Ex Parte Jordan et al

Patent Trial and Appeal Board

Jun 30, 2016

11470352 (P.T.A.B. Jun. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111470,352 0910612006
121312 7590 07/05/2016
Foley & Lardner LLP/ Broadcom Corporation
3000 K Street N.W
Suite 600
Washington, DC 20007-5109
FIRST NAMED INVENTOR
John P. Jordan
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.
106861-023 7 7920
EXAMINER
ANYIKIRE, CHIKAODILI E
ART UNIT PAPER NUMBER
2487
NOTIFICATION DATE DELIVERY MODE
07/05/2016 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):
ipdocketing@foley.com
cmckenna@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN P. JORDAN and JASON C. DEMAS
Appeal2015-000074
Application 11/470,352
Technology Center 2400
Before ELENI MANTIS MERCADER, JAMES W. DEJMEK, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOW ARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-27, which constitute all of the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part.
1 Appellants identify Broadcom Corporation as the real party in interest.
App. Br. 4.
Appeal2015-000074
Application 11/470,352
THE INVENTION
The claimed invention is directed to a method and system for
synchronizing signals in a communication system. Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for synchronizing signals in a communication
system, the method comprising:
determining a quantity of data in a buffer for a decoder;
comparing said determined quantity of data to an
underflow threshold level and an overflow threshold level
corresponding to said buffer;
when an overflow condition occurs based on said
comparing to said overflow threshold level, comparing a time
period between current and last overflows to a minimum
overflow period; and
adjusting a speed of a clock used for decoding said data
based on said comparing to said underflow threshold level and
said overflow threshold level and said comparing to said
minimum overflow period.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Bhatt et al.
Felts, III et al. ("Felts")
Yanagihara et al.
Wolf et al.
US 6,298,088 B 1
US 6,581,164 Bl
US 6,697,432 B2
US 7,184,450 Bl
2
Oct. 2, 2001
June 1 7, 2003
Feb.24,2004
Feb.27,2007
Appeal2015-000074
Application 11/470,352
REJECTIONS
Claims 1-5, 7, 10-14, 16, 19-24, and 26 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Wolf in view of Felts. Final
Act. 3---6.
Claims 6, 15, and 25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wolf in view of Felts and Bhatt. Final Act. 6-7.
Claims 8, 9, 17, 18, 26, and 27 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Wolf in view of Felts and Yanagihara.
Final Act. 7-8.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments that the Examiner erred. In reaching this decision, we consider
all evidence presented and all arguments made by Appellants.
Claims 1, 4, and 7
Appellants argue Felts does not teach or suggest "comparing a time
period between current and last overflows to a minimum overflow period,"
as recited in claim 1. App. Br. 12-16; Reply Br. 2-3. Although Appellants
agree Felts teaches using comparisons to an underflow bumper and an
overflow bumper (App. Br. 12-13), Appellants assert Felts "does not even
mention the tracking of the time period between overflows, much less using
that time period in a comparison." App. Br. 14. Accordingly, Appellants
argue the prior art does not teach or suggest the "when an overflow
condition occurs" step or the adjusting step based on the time comparison.
See App. Br. 12-16; Reply Br. 2-3.
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Application 11/470,352
The Examiner finds, inter alia, Felts teaches an "underflow threshold
level and [an] overflow threshold level and ... comparing to said minimum
overflow period." Ans. 3 (citing Felts, Fig. 11, 16:6-17:7).
During examination, claims are given their broadest reasonable
interpretation consistent with the specification. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). "Construing claims broadly
during prosecution is not unfair to the applicant ... because the applicant
has the opportunity to amend the claims to obtain more precise claim
coverage." Id.
Here, claim 1 is directed to a method for synchronizing signals in a
communication system, where the method includes several steps that only
need to be performed if a certain condition precedent is met. See App.
Br. 22 (Claims App'x). For example, claim 1 recites, in pertinent part:
when an overflow condition occurs based on said
comparing to said overflow threshold level, comparing a time
period bet\~1een current and last overflo\~1s to a minimum
overflow period; and
adjusting a speed of a clock used for decoding said data
based on said comparing to said underflow threshold level and
said overflow threshold level and said comparing to said
minimum overflow period.
Id. (emphasis added). Due to the when clause, the comparing a time period
limitation and the results of that comparison need not be performed when an
overflow condition does not occur. In other words, if there is no overflow
condition, then a time comparison to the minimum overflow period need not
be performed. Similarly, if no such comparison is performed, the results of
the comparison cannot be used to adjust the speed of a clock.
