Ex Parte Kawato

Patent Trial and Appeal Board

Mar 22, 2018

12445187 (P.T.A.B. Mar. 22, 2018)

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.
12/445,187 04/10/2009 Eizo Kawato Q111238 5497
23373 7590 03/26/2018
SUGHRUE MION, PLLC
2100 PENNSYLVANIA AVENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
EXAMINER
OSENBAUGH-STEWAR, ELIZA W
ART UNIT PAPER NUMBER
2881
NOTIFICATION DATE DELIVERY MODE
03/26/2018 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EIZO KAWATO
Appeal 2017-002440
Application 12/445,187
Technology Center 2800
Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
KAREN M. HASTINGS, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 3—6 under 35 U.S.C. § 103(a) as being unpatentable
based on at least the combined prior art of Gonin et al. (US 2004/0217275
Al, pub. Nov. 4, 2004) (hereinafter “Gonin”), AAPA (Applicant’s Admitted
Prior Art, Fig. 3), Marum et al. (US 5,500,546, issued Mar. 19. 1996)
1 The real party in interest is SHIMADZU CORPORATION. Appeal Br. 2.
Appeal 2017-002440
Application 12/445,187
(hereinafter “Marum”), and Ulaby (Fundamentals of Applied
Electromagnetics 88 (Pearson Prentice Hall, 3rd ed. 1998)).2
We have jurisdiction under 35 U.S.C. § 6(b).
Claim 3 is illustrative of the claimed subject matter (emphasis added):
3. A time-of-flight mass spectrometer, comprising:
an ion detector that produces a high-speed analogue signal;
a waveform recorder for collecting the high speed analogue signal
produced by the ion detector, and
an input protection circuit for a high-speed analogue signal provided
between the ion detector and the waveform recorder, the input protection
circuit including:
an input connector;
an input circuit;
a signal path resistor provided on a signal path connecting the input
connector and the input circuit;
a polymer ESD protection element connected between a portion of the
signal path, which extends from the signal path resistor to the input
connector, and a ground; and
a semiconductor ESD protection element connected between a portion
of the signal path, which extends from the signal path resistor to the input
circuit, and either the ground or a power source,
where a sum of a resistance value of an input resistor of the input
circuit and a resistance value of the signal path resistor is equal to a
characteristic impedance of the high-speed analogue signal input,
the resistance value of the input resistor is less than the resistance
value of the signal path resistor such that a gain of the high-speed analogue
signal is reduced, and
a gain of the input circuit is increased to compensate for the reduction
in the gain of the high-speed analogue signal.
2 The rejection of claims 4 and 6 includes additional prior art (Final Action
5, 6).
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Appeal 2017-002440
Application 12/445,187
OPINION
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.”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art or the inferences and creative
steps a person of ordinary skill in the art would have employed. In re Fine,
837 F.2d 1071, 1074 (Fed. Cir. 1988); KSRInt’l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007).
We need address only sole independent claim 3 which recites “the
resistance value of the input resistor is less than the resistance value of the
signal path resistor such that a gain of the high-speed analogue signal is
reduced, and a gain of the input circuit is increased to compensate for the
reduction in the gain of the high-speed analogue signal.” These limitations
were added in an amendment filed October, 28, 2014 subsequent to our
previous decision of this application, Appeal 2012- 011234 mailed August
29, 2014, wherein we affirmed the Examiner’s rejection of broader claims
on a different set of art.
Appellant argues that the Examiner has provided no objective
evidence to support her position that it would have been obvious to
configure the circuit such that “the resistance value of the input resistor is
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Appeal 2017-002440
Application 12/445,187
less than the resistance value of the signal path resistor” (Appeal Br. 8, 9;
Reply Br. 3). The Examiner’s reasoning is reproduced below:
she feels this is obvious because a large current drop is desired
over the signal path resistor, so it should be large. Any increase
in the resistance of the signal path resistor must be met with an
equal decrease in the resistance of the input resistor to maintain
impedance matching, so the resistance value of the input resist
will be comparatively small. This naturally reduces the gain,
and it would be obvious to increase the gain of the input circuit
to maintain the overall gain.
Ans. 4.
Appellant contends, however that
Assuming arguendo [t]hat it would have been obvious for a
skilled person in the art to increase the resistance of the signal
path resistor for a current drop, there is no reason to make the
resistance value of the input resistor less than the resistance
value of the signal path resistor. The Examiner’s assertion
derives no conclusion with respect to the recited magnitude
relationship between the resistances of the signal path resistor
and the input resistor.
Reply Br. 3.
A preponderance of the evidence supports Appellant’s position that
the Examiner has not pointed to any evidence or adequate reasoning to
establish that the applied prior art teaches or suggests the required “the
resistance value of the input resistor is less than the resistance value of the
signal path resistor such that a gain of the high-speed analogue signal is
reduced, and a gain of the input circuit is increased to compensate for the
reduction in the gain of the high-speed analogue signal,” as recited in
independent claim 3.
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Appeal 2017-002440
Application 12/445,187
On the record before us, the Examiner has not shown that each and
every limitation of the claim is either described or suggested by the prior art
or would have been obvious based on the knowledge or inferences and
creativity of the ordinary artisan. See Fine, 837 F.2d at 1074; see also In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section
103 clearly must rest on a factual basis, and these facts must be interpreted
without hindsight reconstruction of the invention from the prior art”).
It thus appears that the proposed combination of prior art with the
Examiner’s reasoning with respect to the resistance values of the input
resistor and the signal path resistor would be based on improper hindsight
reconstruction. The fact finder must be aware “of the distortion caused by
hindsight bias and must be cautious of arguments reliant upon ex post
reasoning.” KSR, 550 U.S. at 421 (citing Graham v. John Deere Co., 383
U.S. 1, 36 (1966) (warning against a “temptation to read into the prior art the
teachings of the invention in issue”)).
The Examiner does not rely upon any of the references applied in the
§103 rejections on appeal to cure these deficiencies. Accordingly, we
reverse all § 103 rejections on appeal.
ORDER
It is ordered that the Examiner’s decision is reversed.
REVERSED
x\
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Appeal 2017-002440
Application 12/445,187