Ex Parte Harel et al

Patent Trial and Appeal Board

Jun 4, 2014

12266234 (P.T.A.B. Jun. 4, 2014)

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.
12/266,234 11/06/2008 Jean-Pierre Harel LUTZ 200922US01 3692
48116 7590 06/04/2014
FAY SHARPE/LUCENT
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115-1843
EXAMINER
LE, HOANGANH T
ART UNIT PAPER NUMBER
2845
MAIL DATE DELIVERY MODE
06/04/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JEAN-PIERRE HAREL, WARREN F. HUNT,
PATRICK LECAM, MARCO KUNZE, JEROME PLET, and
XIAO YUN (SELINA) QU
____________

Appeal 2012-005821
Application 12/266,234
Technology Center 2800
____________

Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge GARRIS.
Opinion Dissenting filed by Administrative Patent Judge WARREN.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2012-005821
Application 12/266,234

2

Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner's
rejection under 35 U.S.C. § 103(a) of claims 1-5 as unpatentable over
Jonsson et al. (US 6,295,028 B1, patented Sept. 25, 2001) in view of Shin et
al. (US 2010/0214190 A1, published Aug. 26, 2010). We have jurisdiction
under 35 U.S.C. § 6.

We AFFIRM.

Appellants claim an antenna 1 comprising a first reflective means 3
and a second reflective means in the form of a choke reflector 10 which is
U-shaped with sidewalls, "one of the sidewalls being separated from the first
reflective means by a layer of dielectric material [13] in order to connect it
to the first reflective means by way of capacitive coupling" (sole
independent claim 1, Figs. 1, 2a).

A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. An antenna comprising a network of arrayed radiating elements, a
first reflective means comprising a flat central part upon which are disposed
the radiating elements and longitudinally folded edges on either side of the
array of elements, and at least one second reflective means, wherein the
second reflective means is a choke reflector disposed outside the space
separating the radiating elements from the folded edge of the first reflective
means, and wherein the second reflective means is U-shaped with two
sidewalls, one of the sidewalls being separated from the first reflective
means by a layer of dielectric material in order to connect it to the first
reflective means by way of capacitive coupling.
Appeal 2012-005821
Application 12/266,234

3

Appellants present arguments specifically directed to limitations in
claims 1 and 2 only (App. Br. 7-11). Therefore, dependent claims 3-5 will
stand or fall with their parent claims 1 and/or 2.

We sustain the above rejection for the reasons expressed by the
Examiner in the Final Office Action and the Answer with the following
comments added for emphasis and completeness.

The Examiner finds that Jonsson discloses an antenna which includes
a first reflector (see, e.g., 10, 13, and 14 of Figs. 1-2) and a second reflector
(see, e.g., 11 and 12 of Figs. 1-2) but that Jonsson does not describe the
second reflector as a choke reflector (FOA 2-3). Nevertheless, the Examiner
finds that Jonsson's second reflector constitutes a choke reflector,
particularly as evidenced by Shin, and therefore satisfies the choke reflector
limitation of claim 1 (id. at 3; see also Ans. 8-9).1

In addition, the Examiner finds that Jonsson does not teach the first
and second reflectors of the antenna are separated by a layer of dielectric
material in order to connect them by way of capacitive coupling as required

1 In their Reply Brief, Appellants appear to argue for the first time in this
appeal that it would be inconsistent with their Specification disclosure to
interpret the claim 1 choke reflector as encompassing a second reflector of
the type taught by Jonsson (Reply Br. 2). Such argument is untimely and
will not be considered since it is not accompanied by a showing of good
cause explaining why the argument could not have been presented in the
Appeal Brief. See Ex parte Borden, 93 USPQ2d 1473, 1476-77 (BPAI
2010) (informative).
Appeal 2012-005821
Application 12/266,234

4

by claim 1 (FOA 3) but that Shin teaches connecting an antenna reflector
and a choke reflector via an insulated member so as to minimize PIMD (i.e.,
passive intermodulation distortion),2 thereby creating a capacitive coupling
(id. at 3-4). The Examiner concludes that it would have been obvious to
connect Jonsson's first and second reflectors via an insulated member so as
to minimize PIMD as taught by Shin, thereby resulting in a layer of
dielectric material and a capacitive coupling as required by claim 1 (id.).

Appellants argue "in reviewing Shin it is apparent that the claimed
layer of dielectric material, which connects the second reflective means to
the first reflective means by way of capacitive coupling, is not disclosed"
(App. Br. 9).

