Ex Parte Pera et al

Patent Trial and Appeal Board

Aug 29, 2018

14720902 (P.T.A.B. Aug. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/720,902 05/25/2015 Robert J. Pera
41173 7590 08/31/2018
PETER JAMES TORMEY
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.
AntFeedSysC3 8979
EXAMINER
101 Gregory Lane Suite 46 PATEL,AMALA
Pleasant Hill, CA 94523
ART UNIT PAPER NUMBER
2845
NOTIFICATION DATE DELIVERY MODE
08/31/2018 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):
PJTormey@Gmail.com
PT@AnTLegal.com
mp@antlegal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT J. PERA and JOHN R. SANFORD
Appeal2017---005665
Application 14/720,902
Technology Center 2800
Before CATHERINE Q. TIMM, WESLEY B. DERRICK, and
AVEL YN M. ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from a final rejection of claims
1, 2, 4, 6, 7, 9, 11-14, 18, 19, 21, 23, 28, 30, and 31. 3 We have jurisdiction under
35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 In our Decision we refer to the Specification filed May 25, 2015 ("Spec."), the
Final Office Action appealed from dated January 21, 2016 ("Final Act."), the
Appeal Brief filed July 29, 2016 (Appeal Br.), the Examiner's Answer dated
December 20, 2016 ("Ans.") and the Reply Brief filed February 16, 2017 ("Reply
Br.").
2 Appellants identify the real party in interest as Ubiquiti Networks, Inc. Appeal
Br. 1.
3 Claims 3, 5, 8, 10, 15-17, 20, 22, 24--27, 29, and 32 have been cancelled. Ans. 2.
Appeal2017-005665
Application 14/720,902
STATEMENT OF THE CASE
The subject matter on appeal "relates to wireless communications, and more
specifically, to microwave antennas and microwave radio equipment." Spec. 2.
The communication method claimed includes an "antenna feed system
compris[ing] the radio transceiver, which is integrated with the antenna feed
mechanism and the antenna conductors. Many benefits result from this integration,
including the elimination of RF cabling and connectors." Id. at ,r 12. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A center fed parabolic microwave system comprising:
an antenna feed system coupled to a parabolic reflector;
the antenna feed system comprised of:
a printed circuit board positioned along an axis of symmetry of
the parabolic reflector, with a distal portion of the printed circuit board
positioned towards a focal point of the parabolic reflector, while a
proximal portion of the printed circuit board positioned away from the
focal point of the parabolic reflector;
a plurality of active antenna elements located at the distal portion
of the printed circuit board and extending from the axis of symmetry of
the parabolic reflector in opposite directions;
a radio transceiver located on the printed circuit board, wherein
the radio transceiver is configured to receive a digital signal and
generate a radio frequency (RF) signal, said RF signal is coupled to the
plurality of active antenna elements; and
a sub-reflector having a concave surface, the sub-reflector
positioned distal to the printed circuit board and on the axis of
symmetry of the parabolic reflector,
wherein the sub-reflector is configured to reflect radiated energy
generated by the plurality of active antenna elements back to the
parabolic reflector.
Appeal Br. 31 (Claims App'x).
2
Appeal2017-005665
Application 14/720,902
REJECTIONS
The Examiner maintains the following rejections4:
A. Claims 1, 2, 4, 6, 7, 9, 11-13, 18, 19, 21, 23, 28, 30, and 31 stand
rejected under 35 U.S.C § 112 first paragraph as failing to comply
with the enablement requirement. Final Act. 21; Ans. 2.
B. Claims 19, 21, 23, 28, 30, and 31 stand rejected under 35 U.S.C
§ 112 first paragraph as failing to comply with the written
description requirement. Final Act. 32; Ans. 2.
C. Claims 1, 2, 4, 6, 7, 19, 23, 30, and 31 stand rejected under 35
U.S.C § I03(a) as unpatentable over Hemmie 5 in view of Hsueh. 6
Final Act. 39; Ans. 2.
