Ex Parte Janofsky

Patent Trial and Appeal Board

Mar 16, 2015

11157286 (P.T.A.B. Mar. 16, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ERIC B. JANOFSKY
____________

Appeal 2012-010661
Application 11/157,286
Technology Center 2600
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Before MAHSHID D. SAADAT, DANIEL J. GALLIGAN, and
NORMAN H. BEAMER, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

Appellant
1
appeals under 35 U.S.C. § 134(a) from a non-final
rejection of claims 1, 2, 13–17, and 20.
2
We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1
According to Appellant, the real party in interest is Marvell World Trade,
Ltd. (App. Br. 3).
2
Claims 3–12, 18, 19, and 21–74 have been cancelled (see Reply Br. 3).
Appeal 2012-010661
Application 11/157,286

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STATEMENT OF THE CASE
Exemplary claim 1 under appeal reads as follows:
1. A wireless local area network module comprising:
an antenna to receive first orthogonal frequency-division
multiplexing (OFDM) signals, and to transmit second OFDM
signals;
a communication circuit comprising
an OFDM demodulator to produce first digital data
based on the first OFDM signals, and
an OFDM modulator to produce the second
OFDM signals based on second digital data;
a host interface to provide the first digital data to a host,
and to receive the second digital data from the host;
an external antenna interface to receive the first OFDM
signals from, and to transmit the second OFDM signals to, an
external antenna, the external antenna to receive the first
OFDM signals and to transmit the second OFDM signals;
at least one switch to provide a signal path for the first
OFDM signals and the second OFDM signals between the
communication circuit and one of the antenna and the external
antenna interface in accordance with a control signal; and
a printed circuit board, wherein the antenna is formed
within a substrate of the printed circuit board, and wherein the
communication circuit and the external antenna interface are
arranged on the printed circuit board.
The Examiner rejected claims 1, 2, 13–17, and 20 under 35 U.S.C.
§ 103(a) as being unpatentable over Castagnoli (US 7,505,450 B2; Mar. 17,
2009) and Kearney (US 2005/0273790 A1; Dec. 8, 2005). (See Ans. 4–7).

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ANALYSIS
With respect to claim 1, Appellant contends Figure 2 of Castagnoli
does not disclose any type of substrate or that the depicted antenna 87 is
formed within a substrate (App. Br. 7). The Examiner explains WLAN
module 84 and antenna 87 shown in Figure 2 of Castagnoli are described as
implemented in a wireless interface chip set (Ans. 8 (citing Castagnoli, col.
5, ll. 47–53 and 58–59)). We agree with the Examiner’s findings and
conclusion (id.) that the antenna, as part of the WLAN interface unit 80,
would be embedded in the substrate of a printed circuit board of the wireless
network interface chip set.
Appellant further argues that Castagnoli includes no teaching or
suggestion regarding an antenna and an external antenna for receiving first
and second OFDM signals (App. Br. 8). The Examiner finds WLAN Radio
Module 84 of Castagnoli is disclosed as an Orthogonal Frequency Division
Multiplexed modulation-demodulation unit that implements OFDM
functionality (Ans. 8–9 (citing Castagnoli, col. 5, l. 66 – col. 6, l. 5)). We
agree with the Examiner that antenna 87 receives and transmits OFDM
signals, as recited in claim 1. Furthermore, the Examiner relied on Kearney
for teaching an external antenna (Ans. 9).
Regarding the recited “switch to provide a signal path for the first
OFDM signals and the second OFDM signals between the communication
circuit and one of the antenna and the external antenna interface,” Appellant
argues that switch 62 of Castagnoli does not provide a signal path between
radio module 84 and antenna 87 (App. Br. 9). Appellant further asserts the
Examiner erred in finding that at least one switch must exist to provide a
signal path because the Examiner has not established that the allegedly
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Application 11/157,286

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inherent feature is necessarily present in the prior art reference (App. Br. 9–
10). The Examiner points out that Kearney was relied on for disclosing a
wireless network interface according to IEEE 802.11 standard including an
antenna formed in a printed circuit board, which must have a switch for
providing the signal path between the communication circuit and either of
the antenna or the external antenna (Ans. 9).
We concur with the Examiner’s conclusion and further observe that
Figure 2 of Castagnoli actually shows wireless interface unit 60, which
operates in a frequency band different from the frequency band of WLAN
interface unit 80 (col. 5, ll. 11–15). Interface unit 60 includes first and
second antennas 85 and 86 communicating with the communication circuit
in routing node control processor 70 via a signal path through switch 62,
backbone radio module 64 and backbone MAC control unit 66 (Col. 5, ll.
28–31). Castagnoli describes radio module 64 as an OFDM
modulation/demodulation unit and back bone MAC control unit 66 as a unit
that could implement IEEE 802.11 standard (col. 5, ll. 38–50). Similarly, as
found by the Examiner (Ans. 8), WLAN interface unit 80 comprises WLAN
MAC control unit 82, WLAN radio module 84, and at least one antenna 87
(col. 5, ll. 58–59), which implies a two-antenna configuration similar to
interface unit 60 and a switch to provide a signal path for the first and
second OFDM signals. Therefore, we agree with the Examiner (Ans. 9) that
a switch must exist when WLAN interface unit 80 includes more than one
antenna.
Lastly, Appellant contends Kearney includes no teachings related to
an antenna formed in a substrate, and an antenna or an external antenna to
receive and transmit OFDM signals, and a switch to provide a signal path
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between the communication circuit and one of the antenna and the external
antenna interface (App. Br. 11). The Examiner reiterates Kearney was relied
on for teaching an internal antenna embedded in a printed circuit board, an
external antenna according to IEEE 802.11 standard, where a switch must be
present to provide the required signal path (Ans. 9). We agree with the
Examiner. We further remain unpersuaded by Appellant’s contentions that
an antenna embedded in a chip set is not necessarily formed within a
substrate (see Reply Br. 5). As explained by the Examiner (Ans. 9), a well-
known implementation of a WLAN interface unit in a wireless network
interface chip set would be forming the antenna within a substrate of a
printed circuit board where the chip set is arranged.
Furthermore, we also agree with the Examiner with respect to
combining the teachings of Castagnoli and Kearney and note that the
Examiner properly relies on In re Keller, 642 F.2d 413, 425 (CCPA 1981)
and In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (Ans. 10).
As stated by the Examiner (id.), nonobviousness cannot be established by
attacking the references individually when the rejection is predicated upon a
combination of prior art disclosures.
For the above-stated reasons, we are not persuaded by Appellant’s
arguments that the Examiner erred in finding the disclosure of Castagnoli
and Kearney teaches or suggests all the disputed features of claim 1.
Therefore, we sustain the 35 U.S.C. § 103(a) rejection of independent claim
1, as well as independent claim 13 and dependent claims 2, 14–17, and 20
which are not argued separately.

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DECISION
The decision of the Examiner to reject claims 1, 2, 13–17, and 20 is
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)(1)(iv).

AFFIRMED

ELD