Ex Parte Lu et al

Board of Patent Appeals and Interferences

Jun 29, 2012

11080296 (B.P.A.I. Jun. 29, 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.
11/080,296 03/14/2005 Robin Lu 3875.0430001 4238
26111 7590 06/29/2012
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
NGUYEN, LONG T
ART UNIT PAPER NUMBER
2816
MAIL DATE DELIVERY MODE
06/29/2012 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 ROBIN LU and YAN ZHANG
____________

Appeal 2010-002847
Application 11/080,296
Technology Center 2800
____________

Before DENISE POTHIER, JEFFREY S. SMITH, and
STANLEY M. WEINBERG, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-002847
Application 11/080,296

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
non-final rejection of claims 22, 24, 27, 29, and 32-35. Claims 1-21 have
been allowed. See Ans. 2. Claims 23, 25, 26, 28, 30, and 31have been
canceled. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Invention
Appellants’ invention relates to a balanced debounce circuit with
noise filter for a digital system. Title.

Representative Claim
22. A digital circuit for debouncing an input signal having a first state
and a second state and producing an output, the circuit disposed
entirely within an integrated circuit device, the circuit communicating
to the output only changes of input signal state occurring a
programmable predetermined period of time after a most recent
previous change of input signal state.

Prior Art
Mashimo US 6,670,831 B1 Dec. 30, 2003

Examiner’s Rejections
Claims 22, 24, 27, 29, and 32-35 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Mashimo.

Appeal 2010-002847
Application 11/080,296

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Claim Groupings
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal on the basis of claim 22.

PRINCIPAL ISSUE
Did the Examiner fail to make a prima facie case of anticipation of
claim 22?

ANALYSIS
Section 102 rejection of claim 22
Appellants contend that Mashimo does not disclose, “[a] digital circuit
for debouncing an input signal having a first state and a second state and
producing an output, the circuit disposed entirely within an integrated circuit
device, the circuit communicating to the output only changes of input signal
state occurring a programmable predetermined period of time after a most
recent previous change of input signal state” as recited in claim 22. App. Br.
22-23; Reply Br. 3-4. According to Appellants, the Examiner has not
established a prima facie case of anticipation. App. Br. 22-23; Reply Br. 3-
4. The Examiner finds that Figures 1 and 2 and col. 4, ll. 42-47 and 59-62 of
Mashimo disclose the limitations of claim 22, and maps the claim limitations
to the cited portions of Mashimo. Ans. 3-5.
For a prior art reference to anticipate in terms of 35 U.S.C. § 102,
every element of the claimed invention must be identically shown in a single
reference. However, this is not an “ipsissimis verbis” test. In re Bond, 910
F.2d 831, 832 (Fed. Cir. 1990). Although Appellants quote the claim
language and allege that the cited portions of Mashimo do not describe the
Appeal 2010-002847
Application 11/080,296

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quoted language, this argument is ineffective in demonstrating error in the
Examiner’s findings or legal conclusions to establish the patentability of the
claims on appeal. See Ex Parte Belinne, No. 2009-004693, slip op. at 7-8
(BPAI Aug. 10, 2009) (informative). Merely pointing out what claim 22
recites and then asserting that Mashimo fails to teach a limitation (see App.
Br. 23) is not considered a separate argument for patentability. See In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
Further, we disagree with Appellants’ contention that the Examiner
has not established a prima facie case. “[A]ll that is required of the [Patent]
[O]ffice to meet its prima facie burden of production is to set forth the
statutory basis of the rejection and the reference or references relied upon in
a sufficiently articulate and informative manner as to meet the notice
requirement of [35 U.S.C.] § 132.” In re Jung, 637 F.3d 1356, 1363 (Fed.
Cir. 2011). We find that the Examiner has met this burden. The Examiner
explains how the cited portions map to the recited functions. See Ans. 3-6.
The Examiner’s discussion includes Mashimo imposing a delay (e.g., only
communicating to the output after programmable predetermined time period
as recited) to the output between input signal changes. See Ans. 5.
Appellants have not provided persuasive evidence or argument to rebut the
Examiner’s prima facie case. See Jung, 637 F.3d at 1365-66 (citing Ex
Parte Frye, 94 USPQ2d 1072 (BPAI 2010) (precedential)).
We sustain the rejection of claim 22 under 35 U.S.C. § 102.
Appellants do not present arguments for separate patentability of claim 24,
which falls with claim 22.
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Application 11/080,296

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Section 102 rejection of claims 27, 29, and 32-35
Appellants contend that the Examiner does not explain how and where
Mashimo describes the limitations of claims 27, 29, and 32-35. Appellants
conclude that the Examiner has not established a prima face case of
anticipation of claims 27, 29, and 32-35. App. Br. 23-26; Reply Br. 4-8.
We find Appellants’ contentions unpersuasive for similar reasons discussed
in the analysis of claim 22. Namely, while Appellants quote claim language
in claims 27 and 32-35, and allege that the cited portions of Mashimo do not
describe the quoted language, this argument is ineffective in demonstrating
error in the Examiner’s findings or legal conclusions to establish the
patentability of the claims on appeal. Additionally, the Examiner further
explains how the cited portions map to the recited functions. See Ans. 3-6.
We sustain the rejection of claims 27, 29, and 32-35 under 35 U.S.C.
§ 102.

CONCLUSION
The Examiner established a prima facie case of anticipation of claim
22.

DECISION
The rejection of claims 22, 24, 27, 29, and 32-35 under 35 U.S.C.
§ 102(b) as being anticipated by Mashimo 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). See 37 C.F.R. §
41.50(f).

Appeal 2010-002847
Application 11/080,296

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AFFIRMED

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