Ex Parte Kolze

Patent Trial and Appeal Board

Sep 8, 2017

13346071 (P.T.A.B. Sep. 8, 2017)

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.
13/346,071 01/09/2012 Thomas J. Kolze 2875.0900005 3517
49579 7590 09/12/2017
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
DUONG, FRANK
ART UNIT PAPER NUMBER
2474
NOTIFICATION DATE DELIVERY MODE
09/12/2017 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):
e-office @ skgf.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS J. KOLZE
Appeal 2015-007869
Application 13/346,071
Technology Center 2800
Before ROBERT E. NAPPI, CARL W. WHITEHEAD JR and
SHARON FENICK, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellant has filed a Request for Rehearing under 37 C.F.R.
§41.52 on August 16, 2017 (“Request”) from our Decision on Appeal
mailed June 16, 2017 (“Decision”), wherein we affirmed the obviousness
type double patenting rejection of claims 1—4, 6—10, and 21; reversed the
anticipation rejection of claims 1—4, 6—9 and 21; reversed the anticipation
rejection of claim 10; affirmed the obviousness rejection of claims 1—4, 6—9
and 21; and reversed the obviousness rejection of claim 10.
See Decision 6.
Appeal 2015-007869
Application 13/346,071
Appellant contends:
The Board’s obviousness decision expressly relies on the
Board’s assertion that reference “Lee’s different channels would
inherently have different bandwidths.” Decision, p. 4 (emphasis
added). This assertion is a clear misapprehension, since a
different Lee channel does not necessarily have a different
bandwidth. In fact, Lee’s “different” channel is merely a channel
that it is not the same channel that has already been used.
Request 2.
We agree with Appellant’s contention that Lee’s different channels
would not inherently have different bandwidths; however, we disagree with
Appellant’s contention that the Board’s decision relies upon our assertion of
inherency. We found:
We agree with Appellant’s contentions that Lee is silent in regard
to discloses two channels differentiated by the wideband or
narrowband nomenclature. However, as Appellant
acknowledges, Lee discloses initializing a modem that “results
in two channels that are available and different.” Appeal Brief
11. We disagree with Appellant’s conclusory argument on page
11 of the Appeal Brief that Lee is “disinterested] in channel
initialization that would result in different bandwidths” because
Lee’s different channels would inherently have different
bandwidths. Appellant’ Specification discloses in paragraph 17,
“according to the present invention, a CM [cable modem] can be
ranged on at least two carrier frequencies, or channels, at least
one channel is narrowband and at least one channel is wideband.”
Appellant fails to disclose any criticality associated with the
narrowband or wideband nomenclature and therefore we
agree with the Examiner’s finding that modifying Lee to
include channels that are differentiated by either a wideband
or narrowband designation would be obvious to one of
ordinary skill in the art.1 See Final Rejection 8. Accordingly,
1 “As our precedents make clear, however, the analysis need not seek out
2
Appeal 2015-007869
Application 13/346,071
we sustain the Examiner’s obviousness rejection of claims 1—4,
6—9, and 21.
Decision 4—5 (emphasis added).
Appellant argues “As best understood, the Board’s decision appears to
rely on ‘common sense’ to modify Lee in the manner proposed.” Request 7.
However, we stated in the Decision that “Lee [was] silent in regard to
disclosing] two channels differentiated by the wideband or narrowband
nomenclature” and that we found the Specification failed to disclose
criticality in regard to the employment of the narrowband and wideband
designation for the first and second communications channels. See Decision
4. The terms narrowband and wideband are universally known in the
technology, however the terms are not considered to be standards of
measurement. Appellant fails to address the criticality or lack thereof of the
narrowband and wideband designation and therefore Appellant’s Request for
Rehearing has been granted to the extent that our decision has been
reconsidered, but such request is denied with respect to making any
modifications to the decision other than finding Appellant’s argument
persuasive that Lee’s different channels would not inherently have different
band widths.
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int 7 v. Teleflex Inc.,
550 U.S. 398,418 (2007).
3
Appeal 2015-007869
Application 13/346,071
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).
REHEARING
DENIED
4