TEXAS INSTRUMENTS INCORPORATED

Patent Trials and Appeals Board

Oct 2, 2020

15816446 - (D) (P.T.A.B. Oct. 2, 2020)

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.
15/816,446 11/17/2017 Jiwei Fan TI-77227 8161
23494 7590 10/02/2020
TEXAS INSTRUMENTS INCORPORATED
P O BOX 655474, MS 3999
DALLAS, TX 75265
EXAMINER
NOVAK, PETER MICHAEL
ART UNIT PAPER NUMBER
2839
NOTIFICATION DATE DELIVERY MODE
10/02/2020 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 JIWEI FAN and MINGYUE ZHAO
Appeal 2019–007008
Application 15/816,446
Technology Center 2800
BEFORE CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and JANE
E. INGLESE Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3. Claims 4–8 are objected to as
indicated on page 5 of the Final Office Action. We have jurisdiction 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 Texas Instruments
Incorporated. Appeal Br. 2.
Appeal 2019-007008
Application 15/816,446

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CLAIMED SUBJECT MATTER
Claim 1 is illustrative of Appellant’s subject matter on appeal
and is set forth below:

1. A circuit comprising:
an input terminal;
an output terminal;
a fixed frequency clock circuit configured to generate a
clock signal having fixed frequency clock pulses;
a driver circuit configured to operate a switch, coupled to
a switch node between the input and output terminal, in
response to pulse width modulation (PWM) pulses; and
a pulse generation circuit coupled to receive a feedback
voltage associated with the output terminal, the pulse
generation circuit including:
a transient sensing circuit having:
an amplifier configured to amplify a difference between a
reference voltage and the feedback voltage;
a high pass filter having a filter input coupled to receive
the amplified difference, and a filter output; and
a sense output configured to deliver a sense signal
corresponding
to the filter output; and
a clock augmentation circuit coupled to the transient
sensing circuit, and configured to generate an augmented clock
signal for triggering the PWM pulses, wherein the augmented
clock signal including the clock signal and an additional clock
pulse in response to the sense signal.

Appeal 2019-007008
Application 15/816,446

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REFERENCES
The prior art relied upon by the Examiner are:
Name Reference Date
Hartman US 8,330,437 B1 Dec. 11, 2012
Zhang et al. US 2016/0248328 A1 Aug. 25, 2016

THE REJECTION
Claims 1–3 are rejected under 35 U.S.C. § 103 as being unpatentable
over Hartman in view of Zhang.
OPINION
We review the appealed rejection for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). After considering the
argued claims and each of Appellant’s arguments, and the Examiner’s
position in the record as reflected in the Final Office Action and the Appeal
Brief2, we are persuaded of reversible error in the appealed rejection.
Accordingly, we reverse the Examiner’s rejection on appeal essentially for
the reasons set forth in the record by Appellant, and add the following for
emphasis.
We refer to the Examiner’s statement of the rejection as set forth on
pages 3–5 of the Final Office Action.

2 We use the Appeal Brief filed on May 10, 2019.
Appeal 2019-007008
Application 15/816,446

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In response thereto, Appellant argues, inter alia, that the Examiner’s
proposed modification of the primary reference of Hartman to replace the
transient detector 128 of Hartman with the circuit in Figure 6 of Zhang
would render Hartman unsatisfactory for its intended purpose. Appeal Br. 4.
Appellant explains that Hartman specifically teaches the criticality of the
transient detector 128 at column 4, lines 4–21. Appeal Br. 3. Appellant
states that therein Hartman teaches that the transient detector 128 enables the
PWM modulator 116 to respond to rapid change in output voltage.
Appellant Br. 3–4. Appellant submits that by contrast, the circuit in Figure 6
of Zhang does not provide rapid response to any rapid change in output
voltage. Appeal Br. 4. Appellant explains that unlike the comparator 132 in
the transient detector 128 of Hartman, the amplifier 620a of Zhang is not
configured to detect rapid transient events at the output node. Id.
The Examiner’s response is set forth on pages 5–8 of the Answer.
Notably, the Examiner does not dispute Appellant’s position that Hartman
teaches that the transient detector 128 is critical for enabling the PWM
modulator 116 to respond to rapid change in output voltage, and does not
address specifically Appellant’s statement that the circuit in Figure 6 of
Zhang does not provide rapid response to any rapid change in output
voltage. Rather, on page 8 of the Answer, the Examiner states that the
system of Zhang was meant for transients and refers to claim 1 of Zhang in
support thereof. However, this insufficiently resolves the issue raised by
Appellant that the circuit in Figure 6 of Zhang does not provide rapid
response to any rapid change in output voltage. As Appellant states on page
4 of the Reply Brief, the Examiner’s referral to Zhang’s claim 1 does not
explain how the circuit of Zhang could be integrated in a way that preserves
Appeal 2019-007008
Application 15/816,446

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the functionality of Hartman. Reply Br. 4. As such, we determine that the
preponderance of evidence supports Appellant’s position in the record, and
reverse the rejection. We note that “[i]f the proposed modification would
render the prior art invention being modified unsatisfactory for its intended
purpose, then there is no suggestion or motivation to make the proposed
modification.” In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). “If the
proposed modification or combination of the prior art would change the
principle of operation of the prior art invention being modified, then the
teachings of the references are not sufficient to render the claims prima facie
obvious.” In re Ratti, 270 F.2d 810, 813 (CCPA 1959).
CONCLUSION
We reverse the Examiner’s decision.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Reversed Affirmed
1–3 103 Hartman, Zhang 1–3

REVERSED