Ex Parte Hayashida

Board of Patent Appeals and Interferences

Jun 15, 2012

11411919 (B.P.A.I. Jun. 15, 2012)

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.
11/411,919 04/27/2006 Keiji Hayashida NEC 05048US 7505
21254 7590 06/15/2012
MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC
8321 OLD COURTHOUSE ROAD
SUITE 200
VIENNA, VA 22182-3817
EXAMINER
CHENG, DIANA
ART UNIT PAPER NUMBER
2816
MAIL DATE DELIVERY MODE
06/15/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KEIJI HAYASHIDA
____________

Appeal 2009-012126
Application 11/411,9191
Technology Center 2800
____________

Before MARC S. HOFF, CAROLYN D. THOMAS, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-13, 15, and 17-19.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 The real party in interest is NEC Electronics Corporation.
2 Claims 14, 16, and 20 have been cancelled.
Appeal 2009-012126
Application 11/411,919

2
STATEMENT OF THE CASE
Appellant’s invention concerns a frequency modulation circuit of a
clock generation circuit using a Phase Locked Loop (PLL). A phase
comparator detects a phase difference between a reference clock and a clock
being divided. A charge pump and low-pass filter produce a voltage signal
corresponding to the phase difference. This voltage signal is converted to a
current signal by a voltage to current converter, and supplied to a Digital to
Analog Converter (DAC) as a reference current. A digital signal is inputted
to the DAC from a control circuit. The DAC outputs a current for a
frequency modulation. A current controlled oscillator (ICO) outputs a clock
signal, its frequency modulated according to an output current from the
DAC. The control circuit controls the digital signal to be outputted to the
DAC and the frequency dividing rate of the third frequency dividing circuit
according to the count value of an up/down counter. (Spec. 9-10).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A clock generation circuit comprising:
a phase comparator inputted with a reference clock and a
feedback clock;
a current controlled oscillator for generating an operation
clock according to an output of the phase comparator;
a first modulation unit for counting the operation clock to
obtain a first count value, and changing a frequency dividing
rate of the feedback clock inputted to the phase comparator
according to the first count value; and
a second modulation unit for counting the operation
clock to obtain a second count value, and for changing a control
current of the current controlled oscillator according to the
second count value.
Appeal 2009-012126
Application 11/411,919

3
REFERENCES and REJECTIONS
The Examiner rejected claims 1-7, 9-13, 15, and 17-19 under
35 U.S.C. § 103(a) based upon the teachings of Kuo (U.S. Patent
Application Publication Number 2006/0023770 A1 (filed July 30, 2004)
(published February 2, 2006)) in view of Gersbach (U.S. Patent Number
5,382,922 (filed December 23, 1993) (issued January 17, 1995)).
The Examiner rejected claim 8 under 35 U.S.C. § 103(a) based upon
the teachings of Kuo in view of Gersbach and Jeon (U.S. Patent Number
6,703,902 B2 (filed September 24, 2002) (issued March 9, 2004)).

ISSUES
Appellant contends that Kuo and Gersbach fail to teach or suggest a
second modulation unit (App. Br. 7).
Appellant further argues that in Gersbach, even if current Ib output
from DAC 38 modifies the control current of the current-controlled
oscillator, it does not count the operation clock as the claimed invention
requires (App. Br. 7-8).
Appellant argues that wholesale modifications to Kuo would be
needed to arrive at the present invention (App. Br. 8-9). In response, the
Examiner finds that all that is required is to replace the Voltage Controlled
Oscillator (VCO) with a voltage to current converter and an ICO, such as is
taught by Gersbach (Ans. 13).
Appellant contends that Kuo does not suggest replacing a VCO with
an ICO (App. Br. 9). According to the Examiner, Gersbach so suggests
(Ans. 14-15).
Appeal 2009-012126
Application 11/411,919

4
Appellant asserts that Kuo’s operating principle would be changed
(App. Br. 9).
Appellant further argues that “m]odulations are performed by only N
and M, as described above, a plurality of modulating units are not disclosed
in Kuo” (App. Br. 10), and that Kuo requires two modulators and Kuo itself
describes there is a single modulation occurring (Reply Br. 2).
Appellant contends that the Examiner ignores the term “modulator,”
and merely cites elements corresponding to the functional language in the
claim (Reply Br. 2-3).
Appellant’s contentions and the Examiner’s findings present us with
the following issues:
1. Does the combination of Kuo and Gersbach teach or fairly suggest
“a first modulation unit for counting the operation clock to obtain a first
count value, and changing a frequency dividing rate of the feedback clock
inputted to the phase comparator according to the first count value,” as
recited in claim 1?
2. Does the combination of Kuo and Gersbach teach or fairly suggest
“a second modulation unit for counting the operation clock to obtain a
second count value, and for changing a control current of the current
controlled oscillator according to the second count value,” as recited in
claim 1?
3. Does the combination of Kuo and Gersbach teach or fairly suggest
“a current controlled oscillator for generating an operation clock according
to an output of the phase comparator,” as recited in claim 1?

