Ex Parte Paidimarri et al

Patent Trial and Appeal Board

Dec 14, 2016

13406849 (P.T.A.B. Dec. 14, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/406,849 02/28/2012 Arun Paidimarri TI-71324 3775
23494 7590 12/16/2016
TEXAS INSTRUMENTS INCORPORATED
P O BOX 655474, M/S 3999
DALLAS, TX 75265
EXAMINER
GANNON, LEVI
ART UNIT PAPER NUMBER
2842
NOTIFICATION DATE DELIVERY MODE
12/16/2016 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):
uspto@ti.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARUN PAIDIMARRI, DANIELLE GRIFFITH, and
ALICE WANG1
Appeal 2014-004718
Application 13/406,849
Technology Center 2800
Before CHUNG K. PAK, JEFFREY T. SMITH, and MARKNAGUMO,
Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants timely request rehearing2 under 37 C.F.R. § 41.41 of our
Decision, entered September 8, 2016 (“Decision”), affirming the rejections
of claims 21, 22, and 29—38 as anticipated by a patent issued to Romao.3
There is no dispute that “the only claimed limitation argued by
Appellants to be missing in Romao is employing or using an ‘LPLAO
1 The real party in interest is listed as Texas Instruments Incorporated.
(Appeal Brief, filed November 20, 2013 (“App. Br.”), 1.)
2 Request for Rehearing, filed November 1, 2016 (“Req. Reh’g”).
3 US 6,650,189 B1 issued to Romao on November 18, 2003.
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Application 13/406,849
[(lower power less accurate oscillator)] purposely mistuned to provide said
first clock using less power but with less accuracy than if correctly tuned’ in
its apparatus or method, as recited in claims 21 and 34 [respectively].”
Compare Decision 4—5, with Req. Reh’g 3—12. Thus, the dispositive
question raised in the Decision was: Did the functionally defined LPLAO
recited in claims 21 and 34 exclude the LPLAO taught by Romao? Decision
4—6. On this record, we answered this question in the negative for the
reasons set forth at page 5 of the Decision, which is reproduced below for
convenience:
As found by the Examiner and acknowledged by
Appellants, “the low-power oscillator 10 of Romao
[corresponding to the recited LPLAO] is mistuned by way
of lack of temperature compensation[.]” See App. Br. 8 citing
the Advisory Action of November 1, 2013. As explained by the
Examiner, “[b]y choosing to use the uncompensated oscillator
(10) [(LPLAO)] of [F]igure 1, Romao is [purposely]
choosing to use a...mistuned oscillator (10), by allowing
temperature-induced frequency drift to occur in oscillator (10)
without any frequency correction/tuning[.]” Ans. 4. The use of
this mistuned, less accurate, LPLAO, according to Romao,
causes a significant power saving. Romao, col. 4,11. 42-45
(“The switch-over from the oscillator 6 to the [mistuned]
oscillator 10 is done by means of the selector 11. The power
saving thus obtained is significant but may be further
improved.”) Because Romao, like Appellants, employs a less-
accurate mistuned conventional LPLAO in its system and
method to significantly reduce the power consumption, there is
a reasonable basis to believe that Romao’s mistuned, less-
accurate, oscillator is capable of providing the first clock “using
less power but with less accuracy than if correctly tuned” at
least some point during the operation of the communication
2
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Application 13/406,849
apparatus.4 See also Spec.|22 (“In the past, the accuracy versus
power consumption has been a trade off, so the more accurate
the oscillator, the more power consumed.”) [(Footnote added.)]
In support of the above position, we referred to In re Best, 562 F.2d 1252,
1255 (CCPA 1977) (“Where ... the claimed and prior art products are
identical or substantially identical, ... the PTO can require an applicant to
prove that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product”) and In re Schreiber, 128 F.3d 1473,
1478 (Fed. Cir. 1997) (explaining that “choosing to define an element
functionally, i.e., by what it does, carries with it a risk . . . where the Patent
Office has reason to believe that a functional limitation asserted to be critical
for establishing novelty in the claimed subject matter may, in fact, be an
inherent characteristic of the prior art, it possesses the authority to require
the applicant to prove that the subject matter shown to be in the prior art
does not possess the characteristic relied on.” (quoting In re Swinehart, 439
F.2d 210, 213 (CCPA 1971)). Decision 5-6.
Appellants contend that we erred reversibly in our Decision by stating
that Appellants argued for the first time in the Reply Brief “that the
Specification describes the power consumption of a crystal oscillator as
being dependent on a load capacitance . . . [and by declining] to consider the
argument. . . .” Req. Reh’g 2 and 3 citing Decision 4, footnote 4, lines 1—3.
According to Appellants, such argument was supported at page 8 of the
Appeal Brief. Req. Reh’g 3 quoting the statement referring to paragraphs 22
4 Implicit in this reasoning is that claims 21 and 34 do not specify or limit
when and how purposeful mistuning is accomplished.
3
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Application 13/406,849
through 24 of the Specification at page 8 of the Appeal Brief. Req. Reh’g 3.
