Ex Parte Westwick et al

Patent Trial and Appeal Board

Dec 22, 2016

12981741 (P.T.A.B. Dec. 22, 2016)

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.
12/981,741 12/30/2010 Alan L. Westwick SIL.0147US (D-10-600-31) 7067
21906 7590 12/27/2016
TROP, PRUNER & HU, P.C.
1616 S. VOSS ROAD, SUITE 750
HOUSTON, TX 77057-2631
EXAMINER
DANG, KHANH
ART UNIT PAPER NUMBER
2185
NOTIFICATION DATE DELIVERY MODE
12/27/2016 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):
tphpto@tphm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALAN L. WESTWICK and THOMAS S. DAVID
Appeal 2015-007997
Application 12/981,741
Technology Center 2100
Before JASON V. MORGAN, NABEEL U. KHAN, and
KAMRAN JIVANI, Administrative Patent Judges.
JIVANI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review, under 35 U.S.C. § 134(a), of the
Examiner’s final decisions rejecting claims 1—20. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is Silicon Laboratories,
Inc. App. Br. 3.
Appeal 2015-007997
Application 12/981,741
BACKGROUND
The present application generally relates to an analog interface for a
processor-based device. Spec. 11. More specifically, embodiments
described within the application relate to a driver selectively coupling a
voltage supply to a circuit. See Spec. 13. Claim 1 is illustrative of disputed
subject matter and reproduced below.
1. An apparatus comprising:
an integrated circuit comprising a processor and a driver, the
integrated circuit being fabricated by a process establishing a
nominal maximum voltage for components of the integrated
circuit,
wherein the driver is adapted to selectively electrically couple a
voltage higher than the nominal maximum voltage to an external
terminal of the integrated circuit.
Claim 3 stands rejected under 35U.S.C. § 112, second paragraph, as
indefinite. Ans. 3—5 (withdrawing the pending indefmiteness rejection for
all claims expect claim 3); Final Act. (Aug. 18, 2014) 2—3 (rejecting claims
1—11 as indefinite).
Claims 1—20 stand rejected under 35 U.S.C. § 103(a) as obvious over
Lai (US 2009/0167357 Al; July 2, 2009) and Wang (US 2006/0164054 Al;
July 27, 2006). Final Act. 3—6.
ANALYSIS
We have considered Appellants’ arguments in the Appeal Brief and
the Reply Brief, as well as the Examiner’s Answer thereto. We are
unpersuaded by Appellants’ arguments for all except claims 7 and 13.
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Therefore, we agree with, and adopt as our own, the Examiner’s findings for
claims 1—6, 8—12, and 14—20 to the extent consistent with our analysis
below.
Indefiniteness of Claim 3
The Examiner rejects claim 3 as indefinite. Final Act. 7—8.
Appellants fail to address this rejection of claim 3. See App. Br. 9—10;
Reply Br. 1. Arguments not made are considered waived. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2014).
Accordingly, we sustain the Examiner’s rejection of claim 3 as
indefinite under 35U.S.C. § 112, second paragraph.
Obviousness
A. Claims 1 and 12
Appellants contend the Examiner errs in rejecting independent claims
1 and 12 because “neither Lai nor Wang discloses or renders obvious an
integrated circuit that is fabricated by a process that establishes a nominal
maximum voltage for components of the integrated circuit.” App. Br. 11,
13. In support, Appellants add, “Lai merely mentions a ‘maximum drive
strength,’ which is not a maximum nominal voltage for components of an
integrated circuit” {id. at 12); and “Wang merely discloses a clamp circuit to
prevent a voltage from reaching components of a voltage regulator^ which]
. . . fails to disclose or render obvious . . . electrically coupling] a voltage
higher than a nominal maximum voltage” {id. at 13 (emphasis omitted)).
