SILICON LABORATORIES INC.

Patent Trials and Appeals Board

Nov 2, 2020

2019004324 (P.T.A.B. Nov. 2, 2020)

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.
13/720,037 12/19/2012 Kenneth W. Fernald SILA345 1381
60939 7590 11/02/2020
MAXIMILLIAN R. PETERSON
PO Box 90245
Sioux Falls, SD 57109
EXAMINER
ROSARIO, NELSON M
ART UNIT PAPER NUMBER
2624
NOTIFICATION DATE DELIVERY MODE
11/02/2020 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):
USPTO1@PETERSONIPLAW.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KENNETH W. FERNALD and DOUGLAS PIASECKI
____________________

Appeal 2019-004324
Application 13/720,0371
Technology Center 2600
____________________

Before CAROLYN D. THOMAS, JON M. JURGOVAN, and
SCOTT RAEVSKY, Administrative Patent Judges.

JURGOVAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Appellant seeks review under 35 U.S.C. § 134(a) from the Examiner’s
Non-Final rejection of claims 1–20, constituting all of the claims pending in
the application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, Silicon Laboratories Inc. is the
real party in interest. Appeal Br. 1.
2 Our Decision refers to the Specification filed December 19, 2012
(“Spec.”); the Non-Final Office Action mailed April 19, 2018 (“Non-Final
Act.”); the Appeal Brief filed November 19, 2018 (“Appeal Br.”); the
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CLAIMED INVENTION
The claims relate to a multiplexed liquid crystal display (LCD)
controller. Spec. Abstract, ¶ 4. The LCD controller drives a first set of
signal lines during a first phase of operation and a second set of signal lines
during a second phase of operation. Id. The LCD controller couples some
of the signal lines to a node between the first and second phases of
operation. Spec. Abstract, ¶¶ 4, 32.
The LCD controller may be used to drive multiple seven-segment
digit displays with common lines and segment lines to charge or discharge
segment capacitors. Id. ¶ 21, Figs. 2, 3. The LCD controller uses a
technique called “segment resetting” during the reset period between phases
of operation. Id. ¶¶ 1, 4–6. Segment resetting may involve coupling signal
lines to a node between the first and second phases of operation. Id.
Claims 1, 8, and 14 are independent. Claim 1 is an apparatus claim
directed to the LCD controller, claim 8 is an apparatus claim directed to the
combination of the LCD controller and LCD display, and claim 14 is a
method of operating the LCD display. Appeal Br. 30–31 (Claims
Appendix). Claims 2–7 depend from claim 1; claims 9–13 depend from
claim 10; and claims 15–20 depend from claim 14. Claim 1, shown below
with argued limitation in italics, is representative of the claimed invention.

Examiner’s Answer mailed March 7, 2019 (“Ans.”); and the Reply Brief
filed May 6, 2019 (“Reply Br.”).
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1. An apparatus, comprising a multiplexed liquid crystal display
(LCD) controller that operates in at least first and second
phases of operation, the LCD controller to drive a plurality of
signal lines to a first set of voltages during the first phase of
operation and to a second set of voltages during the second
phase of operation, wherein the LCD controller further
couples to a node at least some of the plurality of signal lines
after the first phase of operation and before the_second
phases of operation.3
Appeal Br. 30 (Claims App.).

REJECTIONS
Claims 1–20 stand rejected under 35 U.S.C. § 112(a) for failing to
comply with the written description requirement. Non-Final Act. 8–9.
Claims 1–20 stand rejected under 35 U.S.C. § 103 based on Van Ess
(Van Ess et al., US 2011/0169814 A1; published July 14, 2011, hereinafter
“Ess”) and Bar (Bar et al, US 2010/0079439 A1; published April 1, 2010,
hereinafter “Bar”). Non-Final Act. 10–19.

RELATED DECISION
Appeal No. 2019-004223 (Application No. 14/555,510), mailed
September 29, 2020 (Examiner Affirmed-in-part).

