AT&T INTELLECTUAL PROPERTY I, LP

Patent Trials and Appeals Board

Feb 25, 2020

15070045 - (D) (P.T.A.B. Feb. 25, 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.
15/070,045 03/15/2016 ROBERT BENNETT 2015-0201CON_7785-1175A-1 6883
92384 7590 02/25/2020
AT&T Legal Department - G&G
Attention: Patent Docketing
Room 2A-212
One AT&T Way
Bedminster, NJ 07921
EXAMINER
MILLS, DONALD L
ART UNIT PAPER NUMBER
2462
NOTIFICATION DATE DELIVERY MODE
02/25/2020 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT BENNETT, PAUL SHALA HENRY,
IRWIN GERSZBERG, FARHAD BARZEGAR,
DONALD J. BARNICKEL, and THOMAS M. WILLIS III
Appeal 2019-000873
Application 15/070,045
Technology Center 2400

Before J. JOHN LEE, DANIEL J. GALLIGAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
GALLIGAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4–12, and 14–22. Claims 3 and 13
have been cancelled. 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 AT&T Intellectual
Property I, L.P. Appeal Br. 1.
Appeal 2019-000873
Application 15/070,045

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CLAIMED SUBJECT MATTER
Claims 1, 11, and 19 are independent claims. Claim 1 is reproduced
below:
1. A client node device comprising:
a communication interface configured to receive first
channel signals from a communication network; and
an access point repeater (APR) configured to launch the
first channel signals on a guided wave communication system
as first guided electromagnetic waves at non-optical frequencies
that are bound to a physical structure of a transmission medium,
wherein the first guided electromagnetic waves are guided by
the transmission medium to propagate along the physical
structure of the transmission medium without requiring an
electrical return path, and wherein the APR comprises:
an amplifier configured to amplify the first channel
signals to generate amplified first channel signals;
a channel selection filter configured to select one
or more of the amplified first channel signals to
wirelessly communicate with at least one client device
via an antenna;
a coupler configured to guide the amplified first
channel signals to the transmission medium of the guided
wave communication system so as to generate second
guided electromagnetic waves that propagate along the
physical structure of the transmission medium without
requiring the electrical return path; and
a channel duplexer configured to transfer the
amplified first channel signals to the coupler and to the
channel selection filter.
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Application 15/070,045

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REFERENCES
Name Reference Date
Abraham US 6,014,386 Jan. 11, 2000
Mollenkopf US 2004/0113756 A1 June 17, 2004
Elmore US 2004/0169572 A1 Sept. 2, 2004
Nishizaka US 2011/0235536 A1 Sept. 29, 2011
Truong US 2011/0243566 A1 Oct. 6, 2011
Soto US 2015/0078756 A1 Mar. 19, 2015
Laurent-Michel US 2015/0188584 A1 July 2, 2015
REJECTIONS
Claims 1, 2, 4–8, 19, and 20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Nishizaka, Elmore, Mollenkopf, and Laurent-
Michel. Final Act. 5–10.
Claims 9 and 10 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Nishizaka, Elmore, Mollenkopf, Laurent-Michel, and
Soto. Id. at 11.
Claims 11, 12, 15, 17, and 18 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Nishizaka, Truong, Elmore, and Laurent-Michel.
Id. at 12–15.
Claims 14, 16, 21, and 22 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Nishizaka, Truong, Elmore, Laurent-Michel, and
Abraham. Id. at 16–17.
Claims 1, 2, 4–12, and 14–22 are provisionally rejected for
obviousness-type double patenting based on the claims of U.S. Patent
Application No. 14/729,178. Id. at 3–5.
Our review in this appeal is limited only to the above rejections and
the issues raised by Appellant. Arguments not made are waived. See MPEP
§ 1205.02; 37 C.F.R. §§ 41.37(c)(1)(iv) and 41.39(a)(1).
Appeal 2019-000873
Application 15/070,045

