Ex Parte MITANI et al

Patent Trials and Appeals Board

Mar 18, 2019

14521057 - (D) (P.T.A.B. Mar. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/521,057 10/22/2014 Masahiro MITANI
85023 7590 03/18/2019
EGL/Seiko Instruments Inc.
P.O. Box 10395
Chicago, IL 60611
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
11106/715 2324
EXAMINER
JAGER,RYANC
ART UNIT PAPER NUMBER
2842
MAIL DATE DELIVERY MODE
03/18/2019 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 PATENT TRIAL AND APPEAL BOARD
Ex parte MASAHIRO MITANI, MINORU ARIY AMA,
DAISUKE MURAOKA, and TOMOKI HIKICHI
Appeal2018-001504
Application 14/521,057
Technology Center 2800
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks our review of the
Examiner's decision to reject claims 1-3.
We have jurisdiction. 35 U.S.C. § 6.
We reverse.
1 Appellant is the Applicant, Seiko Instruments Inc. Appellant identifies SII
Semiconductor Corporation as the real party in interest. App. Br. 1.
Appeal2018-001504
Application 14/521,057
SUBJECT MATTER
The subject matter on appeal "relates to an output driver circuit
provided with an overcurrent protection function." Spec. ,r 2.
Sole independent claim 1 is illustrative of the claimed subject matter
and is copied below with the key limitation at issue in this appeal italicized:
1. An output driver circuit with an open-drain output, comprising:
a constant-current circuit which supplies a constant
current;
a constant-current mirror MOS transistor which generates
a voltage based on the constant current;
a selector circuit which separately receives the voltage
based on the constant current that is generated by the constant-
current mirror MOS transistor and a voltage of a first supply
terminal and outputs one of the received voltages according to a
signal supplied to an input terminal of the output driver circuit;
and
an output MOS transistor having a gate thereof connected
to an output terminal of the selector circuit, an open drain output
thereof connected to an output terminal of the output driver
circuit, and a source thereof connected to the first supply
terminal, the output terminal connected to a second supply
terminal through an external pull-up resistor,
wherein the constant-current mirror MOS transistor and
the output MOS transistor constitute a current mirror circuit, the
selector circuit is between the constant-current mirror MOS
transistor and the output MOS transistor, and
a current flowing between the source and the drain of the
output MOS transistor is limited by a voltage based on the
constant current.
App. Br. 13 (emphasis added).
2
Appeal2018-001504
Application 14/521,057
REJECTIONS
On appeal, the Examiner maintains the following rejections under pre-
AIA 35 U.S.C. § I03(a):
I. Claim 1 as unpatentable over Montalvo (US 2011/0227649 Al,
pub. Sept. 22, 2011 ); and
II. Claims 2 and 3 as unpatentable over Montalvo in view of Takano
(US 2011/0156822 Al, pub June 30, 2011).
Ans. 2; Final 2--4.
STATEMENT OF THE CASE
In rejecting claim 1 as obvious over the disclosure of Montalvo, the
Examiner finds that Montalvo discloses, in Figure 7, each element of claim 1
but for the recited "external pull-up resistor." Final 2-3. Montalvo's Figure
7 is reproduced below:
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517 519
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FIG. 7
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Appeal2018-001504
Application 14/521,057
Figure 7 of Montalvo "is a schematic diagram of an embodiment of a
variable gain tran[sc]onductor 700." Montalvo ,r 76. To address the
deficiency of Montalvo, "[t]he [E]xaminer takes official notice that it would
have been obvious that the circuit of Montalvo [503,505,517,519] could be
replaced/represented by an external resistor, without departing from the
function of the rest of the circuit." Final 3.
Appellant, inter alia, disputes the appropriateness of the Examiner's
use of "official notice of facts without citing a prior art reference where the
facts are not capable of instant and unquestionable demonstration of being
well-known." App. Br. 6.
OPINION
Under these facts, the threshold issue we must determine for each
rejection is whether the Examiner, by taking official notice of certain facts,
