Ex Parte Nohra et al

Patent Trial and Appeal Board

Jul 20, 2017

12787901 (P.T.A.B. Jul. 20, 2017)

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.
12/787,901 05/26/2010 George Nohra S2059-705019 5518
84026 7590
Lando & Anastasi, LLP
S2059
One Main Street, Suite 1100
Cambridge, MA 02142
EXAMINER
FLEMING-HALL, ERICA L
ART UNIT PAPER NUMBER
2647
NOTIFICATION DATE DELIVERY MODE
07/24/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing @ L ALaw .com
gengelson @ LALaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEORGE NOHRA and STEVEN C. SPRINKLE
Appeal 2015-0030771
Application 12/787,901
Technology Center 2600
Before ST. JOHN COURTENAY III, TERRENCE W. McMILLIN, and
SCOTT B. HOWARD, Administrative Patent Judges.
McMILLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1—21 and 23—27, which are all the
pending claims.2 Br. 15—19 (Claims Appendix). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellants, Skyworks Solutions, Inc. is the real party in
interest. Br. 3.
2 Our decision refers to the Final Office Action mailed February 5, 2014
(“Final Act.”); Appellants’ Appeal Brief filed July 17, 2014 (“Br.”); the
Examiner’s Answer mailed November 13, 2014 (“Ans.”); and the
Specification filed May 26, 2010 (“Spec.”).
Appeal 2015-003077
Application 12/787,901
THE CLAIMED INVENTION
According to the Specification, “[t]he present invention relates
generally to mobile communication devices. More particularly, at least one
embodiment of the invention relates to high isolation switches for use in
mobile communication devices.” Spec. 11.
Independent claim 1 is directed to a high isolation radio frequency
(RF) switch, and independent claim 11 is directed to a radio frequency (RF)
device. Br. 15—19 (Claims Appendix). Claim 1 recites:
1. A high isolation radio frequency (RF) switch comprising:
an input;
an output;
a switching circuit coupled in series between the input and
the output, the switching circuit configured, in a first mode of
operation, to selectively couple the input to the output responsive
to a first control signal and, in a second mode of operation, to
decouple the input from the output response to a second control
signal;
at least one shunt circuit coupled between the input and a
ground; and
at least one LC notch filter switchably coupled to the input
in a shunt configuration, the at least one LC notch filter
configured, in the first mode of operation, to be decoupled from
the input, and in the second mode of operation, to be coupled to
the input and to attenuate signals at the input within a stop band
range of frequencies.
Br. 15 (disputed limitation highlighted).3
3 Claim 1 recites “responsive to a first control signal” and “response to a
second control signal.” The recitation of “response” appears to be a
typographical error that is intended to recite “responsive to a second control
signal.”
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Application 12/787,901
REJECTIONS ON APPEAL4
Claims 1, 2, 5, 8, 10, 14, 21, and 26 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Fukamachi et al. (US
2006/0229035 Al, published Oct. 12, 2006) (“Fukamachi”) and Ninan et al.
(US 2009/0295502 Al, published Dec. 3, 2009) (“Ninan”). Ans. 2-6.
Claims 1, 4—7, 10, 21, and 26 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Tired et al. (US 2006/0079194 Al; Apr.
13, 2006) (“Tired”) and Ninan. Ans. 6—9.
Claims 11—13, 16, 17, 23, 24, and 27 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Fukamachi, Tired, and Ninan.
Ans. 10-14.
Claims 3, 9, 15, 18—20, 25, and 26 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Fukamachi, Tired, Ninan, and
Adams et al. (US 3,680,011, issued July 25, 1972) (“Adams”). Ans. 14—17.