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OPINION
Obviousness of Claims 1, 2, 4–10, 21, and 22
Appellant contends the Examiner erred in finding Mollenkopf teaches
“a channel duplexer configured to transfer the amplified first channel signals
to the coupler and to the channel selection filter,” as recited in claim 1.2
Appeal Br. 8–9; Reply Br. 2–4. Specifically, Appellant argues Mollenkopf’s
“summation device 424 outputs a single data signal” and does not “transfer
the amplified first channel signals to two places,” i.e., to a coupler and to a
channel selection filter. Appeal Br. 9; Reply Br. 2.
We are persuaded of Examiner error. The Examiner relies on
Mollenkopf’s summation device to teach a “channel duplexer.” Ans. 19;
Final Act. 7–8. As the Examiner points out (Ans. 19), Mollenkopf describes
that “outputs of the first and second amplifiers 422 are also supplied to a
summation device 424 that sums the two pass band, amplified signals to
provide a single data signal” (Mollenkopf ¶ 72, Fig. 6). The Examiner states
that “the reception of the amplified signals by the summation to output to the
coupler [is] functionally equivalent to the claimed ‘transferring.’” Ans. 19.
Although the reception of the amplified signals is a transfer of signals, the
claims specify that the channel duplexer “transfer[s] the amplified first
channel signals to the coupler and to the channel selection filter” (emphasis
added). The amplified signals the Examiner relies on, however, are instead
transferred from Mollenkopf’s filter and amplifier. As such, the Examiner

2 The Appeal Brief sub-section discussing this disputed limitation, i.e., sub-
section I.C., does not point out which claims the sub-section argues.
Claim 1 is the only independent claim containing the argued limitation, and
so we only address claim 1.
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has not shown where Mollenkopf teaches “a channel duplexer configured to
transfer the amplified first channel signals to the coupler and to the channel
selection filter,” as recited in claim 1.
Accordingly, we reverse the Examiner’s obviousness rejection of
claim 1. Because we agree with at least one of the arguments advanced by
Appellant, we need not reach the merits of Appellant’s other arguments (see
Appeal Br. 5–9). Claims 2 and 4–10 depend from claim 1 and stand with
claim 1. Furthermore, claims 21 and 22 depend from claim 1, but they are
not rejected based on a combination that includes Mollenkopf. The
Examiner has not relied on any other reference to teach “a channel duplexer
configured to transfer the amplified first channel signals to the coupler and
to the channel selection filter.” Thus, we do not sustain the obviousness
rejection of claims 21 and 22.
Therefore, we do not sustain the rejections of claims 1, 2, 4–10, 21,
and 22 under 35 U.S.C. § 103.

Obviousness of Claims 11, 12, and 14–18
Appellant argues the Examiner improperly combined Nishizaka,
Truong, Elmore, and Laurent-Michel in rejecting claims 11, 12, 15, 17 and
18. Appeal Br. 9–10; Reply Br. 5–6. Specifically, Appellant argues
Truong’s plastic star coupler would not be suitable for
“launching . . . the first channel signals on a guided wave
communication system as guided electromagnetic waves that
are bound to a transmission medium, wherein the guided
electromagnetic waves are guided by the transmission medium
to propagate along a surface of the transmission medium”
because “Truong discloses a plastic star coupler for use with fiber optics that
carry optical signals entirely inside a fiber optic cable.” Appeal Br. 10;
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Application 15/070,045