In response, the Examiner finds that "the Shin choke structure is
separated from the reflector structure by a dielectric material in two different
ways: by the insulator 206 and [by] the natural air gap formed as shown in
Fig. 2" (Ans. 9). Moreover, the Examiner provides and discusses two
additional prior art references (i.e., Godard et al. (US 6,414,636 B1, patented
Jul. 2, 2002) and Roberts et al. (US 7,443,356 B2, patented Oct. 28, 2008))
as support for the above finding that the connection taught by Shin would
result in a capacitive coupling (id. at 10-11).3

2 Appellants also seek to avoid intermodulation problems in their invention
(Spec. 3:6-9).
3 We emphasize that these additional references are not for the purpose of
changing the prior art combination that forms the basis of the rejection
before us but rather are merely for the purpose of providing evidence of the
Appeal 2012-005821
Application 12/266,234

5

Appellants reply by contending that the insulated member 206 and the
natural air gap of Shin's connection do not correspond to the claimed layer
of dielectric material (Reply Br. 3).

However, Appellants provide no support for this contention. For
example, Appellants do not identify any Specification disclosure concerning
the claimed layer of dielectric material which would exclude the insulated
member and natural air gap of Shin. It follows that Appellants' contention
lacks persuasive merit.

In their Reply Brief, Appellants acknowledge but do not discuss the
above additional prior art references (i.e., Godard and Roberts) referred to in
the Examiner's Answer (id.). Instead, Appellants state that "the choke
member 202 [of Shin] is always electrically connected to the reflection plate
200 by means of connection member 208, even if an insulated member 206
is located between the reflection plate 200 and the choke member 202" (id.
at 4). Appellants argue "[t]his means that capacitive coupling cannot occur
between the reflection plate 200 and the choke member 202 in Shin" (id.).

Once again, Appellants provide no support for their argument.
Furthermore, this argument is undermined by the additional references (i.e.,
Godard and Roberts) provided and discussed by the Examiner and by the

state of the art including the knowledge of one with ordinary skill in this art.
See Randall Mfg. v. Rea, 733 F.3d 1355, 1362-63 (Fed. Cir. 2013).
Appeal 2012-005821
Application 12/266,234

6

fact that claim 1 does not expressly exclude the type of connection member
208 used by Shin.

For the reasons expressed above and given by the Examiner, the
appeal record contains a preponderance of evidence in support of the
Examiner's finding that Shin's connection inherently possesses the capacitive
coupling characteristic required by claim 1 and accordingly that it is
Appellants' burden to prove the connection does not actually possess this
characteristic. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997)
and In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Appellants have not
provided this record with any such proof.

Appellants also argue that Jonsson does not disclose the features
recited in dependent claim 2 (App. Br. 10-11).

This argument is not persuasive because it does not address and
therefore does not reveal error in the Examiner's proposed combination of
Jonsson and Shin or the Examiner's finding that Jonsson's disclosure in
column 5, lines 8-14, would have suggested the features recited in claim 2
(Ans. 12).4

The decision of the Examiner is affirmed.

4 Significantly, this finding by the Examiner has not been contested by
Appellants in their Reply Brief.
Appeal 2012-005821
Application 12/266,234

7

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).

AFFIRMED

cdc

Appeal 2012-005821
Application 12/266,234

1

WARREN, Administrative Patent Judge, Dissenting:
I am of the opinion that on this record, Appellant has established that
the Examiner has not made out a prima facie case of obviousness and thus
the rejection of claims 1-5 under 35 U.S.C. § 103(a) must be reversed for
several reasons.
First, the Examiner did not set forth an interpretation of the term
“choke reflector” in claim 1 until responding to Appellants’ arguments in the
Appeal Brief (see Ans. 5-6; Final Office Action mailed May 17, 2011
(FOA), at 2-5), and then did not do so in light of the Specification, instead
citing the extrinsic Runyon5 reference which was not made of record until
the Answer. Ans. 4, 8-9. See, e.g., In re Suitco Surface, Inc., 603 F.3d
1255, 1259-60 (Fed. Cir. 2010) (“construction [must] be ‘consistent with the
specification, . . . and . . . claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art’”);
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) (“[I]t would be
unreasonable for the PTO to ignore any interpretive guidance afforded by
the applicant’s written description.”). In this respect, I disagree with the
majority’s holding that Appellants’ response to the Examiner’s belated
interpretation of the claim term “choke reflector” in the Reply Brief
constitutes a new argument that should have been present in the Appeal
Brief. Reply Br. 2. Decision 3 n.1. Indeed, the Examiner clearly invited
Appellants’ consideration of and reply to the interpretation stated for the first
time in the Answer. I fail to find in the Decision any reason why the

