Boffa, Vincenzo et al.

Patent Trials and Appeals Board

Jan 28, 2020

12311429 - (D) (P.T.A.B. Jan. 28, 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.
12/311,429 08/06/2009 Vincenzo Boffa 4293/86 4318
44696 7590 01/28/2020
Dr. Mark M. Friedman
Moshe Aviv Tower, 54th floor
7 Jabotinsky St.
Ramat Gan, 5252007
ISRAEL
EXAMINER
FLEMING-HALL, ERICA L
ART UNIT PAPER NUMBER
2647
NOTIFICATION DATE DELIVERY MODE
01/28/2020 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte VINCENZO BOFFA, SIMONE GERMANI, STEFANO PASSI,
FABRIZIO RICCI, and ROBERTO VALLAURI
____________________

Appeal 2019-000912
Application 12/311,429
Technology Center 2600
____________________

Before ROBERT E. NAPPI, ERIC S. FRAHM, and
JUSTIN BUSCH, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 28, 29, 31 through 47, 49 and 55 through 57. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). According to Appellant, Advanced Digital Broadcast S.A. is the
real party in interest. Appeal Br. 3.
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Application 12/311,429

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INVENTION
Appellant’s invention is directed to an antenna comprising at least one
resonator element cooperating with the casing of a wireless transceiver
station and having a shape with a low aspect ratio so as to be conformal with
said casing. Abstract. Claim 28 is illustrative of the invention and is
reproduced below.
28. A method for controlling the transmission and/or
reception of a radio signal, comprising:
(a) providing a wireless transceiver station with a casing
and with at least one antenna device including:
(i) a groundplane; and
(ii) at least one resonator element, said at least one
resonator element:
(A) cooperating with said casing,
(B) including composite material,
(C) being shaped so as to have a low aspect ratio
with respect to said casing, and
(D) being shaped so as to be conformal with said
casing, wherein conformal includes an outer surface of
said at least one resonator device forming a portion of
said casing;
(E) supported by said groundplane; and
(b) coupling the radio signal so as to resonate therein a
resonant mode of a TM0,n,δ class of resonant modes.

EXAMINER’S REJECTIONS2
The Examiner rejected claims 28, 29, 31, 35, 43 through 45, 56 and 57
under 35 U.S.C. § 103 as being unpatentable over Nysen (US 2002/0180647
A1), published Dec. 5, 2002; Thill (US 6,087,990), issued July 11, 2000;

2 Throughout this Decision we refer to the Appeal Brief filed May 29, 2018
(“Appeal Br.”); Reply Brief, filed November 13, 2018 (Reply Br.); Final
Office Action mailed November 30, 2017 (“Final Act.”); and the Examiner’s
Answer mailed September 12, 2018 (“Ans.”).
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and Durso (US 2006/001584 A1), published Jan. 5, 2006. Final Act. 2–9.
The Examiner rejected claims 29, 31 through 38, 46, 47, 49 and 55
under 35 U.S.C. § 103 as being unpatentable over Tassoudji (US 6,147,647),
issued Nov. 14, 2000; Colburn (US 2005/0162321 A1), published July 28,
2005; Thill; and Durso. Final Act. 10–16.
The Examiner rejected claims 39 through 42 and 55 under 35 U.S.C.
§ 103 as being unpatentable over Tassoudji; Colburn; Thill; Durso; and
Chen (US 2007/0164420 A1), published July 19, 2007. Final Act. 16–18.

ANALYSIS
We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s rejections, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have persuaded us of error in the
Examiner’s rejection of all of the disputed claims under 35 U.S.C. § 103.
Obviousness rejection based upon Nysen, Thill and Durso
Appellant presents several arguments asserting the Examiner’s
rejection of independent claims 28 and 29 based upon the combination of
Nysen, Thill and Durso is in error. Appeal Br. 11–16, Reply Br. 7–9. The
dispositive issue presented by these arguments is did the Examiner err in
finding the combination of the references teaches the resonator element
being shaped to be conformal with the casing, where the outer surface of the
resonator forms a portion of the casing.
The Examiner, in rejecting independent claims 28 and 29, makes the
confusing finding that Nysen teaches an antenna with a resonator being
shaped to have a low aspect ratio and being shaped to be conformal with the
casing, but does not teach that the resonant element is conformal with the
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casing. Final Act. 2, 3 (citing Nysen para. 29, 52, Fig. 9). The Examiner
further finds that the combination of Nysen and Thrill does not teach the
resonant element includes an outer surface forming a portion of the casing
and relies upon Durso as teaching this limitation. Final Act. 4–5 (citing the
radome layer of Durso discussed in para. 7). In response to Appellant’s
arguments, the Examiner equates Durso’s disclosure of the radome layer to
the casing and states “the adjoining surface of the antenna to the second
surface of the radome reads on wherein conformal includes an outer surface
of said at least one resonator device forming a portion of said casing.”
Answer 18–19.
Appellant’s arguments have persuaded us of error in the Examiner’s
rejection of independent claims 28 and 29, and the claims which depend
thereupon. Both claims 28 and 29 recite a wireless transceiver with a casing
and the resonator element being shaped so to be conformal with the casing,
where the outer surface of the resonator forms a portion of the casing. We
have reviewed the teachings of Nysen, Thill and Durso and do not find that
they individually or collectively teach the resonator element where the outer
surface of the resonator forms a portion of the casing. While we concur with
the Examiner that Durso teaches that the radome (item 210 in Fig. 2) is
conformal to the housing, we do not find that Durso teaches the resonator,
i.e., antenna (item 220 or its surfaces 220a, 220b), forms part of the housing.
Durso teaches that the radome (item 210) has an outer surface (item 210a)
which attaches to an article of clothing (which further includes the
transmitter/ receiver). See para. 13. Further Durso teaches the radome (item
201) envelopes the antenna and provides protection for the antenna. See
para. 14–15. Thus, in Durso the antenna is inside the radome and does not
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form part of the casing for the wireless transceiver as recited in each of the
independent claims. Accordingly, we do not sustain the Examiner’s
rejection of independent clams 28 and 29 or dependent claims 31, 35, 43
through 45, 56 and 57 based upon the combination of Nysen, Thill and
Durso.

