DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This office action is in response to the Applicant’s communication filed on 12/10/2024. Claims 1 – 8 are pending in this application.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
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 ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1 – 8 are rejected under 35 U.S.C. 103 as being unpatentable over US 7623896 (Tanaka) in view of CN 115051659 (He) (references are given according to English translation) and US 20160294333 (Feng).
Regarding claim 1, Tanaka teaches “A radio-frequency module (shown in FIG 1 with corresponding description in col. 10 lines 50 – 56: a switch 42 (“a radio-frequency module”) which selects any one of the power source voltages V1 and V2 [and V3] and supplies thus selected power source voltage as a power source voltage of the power amplifier 10) comprising (please see Sketch 1 below which is based on Tanaka’s FIG 1 with the Examiner’s annotations showing position of the recited components.):
a first external connection terminal (although not explicitly emphasized by Tanaka, this corresponds to the connection to V1 FROM T1) electrically connected to a first external power supply (power source outputting V1 FROM T1);
a second external connection terminal (although not explicitly emphasized by Tanaka, this corresponds to the connection to V2 FROM T2) electrically connected to a second external power supply (power source outputting V1 FROM T1);
a first switch having a first end electrically connected to the first external connection terminal, and a second end electrically connected to a first connection point (“first switch” is a portion (or position) of the switch 42 which connects a common port (also corresponds to “a second end” and “a first connection point”) and V1 FROM T1 shown in solid line in Sketch 1);
a second switch having a first end electrically connected to the second external connection terminal, and a second end electrically connected to the first connection point (“second switch” is a portion (or position) of the switch 42 which connects a common port (also corresponds to “a second end” and “the first connection point”) and V2 FROM T2 shown in dashed line in Sketch 1)
(although “a second end” of the “first switch” is the same as that one of the “second switch”, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application to utilize a functionally equivalent switch comprising a plurality of individual SPST switches, as shown in Sketch 2 below, which would have “second end” of the first switch being different from the “second end” of the “second switch”. Also “the first connection point” is emphasized in Sketch 2. Implementing switch 42 as either of these designs is simply a matter of obvious design choice with predictable results);
a third external connection terminal electrically connected to the first connection point (marked as such in Sketches 1 and 2)…”
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Sketch 1
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Sketch 2
Tanaka does not disclose “a third switch having a first end electrically connected to a second connection point, the second connection point being between the second end of the second switch and the third external connection terminal, wherein a second end of the third switch is electrically connected to a first end of a first capacitor, wherein the second connection point is electrically connected to a first end of a second capacitor, wherein a second end of the first capacitor and a second end of the second capacitor are electrically connected to a first end of an inductor, and wherein a second end of the inductor is electrically connected to a reference potential.”
He teaches in paragraph 0039 that the power supply produces harmonics at its output which need to be filtered out.
In this respect, Feng in paragraph 0052, 0054 and 0061 – 0064 and FIG 1 – 2 teaches a switched harmonic termination (sometimes referred to as or including a harmonic trap filter) 108. The switched harmonic termination may provide a harmonic termination for one or more harmonics. Although disclosed by Feng as an improvement in the amplifier design, it would have been obvious to a person of ordinary skill in the art at the effective filing date, and based on the teaching of He, that the same harmonic trap filter may also be used to reduce harmonics at the output of other devices, such as power supplies, including in the system of Tanaka. This would have simply been an application of the known technique (harmonic trap filter) to the power supply technology with a reasonable expectation of success.
Additionally, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application that shown by Feng series connection between capacitors and switches may also be reversed so that the switch is in the upper portion of the respective circuit and capacitor is on the lower portion of the respective circuit. These variations are functionally equivalent.
Therefore, when the harmonic trap filter of Feng modified as explained in the previous paragraph is used in the system of Tanaka, the resulting circuit may look like the one shown in Sketch 3 below, which meets the limitations of the claim:
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Sketch 3
Alternatively, when functionally equivalent combination of plurality of SPST switches is used as switch 42 (as shown in Sketch 2 above), the resultant combination of Tanaka and Feng may look like the one shown in Sketch 4 below, which also meets the limitations of the claim:
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Sketch 4
Regarding claims 2 – 4, “wherein the first switch, the second switch, the third switch, the first capacitor, the second capacitor, and the inductor are in a single semiconductor device” (as in claim 2), “wherein the first switch, the second switch, the third switch, the first capacitor, and the second capacitor are in a single semiconductor device” (as in claim 3), “wherein the first switch, the second switch, the third switch, and the inductor are in a single semiconductor device” (as in claim 4), it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application to include all of the components recited by the claim in a single integrated circuit simply as design choice with predictable results, the results being reduction in space taken by components of the circuit when they are all integrated in a single package, reduction in costs associated with the assembly as well as improved repeatability and reliability of devices. Additionally, it has been held that the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice. In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965).
