Ex Parte Fischer

Patent Trial and Appeal Board

Jul 1, 2016

11150820 (P.T.A.B. Jul. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111150,820 06/10/2005 Larry G. Fischer
34206 7590 07/06/2016
FOGG & POWERS LLC
4600 W 77th Street
Suite 305
MINNEAPOLIS, MN 55435
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.
100.707US01 2763
EXAMINER
LU,ZHIYU
ART UNIT PAPER NUMBER
2649
NOTIFICATION DATE DELIVERY MODE
07/06/2016 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):
DA VID@FOGGLA W.COM
docketing@fogglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LARRY G. FISCHER
Appeal2015-002775
Application 11/150,820
Technology Center 2600
Before ALLEN R. MacDONALD, JASON V. MORGAN, and
BRYAN F. MOORE, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-002775
Application 11/150,820
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 1-3, 5-9, 15, 16, 19, 20, 30, 32, and 39---62.
Appellants note that this appeal is related to an appeal in co-pending
application number 12/775,897. See App. Br. 1; Ex parte Fischer, Appeal
No. 2013-005366 (PTAB Sept 2, 2015), req. reh 'g denied Jan. 6, 2016.
Although not identified by Appellants (see App. Br. 1 ), this appeal is also
related to an earlier appeal during this application's pendency (see Ex parte
Fischer, Appeal No. 2010-004565 (PTAB Nov. 19, 2012)).
We have jurisdiction under 35 U.S.C. § 6(b ).
Exemplary Claim
Exemplary claim 1 under appeal read as follows (emphasis and
formatting added):
1. A communication system, comprising:
[(A)] a master host unit that is adapted to communicate analog
signals with a plurality of service provider interfaces and that is
adapted to send and receive digitized spectrum over a plurality of
communication links, the master host unit including circuitry for
converting between analog signals and digitized spectrum;
[(B)] at least one remote server unit, communicatively coupled
to the master host unit over a wired digital communication medium,
the at least one remote server unit adapted to convert between analog
signals and digitized spectrum and adapted to amplify the analog
signals, the at least one remote server unit further adapted to
communicate with the master host unit using the digitized spectrum
across the wired digital communication medium;
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Application 11/150,820
[(C)] a plurality of remote units, each communicatively coupled
to one of the at least one remote server units across a wired analog
communication medium using the analog signals, each of the plurality
of remote units adapted to transmit and receive wireless signals over
a plurality of air interfaces for the associated service provider
interfaces; and
[(D)] wherein the at least one remote server unit is configured
to provide power to at least one of the plurality of remote units across
the wired analog communication medium.
Rejections
The Examiner rejected claims 1-3, 5, 8, 9, 15, 16, 19, 20, 30, 39-42,
45-51, 54--57, and 60-62 under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Stratford et al. (US 6,785,558 Bl; issued Aug. 31,
2004), Wake et al. (US 2006/0094470 Al; published May 4, 2006), Wala
(US 6, 704,545 Bl; issued Mar. 9, 2004) and Hamilton-Piercy et al. (US
5,809,395; issued Sept. 15, 1998). 1
The Examiner rejected claims 6, 7, and 32 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Stratford, Wake, Wala,
Hamilton-Piercy, and Hwang et al. (US 5,687,195; issued Nov. 11, 1997). 2
1 We select claim 1 as representative. Separate patentability is not argued
for claims 2, 3, 5, 8, 9, 15, 16, 19, 20, 30, 39--42, 45-51, 54--57, and 60-62.
As to claims 15, 16, 20, 30, 41, 50, 56, 60, 61, and 62, Appellant
merely repeats for these claims the same or similar arguments directed to
claim 1. While using an argument for patentability of a first claim as a cut-
and-paste argument for a second claim might outwardly appear to be a
separate argument for patentability of the second claim, such a cut-and-paste
argument is not in fact an argument for "separate patentability." Except for
our ultimate decision, these claims are not discussed further herein
2 Separate patentability is not argued for claims 6, 7, and 32. Rather,
Appellant addresses these claims only by referencing the arguments for the
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Application 11/150,820
The Examiner rejected claims 43, 44, 52, 53, 58, and 59 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Stratford,
Wake, Wala, Hamilton-Piercy, and Smith (US 2002/0142739 Al; published
Oct. 3, 2002). 3
Appellant's Contentions
1. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
Appellant respectfully asserts that the Examiner omitted
one or more essential elements needed for a prima facie
obviousness rejection of independent claim 1 in the Final Office
Action mailed February 6, 2014 (February 2014 FOA) because
the Examiner merely described his understanding of the
teachings of the various references and indicated that it would
be obvious to one having skill in the art to combine the
references without providing a . . . clear articulation of the
reason( s) why the claimed invention would have been obvious.
App. Br. 17; emphasis omitted.
The Examiner does not appear to include all necessary
elements for a prima facie obviousness rejection because he
appears to use an abbreviated obviousness analysis that does
not require he provide any clear articulation of why it would be
obvious to combine teaching and/or suggestions of the cited art
references and come up with the claimed invention.
App. Br. 18-19; emphasis omitted.
claims from which they depend. Thus, the rejection of these claims turns on
our decision as to the parent claims. Except for our ultimate decision, these
claims are not discussed further herein.
3 Separate patentability is not argued for claims 43, 44, 52, 53, 58, and 59.
Rather, Appellant addresses these claims only by referencing the arguments
for the claims from which they depend. Thus, the rejection of these claims
turns on our decision as to the parent claims. Except for our ultimate
decision, these claims are not discussed further herein.
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Appeal2015-002775
Application 11/150,820
The Examiner has not provided the necessary clear
articulated reasoning to meet the requirements of a prima facie
obviousness rejection .... None of [the Examiner's analysis]