D. Claims 11-14, 18, 21, and 28 stand rejected under 35 U.S.C
§ 103 (a) as unpatentable over Hemmie in view of Hsueh and
Nowak. 7 Final Act. 43; Ans. 2.
Appellants seek our review of Rejections A-D. See generally Appeal Br.
Appellants argue Rejections A---C separately and Appellants argue claims 1 and 19
separately and do not provide any argument for any claim separate from claims 1
and 19. See id. Therefore, consistent with the provisions of 3 7 C.F .R.
§ 4I.37(c)(l)(iv) (2013), we limit our discussion to claims 1 (as applied to each of
Rejections A, C, and D) and claim 19 (as applied to Rejection B) and all other
claims stand or fall together with claim 1 or 19.
4 Appellants amended the claims after the Final Action to cancel claims 3, 5, 8, 10,
15-17, 20, 22, 24--27, 29, and 32. Ans. 2. Therefore, these claims are no longer
under consideration on appeal.
5 Hemmie, et al., US 5,523,768, issued June 4, 1996 ("Hemmie").
6 Hsueh, et al., US 6,429,827 Bl, issued August 6, 2002 ("Hsueh").
7 W. B. Nowak, US 2,627,028, issued January 27, 2953 ("Nowak").
3
Appeal2017-005665
Application 14/720,902
OPINION
A. Rejection A -Enablement
The Examiner rejects claim 1, among others, under 35 U.S.C. § 112 as not
enabled to their full scope without undue experimentation. Final Act. 20. In
particular, the Examiner explains that "while being enabling for an antenna system
comprising feed pins 205, director pins 206, the sub-reflector 207, transceiver 203
on a printed circuit board in the arrangement as shown in Fig. 2 of the Drawings,
[the Specification] does not reasonably provide enablement for nearly any
configuration of those individual elements described." Id. at 20-21. In short, the
Examiner explains that the scope of the claim includes a large variety of antenna
structures but
[i]n contrast to the scope of the claims, Applicant's drawings and
specification present only a handful of specific antenna structures ...
[t]hus, the nature of Applicant's invention is a small, finite number
of specific antenna structures, and Applicant's disclosure provides no
direction to persons of skill for the manufacture, use, or investigation
of any antenna structures, other than the specific structure shown or
discussed in relation to the drawings.
Id. at 22. The Examiner stresses that critical to Appellants antenna feed assembly
is the combination of one or more antenna feed pins, director pins, and sub-
reflectors. Id. at 31; Ans. 8 (noting that "the Specification makes no attempts at
characterizing an antenna without the passive radiators or any arrangement of the
active antenna elements."). But, the Examiner explains that the claims do not
include these requisite elements. Final Act. 32. The Examiner further states that
persons having ordinary skill in the art at the time would have understood that
in designing or discovering the single specific antenna structure
disclosed in Applicant's drawings and specification, Applicant, at best,
discovered a connection between Applicant's antenna structure and
Applicant's desired electromagnetic (and mechanical) properties, but
4
Appeal2017-005665
Application 14/720,902
did not discover a connection between the bulk of the remaining infinite
and wide variety of claimed antenna structures and their
electromagnetic properties.
Id. at 23-24. Therefore, because the electromagnetic properties vary significantly
based on antenna design and structure, the Examiner finds, after considering the
Wands factors, that "an apparently infinite quantity and wide quality of
experimentation would be required in order to enable the full scope of the
invention recited in the claims." Id. at 27.
Appellants argue that the Examiner is impermissibly requiring that the
claims be "a perfected, commercially viable embodiment to enable the full scope
of the claims." Appeal Br. 8. But, Appellants urge that the claims, are directed to
certain physical antenna elements that are clearly taught in the drawings and
specifications and "cannot be construed as 'any configuration' of antennas as in the
Office Action." Id. at 8-9; see also id. at 10 ("one having skill in the art could
readily see the figures, read the specification, and assemble and use the claimed
system because they are bounded by the elements of the claims."). Appellants
assert that the Specification contemplates modifications to the various components
and design of the antenna feed system to optimize performance and is therefore not
limited to the configurations of the drawings alone. Id. at 11-13, 15. Appellants
further argue that while some experimentation is expected, that level of
experimentation is not undue. Id. at 16-17.
