Ex Parte Den Ouden

Patent Trial and Appeal Board

Sep 26, 2012

10211895 (P.T.A.B. Sep. 26, 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.
10/211,895 08/02/2002 Josephus A.A. Den Ouden E5982-00261 9980
77561 7590 09/26/2012
Duane Morris LLP (Entropic)
IP Department
30 South 17th Street
Philadelphia, PA 19103-4196
EXAMINER
BOCURE, TESFALDET
ART UNIT PAPER NUMBER
2611
MAIL DATE DELIVERY MODE
09/26/2012 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOSEPHUS A.A. DEN OUDEN
____________________

Appeal 2009-013690
Application 10/211,895
Technology Center 2600
____________________

Before ERIC S. FRAHM, TREVOR JEFFERSON, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-013690
Application 10/211,895

2
STATEMENT OF THE CASE
1

Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 8, 10, 12, and 14.
2
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s Disclosed Invention
Appellant discloses a clock signal generator (Spec. 1:3-6; Fig. 1)
including a start-stop oscillator 1, counter 2, and control circuit 3.
Exemplary Claim
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below with emphases and
paragraphing added:
1. A phase-coupled clock signal generator comprising a start- stop
oscillator having an input for receiving a control signal to allow
oscillation in response to a first value of the control signal and no
oscillation in response to a second value of the control signal,
characterized in that
the start-stop oscillator is of a type whose generated frequency
is adjustable by means of an applied adjusting value and in that the
clock signal generator comprises control means for adapting the

1
Throughout our decision, we make reference to the Appeal Brief filed
November 14, 2005 (“Br.”); and the Examiner’s Answer mailed February 9,
2006 (“Ans.”).
2
Claims 9, 11, 13, and 15 have been objected to as being dependent upon a
rejected base claim, but allowable if rewritten in independent form including
all of the limitations of the base claim and any intervening claims (see Final
Rej. mailed June 7, 2004, p. 5).
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adjusting value in response to a difference between the generated
frequency and a predetermined desired frequency.

The Examiner’s Rejections
(1) The Examiner rejected claims 1 and 8 under 35 U.S.C. § 102(b) as
being anticipated by Kraus (US 4,672,449). Ans. 4-5.
(2) The Examiner rejected claims 10, 12, and 14 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Kraus and Hirao (US
4,996,596). Ans. 5-6.
Appellant’s Contentions
(1) Appellant contends (Br. 3-4) that the Examiner erred in rejecting
claims 1 and 8 under 35 U.S.C. § 102(b) for numerous reasons, including:
3
(a) Kraus’ start-stop oscillator 10 has a single input and an output,
with no separate input for an adjustable signal present (Br. 3);
(b) Although Kraus’ delay is adjustable, Kraus does not disclose an
oscillator that is frequency-adjustable (Br. 3-4); and

3
Appellant only presents arguments on the merits with regard to
independent claim 1 (see Br. 3-4). We select claim 1 as representative of the
group of claims 1 and 8. 37 C.F.R. § 41.37(c)(1)(vii).
Appellant does not present any arguments specifically directed at the
§ 103(a) rejection over the combination of Kraus and Hirao, other than for
claim 10, Appellant merely recites the language of claim 10 (Br. 4), and
such an argument is not considered an argument for separate patentability.
Appellant groups claims 12 and 14 with claim 10 (Br. 4). We decide the
appeal of claims 10, 12, and 14 for the same reason as claim 8 from which
these claims depend. In turn, because claim 8 stands or falls with claim 1,
we decide the appeal of claims 10, 12, and 14 on the same basis as
representative claim 1.
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(c) Kraus’ column 3, lines 10-18 description of the alternative
embodiment of Figure 3 describes that the oscillator is not a start-stop
oscillator, but a continuously running oscillator as seen from column 8, line
64 to column 9, line 1 (Br. 4).
(2) Appellant contends (Br. 4) that the Examiner erred in rejecting
claims 10, 12, and 12 under 35 U.S.C. § 103(a) because Kraus fails to teach
or suggest the control means of claim 10.
Issues on Appeal
Based on Appellant’s arguments, the following issues are presented
for appeal:
(1) Did the Examiner err in rejecting claims 1 and 8 because Kraus
does not disclose or show a frequency-adjustable start-stop oscillator, as
recited in claim 1, and similarly recited in claim 8?
(2) Did the Examiner in rejecting claims 10, 12, and 14 because the
combination of Kraus and Hirao fails to teach or suggest the control means
of claim 10?
4

4
Appellant’s disclosure does not provide any expanded view of the control
circuit 3 shown in Figure 1, or otherwise expand on what constitutes the
“control means” of claim 10, other than to state that “control circuit 3 may
comprise a microprocessor, for example the type 84C640 of Philips” (Spec.
5:36-37). Notably, Appellant fails to disclose the equivalent structure that
performs the control means function recited in claim 10 (see Br. 2-3,
Summary of Claimed Subject Matter), as required by the rules governing
appeals to the Board. See 37 C.F.R. § 41.37(c)(1)(iii):

