SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC

Patent Trials and Appeals Board

Aug 17, 2021

2020003444 (P.T.A.B. Aug. 17, 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.
15/944,662 04/03/2018 Phuc Cong PHAM ONS02865US 8283
136210 7590 08/17/2021
SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC (NN)
5005 E. McDowell Road
Maildrop A700
Phoenix, AZ 85008
EXAMINER
MCKIE, GINA M
ART UNIT PAPER NUMBER
2631
NOTIFICATION DATE DELIVERY MODE
08/17/2021 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):
patents@onsemi.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PHUC CONG PHAM,
HIEU NGUYEN, and ROD J. COMER
____________

Appeal 2020-003444
Application 15/944,662
Technology Center 2600
____________

Before ALLEN R. MacDONALD, CAROLYN D. THOMAS, and
CARL W. WHITEHEAD JR., Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 5, 7, 8, 12, 13, 16, 17, and 19.2
Claims 4, 6, 9–11, 14, 15, 18, and 20 are indicated as containing allowable
subject matter. See Final Act. 24. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as
Semiconductor Component Industries, LLC. Appeal Br. 2.
2 Claim 10 is dependent upon allowable independent claim 9. Therefore
claim 10 is treated as allowable.
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Application 15/944,662

2

The present invention relates generally to a continuous time linear
equalizer (CTLE). See Spec. Abstr.
Claim 1, reproduced below, is representative:
1. A continuous time linear equalizer circuit,
comprising:
a differential transistor pair;
a cross-coupled circuit, connected in parallel with the
differential transistor pair, comprising:
a first transistor; and
a second transistor;
wherein the first and second transistors are cross-
coupled with each other; and
an RC network connected in parallel with the cross-
coupled circuit.

Appellant appeals the following rejections:
R1. Claims 1, 2, 5, 7, 8, 12, 13, 16, and 19 are rejected under
35 U.S.C. § 103 as being unpatentable over the combination of Singh (US
2006/0001504 A1; pub. Jan. 5, 2006) and Xue (US 2018/0351510 A1; pub.
Dec. 6, 2018). Final Act. 10–22.
R2. Claims 3 and 17 are rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Singh, Xue, and Fan (US
2008/0198913 A1; pub. Aug. 21, 2008). Final Act. 22–23.
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

