Ex Parte Boe et al

Patent Trial and Appeal Board

Jul 13, 2016

12825193 (P.T.A.B. Jul. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/825, 193 06/28/2010
92899 7590 07115/2016
Lewis Roca Rothgerber Christie LLP
P.O.Box 29001
Glendale, CA 91209-9001
FIRST NAMED INVENTOR
EricN. Boe
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.
65511/R691 (09W081) 1247
EXAMINER
SOROWAR, GOLAM
ART UNIT PAPER NUMBER
2649
NOTIFICATION DATE DELIVERY MODE
07/15/2016 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):
pto@lrrc.com
pair_cph@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC N. BOE, WILLIAM L. LEWIS,
and JOHN FRASCHILLA
Appeal2014--007968
Application 12/825, 193
Technology Center 2600
Before DAVID M. KOHUT, CATHERINE SHIANG, and
KAMRAN JIVANI, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 14--22, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Introduction
The present invention relates to radio frequency transmitting and
receiving systems. See generally Spec. 1. Claim 14 is exemplary:
14. A radio frequency transmit/receive system, comprising:
an exciter capable of producing a radio frequency
reference signal;
Appeal2014-007968
Application 12/825, 193
a transmit side comprising at least one transmitting signal
path comprising an antenna radiating element, which
transmitting signal path and antenna radiating element are
usable for transmitting operational signals and for transmitting
the radio frequency reference signal;
a receive side comprising at least one receiving signal
path comprising an antenna receiving element, which receiving
signal path and antenna receiving element are usable for
receiving operational signals and for receiving the radio
frequency reference signal transmitted by the transmit side;
wherein at least one of the transmit side or the receive
side comprises a plurality of said transmitting signal paths or
said receiving signal paths, respectively, as subject signal paths,
and
wherein at least one antenna receiving element is
disposed in proximity to at least one antenna radiating element
permitting mutual coupling through the air or through a vacuum
between the transmit side and the receive side;
a signal receiver capable of acquiring a signal; and
analysis circuitry configured to determine, based on the
radio frequency reference signal received via mutual coupling,
at least one time delay characteristic of signal propagation of
the reference signal through at least one of the subject signal
paths.
Epstein
Ross et al.
Miyatani
Arayashiki
Lieu wen
Cooper et al.
Takano
Khandani
References and Rejections
us 3,882,393
us 4,150,375
US 2002/0128007 Al
US 7,212,791 B2
US 2008/0095286 Al
US 2009/0267824 Al
US 2010/0067588 Al
US 7,817,641 Bl
2
May 6, 1975
Apr. 17, 1979
Sept. 12, 2002
May 1, 2007
Apr. 24, 2008
Oct. 29, 2009
Mar. 18, 2010
Oct. 19, 2010
Appeal2014-007968
Application 12/825, 193
Claim 22 stands rejected under 35 U.S.C. § 112(a), first paragraph, as
failing to comply with the written description requirement with respect to the
claim limitation "the time delay characteristic is substantially independent of
frequency." See Final Act. 2-3.
Claims 14 and 22 stand rejected under 35 U.S.C. § 102 (a) as being
anticipated by Takano. See Final Act. at 3---6.
Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Takano and Ross. See Final Act. at 7.
Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Takano and Khandani. See Final Act. at 8.
Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Takano and Lieuwen. See Final Act. at 9.
Claim 18 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Takano and Cooper. See Final Act. at 9-10.
Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Takano and Miyatani. See Final Act. at 10-11.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Takano and Epstein. See Final Act. at 11-12.
Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Takano and Arayashiki. See Final Act. at 12-13.
PRINCIPLES OF LAW
"[W]hen the prior art teaches away from combining certain known
elements, discovery of a successful means of combining them is more likely
to be nonobvious." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)
(citation omitted).
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Application 12/825, 193
"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
the path that was taken by the applicant." In re Kahn, 441F.3d977, 990
(Fed. Cir. 2006) (citation omitted).
The "mere disclosure of alternative designs does not teach away" and
"just because better alternatives exist in the prior art does not mean that an
inferior combination is inapt for obviousness purposes." In re Mouttet, 686
F.3d 1322, 1334 (Fed. Cir. 2012) (citations omitted).