Regarding claims 5 – 8, Tanaka in combination with Feng teaches or fairly suggests “wherein, when the first switch is in an ON state (this would be the case when switch 42 connects to the power supply T1 producing V1 at its output), the third switch is in an OFF state (Feng in paragraph 0062 teaches that the harmonic termination circuits can be optimized for specific frequency bands. Moreover, the inclusion of switchable capacitors enables dynamic tuning of the harmonic termination circuits for different operational frequencies. Therefore, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application that specific state of the third switch (S1), such as “an OFF state” (or “an ON state”), would simply be a matter of design choice of which harmonic to trap and with which combination of capacitors. In this particular case, since it is power supply T1 is connected, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application to design the components of the harmonic trap filter including specific state of the third switch (S1) (or any other switches S2 … Sn) to reject the harmonics generated by this specific power supply),
wherein, when the second switch is in an ON state (this would be the case when switch 42 connects to the power supply T2 producing V2 at its output), the third switch is in an OFF state (Feng in paragraph 0062 teaches that the harmonic termination circuits can be optimized for specific frequency bands. Moreover, the inclusion of switchable capacitors enables dynamic tuning of the harmonic termination circuits for different operational frequencies. Therefore, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application that specific state of the third switch (S1), such as “an OFF state” (or “an ON state”), would simply be a matter of design choice of which harmonic to trap and with which combination of capacitors. In this particular case, since it is power supply T2 is connected, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application to design the components of the harmonic trap filter including specific state of the third switch (S1) (or any other switches S2 … Sn) to reject the harmonics generated by this specific power supply), and
wherein, when the first switch and the second switch are in an OFF state (this would be the case when switch 42 connects to the power supply T3 producing V3 at its output so that the switches connecting T1 and T2 are in off state (not explicitly shown in any of the sketches)), the third switch is in an ON state (Feng in paragraph 0062 teaches that the harmonic termination circuits can be optimized for specific frequency bands. Moreover, the inclusion of switchable capacitors enables dynamic tuning of the harmonic termination circuits for different operational frequencies. Therefore, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application that specific state of the third switch (S1), such as “an ON state” (or “an OFF state”), would simply be a matter of design choice of which harmonic to trap and with which combination of capacitors. In this particular case, since it is power supply T3 is connected, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application to design the components of the harmonic trap filter including specific state of the third switch (S1) (or any other switches S2 … Sn) to reject the harmonics generated by this specific power supply).”
Additionally, the state of any of the switches within the circuit represent the manner in which a claimed apparatus is intended to be employed.
However, claims 5 – 8 are for the “radio-frequency module”, thus being an apparatus claims. It should be emphasized that “apparatus claims must be structurally distinguishable from the prior art.” In re Danly, 263 F. 2d 844, 847, 120 USPQ 528, 531 (CCPA 1959) it was held that apparatus claims must be distinguished from prior art in terms of structure rather than function. In Hewlett-Packard Co. v Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990), the court held that: “Apparatus claims cover what a device is, not what it does” (emphases in original). To emphasize the point further, the court added: “An invention need not operate differently than the prior art to be patentable, but need only be different”. A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
The combined disclosure of Tanaka, He and Feng would have taught or at least fairly suggested all structural components claimed by instant application, therefore, apparatus claims 5 – 8 are rejected.
Claims 1 – 8 are alternatively rejected under 35 U.S.C. 103 as being unpatentable over US 20230111377 (Jang) in view of CN 115051659 (He) (references are given according to English translation) and US 20160294333 (Feng).