On this record, we agree with Appellants. A specification complies with the
enablement requirement of 35 U.S.C. § 112, first paragraph, if it allows those of
ordinary skill in the art to make and use the claimed invention without undue
experimentation. See In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993); Atlas
Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir.
1984). Said another way, "[i]f, by following the steps set forth in the specification,
5
Appeal2017-005665
Application 14/720,902
one of ordinary skill in the art is not able to replicate the claimed invention without
undue experimentation, the claim has not been enabled as required by§ 112,
paragraph 1." National Recovery Technologies, Inc. v. Magnetic Separation
Systems, Inc., 166 F.3d 1190, 1196 (Fed. Cir. 1999). When rejecting a claim under
the enablement requirement of§ 112, the Examiner bears the initial burden of
setting forth a reasonable explanation as to why the scope of protection provided
by that claim is not adequately enabled by the specification; this includes providing
sufficient reasons for doubting any assertions in the specification as to the scope of
enablement. Wright, 999 F.2d at 1561-62. Enablement is a question of law based
upon underlying factual determinations. In re Swartz, 232 F.3d 862, 863 (Fed. Cir.
2000).
We do not understand the Examiner's rejection to be based on unclaimed
performance criteria. In this regard, Appellants appear to misunderstand the basis
of the Examiner's rejection. However, other than asserting the scope of the claim
is large and encompasses a wide variety of methods and antennas for transmitting a
radio frequency, the Examiner does not articulate a reasonable explanation as to
why the scope of protection is not enabled by Appellants' Specification. The
Examiner reasons that the Specification only enables the claims to the limits of the
drawing and the exemplified embodiment. However, this is not the measure of
enablement. While drawings and examples may be useful, specific "examples are
not required to satisfy section 112, first paragraph" so long as a person skilled in
the art can practice the invention without undue experimentation. In re
Strahilevitz, 668 F.2d 1229, 1232 (CCPA 1982); In re Borkowski, 422 F.2d 904,
950-51 (CCPA 1970). The Examiner, while finding experimentation is required
(Final Act. 29-32), does not establish that such experimentation is undue, that is,
anything more than "merely routine." Wands, 858 F.2d at 737 (explaining that
6
Appeal2017-005665
Application 14/720,902
enablement is not precluded by the necessity for some experimentation, as long as
amount of experimentation is not undue); see also Wyeth & Cordis Corp. v. Abbott
Labs., 720 F.3d 1380, 1386 (Fed. Cir. 2013) ("a considerable amount of
experimentation is permissible," as long as it is "merely routine" or the
specification "'provides a reasonable amount of guidance' regarding the direction
of experimentation" (quoting Johns Hopkins Univ. v. CellPro, Inc., 152 F.3d 1342,
1360-61 (Fed. Cir. 1998)).
Thus, without more, we do not sustain the Examiner's lack of enablement
rejection.
B. Rejection B - Written Description
The Examiner rejects claim 19 under 35 U.S.C. § 112 as failing to comply
with the written description requirement. Final Act. 32. Claim 19 is an
independent claim and recites:
19. A system comprising:
a parabolic reflector;
a sub-reflector having a concave surface, said sub-reflector
positioned on an axis of symmetry of the parabolic reflector;
a printed circuit board positioned along the axis of symmetry of
the parabolic reflector;
an active antenna element connected to the printed circuit board,
wherein the active antenna is positioned between the parabolic reflector
and the sub-reflector; and
a radio transceiver located on the printed circuit board, the radio
transceiver configured to receive a digital signal and generate an RF
signal.
