Ex Parte Pesetski et al

Patent Trial and Appeal Board

Jan 10, 2017

12754194 (P.T.A.B. Jan. 10, 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.
12/754,194 04/05/2010 Aaron A. Pesetski 6245
26294 7590 01/12/2017
TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P.
1300 EAST NINTH STREET, SUITE 1700
CLEVELAND, OH 44114
EXAMINER
MAI, ANH D
ART UNIT PAPER NUMBER
2829
NOTIFICATION DATE DELIVERY MODE
01/12/2017 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):
rkline @ tarolli. com
docketing@tarolli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AARON A. PESETSKI, JAMES E. BAUMGARDNER, and
RUPERT M. LEWIS
Appeal 2015-001460
Application 12/754,194
Technology Center 2800
Before ROMULO H. DELMENDO, MONTE T. SQUIRE, and
LILAN REN, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal the Examiner’s final rejection of claims 1—20.
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 In this decision, we refer to the Final Office Action appealed from, mailed
February 24, 2014 (“Final Act.”); the Appeal Brief dated June 23, 2014
(“App. Br.”); the Examiner’s Answer to the Appeal Brief dated October 2,
2014 (“Ans.”); and the Appellants’ Reply Brief dated November 4, 2014
(“Reply Br.”).
2 Appellants identify the Northrop Grumman Corporation as the Real Party
in Interest. App. Br. 3.
Appeal 2015-001460
Application 12/754,194
The Claimed Invention
Appellants’ disclosure relates to superconductor circuits, and more
particularly to a phase quantum bit. Spec. 11; Abstract. Claims 1 and 10
are illustrative of the claims on appeal and are reproduced below from the
Claims Appendix to the Appeal Brief (App. Br. 30, 31):
1. A phase quantum bit comprising:
a Josephson junction; and
a distributed element coupled to the Josephson junction,
the distributed element providing a capacitive component and
an inductive component of the phase quantum bit.
10. A quantum circuit comprising:
a phase quantum bit comprising:
a Josephson junction;
a transmission line coupled to the Josephson junction, the
transmission line providing a capacitive component and an
inductive component of the phase quantum bit; and
a shunt impedance coupled to a second end of the
transmission line with a first end of the transmission line being
coupled to the Josephson junction; and
a control circuit coupled to the transmission line for
biasing the phase quantum bit; and
a readout circuit coupled to the transmission line for
reading the phase quantum bit.
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Amin et al., US 2002/0188578 A1 Dec. 12, 2002
(hereinafter “Amin”)
2
Appeal 2015-001460
Application 12/754,194
Blais et al., US 2004/0173793 A1 Sept. 9, 2004
(hereinafter “Blais”)
Thometal, US 2006/0147154 Al July 6, 2006
(hereinafter “Thom”)
Sillanpaa et al., Coherent quantum state storage and transfer between
two phase qubits via resonant cavity, Nature 449, 43 8 442 (27
September 2007) (hereinafter “Sillanpaa”).
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 1—3 and 16 are rejected under pre-AIA
35 U.S.C. § 102(a) as being anticipated by Sillanpaa. Ans. 3; Final Act. 3.
2. Claims 4—8, 17, and 18 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Sillanpaa as applied to claims
1 and 16 above, and further in view of Blais. Ans. 5; Final Act. 5.
3. Claim 9 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Sillanpaa and Blais as applied to claim 8 above, and
further in view of Amin. Ans. 7; Final Act. 7.
4. Claims 10-14 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Sillanpaa in view of Blais. Ans. 8; Final Act. 8.
5. Claim 15 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Sillanpaa and Blais as applied to claim 10 above, and
further in view of Amin. Ans. 10; Final Act. 10.
6. Claim 19 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Sillanpaa as applied to claim 16 above, and further in
view of Thom. Ans. 11; Final Act. 10.
3
Appeal 2015-001460
Application 12/754,194
7. Claim 20 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Sillanpaa as applied to claim 16 above, and further in
view of Amin. Ans. 12; Final Act. 11.