Obviousness rejections based upon Tassoudji, Colburn, Thill, and
Durso
Appellant presents several arguments asserting the Examiner’s
rejection of independent claims 29 and 55 based upon the combination of
Tassoudji, Colburn, Thill and Durso is in error. Appeal Br. 16–30. Similar
to our discussion above, the dispositive issue presented by these arguments
is did the Examiner err in finding the combination of the references teaches
the resonator element being shaped so to be conformal with the casing,
where the outer surface of the resonator forms a portion of the casing.
The Examiner, in rejecting independent claim 29, makes the
confusing finding that Tassoudji teaches an antenna cooperating with the
casing, having a low aspect ratio, and being shaped to be conformal with the
casing. Final Act. 2, 3 (citing Tassoudji para. 5 and 23)3. The Examiner
further states that the combination of Tassoudji, Colburn and Thill does not
teach the resonant element includes an outer surface forming a portion of the
casing and relies upon Durso as teaching this limitation. Final Act. 13
(citing the radome layer of Durso discussed in para. 7). In the Final
Rejection, the Examiner does not provide a rationale as to how the teachings

3 We note that Tassoudji does not have numbered paragraphs and as such the
citation is ambiguous. Nonetheless we have reviewed the entire document.
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of Tassoudji, Colburn, Thill and Durso apply to claim 55. The Examiner
does not directly address Appellant’s arguments in the Answer except as
discussed above, equating Durso’s disclosure of the radome layer to the
claimed casing. Answer 18–19.
We have reviewed the teachings of Tassoudji, Colburn and Thill and
concur with the Examiner that they do not teach the resonant element
includes an outer surface forming a portion of the casing. As discussed
above claim 29 includes a limitation directed to this feature. Claim 55 also
includes a limitation directed to the resonant element including an outer
surface forming a portion of the casing. As discussed above we do not find
that Durso teaches this feature. Thus, we similarly do not sustain the
Examiner’s rejection of independent clams 29 and 55 or dependent claims
31through 38 and 46 through 49 based upon the combination of Tassoudji,
Colburn, Thill and Durso.

Obviousness rejections based upon Tassoudji, Colburn, Thill, Durso
and Chen
Appellant argues that the Examiner’s rejection of dependent claims 39
through 42 is in error as the additional teachings of Chen do not make up for
the deficiencies discussed with respect to the rejection of the independent
claims from which they depend. Further, Appellant argues that the
combination of references does not teach the resonator element where the
outer surface of the resonator forms a portion of the casing as recited in
independent claim 55.

The Examiner’s rejection does not cite to Chen as teaching a resonator
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element where the outer surface of the resonator forms a portion of the
casing. Final Act. 17. Accordingly, we concur with Appellant and do not
sustain the Examiner’s rejection of claims 39 through 42 and 55 based upon
Tassoudji, Colburn, Thill, Durso and Chen for the same reasons discussed
with respect to the Examiner’s rejection based upon Tassoudji, Colburn,
Thill and Durso.
CONCLUSION
We reverse the Examiner’s rejections of claims 28, 29, 31 through 47,
49 and 55 through 57 under 35 U.S.C. § 103.

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
28, 29, 31, 35,
43–45, 56, 57
103 Nysen, Thill, and
Durso
28, 29, 31,
35, 43–45,
56, 57
29, 31–38,
46–49, 55
103 Tassoudji, Colburn,
Thill, and Durso
29, 31–38,
46–49, 55
39–42, 55 103 Tassoudji, Colburn,
Thill, Durso, and Chen
39–42, 55
Overall
Outcome
28, 29, 31–
47, 49, 55–
57

REVERSED