11706833 (B.P.A.I. Aug. 16, 2012)

Ex Parte Wong et al

Board of Patent Appeals and InterferencesAug 16, 2012

11706833 (B.P.A.I. Aug. 16, 2012)

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. 11/706,833 02/13/2007 Thomas S. Wong MIC-M62-RE 6590 32566 7590 08/17/2012 PATENT LAW GROUP LLP 2635 NORTH FIRST STREET SUITE 223 SAN JOSE, CA 95134 EXAMINER CHO, JAMES HYONCHOL ART UNIT PAPER NUMBER 2819 MAIL DATE DELIVERY MODE 08/17/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES _____________ Ex parte THOMAS S. WONG and STEPHEN J. B. PRATT _____________ Appeal 2012-010438 Application 11/706,833 Technology Center 2800 ______________ Before, KALYAN K. DESHPANDE, DAVID M. KOHUT, and JOHN G. NEW, Administrative Patent Judges. KOHUT, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the final rejection of claims 18-39.1 We have jurisdiction under 35 U.S.C. § 6(b). We reverse the Examiner’s rejection of these claims and enter a new ground of rejection. 1 The Examiner has indicated that claims 1-17 are allowable over the prior art of record. Fin. Rej. 6-7. Appeal 2012-010438 Application 11/706,833 2 INVENTION The invention is directed to a method and structure for coupling an input signal to a circuit that includes a first input pin, second input pin, and third input pin that are coupled to a first voltage divider, second voltage divider, and first and second resistors (respectively).2 Claim 18 is representative of the invention and is reproduced below: 18. A method for coupling an input signal to a circuit, said method comprising: receiving the input signal according to a first voltage standard, the input signal being a differential input signal comprising an inverted input signal and a non-inverted input signal, the inverted input signal being applied to a first pin of an integrated circuit package, and the non-inverted signal being applied to a second pin of the integrated circuit package; coupling a third pin of the integrated circuit package, acting as a center tap pin, to a reference node, thereby terminating said input signal, wherein said reference node is chosen based on said first voltage standard, the third pin being connected within the integrated circuit package to the first pin by a first termination resistance, the third pin also being connected within the integrated circuit package to the second pin by a second termination resistance, wherein the third pin is directly connected to a junction between the first termination resistance and the second termination resistance such that there is no additional resistance between the third pin and the junction; amplifying the input signal by a differential amplifier internal to the integrated circuit package; and outputting an output signal, controlled by the input signal, on at least a fourth pin of the integrated circuit package. 2 This appeal is a reissue application based on US 6,864,707 B2. Our description of the invention comes from the “Summary of the Invention” from the issued patent. Appeal 2012-010438 Application 11/706,833 3 REFERENCE Tomita US 6,292,028 B1 Sep. 18, 2001 REJECTIONS AT ISSUE Claims 18, 19, 23, 29, 30, and 34 are rejected under 35 U.S.C. § 102(b) as being anticipated by Tomita. Ans. 4-6. Claims 20-22, 24, 31-33, and 35 are rejected under 35 U.S.C. § 102(b) as being anticipated by Tomita, or in the alternative, under 35 U.S.C. § 103(a) as being unpatentable over Tomita. Ans. 6-7. Claims 25-28 and 36-39 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Tomita. Ans. 8-9. ISSUES Did the Examiner err in finding that Tomita discloses a third pin being connected within the integrated circuit package to the first pin by a first termination resistance, the third pin also being connected within the package to the second pin by a second termination resistance? ANALYSIS Independent claim 18 recites “[a] third pin being connected within the integrated circuit package to the first pin by a first termination resistance, the third pin also being connected within the integrated circuit package to the second pin by a second termination resistance.” Independent claim 29 contains a similar limitation. Claims 19-28 and 30-39 are dependent upon claims 18 and 29 (respectively). The Examiner finds that Tomita’s Figure 8 shows a first pin 71, a second pin 72, and a third pin Vt that comprises a center tap pin between resistance R71 and R72. Ans. 9. The Examiner finds Appeal 2012-010438 Application 11/706,833 4 that this meets the claim limitation since these “discrete components” define the integrated circuit. Ans. 10. Appellants argue that at least the third pin, i.e., Vt, and the resistors R71 and R72 are not located within an integrated circuit package, as required by the claims. App. Br. 6; Reply Br. 2. We agree with Appellants. While