Appeal Br. 35 (Claims App'x). According to the Examiner, the Specification lacks
support for the breadth of the claims which includes an "active antenna element
connected to the printed circuit board" and encompasses "numerous possibilities of
the many various configurations and arrangements for the claimed active antenna
7
Appeal2017-005665
Application 14/720,902
with respect to the printed circuit board within the radio antenna device is not
conventional in the art nor known to one of ordinary skill in the art." Id. at 33.
According to the Examiner, "persons of skill in the art at the time of invention
would have concluded that Applicant failed to design the bulk of the infinite and
wide variety of antennas falling within the scope of any of claim[] 19." Id. at 34.
Appellants urge that the Examiner "parses the elements of the claim" and is
improperly "relying on some requirement that there be a written description for the
'proper operation' of the systems to overcome this rejection." Appeal Br. 19.
Appellants argue that Figure 2 in conjunction with the written description of
paragraph 51 (i.e., describing "antenna feed pins 205 are mounted perpendicular to
the printed circuit board 208") provides the requisite written description support for
the claims. Id. at 18.
We agree with Appellants and find that the written description requirement
is met by the Specification and accompanying figures. To comply with the written
description requirement, an applicant's specification must convey with reasonable
clarity to a person of ordinary skill in the art that, as of the filing date, that the
applicant was in possession of the claimed invention. Carnegie Mellon Univ. v.
Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008).
Here, as Appellants point out (Appeal Br. 18-19), Figure 2 and paragraph 51
of the Specification provide sufficient written description to support claim 19. The
Specification describes an antenna feed system where
the functions of the radio transceiver 108 are integrated with the
functions of the antenna feed conductor 105, and the functions of the
conventional antenna feed mechanism 104. The exemplary antenna
feed system 200 is located in the same position relative to a reflective
antenna as the conventional antenna feed mechanism 104. The
exemplary antenna feed system 200 is assembled on a common
substrate, which may be a multi-layer printed circuit board 208, as
8
Appeal2017-005665
Application 14/720,902
illustrated in FIG. 2. The antenna feed system 200 comprises a digital
connector 201 which is equivalent to digital connector 110 of FIG. 1.
Spec. ,r 43. The Specification continues to explain that the system may include a
sub-reflector 207. Id. ,r 45. "Per FIG. 3, the sub-reflector 207 reflects radiated
waves 302 back towards the reflective antenna (not shown)." Id. The identified
disclosures are sufficient to convey to the person having ordinary skill in the art
that Appellants were in possession of the claimed invention as recited in claim 19.
We, therefore, do not sustain the Examiner's rejection of claim 19, among
others, for failing to comply with the written description requirement of 35 U.S.C.
§ 112, first paragraph.
C. Rejection C- Obviousness
The Examiner finds that Hemmie describes a down-converter that includes
the limitations of claim 1 except that Hemmie fails to suggest that the down-
converter is a transceiver. Final Act. 39--40. However, the Examiner finds that
Hsueh describes a "MMDS transceiver 125' having a transceiver circuitry ...
integrated together with [a] dipole antenna body 105, 115' as a single body
structure." Id. at 41. The Examiner explains that "Hsueh even suggests that bi-
directional converter circuitry may be integrated into the boom of a similar
technology ... which only teaches down-converter in the boom." Id. at 20. The
Examiner reasons that the person skilled in the art would have been motivated to
include a transceiver in the down-converter of Hemmie "in order to adapt the
antenna of Hemmie for bi-directional communication and minimize transmission
loss between the transceiver and antenna, especially since antennas are
reciprocal[ly] able to receive or transmit based on signal circuitry." Id. at 41.
Appellants assert that Hemmie fails to teach active antenna elements as
understood by the Specification. Appeal Br. 20-21. Appellants urge that the
9
Appeal2017-005665
Application 14/720,902
Examiner's definition of "active antenna element"-"one which is excited, i.e.,
powered, whether transmitting or receiving" (Final Act. 17}-is unreasonable and
too broad in light of the Specification. Appeal Br. 20. Rather, Appellants assert
that "an active antenna element is the antenna element electrically coupled to the
transceiver and electronically excited by an RF signal from the RF transceiver."