OPINION
Rejection 1
Claims 1—3. Appellants argue claims 1—3 as a group. We select claim
1 as representative and claims 2 and 3 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
The Examiner finds that Sillanpaa discloses all of the limitations of
claim 1 and concludes that the reference anticipates the claim. Ans. 3^4
(citing Sillanpaa, Figs, lb and lc). In particular, the Examiner finds that
Sillanpaa teaches the (1) claimed phase quantum bit (“qubit” in Figure lb),
including: (2) a Josephson junction (depicted by the symbol X in Figure
lc); and (3) a distributed element (“coplanar waveguide” in Figure lb)
coupled to the Josephson junction, (4) the distributed element providing a
capacitive component (“CjB” in Figure lc) and an inductive component
(“Lb” in Figure lc) of the phase quantum bit. Id.
Appellants argue that the Examiner’s rejection should be reversed
because “Sillanpaa does not disclose a phase quantum bit that comprises a
Josephson junction and a distributed element coupled to the Josephson
junction, as recited in claim 1.” App. Br. 7. In particular, relying on the
declaration of co-applicant Aaron A. Pesetski and the declaration of Jae I.
4
Appeal 2015-001460
Application 12/754,194
Park,3 Appellants argue that Sillanpaa does not disclose the distributed
element recited in claim 1 because “the coplanar waveguide is coupled to
two different Josephson phase bits” and is “not an element of either of the
qubits.” Id. at 9.
Appellants further argue that, in contrast to the claimed distributed
element, Sillanpaa discloses a “lumped element” and Sillanpaa’s capacitive
component CjB “would be considered to be a lumped element capacitive
component of the Josephson junction . . . and not a capacitive component of
a distributed element.” App. Br. 10, 11. Appellants also argue that “a
person of ordinary skill in the art would not consider a conductive trace, as
described in Sillanpaa to be equivalent to a distributed element” and “the
conductive trace coupling the transmission line and the qubit in Sillanpaa
would be too small to be considered a distributed element.” Id. at 10.
We are not persuaded by Appellants’ arguments. To serve as an
anticipatory reference, “the reference must disclose each and every element
of the claimed invention.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir.
2009).
Based on the record before us, we find that the Examiner’s
determination that Sillanpaa discloses each and every element of claim 1,
including the claimed distributed element, and that the reference anticipates
claim 1 is supported by a preponderance of the evidence. Sillanpaa, Figs,
lb, lc.
3 Appellants provide the Declaration of Aaron A. Pesetski (“Pesetski
Declaration”) and the Declaration of Jae I. Park (“Park Declaration”) under
37 C.F.R. § 1.132 as Exhibits A and B, respectively, to the Appeal Brief.
5
Appeal 2015-001460
Application 12/754,194
As the Examiner finds (Ans. 13), Sillanpaa discloses a phase quantum
bit (“qubit A” and “qubit B” in Figure lc; “qubit” in Figure lb) comprising a
Josephson junction (shown as symbol X in Figure lc) and a distributed
element (shown as a “coplanar waveguide” in Figure lb and as a circuit loop
in Figure lc) coupled to the Josephson junction, as claimed. Sillanpaa, Figs,
lb and lc. Sillanpaa also discloses the distributed element providing a
capacitive component (CjA and CjB) and an inductive component (FA and FB)
of the phase quantum bit. Id. Appellants’ arguments expose no reversible
error in the Examiner’s analysis and factual findings in this regard.
We do not find Appellants’ arguments that “the coplanar waveguide is
coupled to two different Josephson phase bits” and is “not an element of
either of the qubits” (App. Br. 9) persuasive for the well-stated reasons
provided by the Examiner at pages 13 through 15 of the Answer. In
particular, we concur with the Examiner’s findings (Ans. 13) that Sillanpaa
discloses a distributed element (i.e., coplanar waveguide) coupled to the
Josephson junction and that the distributive element—and not the Josephson
junction—provides the capacitive and conductive components as claimed.
Sillanpaa, Figs, lb and lc.
Moreover, as the Examiner correctly points out (Ans. 13, 14),
although Figure lc of Sillanpaa depicts qubit A and qubit B linked to a
resonant cavity, claim 1 recites “comprising” transitional language and does
not exclude the resonant cavity from the scope of the claimed invention, as
Appellants’ argument suggests.