ANALYSIS
Independent Claims 1 and 11
Appellants contend the cited references do not teach the “LC notch
filter configured, in the first mode of operation, to be decoupled from the
input, and in the second mode of operation, to be coupled to the input and to
attenuate signals at the input within a stop band range of frequencies,” as
recited in claim 1. Br. 5 (emphasis added). Appellants argue:
4 The Examiner’s rejection headings contain several typographical errors.
See Ans. 2, 6 (referring to anticipation, omitting claim 6), and 10. Because
the Examiner addresses ah pending claims in the body of the rejections, we
find the typographical errors to be harmless errors and we correct the claim
listings.
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Application 12/787,901
[Njowhere does Ninan describe that the input of the notch filter
is decoupled from either the other end of the transmission line or
the output of the notch filter. The input of the notch filter is
continuously coupled to both the transmission line and the
output. The frequency blocked from the input to the output of
the notch filter is merely selectable.
Br. 6.
Regarding claim 11, Appellants present similar arguments against the
teachings of Ninan (Br. 11), and also present arguments regarding
Fukamachi and Tired (Br. 9—10). Specifically, Appellants contend “the
variable notch filter of Fukamachi remains coupled continuously to the
secondary line” and “[t]he diode D5 does not couple or decouple the
variable notch filter from a line, but instead merely controls the attenuation
pole of the variable notch filter.” Br. 9. Appellants argue “Tired merely
discloses an input notch filter that remains continuously coupled to the LNA
circuit input.” Br. 10.
We are not persuaded of Examiner error in the rejections of claims 1
and 11. The Examiner notes the Specification fails to give a clear definition
for “decouple,” and construes the term with its plain meaning, namely the
ordinary and customary meaning given to the term by those of ordinary skill
in the art. Ans. 18—19; see Phillips v. AWH Corp., 415 F.3d 1303, 1312
(Fed. Cir. 2005) (en banc).
We agree the plain meaning of “decouple” is broad enough to
encompass dissociating something with something else, to make the
interaction between electrical components so weak that there is little transfer
of energy between them. See Ans. 19. Further, under the broadest
reasonable interpretation consistent with Appellants’ disclosure, the LC
notch filter “decoupled” from the input encompasses dissociating at least
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Application 12/787,901
one component of the LC notch filter from the input, while other
component(s) remain connected to the input, as shown in Appellants’ Figure
2: inductor 222 is dissociated from input 204 by transistors 218, while
capacitor 220 remains connected to the input. See In re Am. Acad, of Sci.
Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“[T]he PTO is obligated to
give claims their broadest reasonable interpretation during examination.”)
We agree that the combination of Fukamachi and Ninan teaches an
LC notch filter that has at least some components dissociated from the input.
Paragraph 43 and Figure 3 of Fukamachi teach R1 and Cl are dissociated
from the input when diode D5 is turned off. Ans. 2—3. Appellants were on
notice of Fukamachi’s LC notch filter configuration, as evidenced by the
Examiner’s citation to Figure 3 (Ans. 3) and Appellants’ discussion of the
figure (Br. 9). Similarly, we agree that combination of Tired and Ninan
teaches an LC notch filter that has at least some components dissociated
from the input. Tired’s Figures 4 and 6 teach dissociating capacitors C5N
from input nodes by turning off transistors 40. Appellants were on notice of
Tired’s LC notch filter configuration, as evidenced by the Examiner’s
citation to Paragraphs 37, 40, and 42 (Ans. 6—7), which discuss the
adjustable filter configurations of Figures 4 and 6, and by Appellants’
discussion of Tired’s LC notch filter (Br. 9—10).
Accordingly, we sustain the Examiner’s § 103 rejections of
independent claims 1 and 11. Appellants do not provide arguments for
separate patentability of dependent claims 2, 4—7, 9, 10, 12, 13, 15—17, 21,
23, 26, and 27, and, thus, we sustain their rejections for the reasons provided
for claims 1 and 11.
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Application 12/787,901
Dependent Claims 8 and 14
Appellants contend the combination of Fukamachi and Ninan does not
teach a “bondwire inductor,” as recited in claims 8 and 14. However, the
Examiner does not rely on Fukamachi or Ninan to teach a bondwire
inductor, but rather, states that the use of a bondwire inductor was “within
the general skill of a worker in the art to select a known material on the basis
of its suitability for the intended use as a matter of obvious design choice.”
