Ex Parte 7135941 et al

Patent Trial and Appeal Board

Apr 21, 2016

95002319 (P.T.A.B. Apr. 21, 2016)

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.
95/002,319 09/14/2012 7135941 19VL-162627 4073
89098 7590 04/21/2016
Christos Tsironis
c/o Focus Microwaves
1603 St.Regis
Dollard-des-Ormeaux, QC H9B 3H7
CANADA
EXAMINER
NGUYEN, MINH T
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
04/21/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
MAURY MICROWAVE, INC.
Requester and Appellant

v.

FOCUS MW IP Inc.
Patent Owner and Respondent
____________________

Appeal 2016-002145
Reexamination Control 95/002,319
Patent US 7,135,941 B1
Technology Center 3900

____________

Before JOHN A. JEFFERY, STEPHEN C. SIU, and ANDREW J. DILLON,
Administrative Patent Judges.

DILLON, Administrative Patent Judge

DECISION ON APPEAL

Appeal 2016-002145
Reexamination Control 95/002,319
Patent US 7,135,941 B1

2
STATEMENT OF THE CASE
Requester appeals under 35 U.S.C. § 134(b) (2002) from the
Examiner’s decision not to adopt certain proposed rejections of claims 6 and
18. We have jurisdiction under 35 U.S.C. § 315 (2002). A hearing was held
on April 13, 2016, and a transcript of that hearing will be made part of the
record.

Invention
The '941 patent describes an automatic electromechanical microwave
tuner, used for load pull transistor testing which employs three horizontally
and vertically adjustable RF probes. See Abstract.

Claims
Claims 1–6 are original claims and were subject to reexamination.
Claims 7–19 are proposed new claims. Claims 1–5, 11, and 12 were
rejected and Claims 7–10, 13–17 and 19 have been canceled.

Claims 6 and 18 are illustrative, with key disputed limitations
emphasized:

6. A calibration method for said electromechanical tuner of claim 2, in
which scattering parameters (S-parameters) are measured using a calibrated
vector network analyzer (VNA) between the test and idle ports of the tuner
at a given fundamental frequency of operation and its two harmonics, as a
function of a selected number of horizontal and vertical positions of each RF
probe, the horizontal positions selected such as to cover 360º of phase at the
Appeal 2016-002145
Reexamination Control 95/002,319
Patent US 7,135,941 B1

3
fundamental frequency and the vertical positions chosen such as to cover
from minimum to maximum amplitude of the reflection factor at the test port
in five steps,

step 1 consisting of measuring S-parameters of the tuner as a function
of the positions of probe 1, probes 2 and 3 being initialized,

step 2 consisting of measuring S-parameters of the tuner as a function
of the positions of probe 2, probes 1 and 3 being initialized,

step 3 consisting of measuring S-parameters of the tuner as a function
of the positions of probe 3, probes 1 and 2 being initialized,

step 4 consisting of cascading the S-parameters measured in steps 2
and 3 with the inverse S-parameter matrix of the tuner, measured
when all probes are initialized, and

step 5 consisting of saving the S-parameters collected and calculated
in steps 1 to 4 in a total of 3 calibration data files, one for each of 3
harmonic frequencies, ready for retrieval.

18. A programmable electromechanical, microwave load pull tuning system
comprising:

a programmable tuner including:

an input (test) and an output (idle) port,

a horizontal transmission airline in form of a slotted coaxial or
parallel plate airline (slabline),

three carriages movable parallel to the airline, which hold one
vertically adjustable capacitive probe each and mechanisms for
separate remote control of each horizontal and vertical
movement of the carriages and probes to proper positions based
on calibration data for synthesizing an impedance at a selected
frequency, wherein capacitive coupling between each said
Appeal 2016-002145
Reexamination Control 95/002,319
Patent US 7,135,941 B1

4
probe and a central conductor of the slab line creates a
wideband reflection;

an electronic memory storing thereon S-parameters in a total of
3 calibration data files, one for each of 3 harmonic frequencies,
wherein said S-parameters are calculated by:

measuring first S-parameters of the tuner as a function of the
positions of probe 1, probes 2 and 3 being initialized;

measuring second S-parameters of the tuner as a function of the
positions of probe 2, probes 1 and 3 being initialized;

measuring third S-parameters of the tuner as a function of the
positions of probe 3, probes 1 and 2 being initialized; and

cascading the second and third S-parameters with an inverse S-
parameter matrix of the tuner, measured when all probes are
initialized;

saving the said S-parameters from each step above in the
electronic memory in the 3 calibration data files.