3 Typographical errors appear in the last line of claim 1 (underlining “_”
instead of a space, and a strikethrough “s” character).

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ANALYSIS
Standard of Review
We undertake a limited de novo review of the appealed rejections for
error based upon the issues identified by Appellant, and in light of the
arguments and evidence produced thereon. Ex parte Frye, Appeal No.
2009-006013 (Feb. 26, 2010) (precedential).

Section 112(a) Rejection
Section 112(a) requires that
[t]he specification shall contain a written description of the
invention, and of the manner and process of making and using
it, in such full, clear, concise, and exact terms as to enable any
person skilled in the art to which it pertains . . . to make and use
the same.4

The written description must reasonably convey to those skilled in the art
that the inventor had possession of the claimed subject matter as of the filing
date. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) (en banc); D Three Enterprises, LLC v. SunModo Corp., 890 F.3d
1042, 1047 (Fed. Cir. 2018).
The Examiner finds the Specification lacks written description support
for the claim limitation shown in italics in claim 1 as reproduced above, as

4 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(September 16, 2011) (“AIA”), included revisions to 35 U.S.C. § 112 that
became effective on September 16, 2012. Because the present patent
application is a continuation-in-part filed after this date, we assume AIA 35
U.S.C. § 112 applies to this application. However, our analysis would not
be different if pre-AIA 35 U.S.C. § 112 applied to this case.

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well as for similar limitations in independent claims 8 and 14. Non-Final
Act. 8–9. Conversely, Appellant argues that the Specification provides
written description support for the italicized claim limitation under 35 U.S.
§ 112. Appeal Br. 5–16; Reply Br. 1–3.
We agree with Appellant’s argument. The Specification states, “[t]he
LCD controller is further adapted to couple to a node between first and
second phases of operation.” Spec. ¶ 4. Although claim 1 recites that the
node coupling occurs after the first phase of operation and before the second
phase of operation, the Examiner has not demonstrated there is any
difference in meaning from node coupling that occurs between the first and
second phases of operation as described in the Specification. See Ans. 3–4;
Reply Br. 2–3; and Spec. ¶ 4. To comply with the written description
requirement of 35 U.S.C. § 112, the Specification is not required to provide
literal support, word for word, for the recited claim language. Purdue
Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1324 (Fed. Cir. 2000) (“In
order to satisfy the written description requirement, the disclosure as
originally filed does not have to provide in haec verba support for the
claimed subject matter at issue.”); MPEP § 2163.02.
Claim 8 recites “the controller performs segment resetting after the
first phase of operation of the LCD and before the second phases of
operation of the LCD.”5 Appeal Br. 30 (Claims App.). For similar reasons
as stated for claim 1, we find Appellant’s argument persuasive that the
Specification provides written description support for this limitation.

5 The strikethrough “s” in the word “phases” is a typographical error
appearing in claim 8 as presented on appeal.

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Claim 14 recites “performing segment resetting after operating the
LCD in the first phase of operation” and “operating the LCD in a second
phase of operation after performing segment resetting.” Appeal Br. 31
(Claims App.). The Specification states,
According to yet another exemplary embodiment, a method of
operating an LCD includes operating the LCD in a first phase of
operation. The method further includes performing segment
resetting after operating the LCD in the first phase of operation.
In addition, the method includes operating the LCD in a second
phase of operation after performing segment resetting.

Spec. ¶ 6. Claim 14 recites almost verbatim the above excerpt from the
Specification. See Appeal Br. 31 (Claims App.). While written description
is not an in haec verba test, claim 14 is described nearly word for word in
the Specification.
Accordingly, the Examiner has not shown that the Specification fails
to convey to one of ordinary skill in the art that the inventors were in
possession of the claimed invention as of the filing date. We thus do not
sustain the Examiner’s rejection of claims 1–20 under the written description
requirement of 35 U.S.C. § 112(a).