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Application 11/470,352
In claim construction, "the name of the game is the claim." In re
Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (quoting Giles Sutherland
Rich, Extent of Protection and Interpretation of Claims - American
Perspectives, 21 Int'l Rev. Indus. Prop. & Copyright L. 497, 499 (1990)).
Based on the claim limitations as written, the broadest reasonable
interpretation of claim 1 encompasses an instance in which the method ends
without there being an overflow condition such that the comparison of the
time period between overflow conditions and a minimum overflow period
and using the result of that comparison to adjust a clock need not be reached.
Thus, the broadest reasonable interpretation of the claim encompasses a
method where only the steps of "determining a quantity of data ... ,"
"comparing said determined quantity of data ... ,"and "adjusting a speed of
a clock used for decoding said data based on said comparing to said
underflow threshold level and said overflow threshold" are performed. 2 The
Examiner determines that the prior art would have rendered obvious this
method covered by claim 1 and Appellants have not challenged any of the
findings or conclusions that support that determination. Accordingly, we do
not find Appellants' arguments persuasive.
A proper interpretation of claim language, under the broadest
reasonable interpretation of a claim during prosecution, must construe the
claim language in a way that at least encompasses the broadest interpretation
of the claim language for purposes of infringement. "[I]t is axiomatic that
that which would literally infringe if later anticipates if earlier." Bristol-
2 The Board previously has construed similar method steps in this same
manner. See Ex parte Schulhauser, Appeal 2013-007847 (PTAB April 28,
2016).
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Application 11/470,352
Myers Squibb Co. v. Ben Venue Labs, Inc., 246 F.3d 1368, 1378 (Fed. Cir.
2001 ). Based on the manner in which claim 1 is written, the modified
method of Wolf in view of Felts would literally infringe claim 1 by virtue of
its performance of only the "determining a quantity of data ... ,""comparing
said determined quantity of data ... ,"and "adjusting a speed of a clock used
for decoding said data based on said comparing to said underflow threshold
level and said overflow threshold" steps. See, e.g., Applera Corp. v.
Illumina, Inc., 375 Fed. App'x 12, 21 (Fed. Cir. 2010) (unpublished)
(affirming a district court's interpretation of a method claim as including a
step that need not be practiced if the condition for practicing the step is not
met); Cybersettle, Inc. v. Nat'! Arbitration Forum, Inc., 243 Fed. App'x 603,
607 (Fed. Cir. 2007) (unpublished) ("It is of course true that method steps
may be contingent. If the condition for performing a contingent step is not
satisfied, the performance recited by the step need not be carried out in order
for the claimed method to be performed."). For the reasons provided supra,
we agree with the Examiner's determination that Wolf, as modified by Felts,
renders obvious the "determining a quantity of data ... ,""comparing said
determined quantity of data ... ,"and "adjusting a speed of a clock used for
decoding said data based on said comparing to said underflow threshold
level and said overflow threshold" steps of claim 1. As such, we agree with
the Examiner's determination that claim 1 is unpatentable under 35 U.S.C.
§ 103(a).
Accordingly, we sustain the Examiner's rejection of claim 1, along
with claims 4 and 7, which are not argued separately.
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Application 11/470,352
Claims 10-2 7
With regard to claims 10 and 19, Appellants rely on the same
arguments discussed above regarding claim 1. See App. Br. 12-16; Reply
Br. 2-3. However, unlike claim 1, independent claims 10 and 19 are not
method claims. We therefore must determine whether or not the Examiner
erred in finding the prior art teaches "when an overflow condition occurs
based on said comparing to said overflow threshold level, comparing a time
period between current and last overflows to a minimum overflow period,"
as recited in claims 10 and 19. App. Br. 23 (Claims App'x).
Based on the record before us, Appellants have persuaded us that the
Examiner has not identified sufficient evidence or provided sufficient
explanation as to how Felts teaches "comparing a time period between
current and last overflows to a minimum overflow period" and using that
comparison in "adjusting a speed of a clock used for decoding said data" as
recited in claims 10 and 19. Although the cited sections refer to ad justing
the speed of a clock, there is no discussion of determining "the time period
between [the] current and last overflows," comparing that time period to "a
minimum overflow period," or using that comparison when "adjusting a
speed of a clock used for decoding ... data."
Accordingly, we are constrained on this record to reverse the
Examiner's rejection of independent claims 10 and 19, along with the
rejections of dependent claims 11-18 and 20-27.
Claims 2 and 3
Claim 2 recites setting an "overflow threshold level to a first level
during a calibration mode" and claim 3 recites setting an "overflow
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Application 11/470,352
threshold level to a second level during a post-calibration mode." App.
