11271121 (B.P.A.I. Jun. 27, 2012)

Ex Parte Leon

Board of Patent Appeals and InterferencesJun 27, 2012

11271121 (B.P.A.I. Jun. 27, 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. 11/271,121 11/10/2005 Christopher R. Leon 201.5-US-U1 9078 87564 7590 06/28/2012 Bay Area Technology Law Group PC 4089 Emery Street Emeryville, CA 94608 EXAMINER TRA, ANH QUAN ART UNIT PAPER NUMBER 2816 MAIL DATE DELIVERY MODE 06/28/2012 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 CHRISTOPHER R. LEON ____________________ Appeal 2010-000336 Application 11/271,1211 Technology Center 2800 ____________________ Before SCOTT R. BOALICK, MARC S. HOFF, and ANDREW J. DILLON, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL 1 The real party in interest is Atheros Communications, Inc. Appeal 2010-000336 Application 11/271,121 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1-3, 5-12, and 14-18.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. Appellant’s invention concerns a glitchless clock multiplexer. The multiplexer selects as its output either a first frequency source or a second frequency source. The transition between first frequency source and second frequency source is performed when the output of the multiplexer is at a logic low. The invention further provides that the first frequency source is powered on prior to switching to the second frequency source and powered down after switching to the second frequency source (Spec. 4, 13). Independent claim 1, reproduced below, is representative of the subject matter on appeal. 1. A device for producing a clock signal, the clock signal being selected from a plurality of asynchronous frequency sources, comprising: a first frequency source; a second frequency source; a select signal, wherein the select signal is asynchronous with both the first frequency source and the second frequency source; and a multiplexer, which receives the first frequency source and the second frequency source, wherein the multiplexer selects as an output of the multiplexer one of the first frequency source and the second frequency source based on a value of the 2 Claims 4 and 13 have been cancelled. Appeal 2010-000336 Application 11/271,121 3 select signal, such that when the multiplexer switches between the first frequency source and the second frequency source, and between the second frequency source and the first frequency source, the transition is performed when the output of the multiplexer is at a logic low, wherein the first frequency source is powered on prior to switching to the second frequency source and powered down after switching to the second frequency source. REFERENCES and REJECTIONS The Examiner relies upon the following prior art in rejecting the claims on appeal: Igarashi JP 2001160679 Dec. 06, 2002 Claims 1-3, 7-12, and 16-18 stand rejected under 35 U.S.C. § 102(b) as being unpatentable over Igarashi. Claims 5, 6, 14, and 15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Igarashi. ISSUES Appellant argues that Igarashi does not teach that a first frequency source is powered on prior to switching to the second frequency source and powered down after switching to the second frequency source (App. Br. 4- 5). Appellant asserts that, because Igarashi teaches switching to a second frequency source when the first frequency source is lost or otherwise disabled, the first frequency source is powered down prior to switching to the second frequency source (App. Br. 6). With respect to claims 8-12 and 14-18, Appellant contends that Igarashi does not teach using the circuit in a GPS receiver (App. Br. 7). Appellant’s arguments present us with the following issues: Appeal 2010-000336 Application 11/271,121 4 1. Does Igarashi teach that a first frequency source is powered on prior to switching to the second frequency source and powered down after switching to the second frequency source? 2. Is Appellant’s recitation of the use of its device in a GPS receiver in claims 8 and 9merely a statement of intended use? 3. Is the preamble of claims 10-12 and 14-18 necessary to give life, meaning, and vitality to the claims? FINDINGS OF FACT Appellant’s Specification 1. Appellant discloses a multiplexer 100 allowing for a baseband processor that, “when certain power modes are used, allows for a secondary frequency source connected to CK1 such that frequency source CK2 to be powered down” (Spec. 8). 2. Appellant further discloses that, “[w]hen one of the frequency source 502 or 504 is about to become unavailable for use by baseband section 512, the select signal 508 can be used to switch to the other frequency source 502 or 504 such that baseband section 512 can continue processing data. For example, when the RF section of GPS receiver 500 is powered down, or in a reduced power mode, one of the frequency sources 502 or 504 might be a VCO, which could then be powered down as well, as long as the multiplexer 506 of the present invention switches to the other frequency source 502 or 504 . . . . As shown, frequency sources 502 and 504 may also be two separate sources that remain powered” (Spec. 13). Appeal 2010-000336 Application 11/271,121 5 PRINCIPLES OF LAW A preamble is entitled to patentable weight when it is “necessary to give life, meaning, and vitality” to the claim. Pitney Bowes, Inc. v. Hewlett- Packard Co., 182 F.3d 1298, 1306 (Fed. Cir. 