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Reply Br. 5–6. Appellant argues the combination’s inclusion of Truong
“require[s] an impermissible change in the function from coupling optical
signals inside a fiber optic cable to coupling guided electromagnetic waves
that propagate along a surface of the transmission medium.” Appeal Br. 10;
Reply Br. 6.
We are not persuaded of Examiner error. The Examiner finds
(Ans. 20; Final Act. 13), and we agree, that Elmore’s description of
“launching a surfacewave onto a single conductor transmission line 21”
(Elmore ¶ 32) teaches “guided electromagnetic waves are guided by the
transmission medium to propagate along a surface of the transmission
medium without requiring an electrical return path.” The Examiner further
finds (Ans. 20), and we agree, that Elmore teaches “coupling to and
launching of the surfacewave” with a metal coupling (Elmore ¶¶ 32, 39).
Still further, the Examiner finds, and we agree, that Truong teaches using
plastic couplers in communication systems. Ans. 20 (citing Truong ¶ 32).
Appellant’s arguments are based on the bodily incorporation of
features that the Examiner’s combination does not rely on or require. See In
re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that
the inventions of the references be physically combinable to render obvious
the invention under review.”)). In particular, the Examiner’s combination
does not incorporate the type of signals Truong’s system transmits. Rather,
the Examiner’s rejection relies on Elmore, teaching the claimed signal being
coupled to a transmission medium, in combination with Truong’s suggestion
that coupling materials can be made of plastic. See Ans. 20.
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Accordingly, we are not persuaded the Examiner erred in rejecting
claims 11,3 12, 15, 17, and 18 by improperly combining Nishizaka, Truong,
Elmore, and Laurent-Michel. Appellant does not argue separate
patentability for dependent claims 14 and 16, which depend from claim 11.
Appeal Br. 11. Accordingly, for the reasons set forth above, we sustain the
Examiner’s decision to reject claims 11, 12, and 14–18.

Obviousness of Claims 19 and 20
“without requiring the electrical return path”
Appellant contends the Examiner erred in finding Mollenkopf teaches
“guided electromagnetic waves are guided by the dielectric transmission
medium to propagate along a surface of the dielectric transmission medium
without requiring an electrical return path,” as recited in claim 19. Appeal
Br. 5–7. Specifically, Appellant argues Mollenkopf’s “high frequency AC
voltage signals” are “part of a circuit that requires an electrical return path
(through ground).” Appeal Br. 6. Appellant further argues that
Mollenkopf’s “high frequency AC current signals are not ‘guided
electromagnetic waves.’” Id. at 7.

3 The Examiner rejects claim 11 over Nishizaka, Truong, Elmore, and
Laurent-Michel. Final Act. 12. Appellant’s Appeal Brief appears to have
inadvertently included claim 11 with the discussion of claims 1 and 19,
which the Examiner rejects over a different combination, i.e., Nishizaka,
Elmore, Mollenkopf, and Laurent-Michel. See Appeal Br. 5. The Appeal
Brief’s discussion of the Nishizaka, Elmore, Mollenkopf, and Laurent-
Michel combination does not otherwise acknowledge claim 11. See id. at 4–
9. Accordingly, we treat Appeal Brief’s inclusion of claim 11 in the
discussion of claims 1 and 19 as a typographical error and do not address
those arguments in regards to claim 11.
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We are not persuaded of Examiner error. The Examiner finds, and we
agree, that Nishizaka’s “repeater 16 (APR) [which] can communicate via
power-line carrier communication” teaches “guided electromagnetic waves
are guided by the dielectric transmission medium to propagate along a
surface of the dielectric transmission medium.” Final Act. 6 (citing
Nishizaka ¶¶ 43–44, Fig. 3); Ans. 16. In particular, Nishizaka describes that
“power-line carrier communication is a technology to use power wiring
installed in homes or offices as communication lines.” Nishizaka ¶ 21.
Further, as discussed above, we agree with the Examiner’s finding (Final
Act. 6; Ans. 16) that Elmore’s description of “launching a surfacewave onto
a single conductor transmission line” (Elmore ¶ 32) teaches “guided
electromagnetic waves . . . propagate along a surface of the dielectric
transmission medium without requiring an electrical return path.”
None of Appellant’s arguments is persuasive because those arguments
that Mollenkopf fails to teach certain limitations (Appeal Br. 5–7) do not
address the Examiner’s findings that Elmore or Nishizaka teach those
disputed limitations (Ans. 16; Final Act. 6). In particular, Appellant argues
that Mollenkopf’s high frequency AC signals do not require a return path
(Appeal Br. 6–7), but the Examiner relies on Elmore to teach signals that do
not require a return path (Ans. 16; Final Act. 6). Similarly, Appellant’s
argument that Mollenkopf’s high frequency AC current signals are not
“guided electromagnetic waves” (Appeal Br. 7) fails to address the
Examiner’s reliance on Nishizaka or Elmore to teach “guided
electromagnetic waves” (Ans. 16; Final Act. 6).
Accordingly, we are not persuaded the Examiner erred in finding the
combination of Nishizaka, Elmore, and Mollenkopf teaches “guided
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electromagnetic waves are guided by the dielectric transmission medium to
propagate along a surface of the dielectric transmission medium without
requiring an electrical return path,” as recited in claim 1 and similarly recited
in claim 19.

