Ex Parte Tawadrous et al

Board of Patent Appeals and Interferences

Apr 27, 2009

10438441 (B.P.A.I. Apr. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SAMEH W. TAWADROUS, RONALD H. DECK, and
THOMAS E. VOOR
____________

Appeal 2008-4693
Application 10/438,441
Technology Center 3600
____________

Decided:1 April 27, 2009
____________

Before JENNIFER D. BAHR, LINDA E. HORNER, and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

HORNER, Administrative Patent Judge

DECISION ON APPEAL

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Application 10/438,441

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STATEMENT OF THE CASE
Sameh W. Tawadrous et al. (Appellants) seek our review under
35 U.S.C. § 134 of the final rejection of claims 1-40. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART.

THE INVENTION
The Appellants’ claimed invention is to techniques for generating and
managing precision frequency sources in cellular telephones or other
communications devices having a positioning capability, such as Global
Positioning System (GPS) or other location service. Spec. 1:16-18.
Claim 1, reproduced below, is representative of the subject matter on appeal.
1. A system for generating a frequency
reference in a hybrid communications device,
comprising:
a clock source in a communications portion
of the hybrid communications device, the clock
source generating a clock signal at a first
frequency;
a frequency correction module,
communicating with the clock source, the
frequency correction module generating a clock
signal at a corrected first frequency;
a frequency converter, the frequency
converter communicating with the frequency
correction module to receive the clock signal at the
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corrected first frequency and outputting a clock
signal at a second frequency which is lower than
the first frequency to operate a positioning receiver
portion of the hybrid communications device to
receive a wireless positioning signal such that the
positioning receiver portion does not need an
additional oscillator.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Horton US 6,041,222 Mar. 21, 2000
The Appellants seek review of the Examiner’s rejection of claims 1-
40 under 35 U.S.C. § 102(b) as anticipated by Horton.2

ISSUES
The Appellants contend the Examiner erred in rejecting claims 1-40
because Horton does not show a frequency correction module as recited in
claims 1 and 14. Br. 9. The Examiner found that Horton discloses a phase
locked loop circuit that acts as a frequency correction module. Ans. 4.
The first issue presented by this appeal is:
Have the Appellants shown the Examiner erred in finding that Horton
discloses the claimed frequency correction module?

2 The Examiner withdrew an alternate rejection of claims 1-40 under
35 U.S.C. § 102(e) as anticipated by U.S. Patent No. 6,400,314 to Krasner.
Ans. 2.
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The Appellants further contend the Examiner erred in rejecting claims
4 and 17, because the Examiner relies on Horton’s frequency synthesizer
192 as both the frequency correction module of claims 1 and 14 and the
frequency synthesizer of claims 4 and 17. Br. 9. The Examiner found that a
portion of Horton’s frequency synthesizer 192 operates as the frequency
correction module and another portion of Horton’s frequency synthesizer
192 operates as the claimed frequency synthesizer of claims 4 and 17.
Ans. 6-7.
The second issue presented by this appeal is:
Have the Appellants shown the Examiner erred in finding that Horton
discloses both a frequency correction module and a frequency synthesizer?
The Appellants further argue the Examiner failed to make adequate
findings to show where the elements of claims 5-11 and 18-24 are disclosed
in Horton. Br. 8-9.
The third issue presented by this appeal is:
Have the Appellants shown the Examiner failed to set forth a prima
facie case of anticipation of claims 5-11 and 18-24?

