Ex Parte Hossein et al

Patent Trial and Appeal Board

Apr 11, 2018

14363054 (P.T.A.B. Apr. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/363,054 06/05/2014 Masum Hossein
44429 7590 04/13/2018
Peninsula Patent Group
5061 Crail Way
El Dorado Hills, CA 95762
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
RBS2.Pl23US 6193
EXAMINER
CADEAU, WEDNEL
ART UNIT PAPER NUMBER
2632
NOTIFICATION DATE DELIVERY MODE
04/13/2018 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):
lkreisman@peninsulaiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASUM HOS SEIN, F ARSHID ARY ANF AR,
JIHONG REN and JARED L. ZERBE
Appeal2017-008882
Application 14/363,054 1
Technology Center 2600
Before ERIC B. CHEN, JON M. JURGOV AN, and
PHILLIP A. BENNETT, Administrative Patent Judges.
JURGOV AN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-10, 18-25, and 27. 2 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm. 3
1 Appellants identify Rambus, Inc. as the real party in interest. (Appeal
Brief 3.)
2 Claims 11-17, 26, and 28-59 were canceled previous to this appeal.
(Appeal Brief 17, 19 - Claims App 'x.)
3 Our Decision refers to the Specification ("Spec.") filed June 5, 2014, the
Final Office Action ("Final Act.") mailed July 26, 2016, the Appeal Brief
("App. Br.") filed January 20, 2017, the Examiner's Answer ("Ans.") mailed
March 20, 2017, and the Reply Brief ("Reply Br.") filed May 18, 2017.
Appeal2017-008882
Application 14/363,054
CLAIMED INVENTION
The claims are directed to an integrated circuit chip using a
transversal filter and an equalizer to mitigate intersymbol interference (ISI).
(Spec. i-fi-f 17, 19, Abstract.) Claims 1, 18, and 22 are independent. Claim 1
is reproduced below with the argued claim limitations shown in bold:
1. An integrated circuit (IC) chip comprising:
a signaling pad to receive an input signal;
a transversal filter including a pre-cursor filter tap and a
plurality of distributed LC circuit elements formed on the IC
chip, the transversal filter to receive the input signal from the
signaling pad, apply a first pre-cursor signal compensation
component based on the pre-cursor filter tap, and generate
an intermediate signal;
an equalizer formed on the IC chip to apply a second
signal compensation component to the intermediate signal,
sample the intermediate signal, and to thereby generate a
digital output.
App. Br. 15 (Claims App'x).
REJECTIONS
Claims 1, 2, 4, 5, 18-20, 22, 23, and 25 stand rejected under 35 U.S.C.
§ 103(a) based on Shirani (US 2004/0193669 Al, Sept. 30, 2004), Bobde
(US 2009/0261897 Al, Oct. 22, 2009), and Le-Ngoc et al. (US
2003/0128781 Al, July 10, 2003). Final Act. 8-17.
Claims 3, 10, and 27 stand rejected under 35 U.S.C. § 103(a) based on
Shirani, Le-Ngoc, Bobde, Tran (US 2007/0276270 Al, Nov. 29, 2007), and
Dong et al. (US2008/0069191 Al, Mar. 20, 2008). Final Act. 18-19.
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Application 14/363,054
Claims 6-9, 21, and 24 stand rejected under 35 U.S.C. § 103(a) based
on Shirani, Bobde, Le-Ngoc, and Lin et al. (US 2010/0135378 Al, June 3,
2010). Final Act. 19--21.
ANALYSIS
In presenting their arguments for patentability, Appellants group all
claims together, and argue certain limitations of claim 1 as representative.
App. Br. 8.
Teaching Away Argument
Claim 1 recites inter alia a "transversal filter including ... a plurality
of distributed LC elements formed on a chip." (App. Br. 15 - Claims
App'x.) Appellants argue that Shirani teaches lumped LC (inductor-
capacitor) transmission lines that are on-chip, whereas Bobde teaches
distributed LC elements on-chip. App. Br. 12-13. Because distributed
and lumped circuit elements are different, Appellants contend "Bobde and
Shirani clash in a fundamental way" and that "Shirani not only teach[ es]
away from the claimed subject matter, but also teach[ es] against the use of
Bobde's circuitry." Id. Appellants argue "Shirani therefore cannot be
combined with Bobde," and contend that Shirani's "teaching away" from the
claimed subject matter, as well as Bobde, constitutes secondary evidence of
non-obviousness. Id. Such secondary evidence is a recognized factor to be
considered in determining patentability under§ 103. Graham v. John Deere
Co., 383 U.S. 1, 17-18 (1966).
"A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
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Application 14/363,054
the path that was taken by the applicant." In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). "A prior art reference evidences teaching away if it
'criticize[ s ], discredit[ s ], or otherwise discourage[ s] the solution claimed."'
In re Brandt, Slip. Op. 2016-2601 (Fed. Cir. 2018) (citing In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004). However, "mere disclosure of alternative
designs does not teach away." See Fulton, 391 F.3d at 1201. Also, merely
identifying differences does not demonstrate that a reference teaches away
from a combination. In re Beattie, 974 F.2d 1309, 1312-13 (Fed. Cir.
1992).
We agree with the Examiner a person of ordinary skill in the art
would have had reason to combine Shirani and Bobde, i.e., that the
references do not teach away from one another. We begin our analysis by
noting that a person of ordinary skill would have recognized that both
Shirani and Bobde are directed to filters that use LC circuits. Shirani Figs.
1, 2, 5, 7; Bobde i-fi-17, 22. Moreover, both Shirani and Bobde mention