Prior Art
Martens US 6,665,628 B2 Dec. 16, 2003
Saito JP 2000-221233A Aug. 11, 2000
Tsironis CA 2,311,620 A1 Sept. 1, 2001

Operating Manual: Automated Tuner System Model MT981D, 2000,
(hereinafter “MT981D Operating Manual’).

Jack Browne, Coaxial Tuners Control Impedances to 65 GHz, Microwaves
& RF Magazine, Jan. 2003, (hereinafter “Brown”).

Focus Microwaves Inc. Product Note 44: Programmable Harmonic Tuner,
PHT, Nov. 1997, (hereinafter “Product Note 44”).
Appeal 2016-002145
Reexamination Control 95/002,319
Patent US 7,135,941 B1

5

Focus Microwaves Inc. Calibrations in a Load Pull System (www.focus-
microwaves.com/FAQs/faqs/htm) May 11, 2003 (hereinafter “Focus Web
Page”).

Requester’s Contentions

Requester contends that the Examiner erred in declining to adopt the
following grounds of rejections against claims 6 and 18 (App. Br. 8–26):
A. The rejection of claims 6 and 18 under 35 U.S.C. §103(a) as
obvious over Tsironis in view of certain admissions of prior art from the
'941 patent ("APA") and the Focus Web Page;
B. The rejection of claims 6 and 18 under 35 U.S.C. §103(a) as
obvious over Tsironis in view of APA and Product Note 44;
C. The rejection of claims 6 and 18 under 35 U.S.C. §103(a) as
obvious over Tsironis in view of Saito, APA, and Focus Web Page;
D. The rejection of claims 6 and 18 under 35 U.S.C. §103(a) as
obvious over Tsironis in view of Saito, APA, and Product Note 44;
E. The rejection of claims 6 and 18 under 35 U.S.C. §103(a) as
obvious over Tsironis in view of Browne, APA, and Focus Web Page;
F. The rejection of claims 6 and 18 under 35 U.S.C. §103(a) as
obvious over Tsironis in view of Browne, APA, and Product Note 44;
G. The rejection of claims 6 and 18 under 35 U.S.C. §103(a) as
obvious over Tsironis in view of APA, Focus Web Page, and Martens;
H. The rejection of claims 6 and 18 under 35 U.S.C. §103(a) as
obvious over Tsironis in view of APA, Product Note 44, and Martens;
I. The rejection of claims 6 and 18 under 35 U.S.C. §103(a) as
obvious over Tsironis in view of Saito, APA, Focus Web Page, and Martens;
Appeal 2016-002145
Reexamination Control 95/002,319
Patent US 7,135,941 B1

6
J. The rejection of claims 6 and 18 under 35 U.S.C. §103(a) as
obvious over Tsironis in view of Saito, APA, Product Note 44, and Martens;
K. The rejection of claims 6 and 18 under 35 U.S.C. §103(a) as
obvious over Tsironis in view of Browne, APA, Focus Web Page, and
Martens;
L. The rejection of claims 6 and 18 under 35 U.S.C. §103(a) as
obvious over Tsironis in view of Browne, APA, Product Note 44, and
Martens;
M. The rejection of claim 18 under 35 U.S.C. § 112, first paragraph,
for lack of written description of “an electronic memory;” and,
N. The rejection of claim 18 under 35 U.S.C. § 112, second
paragraph, for failing to particularly point out and distinctly claim the
subject matter which the Patent Owner regards as his invention.

