Ex Parte Geiler et al

Patent Trial and Appeal Board

Feb 21, 2019

14737851 (P.T.A.B. Feb. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/737,851 06/12/2015
75436 7590 02/25/2019
MORSE, BARNES-BROWN & PENDLETON, P.C.
ATTN: IP MANAGER
City Point
230 Third A venue, 4th Floor
WALTHAM, MA 02451
Anton L. Geiler
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.
META-004-101 8944
EXAMINER
OUTTEN, SAMUEL S
ART UNIT PAPER NUMBER
2842
NOTIFICATION DATE DELIVERY MODE
02/25/2019 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):
patentmail@mbbp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTON L. GEILER and JOHN D. ADAM
Appeal2018---006013
Application 14/737,851
Technology Center 2800
Before BEYERL YA. FRANKLIN, JEFFREY B. ROBERTSON, and
GEORGIANNA W. BRADEN, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-17, 19, and20. 3 (Appeal Br. 4.) We have
jurisdiction pursuant to 35 U.S.C. § 6(b ).
1 This Decision includes citations to the following documents:
Specification filed June 12, 2015 ("Spec."); Final Office Action dated April
12, 2017 ("Final Act."); Appeal Brief filed November 30, 2017 and
Response to Notification of Non-Compliant Appeal Brief filed January 5,
2018 ("Appeal Br."); and Examiner's Answer dated February 23, 2018
("Ans.").
2 Appellants identify Metamagnetics, Inc. as the real party in interest.
(Appeal Br. 2.)
3 Although claim 21 is indicated as being rejected in the Final Office Action
(Office Action Summary) and appealed in the Appeal Brief (Appeal Br. 1 ),
we observe that no rejection of claim 21 is set forth in the Final Action
Appeal2018---006013
Application 14/737,851
We AFFIRM.
THE INVENTION
Appellants state that the invention relates to field of frequency
selective limiter (FSL) devices used for differential signal attenuation, and in
particular to a lumped element frequency selected limiter (LE-FSL) device.
(Spec. ,r 3.)
Claim 1, the only independent claim on appeal, is representative and
reproduced below from the Claims Appendix to the Appeal Brief:
1. A device, comprising:
a first lumped element inductor comprising:
a ferrite-based material comprising at least one via
through the ferrite-based material;
the at least one via including conductive material
embedded therein;
a top conductive material composed on a top
surface of the ferrite-based material; and
a bottom conductive material composed on a
bottom surface of the ferrite-based material;
wherein the top conductive material and the
bottom conductive material are connected by the
conductive material embedded in the at least one via; and
(Final Act. 2-12) or in the Examiner's Answer, (Ans. 2, 6.) Rather, claim
21 appears only to have been rejected under 35 U.S.C. § 112(b) or 35 U.S.C.
§ 112 (pre-AIA), second paragraph in the Non-Final Action mailed
November 22, 2016, pp. 3-5, a rejection that has not been maintained in the
Final Action or Answer. Accordingly, we do not consider claim 21 to stand
rejected for purposes of deciding this appeal.
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Application 14/737,851
wherein, above a selected threshold power level, a signal
passing through the first lumped element inductor is attenuated
with frequency selectivity at select frequencies.
(Appeal Br. 12, Claims Appendix.)
REJECTIONS
The Examiner rejected the claims 1-17, 19, and 20 under 35 U.S.C.
§ 103 as obvious over Maas (US 2009/0322442 Al, published on December
31, 2009, "Maas"), Adam (US 5,023,573, issued on June 11, 1991,
"Adam"), and Jeong et al. (US 2015/0170823 Al, published on June 18,
2015, "Jeong"). (Final Act. 2-12.)
Appellants argue only the limitations of claim 1, indicating that the
rejection of dependent claims 2-17, 19, and 20 should be reversed for the
reasons relied upon for claim 1. (Appeal Br. 10.) Accordingly, we select
claim 1 as representative for disposition of this appeal. 37 C.F.R.
§ 4I.37(c)(l)(iv).
ISSUE4
The Examiner found that Maas discloses a device including a first
lumped element inductor in the form of spiral conductor patterns 32, which
attenuates a signal passing therethrough above a selected threshold power
level. (Final Act. 2-3.) The Examiner also found that Maas does not
disclose that the first lumped element inductor comprises a ferrite-based
4 Appellants' argument that the Office committed a clear error in failing to
respond to arguments made in response to the Final Action is not an
appealable issue, but rather should have been challenged by way of a timely
filed petition. See 3 7 C.F .R. § 1.181. See also Ans. 2-3.
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Application 14/737,851
material with at least one via including conductive embedded therein
through the ferrite-based material, as well as top and bottom conductive
materials connected by the conductive material in the via. (Id. at 3.)
The Examiner found that Adam discloses the use of ferrite-based
material surrounding a conductor of a power limiting device to produce
selective effects. (Id.) The Examiner found that Jeong discloses a planar
inductor comprising a ferrite-based material comprising at least one via
having conductive material embedded therein through the ferrite-based
material, and top and bottom conductive materials. (Id. at 3--4.)
The Examiner determined that it would have been obvious to use the
inductor of Jeong for the spiral inductors of Maas "as an art-recognized
alternative/equivalent inductor that provides the further benefit of improving
the inductance of the inductor (para [0051])." (Id. at 4.) The Examiner also
determined that it would have been obvious to replace the insulation
substrate of Maas and Jeong with ferrite-based materials of Adam as
