Ex Parte Lemme

Patent Trial and Appeal Board

Nov 28, 2018

14164379 (P.T.A.B. Nov. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/164,379 01/27/2014
22045 7590 11/30/2018
Brooks Kushman
1000 Town Center
22nd Floor
SOUTHFIELD, MI 48075
FIRST NAMED INVENTOR
Peter Lemme
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.
LEPEOlOlPUS 5953
EXAMINER
BURKE, SEAN P
ART UNIT PAPER NUMBER
3646
NOTIFICATION DATE DELIVERY MODE
11/30/2018 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):
docketing@brookskushman.com
kdilucia@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER LEMME
Appeal2018-001923
Application 14/164,379
Technology Center 3600
Before WILLIAM A. CAPP, NATHAN A. ENGELS, and
PAUL J. KORNICZKY, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the non-final
rejection of claims 1-10 as unpatentable under 35 U.S.C. § 103(a) over
Vijitha Weerackody and Enrique G. Cuevas, (Technical Challenges and
Peiformance of Satellite Communications on-the-Move Systems, 30 Johns
Hopkins APL Technical Digest 113-121 (2011)) ("Weerackody") and Lino
Gonzalez et al., (A Regulatory Study and Recommendation for EIRP
Spectral Density Requirement/Allowance for SOTM Terminals at Ka-Band
on WGS System, The 2010 Military Communications Conference -
Unclassified Program- Systems Perspectives Track 1992-1997 (2010))
("Gonzalez") and the rejection of claim 10 under 35 U.S.C. § l 12(b) as
indefinite. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal2018-001923
Application 14/164,379
THE INVENTION
Appellant's invention relates to satellite communication. Spec. ,r 1.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. A method of communicating via a satellite, the method
compnsmg:
locating a target satellite in an inclined geosynchronous
orbit;
pointing an antenna at an aiming point offset from a
geostationary arc, the antenna having a radiation pattern;
estimating a maximum boresite Equivalent Isotropic
Radiated Power (EIRP) Spectral Density (SD) that complies
with a predetermined maximum off-axis EIRP SD mask along
the geostationary arc based on the antenna radiation pattern and
the aiming point;
encoding information into a radio frequency signal based on
an information rate, coding parameters, and modulation
parameters; and
transmitting the radio frequency signal to the target satellite
at a transmitted boresite EIRP SD based on the maximum
bore site EIRP SD.
Claim 1
OPINION
Unpatentability of Claims 1-10
over Weerackody and Gonzalez
The Examiner finds that W eerackody discloses the invention
substantially as claimed except for an inclined geosynchronous orbit, for
which the Examiner relies on Gonzalez. Non-Final Action 4--5. The
Examiner finds that the difference between a geosynchronous and
geostationary orbit is "minute." Id. at 5. The Examiner concludes that it
would have been obvious to a person of ordinary skill in the art at the time
of the invention to combine the system of Weerackody with the
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Appeal2018-001923
Application 14/164,379
geosynchronous orbit of Gonzalez to achieve the claimed invention. Id.
According to the Examiner, a person of ordinary skill in the art would have
done this to provide additional capacity to a satellite on-the-move ("SOTM")
system. Id.
Appellant argues that Gonzalez does not necessarily disclose an
inclined geosynchronous orbit. Appeal Br. 3. According to Appellant, the
orbit referred to in Gonzalez could be a geostationary orbit, which is a subset
of geosynchronous orbits that is not "inclined." Id.
In response, the Examiner states that the orbit of Gonzalez, even if it
is a geostationary orbit, is necessarily "inclined," because: "Anything which
is in orbit is 'inclined' by definition." Ans. 3.
Appellant and the Examiner thus disagree over what it means for an
orbit to be "inclined." During examination of a patent application, pending
claims are given their broadest reasonable construction consistent with the
specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). Under the broadest reasonable interpretation standard, claim
terms are given their ordinary and customary meaning as would be
understood by one of ordinary skill in the art in the context of the entire
disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007).
We disagree with the Examiner's claim construction. It is a cardinal
rule of claim construction that meaning should be given to all of a claim's
terms. See Dell Inc. v. Acceleron, LLC, 818 F.3d 1293, 1299 (Fed. Cir.
2016). If anything and everything in orbit were "inclined," the word, as
used in the claim, would be entirely superfluous and have no meaning.
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Appeal2018-001923
Application 14/164,379
Figure 8 of Appellant's disclosure illustrates how the orbital pattern of
an inclined geosynchronous orbit deviates from that of a geostationary orbit
( or "arc"). Fig. 8; Spec. ,r,r 14, 46. Specifically, Appellant's Specification
teaches that "an inclined geosynchronous orbit has a non-zero angle of
declination relative to the equatorial plane." Id. ,r 46. Thus, contrary to the
Examiner's position, Appellant's disclosure clearly and unambiguously
differentiates between a geostationary orbit and an inclined geosynchronous
orbit. We construe and apply the claim term accordingly.
Appellant also takes issue with the Examiner's application of the
claim term "aiming point." Appeal Br. 4. Appellant argues that the
Examiner's applied art discusses pointing errors in which the antennas may
inadvertently be oriented slightly away from the intended aiming point. Id.
In response, the Examiner takes the position that there are an infinite
number of geostationary arcs and, consequently, it would be impossible to