Appellants’ arguments that (1) Sillanpaa discloses a “lumped
element”; (2) Sillanpaa’s capacitive component “would be considered to be
a lumped element”; and (3) “a person of ordinary skill in the art would not
6
Appeal 2015-001460
Application 12/754,194
consider a conductive trace, as described in Sillanpaa to be equivalent to a
distributed element” (App. Br. 10, 11) are not well-taken because Appellants
do not direct us to persuasive evidence in the record to support them or that
otherwise reveals reversible error in the Examiner’s findings.
The two declarations provided by Appellants are not persuasive of
reversible error in the Examiner’s findings. We do not find the Park
Declaration persuasive because it is conclusory. See, e.g., Park Deck 1 6.
Moreover, as the Examiner notes (Ans. 2), paragraph 5 of the Park
Declaration actually states that “[t]he system described in Sillanpaa consists
of two (2) phase qubits attached to opposite ends of a transmission line
cavity,” which is consistent with and supports the Examiner’s findings in
this regard. See Ans. 3-A.
The Pesetski Declaration is equally unpersuasive. Cf. In re Bulina,
362 F.2d 555, 559 (CCPA 1966) (“[A]n affidavit by an applicant or co­
applicant as to the advantages of his invention is less persuasive than one
made by a disinterested person.”). As the Examiner correctly points out
(Ans. 3, 15), the Pesetski Declaration does not adequately rebut or show
reversible error in the Examiner’s specific findings regarding Sillanpaa’s
disclosures. In particular, the declaration does not provide a persuasive
explanation explaining why the coplanar waveguide in Figure lb of
Sillanpaa does not disclose the distributed element of claim 1, as found by
the Examiner.
Rather, the Pesetski Declaration focuses primarily on alleged
differences between distributed element and lumped element circuit theory
and the size of Sillanpaa’s phase quantum bit when no size limitation is
recited in claim 1. The declaration is also largely argumentative rather than
7
Appeal 2015-001460
Application 12/754,194
factual in nature and repeats Appellants’ contention that the element
Sillanpaa discloses is too small to be considered a distributed element.
Pesetski Decl. 19 (arguing that “the conductive trace coupling the
transmission line and the qubit in Sillanpaa would be too small to be
considered a distributed element”); 110 (“A circuit can typically only be
considered lumped if the circuit is smaller than about 1/10 of a
wavelength.”); 112 (“A distributed element is a circuit that... is physically
comparable to or larger than the wavelength of the electromagnetic waves
involved in the circuit.”); 112c (“If the transmission line is sufficiently short
that it can be considered a lumped element, it can be characterized by a
single capacitance and a single inductance and analyzed using ordinary
circuit theory.”).
The portions of the declaration Appellants cite as support for the
contentions that Sillanpaa’s element can be “considered lumped” and is
“sufficiently short that it can be considered a lumped element,” and is “too
small to be considered a distributed element” (Pesetski Decl. Tflf 9, 10, 12c)
(emphasis added) are not definitive and, without more, insufficient to rebut
the Examiner’s finding that Sillanpaa discloses the claimed distributed
element.
Moreover, as the Examiner points out (Ans. 15) and as we pointed out
above, claim 1 does not recite any limitations regarding the size of the
claimed distributed element and thus, does not exclude a “small” distributed
element or a distributed element that can be “considered” a lumped element
from the scope of the claim. Cf. In re Van Geuns, 988 F.2d 1181, 1184
(Fed. Cir. 1993) (“[L]imitations are not to be read into the claims from the
specification.”).
8
Appeal 2015-001460
Application 12/754,194
Claim 16. Appellants argue that the Examiner’s rejection of claim 16
should be reversed because “Sillanpaa does not disclose coupling a first end
of a distributed element to a Josephson junction, as recited in claim 16.”
App. Br. 16. Appellants, however, rely principally on the same arguments
presented above for the patentability of claim 1. In particular, Appellants
argue that “the coplanar waveguide in Sillanpaa connects two different
qubits” and is “coupled to two different Josephson phase bits,” and that as a
result, “No structure or function in Sillanpaa corresponds to the coupling
recited in claim 16.” Id. at 16—17.
We do not find these arguments persuasive for essentially the same
reasons discussed above in affirming the Examiner’s rejection of claim 1.
Moreover, we find that the Examiner’s analysis and determination that
Sillanpaa anticipates claim 16 (Ans. 4, 5, 16) are supported by a
preponderance of the evidence. Sillanpaa, Figs, lb and lc. As the Examiner
finds (Ans. 5), Sillanpaa’s Figures lb and lc disclose coupling a first end of
the distributed element (shown as a coplanar waveguide in Figure lb and as
a circuit loop in Figure lc) to the Josephson junction (shown as symbol X in
Figure lc), as recited in claim 16.