35 U.S.C. § 103 Rejection
Title 35, section 103, provides
A patent for a claimed invention may not be obtained,
notwithstanding that the claimed invention is not identically
disclosed as set forth in section 102, if the differences between
the claimed invention and the prior art are such that the claimed
invention as a whole would have been obvious before the
effective filing date of the claimed invention to a person having
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ordinary skill in the art to which the claimed invention
pertains.6

The question of obviousness is resolved on the basis of underlying factual
determinations including: (1) the scope and content of the prior art; (2) any
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) where present, objective evidence of
nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
A. Independent Claims 1, 8, and 14
Appellant argues claims 1, 8, and 14 together as one group. Appeal
Br. 16–22, 24–25, and 26. Accordingly, we select claim 1 as representative
and, unless otherwise indicated, will restrict our analysis to this claim only.
37 C.F.R. § 41.37(c)(1)(iv) (“When multiple claims subject to the same
ground of rejection are argued as a group or subgroup by appellant, the
Board may select a single claim from the group or subgroup and may decide
the appeal as to the ground of rejection with respect to the group or subgroup
on the basis of the selected claim alone.”).
The Examiner finds that the combination of Ess and Bar teaches or
suggests the limitations of claims 1, 8, and 14. Non-Final Act. 10–13 (citing
Ess ¶¶ 43–45, 52, Figs. 1, 2, 5A, 5B, 12; and Bar ¶¶ 5, 58). Appellant
contends the Examiner erred and presents several arguments for
patentability. Appeal Br. 18–24; Reply Br. 4–8. Appellant’s arguments do
not persuade us of Examiner error for the following reasons.

6 The AIA included revisions to 35 U.S.C. § 103 that became effective on
March 16, 2013. Because the present patent application is a continuation-in-
part filed after this date, we assume AIA § 103 applies to this application.
However, on this record, our analysis would not be different if pre-AIA
§ 103 applied to this case.
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(1) Node Coupling
The Examiner finds that Ess teaches or suggests the argued limitation
of claim 1 shown in emphasis above. Non-Final Act. 11–12 (citing Ess
¶¶44–45, and Fig. 12). Appellant argues “the Office Communication fails to
show that Ess couples at least some of the plurality of signal lines to a node
between two time slots or after a first timeslot and before a second timeslot,
even if one assumes, for the sake of the argument, that the ‘off modes’
constitute ‘segment resetting.’” Appeal Br. 17; Reply Br. 4.
In the rejection, the Examiner relies on Ess’s Figure 12, shown below.
Non-Final Act. 6, 12; Ans. 6.

Ess’s Figure 12 shows driver signals (COM0, COM1, COM2, SEG0, SEG1)
generated by multiplexing control signals. Ess ¶¶ 107–109. The COM
signals drive one side of the LCD and the segment signals drive the other
side. See Ess Fig. 3; Spec. Fig. 3. The Examiner considers the first halves
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of the timeslots t0, t1 in Ess as the claimed “first and second phases of
operation” and the second halves of the timeslots t0, t1 as reset periods.
Non-Final Act. 6, 12; Ans. 6. In Ess’s Figure 12, COM0 and SEG0 are both
low during timeslot t0’s reset period, and COM1 and SEG1 are both high
during timeslot t0’s reset period. These signals must be coupled to a node
(voltage supply or ground) for this to occur. Accordingly, Ess at least
suggests some of the signal lines are connected to a node after the first phase
and before the second phase, as claimed. We thus find Appellant’s argument
unpersuasive.
Appellant argues the “off modes” of Ess’s Figures 5A and 5B do not
constitute “segment resetting.” Appeal Br. 17–18. This argument, however,
does not negate the Examiner’s findings with respect to Ess’s Figure 12
discussed above.
(2) Choice Of
Appellant also argues the Examiner based the entire case on
interpretation of the word “between” in the claims as meaning “choice of”
first and second phases of operation. Appeal Br. 18–19; Non-Final Act. 4.
We do not agree that the Examiner’s entire case hinges on the “choice of”
interpretation. For reasons just explained, the Examiner cited Ess’s Figure
12 as showing selective coupling of signal lines to nodes between first and
second phases of operation. Thus, Appellant has not demonstrated
reversible error.
(3) Segment Resetting
Appellant argues “Ess simply has nothing to do with segment
resetting.” Appeal Br. 19; Reply Br. 6. Claim 1, however, does not mention
“segment resetting” and terms that do not appear in the claim cannot be
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relied upon for patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA
1982).
Furthermore, as explained, Ess’s Figure 12 shows the COM0 and
SEG0 signals are both low (grounded) during the reset period. This would
have the effect of resetting the segment capacitance similarly to what is
shown below in Figure 12B of Appellant’s Specification.