point an antenna offset from one geostationary arc without hitting another
geostationary arc. Ans. 5.
Id.
Under the broadest reasonable interpretation, "pointing an
antenna at an aiming point offset from a geostationary arc" only
implies that that [sic] there is one arc ( out of an infinite number
of arcs) to which the antenna must be offset. Nothing exists in
the claims or specification to tie the geostationary arc with the
satellite in an inclined geosynchronous orbit.
Once again, we must be cognizant that a claim construction, while it
may be broad, it must also be reasonable. Microsoft Corp. v. Proxyconn,
Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). A construction that is
"unreasonably broad" and which does not "reasonably reflect the plain
language and disclosure" will not pass muster. Id.
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Appeal2018-001923
Application 14/164,379
Appellant's Specification teaches that:
Communications satellites may be maintained in geostationary
orbits such that, when viewed from a particular location on
earth, they do not appear to be moving. A geostationary orbit is
a circular orbit in the same plane as the earth's equator with an
altitude of approximately 35,790 km such that the orbital period
is one day.
Spec. ,r 40. A person of ordinary skill in the art reading Appellant's
disclosure would not understand that there are an infinite number of
geostationary arcs in the context of Appellant's disclosure and the subject
matter of communication satellite technology in general. Although it may
be theoretically possible to maintain a satellite in orbit over a single point on
the Earth's surface that is not located on the equatorial plane at the
prescribed distance, the energy and propulsion requirements to maintain
such a position are such that a person of ordinary skill in the art would not
understand Appellant's disclosure in the overly broad manner of the
Examiner's construction.
With the foregoing in mind, it is our opinion that the combination of
W eerackody and Gonzalez does not teach, disclose, or reasonably suggest
pointing an antenna at a point that is offset from a geostationary arc in order
to facilitate communication with a target satellite that resides in an inclined
geosynchronous orbit. Accordingly, we determine that the Examiner's
findings of fact are not supported by a preponderance of the evidence and
further determine that the Examiner's legal conclusion of unpatentability is
in error. Accordingly, we do not sustain the Examiner's unpatentability
rejection of claim 1.
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Appeal2018-001923
Application 14/164,379
Claims 2-10
These claims depend from claim 1. Claims App. As such, the
Examiner's rejection of these claims suffers from the same infirmity that
was identified above with respect to claim 1. Thus, for essentially the same
reason expressed above in connection with claim 1, we do not sustain the
Examiner's section 103 unpatentability rejection of claims 2 through 10.
Indefiniteness of Claim 10
Claim 10 depends from claim 1 and adds the limitation: "wherein the
predetermined maximum off-axis EIRP along the geostationary arc is
established by government regulation." Claims App. The Examiner
considers that it is unclear how complying with government regulations
further delineates the invention. Non-Final Action 3. Furthermore, the
Examiner points out that government regulations related to
telecommunications "fluctuate often and are not meaningfully predictable."
Ans. 6.
Appellant expresses a belief that Section 112 does not require further
identification of the government regulation. Appeal Br. 5. Appellants argue
that "Claim 10 is satisfied if the value of the maximum off-axis EIRP is
determined by a government regulation, regardless of whether that
regulation is enacted before issuance of a patent or between issuance of a
patent and execution of the method." Reply Br. 5.
The PTO can properly reject a claim as indefinite if the claim is
ambiguous, vague, incoherent, opaque, or otherwise unclear. See In re
Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014). Rigorous application of the
statutory standard serves an important public notice function. See Predicate
Logic, Inc. v. Distributive Software, Inc., 544 F.3d 1298, 1300 (Fed. Cir.
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Appeal2018-001923
Application 14/164,379
2008). Section 112 places the burden of precise claim drafting on the
applicant. See In re Morris, 127 F.3d 1048, 1056-57 (Fed. Cir. 1997).
We agree with the Examiner that reciting "government regulation"
renders the scope of the claim uncertain and, therefore, indefinite. See
Packard, 751 F.3d at 1311. Among other things, we take into account that
the scope of the claim can change over time as government regulations
change over time. There is also an uncertainty whether the claim is satisfied
by compliance with all or less than all government regulations that relate to
maximum off-axis EIRP along the geostationary arc. There is also an open
question as to whether Appellant's written description is sufficient to enable
claim 10 in the event of changes in government regulations during the term
of any patent that may issue from the instant application.
At least for the foregoing reasons, we sustain the Examiner's
Section 112(b) indefiniteness rejection of claim 10.
DECISION
The decision of the Examiner to reject claim 10 as indefinite under
Section 112 is AFFIRMED.
The decision of the Examiner to reject claims 1-10 as unpatentab le
under Section 103 is REVERSED.
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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