ANALYSIS
Proposed Ground of Rejection A
With respect to proposed ground of rejection A, Requester relies on
the limitations of claim 6 and does not provide separate and distinct
arguments for claim 18. Accordingly, we will decide the appeal with respect
to this proposed ground of rejection on the basis of claim 6 alone. See 37
C.F.R. § 41.67(c)(1)(vii).
Requester argues that the Examiner erred in not rejecting claim 6 in
view of the rejection of claim 1 as obvious over Tsironis, in view of APA
and various other references. Requester argues that the Examiner
determined that Tsironis teaches all of the features of claim 1, with the
Appeal 2016-002145
Reexamination Control 95/002,319
Patent US 7,135,941 B1

7
exception of the requirement that the tuner comprises three tuning slugs,
which the Examiner found would have been obvious to a person of ordinary
skill in the art. App. Br. 8.
Claim 6 recites a calibration method for the electromechanical tuner of
claim 1, and Requester points out that the Examiner, in the Action Closing
Prosecution mailed on July 31, 2014, only distinguishes claim 6 from the
cited prior art with respect to recited step 4. Id. at 9.
The fourth step of claim 6 recites “cascading (multiplying) the S-
parameters measured in steps 2 and 3 with the inverse S-parameter matrix of
the tuner, measured when all probes are initialized” which Requester argues
is equivalent to “de-embedding” which is described in Tsironis at page 9,
lines 5–7. Id. at 11.
Requester then relies upon the second declaration of Gary Simpson,
the Chief Technology Officer of Requester, who opines that “de-
embedding” refers to a mathematical operation involving the cascading
(multiplying) of S-parameters with an inverse S-parameter matrix, also
arguing that “de-embedding” was “an elementary concept in the art before
the filing/priority date of the ‘941 patent.” Id. at 11–12.
Finally, Requester argues that a person of ordinary skill in the art
would have found it obvious to cascade the S parameters measured in steps 2
and 3, as opposed to steps 1 and 2 or steps 1 and 3 as one of a finite number
of possibilities. Id. at 15.
Owner submits multiple declarations from independent experts which
each argue that the addition of a third probe to an existing two probe tuner
and the calibration of that tuner was widely believed to be an unsolvable
Appeal 2016-002145
Reexamination Control 95/002,319
Patent US 7,135,941 B1

8
problem in the community. Further, Owner’s submitted declarations
describe “de-embedding” as a general expression which entails a different
approach for different set-ups, urging that no special significance should be
attributed to the use of the term “de-embedding” within the Tsironis
reference. Resp. Br. 5.
With regard to Requester’s argument that discovery of the claimed
calibration technique necessitated only the investigation of a finite number
of possibilities, the declarations submitted by Owner support the argument
that “de-embedding” a three-probe tuner involves “significantly more
variables,” rendering existing methods of calibration irrelevant. (First Decl.
of Popovic, ¶6) Id. at 7.
The Examiner found that assuming it was obvious to include a third
tuner in series with the two tuners disclosed by Tsironis, the many
possibilities of parameters which might be utilized to “de-embed” that
system would have precluded one of ordinary skill in the art from choosing
the claimed approach, absent the impermissible use of hindsight. RAN 26-
27.
We concur with the Examiner. While it may appear, against the
backdrop of the claimed solution, that there were only a finite number of
possible solutions to investigate, we find the overwhelming weight of the
Appeal 2016-002145
Reexamination Control 95/002,319
Patent US 7,135,941 B1

9
evidence tends to show that the claimed solution was not an obvious
extension of the calibration technique disclosed by Tsironis.
With respect to claim 18, as noted above, Requester merely
incorporates the arguments set forth above regarding claim 6. App. Br. 19.
We therefore find that the Examiner did not err by failing to adopt
Proposed Ground of Rejection A.
Proposed Ground of Rejection B
Proposed Ground of Rejection B differs from Proposed Ground of
Rejection A only by the substitution of a different secondary reference, and
Patent Owner’s arguments do not persuasively rebut the Examiner’s decision
not to adopt this rejection.
For the reasons we set forth above, we find no error in the Examiner’s
failure to adopt Proposed Ground of Rejection B.
Proposed Ground of Rejection C
Proposed Ground of Rejection C differs from Proposed Ground of
Rejection A only by the additional reference to Saito for a teaching that it
would have been obvious to add a third probe to the two-probe tuner of
Tsironis, and Patent Owner’s arguments do not persuasively rebut the
Examiner’s decision not to adopt this rejection
For the reasons we set forth above, we find no error in the Examiner’s
failure to adopt Proposed Ground of Rejection C.
Proposed Ground of Rejection D
Proposed Ground of Rejection D differs from Proposed Ground of
Rejection B only by the additional reference to Saito for a teaching that it
would have been obvious to add a third probe to the two-probe tuner of
Appeal 2016-002145
Reexamination Control 95/002,319
Patent US 7,135,941 B1