satisfied the Patent Office's evidentiary burden required to make a prima
facie case of obviousness. We decide this issue in the negative, and do not
sustain the rejections on appeal.
"In rejecting an application, factual determinations by the PTO must
be based on a preponderance of the evidence." In re Oetiker, 977 F.2d 1443,
1449 (Fed. Cir. 1992). Here, the Examiner fails to supply the record with a
preponderance of evidence supporting the fact taken by official notice.
Specifically, in the Final Office Action, the Examiner did not provide
support in the form of documentary evidence for the proposition that
Montalvo's circuit consisting of transistors 503, 505, 517, and 519 "could be
replaced/represented by an external resistor, without departing from the
function of the rest of the circuit." Final Act. 3. When challenged on this
4
Appeal2018-001504
Application 14/521,057
point (App. Br. 6), we determine that the Examiner, at best, provided an
unsatisfactory response. 2 Indeed, in the Answer, the Examiner does not
expressly mention Appellant's argument regarding official notice, and it is
not entirely clear on this record whether the Examiner actually responds to
Appellant's argument.
In any event, we emphasize that the Manual of Patent Examining
Procedure counsels examiners to rarely use official notice without
documentary evidence in a final rejection as the Examiner does here:
Official notice without documentary evidence to support an
examiner's conclusion is permissible only in some
circumstances. While "official notice" may be relied on, these
circumstances should be rare when an application is under
final rejection or action under 3 7 CFR 1.113. Official notice
unsupported by documentary evidence should only be taken by
the examiner where the facts asserted to be well-known, or to
be common knowledge in the art are capable of instant and
unquestionable demonstration as being well-known.
2 To the extent the Examiner's statement at page 3 of the Answer that
transistors 503, 505, 517, and 519 are "essentially resistors see fig. 4 A---C
patent 5,256,985" was intended to address Appellant's argument, the
Examiner fails to explain how the '985 patent disclosure satisfies the
preponderance of evidence standard for the fact the Examiner seeks to
establish. Final 3. Specifically, we observe the '985 patent to Brown
discloses transistors in embodiments 4A and 4B and a resistor in
embodiment 4C. See Brown, 4:57-5:10. In transistors Q4A and Q4B, a
"bias voltage is applied ... to produce the desired current." Id. at 4:65---67,
5:5-7. On the other hand, resistor R3 in embodiment 4C supplies current
which "fluctuates the power supply voltage V nn." Id. at 5:8-10. It is
manifestly unclear how this disclosure evinces that transistors are
"essentially resistors," making transistors capable of being
"replaced/represented by an external resistor without departing from the
function of the rest of the circuit" as the Examiner asserts. Ans. 3; Final 3.
5
Appeal2018-001504
Application 14/521,057
It would not be appropriate for the examiner to take official
notice of facts without citing a prior art reference where facts
asserted to be well known are not capable of instant and
unquestionable demonstration as being well-known. For
example, assertions of technical facts in the areas of esoteric
technology or specific knowledge of the prior art must always be
supported by citation to some reference work recognized as
standard in the pertinent art. In re Ahlert, 424 F.2d 1088, 1091
(CCPA 1970).
MPEP § 2144.03A (italicized emphasis ours, underlining appears in
original).
Contrary to these principles set forth in In re Ahlert, however, the
Examiner took official notice to assert technical facts without citation to any
documentary evidence. Final Act. 3. When challenged on this point (App.
Br. 6), the Examiner-at best----cited to Figures 4A---C of Brown3 with no
explicative reasoning how such disclosure purportedly evinces these
technical facts. Ans. 3.
Under these circumstances, we cannot sustain the obviousness
rejections on appeal.
DECISION
REVERSED
3 The Examiner does not explain, nor do we discern, how Brown qualifies as
a "reference work recognized as standard in the pertinent art." Ahlert, 424
F.2d at 1091.
6