Murata Manufacturing Co., Ltd.

Patent Trials and Appeals Board

Dec 27, 2021

2020006550 (P.T.A.B. Dec. 27, 2021)

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.
15/648,752 07/13/2017 Masashi HAYAKAWA 36856.3909 5101
54066 7590 12/27/2021
MURATA MANUFACTURING COMPANY, LTD.
C/O KEATING & BENNETT, LLP
1800 ALEXANDER BELL DRIVE
SUITE 200
RESTON, VA 20191
EXAMINER
YANG, JIANXUN
ART UNIT PAPER NUMBER
2664
NOTIFICATION DATE DELIVERY MODE
12/27/2021 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):
JKEATING@KBIPLAW.COM
cbennett@kbiplaw.com
uspto@kbiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MASASHI HAYAKAWA
______________________

Appeal 2020-006550
Application 15/648,752
Technology Center 2600
____________________

Before MARC S. HOFF, ERIC S. FRAHM, and BETH Z. SHAW,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the final rejection
of claims 1, 4–9, and 12–19, which constitute all pending claims on appeal.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2019). “The word ‘applicant’ when used in this title refers
to the inventor or all of the joint inventors, or to the person applying for a
patent as provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant
identifies Murata Manufacturing Company Limited as the real party in
interest (Appeal Br. 2).
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Claims 2, 3, 10, and 11 have been canceled (see Appeal Br. 23, 25, Claims
Appendix). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

DISCLOSED AND CLAIMED INVENTION
Appellant’s disclosed invention, entitled Switching Circuit and High
Frequency Module” (see Title), “relates to a switching circuit including a
first switching device connected in series to a signal path and a second
switching device shunt-connected to the signal path, and also relates to a
high frequency module including the switching circuit” (Spec. ¶ 2), and,
more generally, to the elimination of harmonics in cellular phones when
using multi-mode, multi-band communication techniques that use multiple
antennae (Spec. ¶¶ 3–8; see Fig. 7). Appellant discloses and claims a
switching circuit for effectively attenuating harmonic signals by isolating the
switching circuit from other switching circuits (Abstract; Spec. ¶¶ 9–22;
claims 1, 8, 18; see Fig. 8). Appellant claims a “switching circuit” (claim 1),
a “high frequency module comprising: a switching circuit” (claim 8), and a
“communication device comprising: a high frequency module that includes:
a switching circuit” (claim 18), including inter alia, three switching device,
plural shunt circuits having an inductor, where the inductors of the shunt
circuits have inductances different from one another (see claims 1, 8, 18).
Claim 1 is illustrative of the claimed subject matter:

Claim 1: A switching circuit comprising:
a first terminal;
a plurality of second terminals;
a third terminal;
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a plurality of first switching devices, each of the plurality
of first switching devices being connected to the first terminal
and connected in series to a corresponding one of a plurality of
first signal paths coupling the first terminal to a corresponding
one of the plurality of second terminals, and each of the plurality
of first signal paths being connected to a corresponding one of
the plurality of second terminals;
[A] a plurality of shunt circuits, each of the plurality of
shunt circuits being connected between a corresponding one of
the plurality of second terminals and a ground terminal; and
a plurality of third switching devices, each of the plurality
of third switching devices being connected to the third terminal
and connected in series to a corresponding one of a plurality of
second signal paths coupling the third terminal to a
corresponding one of the plurality of second terminals, and each
of the plurality of second signal paths being connected to a
corresponding one of the plurality of second terminals; wherein
[B] each of the shunt circuits includes a second switching
device and an inductor, the second switching device and the
inductor being coupled to each other in series;
[C] the inductors of the shunt circuits have inductances
different from one another; and
[D] the first terminal is to be connected to a first antenna
and the third terminal is to be connected to a second antenna.

Claims Appendix 23 (emphases added).

REJECTIONS
The Examiner made the following rejections:
(1) Claims 1 and 4–7 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Gu (US 2008/0265977 A1; published Oct. 30, 2008) and
Hieda et al. (US 2003/0020563 A1; published Jan. 30, 2003) (hereinafter,
“Hieda”). Final Act. 2–8; Ans. 5–10.
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(2) The Examiner rejected claims 8, 9, and 12–19 under 35 U.S.C.
§ 103 as being unpatentable over the combination of Gu, Hieda, and
Sprinkle et al. (US 2011/0009213 A1; published Jan. 9, 2014) (hereinafter,
“Sprinkle”). Final Act. 8–13; Ans. 10–15.

ISSUE
Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 4–
22) and Reply Brief (Reply Br. 2–18), the following principal issue is
presented on appeal:
Did the Examiner err in rejecting claims 1, 4–9, and 12–19 under
35 U.S.C. § 103 as being unpatentable over the base combination of Gu and
Hieda, because there is not proper motivation to combine Gu and Hieda?

