Ex Parte Shintani et al

Board of Patent Appeals and Interferences

Jul 26, 2012

10811036 (B.P.A.I. Jul. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/811,036 03/26/2004 Peter Rae Shintani SOA-0500 9541
23353 7590 07/26/2012
RADER FISHMAN & GRAUER PLLC
LION BUILDING
1233 20TH STREET N.W., SUITE 501
WASHINGTON, DC 20036
EXAMINER
LONSBERRY, HUNTER B
ART UNIT PAPER NUMBER
2427
MAIL DATE DELIVERY MODE
07/26/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PETER RAE SHINTANI and ROBERT NOEL BLANCHARD
____________

Appeal 2009-015268
Application 10/811,036
Technology Center 2400
____________

Before ERIC S. FRAHM, KRISTEN L. DROESCH and
TREVOR M. JEFFERSON, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.
DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants seek review under 35 U.S.C. § 134(a) of a final rejection
of claims 1-62, all of the claims pending on appeal. We have jurisdiction
under 35 U.S.C. § 6(b). We AFFIRM-IN-PART.
BACKGROUND
Appellants’ disclosed invention relates to a system and method for
controlling a television antenna including an amplifier circuit mounted with
and connected to the television antenna, and a control line. The control line
is used for controlling the gain of the amplifier circuit. Abs.; Spec. ¶ 0004.
Claims 1, 7, 9, 10 and 15 are illustrative and are reproduced below
(disputed limitations in italics):
1. A system for controlling an exterior television antenna
comprising:
an amplifier circuit mounted on a building exterior with
said exterior television antenna and connected to said television
antenna; and
a control line extending into an interior of said building,
said control line being connected to said amplifier circuit for
controlling a gain of said amplifier circuit.

7. The system of claim 6, wherein said control line
carries a control signal which is a direct current (DC) voltage
signal comprising a voltage to power said amplifier circuit plus
an additional voltage that varies to indicate a desired gain of
said amplifier circuit.

9. The system of claim 1, wherein said amplifier circuit
comprises a voltage controlled amplifier, wherein said
amplifier receives power and a voltage controlling a gain of
said amplifier over said control line.

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10. The system of claim 1, wherein said amplifier circuit
comprises:
an attenuator connected to and controlled by said control
line; and
an amplifier,
wherein said attenuator selectively attenuates a signal
from said antenna before providing that signal to said amplifier.

15. The system of claim 1, wherein:
said exterior television antenna comprises two or more
antenna elements differently oriented;
said amplifier circuit further comprises two or more
amplifiers connected to respective antenna elements; and
said control line provides independent control signals to
said amplifiers to selectively adjust a gain of each of said
amplifiers to adjust a polarity of said antenna.

Rejections
Claims 1-16, 18-32, 34-45 and 47-61 stand rejected under 35 U.S.C.
§ 102(e) as anticipated by Stewart (US 2004/0252243 A1).
Claims 17, 33, 46 and 62 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Stewart and Flynn (US 6,069,462).
ISSUES
Did the Examiner err in finding that Stewart describes:
(1) “a control line extending into an interior of said building, said
control line being connected to said amplifier circuit for controlling a gain of
said amplifier circuit,” as recited in claim 1 and similarly recited in
independent claims 18 and 47;
(2) “a control means for controlling a gain of said amplifying means,
said control means comprising a receiving device inside said building,” as
recited in independent claim 34;

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(3) “said television outputs said control signal based on a channel
being tuned by said television,” as recited in dependent claim 3;
(4) a “control line [that] carries a control signal which is a direct
current (DC) voltage signal comprising a voltage . . . plus an additional
voltage that varies,” as recited in dependent claim 7;
(5) “said amplifier circuit comprises a voltage controlled amplifier,”
as recited in dependent claim 9;
(6) “said amplifier circuit comprises: an attenuator,” as recited in
dependent claim 10; and
(7) “said control line provides independent control signals to said
amplifiers,” as recited in dependent claim 15?
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments in the Appeal Brief presented in response to the Final Office
Action and Appellants’ arguments in the Reply Brief presented in response
to the Answer. We disagree with Appellants’ conclusions regarding claims
1-6, 8, 13, 14, and 17-62. However, we agree with Appellants’ conclusions
addressing claims 7, 9, 10-12, 15 and 16. We highlight and address specific
findings and arguments for emphasis as follows.
Claims 1, 2, 4, 6, 8, 13, 14 and 17-33
Claims 1, 2, 4, 6, 8, 13, 14 and 17-33 stand or fall together as a group
since Appellants do not present arguments substantively addressing the
limitations of independent claim 18 or dependent claims 2, 4, 6, 8, 13, 14, 17
and 19-33. See 37 C.F.R. § 41.37(c)(1)(vii). Claim 1 is representative of the
group. Id.