Appellants’ assertion that “No structure or function in Sillanpaa
corresponds to the coupling recited in claim 16” (App. Br. 17) is conclusory
and, without more, insufficient to establish reversible error in the
Examiner’s analysis and findings in this regard. In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984).
Accordingly, we affirm the Examiner’s rejection of claims 1—3 and 16
under pre-AIA 35 U.S.C. § 102(a) as being unpatentable over Sillanpaa.
9
Appeal 2015-001460
Application 12/754,194
Rejection 2
In response to the Examiner’s rejection of claims 4—8, 17, and 18,
Appellants present substantive arguments for the separate patentability of
only claims 4 and 18. We, therefore, limit our discussion to claims 4 and 18,
and the remaining claims stand or fall with these claims. 37 C.F.R.
§41.37(c)(l)(iv).
Claim 4. Claim 4 depends from claim 1 and adds the limitation
“further comprising a shunting impedance coupled to a second end of the
distributed element with a first end of the distributed element being coupled
to the Josephson junction.” App. Br. 30 (Claims App’x).
The Examiner finds that the combination of Sillanpaa and Blais
suggests all of the limitations of claim 4 and concludes that the combination
would have rendered claim 4 obvious. Ans. 5—6 (citing Sillanpaa, Figs, lb
and lc; Blais, 1 68). In particular, the Examiner concludes that it would
have been obvious to one having ordinary skill in the art at the time of
invention to form the phase quantum bit of Sillanpaa to further include the
shunting impedance coupled to the second end of the distributed element as
taught by Blais to provide efficiency in regulating energy flow. Id. at 5—6
(citing Blais, 1 68).
Appellants argue that the Examiner’s rejection of claim 4 should be
reversed “for at least the same reasons as claim 1” (App. Br. 18) and because
“each element in FIG. 1 of Blais[] would be considered a Tumped element’”
(Reply Br. 7). We do not find these arguments persuasive for the same
reasons discussed above in affirming the Examiner’s rejection of claim 1.
Appellants further argue that “Sillanpaa taken in view of Blais does
not teach or suggest to one of ordinary skill in the art how to implement the
10
Appeal 2015-001460
Application 12/754,194
shunting impedance, as recited in claim 4.” App. Br. 18. In particular,
Appellants argue that because “loop 150 in Blais is an element of the control
circuit 120 .. . one of ordinary skill in the art would not consider the control
circuit 120 to be coupled,” in the manner required by claim 4, and “all the
elements illustrated in [Blais’] FIG. 1 would be considered ‘lumped
elements.’” Id. at 18—19.
We are not persuaded by these arguments. On the record before us,
we find that a preponderance of the evidence and sound technical reasoning
support the Examiner’s conclusion (Ans. 5,6, 16, 17) that the combination
of Sillanpaa and Blais would have suggested all of the limitations of claim 4,
including a shunting impedance coupled to a second end of the distributed
element with a first end of the distributed element being coupled to the
Josephson junction, as recited in the claim. Sillanpaa, Figs, lb and lc; Blais
168, Fig. 1.
As the Examiner finds (Ans. 16) and previously discussed above with
respect to claim 1, Sillanpaa discloses a phase quantum bit comprising a
Josephson junction and a distributed element coupled to the Josephson
junction (Sillanpaa, Figs, lb and lc), which corresponds to the “first end of
the distributed element being coupled to the Josephson junction” limitation
of claim 4. As the Examiner further finds (Ans. 17), Blais discloses a
“resonant control system” 120 (i.e., shunting impedance) that is coupled to
the Josephson junction 111-2 (Blais, H 49, 68, Fig. 1), which corresponds to
the “shunting impedance coupled to a second end” limitation of claim 4.
Appellants’ argument reveals no reversible error in the Examiner’s factual
findings regarding the teachings of the cited references.
