Sony Corporation

Patent Trials and Appeals BoardJun 14, 2021

2021002119 (P.T.A.B. Jun. 14, 2021)

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. 16/043,735 07/24/2018 Masahiro Igarashi 880001-4124-US03 6651 165569 7590 06/14/2021 MICHAEL BEST & FRIEDRICH LLP (SONY) 790 N WATER ST SUITE 2500 MILWAUKEE, WI 53202 EXAMINER WHITTINGTON, KENNETH ART UNIT PAPER NUMBER 3992 NOTIFICATION DATE DELIVERY MODE 06/14/2021 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): DCipdocket@michaelbest.com ajheins@michaelbest.com nbenjamin@michaelbest.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MASAHIRO IGARASHI, TETSUO MOTOMURA, RYUJI KANEKO, MAKOTO FUJIWARA, YOSHINORI TANAKA, and HIROMI OGATA ___________ Appeal 2021-002119 Reissue Application 16/043,735 Patent 7,956,677 B2 Technology Center 3900 ____________ Before JOHN A. JEFFERY, ERIC B. CHEN, and MICHAEL J. ENGLE, Administrative Patent Judges. CHEN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2021-002119 Reissue Application 16/043,735 Patent 7,956,677 B2 2 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject reissue claim 16. Original claims 1–15 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Because our Decision cites to additional extrinsic evidence to support the Examiner’s findings, our Decision has been designated a new ground pursuant to our authority under 37 C.F.R. § 41.50(b) to provide Appellant with the opportunity to respond. The present application is a continuation reissue application of Application No. 14/739,617, filed June 15, 2015, now US RE46,997, issued on August 14, 2018, which is a continuation reissue application of Application No. 13/911,788, filed June 6, 2013, now US RE45,614, issued on July 14, 2015, which is a reissue application of Application No. 12/318,934, filed January 13, 2009, now US 7,956,677, issued on June 7, 2011. CLAIMED SUBJECT MATTER The claims are directed to a semiconductor integrated circuit for controlling a transition of multiple switch transistors. (Col. 1, ll. 15–17.) Reissue claim 16, reproduced below, is illustrative of the claimed subject matter, with disputed limitations in italics: 16. A semiconductor integrated circuit comprising: a first voltage line on which a specific one of a power- supply voltage and a reference voltage appears; 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Sony Corporation. (Appeal Br. 3.) Appeal 2021-002119 Reissue Application 16/043,735 Patent 7,956,677 B2 3 a second voltage line; a plurality of circuit cells each receiving power generated as a difference between a voltage appearing on said second voltage line and the other one of said power-supply voltage and said reference voltage; a plurality of switch transistors connected in parallel between said first and second voltage lines to serve as switch transistors including switch transistors having conducting-state resistances which are different from each other; and a switch conduction control section configured to control a transition of each of said switch transistors from a non- conducting state to a conducting state, wherein any specific one of said switch transistors shall be put in a conducting state only after all said switch transistors each having a conducting-state resistance greater than the conducting-state resistance of said specific switch transistor have been put in a conducting state, and wherein the plurality of circuit cells are located in a functional circuit cell layout area of the semiconductor integrated circuit, the plurality of switch transistors are located outside the functional circuit cell layout area of the semiconductor integrated circuit REFERENCE Name Reference Date Rao et al. US 2009/0160253 A1 June 25, 2009 Appeal 2021-002119 Reissue Application 16/043,735 Patent 7,956,677 B2 4 REJECTION Claim 16 stands rejected under 35 U.S.C. § 102 as being anticipated by Rao.2 OPINION We are unpersuaded by Appellant’s arguments (Appeal Br. 9–11; see also Reply Br. 7) that Rao does not describe the limitation “switch transistors having conducting-state resistances which are different from each other,” as recited in independent claim 16. The Examiner found that wider transistors 430, 432 and 434, and transistors 418, 420 and 422 of Rao, correspond to the limitation “switch transistors having conducting-state resistances which are different from each other.” (Final Act. 8.) In particular, the Examiner found that “transistors 430, 432 and 434 shown in FIG. 4 of Rao have more conductivity and are wider than transistors 418, 420 and 422” and “[o]ne having ordinary skill in the art would know that wider transistors with higher conductivity would imply a lower ‘conducting state resistance’ as opposed to narrower transistors with less conductivity.” (Ans. 5.) We agree with the Examiner’s findings. Rao relates to switching circuits (¶ 1), in particular, “a first power domain that is responsive to a first power switching circuit and a second power domain that is responsive to a second power switching circuit” 2 The Examiner has withdrawn the rejections of: (i) claim 16 under 35 U.S.C. § 251 as being based upon a defective reissue declaration; and (ii) claim 16 under the judicially created doctrine of obviousness-type double patenting over claims 9–13 of US RE45614 and Rao in view of Appellant’s terminal disclaimer. (Adv. Act. 2.) Appeal 2021-002119 Reissue Application 16/043,735 Patent 7,956,677 B2 5 (Abstract). Figure 4 of Rao, which illustrates a block diagram of device 400 to provide power to a circuit device, including trickle circuit 410 having p- channel transistors 418, 420 and 422, and flood circuit 412 having p-channel transistors 430, 432 and 434 (¶ 35), is reproduced below: Rao explains that “the transistors 430, 432 and 434 of the flood circuit 412 are wider than the transistors 418, 420 and 422 of the trickle circuit 410” and “[t]he wider transistors 430, 432 and 434 conduct more current than the transistors of the trickle circuit 410.” (¶ 37.) Because Rao explains that wider transistors 430, 432 and 434 conduct more current than transistors 418, 420 and 422, Rao discloses the limitation “switch transistors having conducting-state resistances which are different from each other.” In particular, one of ordinary skill in the art would understand that the resistance of a conductor is inversely proportional to its Appeal 2021-002119 Reissue Application 16/043,735 Patent 7,956,677 B2 6 cross-sectional area,3 and thus, wider transistors 430, 432 and 434 have a lower resistance than transistors 418, 420 and 422. Moreover, one of ordinary skill in the art with the knowledge of Ohm’s law would recognize that wider transistors 430, 432 and 434 that conduct more current would have less resistance than transistors 418, 420 and 422, due to the common connection to Vdd, as illustrated in Figure 4 of Rao. Appellant argues that “paragraph [0035] of Rao fails to expressly describe transistors 418, 420 and 422 as being ‘higher resistance transistors’” and “paragraph [0035] of Rao fails to expressly describe transistors 430, 432 and 434 as being ‘lower resistance transistors’.” (Appeal Br. 9 (emphases omitted).) Similarly, Appellant argues that “paragraph [0036] of Rao fails to expressly describe transistors 418, 420 and 422 as being ‘higher resistance transistors’” and “paragraph [0036] of Rao fails to expressly describe transistors 430, 432 and 434 as being ‘lower resistance transistors’.” (Id. (emphases omitted).) However, the Examiner cited to paragraph 37 of Rao, rather than paragraphs 35–36, for disclosing 3 One technical definition of “resistance” is as follows: The potential difference required across a conductor to drive unit current through it. The resistance of a conductor is proportional to its resistivity and length but inversely proportional to its cross-sectional area; it may also depend on temperature. THE PENGUIN DICTIONARY OF SCIENCE 583 (M. J. Clugston ed. 2009) (internal annotations omitted). Appeal 2021-002119 Reissue Application 16/043,735 Patent 7,956,677 B2 7 the limitation “switch transistors having conducting-state resistances which are different from each other.” Appellant further argues that “Rao fails to expressly describe transistors 418, 420 and 422 as being ‘higher resistance transistors’ and fails to expressly describe transistors 430, 432 and 434 as being ‘lower resistance transistors’” (Appeal Br. 10) and “the Final Action fails to identify any objective evidence sufficient to show a prior relationship between a width of a transistor and the resistance of the transistor” (id. at 11 (emphases omitted)). Similarly, Appellant argues that “a review of Rao reveals the absence of any relationship between widths of the transistors 430, 432 and 434 and transistors 418, 420 and 422 and the conducting-state resistances of the transistors 430, 432 and 434 and transistors 418, 420 and 422.” (Reply Br. 7.) However, as discussed previously, one of ordinary skill in the art would have recognized that resistance of a conductor is inversely proportional to its cross-sectional area, and accordingly, wider transistors 430, 432 and 434 have a lower resistance than transistors 418, 420 and 422. Therefore, we agree with the Examiner that Rao describes the limitation “switch transistors having conducting-state resistances which are different from each other.” Accordingly, we sustain the rejection of independent claim 16 under 35 U.S.C. § 102. Appeal 2021-002119 Reissue Application 16/043,735 Patent 7,956,677 B2 8 DECISION SUMMARY In summary: Claim Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 16 102 Rao 16 16 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. AFFIRMED; 37 C.F.R. § 41.50(b)