Ex Parte Pugel et al

Board of Patent Appeals and Interferences

Jun 26, 2012

10549258 (B.P.A.I. Jun. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MICHAEL ANTHONY PUGEL,
DOUGLAS EDWARD LANKFORD,
JOHN JOSEPH CURTIS,
KEITH REY WEHMEYER,
MIKE ARTHUR DERRENBERGER,
TERRY LOCKRIDGE,
and ANDREW ERIC BOWYER
____________________

Appeal 2010-003761
Application 10/549,258
Technology Center 2600
____________________

Before KRISTEN L. DROESCH, MICHAEL R. ZECHER, and
JOHNNY A. KUMAR, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-003761
Application 10/549,258

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.

According to Appellants, the invention relates to a gateway apparatus
capable of distributing audio, video, and/or data signals in a household
and/or business dwelling using the existing coaxial cable infrastructure. (See
Spec. 1: 10-13.)
Claims 1 and 11 are illustrative:
1. An apparatus comprising:
processing means for receiving satellite signals and
processing said received signals to generate analog signals
without demodulating the received signals;
control means for enabling generation of said analog
signals responsive to a request signal; and
wherein said analog signals are provided to a client
device via a transmission medium connecting said apparatus
and said client device.

11. A method for distributing signals from a gateway
apparatus to a device, comprising steps of:
receiving satellite signals;
receiving a request signal from said device indicating a
channel;
processing said received signals to generate analog
signals corresponding to said channel responsive to said request
signal without demodulating said received signals; and
providing said analog signals to said device via a
transmission medium connecting said gateway apparatus and
said device.
Appeal 2010-003761
Application 10/549,258

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Rejections
Claims 1-20 stand provisionally rejected on the ground of
nonstatutory obviousness-type double patenting over claims 1-30 of
copending application 10/549,259.
Claims 1, 10, 11, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Rajendran (US 2004/0017671 A1), in view of
Pavlovskaia (US 2006/0117340 A1).
Claims 2 and 12 stand rejected under 35 U.S.C. § 103(a) being
unpatentable over Rajendran in view of Pavlovskaia, further in view of
Zydonik (WO 02/25847 A1).
Claims 5, 6, 15, and 16 stand rejected under 35 U.S.C. § 103(a) being
unpatentable over Rajendran in view of Pavlovskaia, further in view of
Slaney (US 2002/0062481 A1).
Claims 7 and 17 stand rejected under 35 U.S.C. § 103(a) being
unpatentable over Rajendran in view of Pavlovskaia and Slaney, further in
view of Schober (US 2001/0044835 A1).
Claims 3, 8, 9, 13, 18, and 19 stand rejected under 35 U.S.C. § 103(a)
being unpatentable over Rajendran in view of Pavlovskaia, further in view
of Stoddard (US 2004/0085143 A1).
Claims 4 and 14 stand rejected under 35 U.S.C. § 103(a) being
unpatentable over Rajendran in view of Pavlovskaia and Stoddard, further in
view of Basawapatna (US 2004/0163124 A1).

Appeal 2010-003761
Application 10/549,258

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ANALYSIS
Obviousness-Type Double Patenting Rejections
The claims relied upon in the provisional obviousness-type double
patenting rejection have been further prosecuted since the rejections were
made initially.
The claims of copending application No. 10/549, 259 (‘259) were last
amended on November 4, 2011. It is unclear whether the Examiner’s
rejection in the Final Office Action mailed January 13, 2012 considered the
claims of ‘259 application in their currently pending form.
As indicated above, at least some of the claims relied upon in the
provisional obviousness-type double patenting rejection on appeal either
clearly are, or may be, different in language or status from the claims
originally relied upon when these rejections were initially made by the
Examiner. We decline to reach these rejections because the claims now
relied upon are not clearly the same as those originally considered by the
Examiner when the rejections were initially made. Panels have the flexibility
to reach or not reach provisional obviousness-type double-patenting
rejections. See Ex parte Moncla, 95 USPQ2d 1884 (BPAI 2010)
(precedential).