11
Appeal 2015-001460
Application 12/754,194
Moreover, we are persuaded that the Examiner provides a reasonable
basis and identifies sufficient evidence in the record to evince why one of
ordinary skill would have combined the teachings of the cited references to
arrive at Appellants’ claimed invention. Ans. 5—6 (explaining that one of
ordinary skill would have had reason to modify Sillanpaa’s phase quantum
bit to include the shunting impedance coupled to the second end of the
distributed element as taught by Blais in order to provide efficiency in
regulating energy flow); see also Blais, 1 68, Fig. 1.
Appellants fail to direct us to adequate evidence or provide a
persuasive technical explanation to show why the Examiner’s articulated
reasoning for combining the teachings of the prior art to arrive at the claimed
invention lacks a rational underpinning or is otherwise based on some other
reversible error. See KSRInt’l Co. v. Teleflex, Inc., 550 U.S. 398, 420
(2007) (explaining that any need or problem known in the art can provide a
reason for combining the elements in the manner claimed).
Appellants’ contention that “one of ordinary skill in the art would not
consider the control circuit 120 to be coupled” (App. Br. 19) is conclusory
and, without more, insufficient to rebut the Examiner’s analysis and findings
in this regard. De Blauwe, 736 F.2d at 705.
Claim 18. Claim 18 depends from claim 16 and adds the following
limitations:
further comprising forming a shunting impedance coupled to a
second end of the distributed element, wherein the shunting
impedance is at least one of an open circuit, a capacitor, an
inductor, a transmission line and a second Josephson junction.
App. Br. 33 (Claims App’x).
12
Appeal 2015-001460
Application 12/754,194
The Examiner finds that the combination of Sillanpaa and Blais
suggests all of the limitations of claim 18 and concludes that the
combination would have rendered claim 18 obvious. Ans. 5, 7, 18 (citing
Sillanpaa, Figs, lb and lc; Blais, 1 68, Fig. 1). In particular, as previously
discussed above in part with respect to claim 4, the Examiner finds that Blais
discloses shunting impedance 120 being coupled to a second end of the
distributed element and that the shunting impedance 120 is at least one of a
capacitor 121-1 or an inductor 121-2 (Blais, Tflf 49, 52, 68, Fig. 1), as recited
in claim 18.
Appellants argue that the Examiner’s rejection of claim 18 should be
reversed for essentially the same reasons previously presented above for the
patentability of claim 4. App. Br. 20—21. We do not find these arguments
persuasive for the same reasons discussed above for claim 4.
Moreover, on the record before us, we find that a preponderance of
the evidence and sound technical reasoning support the Examiner’s
conclusion (Ans. 7, 18) that the combination of Sillanpaa and Blais suggests
all of the limitations of claim 18. Sillanpaa, Figs, lb and lc; Blais, 49,
52, 68, Fig. 1.
Appellants’ arguments regarding claim 18 are largely conclusory and,
without more, insufficient to rebut or otherwise establish reversible error in
the Examiner’s analysis and findings in this regard. De Blauwe, 736 F.2d at
705.
Accordingly, we affirm the Examiner’s rejection of claims 4—8, 17,
and 18 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over the
combination of Sillanpaa and Blais.
13
Appeal 2015-001460
Application 12/754,194
Rejection 3
Claim 9 depends indirectly from claim 1 and adds the limitation
“wherein the control circuit and/or the readout circuit are coupled to the
distributed element at a location where the magnitude of the radio frequency
(RF) current is approximately zero.” App. Br. 31 (Claims App’x).
The Examiner finds that the combination of Sillanpaa, Blais, and
Amin suggests all of the limitations of claim 9 and concludes that the
combination would have rendered claim 9 obvious. Ans. 7, 8. The
Examiner finds that the combination of Sillanpaa and Blais suggests all of
the limitations of claim 9, but that it does not disclose or suggest “wherein . .
. the magnitude of the radio frequency (RF) current is approximately zero,”
as recited in the claim. Id. at 8. The Examiner, however, relies on Amin for
suggesting this missing limitation. Id. (citing Amin, | 61)
In particular, the Examiner finds that Amin teaches that “‘in order to
read out a classical state of qubit, a current at or less than the critical current
of the system is applied, ’ where the critical current Ic, according to Amin is
not associated with a zero voltage across the qubit but near zero voltage.”
Ans. 19 (citing Amin, | 50).