Id. at 23. According to Appellants, Hemmie does not have active elements
because it is a down converter, and therefore, does not have a transceiver to excite
the active antenna elements. Id. Appellants explain that though Hemmie refers to
"active elements," these elements "perform such a different function that a skilled
artisan would not look to Hemmie for any inspiration." Id. Appellants contend
that while Hsueh may describe the transceiver, the claims require the transceiver to
be "mounted on the circuit board with active elements also mounted on the same
circuit board, with the circuit board positioned in relationship to a parabolic
reflector" and "Hsueh only discloses a transceiver in a box mounted on the base
and not unified as disclosed in the text of claim 1." Id. at 24. Appellants argue
that "Hsueh merely discloses placing RF gear in a waterproof box" and the
Examiner's rejection relies on documents incorporated by reference which do not
disclose what the Examiner alleges. Id.
Appellants' arguments fail to identify a reversible error by the Examiner.
The Examiner finds, "[a]ll receiving antennas are active antenna elements unless
they are parasitic or grounded, or operated via near-field coupling, which even then
can be argued so as to be 'active."' Final Act. 17. The Examiner explains that "to
infer that Hemmie's antenna is not an 'active antenna element' is false .... In/act
[sic], Hemmie states 310 and 320 are 'driven element[s]." Final Act. 17; see also
Ans. 20 (same). The Examiner finds that "Hemmie's dipoles are 'active antenna
elements' or active radiators which are connected to the circuitry to receive the
10
Appeal2017-005665
Application 14/720,902
signal." Ans. 20. Furthermore, the Examiner explains that "Hemmie's receiver
contains dipoles 310, 320 connected to active components such as amplifier 330
and amplifier 370 which modify and process the received signal as was the
intention of the relevance of' active component."' Id. at 20-21. The Examiner
also states that even if Hemmie does not teach an active antenna element, "Hsueh
clearly teaches a transceiver, which would enable Hemmie's elements 310, 320 to
transmit thus becoming 'active antenna elements' according to the Applicant's
definition." Final Act. 17. Therefore, on this record, the Examiner's findings are
supported by the preponderance of the evidence.
Appellants further contend that "[ n ]either Hemmie nor Hsueh disclose any
operations on digital signals or transceivers that operate on digital signals."
Appeal Br. 23. Appellants explain that the instant Specification describes USB
and Ethernet connectors as supplying a digital signal as opposed to coaxial cables
of the prior art which are designed to carry RF signals only. Id. Appellants further
assert that the digital signals discussed in Hsueh, i.e., MMDS "transmitter for
transmitting and receiving analog and digital signals," do not include digital
signals as contemplated by Appellants. Id. at 25 (quoting Hsueh, col. 1, 11. 14--16).
Appellants' arguments are not persuasive of reversible error. As the
Examiner notes, no claim limits the invention to USB or Ethernet systems and only
claim 9 limits the digital signal to one that supports OSI models. Ans. 23.