permitted by Jeong "to provide the benefit of limiting high power signals
while simultaneously allowing power level signals with relatively low loss
(Adam, col. 1 lines 12-18)." (Id.)
Appellants argue that in combining Maas, Jeong, and Adam, the
Examiner provides only conclusory rationale to support the position that it
would have been obvious to have used the inductor of Jeong instead of the
inductor of Maas and to use the ferrite-based material layers of Adam.
(Appeal Br. 5-7.) Appellants contend that combining the FSL device of
Adam with the lumped circuit designs of Maas and Jeong would render the
device in Maas and Adam unsatisfactory for the intended purposes of both
references. (Appeal Br. 7-9.) Appellants additionally argue that combining
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Application 14/737,851
the teachings of Adam and Jeong would add complexity to the device in
Adam without providing any added benefit to the device. (Appeal Br. 9-
10.)
Accordingly, the issue on appeal is: have Appellants identified
reversible error in the Examiner's reasoning for combining Maas, Jeong, and
Adam in order to render the device recited in claim 1 obvious?
DISCUSSION
We are not persuaded by Appellants' argument that the Examiner did
not provide sufficient rationale to support the rejection. In particular, we
agree with the Examiner that in arguing that there is insufficient evidence to
support the Examiner's positon that the inductors Jeong and the inductors in
Maas are "art-recognized alternative/equivalent inductor" (Appeal Br. 5),
Appellants fail to appreciate the Examiner's position as a whole. (Ans. 3--4.)
That is, as discussed above, the Examiner relied on the disclosure in Jeong
that the inductor "provides the further benefit of improving the inductance of
the inductor." (Final Act. 4; Jeong ,r 51.) Appellants do not provide
sufficient explanation as to why the disclosure of an "inductor" in both Maas
(i-f 35) and Jeong (i-f 43) is insufficient to support the Examiner's position and
why Jeong' s disclosure of improved inductance is insufficient to provide a
reason to use Jeong' s inductor over the inductor disclosed in Maas.
Similarly, although Appellants acknowledge that Adam provides
"some benefits" of using the ferrite material yttrium-iron-garnet (YIG),
Appellants do not provide sufficient explanation as to why the Examiner's
rationale in this regard is deficient. (Appeal Br. 6.) Adam provides express
disclosure that the ferrite YIG material provides the benefit of attenuating
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Application 14/737,851
higher power level signals while simultaneously allowing lower power level
signals separated by only a small frequency offset from the higher level
signals to pass with relatively low loss. (Adam col. 1, 11. 12-18.) In view of
this disclosure, Appellants do not provide a sufficient explanation as to why
the Examiner's reasoning constitutes "picking and choosing" and is based on
"conclusory statements." (Appeal Br. 6.)
We are not persuaded by Appellants' contention that the device in
Maas would be rendered unsatisfactory for its intended purpose in view of
the proposed combination, because the Background of the Specification
indicates that YIG strip-line FSL devices disclosed in Adam are not
compatible with the size and packing configurations of the lumped element
design circuits of Maas. (Appeal Br. 7-8.) Rather, we agree with the
Examiner, that Appellants have not addressed the combination made in the
rejection. (Ans. 4--5.) That is, as discussed above, Adam is relied upon for
the use of a ferrite-based material and beneficial properties thereof, and not
the particular YIG strip-line FSL as asserted by the Appellants. (Final Act.
3--4.) Thus, Appellants' arguments with respect to the particular aspects of
the strip-line FSL devices disclosed in Adam and the compatibility thereof
with the lumped element design circuits of Maas, including the thickness of
the YIG films, are not persuasive.
For similar reasons, we are not persuaded by Appellants' argument
that modification of Maas with elements from Jeong would add complexity
without providing any added benefit. In this regard, Appellants have not
addressed the rejection as a whole in contending that the inductors of Jeong
cannot be immersed in a strong magnetic field. (Appeal Br. 9-10.) As
pointed out by the Examiner, the combination replaces the material of Jeong
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with the YIG material of Adam, such that no complexity is added to the
device. (Ans. 6.) As the Examiner explains, the DC magnetic field that is a
possible feature of Adam is not included in the combination, and as such, no
DC magnetic bias is required to be neutralized. (Id. citing Adam, Abstract.)
In this regard, we reiterate that Adam discloses that YIG materials "have the
property of being able to attenuate higher power level signals, while
simultaneously allowing lower power level signals, separated by only a
small frequency offset from the higher level signals, to pass with relatively
low loss." (Adam, col. 1, 11. 11-18.) As discussed above, the rejection does
not rely on Adam for the particular device, but only for the YIG material
layer. Appellants have not provided sufficient argument or evidence to
demonstrate reversible error in the Examiner's findings. Accordingly,
Appellants' arguments are not persuasive.
DECISION
We affirm the Examiner's decision rejecting claims 1-17, 19, and 20.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l ).
AFFIRMED
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