Jerrold Prothero et al.

Patent Trials and Appeals Board

Jan 21, 2020

14478011 - (D) (P.T.A.B. Jan. 21, 2020)

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.
14/478,011 09/05/2014 Jerrold Prothero ASTRAPI-002-COA 4682
62008 7590 01/21/2020
MAIER & MAIER, PLLC
345 South Patrick Street
ALEXANDRIA, VA 22314
EXAMINER
ZUNIGA ABAD, JACKIE
ART UNIT PAPER NUMBER
2469
NOTIFICATION DATE DELIVERY MODE
01/21/2020 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):
patent@maierandmaier.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JERROLD PROTHERO and NIGEL JONES
Appeal 2018-002956
Application 14/478,011
Technology Center 2400
BEFORE MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
NABEEL U. KHAN, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Astrapi
Corporation. Appeal Br. 2.
Appeal 2018-002956
Application 14/478,011
2
STATEMENT OF THE CASE
Appellant’s invention relates to a method and system for
communicating involving converting input communication symbols into
transmittable waveforms using non-periodic functions. Spec. ¶¶ 5–8.
Representative claim 1 under appeal read as follows;
1. A method for communicating comprising:
obtaining one or a plurality of input communication
symbols selected from a set of communication symbols;
converting the one or a plurality of input communication
symbols into one or a plurality of transmittable waveforms using
one or a plurality of non-periodic functions selected from a set of
non-periodic functions; and
transmitting the one or a plurality of transmittable
waveforms over a communication channel.
REFERENCES AND REJECTIONS
Claims 1–20 stand rejected on the ground of non-statutory double
patenting as being unpatentable over claims 1, 3–7, 20, 21, 23–28, 32, and
34–38 of U.S. Patent No. 8,861,327 (“the ’327 patent”). See Ans. 2–4.
Claims 1–20 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Bryant (US 2003/0067990 A1; pub. Apr. 10, 2003). See
Ans. 4–12.
ANALYSIS
Non-Statutory Double Patenting Rejection
We have reviewed the Examiner’s non-statutory double-patenting
rejections in light of Appellant’s arguments in Appellant’s Appeal Brief that
the Examiner has erred. We are unpersuaded by Appellant’s contentions
and concur with the findings and conclusions reached by the Examiner as
explained below.
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Application 14/478,011
3
The Examiner finds claims 1–20 are anticipated by the claims of the
’327 patent. See Ans. 2–4, 13. Taking independent claim 1 as an example,
the Examiner finds that claim 1 of the ’327 patent contains all the limitations
of claim 1. 2 See Ans. 2–3, 13. Thus, as found by the Examiner, claim 1 is
not patentably distinct from claim 1 of the ’327 patent. See Ans. 13 (citing
Manual of Patent Examining Procedure (“MPEP”) § 804, II.B.2(b)).
MPEP § 804 states:
Before consideration can be given to the issue of double
patenting, two or more patents or applications must have at least
one common inventor, common applicant, and/or be commonly
assigned/owned or non-commonly assigned/owned but subject
to a joint research agreement as set forth in 35 U.S.C. 102(c)or
in pre-AIA 35 U.S.C. 103(c)(2) and (3).
...
There are generally two types of double patenting rejections. One
is the “same invention” type double patenting rejection based on
35 U.S.C. 101 which states in the singular that an inventor “may
obtain a patent.” The second is the “nonstatutory-type” double
patenting rejection based on a judicially created doctrine
grounded in public policy and which is primarily intended to
prevent prolongation of the patent term by prohibiting claims
in a second patent not patentably distinct from claims in a first
patent.
The doctrine of nonstatutory double patenting also seeks to
prevent the possibility of multiple suits against an accused
infringer by different assignees of patents claiming patentably
indistinct variations of the same invention. In re Van Ornum, 686
F.2d 937, 944-48, 214 USPQ 761, 767-70 (CCPA 1982).

