Murata Manufacturing Co., Ltd.

Patent Trials and Appeals Board

Feb 28, 2022

2021000700 (P.T.A.B. Feb. 28, 2022)

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. 16/413,642 05/16/2019 Hisanori MURASE 36856.4536 1027 54066 7590 02/28/2022 MURATA MANUFACTURING COMPANY, LTD. C/O KEATING & BENNETT, LLP 1800 ALEXANDER BELL DRIVE SUITE 200 RESTON, VA 20191 EXAMINER LE, LANA N ART UNIT PAPER NUMBER 2648 NOTIFICATION DATE DELIVERY MODE 02/28/2022 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): JKEATING@KBIPLAW.COM cbennett@kbiplaw.com uspto@kbiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HISANOR MURASE Appeal 2021-000700 Application 16/413,642 Technology Center 2600 Before MINN CHUNG, CHRISTA P. ZADO, and PHILLIP A. BENNETT, Administrative Patent Judges. CHUNG, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claim 1. See Final Act. 3. The Examiner has 1 In this Decision, we refer to Appellant’s Appeal Brief filed August 5, 2020 (“Appeal Br.”) and Reply Brief filed November 5, 2020 (“Reply Br.”); and the Examiner’s Final Office Action mailed March 16, 2020 (“Final Act.”) and Answer mailed September 25, 2020 (“Ans.”). We also refer to the Specification filed May 16, 2019 (“Spec.”). Rather than repeat the Examiner’s findings and Appellant’s contentions in their entirety, we refer to these documents. 2 “Appellant” herein refers to “applicant” as defined in 37 C.F.R. § 1.42 (2012). Appellant identifies the real party in interest as Murata Manufacturing Co., Ltd. Appeal Br. 2. Appeal 2021-000700 Application 16/413,642 2 found claims 2-20 to contain allowable subject matter. Id. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The subject matter of the present application pertains to a high frequency switch control for “control[ling], with high accuracy, transmission and reception of high-frequency signals in the high-frequency module.” Spec. ¶ 3. Claim 1, reproduced below is illustrative of the claimed subject matter: 1. An active element, comprising: an RF wire disposed on a first surface of the active element, and through which a high-frequency signal is communicated; and a control wire disposed on a second surface of the active element opposite to the first surface, and through which a control signal is communicated. . REJECTION The Examiner relies on the following reference: Name Reference Date Fujii JPH-112196473 Aug. 10, 1999 Claim 1 stands rejected under 35 U.S.C. § 102(a)(1) as anticipated by Fujii. Final Act. 3. 3 The Examiner relies on a machine translation of the Japanese Patent Application Publication JPH-11219647. Appeal 2021-000700 Application 16/413,642 3 OPINION The only issue presented by Appellant’s Appeal is whether Fujii discloses an “active element” recited in the preamble of claim 1.4 We have considered Appellant’s arguments (Appeal Br. 3-17; Reply Br. 2-16) in light of the Examiner’s findings and explanations (Final Act. 2- 3; Ans. 7-11). For the reasons set forth below, we are not persuaded of Examiner error in the rejection of claim 1, and we, therefore, sustain the Examiner’s rejection. As an initial matter, Appellant and the Examiner dispute whether an “active element” recited in the preamble of claim 1 is limiting. See Ans. 9; Reply 9-10. Because, for the reasons set forth below, we find that Fujii discloses an “active element” recited in claim 1, we need not and do not reach this issue. The Examiner finds that Fujii discloses all elements recited in claim 1, including the preamble. Final Act. 2-3 (citing Fujii Fig. 4, ¶¶ 10, 11, 16-18, 34). In particular, the Examiner finds that relay unit 1 shown in Figure 4 of Fujii discloses an “active element” recited in the preamble of claim 1. Id. at 2; Ans. 9-11. Among other reasons, the Examiner finds that Fujii discloses the recited “active element” because the relay of Fujii is “an electronic switch that is activated by an electric current or electrical energy.” Ans. 10 (citing Fujii Fig. 1, ¶¶ 1, 11, 16-18). Appellant argues that Fujii’s relay is not an “active element” recited in the claim because a relay, which is an electromechanical switch, is not an 4 Only