. . . For each rejected independent claim, and for each
dependent claim argued separately under the provisions of
(Footnote continued on next page.)
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The outcome of the second issue regarding claims 10, 12, and 14 turns
on the result of the first issue regarding claim 1, whether or not Kraus
discloses a frequency-adjustable start-stop oscillator.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions in the Appeal Brief (Br. 3-4) that the Examiner has erred.
We disagree with the Appellant’s conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to the Appellant’s Appeal Brief (Ans. 4-
8). We highlight and amplify certain disclosures, teachings, and suggestions
of the reference to Kraus as follows.
We agree with the Examiner (Ans. 4-5 and 8) that Kraus discloses
(col. 7, ll. 44-66 and col. 8, ll. 9-36; Figs. 1 and 2) a start-stop oscillator 10,
counter 11, and control circuit (elements 8, 9, 12, and/or 13). Specifically,

paragraph (c)(1)(iv) of this section, if the claim contains a
means plus function or step plus function recitation as permitted
by 35 U.S.C. 112, sixth paragraph, then the concise explanation
must identify the structure, material, or acts described in the
specification in the Record as corresponding to each claimed
function with reference to the specification in the Record by
page and line number or by paragraph number, and to the
drawing, if any, by reference characters.

(37 C.F.R. § 41.37(c)(1)(iii)).
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Kraus discloses that the frequency of oscillator 10 may be adjustable (col. 7,
ll. 48-51), and that oscillator 10 “is for example a start-stop oscillator” (col.
7, ll. 54-55).
In view of Kraus’ disclosure of a start-stop oscillator, and Appellant’s
admission (Spec. 1:16-25) that start-stop oscillators are well-known in the
prior art to “oscillate[] at a predetermined frequency when the first value of
the control signal is being applied and does not oscillate in response to the
second value of the control signal” (Spec. 1:17-20), Appellant’s argument
(Br. 4 citing Krauss at col. 3, ll. 10-18 and col. 8, l. 64 to col. 9, l. 1; Fig. 3)
that Krauss fails to describe a start-stop oscillator is unpersuasive. The
Examiner relies on the embodiment of Figures 1 and 2, as seen from the
reliance upon the related description of these figures at column 7, lines 44-
66 and column 8, lines 9-36 (see Ans. 4, 5, and 7).
Appellant’s argument (Br. 3) that start-stop oscillator 10 has a single
input and an output, with no separate input for an adjustable signal present,
is unpersuasive inasmuch as this argument is not commensurate in scope
with the language of claim 1. Claim 1 only requires a single input, “an input
for receiving a control signal.” We agree with the Examiner (Ans. 7) that
claim 1 only requires one input signal.
With regard to Appellant’s assertion that Kraus fails to teach or
suggest the control means of claim 10 (Br. 4), we find this argument
conclusory and not supported by probative evidence. In addition, such
conclusions are not considered a separate argument for patentability. See In
re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (stating that interpreting 37
C.F.R. § 41.37(c)(1)(vii) to require a more substantive argument than a
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naked assertion that the prior art fails to teach a limitation in order to address
a claim separately, is not an unreasonable interpretation of the rule).
Furthermore, arguments of counsel cannot take the place of evidence
lacking in the record. Estee Lauder, Inc. v. L'Oreal, S.A., 129 F.3d 588, 595
(Fed. Cir. 1997). When an examiner establishes a prima facie case of
obviousness, the burden shifts to the applicant to show non-
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993). In the
instant case, the Examiner has reasonably established (see Ans. 5-6 and 8)
that the elements 8, 9, and 11-13 shown in Figure 1 operate as a control
means within the metes and bounds of the language of claim 10. Appellant
has not rebutted the Examiner’s articulated reasoning with respect to the
control means of claim 10, and similarly recited in claims 12 and 14
depending therefrom.
In view of the foregoing, Appellant has not established that the
Examiner erred in rejecting (i) claims 1 and 8 as being anticipated by Kraus,
and (ii) claims 10, 12, and 14 as obvious over the combination of Kraus and
Hirao.

CONCLUSIONS
(1) The Examiner did not err in rejecting claims 1 and 8 under 35
U.S.C. § 102(b) as being anticipated by Kraus.
(2) The Examiner did not err in rejecting claims 10, 12, and 14 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Kraus and
Hirao.
(3) Claims 1, 8, 10, 12, and 14 are not patentable.
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DECISION
The Examiner’s rejections of claims 1, 8, 10, 12, and 14 are affirmed.
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).

AFFIRMED

ELD