2 The Examiner made an explicit finding regarding claim 1, and claims 2–6
which depend upon claim 1. See Ans. 2–4. As indicated in its Appeal Brief,
Appellant assumed independent claims 7 and 15 were rejected in a manner
similar to the manner claim 1 was rejected, and did not provide separate
arguments for patentability regarding claims 7 and 15. Appeal Br. 4, n.1.
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. . .
Nonstatutory double patenting includes rejections based on
anticipation, a one-way determination of “obviousness,” or a
two-way determination of “obviousness.”
MPEP § 804 (emphasis added).
The instant application is a continuation application of the ’327
patent, and the instant application and the ’327 patent share at least one
common inventor and a common applicant. Thus, consideration of the issue
of double patenting is warranted.
MPEP § 804 further states:
A nonstatutory double patenting rejection is appropriate where
the conflicting claims are not identical, but at least one examined
application claim is not patentably distinct from the reference
claim(s) because the examined application claim is either
anticipated by, or would have been obvious over, the reference
claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226
(Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d
2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645
(Fed. Cir. 1985). In determining whether a nonstatutory basis
exists for a double patenting rejection, the first question to be
asked is: is any invention claimed in the application anticipated
by, or an obvious variation of, an invention claimed in the patent?
If the answer is yes, then a nonstatutory double patenting
rejection may be appropriate.
. . .
A nonstatutory double patenting rejection is appropriate where a
claim in an application under examination claims subject matter
that is different, but not patentably distinct, from the subject
matter claimed in a prior patent or a copending application. The
claim under examination is not patentably distinct from the
reference claim(s) if the claim under examination is anticipated
by the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428,
46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d
1046, 1052, 29 USPQ2d 2010, 2015-16 (Fed. Cir.1993). This
type of nonstatutory double patenting situation arises when the
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Application 14/478,011
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claim being examined is, for example, generic to a species or
sub-genus claimed in a conflicting patent or application, i.e., the
entire scope of the reference claim falls within the scope of the
examined claim. In such a situation, a later patent to a genus
would, necessarily, extend the right to exclude granted by an
earlier patent directed to a species or sub-genus. In this type of
nonstatutory double patenting situation, an obviousness analysis
is not required for the nonstatutory double patenting rejection.
The nonstatutory double patenting rejection in this case should
explain the fact that the species or sub-genus claimed in the
conflicting patent or application anticipates the claimed genus in
the application being examined and, therefore, a patent to the
genus would improperly extend the right to exclude granted by a
patent to the species or sub-genus should the genus issue as a
patent after the species or sub-genus.
Id. (emphasis added)
As found by the Examiner, claim 1 of the ’327 patent contains all the
limitations of claim 1, and thus, the scope of claim 1 of the ’327 patent falls
within the scope of claim 1. Thus, the Examiner correctly determines that
claim 1 is not patentably distinct from claim 1 of the ’327 patent because
claim 1 of the ’327 patent anticipates claim 1. Accordingly, we conclude
that the nonstatutory double-patenting rejection of claim 1 is appropriate.
Appellant argues claim 1 does not have the same limitations as claim
1 of the ’327 patent, and thus, claims 1–20 are patentably distinct from the
claims of the ’327 patent. See Appeal Br. 4–5. However, the test to
determine whether an examined claim and a reference claim are patentably
distinct is not simply whether the examined claim and the reference claim
have different limitations. Instead, as described above, the test is whether
the examined claim is either anticipated by, or would have been obvious
over, the reference claim.
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Thus, we are not persuaded that the Examiner erred in finding the
claims of the ’327 patent anticipate independent claims 1, 7, and 15. No
separate arguments are presented for the dependent claims. See Appeal
Br. 4–5. Therefore, we are not persuaded that the Examiner erred finding
the claims of the ’327 patent also anticipate claims 2–6, 8–14, and 16–20.
Accordingly, we sustain the rejection of claims 1–20 on the ground of non-
statutory double patenting as being unpatentable over the claims of the ’327
patent.
Rejection Under 35 U.S.C. §102(b)
We have reviewed the Examiner’s rejections under
35 U.S.C. § 102(b) in light of Appellant’s arguments in Appellant’s Appeal
Brief that the Examiner has erred. We are also unpersuaded by Appellant’s
contentions and concur with the findings and conclusions reached by the
Examiner as explained below.
The Examiner finds Bryant discloses, inter alia, “converting the one
or a plurality of input communication symbols into one or a plurality of
transmittable waveforms using one or a plurality of non-periodic functions
selected from a set of non-periodic functions,” as recited in claim 1, and
similarly recited in claims 7 and 15. See Ans. 5, 7, 10 (citing Bryant ¶¶ 13,
19, 21, 24, 28). The Examiner further finds Bryant discloses a digital
communication system that processes a signal in a compressor characterized
by a non-linear function, and that the non-linear function discloses the “one
or a plurality of non-periodic functions” recited in claim 1. See Ans. 15–20
(citing Bryant ¶¶ 13, 19, 21, 24, 28, 30).
Appellant contends Bryant does not teach or suggest the
aforementioned limitation of claim 1 because Bryant does not teach or
suggest using “one or a plurality of non-periodic functions,” as recited in
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claim 1. See Appeal Br. 5. Rather than describing non-periodic functions,
Appellant argues Bryant describes non-linear compression of signals which
a person of ordinary skill in the art would assume to be based on traditional
periodic symbol waveforms. See id. at 5–8.
We are not persuaded by this argument. As correctly found by the
Examiner, Bryant discloses that the non-linear function that serves as the
compression function can include “a variety of choices,” and “a number of
possible choices . . . including, without limitation, inverse tangent, inverse
linear-plus-power, inverse sine, and mu law.” Bryant ¶ 30. The Examiner
further provides evidence that a non-linear function can include a non-
periodic function, citing U.S. Patent Application Publication No.
2011/0150048, which is incorporated by reference in Appellant’s
Specification. See Ans. 18 (citing claim 13 of U.S. Patent Application
Publication No. 2011/0150048).3 Thus, we agree with the Examiner that
Bryant discloses “one or a plurality of non-periodic functions,” of claim 1.
Appellant further contends that, even if Bryant does describe non-
periodic symbol waveforms, there is no mention of the use of spirals.
Appeal Br. 6. This argument is not persuasive either, as we agree with the
Examiner that the argued feature (i.e., non-periodic signal modulation based
on spirals) is not recited in the claim. See Ans. 18.
Thus, we are not persuaded that the Examiner erred in finding Bryant
anticipates independent claims 1, 7, and 15. No separate arguments are
presented for the dependent claims. See Appeal Br. 5–8. Therefore, we are
not persuaded that the Examiner erred in finding Bryant anticipates claims

3 We note that Appellant’s Specification discloses examples of non-periodic
functions and characterizes the examples of non-periodic functions as
“known in the art.” See Specification ¶¶ 3, 25.
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2–6, 8–14, and 16–20. Accordingly, we sustain the rejection of claims 1–20
under 35 U.S.C. § 102(b).
CONCLUSION
We affirm the Examiner’s decision to reject claims 1–20 on the
ground of non-statutory double-patenting.
We affirm the Examiner’s decision to reject claims 1–20 under
35 U.S.C. § 102(b).
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–20 Non-statutory
Double Patenting
1–20
1–20 102(b) Bryant 1–20
Overall
Outcome
1–20
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED