Ex Parte Mercier et al

Patent Trial and Appeal BoardApr 18, 2016

12529740 (P.T.A.B. Apr. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/529,740 0910312009 65913 7590 04/20/2016 Intellectual Property and Licensing NXPB.V. 411 East Plumeria Drive, MS41 SAN JOSE, CA 95134 FIRST NAMED INVENTOR Frederic Mercier 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. 00 7768 USl 6095 EXAMINER STEVENS, GERALD D ART UNIT PAPER NUMBER 2842 NOTIFICATION DATE DELIVERY MODE 04/20/2016 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 FREDERIC MERCIER, LUCA LOCOCO, and VINCENT RAMBEAU Appeal2014-005081 Application 12/529,740 Technology Center 2800 Before ROMULO H. DELMENDO, MARK NAGUMO, and CHRISTOPHER M. KAISER, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL The Appellants 1 seek our review under 35 U.S.C. Â§ 134(a) of a final decision of the Primary Examiner to reject claims 1-19. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. 1 The Appellants state that the Real Party in Interest is "NXP Semiconductors, as indicated at reel/frame nos. 023187 /0564 to NXP, B.V., headquartered in Eindhoven, the Netherlands" (Appeal Brief filed December 17, 2013, hereinafter "Appeal Br.," 2). Appeal2014-005081 Application 12/529,740 BACKGROlH~D The subject matter on appeal relates to a radio frequency filter (Specification, hereinafter "Spec.," 1, 1. 6). Details of the radio frequency filter are recited in representative claim 1, which we reproduce from page 10 of the Appeal Brief (Claims App.) (emphases added), as follows: 1. A radio frequency filter, for at least a frequency band, compnsmg: an input impedance adaption section including a first branch having at least a switchable capacitor and at least a second branch having at least a switchable capacitor, each of the first and second branches electrically coupled in parallel to an intermediate node; and a tank capacitor section consisting of circuitry configured and arranged to provide an overall impedance between the intermediate node and a reference node that consists of reactance, the tank capacitor section including a coil in parallel with a switchable capacitive circuit having a first switchable capacitor and at least a second switchable capacitor, the coil and the switchable capacitive circuit being configured and arranged between the intermediate node and the reference node for providing a current path between the intermediate node and the reference node, wherein at least one of the input impedance adaption section and the tank capacitor section is configured and arranged to provide a plurality of selectable capacitance levels including zero capacitance; and a gain adaption section including a first branch having at least a switchable capacitor and at least a second branch having at least a switchable capacitor, each of the first and second branches thereof electrically coupled in parallel to the intermediate node, and wherein current at the intermediate node is electrically isolated from the reference node by both the input impedance adaption section and the gain adaption section. 2 Appeal2014-005081 Application 12/529,740 THE REJECTIONS The Examiner rejected the claims under 35 U.S.C. Â§ 103(a) as follows: I. Claims 1, 4--6, and 8-19 as unpatentable over Weber et al. (Weber), 2 Miya et al. (Miya), 3 and Luetzelschwab et al. (Luetzelschwab ); 4 and II. Claims 2, 3, and 7 as unpatentable over Weber, Miya, Luetzelschwab, and Hyun et al. (Hyun). 5 (Examiner's Answer entered January 28, 2014, hereinafter "Ans.," 2; Final Office Action entered July 24, 2013, hereinafter "Final Act.," 2---6.) DISCUSSION With respect to representative claim 1, the Examiner found that Weber describes a wideband bandpass filter 8 comprising: an input tapping circuit 12 that corresponds to the Appellants' specified "input impedance adaption section"; a tank circuit 10 that corresponds to the Appellants' specified "tank capacitor section" and includes an inductor 20; and an output tapping circuit 14 that corresponds to the Appellants' specified "gain adaption section," wherein the input tapping circuit 12 is connected serially to the output tapping circuit by a balancing node 16 (i.e., an intermediate node) (Final Act. 2-3) (citing, e.g., Weber, Fig. 3). Comparing Weber and the subject matter of claim 1, the Examiner found (Final Act. 3--4) that Weber 2 US 5,541,558 issued July 30, 1996. 3 US 5,697,087 issued December 9, 1997. 4 US 6,992,543 B2 issued January 31, 2006. 5 US 2007/0096842 Al published May 3, 2007. 3 Appeal2014-005081 Application 12/529,740 fails to disclose a coil, the first and second branches of each input impedance and gain adaption section being coupled in parallel to the intermediate node, and at least one of the input impedance adaption section and the tank capacitor section being configured and arranged to provide a plurality of selectable capacitance levels that includes zero capacitance. Regarding the "coil" limitation, the Examiner found that Miya discloses an exemplary embodiment in which an inductor is provided in the form of a distributed coil (Final Act. 4) (citing Miya, Fig. 12, element LI). The Examiner concluded from the collective teachings of Weber and Miya that a person of ordinary skill in the art would have "made the inductor such as taught by Weber ... as a distributed coil such as taught by Miya" because "it is well within the purview of one having ordinary skill in the art to have used a specific art recognized equivalent distributed coil such as taught by Miya ... in the place of a generic equivalent inductor such as taught by Weber" (Final Act. 4). Regarding the other differences, identified above, the Examiner found that Luetzelschwab "exemplarily discloses forming a variable capacitor (e.g., see 140 & 160) as a plurality of parallel circuits (i.e., a first branch and at least a second branch) composed of series connected capacitors (e.g., 142a, 142b, 142n; 162a, 162b, 162n) and MEMS [ microelectromechanical systems (col. 1, 11. 