Therefore, the digital signal of claim 1 may include USB and Ethernet systems and
systems that support OSI models, but is not necessarily limited to those specific
embodiments. The Examiner defined "digital signal" as "any electrical signal
which contains information represented by discrete values via a prescribed law
including for example, telegraph signals, and not limited to signals traveling
through USB or Ethernet cables." Final Act. 9-10. The Examiner further explains
11
Appeal2017-005665
Application 14/720,902
that "[ w ]ithout additional specificity, any wireless or wired signal containing
information represented by discreet values via a proscribed law, i.e., any
communication signals ... is a "digital signal." Id. at 10. The Examiner finds that
the coax bracket of Hemmie is a digital connector capable of carrying a digital
signal and that "[ c ]oax brackets and connectors are extensively used in home cable
and data systems." Id. at 16 (citing Hemmie, col. 8, 1. 60-col. 9, 1. 5). Appellants
assert that a digital signal cannot "include 'any communications signal,'" and that a
grounded coaxial cable is not a digital connector. Appeal Br. 23. However, by
speaking in generalities, these arguments provide no meaningful response to the
Examiner's proffered construction-requiring "wireless or wired signal containing
information represented by discreet values via a proscribed law"----or findings
regarding "typical" usage of coaxial cable connectors as transporting digital
signals. As Appellants acknowledge, MMDS system of Hemmie "may or may not
be modulated with digital information." Appeal Br. 26. Furthermore, the
Examiner finds that "Hsueh clearly teaches at least 'digital signals' as defined by
the Applicant and Applicant's own admission as previously discussed." Ans. 18.
Therefore, on this record, the preponderance of the evidence supports the
Examiner's findings and conclusions.
Lastly, Appellants urge that the Examiner fails to state a reason why a skilled
artisan would combine the elements in accordance with the claims. Appeal Br. 28.
Appellants complain that the reason offered by the Examiner is based on
impermissible hindsight and "is merely a recitation of the resulting claims, not an
articulated motivation disclosed or even hinted at by the references at all." Id. at
29.
We do not find Appellants' hindsight argument persuasive because the
Examiner's reasons for combining the teachings of Hemmie and Hsueh are
12
Appeal2017-005665
Application 14/720,902
supported by the prior art disclosures themselves. See, e.g., Sensonics, Inc. v.
Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) ("The invention must be
viewed not after the blueprint has been drawn by the inventor, but as it would have
been perceived in the state of the art that existed at the time the invention was
made." (citing Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138 (Fed. Cir.
1985))). Here, as the Examiner explains, Hsueh expressly describes modifying the
down-converter of Hemmie to include a bi-directional communication system.
Ans. 25. Thus, we discern no error in these findings and conclusions. Moreover,
Appellants do not identify any knowledge relied upon by the Examiner that was
gleaned only from the Appellants' disclosure and was not within the level of skill
in the art at the time of the invention. In re McLaughlin, 443 F.2d 1392, 1395
(CCPA 1971).
Appellants, in reply, argue for the first time that "Hsueh specifically teaches
away from combining the teachings of Hsueh with those of Hemmie because
Hemmie is inferior and because Hsueh solves a different problem from Hemmie."
Reply Br. 8. Appellants have not explained, nor is it apparent, that these
arguments were necessitated by the Examiner's Answer or could not have been
presented in the principal brief. Therefore, these arguments are untimely and we
will not reach arguments presented for the first time in a reply brief in the absence
of good cause. 37 C.F.R. §41.41(b)(2).
CONCLUSION
Appellants identified a reversible error in the Examiner's rejection of claims
1, 2, 4, 6, 7, 9, 11-13, 18, 19, 21, 23, 28, 30, and 31, under 35 U.S.C §112 first
paragraph, as failing to comply with the enablement requirement.
13
Appeal2017-005665
Application 14/720,902
Appellants identified a reversible error in the Examiner's rejection of claims
19, 21, 23, 28, 30, and 31, under 35 U.S.C § 112 first paragraph, as failing to
comply with the written description requirement.
Appellants failed to identify a reversible error in the Examiner's rejection of
claims 1, 2, 4, 6, 7, 19, 23, 30, and 31, under 35 U.S.C § 103(a), as unpatentable
over Hemmie in view of Hsueh.
Appellants failed to identify a reversible error in the Examiner's rejection of
claims 11-14, 18, 21, and 28, under 35 U.S.C §103(a), as unpatentable over
Hemmie in view of Hsueh and Nowak.
DECISION
For the above reasons, the Examiner's rejection of claims 1, 2, 4, 6, 7, 11-
14, 18-19, 21, 23, 28, and 30-31 is affirmed. The Examiner's rejection ofclaim 9
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
14