Ex Parte Baney

Patent Trial and Appeal Board

Aug 17, 2016

13283116 (P.T.A.B. Aug. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/283,116 10/27/2011
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.
20110074-02 1978
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
Appeal2015-006291
Application 13/283,116
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 1-13 and 18-24 under 35 U.S.C. § 103(a) as being
unpatentable over at least the basic combination of Hashimshony et al. (US
2009/0322347 Al, published Dec. 31, 2009) ("Hashimshony") in view of
Xu (US 2007/0002964 Al, published Jan. 4, 2007). 1 The Examiner also
maintains a provisional obviousness-type double patenting rejection based
1 The Examiner additionally applied Achtenhagen et al. (US 2003/0151736
Al, published Aug. 14, 2003) ("Achtenhagen") to claims 21-24 (Final
Action 9).
Appeal2015-006291
Application 13/283,116
on copending Serial No. 13/170,346.2 \Ve have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
Claim 1 is illustrative of the claimed subject matter (emphasis added
to highlight key 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 stimulus signal to the impairment network, the stimulus
signal having a corresponding stimulus waveform;
estimating an impairment transfer function corresponding to the
impairment based on the applied stimulus signal; and
correcting the measured electrical signal using the impairment transfer
function to determine the electrical signal output from the DUT.
Independent claim 8 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-
2 Serial No. 13/283, 116 is a continuation-in-part of Serial No. 13/170,346.
An appeal was also filed in this related application (Appeal 2015-002091 ).
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Appeal2015-006291
Application 13/283,116
patenting rejections.") (citing Ex parte lvfoncla, 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
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)).
"[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification." In re Translogic
Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)). See also In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (The scope of the claims in
patent applications is not determined solely on the basis of the claim
language, but upon giving claims their broadest reasonable construction in
light of the specification as it would be interpreted by one of ordinary skill in
the art.).
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
assertions that the Examiner's rejection is based on an unreasonably broad
claim interpretation, in proposing to modify Hashimshony relying upon Xu
to teach a "stimulus signal having a corresponding stimulus waveform" as
required in all the claims on appeal (see App. Br.; Reply Br., generally).
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Appeal2015-006291
Application 13/283,116
The Examiner relies upon the unit impulse function/unit step function
described in Xu's paragraph 29 to teach applying a stimulus signal having a
corresponding stimulus waveform. However, "[t]he unit impulse function
has infinite amplitude, zero width, and an area of unity" and "is not a real
signal" (Xu i-f 29). Xu further describes the use of a unit step function which
is "a discontinuous function whose value is zero for negative argument and
unity for positive argument" and "is simply a running integral of the unit
impulse response function" (id.).
Like a unit impulse function, a unit step function cannot be
produced in reality. However a unit step function can be
approximated much more accurately by a real function than can
a unit impulse function. A long rectangular wave with a fast
rising edge is used to approximate a unit step function.
(Xu i-f 29.)
The Examiner summarizes Appellant's position:
The Appellant states (and the examiner agrees) that Xu applies
an approximation of a unit step function, namely a "long
rectangular wave with a fast rising edge" (paragraph 29 of Xu).
The Appellant argues that this does not describe a "stimulus
waveform, inherently repetitive in nature, which is particularly
apparent when viewed in light of the Specification" and cites
paragraph 0013 of the present Specification.
(Ans. 3, 4.)
The Examiner goes on to state that the waveforms in the Specification
are non-limiting examples, are not inherently repetitive, and thus do not
preclude a single "wave" as used in Xu (id.).
Appellant contends that a unit impulse function as described in Xu
does not teach or suggest a stimulus signal having a corresponding stimulus
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Application 13/283,116
waveform, and that, contrary to the Examiner's position, a stimulus signal
having a waveform is inherently repetitive:
Applicant respectfully disagrees. Sinusoidal waveforms are
repetitive in that they provide a smooth, repetitive oscillation
(e.g., including swept sinusoidal waveforms and stepped-
frequency sinusoidal waveforms); non-sinusoidal waveforms
provide repetitive oscillation, but are not smooth; and pulsed
waveforms are understood to be a series of amplitude pulses
(which are also non-sinusoidal).
(Reply Br. 7.)
Appellant's position is that the transfer function of Xu which is
determined through application of a single unit impulse function (or a unit
step function, as a practical matter) as described in Xu's paragraph 29, is not
encompassed by the claimed "applying a stimulus signal ... having a
corresponding stimulus waveform" as recited in claim 1 (as well as
corresponding limitations in claims 8 and 18) (Reply Br. 10, 11 ).
We agree with Appellant that the broadest reasonable interpretation
consistent with the Specification of the "applying a stimulus signal to the
impairment network, the stimulus signal having a corresponding stimulus
waveform" as recited in claim 1 requires a signal having a waveform of a
repetitive nature and thus does not encompass the unit impulse function of
Xu (see App. Br.; Reply Br., generally).
A preponderance of the evidence supports Appellant's position that
the Examiner has taken an unreasonably broad interpretation of the disputed
claim language, and thus, we reverse the Examiner's§ 103 rejections on
appeal.
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Appeal2015-006291
Application 13/283,116
CONCLUSION
In summary, we do not reach the provisional obviousness-type double
patenting rejection, and the § 103 rejections are reversed.
REVERSED
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