Appellants argue that the Examiner’s rejection of claim 9 should be
reversed because “Sillanpaa taken in view of Blais and in further view of
Amin does not teach or suggest to one of ordinary skill in the art how to
implement a control circuit and/or a readout circuit that are coupled to a
distributed element at a location where a magnitude of the radio frequency
(RF) current is approximately zero, as recited in claim 9.” App. Br. 21. In
particular, Appellants argue that the “Examiner has not explained how
application of ‘a current at or less than the critical current’ (as described in
14
Appeal 2015-001460
Application 12/754,194
paragraph [0050] of Amin) would teach or suggest to one of ordinary skill in
the art how to implement a control circuit and/or a readout circuit,” as
claimed. Id. at 22.
We concur with Appellants’ argument. Based on the record before us,
we are not persuaded that the Examiner has provided an adequate technical
explanation or identified sufficient evidence to support the finding that Amin
suggests a control circuit and/or a readout circuit that are/is coupled to a
distributed element at a location where a magnitude of the radio frequency
(RF) current is approximately zero. See KSR Int 7 Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007) (requiring “reasoning with some rational underpinning
to support the legal conclusion of obviousness”) (quoting In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006)); In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992) (holding that the examiner bears the initial burden of establishing
a prima facie case of obviousness).
As Appellants correctly point out (App. Br. 22), the Examiner does
not adequately explain how Amin’s paragraph 50 teaches or suggests claim
9’s “wherein . . . the magnitude of the radio frequency (RF) current is
approximately zero” limitation. The Examiner also does not direct us to
other evidence—whether in Amin or elsewhere in the record—that supports
this finding.
The Examiner’s assertion that “Amin suggests that the control circuit
and/or read out circuit [that] are coupled to the distributed element be
approximate[ly] zero in order to read out” (Ans. 19) is conclusory and,
without more, insufficient to sustain the Examiner’s finding and obviousness
conclusion in this regard. Kahn, 441 F.3d at 988 (holding “rejections on
15
Appeal 2015-001460
Application 12/754,194
obviousness grounds cannot be sustained by mere conclusory statements”);
Oetiker, 977 F.2d at 1445.
Accordingly, we reverse the Examiner’s rejection of claim 9 under
pre- AIA 35 U.S.C. § 103(a) as being unpatentable over the combination of
Sillanpaa, Blais, and Amin.
Rejection 4
In response to the Examiner’s rejection of claims 10—14, Appellants
present substantive arguments for the separate patentability of only claim 10.
We, therefore, limit our discussion to claim 10, and claims 11—14 stand or
fall with claim 10. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that the combination of Sillanpaa and Blais
suggests all of the limitations of claim 10 and concludes that the
combination would have rendered claim 10 obvious. Ans. 8—9.
Appellants argue that the Examiner’s rejection should be reversed
because “Sillanpaa taken in view of Blais does not teach or suggest to one of
ordinary skill in the art how to implement the phase quantum bit, as recited
in claim 10.” App. Br. 23. In particular, Appellants argue that: (1)
“Sillanpaa taken in view of Blais fails to teach or suggest that a transmission
line is an element of a phase quantum bit”; (2) one of ordinary skill in the art
would not consider Sillanpaa’s conductive trace coupling the coplanar
waveguide and the qubit as “being equivalent to a ‘transmission line’”; (3)
the Examiner has not given “adequate patentable weight to the term
‘transmission line’”; and (4) “the Examiner has not cited any structure or
function that corresponds to a shunting impedance coupled to a second end
of a transmission line.” Id. at 23—25.
16
Appeal 2015-001460
Application 12/754,194
We are not persuaded by Appellants’ arguments for the well-stated
reasons provided by the Examiner at pages 8, 9, and 19—21 of the Answer.
In particular, we find that a preponderance of the evidence and sound
technical reasoning support the Examiner findings (Ans. 19, 20) that
Sillanpaa discloses a phase quantum bit comprising a transmission line
(distributed element) coupled to a Josephson junction and that the dc SQUID
read out circuit is inductively coupled to qubit B via inductive component
Lb. Sillanpaa, Figures lb and lc.
As previously discussed above in affirming the Examiner’s rejection
of claim 4, we also concur with the Examiner’s finding (Ans. 21) that Blais
teaches a control circuit 120 coupled to the transmission line and functions
as biasing the qubit, as claimed. Blais, Tflf 49, 52, 68, Fig. 1.
