Ex Parte Mehas et al

Board of Patent Appeals and Interferences

Jan 14, 2009

10917628 (B.P.A.I. Jan. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte GUSTAVO J. MEHAS,
CHUN CHEUNG,
and BRANDON D. DAY
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Appeal 2008-6342
Application 10/917,628
Technology Center 2800
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Decided: January 14, 2009
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Before KENNETH W. HAIRSTON, JOHN A. JEFFERY, and
THOMAS S. HAHN, Administrative Patent Judges.

HAHN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejections of claims 7, 9, 11, 12, and 15-24. We have jurisdiction under 35
U.S.C. § 6(b). We affirm.

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Application 10/917,628

STATEMENT OF THE CASE
Appellants invented a comparator based hysteresis control circuit for
enabling an external circuit, e.g., a DC-DC voltage converter. The control
circuit includes an enable pin that is connected to an external voltage signal.
The enable pin is also connected to an input of a comparator, and a reference
voltage is connected to another input of the comparator. Additionally
connected to the enable pin is a current source that can act as a current sink.
The current source is further connected to an output of the comparator.
When the external voltage signal exceeds the reference voltage, the
comparator outputs a first signal level that deactivates the current source and
activates a connected external circuit. When the external voltage signal is
less than the reference voltage, the comparator outputs a second signal level
that activates the current source and deactivates the connected external
circuit. The comparator output signals may be used for functions other than
enablement of a DC-DC converter, such as voltage monitoring and
activation of test/trim modes.1 Claim 7 is illustrative. The disputed limitation
is emphasized for clarity:

7. A DC-DC voltage converter package comprising:

a DC-DC voltage converter circuitry;

an enable pin for receiving an external voltage signal to enable and
disable the DC-DC voltage converter circuitry responsive to the
external voltage signal;

a current sink connected to the enable pin within the DC-DC voltage
converter package for providing hysteresis control on the enable pin

1 See generally Spec. ¶¶ 0009-0015; Figs. 1 and 2.
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of the DC-DC voltage converter circuitry; and

a comparator within the DC-DC voltage converter package for
comparing the external voltage signal to a reference voltage signal,
wherein the comparator generates a control signal at a first voltage
level for disabling the current sink and enabling the DC-DC voltage
converter circuitry if the input voltage signal is greater than the
reference voltage signal and generates the control signal at a second
voltage level for enabling the current sink and disabling the DC-DC
voltage converter circuitry if the input voltage signal is less than the
reference signal, wherein the enable pin is used for an alternate
function when the DC-DC voltage converter circuitry is disabled.

The Examiner relies on the following prior art references to show
unpatentability:
Shacter US 6,316,978 B1 Nov. 13, 2001
Yoshimura US 2003/0202379 A1 Oct. 30, 2003

Claims 7, 9, 11, 12, and 15-24 stand rejected under 35 U.S.C. §103(a)
as unpatentable over Yoshimura and Shacter (Ans. 3).
Rather than repeat the arguments of Appellants or of the Examiner,
we refer to the Brief and the Answer2 for their respective details. In this
decision, we have considered only those arguments actually made by
Appellants. Arguments that Appellants could have made but did not make in
their Brief have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).

2 Appellants did not file a Reply Brief. We, therefore, refer to (1) the Appeal
Brief filed June 22, 2007, and (2) the Answer mailed October 10, 2007
throughout this opinion.
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Appellants’ Arguments
Appellants do not separately argue the individual claims within the
rejection. Instead, Appellants address appealed independent claims 7, 11,
and 15 by asserting that:
Claims 11 and 15 include limitations similar to those of Claim 1
[sic] and are allowable over the recited combination of the
Yoshimura and Shacter since the Examiner has failed to establish a
prima facie case as to why these combination of references teach
all of the limitations of claims 11 and 15 for reasons similar to those
discussed with respect to Claim 1 [sic].3

(Br. 16). With respect to the remaining appealed claims the Appellants
assert “the Examiner has improperly applied the Yoshimura and Shacter
references to Claims 7, 9, 11-13 [sic] and 15-24” (Br. 5).4 We, accordingly,
select claim 7 as representative. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellants’ arguments are that (1) “the various combinations of
references proposed by the Examiner are not supported by a proper
suggestion or motivation to make each proposed modification” (Br. 6), and
(2) “[t]he Examiner has provided no discussion that the Shacter reference
either explicitly or implicitly describes that the enable pin could be used for
some alternative function” (Br. 15).