1999) (quoting Kropa v. Robie, 187 F.2d 150, 152 (CCPA 1951). ANALYSIS CLAIMS 1, 2, AND 7 The correctness of the Examiner’s rejection depends on the interpretation of the terms “powered on” and “powered down.” It appears to be Appellant’s position that the terms should be read as verbs. Under that interpretation, if Igarashi does not teach that the first frequency source is turned off, i.e. “powered down,” either manually or automatically, before the multiplexer switches outputs to the second frequency source, rather than after the switch as claim 1 recites, then the Examiner’s rejection is erroneous. An alternate interpretation of “powered on” and “powered down” is that the terms refer to the states of the first and second frequency sources. Under this interpretation, if Igarashi’s first frequency source is “off” after switching to the second frequency source occurs, then Igarashi teaches the limitations of claim 1. The Specification does not make clear that either interpretation is correct. Appellant discloses that the presence of a secondary frequency source connected to CK1 allows frequency source CK2 “to be powered down” (FF 1). Appellant further discloses that “[w]hen one of the frequency source 502 or 504 is about to become unavailable . . . the select signal 508 Appeal 2010-000336 Application 11/271,121 6 can be used to switch to the other frequency source 502 or 504 . . . . For example, when the RF section of GPS receiver 500 is powered down, or in a reduced power mode, one of the frequency sources 502 or 504 . . . could then be powered down as well, as long as the multiplexer 506 of the present invention switches to the other frequency source 502 or 504 . . . . As shown, frequency sources 502 and 504 may also be two separate sources that remain powered” (FF 2). In the absence of clear intent in the Specification that “powered on” and “powered down” are to be regarded as verbs, we agree with the Examiner’s finding that Igarashi teaches the limitations of claim 1, including that the first frequency source is powered on prior to switching to the second frequency source and powered down after switching to the second frequency source (Ans. 3). We agree with the Examiner’s finding that Fig. 13 of Igarashi shows that “first frequency source” CLK1 is powered on (a long time) before switching to the second frequency source (indicated at time points t3, t4, and t5 – CLK1 is powered on before time t3) and is powered down after the switch of CLK to the “second frequency source” CLK0 (Ans. 5). We find that the Examiner did not err in rejecting claims 1, 2, and 7 under § 102 as being anticipated by Igarashi. We will sustain the rejection. CLAIM 3 Appellant argues that Igarashi does not teach switching between the first frequency source and second frequency source “to conserve power,” as claim 3 recites. We agree with the Examiner’s finding that this language is merely a result or intended use of Igarashi. Because we find that Igarashi teaches the structural limitations of claim 3, we further find that the Appeal 2010-000336 Application 11/271,121 7 Examiner did not err in rejecting claim 3 under § 102 as being anticipated by Igarashi. We will sustain the rejection. CLAIMS 8 AND 9 The Examiner finds that Igarashi’s circuit is “capable of providing clock signal in a GPS receiver. Therefore, it is seen as an intended use for using the device in a GPS receiver” (Ans. 4). We do not agree with the Examiner’s position. Igarashi does not teach the use of its circuit in a GPS receiver. Without such a teaching within Igarashi, we find that a rejection for anticipation is erroneous. We will not sustain the Examiner’s § 102 rejection of claims 8 and 9. CLAIMS 10-12 AND 16-18 Independent claim 10 recites “[a] Global Positioning System (GPS) Receiver, comprising . . . .” Nothing in the body of the claim refers back to the preamble or mentions any GPS components or functions. We conclude that the preamble is not necessary to “give life, meaning, and vitality to the claim,” and we do not give patentable weight to it. Pitney Bowes, 182 F.3d at 1306. As a result, we find that Igarashi teaches all the limitations of claims 10-12 and 16-18, for the reasons given supra with respect to claim 1. We will sustain the Examiner’s § 102 rejection. CLAIMS 5, 6, 14, AND 15 Appellant presents the same arguments with respect to the § 103 rejection of these claims that were presented with respect to the § 102 rejection of claim 1. Because we sustain the § 102 rejection of claim 1, then we will sustain the §103 rejection of claims 5, 6, 14, and 15 as being unpatentable over Igarashi, for the same reasons. Appeal 2010-000336 Application 11/271,121 8 CONCLUSIONS 1. Igarashi teaches that a first frequency source is powered on prior to switching to the second frequency source and powered down after switching to the second frequency source. 2. Appellant’s recitation of the use of its device in a GPS receiver in claims 8 and 9 is not merely a statement of intended use. 3. The preamble of claims 10-12 and 14-18 is not necessary to give life, meaning, and vitality to the claims. DECISION The Examiner’s decision rejecting claims 1-3, 5-7, 10-12, and 14-18 is affirmed. The Examiner’s decision rejecting claims 8 and 9 is reversed. 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)(2010). AFFIRMED-IN-PART Vsh/peb