Tomita discloses the components of the claimed circuit, we agree with Appellants (Reply Br. 2) that column 6, ll. 25- 27 of Tomita suggests that 71, 72, R71, and R72 are mounted on a printed circuit board since T71 and T72 are micro strip lines. Therefore, we cannot sustain the Examiner’s rejection of claims 18 and 29 under 35 U.S.C. § 102(b) and thus cannot sustain the Examiner’s rejection of the claims dependent upon the independent claims, i.e., claims 19-28 and 30-38. NEW GROUND OF REJECTION We enter a new ground of rejection of claims 18-39 under 35 U.S.C. § 103(a) over Tomita. Even though we agree that the components listed above are not disclosed by Tomita as being included in an integrated circuit, as required by the claims, we find that it would have been obvious to one of ordinary skill in the art to include those components within an integrated circuit. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). This modification is simply a combination of familiar elements according to known methods which produces nothing more than predictable results. Id. at 416. Secondary Considerations Appellants additionally argue that claims 18 and 29 are not obvious over Tomita as a result of secondary considerations. App. Br. 6-7. These arguments are directed to the Examiner’s 35 U.S.C. § 102(b) rejection of the Appeal 2012-010438 Application 11/706,833 5 claims. The Examiner is correct in stating that secondary considerations of non-obviousness cannot be used for an anticipation rejection. Ans. 10. However, as we have entered a new ground of rejection under an obviousness rejection, and in the interest of compact prosecution, we will briefly address Appellants’ arguments below. Appellants contend that Micrel, Inc., the assignee in this Appeal, was the first company to realize the advantages of including the claimed components on a single chip and that providing the claimed pins would allow the same chip to be used for multiple interfaces. App. Br. 7. Additionally, Appellants contend that copying by Micrel, Inc.’s competitors (as shown by the data sheets of IDT and ON Semiconductor in the Appeal Brief’s Evidence Appendix) and gross sales of over $33,000,000 prove evidence of commercial success. App. Br. 7-9. First, these statements are nothing more than attorney argument, unsupported by factual evidence. Attorney’s arguments in a brief cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Second, even if the statements were supported by factual evidence, gross sales figures do not show commercial success absent evidence as to market share, Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 1026-27 (Fed. Cir. 1985), or as to the time period during which the product was sold, or as to what sales would normally be expected in the market, Ex parte Standish, 10 USPQ2d 1454, 1458 (BPAI 1988). Third, in order to show commercial success, Appellants must provide evidence that the alleged commercial success is derived from the invention claimed, in a marketplace where the consumer is free to choose on the basis of objective principles, and that such success is not the result of heavy promotion or Appeal 2012-010438 Application 11/706,833 6 advertising, shift in advertising, consumption by purchasers normally tied to applicant or assignee, or other business events extraneous to the merits of the claimed invention, etc. In re Mageli, 470 F.2d 1380, 176 USPQ 305 (CCPA 1973) (conclusory statements or opinions that increased sales were due to the merits of the invention are entitled to little weight); In re Noznick, 478 F.2d 1260, 178 USPQ 43 (CCPA 1973). MPEP § 716.03(b). Thus, Appellants have not provided sufficient factual evidence nor have Appellants established a sufficient nexus between the merits of the claimed invention and objective evidence that would serve to rebut our prima facie case of obviousness. Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d at 1027; Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988); Ex parte Remark, 15 USPQ2d 1498, 1504 (BPAI 1990). CONCLUSION The Examiner erred in finding that Tomita discloses a third pin being connected within the integrated circuit package to the first pin by a first termination resistance, the third pin also being connected within the package to the second pin by a second termination resistance. SUMMARY The Examiner’s decision to reject claims 18-39 is reversed. We enter new grounds of rejection for claims 18-39 under 35 U.S.C. § 103(a). Appeal 2012-010438 Application 11/706,833 7 TIME PERIOD This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 CFR § 41.50(b) also provides that the appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record . . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). REVERSED 37 C.F.R. § 41.50(b) msc