3 Claim 1 is a canceled claim (Br. 17). We, therefore, presume Appellants’
listing of claim 1 is a typographical error, and also presume, based on the
record that Appellants intended to list independent claim 7 as the claim
including limitations similar to claims 11 and 15.
4 Claim 13 is canceled (Br. 18).
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ISSUE
Have Appellants shown the Examiner erred in combining the
teachings of Yoshimura and Shacter to arrive at the claimed invention? The
issue turns on whether (1) the Examiner provides reasoning and rationale for
combining the references, and (2) Shacter teaches or suggests using a
comparator based hysteresis control circuit for alternative functions.

FINDINGS OF FACT
The record supports the following Findings of Fact (FF) by a
preponderance of the evidence:
1. Yoshimura discloses an electronic circuit including an external power
source with a connected voltage regulator controlled by a comparator
based enablement circuit (Yoshimura, ¶¶ 0026-0030; Fig. 3).
2. Shacter teaches a comparator based circuit that is disclosed as providing
hysteresis control independent of process, temperature, and supply
voltage variations (Shacter, Abstract; col. 1, ll. 10-14).
3. Shacter discloses a hysteresis control circuit that includes a node
connected to an input voltage and a comparator for determining reference
and input voltage differences and outputting signal values to a current
source also connected to the node, so that the current source outputs a
first current level to the node when the comparator outputs a first value
signal and the current source outputs a second current level to the node
when the comparator outputs a second value signal (Shacter, col. 3, l. 30
– col. 4, l. 9; Fig. 2).

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PRINCIPLES OF LAW
An Examiner in rejecting claims under 35 U.S.C. § 103 must establish
a factual basis to support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073 (Fed. Cir. 1988). In so doing, the Examiner must make
the factual determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17 (1966). Among the factual determinations is a requirement to ascertain
differences between prior art and claims at issue (Id.). When claims in issue
cover an apparatus, the claimed elements can be defined structurally or
functionally, i.e., by what the element does. In re Schreiber, 128 F.3d 1473,
1478 (Fed. Cir. 1997). Even though an apparatus may be claimed either
structurally or functionally, a claimed apparatus is only distinguishable from
prior art in terms of structure not function. Id. at 1477-78. “[A]pparatus
claims cover what a device is, not what a device does.” Hewlett-Packard Co.
v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990) (emphasis
deleted).
The question of obviousness of claimed subject matter involving a
combination of known elements is addressed in KSR Int’l v. Teleflex, Inc.,
127 S. Ct. 1727 (2007), which explains:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. Sakraida [v. AG
Pro, Inc., 425 U.S. 273 (1976)] and Anderson's-Black Rock[,
Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)] are
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illustrative—a court must ask whether the improvement is more
than the predictable use of prior art elements according to their
established functions.
KSR, 127 S. Ct. at 1740.
If the claimed subject matter cannot be fairly characterized as
involving the simple substitution of one known element for another or the
mere application of a known technique to a piece of prior art ready for the
improvement, a holding of obviousness can be based on a showing that
“there was an apparent reason to combine the known elements in the fashion
claimed.” Id. at 1740-41. Such a showing requires
some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness. . . . [H]owever, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.

Id. at 1741 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006))
(internal quotation marks omitted).
During examination of a patent application, a claim is given its
broadest reasonable construction “in light of the specification as it
would be interpreted by one of ordinary skill in the art.” In re Am.
Acad. Of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).

ANALYSIS
We begin our analysis with Appellants’ argument that the Examiner’s
combining of Yoshimura and Shacter is “not supported by a proper
suggestion or motivation to make each proposed modification” (Br. 6). The
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Examiner’s indicated modification is “to use Shacter’s enable circuit for
Yashimura’s [sic] enable circuit 10 …” (Ans. 3). The Shacter enable circuit
that the Examiner indicates for modifying Yoshimura with is shown in
Shacter Figure 2 that is reproduced below:

