Ex Parte Kim et al

Patent Trial and Appeal Board

Nov 13, 2013

12355182 (P.T.A.B. Nov. 13, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JIN-HYUN KIM, JIN-SOO PARK, HYUNG-SUN LIM,
HAN-WOONG YOO, YOUNG-EIL KIM,
BUM-MAN KIM, and CHANG-JOON PARK
____________

Appeal 2012-011941
Application 12/355,182
Technology Center 2100
____________

Before ST. JOHN COURTENAY, III, THU A. DANG, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

INVENTION
This invention relates to “a finite impulse response (FIR) filter
without decimation.” (Spec. 1). Claim 1, reproduced below, is
representative of the claimed subject matter:
1. A finite impulse response (FIR) filter, comprising:
[a] a clock generator configured to generate a plurality of clock
signals that are different from each other; and
[b] N+2 sub blocks each including N sample storage units,
[c] each sample storage unit storing a received sample,
[c1] N being an integer;
[d] wherein each sub block is in a state among [d1] N charging
states for storing the received sample, [d2] a transfer state for
outputting the stored sample and [d3] a reset state for operation
initialization, and
[e] wherein the N charging states, the transfer state, and the
reset state are changed sequentially in response to one or more
of the plurality of clock signals.
(Disputed limitations emphasized, elements lettered; paragraph returns
inserted).
REJECTIONS
R1. The Examiner rejects claims 1-4 and 6-19 under 35 U.S.C.
§ 102(b) as being anticipated by Belveze (US 2006/0071707 A1, Apr. 6,
2006).
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R2. The Examiner rejects claim 5 under 35 U.S.C. § 103(a) as
unpatentable based upon the combined teachings and suggestions of Belveze
and Burke (US 2009/0322418 A1, Dec. 31, 2009).

ANALYSIS1
We disagree with Appellants’ contentions regarding the Examiner’s
rejections of the claims. We adopt as our own: (1) the findings and reasons
set forth by the Examiner in the action from which this appeal is taken, and
(2) the reasons set forth by the Examiner in the Answer in response to
arguments made in Appellants’ Appeal Brief. (Ans. 9-14). We highlight
and address specific findings and arguments below.

INDEPENDENT CLAIMS 1, 7, AND 11
A.
Regarding the claim 1 limitation [b] “N+2 sub blocks each including
N sample storage units,” Appellants contest the broadest reasonable
interpretation of limitation [b] which requires “N+2 sub blocks each
including” exactly “N sample storage units,” according to Appellants . (See
App. Br. 9-10).
Appellants’ contention is not persuasive, as it is not commensurate
with the broader scope of the claim. Specifically, the broadest reasonable

1 Appellants filed a Notice of Appeal on February 17, 2012. The date of
filing the Notice of Appeal determines which set of rules applies to an Ex
parte appeal. If a notice of appeal is filed on or after January 23, 2012, then
the 2012 version of the Board Rules (Title 37 of the Code of Federal
Regulations (37 C.F.R. § 41.1 et seq.)) published on November 22, 2011, in
the Federal Register notice applies to the appeal.
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interpretation of limitation [b] is met by “N+ 2 sub blocks each including” at
least “N storage units” because “including N storage units” is an open ended
limitation (emphasis added).
We further agree with the Examiner that Belveze’s Figure 2 discloses
limitation [b] “N+2 sub blocks” (e.g., N = 2 filter units (total 4 (N+2) filter
units) “each including N sample storage units” (e.g., each filter unit
including at least N = 2 capacitors; total 8 capacitors for each filter unit).
(Ans. 10; Belveze Fig. 2).
Appellants contend claims 7 and 11 are patentable because Belveze’s
Figure 2 does not disclose the claim 1 limitation [b] “N+2 sub blocks each
including N sample storage units.” (App. Br. 9).
Appellants’ contentions are not persuasive because Appellants’
contentions are not commensurate with the broader scope of the claims.
Specifically, independent claims 7 and 11 are silent regarding claim 1,
limitation [b], but instead recite the broader limitation of “a plurality of sub
blocks, each being in a state among N charging states for storing a received
sample.”
We find Appellants fail to present substantive arguments and
supporting evidence persuasive of Examiner error regarding the limitation at
issue in claims 7 and 11. (App. Br. 9). See In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted
Rule 41.37 to require more substantive arguments in an appeal brief than a
mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art.”).