47--48)] switches (e.g., 144a-144n; 164a-164n), i.e., passive devices" (id.) (citing Luetzelschwab Fig. 1). Based on this additional finding, the Examiner concluded: It would have been further obvious to one having ordinary skill in the art ... to have replaced each of the variable capacitors such as taught by the above combination [of Weber and Miya] with an art recognized equivalent variable capacitor composed of a plurality of parallel circuits such as taught by Luetzelschwab ... because the variable capacitor as disclosed 4 Appeal2014-005081 Application 12/529,740 by Luetzelschwab ... provides the benefit of ensuring the reliable achievement of high efficiency and high output power over a relatively wide frequency range by minimizing MEMS switch failure, e.g., see col. 2, lines 33-44 in Luetzelschwab .... The Appellants contend that the "rejections are improper because a valid rationale has not been presented to combine the asserted references" (Appeal Br. 4). Specifically, the Appellants argue that "the asserted combination is presented to solve a problem (MEMS switch failure) that does not (and could not) exist in the primary reference [Weber], and thus would not be relevant to the primary reference or the alleged rationale to combine the references (to solve a nonexistent problem)" (id.). Additionally, the Appellants contend that while Weber's goal "is to provide a wideband bandpass filter that includes a tank circuit having a capacitor to determine a center frequency by utilizing variable capacitors 'to provide a continuously variable frequency response"' (Appeal Br. 6), the Examiner failed to explain how the proposed replacement of Weber's variable capacitors with Luetzelschwab's three switchable capacitor branches would be implemented in a manner consistent with Weber's disclosed requirement (id.). See also Reply Brief filed March 28, 2014, at 5. We agree with the Appellants that the Examiner failed to articulate a sufficient reason with some rational underpinning to support a conclusion that a person of ordinary skill in the art would have combined Weber and Luetzelschwab in the manner claimed. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006)). Weber's Figure 3 is reproduced as follows: 5 Appeal2014-005081 Application 12/529,740 12 l ___ l __ l In-\ I I I ~-+~--- /-35 i 26 ! i 24, I -l- I i c: I I --- I I L_. ___ _J 101 16 I --- i_ /---- - --1 I I I If.Â·---.... ( I /18 I I / I â€¢ 20 ../ I - --- - I I L. - -- --- ---- - - J Figure 3 Weber's Figure 3 above depicts a wideband bandpass filter 8 including, inter alia: an input tapping circuit 12 provided with first and second variable impedance elements 22, 24; a tank circuit 10 provided with a variable capacitor 18 and inductor 20; and an output tapping circuit 14 provided with first and second output variable impedance elements 28, 30 (col. 2, 11. 43- 62). Weber discloses that variable capacitors (i.e., input and output variable impedances) are used to provide a continuously variable frequency response (col., 1, 1. 66-col. 2, 1. 10), which results in a variable bandwidth filter that does not introduce distortion (col. 1, 11. 61-63). By contrast, Luetzelschwab describes a tuned radio frequency power amplifier, in which a circuit for matching the impedance of an output load to an active device includes a transformer a plurality of taps (col. 1, 11. 17-20; col. 2, 11. 47-56). Specifically, Luetzelschwab's Figure 1 is reproduced as follows: 6 Appeal2014-005081 Application 12/529,740 102 120s ,..-100 I 130 ,) ------- -- --~-- 128 ) .f7G. 1 Luetzelschwab' s Figure 1 above depicts a MEMS tuned power amplifier 100 including matching circuit 102 for matching the impedance of an output load 172 to an active device 104 (i.e., a bipolar junction transistor), wherein the matching circuit 102 includes, inter alia, a transformer 106 and a MEMS controllable reactive network 130 of a first network of shunt capacitors 140 in which MEMS RF switches 144a-144n are coupled to a corresponding plurality of capacitors 142a-142n, a network series of inductors 150, and a second network of shunt capacitors 160 in which MEMS RF switches 164a- 164n are coupled to a corresponding plurality of capacitors 162a-162n (col. 5, 1. 21---col. 6, 1. 29). The Examiner has not established-in the first instance-that the array of MEMS RF switches and fixed capacitors as shown in Luetzelschwab would be interchangeable with Weber's variable capacitors 7 Appeal2014-005081 Application 12/529,740 for the purpose of providing "continuously variable frequency response," which is required for Weber's bandpass filter (Weber, col. 1, 1. 66-col. 2, 1. 1 ). Indeed, the provision of Luetzelschwab 's MEMS RF switches and fixed capacitors appears to be inconsistent with Weber's design requirements, and the Examiner has not established sufficient interrelatedness between Weber and Luetzelschwab to support their combination in the proposed manner. KSR, 550 U.S. at 417-18 ("[T]he claimed subject matter may involve more than the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for improvement. Often, it will be necessary ... to look to interrelated teachings of multiple patents .... "). The Examiner's position that Luetzelschwab' s design in Weber would provide "the benefit of ensuring the reliable achievement of high efficiency and high output power over a relatively wide frequency range by minimizing MEMS switch failure" (Final Act. 4--5) (citing Luetzelschwab col. 2, 11. 33- 44) is not sound. As argued by the Appellants (Appeal Br. 4), Weber does not describe the use MEMS switches and, therefore, Luetzelschwab' s goal of minimizing MEMS switch failure is inapposite in Weber. Because the Examiner failed to articulate a sufficient reason with some rational underpinning to support the conclusion that a person of ordinary skill in the art would have combined Weber and Luetzelschwab in the manner as required by claim 1, we cannot affirm the rejection of claim 1 and claims dependent thereon. Claim 16, the only other independent claim on appeal, recites the same or similar disputed limitations as claim 1. Therefore, our reasons in support of our decision apply equally for all claims on appeal. 8 Appeal2014-005081 Application 12/529,740 The Examiner's final decision to reject claims 1-19 is reversed. REVERSED 9