Ex Parte Patoine

Patent Trial and Appeal Board

Aug 2, 2016

12900760 (P.T.A.B. Aug. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/900,760 10/08/2010
30868 7590 08/04/2016
KRAMER & AMADO, P,C
330 JOHN CARLYLE STREET
3RDFLOOR
ALEXANDRIA, VA 22314
FIRST NAMED INVENTOR
Michel Patoine
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.
ALC 3560 8497
EXAMINER
PEREZ, JAMES M
ART UNIT PAPER NUMBER
2633
NOTIFICATION DATE DELIVERY MODE
08/04/2016 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):
mail@krameramado.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHEL PATOINE
Appeal2015-003535
Application 12/900,7601
Technology Center 2600
Before LARRY J. HUME, JAMES W. DEJMEK, and SCOTT E. BAIN,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-3, 8-13, and 18-20. Appellant has previously
withdrawn claims 4, 6, 7, 14, 16, and 17 from consideration, and the
Examiner indicates that claims 5 and 15 are objected to, but otherwise drawn
to allowable subject matter. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is Alcatel Lucent. App.
Br. 1.
Appeal2015-003535
Application 12/900,760
STATEMENT OF THE CASE2
The Invention
Appellant's disclosed and claimed invention relates to an in-system
method for measurement of clock recovery and oscillator drift Spec. if 1.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added to contested limitation):
1. An apparatus that measures internal clock
performance, the apparatus comprising:
an interface configured to receive a measurement clock
signal from a measurement clock;
a timing circuit comprising a reference oscillator,
wherein the timing circuit is configured to use the reference
oscillator for timing operations; and
a first measurement circuit configured to measure an
oscillator phase difference betl'Veen a reference oscillator cloc,~
signal produced by the reference oscillator and the
measurement clock signal.
2 Our Decision relies upon Appellant's Appeal Brief ("App. Br.," filed
Aug. 7, 2014); Reply Brief ("Reply Br.," filed Jan. 5, 2015); Examiner's
Answer ("Ans.," mailed Dec. 3, 2014); Final Office Action ("Final Act.,"
mailed May 8, 2014); and the original Specification ("Spec.," filed
Oct. 8, 2010).
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Application 12/900,760
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Yamaji us 6,141,385 Oct. 31, 2000
Gaskins US 2007/0079194 Al Apr. 5, 2007
Miller US 2007/0136012 Al June 14, 2007
Sheng et al. ("Sheng") US 2007 /0223599 Al Sept. 27, 2007
KO et al. ("KO") US 2009/0135301 Al May 28, 2009
Kimura US 2011/0096171 Al Apr. 28, 2011
Re} ections on Appeal3
RI. Claims 1 and 11 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combination of Ko and Gaskins. Final Act. 7.
R2. Claims 2, 3, 12, and 13 stand rejected under 35 U.S.C. § 103(a)
as being obvious over the combination of Ko; Gaskins; and Yamaji. Final
Act. 9.
R3. Claims 8 and 18 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combination of Ko, Gaskins, and Kimura. Final
Act. 12.
R4. Claims 9 and 19 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combination of Ko, Gaskins, Y amaji, and Kimura.
Final Act. 14.
3 We note Appellant has withdrawn claims 4, 6, 7, 14, 16, and 17 in
Species I, corresponding to Figure 3, from consideration in response to an
Election of Species Requirement mailed June 10, 2013. Accordingly, these
claims are not before us on Appeal.
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Appeal2015-003535
Application 12/900,760
R5. Claims 10 and 20 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combination of Ko, Gaskins, and Miller. Final
Act. 15.
CLAIM GROUPING
Based on Appellant's arguments (App. Br. 4--11), we decide the
appeal of obviousness Rejection RI of claims 1 and 11 on the basis of
representative claim 1.
Remaining claims 2, 3, 8-10, 12, 13, and 18-2 0 in rejections R2
through R5, not argued separately, stand or fall with the respective
independent claim from which they depend. 4
ISSUE
Appellant argues (App. Br. 4--7; Reply Br. 1--4) the Examiner's
rejection of claim 1under35 U.S.C. § 103(a) as being obvious over the
combination of Ko and Gaskins is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests an apparatus that includes, inter alia, "a first measurement
circuit configured to measure an oscillator phase difference between a
reference oscillator clock signal produced by the reference oscillator and the
measurement clock signal," as recited in claim 1?
4 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv).
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Application 12/900,760
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. We do not consider arguments that
Appellant could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellant's arguments with respect to claims 1-3,
8-13, and 18-20, and we incorporate herein and adopt as our own: ( 1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's
Answer in response to Appellant's arguments. We incorporate such
findings, reasons, and rebuttals herein by reference unless otherwise noted.
However, we highlight and address specific findings and arguments
regarding claim 1 for emphasis as follows.
Appellant contends, "the Examiner fails to consider the plain meaning
of 'an oscillator phase difference between a reference oscillator clock signal
produced by the reference oscillator and the measurement clock signal.'
Moreover, the specification provides a specific definition for this phase
difference." App. Br. 5. Appellant continues by stating, while oscillator
PEC 215 and clock recovery PEC 217 in Figure 2 "receive the same
measurement clock from measurement clock signal 214, they respectively
receive different signals from reference oscillator 203 and clock recovery
function 205. See paragraphs [0031---0034] of the published version of the
specification." Id.
"In the patentability context, claims are to be given their broadest
