Takeaway: In an anticipation rejection of a claim to an electrical circuit, the Examiner relied on a circuit diagram and asserted it to be equivalent to the diagram used in the reference. The Applicant appealed and argued that the Examiner's reliance on this figure was improper. The Board affirmed the anticipation rejection after finding that the Examiner's diagram was equivalent and disclosed the claim limitation at issue. (Ex parte Cogdill, PTAB 2010.)
Ex parte Cogdill
Appeal 2010005510; Appl. No. 10/655,964; Tech. Center 2800
Decide June 27, 2010
The application was directed to circuitry for memory modules. A representative claim on appeal read:
1. A circuit for a memory module address bus comprising:The Examiner rejected the originally filed claims as anticipated by Figure 3 of the Johnson reference (shown below).
a transmission line comprising a dampening impedance between a driver and a branch point of said transmission line; and
a parallel termination impedance having one end coupled to said transmission line between said series dampening impedance and said branch point,
wherein said parallel termination impedance is on the same side of any memory module as said driver;
said transmission line having branches from said branch point,
wherein ones of said branches are coupled to at least one memory module interface.
|Johnson Fig. 3|
In response, the Applicant amended to further describe the two claimed impedance element as "series" and "parallel" and also added the "same side" limitation. The Applicant argued that Fig. 3 of Johnson did not disclose the parallel impedance as claimed.
The Examiner maintained the rejection in a Final Office Action, and provided a "Fig. 3b" (shown below) which the Examiner described as an "equivalent circuit."
The parallel termination impedance (326) is between the series dampening impedance and the branch point (star node) and the parallel termination impedance (326 - where 326 is parallel in reference to Vtt and star node) is on the same side (below memory modules 302-308) as the driver (312).The Applicant appealed. In the Appeal Brief, the Applicant acknowledged that the rejection was based on the Examiner's "Fig 3b," allegedly an equivalent circuit. But the Applicant's argument addressed only Johnson's Fig. 3.
More specifically, the Applicant argued that Johnson's Fig. 3 disclosed a termination impedance that was NOT located as claimed, since that diagram showed "a parallel terminal impedance 326 having one end coupled to a branch point, while the other end is coupled to the termination voltage" (emphasis in original). In contrast, the Applicant argued, the appealed claim required the parallel termination impedance to have "one end coupled to a transmission line between said series dampening impedance and said branch point, wherein said parallel termination impedance is on the same side of any memory module as said driver" (emphasis in original).
In the Answer, the Examiner maintained his position. He also noted that the rejection relied on the Fig. 3b equivalent circuit rather than Fig. 3 in Johnson.
The Applicant filed a Reply Brief. In the Reply Brief, the Applicant argued that the Fig. 3b used by the Examiner was not part of the Johnson reference, and was also missing lead-in transmission line 314. The Applicant also pointed to statements in Johnson about an advantage of the relative position of the series impedance and the terminating impedance's branch point. The Applicant then argued that the configuration in the Examiner's Fig. 3b would defeat Johnson's objective.
The Board affirmed the rejection, based on a finding that the Examiner's reliance on the "equivalent circuit" of Fig. 3b was appropriate.
We agree with the Ex that this depiction of Johnson's Fig 3 is electrically equivalent to Johnson's description. Appellant's argument that Fig. 3b is not part of Johnson's disclosure may be literally accurate but is not relevant. Fig 3b is merely another way of drawing the components of Johnson's invention, electrically connected identically to the manner shown in Johsnon Fig 3. Electrical circuit diagrams are intended to illustrate the manner in which electrical and electronic components are connected to one another. They are not necessarily intended as an exact, to-scale representaiton of the layout of the actual circuit.My two cents: I haven't run across this sort of "drawing equivalence" before. I have run across plenty of cases where the Examiner has annotated a drawing, but that's usually about further explaining what's already in the drawing, e.g., by adding the text "lever" to show that reference number 42 allegedly corresponds to the claimed lever. I've seen a few cases where the Examiner draws a box around something in the drawing in order to explain that, e.g., the components within the box allegedly correspond to claimed assembly 42.
Maybe what happened here with the "equivalent" drawing is more like an Examiner asserting that the "lever" in the reference corresponds to the "member" in the claim. It well-settled law that the reference doesn't have to use the same terminology as the claim in order to anticipate. Is redrawing the circuit diagram much different than substituting the term "lever" in the reference with the word "member"? That sounds weird, because Examiners don't literally introduce paragraph [0043B] with the substituted text in order to make this point. Instead, the Examiner writes something like
Johnson anticipates claim 1 as follows: a member (lever 42 in FIG. 1); ...
Was the Examiner's made up Fig. 3B just a way for him to better explain how he was reading Johnson's Fig. 3?
In the end, the Applicant here didn't hit the Examiner's findings/assertions head on, and would have been better served by clearly taking one of three positions. One, argue that, as a point of law, the Examiner is not allowed to introduce his own "equivalent" drawing. Two, explain why the Examiner's figure was not in fact equivalent. Three, argue why the equivalent circuit did not teach the claimed element. Not hitting the Examiner's position head on was a fatal mistake here.
Perhaps the Applicant's argument in the Reply Brief about Johnson's objective was meant to be an argument against equivalence. If so, the Applicant should have made that more clear, because an argument about objectives of the reference may go to non-obviousness, but is irrelevant to an anticipation rejection.