those arguments made by Appellant have been considered in this decision. Arguments Appellant did not make are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2021-000700 Application 16/413,642 4 “active element” described in the Specification. Appeal Br. 11-12 (citing Spec. ¶¶ 41, 58, 59, 110, 111, 112). According to Appellant, the active elements described in the Specification include integrated circuits, such as a Large Scale Integrated (LSI) circuit, a switch IC, a low-noise amplifier (LNA), a power amplifier (PA), a Complementary MOS (CMOS), and a gallium arsenide (GaAs) semiconductor device. Appeal Br. 11-12 (citing Spec. ¶¶ 41, 58, 59, 110, 111, 112). To the extent Appellant argues that the recited “active element” is limited to integrated circuits or powered semiconductor devices, we disagree with Appellant. More importantly, we disagree with Appellant that Fujii’s electromechanical relay is excluded from the meaning of the term “active element” recited in claim 1. As acknowledged by Appellant, Appellant’s Specification describes switch IC 10 depicted in Figure 2 as an “active element.” Spec. ¶¶ 41 (“the switch IC 10 which is an active element 9”), 43 (“The switch IC 10, which is the active element 9, is provided in an IC substrate (not shown) or on an IC substrate. The switch IC 10 includes the switch 11 and the control circuit 12.”), 51 (“the RF module 1 controls the switch 11 by the control circuit 12 of the switch IC 10 which is the active element 9”), 58 (“the RF module 1 includes a circuit board 100, the active element 9 (for example, the switch IC 10) mounted on the circuit board 100”). Appeal 2021-000700 Application 16/413,642 5 Figure 2 of the Specification is reproduced below. Figure 2 is a schematic plan view illustrating a circuit arrangement of an exemplary communication device. Spec. ¶ 27. As illustrated in Figure 2, “the RF module 1 is a high-frequency module including the switch IC 10 which is an active element 9, filters 21, 22 and 23, a low-noise amplifier 31, a power amplifier 33, an inductor 6, and a capacitor 7.” Id. ¶ 41 (emphasis added). As shown in Figure 2, antenna element 2 is connected to RF module 1. Id. ¶ 40. Upon receiving the RF signal from antenna element 2, switch IC 10 of RF module 1 switches the transmission of the received RF signal to one of the four available RF Lines of signal propagation paths, depending on the control signal input to control circuit 12 and voltages input to switch IC 10 from a power source. Id. ¶¶ 43, 44, 45, 46, Fig. 2. In other words, switch IC 10 “switches propagation paths of a high-frequency signal inputted to the RF module 1.” Id. ¶ 43. The Specification further describes that switch 11 of switch IC 10 “switches Appeal 2021-000700 Application 16/413,642 6 connections between the antenna element 2 and signal paths for four frequency bands each having different frequency bands” by “switch[ing] connections between the common terminal and one of the plurality of selection terminals.” Id. ¶ 44. Thus, Appellant’s Specification describes that switch IC 10, an active element, operates simply to switch the signal connection path to propagate the signal received from the antenna through RF module 1, depending on the control signal and power input to switch IC 10. Id. ¶¶ 40-46, Fig. 2. Appellant does not cite, nor do we discern, anything in the Specification that indicates or suggests that switch IC 10 or switch 11 amplifies, modulates, or otherwise modifies the signal the switch receives. In other words, switch IC 10, an active element, is a mere pass-through switching device, simply switching the signal connection without modifying the signal going through the switch. Figure 4 of Fujii, as annotated by Appellant, is reproduced below. The figure above shows Figure 4 of Fujii annotated by Appellant. Appeal Br. 13. Appeal 2021-000700 Application 16/413,642 7 As shown above, Fujii’s Figure 4 depicts relay body 1 having “one surface 11 and another surface 12 facing the one surface 11,” high frequency terminals 2, and control terminals 3. Fujii ¶¶ 16, 17, 18. Fujii also describes that high frequency