalization.
References and Rejections
The Examiner relies upon the prior art as follows:
Ueda
Kilpatrick et al.
("Kilpatrick")
Abdalla et al.
("Abdalla")
Hidaka
Jiang et al.
("Jiang")
Hsieh
Mezer et al.
("Mezer")
US 5,541,956 July 30, 1996
US 2007/0293163 Al Dec. 20, 2007
US 2012/0201289 Al Aug. 9, 2012
US 2012/0207204 Al Aug. 16, 2012
US 2012/0235720 Al Sept. 20, 2012
US 8,396,110 Bl Mar. 12, 2013
US 2013/0136161 Al May 30, 2013
Sam Palermo, ECEN689: Special Topics in High-Speed Links Circuits and
Systems, Lecture 18: RX FIR & CTLE Equalization, Analog & Mixed-
Signal Center, Texas A&M University, Spring 2010.
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Appeal2014-007889
Application 13/289,791
The claims stand rejected as follows:
1. Claims 2, 3, 12, 13, 16, and 18 stand rejected under 35 U.S.C. §
103(a) as obvious over Hsieh. Final Act. 3-7.
2. Claims 4 and 9 stand rejected under 35 U.S.C. § 103(a) as obvious
over Hsieh and Mezer. Final Act. 7-8.
3. Claims 5, 6, and 7 stand rejected under 35 U.S.C. § 103(a) as obvious
over Hsieh, Mezer, Palermo, and Abdalla. Final Act. 8-10.
4. Claims 8, 15, and 19 stand rejected under 35 U.S.C. § 103(a) as
obvious over Hsieh and Kilpatrick. Final Act. 10-12.
5. Claims 14 and 20 stand rejected under 35 U.S.C. § 103(a) as obvious
over Hsieh, Palermo, and Abdalla. Final Act. 12-13.
ANALYSIS
We have reviewed the rejections of Claims 2-10, 12-16, and 18-20
in light of Appellants' arguments that the Examiner has erred. We agree with
Appellants' conclusions.
We consider Appellants' arguments seriatim, as they are presented in
the Appeal Brief.
CLAIMS 2, 3, 12, 13, 16, AND 18
Operational order of the circuits.
Appellants contend that the arrangement of the circuits in Hsieh
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Application 13/289,791
differs from the claimed arrangement such that Hsieh does not teach the
claimed "operational order." App. Br. 8. Appellants argue Claim 2
expressly recites that the "equalized signal" from the selected path of the
two paths is output to a latch, and the output of the latch is provided to the
serial-input parallel-output (SIPO; deserializer). Hence, the operational
order of the circuits expressly recited in Claim 2 is: (i) path selector; (ii)
latch; and (iii) SIPO. Id. Appellants argue Hsieh teaches a different
operational order comprising: (i) multiple flip-flop (latches); (ii) two SIPO;
and (iii) a MUX (path selector). Id.
The Examiner agrees with the Appellants that the modified Hsieh' s
MUX 112 would no longer be receiving the parallel outputs of deserializers
108 and 110 because deserializing is performed after path selection by MUX
112. Ans. 3. However, the Examiner finds such rearrangement would not
modify the operation of Hsieh. Thus, the Examiner finds it would have been
obvious to move the latch circuit and the serial to parallel circuit to a
position after the path selector circuit, because "it has been held that
rearranging parts of an invention involves only routine skill in the art." Id.
(citing In re Japikse, 86 USPQ 70).
Appellants contend the Examiner misconstrues the holding of Japikse.
Appellants argue M.P.E.P. § 2144.04.VI.C limits an Examiner's application
of Japikse:
[t]he mere fact that a worker in the art could rearrange the parts
of the reference device to meet the terms of the claims on appeal
is not by itself sufficient to support a finding of obviousness. The
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Application 13/289,791
prior art must provide a motivation or reason for the worker in
the art, without the benefit of appellant's specification, to make
the necessary changes in the reference device. Ex parte Chicago
Rawhide Mfg. Co., 223 USPQ 351, 353 (Bd. Pat. App. & Inter.
1984).
Reply Br. 3. Appellants argue that Japikse relates to the case where a
change in the placement of parts would not have modified the operation of
the device. Id. Appellants re-iterate the argument of their principle brief
that the different arrangement of Hsieh's circuits, gives rise to a different
operation than claimed. Id.
The Examiner's reliance on Japikse is misplaced. The Examiner cites
that case as standing for the broad proposition that "it has been held that
rearranging parts of an invention involves only routine skill in the art."
Final Act. 3 (citing In re Japikse, 86 USPQ 70). This is too broad a reading
of the case. Japikse involved an obviousness rejection where the only
difference between the claimed invention and a single reference was the
location of a starting switch. Japikse, 181 F.2d at 1023. The present case
involves multiple differences between the claimed invention and the
reference. The Examiner has not articulated a reason why a person of skill
in the art would believe that various circuits necessarily function to produce
an identical result notwithstanding the order in which they function. Here,
"the Examiner is attempting to create a per se rule of upatentability as a
substitute for the detailed inquiry required by§ 103." Ex parte Mitchell,
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Application 13/289,791
2011-007272, slip op. at 7 (BPAI 8/21/2012). "Reliance on such per se
rules is legal error. In re Ochiai, 71F.3d1565, 1570 (Fed. Cir. 1995)."
Mitchell, at 8.
The Examiner has not demonstrated that signals processed by the
apparatus of Hsieh would have the same properties as signals processed by
the claimed invention.
DECISION
The rejection of Claims 2-10, 12-16, and 18-20 under 35 U.S.C. §
103 is REVERSED.
REVERSED
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