Although Appellants did refer to paragraphs 22 through 24 of the
Specification in the Appeal Brief to show that Romeo does not disclose one
example embodiment described in the Specification, they did not rely on
those paragraphs to support the argument that “there is no teaching
whatsoever that Romao designed oscillator 10 at anything other than optimal
tuning” as was raised in the Reply Brief. Compare Reply Br. 4—5 referred to
in footnote 4 of the Decision, with App. Br. 8. Thus, we find no harmful
error in declining to consider the example embodiment described in
paragraphs 22 through 24 of the Specification in this new context discussed
at pages 4 and 5 of the Reply Brief.
To the extent that Appellants may have referred to paragraphs 22
through 24 of the Specification in the Reply Brief in the same context
discussed in the Appeal Brief, we stated in the same footnote at page 4 of the
Decision that such example embodiment in the Specification is “not recited
in claims 21 and 34.” Stated differently, the purposefully mistuned LPLAO
recited in claims 21 and 34 is not limited to the LPLAO exemplified at
paragraphs 22 through 24 of the Specification. Id. Indeed, Appellants
acknowledge that such paragraphs set forth “what Appellants considered to
be one embodiment of‘purposeful mistuning’. . . .” Req. Reh’g 4 (emphasis
added). It follows that Appellants have not shown the mistuned low power
oscillator described by Roma is not within the scope of the mistuned
LPLAO recited in claims 21 and 34. In re Self, 671 F.2d 1344, 1348
(CCPA 1982)(“[A]ppellanf s arguments fail from the outset because . . . they
are not based on limitations appearing in the claims.”)
4
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Application 13/406,849
Appellants also contend that we erred reversibly in the Decision “by
determining that ‘mistiming’ of the less accurate, LPLAO is what causes a
power saving in oscillator 10.” Req. Reh’g 4. In support of this contention,
Appellants refer to column 4, line 66 to col. 5, line 27 of Romao. Id. at 5.
According to Appellants, Romao teaches that temperature drift is a problem
in oscillator 10 that should be fixed and overcome with the oscillator of
Figure 2 having “more components and more complicated circuitry.” Id.
However, as found at page 5 of our Decision and not disputed by
Appellants, Romao teaches that “[t]he switch-over from the oscillator 6 to
the oscillator 10 [corresponding to the LPLAO] is done by means of the
selector 11. The power saving thus obtained is significant but may be
further improved.” Compare Decision 5, with Req. Reh’g 4—5. Moreover,
as correctly found by the Examiner, “‘the low-power oscillator 10 of Romao
[corresponding to the recited LPLAO] is mistuned by way of lack of
temperature compensation^]’ See App. Br. 85 citing the Advisory Action of
November 1, 2013.” Decision 5; see also Req. Reh’g 10. Although Romao
teaches that “the oscillator of FIG. 2 can replace the oscillator 10” to
minimize (not prevent) the oscillator 10’s frequency drifts as a function of
the temperature, it also teaches using oscillator 10 that is mistuned (not
correctly tuned to compensate for the oscillator’s frequency drifts as a
function of the temperature during its operation), together with oscillator 6
to reduce power consumption as indicated supra. See also Req. Reh’g 10
5 At page 8 of the Appeal Brief, Appellants also stated that “Romao teaches
‘inadvertent mistuning’ that occurs naturally as low-power oscillator 10
operates. As a result, there is, and can be, no ‘purposeful mistuning’ of low-
power oscillator 10 in Romao.”
5
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Application 13/406,849
(“Appellants clearly set forth a meaning of ‘purposeful mistuning of an
oscillator’ {which requires an overt act of the circuit designer) that does not
include [Romao’s] ‘mistuning of an oscillator by way of lack of temperature
compensation’ (which is inherent and does not require an overt act) in
paragraphs [0022]—[0024] of the present specification.”) Thus, we perceive
no harmful error in finding that Romao teaches a communication apparatus
that uses oscillator 6 and mistuned oscillator 10, which reduces power
consumption. Nor do we observe any harmful error in determining that
[b]ecause Romao, like Appellants, employs a less-accurate
mistuned conventional LPLAO [(oscillator 10)] in its system
and method to significantly reduce the power consumption,
there is a reasonable basis to believe that Romao’s mistuned,
less-accurate, oscillator is capable of providing the first clock
“using less power but with less accuracy than if correctly
tuned” at least some point during the operation of the
communication apparatus
as required by claims 21 and 34. Decision 5; Schreiber, 128 F.3d at 1477—
78 (holding that a funnel disclosed for oil dispensing anticipated a claim to a
funnel-like structure employed for dispensing popcorn and that applicant had
the burden of demonstrating that the prior art funnel was not capable of
dispensing popcorn once the Examiner established similarity between the
prior art and claimed structures.) On this record, Appellants do not
demonstrate that the intentionally or purposefully mistuned LPLAO
employed or used in claims 21 and 34 is patentably different from the
naturally mistuned LPLAO taught by Romao.