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ANALYSIS
Issue: Did the Examiner err in finding that Xue is analogous prior
art?
Appellant contends that the Xue reference is non-analogous art
because “the field of endeavor of the present claims is an equalizer circuit,”
whereas “the Xue reference is in the field of ‘oscillator circuits, and more
particularly to providing variable oscillation frequencies using phase-tuning
techniques. . . . ’” Appeal Br. 10. Appellant further contends that the Xue
reference is not reasonably pertinent to the particular problem with which
the inventor is involved because “the Xue reference has nothing to do with
continuous time linear equalizers or high-gain peaking” (id. at 11)(emphasis
omitted), “therefore, there is no reason that an inventor seeking to solve the
problem of high-gain peaking up to and beyond the Nyquist frequency in a
continuous time linear equalizer would have looked to or been informed by
the Xue reference.” Id. We agree with Appellant.
There are two separate tests for determining whether a prior art
reference is analogous as follows: (1) whether the art is from the same field
of endeavor, regardless of the problem addressed; and (2) if the reference is
not within the inventors’ endeavor, whether the reference is reasonably
pertinent to the particular problem with which the inventors are involved.
In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). “A reference is
reasonably pertinent if, even though it may be in a different field from that
of the inventor’s endeavor, it is one which, because of the matter with which
it deals, logically would have commended itself to an inventor’s attention in
considering his problem.” In re Icon Health & Fitness, Inc., 496 F.3d 1374,
1379–80 (Fed. Cir. 2007) (citations and quotations omitted).
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The field of endeavor test “requires the PTO to determine the
appropriate field of endeavor by reference to explanations of the invention’s
subject matter in the patent application, including the embodiments,
function, and structure of the claimed invention.” Bigio, 381 F.3d at 1325
(citation omitted). Here, the Examiner merely directs our attention to the
first sentence in Appellant’s BACKGROUND section, i.e., paragraph 1,
which states: “Data transceiver systems for high-speed communication are
subject to signal distortion of the transmitted signal” (Spec. ¶ 1) and
concludes that “[t]he field of endeavor is circuit design for high-speed data
communication.” Ans. 4. However, we find that the Examiner has not
shown adequate support for the findings given that “high-speed
communication” is only nominally recited in the background section of
Appellant’s Specification. See Bigio, 381 F.3d at 1326 (“[T]he PTO must
show adequate support for its findings on the scope of the field of endeavor
in the application’s written description and claims, including the structure
and function of the invention.”). Although Appellant’s Specification
discusses transceiver systems for high-speed communication, we find that
the focus of the invention is not high-speed communication itself, but rather
specific consequences emanating from high-speed communication, i.e.,
signal distortion of the transmitted signal.
For example, the “SUMMARY OF THE INVENTION” section of
Appellant’s Specification states that “the present technology comprise a
method and apparatus for a continuous time linear equalizer (CTLE).” Spec.
¶ 3; see also Spec. TITLE. In describing the prior art upon which the
invention improves, the Specification discusses that “[d]ata transceiver
systems for high-speed communication are subject to signal distortion of the
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transmitted signal” and that “[a] receiving unit typically has an equalizer to
compensate for losses and signal distortion caused by propagating the data
signal via a transmission channel.” Spec. ¶ 1. Appellant’s Specification
further states that “[c]onventional CTLEs used in high speed receivers,
however, utilize large components such as inductors, which occupy a large
area on the die, and/or do not maintain linear high-gain peaking up to and
beyond the Nyquist frequency, which is desired for optimal channel-loss
compensation.” Spec. ¶ 2.
Given the disclosures in Appellant’s Specification, we agree with
Appellant that “the field of endeavor of the present claims is an equalizer
circuit,” and specifically, circuits for removing distortions and/or equalize
the transmitted signal (see Appeal Br. 10), rather than the overly broad
“circuit design for high-speed data communication,” as proffered by the
Examiner. See Ans. 4. Circuit design for high-speed data communication
can focus on numerous aspects, such as cost, power constraints, scaling,
substrate noise, data conversion, etc. Here, the focus of the present
invention is equalizing the transmitted signal. See Spec. ¶ 1.
In contrast with Appellant’s field of endeavor, Xue’s “TECHNICAL
FIELD” states that it relates to “oscillator circuits” and “providing variable
oscillation frequencies using phase-tuning techniques,” i.e., phase-tuning
techniques. Xue ¶ 1; see also id. ¶ 6 and Xue’s Spec. Title.
Therefore, to the extent that the Examiner’s use of the cited reference
Xue is based on a determination that it is within Appellant’s field of
endeavor, the Examiner has not provided adequate support for that
conclusion. Specifically, the Examiner has not cited any evidence in Xue
that supports a conclusion that Xue’s field of endeavor is the same as
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Appellant’s field of endeavor, i.e., circuits that compensate for signal
distortion. The field of endeavor test “requires the PTO to determine the
appropriate field of endeavor by reference to explanations of the invention’s
subject matter in the patent application, including the embodiments,
function, and structure of the claimed invention.” Bigio, 381 F.3d at 1325.
Here, we find that the Examiner has not determined the appropriate field of
endeavor for Appellant’s invention, and thus it follows that the Examiner
has not shown that Xue is within the same.
Regarding the “pertinent to the particular problem” requirement, the
Examiner finds that “[t]he problem faced by the inventor concerns the
demands of high-speed communication and meeting those demands with
architectures that do not increase complexity or power requirements.” Ans.
4 (citing Spec. ¶ 3); see Icon, 496 F.3d at 1379–80. As noted above,
Appellant’s invention is not focused on high-speed communication, but
rather receiver systems subject to distortion of the transmitted signal. Thus,
we find that the Examiner’s stated problem is also overly broad.
Instead, Appellant’s Specification states that “[c]onventional CTLEs
. . . do not maintain linear high-gain peaking up to and beyond the Nyquist
frequency, which is desired for optimal channel-loss compensation.” Spec.
¶ 2. In other words, the problem faced by the inventors concern
compensating for channel losses and signal distortion caused by propagating
the data signal, i.e., maintaining linear high-gain peaking, up to and beyond
the Nyquist frequency. See Spec. ¶¶ 1–2.
As such, we agree with Appellant that the Xue reference is not
reasonably pertinent to the particular problem with which the inventor is
involved because “the Xue reference has nothing to do with continuous time
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linear equalizers or high-gain peaking” (Appeal Br. 11)(emphasis omitted),
“therefore, there is no reason that an inventor seeking to solve the problem
. . . would have looked to or been informed by the Xue reference.” Id.
Instead, Xue is concerned with “avoiding phase ambiguity with respect to
tunable oscillation frequencies.” Xue Abstr. The Examiner has not
adequately shown that Xue is concerned with compensating for signal
distortion.
“A reference is reasonably pertinent if . . . it is one which, because of
the matter with which it deals, logically would have commended itself to an
inventor’s attention in considering his problem.” In re Klein, 647 F.3d 1343,
1348 (Fed. Cir. 2011) ‘(quoting In re Clay, 966 F.2d 656, 659 (Fed. Cir.
1992)). See also In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992) (“[I]t is
necessary to consider ‘the reality of the circumstances’ . . . —in other words,
common sense—in deciding which fields a person of ordinary skill would
reasonably be expected to look for a solution to the problem facing the
inventor.”).
Here, we find that the Examiner is overly broad in identifying both the
field of endeavor and the problem with which Appellant is involved, and
thus, fails to explain how Xue is pertinent to the appropriate field/problem.
Therefore, we are constrained by the record before us to find that the
Examiner has not met the burden of establishing that Xue constitute
analogous art.
Also, because we agree with at least one of the arguments advanced
by Appellant, we need not reach the merits of Appellant’s other arguments.
Accordingly, we will not sustain the Examiner’s obviousness rejections of
claims 1–3, 5, 7, 8, 12, 13, 16, 17, and 19.
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CONCLUSION
The Examiner’s rejections of the claims as being unpatentable under
35 U.S.C. § 103 are reversed.
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 5, 7, 8, 12,
13, 16, 19
103 Singh, Xue 1, 2, 5, 7, 8,
12, 13, 16,
19
3, 17 103 Singh, Xue, Fan 3, 17
Overall
Outcome
1–3, 5, 7, 8,
12, 13, 16,
17, 19

REVERSED