Improper Combination
Appellant contends the Examiner improperly combined Mollenkopf
and Elmore in rejecting claim 19. Appeal Br. 7–8. Specifically, Appellant
argues “[c]ombining the coupler of Mollenkopf with Elmore would require
an impermissible change in the function of the coupler of Mollenkopf —
from inducing current signals inside a wire to inducing guided
electromagnetic waves that travel along the outside of a wire.” Appeal
Br. 8.
We are not persuaded of Examiner error because Appellant’s
arguments are not commensurate with the scope of claim 19. Claim 19 does
not recite a coupler; therefore, the combination does not require the coupler
Appellant’s arguments are based on. For this reason, we find no error in the
Examiner’s rejection.
Furthermore, we also note that Appellant’s arguments are based on
the bodily incorporation of features that the Examiner’s combination does
not rely on or require. See In re Sneed, 710 F.2d at 1550. Even if the
Examiner’s combination was required to incorporate Mollenkopf’s coupler,
the combination does not incorporate Mollenkpof’s high frequency AC
current signals (Final Act. 8; see Ans. 17–18), which Appellant’s arguments
rely on. That is, the Examiner does not rely on the type of signals
Mollenkpof’s system uses. Instead, the Examiner relies on Mollenkpof’s
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description that couplers are used to guide signals onto a transmission
medium in combination with the types of signals taught by Nishizaka or
Elmore. Ans. 17–18; see Final Act. 7–8. Even further, we also note that the
combination does not require Mollenkpof’s coupler because, as the
Examiner points out, Elmore teaches a coupler for its signals. Ans. 20
(citing Elmore ¶¶ 32, 40).
Accordingly, we are not persuaded the Examiner erred by improperly
combining Mollenkopf and Elmore in rejecting claim 19. Appellant does
not argue separate patentability for dependent claim 20, which depends
directly from claim 19. See Appeal Br. 4–9. Accordingly, for the reasons
set forth above, we sustain the Examiner’s decision to reject claims 19
and 20.

Double Patenting of Claims 1, 2, 4–12 and 14–22
The Examiner provisionally rejected claims 1, 2, 4–12, and 14–22 for
obviousness-type double patenting based on claims 1, 2, 4–12, and 14–22 of
U.S. Patent Application No. 14/729,178. Final Act. 2–5. Appellant does not
address the merits of this rejection. See Appeal Br. 11. Therefore, we
summarily sustain the rejection.

Appeal 2019-000873
Application 15/070,045

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4–8,
19, 20
103 Nishizaka, Elmore,
Mollenkopf,
Laurent-Michel
19, 20 1, 2, 4–8
9, 10 103 Nishizaka, Elmore,
Mollenkopf,
Laurent-Michel,
Soto
9, 10
11, 12, 15,
17, 18
103 Nishizaka, Truong,
Elmore, Laurent-
Michel
11, 12, 15,
17, 18

14, 16, 21,
22
103 Nishizaka, Truong,
Elmore, Laurent-
Michel, Abraham
14, 16 21, 22
1, 2, 4–12,
14–22
Obviousness-type
double patenting
1, 2, 4–12,
14–22

Overall
Outcome
1, 2, 4–12,
14–22

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