ANALYSIS
We have reviewed the Examiner’s rejections (see Final Act. 2–13;
Ans. 5–15) in light of Appellant’s arguments that the Examiner has erred
(see Appeal Br. 4–22; Reply Br. 2–18), as well as the Examiner’s response
to Appellant’s arguments in the Appeal Brief (see Ans. 16–23). Appellant’s
contentions that the Examiner has not provided a sufficient motivation to
combine Gu and Hieda (see Appeal Br. 13–16, 19–21; Reply Br. 11) are
persuasive.
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007); see
also Metalcraft of Mayville, Inc., v. The Toro Co., 848 F.3d 1358, 1367
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(Fed. Cir. 2017) (“Without any explanation as to . . . why the references
would be combined to arrive at the claimed invention, we are left with only
hindsight bias that KSR warns against. . . . [W]e cannot allow hindsight bias
to be the thread that stitches together prior art patches into something that is
the claimed invention.”). Further, the USPTO “must examine the relevant
data and articulate a satisfactory explanation for its action including a
rational connection between the facts found and the choice made” and that
articulation requirement “appl[ies] with equal force to the . . . motivation to
combine analysis.” In re Nuvasive, Inc., 842 F.3d 1376, 1382–83 (Fed. Cir.
2016). “The factual inquiry whether to combine references must be
thorough and searching and the need for specificity pervades our authority
on the . . . findings on motivation to combine.” Id. at 1381–82 (internal
quotation marks and citation omitted). When “motivation to combine . . . is
disputed,” the USPTO “must articulate a reason why a PHOSITA would
combine the prior art references.” Id. We will not resort to speculation or
assumptions to cure deficiencies in the Examiner’s fact finding or reasoning.
See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
With respect to independent claim 1, the Examiner’s explanation for
the motivation to combine Gu and Hieda is as follows:
Therefore, it would have been obvious to one of ordinary
skill in the art before the effective filing date of the claimed
invention was made to incorporate the teachings of Hieda et al
into the system or method of Gu in order to enable a 2P4T
antenna switch to support a 4-transceiver system shared with 2
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antennas. The combination of Gu and Hieda et al also teaches
other enhanced capabilities.

Final Act. 6 and Ans. 8 (emphasis added).
Notably, although Hieda addresses the need to miniaturize the size of
a phase shifter and multi-phase shifter having single-pole double-throw
(SPDT) switches (see Fig. 11, 9a and 9b; ¶¶ 3–10) by using SPDT switches
20a and 20b having inductors, capacitors, and field effect transistors (FETs)
(see Fig. 9; ¶¶ 88–93), Hieda is silent as to the need “to enable a 2P4T [i.e.,
two-pole four-throw] antenna switch to support a 4-transceiver system
shared with 2 antennas” as determined by the Examiner (Final Act. 6; Ans.
8). In fact, the Figure 9 embodiment of Hieda, relied on by the Examiner in
both rejections before us, only describes connecting the radio-frequency
switch have a FET with a single antenna (see ¶ 16), not multiple antennae.
Furthermore, we agree with Appellant’s contention that Hieda (see e.g., Fig.
9; ¶¶ 88–93) does not “teach or suggest a ‘4-transceiver system shared with
2 antennas’ as alleged by the Examiner” (Appeal Br. 20). Additionally, we
agree with Appellant’s argument that:
None of Gu, Hieda, Sprinkle, or any other evidence of
record teaches or suggests “[incorporating] the teachings of
Hieda et al into the system or method of Gu in order to enable a
2P4T antenna switch to support a 4-transceiver system shared
with 2 antennas” as alleged by the Examiner, much less even hint
that the switching device 10 in Fig. 2A of Gu should or could
possibly have included the features of “a plurality of shunt
circuits (103a-103d), each of the plurality of shunt circuits
being connected between a corresponding one of the plurality
of second terminals (32a-32d) and a ground terminal,” “each
of the shunt circuits (103a-103d) includes a second switching
device (104a-104d) and an inductor (L1-L4), the second
switching device and the inductor being coupled to each
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other in series”, and “the inductors (L1-L4) of the shunt
circuits (103a-103d) have inductances different from one
another” (reference characters and bolded emphasis added) as
recited in Claims 1, 8, and 18, that there would have been any
reason or motivation whatsoever to have configured the
switching device 10 in Fig. 2A of Gu in this manner, or that any
advantages or benefits would or could have been obtained
thereby.

Appeal Br. 20.
We agree with Appellant (see Appeal Br. 15–16) that Hieda provides
no explanation or reasoning for concluding that one of skill in the art would
have modified Gu with Hieda to produce the claimed invention.2 Without
any explanation as to how or why the references would be combined to
arrive at the claimed invention, we are left with only hindsight bias that
KSR warns against. See KSR, 550 U.S. at 421. And while we understand
that “[t]he obviousness analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and motivation,” we also
recognize that we cannot allow hindsight bias to be the thread that stitches
together prior art patches into something that is the claimed invention. See
KSR, 550 U.S. at 419, 421. In view of the foregoing, the Examiner’s
broadly-stated conclusion suffers from hindsight bias. See, e.g., In re

2 “Obviousness may not be established using hindsight or in view of the
teachings or suggestions of the inventor.” Para-Ordnance Mfg. v. SGS
Importers Int’l, 73 F.3d 1085, 1087 (Fed. Cir. 1995) (citing W.L. Gore &
Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551, 1553 (Fed. Cir. 1983)).
“The mere fact that the prior art may be modified in the manner suggested
by the Examiner does not make the modification obvious unless the prior art
suggested the desirability of the modification.” In re Fritch, 972 F.2d 1260,
1266 (Fed. Cir. 1992) (citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir.
1984)).