5 US 6,067,053.
Appeal 2012-005821
Application 12/266,234

2

extrinsic Runyon reference trumps the disclosure in the Specification with
respect to the interpretation of the claim term “choke reflector.”
And, second, I agree with Appellants that the Examiner erred in
finding that the combination of Jonsson, Shin, Godard and Roberts would
have led one of ordinary skill in the art to an antenna comprising a first
reflector comprising the specified structure and a second reflector which is a
choke reflector disposed outside the space separating the radiating elements
from the folded edge of the first reflector and is U-shaped with two
sidewalls, one of the sidewalls separated from the first reflector by a layer of
dielectric material in order to connect the choke reflector to the first reflector
by capacitive coupling as suggested by Shin, Godard and Roberts, thus
arriving an antenna encompassed by claim 1.6

6 The Examiner relies on Godard and Roberts both of which were made of
record in the Answer to support a position in the statement and explanation
of the ground of rejection in response to Appellants’ arguments based on
Shin alone in the Appeal Brief. App. Br. 8-10; Ans. 5-6, 9-12. Thus, in my
view, Godard and Roberts are relied on to provide factual foundation for the
ground of rejection in response to Appellants’ arguments based on Shin
alone. Appellants considered Godard and Roberts with respect to Shin in the
Reply Brief (Reply Br. 3-4), and we have considered the positions of the
Examiner and Appellants in this respect. Cf., e.g., In re Hoch, 428 F.2d
1341, 1342 n. 3, (CCPA 1970). Thus, I fail to see how Randall Mfg. v. Rea,
733 F.3d at 1362-63, cited by the majority, applies to the facts of this appeal.
Decision 4-5 n.3. In Randall Mfg., third-party requester Randall Mfg.
(Randall) “argued that the state of the art and the level of skill at the time of
[the] . . . application,” citing “a host of references that had been considered
by the Examiner during the course of the reexamination – some of which
had provided the basis for rejecting . . . original claims,” and providing “a
declaration from its employee” with respect to that which “was well known”
in the art. Randall Mfg., 733 F.3d at 1360. Our reviewing court held that
Appeal 2012-005821
Application 12/266,234

3

I determine that the language of claim 1 taken in light of the
Specification as it would be considered by one skilled in the art, specifies
that the layer of dielectric material between the first reflector and the choke
reflector enables the first reflector and the choke reflector to be connected by
capacitive coupling, which occurs when “the grounded parts are not in direct
contact.” Spec. 2:28-32, 3:6-11, 5:7-10.
The Examiner relied on an unexplained scientific theory in contending
that in Shin, with reference to Shin Figure 8, insulated member 806 is “a
layer of dielectric material” disposed between and separating reflection plate
800 and choke member 802 such that “capacitive coupling is . . . created
between reflector plate 800 and a metal structure such as [choke member]
802.” FOA at 3 (citing Shin ¶¶ 0009, 0024; Manual of Patent Examining
Procedure (MPEP) § 2144.02, Scientific Theory); Ans. 5-6 (citing Shin
¶¶ 0009, 0024; MPEP); see Shin ¶ 0101, Fig. 8.
Appellants submit that Shin’s choke reflector 202 is not directly
contacted with reflector 200, but is connected through connection member
208. App. Br. 8 (citing Shin ¶ 0051); see Shin Fig. 2. Appellants further
point out that Shin does not disclose the claimed dielectric layer as the
insulator 206 between reflector 200 and choke reflector 200, and “Shin

“[t]he Board’s failure to consider [Randall’s] evidence – its failure to
consider the knowledge of one of skill in the art appropriately – was plainly
prejudicial.” Randall Mfg., 733 F.3d at 1363. That Godard and Roberts can
be considered evidence of the knowledge of one of ordinary skill in the art
does not cure the difference in facts with respect to the application of
references to the claimed invention between this appeal and Randall Mfg.
Appeal 2012-005821
Application 12/266,234

