Ex Parte Goetz

Patent Trial and Appeal Board

Sep 27, 2012

11392459 (P.T.A.B. Sep. 27, 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.
11/392,459 03/29/2006 Hans-Joachim Goetz Goetz 7 (LCNT/127678) 6472
46363 7590 09/27/2012
WALL & TONG, LLP/
ALCATEL-LUCENT USA INC.
25 James Way
Eatontown, NJ 07724
EXAMINER
MISIURA, BRIAN THOMAS
ART UNIT PAPER NUMBER
2111
MAIL DATE DELIVERY MODE
09/27/2012 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 HANS-JOACHIM GOETZ
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Appeal 2010-003675
Application 11/392,459
Technology Center 2100
________________

Before ROBERT E. NAPPI, DAVID M. KOHUT, and LARRY J. HUME,
Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003675
Application 11/392,459

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This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE 1
The Invention
“The invention is related to the field of electrical high-speed
interconnects and, in particular, to passive microwave devices.” Spec. p. 1,
ll. 4-5, “FIELD OF THE INVENTION”.
Various deficiencies of the prior art are addressed by the
present invention of a package containing AC coupling devices
for high-speed differential interconnects. The present invention
includes method and apparatus for a device including two
capacitors within one package thereby the capacitors are
coupled to each other in such a way that the line impedance of
the differential links is matched.
Spec. p. 1, ll. 22-27 “SUMMARY”.
Exemplary Claim
Exemplary independent claim 1 reads as follows (emphasis added to
contested limitations):
1. A passive microwave device adapted for use with a
differential communication link, comprising:
a package having two ceramic capacitors separated by a gap,
wherein the gap has a width such that a differential

1 Throughout this Decision, we refer to the Supplemental Appeal Brief
(App. Br.) filed Jun. 25, 2009; Examiner’s Answer (Ans.) mailed Sep. 9,
2009; the Reply Brief (Reply Br.) filed Nov. 9, 2009; the Final Office
Action (FOA) mailed Dec. 2, 2008; and the originally-filed Specification
(Spec.) filed Mar. 29, 2006.
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Application 11/392,459

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impedance of the capacitors is substantially equal to an
impedance of the components of the differential
communication link and said package being adapted to
conform to conductive paths forming the differential
communication link.
Prior Art
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Patel 6,714,558 B1 Mar. 30, 2004
He 7,123,466 B1 Oct. 17, 2006
Rob Derksen, Reducing EMI/RFI Susceptibility (“EMI”),, Oct. 1,
2003.
“Intel - 10 Gigabit Ethernet Technology Overview” (“Intel”), 2003.
Rejections on Appeal
1. The Examiner has rejected claims 1-3, 6, 7, 9-13, 16, 17, 19,
and 20 under 35 U.S.C. § 103(a) as being unpatentable over Patel in view of
the non-patent literature EMI. (Ans. 3).
2. The Examiner has rejected claims 4, 5, 14, and 15 under 35
U.S.C. § 103(a) as being unpatentable over Patel and EMI in view of the
non-patent literature Intel. (Ans. 8).
3. The Examiner has rejected claims 8 and 18 under 35 U.S.C.
§ 103(a) as being unpatentable over Patel and EMI in view of He (Ans. 9).
Appeal 2010-003675
Application 11/392,459

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GROUPING OF CLAIMS
Based upon Appellant’s arguments, we select representative claim 1
to decide this appeal for claims 1-20 (See App. Br. 14, 16, and 17).
ISSUES AND ANALYSIS
1. 35 U.S.C. § 103(a): Claims 1-3, 6, 7, 9-13, 16, 17, 19, and 20
Appellant’s Contentions
Appellant contends that the combination of Patel and EMI fails to
teach or suggest a package, AC coupling device or AC coupler having two
ceramic capacitors separated by a gap, “wherein the gap has a width such
that a differential impedance of the capacitors is substantially equal to an
impedance of the components of the differential communication link,” as
positively recited in Appellant’s independent claims. (App. Br. 14).
(Emphasis in original)
Appellant further contends that the Examiner particularly erred by
stating that Patel (see Patel at col. 3: 26-67 and FIGS. 2-3) discloses
“wherein the gap has a width such that a differential impedance of the
capacitors is substantially equal to an impedance of the components of the
differential communication link.” (Id.)
Further in this regard, Appellant contends that the recited “gap” in
Appellant’s independent claims is between the capacitors, whereas the gap
in Patel referenced by the Office Action is the gap between the conductive
paths of the differential transmission link. (Id.)
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In addition, Appellant contends that, with reference to Appellant’s
Figs. 2(a) and 2(b) and Specification (Spec. 5-6), “one can see that the gap
between capacitors A-B and C-D is selected to match the characteristic
impedance of the transmission line to which the coupling is connected.
(App. Br. 15).
Appellant also contends that
In contrast, the portion of Patel cited by the Examiner only
explains that the differential impedance of the differential PCB
traces (Zdiff) is related to, among other things, “distance
between the differential pairs” of the differential transmission
link. (See Patel, col. 3 lines 62-67). Patel’s specification
continues to describe a solution comprising a matching circuit
having three resistors selected such that R1+R2+R3=Zdiff.
(See Patel col. 4 lines 21-26). The matching circuit in Patel
does include two capacitors. However, they are only disclosed
as “provid[ing] AC coupling to the receiver.” (See Patel col. 4
lines 58-59). Thus, while Patel may teach some sort of
impedance matching, it is accomplished by selecting and
arranging series resistors in the interface. (See Patel Fig. 2
“Rmatch”; col. 4 lines 40-59).
App. Br. 15.
Appellant contends that “Patel clearly does not teach or suggest that
the capacitors Ccoupling are arranged with a gap distance between them
such that there is impedance matching with the transmission link’s Zdiff.”
(Id.)
Finally, Appellant contends that
Figs. 2 and 3 in Patel are merely schematic diagrams that show
logical relationships in an AC circuit. In other words, the
dimensions depicted are not on any particular scale. Instead, it
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Application 11/392,459