Initially, as a matter of claim construction, we find Appellants have
not defined explicitly the term “nominal maximum voltage” in the claims or
the Specification. We apply the broadest reasonable interpretation of claim
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Application 12/981,741
terms, consistent with the specification, as would be understood by one of
ordinary skill in the art. In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004) (citations omitted). Where, as here, the Specification
does not explicitly define a term, the term should be given its ordinary
meaning. See In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989); In re Morris,
111 F.3d 1048, 1054 (Fed. Cir. 1997). We note the Specification describes,
“The integrated circuit is fabricated by a process that establishes a nominal
maximum voltage for components of the integrated circuit.” Spec. 13. The
Specification further describes:
For a given semiconductor fabrication process, the maximum
voltage is generally governed by the maximum voltage that may
be applied across the terminals of the various electrical
components that are available in that process without causing
temporary or permanent damage to those components, and
without causing a substantial degradation in their electrical
performance.
Id. at 122. In light of these statements in the Specification and principles of
construction, we interpret the claimed “nominal maximum voltage” to
encompass the maximum voltage applied to a circuit without causing
temporary or permanent damage to those components, and without causing a
substantial degradation in their electrical performance.
Applying this construction of the claimed “nominal maximum
voltage,” we are not persuaded by Appellants’ arguments. Appellants fail to
explain persuasively why Wang’s cited disclosure of a “step down voltage
regulator . . . designed to operate over a maximum rated voltage lower than a
supply voltage” would not teach or suggest claimed “nominal maximum
voltage.” Wang Abst. (emphasis added); see also, Ans. 14 (citing Wang
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Application 12/981,741
Abst., || 13—14); Reply Br. 3 (addressing Lai’s only operating voltage; i.e.,
neglecting Wang’s maximum rated voltage).
Appellants also contend the Examiner errs in rejecting claims 1 and
12 because Lai and Wang do not teach or suggest the claimed driver’s
selective coupling of the integrated circuit to a voltage greater than the
maximum nominal voltage. App. Br. 11—12, 13. Appellants elaborate, “it
does not necessarily follow from Lai’s disclosure that its driver’s voltage is
merely an Ohm’s Law function of the drive current (as contended by the
Examiner’s Answer)” (Reply Br. 3); and “Wang . . . discusses protecting
circuit elements from relatively high input voltages [and thus] . . . teaches
away from the claimed invention” (id.).
Appellants fail to address the applied combination of Lai’s and
Wang’s teachings. Lai’s cited disclosure teaches selective coupling of a
circuit to a greater voltage than the intended operating voltage, particularly
by overriding the system’s selection of an operating mode. See, e.g., Lai
Abst.; 118. Wang’s cited disclosure teaches reducing of a voltage supply if
greater than a coupled circuit’s maximum operating voltage. See, e.g.,
Wang Abst.; 113. The Examiner’s findings are reasonable because the
skilled artisan would “be able to fit the teachings of multiple patents together
like pieces of a puzzle” because the skilled artisan is “a person of ordinary
creativity, not an automaton.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
420-21 (2007). Appellants fail to explain persuasively why an artisan of
ordinary skill would not contemplate reducing Lai’s override voltage, via
Wang’s cited teachings, to the coupled circuitry’s maximum operating
voltage. We note Appellants do not present adequate evidence that the
resulting arrangements were “uniquely challenging or difficult for one of
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Application 12/981,741
ordinary skill in the art” or “represented an unobvious step over the prior
art.” See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19).
Accordingly, for the foregoing reasons, we sustain the Examiner’s
35 U.S.C. § 103(a) rejection of claims 1 and 12.
B. Claims 2—6, 9, 10, 11, and 14
We also sustain the Examiner’s 35 U.S.C. § 103(a) rejection of claims
2—6, 9, 10, 11, and 14, which are not separately argued (App. Br. 17) and
depend from claims 1 and 12.
C. Claim 16
Appellants contend the Examiner errs in rejecting independent claim
16 because, though Lai and Wang address Universal Serial Bus (USB)
technology, neither discloses selective coupling of a serial bus power line to
an external circuit. App. Br. 15. Appellants elaborate that Lai merely
mentions USB 2.0, and Wang merely teaches USB interfaces are commonly
used for coupling non-volatile memory. Id. Appellants also add, “it is
entirely possible that [Lai’s] driver 122 may provide a signal to the circuit
114, without coupling a power line of the USB to the circuit 114.” Reply
Br. 4.