Appellants’ arguments that one of ordinary skill in the art would not
consider Sillanpaa’s conductive trace coupling the coplanar waveguide and
the qubit as “being equivalent to a ‘transmission line’” and the Examiner has
not given “adequate patentable weight to the term ‘transmission line’” are
not persuasive because they are conclusory and Appellants have not
provided an adequate technical explanation to support them. De Blauwe,
736 F.2d at 705.
Accordingly, we affirm the Examiner’s rejection of claims 10—14
under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over the
combination of Sillanpaa and Blais.
Rejection 5
Claim 15 depends from claim 10 and includes the same “wherein the
control circuit and the readout circuit are coupled to the transmission line at
17
Appeal 2015-001460
Application 12/754,194
a location where the magnitude of the radio frequency (RF) current is
approximately zero” as recited in claim 9. App. Br. 32 (Claims App’x).
Because the Examiner’s rejection of claim 15 is based in part on the
Amin reference and rests on the same deficiency in the reference’s
disclosure discussed above regarding the Examiner’s Rejection 3 and claim
9, we reverse the Examiner’s rejection of claim 15 for the same reasons as
claim 9.
Rejection 6
Claim 19 depends from claim 16 and adds the limitation “further
comprising forming an intermediate layer between the Josephson junction
and the distributed element and forming a contact through the intermediate
layer to couple the Josephson junction to the distributed element.” App. Br.
33 (Claims App’x).
The Examiner finds that the combination of Sillanpaa and Thom
suggests all of the limitations of claim 19 and concludes that the
combination would have rendered claim 19 obvious. Ans. 11—12.
Appellants argue that the Examiner’s rejection of claim 19 should be
reversed because:
Sillanpaa taken in view of Thom does not teach or suggest to
one of ordinary skill in the art how to implement forming an
intermediate layer between a Josephson junction and a
distributed element and forming a contact through the
intermediate layer to couple the Josephson junction to the
distributed element.
App. Br. 26. In particular, Appellants argue that “there is nothing in
Sillanpaa that teaches or suggests that the feature which the Examiner
alleges corresponds to the transmission line in claim 19 . . . would be
18
Appeal 2015-001460
Application 12/754,194
separated from the qubit by an intermediate layer,” as required by the claim.
Id. at 27.
We do not find Appellants’ argument persuasive because Appellants
attack the references individually rather than the collective teachings of the
prior art as a whole. One cannot show non-obviousness by attacking
references individually where the rejections are based on combinations of
references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“[T]he test
[for obviousness] is what the combined teachings of the references would
have suggested to those of ordinary skill in the art.”). Appellants’ argument
focuses primarily on what Appellants contend Sillanpaa and Thom teach
individually, and not the teachings of the prior art combination as a whole
and what the combined teachings of the references would have suggested to
one of ordinary skill in the art.
Moreover, as the Examiner finds (Ans. 22, 23) and contrary to what
Appellants argue, Thom explicitly teaches a method of forming a phase
quantum bit including forming a Josephson junction 1106 and a distributed
element 1110 (wire or metallic layer) with an intermediate layer and forming
a contact through the intermediate layer to couple the Josephson junction to
the distributed element, which discloses claim 19’s intermediate layer
limitation. Thom, Abstract, Fig. 11. We discern no reversible error in the
Examiner’s analysis and factual findings in this regard.
Accordingly, we affirm the Examiner’s rejection of claim 19 under
pre-AIA 35 U.S.C. § 103(a) as being unpatentable over the combination of
Sillanpaa and Thom.
19
Appeal 2015-001460
Application 12/754,194
Rejection 7
Claim 20 depends from claim 16 and recites the same “where the
magnitude of the radio frequency (RF) current of the phase quantum bit is
approximately zero” limitation as recited in claims 9 and 15.
App. Br. 33 (Claims App’x).
Because the Examiner’s rejection of claim 20 is based in part on the
Amin reference and rests on the same deficiency in the reference’s
disclosure discussed above regarding claims 9 and 15, we reverse the
Examiner’s rejection of claim 15 for the same reasons as claims 9 and 15.
DECISION/ORDER
The Examiner’s rejections of claims 1—8, 10—14, 16—19 are affirmed.
The Examiner’s rejections of claims 9, 15, and 20 are reversed.
It is ordered that the Examiner’s decision is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
20