provide clear articulation of why the claimed invention would
have been obvious. Specifically, providing cost savings and
operational flexibility by design preference is not a clear
reasoned analysis. The use of the term "design preference"
does not provide a clear articulation, rather it only is a
conclusory statement without anything more backing it up.
Without clear articulation, no conclusory phrase or assertion
meets the elements of a prima facie case of obviousness.
App. Br. 19--20; emphasis added.
2. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) as Wake teaches away from the claimed invention
because:
[I]t would have been counterintuitive and would frustrate the
operation of the Wake reference to augment the teachings of the
Wake reference to include any remote units that are
communicatively coupled to a remote server unit across a wired
analog communication medium where the remote server umt 1s
configured to provide power to a remote unit across the wired
analog communication medium.
App. Br. 22; emphasis omitted.
3. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
[O]ne of ordinary skill in the art at the time of invention did not
possess the knowledge or skills necessary to realize the hybrid
DAS of independent claim 1 ....
App. Br. 22.
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Appeal2015-002775
Application 11/150,820
4. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because there is a teaching or suggestion
requirement under 35 U.S.C. § 103, and:
[N]o combination of the Wake, Wala, and/or Hamilton-Piercy
references teach or suggest all the elements missing from
Stratford alone.
App. Br. 23; emphasis added.
[Wake] does not teach or suggest to one having ordinary skill
in the art at the time of invention the specific hybrid
combination of digital and analog transmission recited in
independent claim 1 ....
App. Br. 26; emphasis added.
5. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because as to the Examiner's finding that using
"N-bit words is [an] inherent feature of digital signal" (Ans. 14--25):
The Examiner has not provided any basis in fact and/or
technical reasoning to reasonably support the determination that
the allegedly inherent characteristic necessary flows form the
teachings of the applied prior art. To the contrary, one having
ordinary skill in art at a time before invention would understand
that there are different types of digital signals, some could be as
simple as a string of bits (zeros and ones), while others may be
more complicated and include N-bit words. Accordingly, N-bit
words are not an inherent feature of a digital signal.
Reply Br. 20; emphasis added.
Issue on Appeal
Did the Examiner err in rejecting claim 1 as being obvious for the
reasons argued by Appellant?
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Application 11/150,820
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
disagree with Appellant's conclusions. Except as noted below, we adopt as
our own (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken and (2) the reasons set forth by the Examiner
in the Examiner's Answer in response to Appellant's Appeal Brief. We
concur with the conclusions reached by the Examiner. We highlight the
following additional points.
As to above contentions 1--4, Appellant's Appeal Brief indicated that
related Appeal No. 2013-005366 for related co-pending Application No.
12/775,897, may have a bearing on the Board's decision in the present
appeal. App. Br. 1. Appellant's Appeal Brief in 2013-005366 raised
substantially the same (1) clear articulation of the rejection issue,
(2) counterintuitive and would frustration of operation (teaching away)
issue, (3) lack of artisan the knowledge or skills issue, and (4) requirement
of teaching or suggestion for an obviousness rejection issue, as the
arguments raised in the current appeal. As to these issues/arguments we
reach the same result for the same reasons as set forth in our decision on
September 2, 2015 and our rehearing decision on January 6, 2016, both in
Appeal No. 2013-005366. We incorporate those 2013-005366 decisions
herein in full.
Further, as to Appellant's above contention 1, we disagree with
Appellant that use of the term "design preference" does not provide a clear
articulation. App. Br. 20. As the Examiner correctly points out, an artisan
would recognize the teaching of Wake and Wala (and we conclude similarly
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Application 11/150,820
Hamilton-Piercy) as known alternatives in the art. Ans. 17. As the Court
pointed out in KSR, "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." KSR Int'! Co. v. Teleflex Inc., 127 S.Ct. 1727, 1740 (2007) (citing
United States v. Adams, 383 U.S. 39, 50-51 (1966)).
As we stated in the rehearing of 2013-005366 at page 8, Appellant has
not presented evidence sufficient to show that combining the prior art was
"uniquely challenging or difficult for one of ordinary skill in the art" or
"represented an unobvious step over the prior art." Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418-19). Nor has Appellant presented evidence sufficient to show
that any of the selected alternatives yielded more than expected results.
As to Appellant's above contention 5, we disagree with Appellant's
argument. First, Appellant overlooks that the argued "simple string of bits
(zeros and ones)" is not distinct from "N-bit words" as the simple string
would be recognized by an artisan as a series of I-bit words (i.e., N = 1 ).
Second, Appellant overlooks that each of Stratford (Figures 9-11 ), Wala
(Figure 8), and Hamilton-Piercy (col. 35, line 26) evidence that bits are
inherent to a digital signal. Contrary to Appellant's argument, the Examiner
has provided a basis in fact to reasonably support the determination that
characteristic necessary flows form the teachings of the applied prior art.
CONCLUSION
(1) The Examiner has not erred in rejecting claims 1-3, 5-9, 15, 16,
19, 20, 30, 32 and 39-62 as being unpatentable under 35 U.S.C. § 103(a).
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Application 11/150,820
(2) Claims 1-3, 5-9, 15, 16, 19, 20, 30, 32 and 39---62 are not
patentable.
DECISION
The Examiner's rejections of claims 1-3, 5-9, 15, 16, 19, 20, 30, 32
and 39---62 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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