Regarding claim 1, Jang teaches “A radio-frequency module (shown in FIG 3 with corresponding description as power supply switch circuit 200) comprising:
a first external connection terminal (VCC1 in FIG 3) electrically connected to a first external power supply (first power supply circuit 100a in FIG 1);
a second external connection terminal (VCC2 in FIG 3) electrically connected to a second external power supply (second power supply circuit 100b in FIG 1);
a first switch (SW1 in FIG 3) having a first end electrically connected to the first external connection terminal (upper terminal of SW1 connecting to VCC1), and a second end electrically connected to a first connection point (lower terminal of SW1 connecting to the joint VT representing “a first connection point”);
a second switch (SW2 in FIG 3) having a first end electrically connected to the second external connection terminal (upper terminal of SW2 connecting to VCC2), and a second end electrically connected to the first connection point (lower terminal of SW2 connecting to the joint VT representing “the first connection point”);
a third external connection terminal electrically connected to the first connection point (not explicitly shown in FIG 3 but implicitly present as connection from the joint VT to T_VCC)…”
Jang does not disclose “a third switch having a first end electrically connected to a second connection point, the second connection point being between the second end of the second switch and the third external connection terminal, wherein a second end of the third switch is electrically connected to a first end of a first capacitor, wherein the second connection point is electrically connected to a first end of a second capacitor, wherein a second end of the first capacitor and a second end of the second capacitor are electrically connected to a first end of an inductor, and wherein a second end of the inductor is electrically connected to a reference potential.”
He teaches in paragraph 0039 that the power supply produces harmonics at its output which need to be filtered out.
In this respect, Feng in paragraph 0052, 0054 and 0061 – 0064 and FIG 1 – 2 teaches a switched harmonic termination (sometimes referred to as or including a harmonic trap filter) 108. The switched harmonic termination may provide a harmonic termination for one or more harmonics. Although disclosed by Feng as an improvement in the amplifier design, it would have been obvious to a person of ordinary skill in the art at the effective filing date, and based on the teaching of He, that the same harmonic trap filter may also be used to reduce harmonics at the output of other devices, such as power supplies, including in the system of Jang. This would have simply been an application of the known technique (harmonic trap filter) to the power supply technology with a reasonable expectation of success.
Additionally, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application that shown by Feng series connection between capacitors and switches may also be reversed so that the switch is in the upper portion of the respective circuit and capacitor is on the lower portion of the respective circuit. These variations are functionally equivalent.
Therefore, when the harmonic trap filter of Feng modified as explained in the previous paragraph is used in the system of Jang, the resulting circuit may look like the one shown in Sketch 5 below, which meets limitations of the claim:
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Regarding claims 2 – 4, “wherein the first switch, the second switch, the third switch, the first capacitor, the second capacitor, and the inductor are in a single semiconductor device” (as in claim 2), “wherein the first switch, the second switch, the third switch, the first capacitor, and the second capacitor are in a single semiconductor device” (as in claim 3), “wherein the first switch, the second switch, the third switch, and the inductor are in a single semiconductor device” (as in claim 4), it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application to include all of the components recited by the claim in a single integrated circuit simply as design choice with predictable results, the results being reduction in space taken by components of the circuit when they are all integrated in a single package, reduction in costs associated with the assembly as well as improved repeatability and reliability of devices. Additionally, it has been held that the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice. In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965).
Regarding claims 5 – 8, “wherein, when the first switch is in an ON state, the third switch is in an OFF state, wherein, when the second switch is in an ON state, the third switch is in an OFF state, and wherein, when the first switch and the second switch are in an OFF state, the third switch is in an ON state”, the state of any of the switches within the circuit represent the manner in which a claimed apparatus is intended to be employed.
However, claims 5 – 8 are for the “radio-frequency module”, thus being an apparatus claims. It should be emphasized that “apparatus claims must be structurally distinguishable from the prior art.” In re Danly, 263 F. 2d 844, 847, 120 USPQ 528, 531 (CCPA 1959) it was held that apparatus claims must be distinguished from prior art in terms of structure rather than function. In Hewlett-Packard Co. v Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990), the court held that: “Apparatus claims cover what a device is, not what it does” (emphases in original). To emphasize the point further, the court added: “An invention need not operate differently than the prior art to be patentable, but need only be different”. A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
The combined disclosure of Jang, He and Feng would have taught or at least fairly suggested all structural components claimed by instant application, therefore, apparatus claims 5 – 8 are rejected.
Conclusion
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/GENNADIY TSVEY/ Primary Examiner, Art Unit 2648
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