The Obviousness Rejections
We will take claims 1 and 11 as representative of this group, and
claims 2-10 and 12-20 will stand or fall with claims 1 and 11 respectively.
Appellants contend that the cited Rajendran and Pavlovskaia references do
not disclose or suggest “processing means for receiving satellite signals and
processing said received signals to generate analog signals without
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Application 10/549,258

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demodulating the received signals,” as claimed in representative claim 1 and
the “processing said received signals to generate analog signals
corresponding to said channel responsive to said request signal, without
demodulating said received signals,” as claimed in representative claim 11.
(Br. 9-10).
We begin our analysis by observing that Appellants respond to the
Examiner’s final rejection of claims 1-20 by merely reciting the language
identified supra in the claims and asserting that the aforementioned
limitations are not disclosed in any of the cited art. (See Br. 9-14). In
addition, we find Appellants have failed to traverse the specific factual
findings the Examiner has set forth in the rejection of claims 1-20. (See Ans.
6-18).
We note that Appellants’ arguments amount to no more than reciting
the claim features and generally alleging that the cited prior art references
are deficient. Merely pointing out certain claim features recited in
independent claims 1 and 11 and nakedly asserting that none of the cited
prior art references teach or suggest such features does not amount to a
separate patentability argument. See 37 C.F.R. § 41.37(c)(vii) (“A statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim.”); see also In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”); cf. In re
Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the
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function of this court to examine the claims in greater detail than argued by
an appellant, looking for [patentable] distinctions over the prior art.”).
Also, our reviewing Court has reaffirmed that the procedural burden
of establishing a prima facie case of obviousness is met, in accordance with
35 U.S.C. § 132, by stating reasons for a rejection together with information
and references as may be useful to applicant in judging the propriety of
continuing prosecution. See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir.
2011). This the Examiner has done, over the course of many pages in the
Examiner’s Answer.
The Court in Jung also spoke approvingly of the Board’s longstanding
practice of requiring an Appellant to identify the alleged error in an
Examiner’s rejection, with the panel then reviewing the rejection for error
based upon the issues identified by Appellant, and in light of the arguments
and evidence produced thereon. Jung, 637 F.3d at 1365-66 (citing Ex parte
Frye, 94 USPQ2d 1072 (BPAI 2010) (precedential)).
On this record, we find Appellants have failed to present substantive
arguments and supporting evidence persuasive of Examiner error regarding
the aforementioned disputed limitations. It follows that the Examiner has not
erred in concluding that the combination of Rajendran and Pavlovskaia
renders independent claims 1 and 11 unpatentable.
Appellants do not provide separate arguments for the obviousness
rejections of the dependent claims, instead contending that the dependent
claims are allowable for the same reasons argued regarding claims 1 and 11,
which we did not find to be persuasive. (Br. 10-14). Therefore, for the same
reasons discussed above regarding claims 1 and 11, we sustain the
Examiner’s obviousness rejection of claims 2-10 and 12-20.
Appeal 2010-003761
Application 10/549,258

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DECISION
The Examiner’s rejection of claims 1, 10, 11, and 20 under 35 U.S.C.
§ 103(a) as being obvious over Rajendran and Pavlovskaia is affirmed.
The Examiner’s rejection of claims 2 and 12 under 35 U.S.C. § 103(a)
as being obvious over Rajendran, Pavlovskaia, and Zydonik is affirmed.
The Examiner’s rejection of claims 5, 6, 15, and 16 under 35 U.S.C.
§ 103(a) as being obvious over Rajendran, Pavlovskaia, and Slaney is
affirmed.
The Examiner’s rejection of claims 7 and 17 under 35 U.S.C. § 103(a)
as being obvious over Rajendran, Pavlovskaia, Slaney, and Schober is
affirmed.
The Examiner’s rejection of claims 3, 8, 9, 13, 18, and 19 under 35
U.S.C. § 103(a) as being obvious over Rajendran, Pavlovskaia, and Stoddard
is affirmed.
The Examiner’s rejection of claims 4 and 14 under 35 U.S.C. § 103(a)
as being obvious over Rajendran, Pavlovskaia, Stoddard, and Basawapatna
is affirmed.
We do not reach the merits of the provisional obviousness-type double
patenting rejection maintained by the Examiner.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2009).

AFFIRMED

msc