Specifically, in Figure 12B, switches 39, 42 couple both terminals of
segment capacitance 30 to the ground node. Grounding the COM0 and
SEG0 signals in Ess’s Figure 12 implies the same grounding as shown in
Figure 12B of Appellant’s Specification.
(4) VSEG
Appellant argues that Ess does not disclose segment resetting because
Ess’s signal “VSEG does not represent the voltage across a single LCD
segment terminals, and does not constitute an evidence of the signal
resetting in Ess.” Appeal Br. 20. As explained, claim 1 does not recite
segment resetting so Appellant’s argument is not supported by
corresponding language in the claim. See Self, supra.
In any case, as noted, Ess’s Figure 12 shows grounding of COM0 and
SEG0 signals across a segment capacitance during a reset period, similar to
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the segment resetting shown in Appellant’s Figure 12B. Thus, we are not
persuaded by this argument.
(5) Bar’s Alleged Failure
Appellant argues “[t]he Office Communication fails to show that Bar
teaches ‘first and second phases’ of operation of the LCD, and after the first
phase and before the second phase ‘segment resetting’ is performed.”
Appeal Br. 21. The Examiner relied on Ess, not Bar, for this teaching. Non-
Final Act. 10–13. Thus, Appellant’s argument attacks Bar individually, and
does not consider what the combination of Ess and Bar would have signified
to a person of ordinary skill in the art. “Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references.” In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425
(CCPA 1981)).
(6) Timeslots versus Phases of Operation
In the Reply Brief, for the first time, Appellant asserts that Ess’s
“timeslots” do not correspond to the claimed “phases of operation.” Reply
Br. 4–5. New arguments are not considered in a reply brief absent a
showing of good cause, which has not been made here. 37 C.F.R.
§ 41.41(b)(2) (“Any argument raised in the reply brief which was not raised
in the [A]ppeal [B]rief, or is not responsive to an argument raised in the
examiner’s answer, including any designated new ground of rejection, will
not be considered by the Board for purposes of the present appeal, unless
good cause is shown.”).
Even if we did consider Appellant’s argument, we would find it
unpersuasive because it is a mere assertion without any explanation of why
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the first halves of Ess’s timeslots do not correspond to the claimed “phases
of operation.” See Ans. 7–8. Attorney argument is not evidence. Icon
Health and Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir.
2017).
B. Remaining Claims
No separate arguments are presented for the remaining dependent
claims, which fall for the same reasons stated for their respective
independent claims. See 37 C.F.R. § 41.37(c)(1)(iv) (“[T]he failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.”).

DECISION
The Examiner’s rejections of claims 1–20 under 35 U.S.C. § 112 are
reversed, and the rejections of claims 1–20 under 35 U.S.C. § 103 are
affirmed.
CONCLUSION
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 112(a) Written description 1–20
1–3, 6, 7, 9–
11, 15–17
103 Ess, Bar 1–20
Overall
Outcome
1–20

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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)(iv).

AFFIRMED