reducing circuit size and parasitic impedances in LC circuits, and are thus
directed to solving the same problems. Shirani i120; Bobde i15.
Furthermore, Bobde teaches that a distributed LC circuit has a sharper
attenuation with greater filter slope than a lumped LC circuit does, and thus
suggests the desirability of replacing a lumped LC circuit with a distributed
LC circuit if the problems of circuit size and parasitic impedances can be
sufficiently reduced. Bobde i15. Bobde uses MOS trenches to solve the
circuit size and parasitic impedance issues. Bobde i-fi-1 5-7. Thus, we agree
with the Examiner (Final Act. 6-7) a person of ordinary skill considering the
references together would have seen the desirability of replacing Shirani's
lumped LC circuit with Bobde 's distributed LC circuit since Bobde solves
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Application 14/363,054
the problems that would have been a barrier to replacement, and because the
replacement yields the expected result of an improved LC circuit with
sharper attenuation with reduced parasitic impedance and circuit size. In
other words, this case involves the simple substitution of one known element
(Bobde's distributed LC circuit) for another (Shirani's lumped LC circuit),
yielding predictable results (sharper attenuation, reduced parasitic
impedance and circuit size). KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
401, 417 (2007) ("KSR").
Accordingly, we do not agree with Appellants that Shirani and Bobde
teach away from one another or the claimed invention. Specifically, we are
not persuaded the references criticize, discredit or discourage the
replacement of Shirani's lumped LC circuit with Bobde's distributed LC
circuit, particularly given Bobde's teaching of MOS (metal oxide
semiconductor) trenches to overcome the problems associated with prior
distributed LC circuits, so that advantages of lumped LC circuits can be
achieved along with the sharper attenuation possible with distributed LC
circuits. Properly considered, lumped and distributed LC circuits are merely
alternative or different designs as in Gurley and Fulton, supra. Bobde's
teachings, when combined with Shirani's, make it possible to achieve the
advantages of both types of circuits in a single distributed LC circuit.
We discern no teaching in these references which would have led a
skilled artisan in a divergent direction from the claimed invention. Id.
Instead, Bobde' s teaching of the disadvantages of prior distributed LC
circuits and how its invention overcomes those problems would have led a
skilled artisan toward replacing Shirani's lumped LC circuit with Bobde's
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distributed one to realize the benefit of sharper attenuation of ISI (inter-
symbol interference).
Accordingly, we conclude that Shirani does not teach away from
Bobde or the claimed invention.
Argument Regarding Alleged Failure of References to Disclose the Second
Signal Compensation Component Applied to the Intermediate Signal
Appellants argue
the DFE [Decision Feedback Equalizer] of Le-Ngoc is not
applying a second compensation component to the intermediate
signal, but rather a sliced signal output from the slicer (a specific
digitized sequence of bits selected by the slicer based on Viterbi
decoding algorithms). None of the cited references thus disclose
the claimed second signal compensation component applied to
the intermediate signal.
App. Br. 13 citing Le-Ngoc i-f 29.
We do not agree with Appellants' argument. As the Examiner finds,
"Le-Ngoc shows ... a feedback equalizer for equalizing the intermediate or
compensated or forward equalized signal ... " Ans. 5. Appellants offer no
persuasive reasoning why the output ofLe-Ngoc's DFE, which is subtracted
from the output of the FFE [feed-forward equalizer] (see Figures 1 Oa, 1 Ob
below), cannot be considered a "second signal compensation component" as
claimed since it serves to eliminate ISI from the output signal. See, e.g., Le-
Ngoc i-f 33. Figures lOa and lOb are illustrated below.
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Application 14/363,054
Figure lOa of Le-Ngoc illustrates a Decision Feedback Equalizer (DFE)
outputting a signal added to a forward equalized signal at an adder.
Figure lOb of Le-Ngoc illustrates a Decision Feedback Equalizer (DFE)
outputting a signal added to a forward equalized signal at an adder to
eliminate post-cursor ISL
The Examiner finds the output signal generated by Le-Ngoc's DFE
corresponds to the claimed "second signal compensation component"
applied to "the intermediate signal." Final Act. 10 and Ans. 3--4 citing Le-
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Ngoc i-fi-129, 30, Fig. 10. Appellants state the output ofLe-Ngoc's slicer is a
sliced signal, and appear to be arguing that this is distinguishable from the
claimed features. App. Br. 13. However, Appellants fail to explain why a
sliced signal output from the slicer does not teach or suggest the recited
"second signal compensation component." See 37 C.F.R.
§ 41.37(c)(l)(iv)("The arguments shall explain why the examiner erred as to
each ground of rejection contested by appellant").
Accordingly, we find Appellants' argument unpersuasive to show
Examiner error.
DECISION
We affirm the Examiner's decision to reject claims 1-10, 18-25 and
27 under 35 U.S.C. § 103(a).
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
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