4

teaches that the reflector (200), the choke member (202), and the connection
member (208) are all metal members in contact.” App. Br. 9 (citing Shin
¶ 0052). Appellants contend that the Examiner has not explained the
“[s]cientific [t]heory” establishing capacitive coupling between reflector 200
and choke reflector 202 directly coupled to each other by connection
member 208 in Shin’s structure. App. Br. 9.
In response, the Examiner contends that in Shin, while connector 208
connects reflector 200 and choke reflector 202, Appellants’ position does not
take into account that insulator 206 separates reflector 200 and choke
reflector 202 “by a certain distance,” and thus, “a dielectric” separates
reflector 200 and choke reflector 202 “in two different ways: by the insulator
206 and the natural air gap formed as shown in Fig. 2.” Ans. 9 (citing Shin
¶ 0046); see Shin Fig. 2. The Examiner further contends that “although the
choke and reflector system are in galvanic contact by way of the connectors
208, these single-point contacts do not eliminate the capacitive coupling that
would physically occur between the choke and reflector.” Ans. 10. The
Examiner relies on Godard and Roberts “for illustrative purposes only” to
“demonstrate the capacitive interaction between the choke and reflector
elements of Shin.” Ans. 10.
I find that, as the Examiner points out, Godard would have disclosed
to one of ordinary skill in the art a connector structure, for transferring radio
frequency (RF) energy into/out of an RF circuit, which utilizes capacitive
coupling to provide an RF ground connection and a direct current (DC)
ground connection “for use in providing a signal flow path for DC and other
low frequency signal components,” wherein the “connector structure is
Appeal 2012-005821
Application 12/266,234

5

designed so that a majority of the RF signal energy flowing through the
connected ground connection flows through the capacitive coupling and
relatively little flows through the DC short.” Godard col.1 ll.34-45. Ans.
10. Godard illustrates an embodiment in Figures 1 and 2 in which connector
10 comprises conductive flange 14, grounded to the system ground and
separated from conductive ground plane structure 18 by dielectric layer 20,
and short circuiting member 40, wherein “the size and location” of short
circuiting member 40 “is designed so that very little of the RF energy
flowing through the ground connection of the connector during normal
operation will flow” there through. Godard col.3 l.1-48, col.4 ll.48-57, Figs.
1, 2.
I find that, as the Examiner points out, Roberts would have disclosed
to one of ordinary skill in the art an antenna module comprising a
decoupling element attached to a ground plate by dielectric spacers which
provides capacitive coupling of the decoupling element to the ground plane
and can be attached to the decoupling by snap-in mounting via one or more
holes. Roberts col.1 ll.43-51. Ans. 10-11. Roberts illustrates an
embodiment in Figures 1 and 2 in which decoupling elements 20, 21 are
attached to ground plane 30 via two dielectric spaces 20c which separate
decoupling elements 20, 21 from ground plane 30, leaving an open space
therebetween. Roberts col.3 ll.3-28, Figs. 1, 2.
Appellants do not dispute the Examiner’s findings with respect to the
teachings of Godard and Roberts. Reply Br. 3. Instead, Appellants submit
that in Shin, “capacitive coupling cannot occur between the reflection plate
200 and the choke member 202.” Reply Br. 3-4 (original emphasis deleted).
Appeal 2012-005821
Application 12/266,234

6

In this respect, Appellants contend that connection member 208 electrically
connects reflector 200 and choke member 202 even though insulated
member 206 separates reflector 200 and choke member 202, pointing out
that connection member 208 is formed through base member 200A of
reflector plate 200, insulation member 206 and choke member 202. Reply
Br. 4 (citing Shin ¶ 0056); see Shin Fig. 2.
In my view, the dispositive issue raised by the positions of Appellants
and the Examiner is whether one of ordinary skill in the art would have been
led by Godard and Roberts to use a dielectric as Shin’s insulator 206 with
the reasonable expectation that capacitive coupling would occur in Shin’s
structure even though connection member 208, which extends through
insulated member 206, electrically connects choke member 202 with
reflector 200 which functions as the ground, and thus would have modified
Jonsson accordingly in order to arrive at an antenna encompassed by claim
1. Ans. 5-6.
On this record, I agree with Appellants that the Examiner has not
explained why one of ordinary skill in the art would have reasonably
expected that the modification of Shin’s structure solely by using a dielectric
as insulator 206 and leaving in place connector 208, designed to directly
electrically connect choke member 202 and reflector 200 which functions as
the ground, would result in capacitive coupling of choke member 202 with
reflector 200. Indeed, Roberts does not disclose a structure which includes a
connector electrically connecting a decoupling agent to a ground plate along
with the dielectric spacers, and Godard discloses a structure in which the DC
ground connection is designed to provide a signal path for a DC signal with
Appeal 2012-005821
Application 12/266,234

7

the intention that the majority of the RF signal energy flows to ground
through capacitive coupling, neither structure having Shin’s configuration,
particularly the connector directly connecting the choke reflector and the
reflector ground plate to conduct current therebetween as the Examiner
admits.