Although a reference that teaches away is a significant factor to
be considered in determining unobviousness, the nature of the
teaching is highly relevant, and must be weighed in substance.
A known or obvious composition does not become patentable
simply because it has been described as somewhat inferior to
some other product for the same use.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
ANALYSIS
The Rejection under 35 U.S. C. § 112, first paragraph
Because Appellants do not contest the merits of the rejection, we
summarily sustain the Examiner's rejection of claim 22 under 35 U.S.C.
§ 112, first paragraph, with respect to the claim limitation "the time delay
characteristic is substantially independent of frequency," because the
Specification does not reasonably convey to skilled artisans that Appellants
possessed the claimed invention as of the filing date. See Final Act. 2-3.
The Anticipation Rejection (Claim 14)
On this record, we find the Examiner did not err in rejecting claim 14.
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Application 12/825, 193
We disagree with Appellants' arguments, and agree with and adopt
the Examiner's findings and conclusions in (i) the action from which this
appeal is taken and (ii) the Answer to the extent they are consistent with our
analysis below. We provide the following points.
Issue 1
Appellants contend the cited Takano portions do not disclose
"wherein at least one antenna receiving element is disposed in proximity to
at least one antenna radiating element permitting mutual coupling through
the air or through a vacuum between the transmit side and the receive side,"
as recited in claim 14 (emphasis added). See App. Br. 3-6; Reply Br. 2-5.
Appellants have not persuaded us that the Examiner erred. It is well
settled that:
[The USPTO] satisfies its initial burden of production by
adequately explain[ing] the shortcomings it perceives so that
the applicant is properly notified and able to respond. In other
words, the PTO carries its procedural burden of establishing a
prima facie case when its rejection satisfies 35 U.S.C. § 132, in
notify[ing] the applicant ... [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (internal citations and
quotation marks omitted). Specifically, the Jung Court finds:
the examiner's discussion of the theory of invalidity
(anticipation), the prior art basis for the rejection (Kalnitsky),
and the identification of where each limitation of the rejected
claims is shown in the prior art reference by specific column
and line number was more than sufficient to meet this burden.
Jung, 637 F.3d at 1363 (emphasis added).
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Here, the Examiner's rejection clearly satisfies the requirement of
35 U.S.C. § 132 to establish a prima facie case of unpatentability. The
rejection identifies: the theory of unpatentability (anticipation); the prior art
basis for the rejection (Takano ); where each limitation of claim 1 is shown in
the references by paragraph and/or figure numbers, plus additional
explanation on how the prior art features are mapped to the claim;
specifically, the rejection identifies where the disputed claim limitation is
shown in Takano by specific figure and paragraph numbers, plus the
additional explanation of why Takano discloses the claim limitation. See
Final Act. 3---6; Ans. 2--4, 13-21. In short, similar to the Examiner in Jung,
the Examiner has done "more than sufficient to meet this burden [of
establishing the prima facie case]." The burden then shifts to Appellants to
rebut the Examiner's case.
In order to rebut a prima facie case of unpatentability, Appellants
must distinctly and specifically point out the supposed Examiner errors, and
the specific distinctions believed to render the claims patentable over the
applied reference. See 37 C.F.R. § 1.111 (b ).
Appellants have not carried the burden.
First, Appellants contend:
FIGS. 1 and 2 of Takano do not disclose "mutual coupling
between transmitting and receiving radiating antennas" as
asserted in the Office action. Instead Appellants submit that a
person of ordinary skill in the art understand that the arrows
shown in FIGS. 1 and 2 are merely schematic diagrams to
provide a conceptual understanding of one embodiment of
calibration in Takano.
App. Br. 3; see also Reply Br. 2, 5.
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Appellants' unsupported attorney argument is unpersuasive of error.