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Giannelli, 739 F.3d 1375, 1380 (Fed. Cir. 2014) (reversing affirmance of
examiner’s obviousness determination where the Board’s analysis
“contained no explanation why or how [a skilled artisan] would modify”
the prior art to arrive at the claimed invention); In re Rouffet, 149 F.3d
1350, 1358 (Fed. Cir. 1998).
Appellant’s contention that the Examiner’s stated motivation and
reasoning for combining Gu and Hieda “are conclusory statements that
constitute clear legal error” (Appeal Br. 20) is persuasive. We find the
Examiner’s logic in combining Gu and Hieda (as to claims 1, 8, and 18), that
the combination “teaches other enhanced capabilities” (Final Act. 6; Ans. 8),
to be conclusory, speculative, and unsupported by the evidence of record
(see Final Act. 6, 10; Ans. 8, 12).3
Lastly, with regard to the base combination of Gu and Hieda, we
agree with Appellant’s assertion the Examiner (see e.g., Final Act. 8
(Examiner’s marked up version of Hieda’s Figure 9 with labels created by
Examiner) has improperly used Appellant’s own invention (e.g., Figure 7) as
a guide in reconstructing the claimed switching device (see Appeal Br. 21).
“It is impermissible to use the claimed invention as an instruction manual or
‘template’ to piece together the teachings of the prior art so that the claimed
invention is rendered obvious.” Fritch, 972 F.2 at 1266 (citing In re
Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991)). In the case before us, the
Examiner’s use of Appellant’s Figure 7 to edit and explain Hieda’s Figure 9
impermissibly uses the claimed invention as a template to piece together the
teachings of Gu and Hieda to render the claimed invention obvious.

3 See Para-Ordnance Mfg. v. SGS Importers Int’l, 73 F.3d at 1087; In re
Warner, 379 F.2d at 1017.
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With respect to independent claims 8 and 18, the Examiner’s
explanation for the motivation to combine Sprinkle with the base
combination of Gu and Hieda is as follows:
Therefore, it would have been obvious to one of ordinary
skill in the art before the effective filing date of the claimed
invention was made to incorporate the teachings of Sprinkle et al
into the modified system or method of Gu and Hieda et al in
order to make a miniature switch device using a multi-layer
circuit board. The combination of Gu, Hieda et al and Sprinkle
et al also teaches other enhanced capabilities.

Final Act. 10 and Ans. 12 (emphasis added).
With regard to making the switching device miniaturized on a multi-
layer circuit board, Hieda merely shows a single layer circuit board (see
Figs. 13A, 13B; ¶¶ 92–95) having a switch circuit 120 mounted on a
substrate 812 and covered with an overmold structure 830 (see ¶ 95). And,
here again, as with claim 1, the motivation proffered by the Examiner as to
claims 8 and 18, that the combination of references “also teaches other
enhanced capabilities” (Final Act. 10; Ans. 12), is conclusory and
speculative.4
In view of the foregoing, Appellant’s arguments that the Examiner
relies upon speculation and impermissible hindsight in modifying Gu and
Hieda (see Appeal Br. 13–16, 19–21; Reply Br. 11) are persuasive. Because
the Examiner has not properly set forth articulated reasoning with a rational
underpinning to support the legal conclusion of obviousness as required by
KSR (see KSR, 550 U.S. at 418) for claims 1, 8, and 18, we are constrained
by the record to reverse the Examiner’s rejections of claims 1, 4–9, and 12–

4 See Para-Ordnance Mfg. v. SGS Importers Int’l, 73 F.3d at 1087; In re
Warner, 379 F.2d at 1017.
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19 over the base combination of Gu and Hieda. See Warner, 379 F.2d at
1017 (we will not resort to speculation or assumptions to cure deficiencies in
the Examiner’s fact finding or reasoning).

CONCLUSION5
For the reasons explained above, we do not sustain the rejections of
claims 1, 4–9, and 12–19 under 35 U.S.C. § 103 as being unpatentable over
the base combination of Gu and Hieda.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4–7 103 Gu, Hieda 1, 4–7
8, 9, 12–19 103 Gu, Hieda, Sprinkle 8, 9, 12–19
Overall
Outcome
1, 4–9, 12–
19

REVERSED

5 We recognize that Appellant’s arguments present additional issues as to
whether (i) Gu teaches or suggest limitation D; and (ii) Hieda teaches or
suggests limitations A, B, and C, of claim 1 (see e.g., Appeal Br. 9–14).
Because we are persuaded of error by the issue regarding impermissible
hindsight, we do not reach the additional issues. See Beloit Corp. v. Valmet
Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (explaining an administrative
agency is at liberty to reach a decision based on “a single dispositive issue”).