Ex Parte Besse et al

Patent Trial and Appeal Board

Apr 29, 2016

12304849 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/304,849 12/15/2008
34814 7590 05/03/2016
NXP-LARSON NEWMAN, LLP
6501 William Cannon Drive West
Austin, TX 78735
FIRST NAMED INVENTOR
Patrice Besse
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.
TS10038EC 9074
EXAMINER
HOANG, ANN THI
ART UNIT PAPER NUMBER
2836
NOTIFICATION DATE DELIVERY MODE
05/03/2016 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):
ip.department.us@nxp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PATRICE BESSE and ERIC ROLLAND 1
Appeal2014-006952
Application 12/304,849
Technology Center 2800
Before MICHAEL J. STRAUSS, JOHN F. HORVATH, and
MICHAEL M. BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 5, 7-15, and 17-24.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.
1 Appellants identify Freescale Semiconductor, Inc. as the real party in
interest. App. Br. 3. Appellants also note Citibank, N.A. has a security
interest. Id.
2 Claims 3, 4, 6, and 16 have been cancelled.
Appeal2014-006952
Application 12/304,849
Introduction
Appellants declare their "invention relates to an electrostatic discharge
apparatus of the type, for example, comprising a stack arrangement having a
first electrostatic discharge protection element serially coupled to a second
electrostatic discharge protection element for responding to an electrostatic
discharge event." Spec. 1 ("Field of the Invention"). Claim 1 exemplifies
the claimed subject matter at issue, shown here with a disputed claim
requirement highlighted:
1. An electrostatic discharge protection apparatus,
compnsmg:
a stack arrangement having:
a first electrostatic discharge protection element
comprising a first terminal, and a second terminal; and
a second electrostatic discharge element comprising a
first terminal, and a second terminal, the first electrostatic
discharge protection element serially coupled to the second
electrostatic discharge protection element, wherein the first
electrostatic discharge protection element includes a transistor
having a collector terminal, an emitter terminal, and a base
terminal connected to the emitter terminal; the stack
arrangement to provide a bias potential between the first and
second electrostatic discharge protection elements based on a
breakdown voltage of the first and second electrostatic
discharge protection elements;
the stack arrangement further comprises a clamp
arrangement including a first voltage clamp serially coupled to
a second voltage clamp, the clamp arrangement to provide a
further bias potential across the first and second electrostatic
discharge protection elements responsive to a breakdown
voltage of each of the first and second voltage clamps,
wherein a potential at the node between the first and second
electrostatic discharge protection elements is substantially
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Appeal2014-006952
Application 12/304,849
equal to a potential at a node between the first and second
voltage clamps; and
the second electrostatic discharge protection element is
further inhibited from responding to a parasitic event at
potentials below the further bias potential in response to the
breakdown voltage of the first and second electrostatic
discharge protection elements being higher than the
breakdown voltage of the first and second voltage clamps.
App. Br. 15 (Claims App'x).
Rejections
Claims 1, 2, 5, 7-15, and 17-24 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Marr (US 2004/0085093 Al; May 6, 2004) and
Olney (US 5,751,525; May 12, 1998). Final Act. 2-7.
ANALYSIS
Appellants contend the Examiner errs by equating claim 1 's
"breakdown voltage" to the "tum-on voltage" for diodes as disclosed in
l\1arr. App. Br. 9. The Examiner answers by finding "Appellant has used
the terms 'trigger voltage' (which is a tum on voltage) and 'breakdown
voltage' synonymously between the specification and the claims." Ans. 3.
Appellants, in reply, discuss Figure 1 of the Application, in view of the
Specification, to explain why one of ordinary skill would understand the
difference between tum-on voltage and breakdown voltage as used in the
Specification and Claims. Reply Br. 2--4. We agree with Appellants that an
ordinarily skilled artisan understands the difference between breakdown and
tum-on voltages.
In the Answer, the Examiner also finds that "regardless of whether a
breakdown voltage could be equated to a tum on voltage," Marr and Olney
teach "first and second electrostatic discharge [ESD] protection elements in
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Appeal2014-006952
Application 12/304,849
the form of transistors and first and second voltage clamps in the form of
diodes and resistors-and is thus understood to provide all the limitations of
claim 1." Ans. 4. Appellants, in reply, argue that "Marr discloses a circuit
structure that places diodes in a forward bias, which is opposite of utilizing
the breakdown voltage ... as recited in claim 1. Therefore, the structure
disclosed [in] Marr fails to teach the structure of claim 1." Reply Br. 5. We
agree.3
"[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).
Appellants' provide a detailed technical explanation for how the Schottky
diodes of Marr do not inhibit the second ESD protection element from
responding to a parasitic event as required by the disputed claim element.
App. Br. 10. The Examiner summarily finds that regardless of this
argument, "the combination of Marr and Olney provides the structure of the
claimed invention and is thus understood to provide all the limitations of
claim 1." Answer 5. 4 This finding is not properly supported by the record
before us, as the Examiner has failed to explain how the second electrostatic
3 We note Appellants' argument that Marr teaches the "opposite of utilizing
the breakdown voltage of a diode as recited in claim 1" (Reply Br. 5
(emphasis added)) is technically not commensurate with the scope of claim
1, which does not recite diodes. This is, however, a harmless error in view
of the related explanation previously given by Appellants in the Appeal
Brief, which correctly refers to the claim language. See App. Br. 10-11.
4 The Examiner relies on Olney only for teaching the use of diode-connected
transistors in lieu of the p-n diodes of Marr's Figure 7, so Appellants'
explanation applies equally to the combination of Marr and Olney, as
reflected in the modified Marr Figure 7.
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Appeal2014-006952
Application 12/304,849
discharge element in the combination of Marr and Olney "is further inhibited
from responding to a parasitic event at potentials below the further bias
potential in response to the breakdown voltage of the first and second
electrostatic discharge protection elements being higher than the breakdown
voltage of the first and second voltage clamps," as recited in claim 1.
Therefore, the Examiner's conclusory finding does not persuasively rebut
Appellants' explanations for how the combination of Marr and Olney fail to
teach the disputed claim requirement.
We accordingly do not sustain the rejection of claim 1. For the same
reasons, we do not sustain the rejection of the other independent claims, 15
and 21, which include similar limitations. We also do not sustain the
rejection of claims 2, 5, 7-14, 17-20, and 22-24, which depend from claims
1, 15, and 21.
We note that in an ex parte appeal the Board "is basically a board of
review-we review ... rejections made by patent examiners." Ex parte
Gambogi, 62 USPQ2d 1209, 1211 (BPAI 2001). Because we are a board of
review, and not a place of initial examination, we will not engage in the de
nova examination required to supplement the Examiner's findings in
connection with the disputed requirements of claim 1. Although the Board is
authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should
be drawn when the Board elects not to do so. See Manual of Patent
Examining Procedure (MPEP) §1213.02.
DECISION
For the reasons above, we reverse the Examiner's rejection of claims
1, 2, 5, 7-15, and 17-24.
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Appeal2014-006952
Application 12/304,849
REVERSED
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