Ex Parte Geiler et alDownload PDFPatent Trial and Appeal BoardFeb 21, 201914737851 (P.T.A.B. Feb. 21, 2019) Copy Citation 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. 2 Appeal2018---006013 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. 3 Appeal2018---006013 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 4 Appeal2018---006013 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 5 Appeal2018---006013 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 6 Appeal2018---006013 Application 14/737,851 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 7 Copy with citationCopy as parenthetical citation