Appeal 2009-012126
Application 11/411,919

5
FINDINGS OF FACT
Kuo
1. Kuo teaches that “t]he loop-divider receives the output signal SOUT
and generates a divided signal SD2 for every N pulses on the output signal
SOUT” (¶ [0016]).
2. Kuo teaches that
[w]hen the integers M and N are switched to M1 and N1 respectively,
the charge pump 303 begins to raise the control voltage according to
the pump signal SP1 at a variation rate, such that, the output frequency
FOUT of the output signal SOUT increases toward a maximum frequency
FMAX continuously. When the integers M and N are switched to M2
and N2 respectively, the charge pump 303 begins to lower the control
voltage according to the pump signal SP1, such that, the output
frequency FOUT of the output signal SOUT decreases toward a minimum
frequency FMIN continuously.
(¶ [0017]).
Gersbach
3. Gersbach teaches that “due to technology advances, PLLs are
required to produce higher frequencies today while VCO transfer function
tolerances become more critical and less achievable simultaneously” (col. 2,
ll. 5-8).

PRINCIPLES OF LAW
Section 103(a) forbids issuance of a patent when “the
differences between the subject matter sought to be patented and the
prior art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.”
KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
Appeal 2009-012126
Application 11/411,919

6
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, (3) the level of skill in
the art, and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407, (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
conclusions. We concur with the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and the reasons set
forth by the Examiner in the Examiner’s Answer in response to Appellant’s
Appeal Brief. However, we highlight and address specific findings and
arguments regarding representative claim 1 for emphasis as follows.
We do not agree with Appellant that the combination of Kuo and
Gersbach fails to teach first and second modulation units. We agree with the
Examiner’s finding that Kuo teaches a first modulation unit 301 for counting
operation clock SOUT and changing a frequency dividing rate of the feedback
clock inputted to the phase comparator according to the first count value
(Ans. 5). Loop-divider [301] generates a divided signal SD2 for every N
pulses on the output signal SOUT (FF 1). We further agree with the
Examiner’s finding that Kuo teaches a second modulation unit 31 for
counting the operation clock SOUT and for changing a control current of the
current controlled oscillator according to a count value (Ans. 5; FF 2).
Appeal 2009-012126
Application 11/411,919

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The Examiner admits that Kuo does not teach a current controlled
oscillator (Ans. 5). We agree with the Examiner’s finding that Gersbach
teaches that a voltage to current converter and a current controlled oscillator
may be substituted for a VCO (Ans. 6). Appellant’s argument that Kuo does
not suggest substituting an ICO for a VCO is not persuasive. We instead
agree with the Examiner that Gersbach suggests making the substitution, so
as to better tolerate the higher frequencies that PLLs are required to produce,
since “VCO transfer function tolerances become more critical and less
achievable simultaneously” (FF 3). Because of the clarity of Gersbach’s
teaching of such a direct substitution, we reject Appellant’s arguments that
wholesale modifications to Kuo would be required, or that Kuo’s operating
principles would be changed (App. Br. 8-9).
Last, we are not persuaded by Appellant’s Reply Brief argument that
the Examiner has ignored the term “modulator.” The Examiner has set forth
ample explanation and evidence that Kuo teaches two units that cause the
amplitude, frequency, phase, or intensity of a carrier wave to vary in
accordance with a signal.3 (See Ans. 11.) We agree with the Examiner’s
findings.
We therefore find that the Examiner did not err in rejecting claims
1-7, 9-13, 15, and 17-19 under § 103 as being unpatentable over Kuo in view
of Gersbach. We will sustain the Examiner’s rejection. We will also sustain
the § 103 rejection of claim 8 as being unpatentable over Kuo in view of
Gersbach and Jeon, not separately argued.

3 http://dictionary.reference.com/browse/modulate, last visited on June 11,
2012.
Appeal 2009-012126
Application 11/411,919

8
CONCLUSIONS
1. The combination of Kuo and Gersbach teaches “a first modulation
unit for counting the operation clock to obtain a first count value, and
changing a frequency dividing rate of the feedback clock inputted to the
phase comparator according to the first count value” as recited in claim 1.
2. The combination of Kuo and Gersbach teaches “a second
modulation unit for counting the operation clock to obtain a second count
value, and for changing a control current of the current controlled oscillator
according to the second count value” as recited in claim 1.
3. The combination of Kuo and Gersbach teaches “a current
controlled oscillator for generating an operation clock according to an output
of the phase comparator” as recited in claim 1.

DECISION
The Examiner’s decision rejecting claims 1-13, 15, and 17-19 is
affirmed.
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)(2011).

AFFIRMED

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