In contrast, consistent with Takano's description of a wireless
communication apparatus (see, e.g., Takano, Title, i-fi-f l-2, 36-39) and the
normal function of antennas, the Examiner finds Takano' s Figures 1 and 2
show an arrow in the air between the transmission antenna 0 and the
reception antenna 1, and a wirelss signal is permitted to transmit through the
arrow-from the transmission antenna 0 to the reception antenna 1. See
Ans. 15-21 (citing Takano, Figs. 1-2, i-fi-175, 78). Therefore, the Examiner
finds Takano discloses permitting mutual coupling through the air between
the transmission antenna 0 (the claimed "transmission side") and the
reception antenna 1 (the claimed "receive side"). See Ans. 15-21. Because
Appellants fail to provide sufficient evidence to support their attorney
argument and rebut the Examiner's findings, Appellants fail to show error in
the Examiner's findings. See In re Baxter Travenol Labs., 952 F.2d 388,
391 (Fed. Cir. 1991) ("It is not the function of this court [or this Board] to
examine the claims in greater detail than argued by an appellant, looking for
[patentable] distinctions over the prior art.").
Second, Appellants' arguments regarding Takano' s paragraph 18 are
unpersuasive for the reasons discussed below. In particular, Appellants'
following assertion is unpersuasive:
the "self-calibration" (or "self-calibrating") antenna described
in paragraph [0018] of Takano discloses that "a portion
between each of a plurality of antenna elements is short-
circuited'' and therefore the "self-calibration" method does not
disclose [the disputed claim limitation and] ... determine,
based on the radio frequency reference signal received via
mutual coupling ....
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Application 12/825, 193
[P]aragraph [0018] of Takano notes that the short circuit allows
calibration to be performed "without being affected by radio
wave propagation environments" and therefore Takano does not
appear to perform (and further appears to discourage)
calibration using "mutual coupling through the air or through a
vacuum between the transmit side and the receive side[.]"
App. Br. 4--5; see also Reply Br. 5.
Takano's paragraph 18, which is in the "Background Art" section,
states "[a]s an example, an adaptive array antenna such as described
hereinbelow has been proposed (see Patent Publication 2, for example).
According to the antenna, a portion between each of a plurality of antenna
elements is short-circuited . ... " Takano i-f 18 (emphases added).
Therefore, Takano's paragraph 18 merely describes an example of a prior
art array antenna in Patent Publication 2. In contrast, Takano describes
Figures 1 and 2 in the "Disclosures of the Invention" section. See Takano 3,
5. Because Appellants have not explained persuasively why an exemplary
feature of the prior art in Patent Publication 2 (paragraph 18) must be
incorporated into Takano's invention (Figures 1 and 2), Appellants have not
shown how Takano's paragraph 18 is relevant to rebutting the Examiner's
findings based on Takano's invention. See Ans. 15.
Third, Appellants' argument that "paragraph [0017] of Takano
indicates that 'The present inventors contemplates that the self-calibration
enabling the calibration to be completed within the communication
apparatus is preferable"' (App. Br. 5; see also Reply Br. 2) is not on point.
Takano's paragraphs 16 and 17 state (emphases added):
In the self-calibration in which the communication
apparatus itself compensates for the transfer function ... .
According to the device-external calibration .. .
calibration antennas are necessary in addition to the array
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antenna . . . . The present inventors contemplates that the self-
calibration enabling the calibration to be completed within the
communication apparatus is preferable.
Therefore, Takano's paragraph 17 merely states the inventors'
preference for using the array antenna-the communication apparatus itself,
such as the array antenna in Figure 1 or 2, without the additional calibration
antennas. As a result, Appellants' argument that Takano's Figures 1 and 2
merely illustrate the abstract concept of calibration (Reply Br. 2), and "it
appears that the first sentence of paragraph [0078] discloses the use of a
looping back device after the antenna switch to ensure that any
characteristics of the antenna itself be accounted for in the calibration
process" (Reply Br. 4) are unpersuasive because they are based on
Appellants' incorrect interpretation of paragraph 1 7. In any event,
Appellants have not explained how the above argument about Takano' s
paragraph 78 rebuts the Examiner's findings. Likewise, Appellants have not
explained how duplicating Takano's paragraph 78 (App. Br. 5) rebuts the
Examiner's findings.
Fourth, Appellants' teaching away argument (App. Br. 6; Reply Br. 2)
is unpersuasive, as Appellants fail to provide analysis under the operative
case law. As discussed above, Takano's paragraph 17 merely states the
inventors' preference for using the communication apparatus itself-without
the additional calibration antennas, and Appellants fail to establish the
relevancy of Takano's paragraph 18 (an example in prior art) to the
Examiner's findings (based on Takano's invention). In short, Appellants fail
to show one skilled in the art "would be discouraged from following the path
set out in the reference, or would be led in a direction divergent from the
path that was taken by the applicant." Kahn, 441 F.3d at 990.
