Ex Parte Baney

Patent Trial and Appeal Board

Aug 17, 2016

13170346 (P.T.A.B. Aug. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/170,346 06/28/2011
126149 7590
Keysight Technologies, Inc,
C/O CPA Global
P.O. Box 52050
Minneapolis, MN 55402
08/19/2016
FIRST NAMED INVENTOR
Douglas Baney
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.
20110074-01 3636
EXAMINER
KESSIE, DANIEL
ART UNIT PAPER NUMBER
2836
NOTIFICATION DATE DELIVERY MODE
08/19/2016 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):
keysightdocketing@cpaglobal.com
notice.legal@keysight.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOUGLAS BANEY
Appeal2015-002091
Application 13/170,346
Technology Center 2800
Before KAREN M. HASTINGS, WESLEY B. DERRICK, and
JENNIFER R. GUPTA, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-20 under 35 U.S.C. § 103(a) as being unpatentable
over Hashimshony et al. (US 2009/0322347 Al, published Dec. 31, 2009)
("Hashimshony") in view of Xu (US 200710002964 A 1, published Jan. 4,
2007). The Examiner also maintains a provisional obviousness-type double
patenting rejection based on copending Serial No. 13/283, 116. 1 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Serial No. 13/283,116 is a continuation-in-part of the present application.
An appeal was also filed in this related application (Appeal 2015-006291 ).
Appeal2015-002091
Application 13/170,346
Claim 1 is illustrative of the claimed subject matter (emphasis added
to highlight disputed limitations):
1. A method of compensating for impairment of an electrical signal
output from a device under test (DUT), the impairment resulting from an
impairment network, the method comprising:
measuring an impaired electrical signal received at an electronic
analyzer via the impairment network;
applying a coded pulse sequence to the impairment network, the
coded pulse sequence comprising a plurality of pulses;
estimating an impairment transfer function corresponding to the
impairment based on the applied coded pulse sequence; and
correcting the measured electrical signal using the impairment transfer
function to determine the electrical signal output from the DUT.
Independent claim 15 is directed to a similar method as claim 1 ;
independent claim 18 is directed to a system for implementing a method of
claim 1 (Claims App.). Appellant's argument focuses on limitations
common to each independent claim (see App. Br. generally).
At the outset, we decline to reach the merits of the Examiner's
provisional obviousness-type double patenting rejection. Ex parte Jerg,
2012 WL 1375142 at *3 (BPAI 2012) (informative) ("Panels have the
flexibility to reach or not reach provisional obviousness-type double-
patenting rejections.") (citing Ex parte Moncla, 95 USPQ2d 1884 (BPAI
2010) (precedential)).
OPINION
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
"[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
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Appeal2015-002091
Application 13/170,346
obviousness." In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006) (quoted with
approval inKSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
The fact finder must be aware "of the distortion caused by hindsight
bias and must be cautious of arguments reliant upon ex post reasoning."
KSR, 550 U.S. at 421 (citing Graham v. John Deere Co., 383 U.S. 1, 36
( 1966) (warning against a "temptation to read into the prior art the teachings
of the invention in issue")).
After review of the respective positions provided by Appellant and the
Examiner, we agree with Appellant that the Examiner has not met the
burden in this case. A preponderance of the evidence supports Appellant's
assertion that the Examiner's rejection is based on inadequate evidence, and
de facto assertion the Examiner relied on improper hindsight, in proposing to
modify Hashimshony/Xu combination to use a "code pulse sequence" as
required in all the claims on appeal (see App. Br.; Reply Br., generally).
As detailed by the Appellant in the Briefs, the Examiner relies upon
Xu to suggest this feature, admitting that Xu does not explicitly describe
such a feature but that it would have been obvious to modify the pulse/step
function taught therein:
It was known in the art to repeat such a measurement a
plurality of times in order to be able to average the resulting
measurements, so as to obtain a more accurate result. It would
therefore have been obvious to one of ordinary skill in the art at
the time of the invention to send a plurality of step function
pulses, and average the resulting measurements of the transfer
function, in order to obtain a more accurate transfer function.
This plurality of step function pulses would meet the limitation
of a coded pulse sequence comprising a plurality of pulses.
(Final Action 4.)
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Appeal2015-002091
Application 13/170,346
Appellant contends that the Examiner has not met the burden of
showing that repeating measurements with a unit step function is well
known in the art (App. Br. 11, 12). In response, the Examiner "maintains
that [averaging] is well known in the art as a basic, general statistical
principle" (Ans. 4). As stated by Appellant:
In the present case, the Examiner is assuming that
transfer functions can be appropriately "averaged," and that
such averaging of transfer functions would advantageously
provide a more accurate transfer function. Applicant
respectfully submits that these are not facts that are well known
and capable of "instant and unquestionable demonstration as
being well-known." Applicant therefore maintains that it is
improper for the Examiner to simply conjecture a process (i.e.,
determining multiple step responses and corresponding transfer
functions using multiple unit step functions to determine an
"average" transfer function) without bothering to find objective
evidence supporting the same, and then shift the burden to the
Applicant to prove the opposite.
Applicant has indeed specifically pointed out the supposed
errors in the Examiner's action, namely, that XU plainly states
that the step response of the transmission medium is obtained
by applying one unit step function to the input of the
transmission medium 16 and measuring the output, and
provides no mechanism for repeatedly applying the unit step
function or reason for doing so, or even how a transfer function
can be "averaged."
(Reply Br. 8, 9.)
A preponderance of the evidence supports Appellant's position that
the Examiner has not come forward with adequate evidence and explanation
for the proposed modification of the Hashimshony/Xu combination so as to
result in the claimed invention (id.).
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Application 13/170,346
Thus, we are constrained to reverse the Examiner's§ 103 rejections
on appeal.
CONCLUSION
In summary, we do not reach the provisional obviousness-type double
patenting rejection, and the § 103 rejection is reversed.
REVERSED
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