Appellants further contend that we erred reversibly by failing to
consider paragraphs 22 through 24 of the Specification to define the meaning
of “purposeful mistuning” in the context of the above contested limitation in
6
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Application 13/406,849
claims 21 and 34. Req. Reh’g 2 and 7. Appellants then contend that we
erred “by denying Appellants the right to be their own lexicographer.” Id. at
10. According to Appellants,
Appellants clearly set forth a meaning of ‘purposeful mistuning
of an oscillator’ {which requires an overt act of the circuit
designer) that does not include [Romao’s] ‘mistuning of an
oscillator by way of lack of temperature compensation’ (which
is inherent and does not require an overt act) in paragraphs
[0022]—[0024] of the present specification.
Id. These arguments, however, were not presented in the Appeal Brief.
Appeal Br. 5—11. Nowhere in the Appeal Brief do Appellants argue the
description in paragraphs 22 through 24 of the Specification constitutes a
form of lexicography that clearly defines the meaning of “purposeful
mistuning” in the context of the above contested limitation. Id. Accordingly,
we need not consider these new arguments. 37 C.F.R.
§ 41.52(a)(l)(2014) (“Arguments not raised . . . pursuant to §§41.37, 41.41
or 41.47 are not permitted in the request for rehearing . . . .”)
Even if we were to consider such new arguments, they are not
persuasive of harmful error in the Decision. As is apparent from the
description of the appealed subject matter at page 2 of the Decision, the
purposefully mistuned LPLAO recited in claims 21 and 34 includes, but is
not limited to, the specifically mistuned crystal oscillator exemplified at
paragraphs 22 through 24 of the Specification. Indeed, Appellants
acknowledge that such paragraphs set forth “what Appellants considered to
be one embodiment of ‘purposeful mistuning’ . . . .” Req. Reh’g 4
(emphasis added); see also Spec. 122 (“In an example embodiment, a
7
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Application 13/406,849
crystal oscillator is purposefully mistuned to achieve lower power
consumption, and then synchronized using a high frequency crystal
oscillator.”) This is not a situation where Appellants acted as their own
lexicographer. See Vasudevan Software, Inc. v. MicroStrategy, Inc., 782
F.3d 671, 677 (Fed. Cir. 2015) (“[Patentees can act as their own
lexicographers if they ‘clearly set forth a definition of the disputed claim
term’ other than its plain and ordinary meaning.” (quoting Thorner v.
Sony Computer Entm’t Am., LLC, 669 F.3d 1362, 1365 (Fed. Cir.
2012)); see also In re Priest, 582 F.2d 33, 37 (CCPA 1978) (“We have
consistently held that no ‘applicant should have limitations of the
specification read into a claim where no express statement of the limitations
is included in the claim’” (citing In re Prater, 415 F.2d 1393, 1405 (CCPA
1969)). Because the purposefully mistuned LPLAO recited in claims 21 and
34 is not limited to the specifically mistuned crystal oscillator exemplified at
paragraphs 22 through 24 of the Specification, we find no harmful error in
the Decision, for Appellants’ arguments are not based on limitations
appearing in claims 21 and 34. Self, 671 F.2d at 1348.
Finally, Appellants contend that we erred reversibly by finding that
Romao’s oscillator 10 is mistuned. Req. Reh’g 2 and 5—7. In so contending,
Appellants again raise the new argument not raised in the Appeal Brief.
Compare Req. Reh’g 2 and 5—7 with App. Br. 8. Nowhere in the Appeal
Brief do Appellants contend that Romao’s oscillator 10 is not mistuned.
App. Br. 5—11. Rather, Appellants contend that “Romao teaches
‘inadvertent mistuning’ that occurs naturally as low-power oscillator 10
operates. As a result, there is, and can be, no ‘purposeful mistuning’ of low-
power oscillator 10 in Romao.” App. Br. 8. Thus, we decline to consider
8
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Application 13/406,849
this new argument that could have been raised in the Appeal Brief, but were
not.6 37 C.F.R. § 41.52(a)(1); Ex parte Borden, 93 USPQ2d 1473, 1477
(BPAI 2010) (informative) (“Properly interpreted, the Rules do not require
the Board to take up a belated argument that has not been addressed by the
Examiner, absent a showing of good cause.”); Ex parte Nakashima, 93
USPQ2d 1834 (BPAI 2010) (explaining that arguments and evidence not
timely presented in the principal Brief, will not be considered when filed in a
Reply Brief, absent a showing of good cause explaining why the argument
could not have been presented in the Principal Brief.) In any event, as
indicated supra, the design of Romao deliberately allows temperature
variation that results in mistuning.
Accordingly, while we have considered the Request, we deny the
relief sought.
ORDER
It is ORDERED that the Request for Rehearing is denied.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
DENIED
6 This argument is also unconvincing. See, e.g., Req. Reh’g 10 (“Appellants
clearly set forth a meaning of ‘purposeful mistuning of an oscillator’ (which
requires an overt act of the circuit designer) that does not include [Romao’s]
‘mistuning of an oscillator by way of lack of temperature compensation’
(which is inherent and does not require an overt act) in paragraphs [0022]—
[0024] of the present specification.”)
9