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B.
Regarding the claim 1 limitation [e] “wherein the N charging states,
the transfer state, and the reset state are changed sequentially in response to
one or more of the plurality of clock signals,” and the commensurate
language in claim 11, Appellants contend:
FIG. 3 of Belveze shows that all time slots are occupied
by either "charging states" or "transfer states." Thus, the
operations of resetting to zero various ones of the capacitors or
"sample storage units" in the "sub blocks" F0-F3 in FIG. 2 of
Belveze or "reset states" described in paragraphs [0048],
[0052], [0058], [0061], [0062], and [0072] of Belveze would
necessarily have to be performed simultaneously with one or
more of the "charging states" or "transfer states" shown in FIG.
3 of Belveze.
(App. Br. 10) (emphasis in original omitted, emphasis added).
As an initial matter of claim construction, the scope of an apparatus
claim is not limited by a “wherein” clause that does not further limit the
apparatus claim to a particular structure. Our reviewing court guides that the
patentability of an apparatus claim “depends on the claimed structure, not on
the use or purpose of that structure.” Catalina Marketing Int’l. Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002).
Here, limitation [e] describes a function of changing charging states
of sub blocks, but fails to describe a specific structure that performs the
charging function to effect the N charging states, and therefore such pure
functional language fails to further limit the structure of the claimed
apparatus.
Further, assuming arguendo that weight could be given to the
functional language of the “wherein” clause by our reviewing court, we also
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find the weight of the evidence supports the Examiner's finding of
anticipation.
We agree with the Examiner that “[o]ne simply cannot charge a
capacitor or read/transfer a charge in the capacitor while at the same time
reset[ting] the same capacitor ‘back to zero’ (i.e., completely discharge the
capacitor).” (Ans. 12) (emphasis omitted).
We also adopt the Examiner’s findings regarding Belveze’s disclosure
of claim 1 limitation [e]. (Ans. 12-13). Regarding the “reset states,” we
observe Belveze discloses: “Unit 20 according to this embodiment of the
present invention comprises means, not shown, for setting to zero or to a
constant non-zero quiescent value the charge stored in each capacitor.”
(Belveze ¶ [0043], emphasis added). Appellants do not rebut the
Examiner’s findings in the Reply Brief.
We additionally observe the claim 7 limitation “wherein the N
charging states, the transfer state and the reset state are changed in response
to one or more of the plurality of clock signals generated by the clock
generator,” does not recite “sequentially.” Therefore, Appellants’ contention
that Belveze does not disclose “reset state[s] are changed sequentially . . . ”
is not persuasive because Appellants are arguing limitations that are not
claimed. (Claim 7; App. Br. 10).

C.
Regarding the claim 1 limitation [d2] “a transfer state for outputting
the stored sample,” and the commensurate language in claims 7 and 11,
Appellants contend “the claimed transfer state outputs the stored sample to
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the output terminal of the FIR filter which Belveze does not disclose or
suggest.” (App. Br. 11).
Appellants’ contentions are not persuasive because Appellants’
contentions are not commensurate with the broader scope of the claims.
Specifically, claims 1, 7, and 11 do not recite the transfer state outputs the
stored sample to the output terminal of the FIR filter.

D.
For these reasons, on this record, we are not persuaded of Examiner
error regarding the rejection of claims 1, 7, and 11. Accordingly, we sustain
the Examiner’s §102 rejection of claims 1, 7, and 11.

CLAIMS 13 AND 14
Regarding the claim 13 limitation of “each sub block has . . . an
output connected to an output terminal of the FIR filter” and the claim 14
limitation of “the stored sample is output to an output terminal of the FIR
filter during the transfer state,” Appellants contend “FIG. 2 of Belveze
illustrates that the 8 head capacitors or ‘sample storage units’ CHi,0 CHi,7 are
not output to an output terminal of the unit 20 but rather, are merely output
to the input terminals of the 2 integration capacitors or ‘sample storage
units’ Cli,0-Cli,l.” (App. Br. 11).
Appellants’ contentions are not persuasive. The Examiner finds, and
we agree, that “Belveze discloses that the stored sample is provided to the
output terminal OUT of the FIR 20. See [0042] and [0062].” (Ans. 14).
Specifically, Belveze discloses that M capacitors CIi,0 share their charge with
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capacitor CTO that is provided to output terminal OUT of FIR 20. (Belveze
¶ [0062]; see Fig. 2).
For these reasons, on this record, we are not persuaded of Examiner
error regarding the § 102 rejection of claims 13 and 14.

REPLY BRIEF
Appellants present new arguments in the Reply Brief (regarding
claims 2, 5, 8, 14, 17, and 19) that were not raised in the Appeal Brief.
(Reply Br. 1-11).
However, Appellants’ new arguments in the Reply Brief are untimely.
See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (Informative)
(“[T]he reply brief [is not] an opportunity to make arguments that could
have been made in the principal brief on appeal to rebut the Examiner’s
rejections, but were not.”). See also Optivus Tech., Inc. v. Ion Beam
Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (“[A]n issue not raised
by an appellant in its opening brief . . . is waived.”) (citation and internal
quotation marks omitted).

REMAINING CLAIMS
Although Appellants present in the Appeal Brief (App. Br. 11-16)
nominal separate arguments for rejected claims not addressed above, we
affirm the Examiner’s rejections of all rejected claims for the reasons set
forth by the Examiner in the Answer, and for the reasons discussed above
regarding commensurate limitations and issues.

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DECISION

We affirm the Examiner’s rejection R1 of claims 1-4 and 6-19 under
35 U.S.C. § 102.
We affirm the Examiner’s rejection R2 of claim 5 under 35 U.S.C.
§ 103.
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). See 37
C.F.R. § 41.50(f).
ORDER
AFFIRMED

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