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appears that the layouts of Patel in Figs. 2 and 3 are depicted as
such only so that the elements, e.g., resistors and capacitors and
their labels, all fit within the appropriate boxes. Further, there
is absolutely no teaching in Patel that a gap distance between
capacitors has any significance in any of the matching networks
24, 26, 28 or 30. In fact, Patel never once mentions anything
about a gap distance between capacitors.
Reply Br. 4.
Issue 1
Did the Examiner err in finding that the combination of Patel with
EMI teaches or suggests a passive microwave device adapted for use with a
differential communication link having a package with two ceramic
capacitors separated by a gap, “wherein the gap has a width such that a
differential impedance of the capacitors is substantially equal to an
impedance of the components of the differential communication link,” as
recited in independent claim 1?
Analysis
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We disagree with the Examiner’s
factual findings and claim construction (Ans. 3-8), and agree with
Appellant’s conclusions with respect to claim 1. (App. Br. 14-16; Reply Br.
3-6).
Specifically, we find that the Examiner has not made a prima facie
case for unpatentability as the Examiner has failed to identify where the art
of record teaches or suggests the claim limitation that requires “wherein the
gap has a width such that a differential impedance of the capacitors is
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substantially equal to an impedance of the components of the differential
communication link.” For example, Patel merely teaches that a resistive
network is utilized to provide impedance matching with a differential
communication link. (See Patel Fig. 2 “Rmatch”; col. 4: 40-59).
Contrary to the Examiner’s assertions, we see no teaching or
suggestion in Patel of a gap distance between capacitors being relied upon
for any specific functionality, particularly for impedance matching purposes,
as variously recited in the claims on appeal. Further, we are unable to
readily ascertain any other teaching in the art of record that teaches or
suggests the claim limitation at issue.
Accordingly, we are therefore unable to sustain the Examiner’s
rejection of claims 1-3, 6, 7, 9-13, 16, 17, 19, and 20.
2. 35 U.S.C. § 103(a): Claims 4, 5, 14, and 15
Appellant’s Contentions
Appellant contends, inter alia, that Intel fails to make up for the
deficiencies of Patel and EMI discussed above with respect to independent
claim 1, discussed supra.
We find that the rejection of claims 4, 5, 14, and 15 turns on Issue 1,
above, and we are therefore unable to sustain the Examiner’s rejection of
claims 4, 5, 14, and 15.
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3. 35 U.S.C. § 103(a): Claims 8 and 18
Appellant’s Contentions
Appellant contends, inter alia, that He fails to make up for the
deficiencies of Patel and EMI discussed above with respect to independent
claim 1, discussed supra.
We find that the rejection of claims 8 and 18 turns on Issue 1, above,
and we are therefore unable to sustain the Examiner’s rejection of claims 8
and 18.
CONCLUSIONS
Having found at least one error by the Examiner in analyzing the
combination of Patel and EMI and in construing the claims, we do not
sustain the Examiner’s rejection of claims 1-3, 6, 7, 9-13, 16, 17, 19, and 20.
With respect to claims 4, 5, 14, and 15 which variously depend from
independent claims 1 and 10, the Examiner has not shown that Intel cures
the deficiencies of Patel and EMI. Therefore, we do not sustain the
Examiner’s rejection of claims 4, 5, 14, and 15.
With respect to claims 8 and 18 which depend from independent
claims 1 and 10, respectively, the Examiner has not shown that He cures the
deficiencies of Patel and EMI. Therefore, we do not sustain the Examiner’s
rejection of claims 8 and 18.
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DECISION
1. The decision of the Examiner to reject claims 1-3, 6, 7, 9-13,
16, 17, 19, and 20 under 35 U.S.C. § 103(a) as being unpatentable over Patel
and EMI is reversed.
2. The decision of the Examiner to reject claims 4, 5, 14, and 15
under 35 U.S.C. § 103(a) as being unpatentable over Patel, EMI, and Intel is
reversed.
3. The decision of the Examiner to reject claims 8 and 18 under 35
U.S.C. § 103(a) as being unpatentable over Patel and EMI in view of He is
reversed.
REVERSED
ke