Ex parte Miyazaki

Board of Patent Appeals and Interferences

Jun 18, 1998

08241875 (B.P.A.I. Jun. 18, 1998)

Application for patent filed May 12, 1994.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte TAKAHIRO MIYAZAKI

_____________
Appeal No. 96-3258
Application 08/241,8751
______________
ON BRIEF
_______________
Before THOMAS, KRASS and TORCZON, Administrative Patent
Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-3258
Application 08/241,875
2
Appellant has appealed to the Board from the examiner’s
final rejection of claims 4 to 10 and 13, which constitute all
the claims remaining in the application.
Representative claim 4 is reproduced below:
4. A low power, high speed driving circuit comprising:
a power terminal for connection to a power voltage
source;
a current source for providing current outputs including
a first current and a second current proportional to the first
current, the second current being input into the first
current;
a control circuit operably connected to said current
source and generating a control signal applied to said current
source;
said current source being initiated in response to the
control signal from said control circuit and being controlled
by said control circuit such that the sum of the first current
and the second current input into the first current is a
constant magnitude;
a switching element having input, output and control
terminals, the input terminal of said switching element being
connected to said power terminal, and the output terminal of
said switching element having a predetermined output potential
threshold; and
said switching element becoming conductive in response to
the input of the second current from said current source to
the control terminal thereof in dependence upon the potential
of said output terminal being lower than the predetermined
output potential threshold thereof.
Appeal No. 96-3258
Application 08/241,875
The Reply Brief filed on September 4, 1996 has not2
been entered by the examiner in a communication dated
September 25, 1996. Therefore, we have not considered it in
our deliberations.
3
There are no references relied on by the examiner.
Claims 4 to 10 and 13 stand rejected under the second
paragraph of 35 U.S.C. § 112 as being indefinite for failing
to particularly point out and distinctly claim the subject
matter which appellant regards as the invention. The
examiner’s position is expressed at pages 3 and 4 of the
Answer.
Rather than repeat the positions of the appellant and the
examiner, reference is made to the Brief and the Answer for2
the respective details thereof.
OPINION
For all the reasons expressed by the examiner in the
Answer, and for the additional reasons presented here, we will
sustain the rejection of claims 4 to 10 and 13 under the
second paragraph 35 U.S.C. § 112.
Appeal No. 96-3258
Application 08/241,875
4
Under the second paragraph of 35 U.S.C. § 112, it is to
be noted that to comply with the requirements of the cited
paragraph, a claim must set out and circumscribe a particular
area with a reasonable degree of precision and particularity
when read in light of the disclosure and the teachings of the
prior art as it would be by the artisan. Note In re Johnson,
558 F.2d 1008, 1016, 194 USPQ 187, 194 (CCPA 1977); In re
Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971).
Acceptability of the claim language depends on whether one of
ordinary skill in the art would understand what is claimed in
light of the specification. Seattle Box Co. v. Industrial
Crating & Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 574
(Fed. Cir. 1984).
Our own study of representative claim 4 in a vacuum leads
us to the same questions raised by the examiner at pages 3 and
4 of the Answer.
When we study the subject matter of representative claim
4 on appeal in light of the disclosed invention, as we must in
accordance with the above noted precedent, those problems and
questions raised by the examiner at pages 3 and 4 of the
Answer are in fact amplified rather than eliminated.
Appeal No. 96-3258
Application 08/241,875
5
Additionally, the claimed first and second currents would
appear only to correspond to currents I and I of1 2
representative Figure 1, for example. This study of the
claimed invention in light of the disclosure reveals a very
glaring discontinuity. The claimed switching element,
comprising the last two clauses of representative claim 4 on
appeal, is disclosed to be the NMOS transistor NT in
representative Figure 1 and the other figures as well, even
the conventional circuit shown in Figure 8. Note the
discussion of this latter figure at the middle of page 1 of
the specification indicates that “NT represents an NMOS
transistor used as a switching element.” A similar
correspondence has been established at the bottom of page 6 of
the specification, the top of page 7 and the entire short
paragraph at the bottom of page 14. The language of
representative claim 4 relating to the claimed switching
element does not clearly correspond to the switching element
of the disclosed invention.
All of these above problems are further compounded when
appellant’s arguments are considered in the Brief on appeal in
at least two respects. At the beginning of the long paragraph
Appeal No. 96-3258
Application 08/241,875
6
at page 8 of the Brief on appeal, the claimed switching
element has been stated to correspond to the transistor Q ,3
whereas the lower portion of this same paragraph at the bottom
at page 8 indicates that this transistor is characterized as
an output transistor, which feature and characterization is
more consistent with the disclosed invention. Again, at the
middle and bottom at page 9 of the Brief on appeal, the
claimed switching element recited in representative claim 4 on
appeal is again said to correspond to transistor Q . Also at3
the bottom of page 9 of the Brief, the claimed first current
is said to correspond to I and the claimed second current is1
said to correspond to the feedback current IFB, which is
further characterized as being a modified version of I . In2
addition to separately characterizing IFB as a separate
subcurrent from I and I in the disclosed invention, this1 2
characterization of appellant adds further ambiguity to what
would appear to have been a normally clear correspondence of
the claimed first and second currents with the latter two
respective currents in representative Figure 1. In any event,
this concern along with the discontinuity between the argued
meaning of the claimed switching element and the disclosed
Appeal No. 96-3258
Application 08/241,875
7
meaning of the same phrase further amplify the ambiguities of
the presently claimed invention. As a whole, appellant’s
arguments in the Brief confirm the examiner’s questions and
ambiguities raised in the Answer as well as add to them.
Inasmuch as there are no arguments presented as to
dependent claims 5 to 10, and in view of the fact that the
subject matter of independent claim 13 on appeal mirrors the
above language of independent claim 4 and further adds to it,
the rejection of these claims is also sustained. Therefore,
the decision of the examiner rejecting claims 4 to 10 and 13
under 35 U.S.C. § 112, second paragraph, is affirmed.
Appeal No. 96-3258
Application 08/241,875
8
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
)
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ERROL A. KRASS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
RICHARD TORCZON )
Administrative Patent Judge )
Appeal No. 96-3258
Application 08/241,875
9
TEXAS INSTRUMENTS INC.
Att: William E. Hiller
P. O. Box 655474, M/S 219
Dallas, TX 75265