AT&T INTELLECTUAL PROPERTY I, LP

Patent Trials and Appeals Board

Mar 6, 2020

14729178 - (D) (P.T.A.B. Mar. 6, 2020)

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.
14/729,178 06/03/2015 ROBERT BENNETT 2015-0201_7785-1175A 4208
92384 7590 03/06/2020
AT&T Legal Department - G&G
Attention: Patent Docketing
Room 2A-212
One AT&T Way
Bedminster, NJ 07921
EXAMINER
MILLS, DONALD L
ART UNIT PAPER NUMBER
2462
NOTIFICATION DATE DELIVERY MODE
03/06/2020 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):
docketing@ggip.com
eOfficeActionDocs@att.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT BENNETT, PAUL SHALA HENRY,
IRWIN GERSZBERG, FARHAD BARZEGAR,
DONALD J. BARNICKEL and THOMAS M. WILLIS III1
____________

Appeal 2019-001806
Application 14/729,178
Technology Center 2400
____________

Before JEFFREY S. SMITH, IRVIN E. BRANCH, and
AMBER L. HAGY, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

1 Appellant identifies the real party in interest as AT&T Intellectual Property
I, L.P. Appeal Br. 2. We use the word Appellant to refer to “applicant” as
defined in 37 C.F.R. § 1.42(a).
Appeal 2019-001806
Application 14/729,178

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1, 2, 4–12, and 14–22, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Representative Claims
1. A client node device comprising:
a radio configured to wirelessly receive first channel
signals from a communication network; and
an access point repeater (APR) configured to launch the
first channel signals on a guided wave communication system
as first guided electromagnetic waves at non-optical frequencies
that are bound to a physical structure of a transmission medium,
wherein the first guided electromagnetic waves are guided by
the transmission medium to propagate along a surface of the
transmission medium without requiring an electrical return
path, and wherein the APR comprises:
an amplifier configured to amplify the first channel
signals to generate amplified first channel signals;
a channel selection filter configured to select one or more
of the amplified first channel signals to wirelessly communicate
to at least one client device;
an antenna configured to wirelessly communicate the one
or more of the amplified first channel signals with the at least
one client device;
a coupler configured to guide the amplified first channel
signals to the transmission medium of the guided wave
communication system so as to generate second guided
electromagnetic waves that propagate along the surface of the
transmission medium without requiring the electrical return
path; and
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Application 14/729,178

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a channel duplexer configured to transfer the amplified
first channel signals to the coupler and to the channel selection
filter.

11. A method comprising:
wirelessly receiving downstream channel signals from a
communication network;
launching the downstream channel signals on a guided
wave communication system as guided electromagnetic waves
that are bound to a surface of a transmission medium, wherein
the guided electromagnetic waves are guided by the
transmission medium to propagate along the surface of the
transmission medium without requiring an electrical return
path;
amplifying the downstream channel signals to generate
amplified downstream channel signals;
selecting one or more of the amplified downstream
channel signals for wireless transmission to at least one client
device via an antenna; and
wirelessly transmitting the one or more of the amplified
downstream channel signals to the at least one client device via
the antenna.

Prior Art
Name Reference Date
Abraham US 6,014,386 Jan. 11, 2000
Mollenkopf US 2004/0113756 Al June 17, 2004
Elmore US 2004/0169572 Al Sept. 2, 2004
Nishizaka US 2011/0235536 Al Sept. 29, 2011
Barzegar US 2014/0355525 Al Dec. 4, 2014
Soto US 2015/0078756 Al Mar. 19, 2015

Appeal 2019-001806
Application 14/729,178

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Examiner’s Rejections
Claims 1, 2, 4–12, and 14–22 stand provisionally rejected on the
ground of nonstatutory double patenting over claims 1–20 of co-pending
Application No. 15/070,045.
Claims 1, 2, 4–8, 11, 12, 15, and 17–20 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Nishizaka, Elmore, Mollenkopf, and Barzegar.
Claims 9 and 10 stand rejected under 35 U.S.C. § 103 as unpatentable
over Nishizaka, Elmore, Mollenkopf, Barzegar, and Soto.
Claims 14, 16, 21, and 22 stand rejected under 35 U.S.C. § 103 as
unpatentable over Nishizaka, Elmore, Mollenkopf, Barzegar, and Abraham.

ANALYSIS
Obviousness-type double patenting rejection
The Examiner provisionally rejected claims 1, 2, 4–12 and 14–22 for
obviousness-type double patenting over claims 1–20 of U.S. Patent
Application No. 15/070,045. Final Act. 2–5. Appellant states that it will
consider an appropriate course of action upon an indication of allowable
subject matter. Reply Br. 5. Therefore, we summarily sustain the rejection.