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Fifth, Appellants argue Takano defines "propagation path"
specifically and, as a result, "the discussion of paragraph [007 5] of Takano
that 'then the signal is transmitted to a propagation path from the antenna'
merely appears to refer to a propagation path of an associated receiving
antenna." Reply Br. 3. Appellants' argument is unpersuasive because
Takano's paragraph 16 merely "uses the term" (Reply Br. 3) propagation
path as an example, and such exemplary usage does not constitute a specific
definition. Therefore, Appellants' argument is unpersuasive of error.
Further, Appellants have not established Takano's exemplary usage of the
propagation path requires Appellants' argued definition.
Finally, Appellants do not advance any substantive argument against
the Examiner's finding that Takano discloses "at least one antenna receiving
element is disposed in proximity to at least one antenna radiating element."
See Ans. 18-19 (citing Takano, Fig. 1). Appellants' general assertion that
the cited Takano portions "do not appear to disclose" that claim limitation
(App. Br. 3) and "[ n ]either of the two types of calibration disclosed in
Takano appears to satisfy the limitations of claim 14" (App. Br. 4) is
unpersuasive, because Appellants do not explain why that is the case, let
alone show error in the Examiner's rejection. See 37 C.F.R.
§ 41.37(c)(l)(iv) ("A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim");
see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that "the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art").
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Application 12/825, 193
Because none of Appellants' arguments is persuasive, Appellants
have not carried the burden of rebutting the Examiner's prima facie case of
unpatentability. Therefore, Appellants have not persuaded us that the
Examiner erred.
Issue 2
Appellants contend:
because the "device-external" calibration method uses a
"calibration transmitter/receiver in addition to the adaptive
array antenna communication apparatus" as discussed in
paragraph [0015] of Takano, the "device-external" calibration
method does not disclose:
and
a transmit side comprising at least one transmitting signal
path comprising an antenna radiating element, which
transmitting signal path and antenna radiating element
are usable for transmitting operational signals and for
transmitting the radio frequency reference signal
a receive side comprising at least one receiving signal
path comprising an antenna receiving element, which
receiving signal path and antenna receiving element are
usable for receiving operational signals and for receiving
the radio frequency reference signal transmitted by the
transmit side
as recited in claim 14 because the "adapted antenna array
communication apparatus" described in the "device-external"
calibration method is not disclosed as being usable for
transmitting a reference signal.
App. Br. 4.
Appellants' arguments are not directed toward the Examiner's
findings because the Examiner does not cite Takano' s paragraph 15 or the
"device-external" calibration method for teaching the italicized claim
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Application 12/825, 193
limitations. See Ans. 3, 13. Instead, the Examiner cites Takano's paragraph
6 and 16 (Ans. 3), which Appellants fail to critique with respect to the
italicized claim limitations. Therefore, Appellants fail to show error in the
Examiner's findings. See Baxter Travenol Labs., 952 F.2d at 391.
Accordingly, we sustain the Examiner's rejection of claim 14.
The Anticipation Rejection (Claim 22) and
Obviousness Rejections (Claims 15-21)
Appellants argue claims 15-22 "each incorporate all the terms and
limitations of claim 14. In addition, claims 15-22 contain other features
which further patentably distinguish these claims over the cited references."
App. Br. 6.
As discussed above, Appellants' arguments directed toward claim 14
are unpersuasive. Further, Appellants' conclusory assertion that "claims 15-
22 contain other features which further patentably distinguish these claims
over the cited references" (App. Br. 6) lacks supporting analysis and is;
therefore, unpersuasive of error. Appellants fail to identify what the
"patentably distinguish[able]" features are, let alone show such features are
indeed patentably distinguishable.
Therefore, we sustain the Examiner's rejection of dependent claims
15-22.
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DECISION
We affirm the Examiner's decision (i) rejecting claim 22 under
35 U.S.C. § 112, first paragraph, (ii) rejecting claims 14 and 22 under
35 U.S.C. § 102, and (iii) rejecting claims 15-21under35 U.S.C. § 103.
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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