Ex Parte Miyake

Patent Trial and Appeal Board

Jun 9, 2017

13451593 (P.T.A.B. Jun. 9, 2017)

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.
13/451,593 04/20/2012 Hiroyuki MIYAKE 0756-9734 2740
31780 7590 06/13/2017
Robinson Intellectual Property Law Office, P.C.
3975 Fair Ridge Drive
Suite 20 North
Fairfax, VA 22033
EXAMINER
TRA, ANH QUAN
ART UNIT PAPER NUMBER
2842
NOTIFICATION DATE DELIVERY MODE
06/13/2017 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):
ptomail @ riplo .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIROYUKI MIYAKE
Appeal 2015-007942
Application 13/451,593
Technology Center 2800
Before ROBERT E. NAPPI, CARL W. WHITEHEAD JR., and
SHARON FENICK, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Appellant is appealing the Non-final Rejection of claims 1—23 under
35 U.S.C. § 134(a). Appeal Brief 4. We have jurisdiction under 35 U.S.C.
§ 6(b) (2012).
We affirm.
Introduction
The invention is directed to semiconductor devices having chopper
comparators. Specification, paragraph 1.
Illustrative Claim (disputed limitations emphasized)
1. A comparator comprising:
1 An oral hearing was held on June 8, 2017.
Appeal 2015-007942
Application 13/451,593
an inverter;
a capacitor;
a first switch;
a second switch; and
a third switch,
wherein an input terminal and an output terminal of the
inverter are electrically connected to each other through the first
switch,
wherein the first switch and the input terminal of the
inverter are electrically connected to one of a pair of electrodes
of the capacitor,
wherein the second switch and the third switch are
electrically connected to the other of the pair of electrodes of
the capacitor,
wherein the first switch comprises a first transistor
including an oxide semiconductor layer, and
wherein at least one of the second switch, the third
switch, and the inverter comprises a second transistor whose
channel is formed in a silicon layer or a silicon substrate.
Rejections on Appeal
Claims 1, 3, 5—8, 11, 13—16, 19 and 21—23 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Kohdaka (United States Patent
Number 5,153,454; issued October 6, 1992) and Choi (United States Patent
Application Publication Number 2010/0176395 Al; published July 15,
2010). Non-final Rejection 2—3.
Claims 1 and 3—7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kohdaka (United States Patent Number 5,329,172; issued
July 12, 1994) and Choi. Non-final Rejection 2—3.
Claims 8, 11—16 and 19—23 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kohdaka (’172), Choi and Kohdaka (’454). Non-
final Rejection 4—5.
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Appeal 2015-007942
Application 13/451,593
Claims 2, 9, 10, 17 and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kohdaka (’454), Choi and Tsuchiya (United States
Patent Application Publication Number 2009/0142888 Al; published June 4,
2009). Non-final Rejection 5.
ANALYSIS
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (filed November 16, 2015), the Reply Brief
(filed May 25, 2016), the Answer (mailed March 25, 2016) and the Non-
final Rejection (mailed June 12, 2015) for the respective details. We have
considered in this decision only those arguments Appellant actually raised in
the Brief.
Appellant contends the “alleged motivation of ‘saving cost’” is not
sufficient to establish a motivation to combine Kohdaka ’454 or Kohdaka
’172 with Choi because it “would appear to require the selection of some
components with a process suitable for a silicon transistor while also
requiring selection of other components with a process suitable for an oxide
semiconductor transistor to achieve the dual material complementary
transistor arrangement in Choi” and therefore appearing to be more costly.
Appeal Brief 12. We do not find Appellant’s arguments persuasive because
Choi discloses in paragraph 34:
The CMOS thin film transistor arrangement according to
the embodiment of the present invention is manufactured by
combining advantages of the oxide thin film transistor with the
advantages of the polysilicon thin film transistor. By doing so,
performance and yield of the CMOS thin film transistor
arrangement can be improved and manufacturing costs thereof
can be also reduced.
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Appeal 2015-007942
Application 13/451,593
It is noted that the terms silicon transistor and oxide semiconductor
transistor Appellant employs are not mutually exclusive. Both terms are
generic and fail to describe the structural composition of the claimed
transistors in their entirety. A transistor could be both a silicon transistor
and an oxide semiconductor transistor at the same time.
Appellant further contends the rejection:
[Fjails to provide any evidence to support its apparent
speculative and conclusory opinion that the CMOS arrangement
in Choi is universally substitutable with any other transistor for
any other purpose (i.e., would function for all transistors in
Kohdaka ‘454 or Kohdaka ‘172 regardless of location or
function), based solely on an alleged cost savings (a premise
which is factually flawed and unsupported for reasons discussed
above).
Appeal Brief 12—13.
We do not find Appellant’s arguments persuasive. In establishing a
prima facie case of obviousness it is not necessary for the transistors of Choi
to be bodily incorporated within the structures of Kohdaka ’454 or Kohdaka
’172; the test is what the combined teachings of references would have
suggested to an artisan.2 Further, independent claims 1, 8 and 16 only
require the transistors to include an oxide semiconductor layer. Choi
discloses in paragraph 33 and 39 a transistor that has both a silicon layer and
2 “The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly suggested in
any one or all of the references. Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.” See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
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Appeal 2015-007942
Application 13/451,593
an oxide semiconductor layer. The independent claims are silent in regard to
the structural layout of the transistors.
Appellant also contends the rejection “fails to articulate any rationale
to establish that Choi teaches a specific use of a certain transistor type for a
particular function (i.e., switch), or in a specific location within a circuit, that
would lend itself to functioning as a switch to an inverter.” Appeal Brief 15.
The independent claims require a switch comprising of a transistor that has
an oxide semiconductor layer. It has been established throughout the
prosecution that employing transistors as switches is well known in the art.
See Kohdaka ’454, column 5, lines 14—16 for example. Substituting Choi’s
transistor within either of Kohdaka’s inventions would have been well
within the purview of one of ordinary skill in the art because the independent
claims only require the transistor associated with the switch to have or
include an oxide semiconductor layer without any indication of the structural
configuration.3 We sustain the Examiner’s obviousness rejections of
independent claims 1,8, 16, as well as, dependent claims 2—7, 9—15 and 17—
23 not separately argued. See Appeal Brief 17.
DECISION
The Examiner’s obviousness rejections of claims 1—23 are sustained.
3 “As our precedents make clear, however, the analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l v. Teleflex Inc.,
550 U.S. 398,418 (2007).
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Appeal 2015-007942
Application 13/451,593
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). See 37 C.F.R.
§ 1.136(a)(l)(v).
AFFIRMED
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