Section 103 rejections of claims 1, 2, 4–10, 21, and 22
Claim 1 recites “a channel duplexer configured to transfer the
amplified first channel signals to the coupler and to the channel selection
filter.” Appellant contends that “[t]he claim element is specifically referred
to as a channel ‘duplexer’, terminology used to describe a particular
structural component used on RF communications,” and that “[n]ot only is
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the summation device 424, not a duplexer, the summation device 424 of
Mollenkopf does not transfer the amplified first channel signals to the
channel selection filter.” Id. at 3. We agree with Appellant.
We do not sustain the rejections of claim 1 and corresponding
dependent claims 2, 4–10, 21, and 22.

Section 103 rejection of claims 11, 12, 15, and 17–20
Claim 11 recites “launching the downstream channel signals . . . as
guided electromagnetic waves . . . to propagate along the surface of the
transmission medium without requiring an electrical return path” and
“amplifying the downstream channel signals.” Claim 19 recites similar
limitations. The Examiner relies on Elmore to launching the downstream
channel signals as guided electromagnetic waves that propagate along the
surface of the transmission medium, and Mollenkopf to teach amplifying
signals. Final Action 6–8.
Appellant contends that the coupler of Mollenkopf induces data
signals that propagate inside a wire. Appeal Brief 6–8. Appellant contends
that Elmore generates guided electromagnetic waves that travel along the
outside of a wire. Id. at 8. Appellant contends that combining the coupler of
Mollenkopf with the teachings of Elmore would impermissibly change the
function of the coupler of Mollenkopf from inducing current signals inside a
wire to inducing guided electromagnetic waves that travel along the outside
of the wire. Id. at 7–8 (citing MPEP § 2143; KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 416 (2007)).
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The Examiner finds that Mollenkopf suggests that its communications
device (which includes amplifiers as shown in Figure 6) would work with
the coupler of Elmore, which launches downstream channel signals that
propagate along the surface of a transmission medium. Ans. 12–14.
According to the Examiner, paragraph 32 of Mollenkopf teaches that its
coupler is interchangeable with other couplers, such as the coupler disclosed
in paragraph 32 of Elmore. Ans. 13–14.
Appellant does not address the Examiner’s findings. In particular,
Appellant has not explained why replacing the coupler of Mollenkopf with
the coupler of Elmore would impermissibly change the functions of the other
components of Mollenkopf, such as the amplifiers shown in Figure 6. See
KSR Int’l, 550 U.S. at 416 (“The Court recognized that when a patent claims
a structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.”).
We sustain the rejection of independent claims 11 and 19, and
corresponding dependent claims 12, 15, 17, 18, and 20.

Section 103 rejection of claims 14 and 16
Appellant contends that the Examiner’s description of Mollenkopf in
the rejection of claims 14 and 16 is actually a description of Abraham.
Appeal Brief 10 (citing Final Action 12). Appellant also contends that the
rejection of claims 14 and 16, both of which depend from claim 11, does not
include Barzegar, which is included in the rejection of claim 11. Id. at 10–
11. The Examiner, in the Answer, corrected the rejection statement to
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include Mollenkopf and Barzegar, and submits that their absence was a
typographical error. Ans. 16.
We sustain the rejection of claims 14 and 16.
DECISION
The provisional rejection of claims 1, 2, 4–12, and 14–22 on the
ground of nonstatutory double patenting over claims 1–20 of co-pending
Application No. 15/070,045 is affirmed.
The rejection of claims 1, 2, and 4–8 under 35 U.S.C. § 103 as
unpatentable over Nishizaka, Elmore, Mollenkopf, and Barzegar is reversed.
The rejection of claims 9 and 10 under 35 U.S.C. § 103 as
unpatentable over Nishizaka, Elmore, Mollenkopf, Barzegar, and Soto is
reversed.
The rejection of claims 11, 12, 15, and 17–20 under 35 U.S.C. § 103
as unpatentable over Nishizaka, Elmore, Mollenkopf, and Barzegar is
affirmed.
The rejection of claims 14 and 16 under 35 U.S.C. § 103 as
unpatentable over Nishizaka, Elmore, Mollenkopf, Barzegar, and Abraham
is affirmed.
The rejection of claims 21 and 22 under 35 U.S.C. § 103 as
unpatentable over Nishizaka, Elmore, Mollenkopf, Barzegar, and Abraham
is reversed.
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Application 14/729,178

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4–12,
14–22
Nonstatutory
double patenting
1, 2, 4–12,
14–22

1, 2, 4–8,
11, 12, 15,
17–20
103 Nishizaka, Elmore,
Mollenkopf,
Barzegar
11, 12, 15,
17–20
1, 2, 4–8
9, 10 103 Nishizaka, Elmore,
Mollenkopf,
Barzegar, Soto
9, 10
14, 16, 21,
22
103 Nishizaka, Elmore,
Mollenkopf,
Barzegar, Abraham
14, 16 21, 22
Overall
Outcome
1, 2, 4–12,
14–22

TIME PERIOD FOR RESPONSE
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).
AFFIRMED