Appellants’ arguments fail to rebut the Examiner’s finding that,
because Lai’s external circuit 114 is USB compliant, an artisan of ordinary
skill would understand the connection 112 as being USB compliant and thus
providing data and power on respective pins. Ans. 23—24. Appellants’
arguments also fail to rebut the Examiner’s finding that Wang teaches USB
devices as being powered by their USB connections. Ans. 24—25; accord
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Wang | 8 (“USB devices . . . may receive a supply in the 3 volt or 5 volt
range from legacy devices.”).
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 16.
D. Claims 17—20
We also sustain the Examiner’s 35 U.S.C. § 103(a) rejection of claims
17—20, which are not separately argued (App. Br. 17) and depend from claim
16.
E. Claims 7 and 13
Appellants contend the Examiner errs in rejecting dependent claims 7
and 13 because “the Final Office Action makes a mere allegation that Wang
and Lai disclose the elements of claims 7 and 13 without providing any
citation or reasoning to explain why[.]” App. Br. 16. In support, Appellants
add, “Although power conductor 140 of Lai is shown in Fig. 1 as being
coupled to the I/O cell, neither Fig. 1 nor the [descriptive] text discloses or
renders obvious selectively coupling together power supply rails[.]” Reply
Br. 5.
Appellants’ argument is persuasive insofar as the rejection is not
sufficiently articulated. The Final Action states merely, “[I]t is clear from
Lai in view of Wang and discussion above that the processor is adapted to
control the driver to selectively couple together power supply rails, at least
one of the power supply rails being external to the integrated circuit.” Final
Act. 5. Considering the above statement in light of the Examiner’s prior
reading of claim 16’s power line on Lai’s USB connection 112 (between the
driver 120 and external circuit 114), the Final Action indicates that the
Examiner reads claim 7’s and 13 ’s coupling of power supply rails on Lai’s
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driver 120 coupling of the IC power supply 140 (asserted first rail) and
connection 112 (asserted second rail). The Answer conversely indicates,
however, that the Examiner reads claim 7’s and 13’s power supply rails
respectively on Lai’s IC voltage supply 104 and ground 106 (forming the IC
power supply 140)—not respectively on the IC power supply 140 and
connection 112. Ans. 25 (citing Lai 21—22).
The apparent change in the rejection does not, here, in itself
necessitate a reversal. See 37 C.L.R. § 41.40(a) (“failure of appellant to
[petition against new examiner findings] will constitute a waiver of any
arguments that a rejection must be designated as a new ground of
rejection.”). The apparent change, however, does necessitate an explanation
of how the Examiner perceives the IC voltage supply 104 and ground 106 to
be selectively coupled. Because no such explanation is provided, we are
unable to discern the rationale underpinning the Examiner’s finding that
claim 7’s and 13’s coupling of power supply rails is taught or suggested by
the applied prior art. See KSR at 418 (explaining requirement of “articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”); In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (explaining
notice requirement for rejections).
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 103(a)
rejection of claims 7 and 13.
F. Claims 8 and 15
Appellants contend the Examiner errs in rejecting dependent claims 8
and 15 because, “[although Lai and Wang generally mention USB
interfaces (see discussion of claim 16 above), neither reference discloses or
renders obvious the expressly-recited elements of claims 8 and 15 such as
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Application 12/981,741
managing a distribution of power derived from a power line of a Universal
Serial Bus by controlling a driver.” App. Br. 17. In support, Appellants
add, “Lai merely mentions (Lai, para. no. [0003]) that an I/O cell must meet
‘industry standards, such as energy related to USB.’. . . Wang ... is not
being relied by the Examiner’s Answer for these elements.” Reply Br. 6.
Appellants’ arguments are unpersuasive because they do not address
the Examiner’s finding that the Lai’s driver 120 providing first and second
modes of power to the external circuit 114 meets the claim limitation
“manage [a] distribution of power.” Ans. 26. A mere recitation of the claim
elements and a naked assertion that the corresponding elements are not
found in the prior art is insufficient to show error. 37 C.F.R. §
41.37(c)(iv)(2014); In reLovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claims 8 and 15.
DECISION
The Examiner’s 35 U.S.C. § 112 rejection of claim 3 is affirmed.
The Examiner’s 35 U.S.C. § 103(a) rejection of claims 1—6, 8—12, and
14—20 is affirmed.
The Examiner’s 35 U.S.C. § 103(a) rejection of claims 7 and 13 is
reversed.
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)(iv).
AFFIRMED-IN—PART
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