10
Tsironis and Patent Owner’s arguments do not persuasively rebut the
Examiner’s decision not to adopt this rejection
For the reasons we set forth above, we find no error in the Examiner’s
failure to adopt Proposed Ground of Rejection D.
Proposed Ground of Rejection E
Proposed Ground of Rejection E differs from Proposed Ground of
Rejection A only by the additional reference to Browne for a teaching that it
would have been obvious to add a third probe to the two-probe tuner of
Tsironis and Patent Owner’s arguments do not persuasively rebut the
Examiner’s decision not to adopt this rejection
For the reasons we set forth above, we find no error in the Examiner’s
failure to adopt Proposed Ground of Rejection E.
Proposed Ground of Rejection F
Proposed Ground of Rejection F differs from Proposed Ground of
Rejection B only by the additional reference to Browne for a teaching that it
would have been obvious to add a third probe to the two-probe tuner of
Tsironis and Patent Owner’s arguments do not persuasively rebut the
Examiner’s decision not to adopt this rejection
For the reasons we set forth above, we find no error in the Examiner’s
failure to adopt Proposed Ground of Rejection E
Proposed Ground of Rejection G
Proposed Ground of Rejection G differs from Proposed Ground of
Rejection A only by the additional reference to Martens for a teaching that
de-embedding was known in the art at the time of the filing date of the ‘941
Appeal 2016-002145
Reexamination Control 95/002,319
Patent US 7,135,941 B1

11
Patent and Patent Owner’s arguments do not persuasively rebut the
Examiner’s decision not to adopt this rejection.
For the reasons we set forth above, we find no error in the Examiner’s
failure to adopt Proposed Ground of Rejection G.
Proposed Ground of Rejection H
Proposed Ground of Rejection H differs from Proposed Ground of
Rejection B only by the additional reference to Martens for a teaching that
de-embedding was known in the art at the time of the filing date of the ‘941
Patent and Patent Owner’s arguments do not persuasively rebut the
Examiner’s decision not to adopt this rejection.
For the reasons we set forth above, we find no error in the Examiner’s
failure to adopt Proposed Ground of Rejection H.
Proposed Ground of Rejection I
Proposed Ground of Rejection I differs from Proposed Ground of
Rejection C only by the additional reference to Martens for a teaching that
de-embedding involved cascading (or multiplying) a matrix with an inverse
matrix to correct for the effects of the test environment and Patent Owner’s
arguments do not persuasively rebut the Examiner’s decision not to adopt
this rejection.
For the reasons we set forth above, we find no error in the Examiner’s
failure to adopt Proposed Ground of Rejection I.
Proposed Ground of Rejection J
Proposed Ground of Rejection J differs from Proposed Ground of
Rejection D only by the additional reference to Martens for a teaching that
de-embedding involved cascading (or multiplying) a matrix with an inverse
Appeal 2016-002145
Reexamination Control 95/002,319
Patent US 7,135,941 B1

12
matrix to correct for the effects of the test environment and Patent Owner’s
arguments do not persuasively rebut the Examiner’s decision not to adopt
this rejection .
For the reasons we set forth above, we find no error in the Examiner’s
failure to adopt Proposed Ground of Rejection J.
Proposed Ground of Rejection K
Proposed Ground of Rejection K differs from Proposed Ground of
Rejection E only by the additional reference to Martens for a teaching that
de-embedding involved cascading (or multiplying) a matrix with an inverse
matrix to correct for the effects of the test environment and Patent Owner’s
arguments do not persuasively rebut the Examiner’s decision not to adopt
this rejection .
For the reasons we set forth above, we find no error in the Examiner’s
failure to adopt Proposed Ground of Rejection K.
Proposed Ground of Rejection L
Proposed Ground of Rejection L differs from Proposed Ground of
Rejection F only by the additional reference to Martens for a teaching that
de-embedding involved cascading (or multiplying) a matrix with an inverse
matrix to correct for the effects of the test environment and Patent Owner’s
Appeal 2016-002145
Reexamination Control 95/002,319
Patent US 7,135,941 B1