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Appellants assert that claim 1 recites “an amplifier circuit mounted on
a building exterior with said exterior television antenna” and argue that the
amplifier has a variable gain that is controlled with “a control line extending
into an interior of said building.” App. Br. 9; Reply Br. 4. Appellants argue
that Stewart does not describe, teach or suggest this subject matter because:
(1) Stewart does not mention, teach or suggest a control line that controls the
gain of an amplifier circuit; and (2) there is no teaching or suggestion in
Stewart that the coax cable 70 is utilized to control the gain of an amplifier
circuit. App. Br. 9-11; Reply Br. 4-5, 7. Appellants further argue that the
Examiner’s interpretation of the disputed limitation is unreasonable and
assert that one with ordinary skill in the art would understand that the
claimed control line is a line that is configured or used to deliver or carry a
control signal or command that controls the gain of the amplifier device.
Reply Br. 5-7.
Appellants’ initial arguments are unpersuasive since they are not
commensurate in scope with the claim limitations. Claim 1 does not recite
that the amplifier has a variable gain that is controlled with a control line,
that the control line controls the gain of an amplifier circuit, or that the
control line is used to control the gain of the amplifier circuit. Appellants’
arguments are also unpersuasive because Appellants do not direct us to
objective evidence to demonstrate that one with ordinary skill in the art
would understand that the claimed control line for controlling the gain of an
amplifier circuit is a line used to deliver a control signal or command to
control the amplifier. Argument of counsel cannot take the place of evidence

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lacking in the record. Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977);
see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Instead, the recitation in claim 1 “for controlling a gain of said
amplifier circuit” is a statement of intended use or purpose. The “control line
extending into an interior of said building . . . connected to said amplifier
circuit” can be utilized for other purposes or uses besides controlling the
gain of the amplifier circuit as recited in claim 1. When the structural
limitations are all found in the prior art, the absence of a disclosure in the
prior art relating to function does not defeat the finding of anticipation or
determination of obviousness. “It is well settled that the recitation of a new
intended use for an old product does not make a claim to that old product
patentable.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)
(“structure will be used to dispense popcorn does not have patentable weight
if the structure is already known, regardless of whether it has ever been used
in any way in connection with popcorn”). The Examiner finds, and we agree,
that Stewart describes an amplifier circuit 14 mounted on a building 18
exterior with an exterior television antenna 12 and connected to the
television antenna, and a control line 70 extending into an interior of the
building 18 and connected to the amplifier circuit 14. Ans. 3 (citing Stewart
Figs. 1, 6-8; ¶¶ 0028, 0033, 0049). Accordingly, the statement of intended
purpose or use for the control line is not entitled to patentable weight since it
does not patentably distinguish the structure of the control line over the
applied prior art.

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For all these reasons, we sustain the rejections of claims 1, 2, 4, 6, 8,
13, 14 and 18-32 as anticipated by Stewart and claims 17 and 33 as
unpatentable over Stewart and Flynn.
Claims 3 and 5
Claim 3 ultimately depends from claim 1 and recites: “wherein said
television outputs said control signal based on a channel being tuned by said
television.” Claim 5 recites substantially similar subject matter as claim 3.
Appellants argue that by way of the dependency on claim 1, the
recited control signal specifically controls the gain of an amplifier circuit.
App. Br. 14. Appellants argue that Stewart does not describe, teach or
suggest a control signal that controls the gain of an amplifier circuit being
based on a channel being tuned by a television. Id.
We are unpersuaded by Appellants’ arguments. As explained before
addressing claim 1, the recitation “for controlling a gain of said amplifier
circuit” in claim 1 is a statement of intended use or purpose and is not
entitled to patentable weight. Additionally, the recitation in intervening
dependent claim 2 of “to control said amplifier circuit” is also a statement of
intended use or purpose. The Examiner finds, and we agree, that Stewart
describes a television that outputs control signals based on a channel being
tuned by the television. Ans. 4 (citing Stewart ¶ 0027). Accordingly, the
statements of intended purpose or use for the control line and control signals
are not entitled to patentable weight since the statements do not patentably
distinguish the control line and control signals over the applied prior art.
For these reasons, we sustain the rejection of dependent claims 3 and
5 as anticipated by Stewart.

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Claim 7
Claim 7 ultimately depends from claim 1 and recites “said control line
carries a control signal which is a direct current (DC) voltage signal
comprising a voltage to power said amplifier circuit plus an additional
voltage that varies to indicate a desired gain of said amplifier circuit.”
We note that the recitations “to power said amplifier circuit” and “to
indicate a desired gain of said amplifier circuit” are statements of intended
use. Thus, claim 7 merely requires the “control line carries a control signal
which is a direct current (DC) voltage signal comprising a voltage . . . plus
an additional voltage that varies.” The Examiner directs attention to
Stewart’s description at paragraph 0033 and Figures 6-8 for meeting the
limitations of claim 7. Ans. 4-5, 16-17.
We agree with Appellants’ argument that Stewart does not describe
the claimed DC voltage plus an additional voltage that varies. App. Br. 15;
Reply Br. 10-11. Although Stewart describes that power may be supplied via
the connection (i.e., coaxial cable 70) between the distribution area 18 and
the television signal processor (TSP) 14 (Stewart ¶¶ 0033, 0054), the
Examiner does not direct us to, and Stewart is silent as to, the control line
carrying a control signal which is a DC voltage signal plus an additional
voltage that varies.
For this reason, we cannot sustain the Examiner’s rejection of
dependent claim 7 as anticipated by Stewart.
Claim 9
Claim 9 ultimately depends from claim 1 and recites “said amplifier
circuit comprises a voltage controlled amplifier.” The Examiner directs

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attention to Stewart’s description at paragraph 0033 and Figures 6-8 for
meeting the limitations of claim 9. Ans. 5, 17.
We agree with Appellants’ argument that Stewart does not describe a
voltage controlled amplifier. App. Br. 16; Reply Br. 11. Although Stewart
describes that power may be supplied via the connection (i.e., coaxial cable
70) between the distribution area 18 and the television signal processor
(TSP) 14 (Stewart ¶¶ 0033, 0054), the Examiner does not direct us to, and
Stewart is silent as to, the amplifier circuit comprising a voltage controlled
amplifier.
For this reason, we cannot sustain the Examiner’s rejection of
dependent claim 9 as anticipated by Stewart.
Claims 10-12
Claim 10 ultimately depends from claim 1 and recites: “said amplifier
circuit comprises: an attenuator.” Claims 11-12 depend from claim 10. The
Examiner directs attention to Stewart’s description at paragraph 0056 and
Figure 7 and asserts that although Stewart does not explicitly disclose the
use of an attenuator, its use is inherently disclosed as it is a necessary
element for gain adjustment. Ans. 5, 17-18. The Examiner explains that
Stewart’s paragraph 0034 teaches the use of a preamp and the function of an
attenuator is merely to reduce the gain of a signal. Ans. 18. The Examiner
concludes that given that multiple TV signals are gain aligned and summed
together as described in Stewart’s paragraphs 0062 and 0063, some of the
signals are going to have their respective gains increased or decreased. Id.

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We agree with Appellants’ argument that the Examiner fails to
establish that an attenuator is inherent or necessarily included in Stewart’s
description. App. Br. 16-17; Reply Br. 12-13.
For this reason, we cannot sustain the Examiner’s rejection of
dependent claims 10-12 as anticipated by Stewart.
Claims 15 and 16
Claim 15 ultimately depends from claim 1 and recites: “said control
line provides independent control signals to said amplifiers to selectively
adjust a gain of each of said amplifiers to adjust a polarity of said antenna.”
Claim 16 depends from claim 15. We note that the claim 15 recitation “to
selectively adjust a gain of each of said amplifiers to adjust a polarity of said
antenna” is a statement of intended use or purpose. Thus, claim 15 merely
requires the control line to provide independent control signals to the
amplifiers. The Examiner directs attention to Stewart’s description at
paragraphs 0027 and 0028 for meeting the aforementioned limitation of
claim 15. Ans. 7. The Examiner also explains that Stewart’s Figure 8 shows
a plurality of amplifier circuits 60 which are coupled to a processor 72 and
that the control line 70 provides selection commands which are interpreted
by processor 72 which supplies commands to each tuner 52 as well as
additional gain adjustment commands separately or independently for each
tuner and respective amplifier (citing paragraphs 0062 and 0063), where the
signals are separated out prior to being summed together so that there is no
overlap. Ans. 19; see also Stewart ¶¶ 0059, 0060.
We agree with Appellants’ argument that Stewart does not describe,
teach or suggest that the control line provides independent control signals to

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the amplifiers. App. Br. 18; Reply Br. 14. While the Examiner explains that
coaxial cable 70 provides a channel selection command or signal(s) to the
processor 72 and the processor interprets the command or signal and
supplies gain adjustment commands to each tuner 52 and respective
amplifier 60, the Examiner does not direct us to, and Stewart is silent as to,
the coaxial cable 70 (i.e., control line) providing the independent control
signals to the amplifiers 60.
For this reason, we cannot sustain the Examiner’s rejection of
dependent claims 15 and 16 as anticipated by Stewart.
Claims 34-46
Claims 34-46 stand or fall together as a group since Appellants do not
present arguments substantively addressing the limitations of dependent
claims 35-46. See 37 C.F.R. § 41.37(c)(1)(vii). Claim 34 is representative of
the group. Id. Independent claim 34 is of different scope than independent
claims 1, 18 and 47. Instead of reciting a “control line . . . for controlling a
gain of said amplifier circuit,” claim 34 recites “a control means for
controlling a gain of said amplifying means, said control means comprising
a receiving device inside said building.”
Appellants argue that Stewart does not teach or suggest a receiving
device inside the building that is part of the means for controlling the gain of
the amplifying means mounted on the building exterior. App. Br. 13; Reply
Br. 9. We note that claim 34 recites a “control means”, which would on its
face appear to invoke claim interpretation in accordance with 112, 6th
paragraph. However, since sufficient structure is recited in claim 34 for the
control means (i.e., “said control means comprising a receiving device inside

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said building”), claim interpretation in accordance with 112, 6th paragraph is
not applicable. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F3d 1359, 1366
(Fed Cir. 2008). The Examiner finds, and we agree, that Stewart describes a
receiving device 20 inside the building. Ans. 14-15; see Stewart Fig. 1; ¶
0054.
For all these reasons, we sustain the rejections of claims 34-45 as
anticipated by Stewart and claim 46 as unpatentable over Stewart and Flynn.
Claims 47-62
Claims 47-62 stand or fall together as a group since Appellants do not
present arguments substantively addressing the limitations of dependent
claims 48-62. See 37 C.F.R. § 41.37(c)(1)(vii). Claim 47 is representative of
the group. Id. Independent claim 47 is substantially similar to claim 1 and
recites: “a control line connected to said amplifier circuit for controlling a
gain of said amplifier circuit based on a channel being tuned by said
receiving device.”
Appellants argue that Stewart does not teach or suggest a control line
which controls the gain based on the channel being tuned by the receiving
device. App. Br. 13. For the same reasons explained above addressing claim
1, the limitation “for controlling a gain of said amplifier circuit based on a
channel being tuned by said receiving device” is a statement of intended use
or purpose. The Examiner finds, and we agree, that Stewart describes the
claimed structure. Ans. 3, 8 (citing Stewart Figs. 1, 6-8; ¶¶ 0028, 0033,
0049). Accordingly, the statement of intended purpose or use for the control
line is not entitled to patentable weight since it does not patentably
distinguish the structure of the control line over the applied prior art.

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For the same reasons as claims 1, 2, 4, 6, 8, 13, 14 and 17-33, we
sustain the rejections of claims 47-61 as anticipated by Stewart and claim 62
as unpatentable over Stewart and Flynn.
DECISION
We AFFIRM the rejection of claims 1-6, 8, 13, 14, 18-32, 34-45 and
47-61 under 35 U.S.C. § 102(e) as anticipated by Stewart.
We REVERSE the rejection of claims 7, 9, 10-12, 15 and 16 under
35 U.S.C. § 102(e) as anticipated by Stewart.
We AFFIRM the rejection of claims 17, 33, 46 and 62 under
35 U.S.C. § 103(a) as unpatentable over Stewart and Flynn.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED-IN-PART

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