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
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1. The Appellants identify the frequency correction module of claim
1 as phase locked loop circuit 110 and identify the step of
generating a clock signal at a corrected first frequency as
corresponding to element 210 of Figure 2 described on page 9,
lines 11-15, which refers to transmission of the output of the base
oscillator 102 to phase locked loop 110. Br. 4.
2. The Appellants’ Specification describes a frequency correction
module (phase locked loop circuit 110) as follows:
The phase locked loop 110 may include a phase
comparator 112, to compare the phase of the base
oscillator 102 with the phase of a high-frequency
oscillator 116. High-frequency oscillator 116 may
for instance be implemented as a voltage
controlled high-frequency oscillator (VCO)
generating frequencies, for instance, in the 800/900
MHz, 1900 MHz or other ranges for cellular or
other operation. A loop filter 114 may low-pass
filter the output of the phase comparator 112 to
remove higher frequency artifacts or other noise.
The output of the loop filter 114 may in turn
drive the high-frequency oscillator 116 to
operating frequencies, which through the return
provided by loop divider 118 completes a closed
feedback loop to phase comparator 112. The
phase of the high-frequency oscillator 116 is
thereby locked to the phase of the base oscillator
102, so that the phase angle between them remains
zero or approximately zero, or at a fixed or
approximately fixed separation during operation.
Spec. 7:3-15.
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3. Horton discloses a wireless mobile terminal having a wireless
transceiver and a GPS receiver, where the wireless transceiver and
the GPS receiver share a frequency reference signal. Horton,
col. 2, l. 64 – col. 3, l. 1.
4. Horton discloses that the frequency reference signal is a radio
frequency control signal generated by a phase locked loop (PLL)
circuit of the wireless transceiver. Horton, col. 3, ll. 54-57.
5. Horton discloses a PLL circuit 162 including a main frequency
synthesizer 192, a loop filter 196, a voltage controlled oscillator
(VCO) 198, and a feedback divider. Horton, col. 9, l. 66 – col. 10,
l. 4; Fig. 9.
6. Horton discloses that a voltage-controlled, temperature
compensated reference crystal oscillator 190 provides a reference
frequency signal as an input to a phase detector 245 in the
frequency synthesizer 192. Horton, col. 9, ll. 38-41; Fig. 9.
7. The phase detector 245 also receives as input a synthesized signal
derived from the signal output by the VCO, fed back through the
feedback divider of the PLL circuit. Horton, Fig. 9.
8. In Horton, the phase detector 245 compares the phase of the base
oscillator 190 with the phase of the voltage-controlled high-
frequency oscillator 198. The loop filter 196 filters output derived
from this comparison. The output of the loop filter 196 drives the
VCO 198 to operating frequencies, which through the return
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provided by feedback divider completes a closed feedback loop to
the phase detector 245. Horton, Fig. 9.
9. Horton discloses a reference divider that divides the base signal
from the oscillator 190 to provide a synthesized signal to phase
detector 245. Horton, Fig. 9.

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987).
To establish anticipation, every element and limitation of the claimed
invention must be found in a single prior art reference, arranged as in the
claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383
(Fed. Cir. 2001). In other words, there must be no difference between the
claimed invention and the reference disclosure, as viewed by a person of
ordinary skill in the field of the invention. Scripps Clinic & Research
Found. v. Genentech Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991).

ANALYSIS
The Appellants argue that Horton’s frequency synthesizer 192 is
“analogous to [Appellants’] claimed clock source” and is not the frequency
correction module of claims 1 and 14. Br. 9.
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We note at the outset that claims 27-40 do not include the limitation
of a frequency correction module or the step of generating a clock signal at a
corrected first frequency. Although the Appellants state that claims 1-40 are
being appealed (Ans. 3), the Appellants have not alleged any particular error
in the Examiner’s rejection of claims 27-40 as being anticipated by Horton.
Br. 9. As such, we summarily sustain the Examiner’s rejection of claims 27-
40 under 35 U.S.C. § 102(b).
Turning to the Appellants’ argument as to independent claims 1 and
14, we find no error in the Examiner’s reading of Horton. The Appellants
identify the frequency correction module of claim 1 as corresponding to the
phase locked loop circuit 110 and the frequency correction step of claim 14
as being implemented by the phase locked loop circuit 110 (Fact 1). The
Appellants’ Specification describes the phase locked loop circuit 110 as
including a phase comparator 112, a loop filter 114, a high-frequency
oscillator 116, and a loop divider 118 (Fact 2). We agree with the
Examiner’s finding that Horton discloses a PLL circuit including a phase
comparator 245, a loop filter 196, a high-frequency oscillator 198, and a
loop divider, which PLL circuit operates as a frequency correction module
(Facts 4-8). Thus, Horton anticipates all of the elements of claim 1 and the
steps of claim 14.
With regard to claims 4 and 17, which recite that the clock source
comprises a synthesizer, we find that Horton discloses a reference divider
which provides a synthesized clock signal to the phase comparator 245 of
the phase locked loop circuit (Fact 9).
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The Appellants further argue that the rejection fails to specify where
the limitations of claims 5-11 and 18-24 are found in Horton. Br. 8-9. To
make a showing of anticipation, the Examiner must make a finding that the
prior art reference discloses every element of the claimed invention.
Karsten Mfg. Corp., 242 F.3d at 1383. Neither the Examiner’s Final Office
Action nor the Examiner’s Answer contains sufficient findings to put the
Appellants on notice as to where the limitations of claims 5-11 and 18-24 are
found in Horton. Thus, we cannot sustain the rejection of these dependent
claims.
CONCLUSIONS
Appellants have failed to show that the Examiner erred in rejecting
claims 1-4, 12-17, and 25-40 under 35 U.S.C. § 102(b) as anticipated by
Horton. Appellants have shown, however, that the Examiner failed to set
forth a prima facie case of anticipation of claims 5-11 and 18-24.

DECISION
The decision of the Examiner to reject claims 1-4, 12-17, and 25-40 is
affirmed, and the decision of the Examiner to reject claims 5-11 and 18-24 is
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).
AFFIRMED-IN-PART

Vsh
Appeal 2008-4693
Application 10/438,441

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SCOTT M. GARRETT
MOTOROLA, INC.
LAW DEPARTMENT
8000 WEST SUNRISE BOULEVARD
FORT LAUDERDALE, FL 33322