13
arguments do not persuasively rebut the Examiner’s decision not to adopt
this rejection .
For the reasons we set forth above, we find no error in the Examiner’s
failure to adopt Proposed Ground of Rejection L.
Proposed Ground of Rejection M
Requester argues the Examiner erred in failing to reject claim 18
under 35 U.S.C. § 112, first paragraph, for lack of written description of an
“electronic memory.” Requester urges that an “electronic memory” is not
disclosed in the specification of the ‘941 Patent, and Owner’s reliance on the
disclosure of a “control computer” as inherently providing “electronic
memory” is not well placed. App. Br. 24.
Owner argues that electronic memory is “ubiquitous” and “an
absolute requirement for the operation of a computer” and responds that the
MPEP expressly recites that "[a] patent need not teach, and preferably omits,
what is well known in the art." (MPEP 2164.01) Resp. Br. 17–18.
"The disclosure as originally filed does not . . . have to provide in
haec verba support for the claimed subject matter at issue." Cordis Corp. v.
Medtronic AVE, Inc., 339 F.3d 1352, 1364 (Fed. Cir. 2003) (citation
omitted). Here, we find that the presence of an “electronic memory” within
the disclosed “control computer” to be clearly inherent.
We therefore find no error in the Examiner’s failure to adopt Proposed
Ground of Rejection M.
Proposed Ground of Rejection N
Finally, Requester argues the Examiner erred in failing to reject claim
18 under 35 U.S.C. § 112, second paragraph, for failing to particularly point
Appeal 2016-002145
Reexamination Control 95/002,319
Patent US 7,135,941 B1

14
out and distinctly claim the subject matter which the Patent Owner regards
as the invention. Specifically, Requester argues that the amendment to claim
18 which characterizes the saved S-parameters as “from each step above”
makes it unclear which S-parameters are being saved. App. Br. 25.
Owner argues that the meaning of the added phrase is “abundantly
clear to any person of ordinary skill in the art” and, by way of additional
support, points out that the Examiner entered the amendment in question.
”he legal standard for definiteness is whether a claim reasonably
apprises those of skill in the art of its scope.” In re Warmerdam, 33 F.3d
1354, 1361 (Fed. Cir. 1994) (citing Amgen Inc. v. Chugai Pharma. Co.,
927 F.2d 1200, 1217 (Fed. Cir. 1991)). "[T]he definiteness of the language
employed must be analyzed — not in a vacuum, but always in light of the
teachings of the prior art and of the particular application disclosure as it
would be interpreted by one possessing the ordinary level of skill in the
pertinent art." In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
In this particular set of facts, we find that the phrase “from each step
above” simply refers to the S-parameters recited in the steps above, and that
this phrase does not give rise to any confusion when read by one of ordinary
skill.
We find no error in the Examiner’s failure to adopt Proposed Ground
of Rejection N.
Appeal 2016-002145
Reexamination Control 95/002,319
Patent US 7,135,941 B1

15

DECISION
The Examiner’s decision not to adopt the proposed grounds of
rejections enumerated above is affirmed.
Requests for extensions of time in this proceeding are governed by 37
C.F.R. §§ 1.956 and 41.79(e).

AFFIRMED

Appeal 2016-002145
Reexamination Control 95/002,319
Patent US 7,135,941 B1

16
Patent Owner:

Christos Tsironis
c/o Focus Microwaves
1603 St. Regis
Dollard-des-Ormeaux, QC H9B 3H7
CANADA

Third Party Requester:

Sheppard, Mullin, Richter & Hampton LLP
12275 El Camino Real
Suite 200
San Diego, CA 92130

kmm