reasonable interpretations ... [and] limitations are not to be read into the
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Application 12/900,760
claims from the specification." Jn re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993) (citations omitted). Any special meaning assigned to a term
"must be sufficiently clear in the specification that any departure from
common usage would be so understood by a person of experience in the
field of the invention." Multiform Desiccants, Inc. v. Medzam, Ltd., 133
F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick
Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) ("A patentee
may act as its own lexicographer and assign to a term a unique definition
that is different from its ordinary and customary meaning; however, a
patentee must clearly express that intent in the written description.").
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) (citation omitted).
We note; contrary to Appellant's allegation; the cited portions of the
Specification lack an explicit definition of the contested phase difference
between a reference oscillator and a measurement clock signal that would
preclude the Examiner's broad but reasonable interpretation. Instead,
Appellant's Specification merely provides exemplary embodiments in which
measuring differences in phase of signals are disclosed. Spec. i-fi-131-34.
Under a broad but reasonable interpretation, we agree with the
Examiner's finding that the "horizontal synchronization signal" embedded in
Ko's video signal (input to slicer 41 in Figs. 4 and 7) teaches or at least
suggests the claimed "measurement clock signal" (see Final Act. 7; Ans. 4);
the claimed "reference oscillator clock signal" reads on the '"reference signal
value' output by NCO 73 (plus register 71) and the second phase detector 44
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of Ko is mapped to the 'first measurement circuit' which is explicitly
disclosed by Ko to determine the phase difference (i.e. the second phase
difference) between the 'reference value' (a.k.a. the 'reference time point')
and the second detection signal." Ans. 4--5.
We find Appellant's argument that "the Examiner has failed to address
Ko's use of the same signal from NCO 42 for both first phase detector 43
and second phase detector 44" (App. Br. 6) to be without merit, and also find
Appellant attempts to import limitations from the Specification into the
claims. 5
In the Reply Brief (3), Appellant argues "the Examiner's Answer
relies upon an 'inherent' external circuit, but fails to bear the initial burden of
developing reasons to supporting such reliance on inherency." We find
Appellant's argument is misplaced, as an "external circuit" is not claimed,
and even assuming, arguendo, the Examiner relied upon inherency, which
he did not, Appellant has not properly traversed any potential reliance upon
inherency by the Examiner. 6 Moreover, we find the Examiner's mere use of
5 Appellant argues, "PEC 215 and PEC 217 respectively receive signals
from 203 and 205. The signals from 203 and 205 are not the same. Thus,
Ko's structure is different and Ko's technique is not equivalent to the claimed
subject matter." App. Br. 6. We find Appellant's argument is not
commensurate with the scope of the claim, as the claim does not preclude
the use of a second numerically controlled oscillator (NCO 42) as an
additional input to the claimed measurement circuit (i.e., 2nd phase
detector 44). The Examiner makes additional finding on this point with
which we agree, and which we incorporate herein by reference and adopt as
our own. Ans. 8.
6 Although generally encountered in the context of anticipation under§ 102,
if a finding of inherency has been set forth by the Examiner, the burden of
proof then shifts to the applicant "to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on." In re Best,
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the word "inherent" in analyzing the signal characteristics and/or
components of Ko's "video signal" in Figures 4 and 7 to include a horizontal
synchronization signal that teaches or at least suggests the claimed
"measurement clock" does not equate to improper reliance upon inherency
for teaching any recited claim limitation.
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's reliance on the combined teachings
and suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 1, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 1, and grouped
claim 11, which falls therewith. See Claim Grouping, supra.
§ 103(a) Rejections R2-R5 of Claims 2, 3, 8-10, 12, 13, and 18-20
In view of the lack of any substantive or separate arguments directed
to the obviousness rejection of claims 2, 3, 8-10, 12, 13, and 18-20 under
§ 103 (see App. Br. 8-11), we sustain the Examiner's rejection of these
claims. We deem arguments not made waived.
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 1--4) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
562 F.2d 1252, 1254--55 (CCPA 1977); In re Schreiber, 128 F.3d 1473,
1478 (Fed. Cir. 1997) (holding that once the Examiner established a prima
facie case of anticipation, the burden of proof was properly shifted to the
inventor to rebut the finding of inherency). On this record, we find no such
rebuttal evidence entered by Appellant.
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Application 12/900,760
in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellant has not shown.
CONCLUSION
The Examiner did not err with respect to obviousness Rejections RI
through R5 of claims 1-3, 8-13, and 18-20 under 35 U.S.C. § 103(a) over
the cited prior art combinations of record, and we sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1-3, 8-13,
and 18-20.
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
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