Figure 2 of Shacter Showing Schematic Drawing of
Comparator 8 Based Enablement Circuit
The Yoshimura enable circuit 10 that the Examiner indicates for
modification with the Shacter enable circuit is shown in Yoshimura Figure 3
that is reproduced below:
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Figure 3 of Yoshimura Showing Block and Schematic Drawing of a
Circuit Including Voltage Regulator 31 with Enable Circuit 10
We noted above in the Findings of Fact section that Shacter teaches a
comparator based enable circuit to provide hysteresis control with disclosed
advantages of being independent of process, temperature, and supply voltage
variations (FF 2). We are persuaded that the Examiner in relying on the
Shacter disclosures of advantages has set out a prima facie obviousness
rejection by reasoning that “Shacter’s figure 2 shows an enable circuit
having the advantage of being independent of temperature and process
variations” (Ans. 3). Referencing these advantages, the Examiner, for
example, reasons that “it would have been obvious to one having ordinary
skill in the art to use Shacter’s enable circuit for Yashimura’s [sic] enable
circuit 10 for the purpose of reducing circuit dependence on temperature and
process variations, thereby improving the circuit performance” (Id.).
Responding to Appellants’ assertion that the combined reference
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obviousness rejection lacks adequate motivation, the Examiner repeats the
reasoning reproduced here for combining references, and further notes that
Appellants provide “no specific argument to why the Yashimura [sic] and
Shacter references are not combinable” (Ans. 5). Appellants are silent as the
Examiner notes. Accordingly, Appellants have not persuaded us of error in
the Examiner’s articulated reasoning and rational underpinning for the
combination of references that support the prima facie obviousness rejection.
Continuing, we note that Appellants do not dispute the Examiner’s
findings regarding Yoshimura teaching a DC-DC converter package
including DC-DC converter circuitry with an enabling circuit (Ans. 3).
Rather, Appellants argue that “[t]he Examiner has provided no discussion
that the Shacter reference either explicitly or implicitly describes that the
enable pin could be used for some alternative function” (Br. 15). The claim 7
recited limitation that Appellants rely on reads: “the enable pin is used for an
alternative function when the DC-DC voltage converter circuitry is
disabled.”
The Examiner responds to Appellants’ argument by noting that:
The limitation “is used for” is clearly seen as an intended use
limitation. Scharter’s [sic] circuit figure 2 is capable of being used for
alternative function or any required function when the DC-DC
converter circuitry is disabled, so indeed the circuit is available to be
used for any other particular function.
(Ans. 5). Given that the recited limitation does not identify a specific
alternative function, we find no error in the Examiner indicating that
the Shacter taught circuit is “available to be used for any other
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particular function” (Id.). The Examiner is broadly interpreting the
claim, and it is the broadest reasonable construction that is required to
be given to an examined claim. Am. Acad. Of Sci. Tech. Ctr., 367 F.3d
at 1364. Appellants do not argue that Shacter teaches or suggests any
restriction as to any functions that can be enabled with the disclosed
circuit. Therefore, we concur with the Examiner that the scope and
breadth of the recited limitation encompasses any function for which
the Shacter enable circuit could be used.
We also are not persuaded by the Appellants’ alternative function
argument, because “apparatus claims cover what a device is, not what a
device does.” Hewlett-Packard Co., 909 F.2d at 1468 (emphasis deleted).
Appellants assert that Shacter is deficient based on arguments concerning an
unspecified function, not structure.5 The claimed enable pin in conjunction
with the recited control signal is recited “to enable and disable the DC-DC
voltage converter circuitry,” but no structure to accomplish functions other
than enablement and disablement is recited. In any event, we see no reason
why Shacter teachings would not be encompassed by the recited “some
alternative function[s],” particularly in view of the Shacter taught control
circuit providing different value output signals that are without restricting
disclosure as to what functions could be enabled. While Shacter is silent as
to what functions can be enabled by the comparator output signals, we

5 The disputed limitations in the appealed claims are not in means-plus-
function format and, therefore, do not incorporate Specification-disclosed or
equivalent structures as authorized by 35 U.S.C. § 112, sixth paragraph. See
In re Morris, 127 F.3d 1048, 1055 (Fed. Cir. 1997) (“There is no
comparable mandate in the patent statute that relates the claim scope of non-
§ 112 ¶ 6 claims to particular matter found in the specification.”).
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concur with the Examiner that skilled artisans would nonetheless recognize
that the comparator output signals would be capable of enabling “alternative
function[s]” as is claimed (Ans. 4 and 5). As such, we see no reason why
Shacter teachings would be incapable of enabling control for the recited
“alternative function.” On the record before us, we therefore find that
Appellants have not persuasively rebutted the Examiner’s prima facie
obviousness rejection.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s rejection of representative claim 7. Therefore, we will
sustain the Examiner’s rejection of that claim, and claims 9, 11, 12, and 15-
24 that fall with claim 7.

CONCLUSIONS OF LAW
Appellants have not shown that the Examiner erred in combining
Yoshimura and Shacter for the prima facie obviousness rejection under §
103, because Appellants have not shown the Examiner erred in (1) the
reasoning and rationale for the combination of references obviousness
rejection, and (2) finding Shacter teaches or suggest using a comparator
based hysteresis control circuit for alternative functions.

DECISION
We have sustained the Examiner’s rejection with respect to all claims
on appeal. Therefore, the Examiner’s decision rejecting claims 7, 9, 11, 12,
and 15-24 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).
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AFFIRMED

Eld

HOWISON & ARNOTT, L.L.P
P.O. BOX 741715
DALLAS TX, 75374-1715
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