Ans. 5. Appellants have not persuasively rebutted the Examiner’s findings.
Further, on the record before us, we agree that a skilled artisan would have
recognized the ability to use a bondwire inductor with the integrated circuits
of Fukamachi and Ninan. Tired teaches the use of an inductor coil with an
integrated circuit (Tired 134), and Adams teaches the use of a wire inductor
with an integrated circuit (Adams col. 1,11. 16—19 and col. 4,11. 40-55).
Therefore, we sustain the Examiner’s § 103 rejection of claims 8 and 14.
Dependent Claim 3
The Examiner finds the combination of Fukamachi, Tired, and Ninan
teaches all the limitations of claim 3 except “the switch of the at least one
LC notch filter includes a plurality of series connected transistors,” for
which the Examiner relies on Adams. Ans. 16—17 (citing Adams Fig. 5,
transistor 32 of resonator 20). Appellants contend Adams teaches a notch
filter comprising two resonators coupled in parallel, but fails to teach the
switch “includes a plurality of series connected transistors.” Br. 13. We
agree with Appellants’ contention that Adams’ filter of Figure 5 teaches a
plurality of individual transistors 32 in separate circuits 20, but does not
teach the required “plurality of series connected transistors” in the switch of
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the notch filter. Accordingly, based on the current record, we do not sustain
the Examiner’s § 103 rejection of claim 3.
Dependent Claim 18
Appellants contend the combination of Fukamachi, Tired, Ninan, and
Adams does not teach “a second LC notch filter switchably coupled to the
second switching arm in a shunt configuration, the second LC notch filter
configured to attenuate signals at the second switching arm within a second
range of frequencies, the second range of frequencies being selected to
include noise frequencies in the second switching arm generated by the first
switching arm during the first mode of operation of the RF device,” as
recited in claim 18. Br. 13—14.
We are not persuaded of Examiner error in the rejection. The
Examiner finds Fukamachi teaches a second LC notch filter switchably
coupled to the second switching arm in a shunt configuration, the second LC
notch filter configured to attenuate signals at the second switching arm
within a second range of frequencies. Ans. (citing Fukamachi Figs. 15 and
16). Appellants have offered no persuasive evidence to rebut the
Examiner’s finding. Merely pointing out certain claim features and nakedly
asserting that the cited prior art reference does not teach or suggest such
features does not amount to a separate patentability argument. See 37 C.F.R.
§ 41.37(c)(l)(iv); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
Further, we note that claim 18 is directed to an RF device, and the
limitation “the second range of frequencies being selected to include noise
frequencies in the second switching arm generated by the first switching arm
during the first mode of operation of the RF device” is merely functional
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language related to the intended use of the device. Our reviewing court
guides that the patentability of an apparatus claim “depends on the claimed
structure, not on the use or purpose of that structure.” Catalina Marketing
Int’l. Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). See
also Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1090 (Fed. Cir.
2009); In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997); Hewlett-
Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir.
1990); Roberts v. Ryer, 91 U.S. 150, 157 (1875) (“The inventor of a machine
is entitled to the benefit of all the uses to which it can be put, no matter
whether he had conceived the idea of the use or not.”). See also MPEP
2114. The notch filters of the cited references are frequency-adjustable
filters (see Fukamachi 143; Tired Tflf 38—39; Ninan 118), and Appellants
have not provided any persuasive evidence that the filters are not capable of
attenuating “noise frequencies in the second switching arm generated by the
first switching arm during the first mode of operation of the RF device.”
Therefore, we sustain the Examiner’s § 103 rejection of claim 18, as
well as the rejection of claims 19, 20, 24, 25 which are not argued
separately.
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DECISION
The rejections of claims 1, 2, 4—21 and 23—27 are affirmed.
The rejection of claim 3 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)(l)(iv).
AFFIRMED-IN-PART
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