Br. 22 (Claims App'x). Appellants argue Wolf teaches decoding audio
frames during a "free running mode." App. Br. 16-17 (citing Wolf8:1-3).
According to Appellants, the cited section of Wolf does not teach or suggest
a calibration mode or a post-calibration mode. App. Br. 17.
The Examiner finds Wolf teaches setting a threshold level during a
calibration mode and a post-calibration mode. Final Act. 4 (citing Wolf 8: 1-
10).
Based on the record before us, Appellants have persuaded us the
Examiner erred. The cited section of Wolf states:
In free-running mode, audio decoder 34 decodes audio
frames when the amount of data in input buffer 48 reaches a
predetermined threshold level. In this mode, CPU 54 may only
generate commands to synchronize or adjust the data
consumption rate. Thus, the audio decode rate is regulated by
the levels of input buffer 48 and output buffer 50, and the audio
decode operation will be suspended while the input buffer
content level is too low or the output buffer level is too high
relative to predetermined threshold levels.
Wolf 8: 1-10 (emphasis added). Although the cited portion discuss a "free
running mode," there is no discussion of calibration or a calibration mode.
Id. And without a calibration mode, there cannot be a post-calibration mode.
Accordingly, we are constrained on this record to reverse the
Examiner's rejection of claims 2 and 3.
Claim 5
Claim 5 recites the additional step of "storing said data corresponding
to at least one of: compressed audio, and compressed video information, in
said buffer." App. Br. 22 (Claims App'x).
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Application 11/470,352
The Examiner finds Wolf teaches "storing said data corresponding to
at least one of: compressed audio, and compressed video information, in
said buffer." Final Act. 5 (citing Wolf 7:54---67). Although Appellants agree
that Wolf "discloses that buffer 48 stores audio data that is decoded,"
Appellants argue there is no teaching or suggestion "that this data is decoded
using the adjusted clock as recited in claim 1." App. Br. 18.
As discussed supra, during prosecution claims must be given their
broadest reasonable interpretation while reading claim language in light of
the specification as it would be interpreted by one of ordinary skill in the art.
Am. Acad., 367 F.3d at 1364. However, we will not read limitations from
the specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184
(Fed. Cir. 1993). Absent an express intent to impart a novel meaning to a
claim term, the words take on the ordinary and customary meanings
attributed to them by those of ordinary skill in the art. Brookhill-Wilk 1,
LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003).
Neither claim 5 nor claim 1 from which it depends require that the
data be decoded using the adjusted clock. See App. Br. 22 (Claims App'x).
Instead, claim 5 simply recites that compressed audio or video data is stored
without indicating the data has to have been decoded using an adjusted
clock. Because Appellants' arguments are not commensurate with the scope
of the claims, they are unpersuasive. See In re Self, 671 F.2d 1344, 1348
(CCPA 1982).
Accordingly, we sustain the Examiner's rejection of claim 5.
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Application 11/470,352
Claim 6
The Examiner finds Bhatt teaches slew limiting the clock used for
adjusting. Final Act. 6 (citing Bhatt 5:18-30); Ans. 8 (same).
Appellants argue Bhatt does not teach to suggest "slew limiting said
clock used for said adjusting," as recited in claim 6. See App. Br. 22
(Claims App'x). Appellants argue Bhatt teaches a decoder with time
circuitry that slews between time stamp sources, which is very different than
the claimed slew limiting the clock. App. Br. 19-20; Reply Br. 4.
We disagree with the Examiner as the Examiner has not identified
sufficient evidence or provided sufficient explanation as to how Bhatt
teaches "slew limiting said clock used for said adjusting," as recited in claim
6. Although Bhatt uses the word "slews," there is nothing in the cited
section that refers to slew limiting the clock used for adjustments as recited
in claim 6. See Bhatt 5: 18-30.
Accordingly, we are constrained on this record to reverse the
Examiner's rejection of claim 6.
Claims 8 and 9
With respect to dependent claims 8 and 9, Appellants merely contend
because the additional reference used in the rejections of these claims
(Yanagihara) does not cure the deficiencies in claim 1, the Examiner failed
to make a prima facie case of obviousness for these claims. App. Br. 20.
Because we determine there are no deficiencies associated with claim 1 for
the reasons discussed above, we sustain the rejection of these claims.
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Application 11/470,352
DECISION
For the above reasons, we affirm the Examiner's decisions rejecting
claims 1 and 4--9.
For the above reasons, we reverse the Examiner's decisions rejecting
claims 2, 3, and 10-27.
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-IN-PART
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