Ex Parte Boe et alDownload PDFPatent Trial and Appeal BoardJul 13, 201612825193 (P.T.A.B. Jul. 13, 2016) Copy Citation 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). 3 Appeal2014-007968 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. 4 Appeal2014-007968 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). 5 Appeal2014-007968 Application 12/825, 193 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. 6 Appeal2014-007968 Application 12/825, 193 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 .... 7 Appeal2014-007968 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 8 Appeal2014-007968 Application 12/825, 193 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. 9 Appeal2014-007968 Application 12/825, 193 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"). 10 Appeal2014-007968 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 11 Appeal2014-007968 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. 12 Appeal2014-007968 Application 12/825, 193 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 13 Copy with citationCopy as parenthetical citation