terminals 2 include common terminal 21, normally open terminal 22, normally closed terminal 23, and two earth (ground) terminals 24. Id. ¶ 17. Figure 1 of Fujii cited by the Examiner is reproduced below. The figure above shows a three-dimensional depiction of Fujii’s relay 1. Fujii Fig. 1. As shown in Figure 1 above, relay 1 of Fujii switches on and off the high-frequency signal connection between common terminal 21 to normally open terminal 22. Id. ¶¶ 10, 23, Fig. 1. As also shown in Figure 1, high- frequency signal terminals 2 are connected on “one surface 11 of the relay body 1” and control terminals 3 are connected on “the other surface 12 of the relay body 1.” Id. ¶¶ 17-18. As described in Fujii, when a voltage is applied to control terminal 3 of the relay, “the common terminal 21 and the normally open terminal 22 are closed from the open state to the closed state,” which turns on the high- frequency signal connection between common terminal 21 to normally open terminal 22. Id. ¶ 23. When the voltage is dropped, “the common terminal Appeal 2021-000700 Application 16/413,642 8 21 and the normally open terminal 22” return from the closed state to the open state, turning off on the high-frequency signal connection. Id. Thus, the relay of Fujii operates essentially the same way as Appellant’s switch IC 10, an active element, because both are a pass-through switching device for high-frequency signals, simply switching the signal connection without modifying the signal going through the switch. And both are controlled and activated by a control signal and a voltage input from a power source. Although Fujii describes its relay as an electromechanical switch and the Specification describes embodiments where switch IC 10 and switch 11 are semiconductor devices, the Specification broadly describes that the recited “active element” is not limited to semiconductor embodiments. Spec. 44 (“The switch 11 is preferably, for example, a semiconductor switch.” (emphases added)). Thus, based on the disclosure and teachings in the Specification, we determine that Fujii’s relay falls within the meaning of the term “active element” recited in claim 1. See In re Smith Int’l, Inc., 871 F.3d 1375, 1382- 83 (Fed. Cir. 2017) (internal citations omitted) (“The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is . . . an interpretation that corresponds with what and how the inventor describes [the] invention in the specification, i.e., an interpretation that is ‘consistent with the specification.’”). Citing industry catalogs and various websites, Appellant argues that Fujii’s relay is not an “active element” recited in the claim because a person of ordinary skill in the art would understand that an electromechanical component, such as a relay, is not an “active component.” Appeal Br. 6-10. We are not persuaded by Appellant’s argument and evidence because, when Appeal 2021-000700 Application 16/413,642 9 construing terms under a reasonably broad interpretation standard, “we give the intrinsic evidence priority over extrinsic evidence with which it is inconsistent.” Immunex Corp. v. Sanofi-Aventis U.S. LLC, 977 F.3d 1212, 1221-22 (Fed. Cir. 2020) (internal quotation marks and citations omitted), cert. denied, 141 S. Ct. 2799 (2021). Based on the record before us, we agree with the Examiner’s finding that Fujii discloses the recited “active element” because the relay of Fujii is “an electronic switch that is activated by an electric current or electrical energy.” Final Act. 2-3 (citing Fujii Fig. 4, ¶¶ 10, 11, 16-18, 34); Ans. 9-11 (citing Fujii Fig. 1, ¶¶ 1, 11, 16-18). Thus, we are not persuaded the Examiner erred in rejecting claim 1 as anticipated by Fujii. CONCLUSION For the foregoing reasons, we are not persuaded of Examiner error in the rejection of claim 1. We, therefore, sustain the Examiner’s rejection on this record. The decision of the Examiner to reject claim 1 under 35 U.S.C. § 102(a)(1) is affirmed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1 102 Fujii 1 Appeal 2021-000700 Application 16/413,642 10 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED