Ex Parte Stayton

Patent Trial and Appeal Board

Jul 30, 2018

13678224 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/678,224 11/15/2012
23619 7590 08/01/2018
Squire Patton Boggs (US) LLP
PHX-IP&T-SPB
8000 Towers Crescent Drive
14th Floor
Tysons Corner, VA 22182
FIRST NAMED INVENTOR
Gregory T. Stayton
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.
050847.00408 7265
EXAMINER
LIU, TIJNG-JEN
ART UNIT PAPER NUMBER
2473
NOTIFICATION DATE DELIVERY MODE
08/01/2018 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):
PHXIPDOCKET@SquirePB.com
PTOL-90A (Rev. 04/07)
UNITED ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
ExparteGREGORYT. STAYTON
Appeal 2017-011575
Application 13/678,224
Technology Center 2400
Before JOSEPH L. DIXON, JENNIFERL. McKEOWN, and
JOHN P. PINKERTON,Administrative Patent Judges.
McKEOWN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-21. 1 We have jurisdiction under35 U.S.C.
§ 6(b).
We reverse.
1 Although claims 22 and 23 are pending and both the Examiner and
Appellants identify that claims 1-23 are rejected, based on the record before
us, there are no grounds identified as rejecting these claims. See Final Act.
25-26 (rejecting claim 21, but no other claims).
Appeal 2017-011575
Application 13/678,224
STATEMENT OF THE CASE
Appellants' claimed invention is directed to "smart antennas [] used in
connection with transponders and other avionics equipment." Abstract.
Claim 1 is illustrative of the claimed invention and reads as follows:
1. An avionics system, comprising:
an antenna having at least a radio frequency function
included within the antenna, wherein the radio frequency
function is configured to communicate digital signals; and
a data bus connecting the radio frequency function of the
antenna to a digital receiver configured to process the digital
signals at avionics processing hardware.
THE REJECTIONS
The Examiner rejected claims 1-3 and 5-21 under 3 5 U.S. C. § 102(b)
as anticipated by Vesel (US 6,999,022 Bl; Feb. 14, 2006). FinalAct. 19-
25.
The Examiner rejected claim 4 under 35 U.S.C. § 103(a) as
unpatentable over Vesel and IEEE 802.3-2008. Final Act. 26-27.
ANALYSIS
THE REJECTION BASED ON VESEL
Claims 1-3 and 5-21
Based on the record before us, we are persuaded that the Examiner
erred in rejecting claims 1-3 and 5-21.
Appellants contend that Vesel fails to disclose a radio frequency
function "within the antenna," as required by claim 1. App. Br. 9.
According to Appellants, the radio frequency ofVesel is apart from the
antenna, namely in the cables external to the antenna. Id.
2
Appeal 2017-011575
Application 13/678,224
The Examiner determines, based on the Specification, that "within the
antenna" must be construed to include outside the antenna. Ans. 5---6. To
support this interpretation, the Examiner outlines how the Specification
repeatedly distinguishes a smart antenna from an antenna and determines "it
is clear that the specification makes a clear distinction between a smart
antenna which is a system that includes an antenna." Ans. 4---6; see also,
e.g., Spec. Figs 1--4, ,r,r 20, 24--28. The Specification also more consistently
describes that a radio frequency function is performed within the smart
antenna, not within an antenna. Ans. 4---6; see also, e.g., Spec. ,r,r 17, 18.
Given this distinction and since the broadest reasonable interpretation of an
antenna is "a conductor by which electromagnetic waves are sent or
received" (Ans. 6), the Specification supports that "the broadest reasonable
interpretation to a person of ordinary skill in the art at the time of invention
for the terms of 'within the antenna' includes 'outside the antenna. '" Id.
Appellants, on the other hand, assert that the recited antenna of claim
1 should be construed to encompass smart antennas. Reply Br. 3. We
disagree. Rather, we agree with the Examiner that the Specification
repeatedly describes that an antenna or multiple antennae are included
within a smart antenna, and it is the smart antenna that has the radio
frequency function. See Ans. 4---6. As such, a skilled artisan would
understand the recited antenna to not encompass a smart antenna. 2
2 We note that claim 1 recites an antenna having a radio frequency function,
yet the Specification describes a smart antenna having a radio frequency
function (see, e.g., Spec. ,r,r 17, 18). As such, upon further prosecution, it
should be considered whether the claims are sufficiently described and
enabled.
3
Appeal 2017-011575
Application 13/678,224
Nevertheless, construing the claim term "within" to include elements
outside the antenna is contrary to the ordinary and customary meaning of
"within." The Specification also does not expressly defme "within an
antenna" to encompass elements outside an antenna. So, while we
understand why the Examiner interpreted "within" to include outside,
without an express defmition in the Specification to support this
construction, we fmd error in construing "within" to include "outside." As
such, we reverse on that error in claim construction.
Accordingly, we reverse the Examiner's rejection of claim 1, as well
claims 11, 20, and 21, which recite similar limitations, and dependent claims
2, 3, 5-10, 12-19, 22, and 23. 3
THE REJECTION BASED ONVESEL AND IEEE 802.3-2008
Claim 4
Claim 4 depends from claim 1. For the reasons discussed above, we
also reverse the rejection of claim 4.
DECISION
We reverse the Examiner's decision to reject claims 1-23.
REVERSED
3 We note the issue before us was an anticipation rejection, and we reverse
based upon the error in claim construction. We do not make a determination
of whether it would be obvious to move a radio frequency function to within
a smart antenna.
4