13847261 - (D) (P.T.A.B. Apr. 30, 2019)

Ex Parte TAFT et al

Patent Trials and Appeals BoardApr 30, 2019

13847261 - (D) (P.T.A.B. Apr. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/847,261 03/19/2013 23494 7590 05/02/2019 TEXAS INSTRUMENTS IN CORPORA TED PO BOX 655474, MIS 3999 DALLAS, TX 75265 FIRST NAMED INVENTOR Robert C. TAFT 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. TI-73466 8039 EXAMINER COMBER, KEVIN J ART UNIT PAPER NUMBER 2836 NOTIFICATION DATE DELIVERY MODE 05/02/2019 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 ROBERT C. TAFT and ALEXANDER BODEM Appeal2018-001793 Application 13/847261 Technology Center 2800 Before KAREN M. HASTINGS, DONNA M. PRAISS, and JEFFERY R. SNAY, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. Â§ 134(a) of the Examiner's final decision rejecting claims 1, 6, 7, 13, and 19-21. Claims 1, 7, 13, and 19-21 are rejected under 35 U.S.C. Â§ 102(a)(2) as anticipated by Yue (US PGPub 2002/0121924 Al, pub. Sept. 5, 2002). Claim 6 is rejected underÂ§ 103(a) as being obvious over Yue in view of Worley (US PGPub 1 Appellant is the Applicant, Texas Instruments Deutschland GmbH., and Texas Instruments, Inc. is stated to be the real party in interest (Appeal Br. 2). Appeal2018-001793 Application 13/847261 2014/0198414 Al, pub. July 17, 2014).2 The remaining dependent claims 9, 11, 14, 15, 15, 17, 22-25 are objected to but would be allowable if rewritten in independent form (Final Act. 5). We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). We AFFIRM. Independent claim 1 is illustrative ( emphasis added to highlight key disputed limitations): 1. A circuit including input overvoltage protection, comprising: circuitry to receive an input voltage signal at an input node; a shunt circuit including a sense node connected to the input node, a shunt node coupled to controllably receive an inductive current based on the input voltage signal received at the input node, a low impedance node; the shunt circuit to monitor the input voltage signal at the sense node, and in response to an overvoltage condition, to form an overvoltage current path for the inductive current, from the input node, through the shunt node and the shunt circuit, and to the low impedance node; the shunt circuit including a first transistor coupled between the shunt node and the low impedance node; and a control circuit coupled between the sense node and a control terminal of the first transistor, to control the first transistor to form the overvoltage current path in response to the overvoltage condition. 2 See Final Action 3 for the Examiner's complete statement of all the Â§ 102 rejections. Final Action 4 also contains a statement of rejection for Claim 6 underÂ§ 103. This rejection also includes Miller (US 5,946,177, iss. Aug. 31, 1999) yet does not refer to Miller in the body of the rejection. In any event, Appellant does not separately argue for any of remaining the dependent claims' rejections underÂ§ 102 andÂ§ 103 (see Appeal Br. 2 and 8). 2 Appeal2018-001793 Application 13/847261 Appellant only presents arguments directed to independent claim 1. Appeal Br. 2, 5-8; Reply Br. 2-5. Appellant has stated the remaining independent claims stand or fall with claim 1 (Appeal Br. 2). Accordingly, all of the remaining claims stand or fall together with their respective independent claims. ANALYSIS We have reviewed each of Appellant's arguments for patentability. However, we determine that a preponderance of the evidence supports the Examiner's finding that the claimed subject matter of representative claim 1 as well as remaining independent claim 7 and 13 is anticipated within the meaning ofÂ§ 102 in view of the applied prior art reference Yue. Accordingly, we will sustain all of the Examiner's rejections for essentially those reasons expressed in the Final Action and the Answer, including the Examiner's Response to Argument section, and we add the following primarily for emphasis. "[T]he PTO must give claims their broadest reasonable construction consistent with the specification .... Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation." In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). "[ A Js applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee." Id. The core issue in dispute is whether the claim language "sense node" and "shunt node" of the circuit in Claim 1 encompasses the circuit 3 Appeal2018-001793 Application 13/847261 configuration described in Yue. There is no dispute that Yue shows a sense node and a shunt node. Appeal Br. 6. 3 Rather, Appellant argues that the "sense node" and the "shunt node" relied upon by the Examiner in Yue are not separate nodes as required by instant Claim 1. Appeal Br. 6; see also Reply Br. 2. The Examiner explains that the claimed "sense node" and "shunt node" reasonably encompass the nodes as shown in Yue. Ans. 4. In the Examiner's Final Action, two separate locations are identified for the "sense node" and "shunt node." Final Act. 2. In addition, the Examiner points out that the Appellant has not provided any evidence or technical reasoning why the relied upon node A cannot be the sense node and that the relied upon conductor 35 cannot be the shunt node. Ans. 4. Appellant merely argues that the Examiner has misunderstood the Yue disclosure and that the sense node and shunt nodes are the same. Appeal Br. 6-7. Appellant argues further for the first time in the Reply Brief that "a feature of Claim 1 that patentably distinguishes Appellant's invention as defined by Claim 1 is a 'shunt circuit' with separate 'sense node' and 'shunt node', the 'sense node' being the node at which the shunt circuit 'monitor[s]the input voltage signal' (i.e. in front of the inductor Ll) and ... (i.e. behind the inductor Ll)" (Reply Br. 4). The Appellant presents this new argument regarding the limitations of claim 1 at page 4 of the Reply Brief. The Appellant has not shown good cause why these arguments could not have been presented in the Appeal Brief. Therefore, we need not 3 "Appellant will not contest that Yue discloses both sense and shunt nodes." Appeal Br. 6. 4 Appeal2018-001793 Application 13/847261 consider the arguments newly raised in the Reply Brief. 37 C.F.R. Â§ 41.41 (b )(2). Nonetheless, Appellant has not directed our attention to any special definition that requires the argued structures or claim construction. The above arguments are not persuasive of reversible error. Appellant does not point to their own Specification to support a more limiting reading for the "sense node" and "shunt node". Appellant's Fig. 3 (Appeal Br. 3) shows something like the argued structure, but there is no recitation in the instant claims to limit it to such an embodiment. Thus, a preponderance of the evidence supports the Examiner's position with respect to claim 1. Ans. generally. Appellant has not separately argued independent claims 7 and 13 from claim 1. Appeal Br. 8. Accordingly, we affirm the Examiner's anticipation rejection, as well as the obviousness rejections of the dependent claims, which are not separately argued. No time period for taking any subsequent action in connection with this appeal may be extended under 3 7 C.F .R. Â§ 1.13 6. DECISION AFFIRMED 5