Ex Parte Apfel

Board of Patent Appeals and Interferences

Jan 11, 2008

09778291 (B.P.A.I. Jan. 11, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte RUSSELL J. APFEL
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Appeal 2006-2089
Application 09/778,291
Technology Center 2600
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Decided: January 11, 2008
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Before JOSEPH F. RUGGIERO, LANCE LEONARD BARRY,
and JEAN R. HOMERE, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

ON REQUEST FOR REHEARING

Appellant requests that we reconsider our Decision of January 17,
2007 wherein we sustained the Examiner’s 35 U.S.C. § 103(a) rejection of
claims 1-25 based on the combination of the Shenoi and Shapiro references.
We have reconsidered our Decision of January 17, 2007 in light of
Appellant’s comments in the Request for Rehearing, and we find no error
Appeal 2006-2089
Application 09/778,291

therein. We, therefore, decline to make any changes in our prior Decision
for the reasons which follow.
We would initially point out that while our prior Decision undertook
an analysis of the disclosure of Shenoi as it relates to the limitations set forth
in independent claims 1, 12, and 24, our prior Decision (Decision 5) did
conclude that we found no error in the Examiner’s finding of obviousness
based on the combination of Shapiro with Shenoi. In particular, we remain
convinced, Appellant’s arguments (Reh’g 3) to the contrary notwithstanding,
that, as explained by the Examiner (Ans. 11), Shapiro’s defining of a
bandwidth for each channel in the form of a maximum bit allocation with a
gain assigned to each channel satisfies the claimed requirement of
controlling the gain of a portion of a signal based on a determination of
bandwidth requirement. Similarly, we find no error in the Examiner’s
conclusion (Ans. 14) that Shapiro provides a disclosure (col. 7, ll. 36-55 and
col. 8, ll. 16-34) of the separation of signal paths based upon the
characteristics of a signal path to apply a corresponding gain upon the signal
path.
We further find no error in the analysis in our prior Decision
(Decision 5-6) of the Shenoi disclosure as it applies to the requirements of
appealed independent claims 1, 12, and 24. Initially, we find to be
unpersuasive Appellant’s contention (Reh’g 2) that, in contrast to the gain
control of the appealed claims, Shenoi merely applies a predetermined
amplification factor to the transmitted signal based on a cable length of 6000
feet. There is no claim language which precludes the applied amplification,
i.e. gain, from being “predetermined,” this predetermination in Shenoi’s case
being based on the center frequency of the bandpass frequency range of the
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Application 09/778,291

upstream signal and the high pass filter frequency value of the downstream
signal. Similarly, Appellant’s argument (id.) that the amplification factor in
Shenoi is applied to the entire signal as opposed to the claimed “portion” of
a signal is unpersuasive since, as disclosed by Shenoi (col. 8, ll. 3-24), the
amplification factor is applied to the upstream signal after the bandpass
frequency “portion” has been separated out by the bandpass filter BPF. The
downstream amplification in Shenoi is also applied to a “portion” of the
signal since the gain is applied to the high pass frequency portion separated
out by highpass filter HPF.
We also find to be without merit Appellant’s contention (Reh’g 2-3)
that “monitoring” of a signal to determine gain control is not taking place in
Shenoi. We fail to see why, at the very least, the determination of whether a
signal is in the upstream or downstream direction in order to apply the
differing amplification factors in Shenoi would not be considered as signal
“monitoring” by the skilled artisan. Further, signal frequency “monitoring”
must occur in Shenoi in order for the bandpass filter to properly separate out
the bandpass frequencies in the upstream direction and the highpass filter to
separate out frequencies above the highpass value in the downstream
direction.
Lastly, with respect to claims 6-11, 17-23, and 25 (the Group II
claims), Appellant contends that our prior Decision erred in interpreting
Shenoi as disclosing the claimed signal path separation in response to the
determination of a length of signal path. According to Appellant (Reh’g 3),
no separation of signal paths takes place in Shenoi but, rather, predetermined
downstream and paths are selected with no path separation being in response
to a determination of signal path length.
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Application 09/778,291

We do not find, however, Appellant’s arguments to be persuasive of
any error in our interpretation of the disclosure of Shenoi set forth in our
prior Decision. As illustrated in Figures 1 and 2 of Shenoi and described at
column 6, lines 26-34 of Shenoi, for digital transmission between a central
office and a subscriber over a subscriber loop, the communication signal is
separated into upstream and downstream paths. Further, contrary to
Appellant’s arguments, there is no positive requirement in any of the
appealed claims that the signal path separation be in response to a
determination of signal path length. As pointed out in our prior Decision
(Decision 8), the appealed claims require only the separation of signal paths
in response to “at least one of” signal path length, bandwidth requirement,
and gain factor. Accordingly, we find no error in the conclusion reached in
our prior Decision that Shenoi’s disclosure (col. 8, ll. 3-24) of separating
signal communication between the central office and the subscriber into
upstream and downstream paths based on the differing bandwidth
requirements for upstream and downstream communication satisfies the
claimed requirement.

CONCLUSION
Based on the foregoing, we have granted Appellant’s request to the
extent that we have reconsidered our Decision of January 17, 2007, but we
deny the request with respect to making any changes therein.

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).

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Application 09/778,291

REHEARING DENIED

eld

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