Ex Parte Beals et al

Patent Trial and Appeal Board

May 9, 2016

13558175 (P.T.A.B. May. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/558, 175 07/25/2012
70336 7590 05/09/2016
Seed IP Law Group/EchoStar (290110)
701 FIFTH A VENUE
SUITE 5400
SEATTLE, WA 98104
FIRST NAMED INVENTOR
William Michael Beals
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P2012-0l-05 (290110.465) 9863
EXAMINER
FLYNN, RANDY A
ART UNIT PAPER NUMBER
2424
MAILDATE DELIVERY MODE
05/09/2016 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
Ex parte WILLIAM MICHAEL BEALS and HENRY GREGG MARTCH
Appeal2014-007220
Application 13/558, 175
Technology Center 2400
Before JASON V. MORGAN, JOSEPH P. LENTIVECH, and
JOHN R. KENNY, Administrative Patent Judges.
KENNY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-20, which constitute all the claims pending in this application.
(App. Br. 2.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm the rejection of claims 1-7 and 9-20 and newly reject
claim 8 under 35 U.S.C. §§ 102(b), 103(a).
Appeal2014-007220
Application 13/558, 175
INVENTION
Appellants' disclosed invention relates to systems and methods for
enabling a wideband tuner of a television converter device to receive
transponders from satellite locations. (Abstract.) Claims 1 and 8, which are
exemplary, reads, with the disputed limitations italicized and annotated:
1. An integrated switch with transponder stacking,
compnsmg:
a digital crosspoint switch comprising:
a plurality of switch inputs configured to receive a
plurality of different signals;
a selection input; and
a plurality of switch outputs, [i] wherein each
signal of the plurality of different signals represents a
different corresponding signal in a different one of a
plurality of frequency bands, and wherein the digital
crosspoint switch is configured to concurrently
selectively route individual transponders of a plurality of
transponders each corresponding to different sub-bands
of any of the plurality of frequency bands to any of the
plurality of switch outputs according to a selection input
signal of the selection input; and
a plurality of transponder stacker circuits coupled
to the plurality of switch outputs, each transponder
stacker circuit of the plurality of transponder stacker
circuits coupled to a respective subset of the plurality of
switch outputs and configured to transponder stack
signals received on the respective subset of the plurality
of switch outputs to enable each transponder stacker
circuit to be able to output a different unique combined
signal that includes any combination of transponders of
the plurality of transponders according to the selection
input signal.
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Application 13/558, 175
8. The integrated switch with transponder stacking of claim
5 [ii] wherein each respective subset of the plurality of switch
outputs contains at least six switch outputs, each of the at least
six switch outputs corresponding to an individually selected
transponder for the switch output according to the selection
input signal.
REFERENCES
The Examiner relies on the following prior art references in rejecting
the claims on appeal:
Atarashi
Lindstrom et al.
("Lindstrom")
Gurantz et al.
("Gurantz")
US 2004/0235415 Al
US 2005/0193419 Al
US 7,477,871 Bl
REJECTIONS
Nov. 25, 2004
Sept. 1, 2005
Jan. 13,2009
Claims 1, 4, 5, 7-10, 13, 14, 17, and 18 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Atarashi. (Ans. 2.)
Claims 2, 3, 6, 15, 16, 19, and 20 are rejected under 35 U.S.C. §
103(a) as being unpatentable over the combination of Atarashi and Gurantz.
(Ans. 7.)
Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Atarashi and Lindstrom. (Ans. 9.)
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Appeal2014-007220
Application 13/558, 175
ISSUES
1. Did the Examiner err in finding that Atarashi teaches disputed
limitation [i] in claim 1? (App. Br. 8.)
2. Did the Examiner err in finding that Atarashi teaches disputed
limitation [ii] in claim 8? (App. Br. 15.)
ANALYSIS
Claims 1, 4, 5, 7-10, 13, 14, 17, and 18
Appellants argue that the Examiner erred in finding that Atarashi
discloses the disputed limitation [i] in claim 1 (i.e., "wherein each signal of
the plurality of different signals [received at the switch inputs] represents a
different corresponding signal in a different one of a plurality of frequency
bands"). (App. Br. 8-10; Reply Br. 14--16.) To support finding Atarashi
discloses this limitation, the Examiner cites, inter alia, the disclosure in
paragraph 37 of Atarashi ofN frequency converting circuits converting (and
hence receiving at switch inputs) frequency bands of M types of polarization
signals. (Final Act. 4; Ans. 3, 12; Atarashi i-f 37.) Appellants argue that
paragraph 37 does not support the limitation because it merely discloses
converting signals with differing polarizations, rather than differing
frequency bands. (App. Br. 8-10; Reply Br. 14--16.) Appellants further
argue that the frequency bands that paragraph 37 describes as converting are
all the 0th frequency band, citing paragraph 55 of Atarashi to support that
argument. (Reply Br. 15.) We are not persuaded. Although paragraph 55
describes a particular embodiment ( Atarashi' s first embodiment) where
every input signal is in the 0th frequency band, Atarashi describes more than
just that one embodiment. And paragraph 3 7 is part of Atarashi' s broader
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Application 13/558, 175
disclosure. (Atarashi if 37.) Further, it would not make sense for paragraph
37 to refer to the conversion of frequency bands if it were merely describing
the conversion of one frequency band (the 0th frequency band). (Id.)
Accordingly, we are not persuaded the Examiner erred and sustain the
Examiner'srejectionofclaim 1andofclaims4,5, 7-10, 13, 14, 17, and 18,
not separately argued. (App. Br. 8.)
Claims 2, 3, 6, 11, 12, 15, 16, 19, and 20
Appellants argue that the Examiner made the same error with respect
to claims 2, 3, 6, 11, 12, 13, 15, 16, 19, and 20 as for claim 1. (App. Br. 10.)
Therefore, for the reasons given above for claim 1, we sustain the
Examiner's rejection of claims 2, 3, 6, 11, 12, 13, 15, 16, 19, and 20.
Claim 8
In rejecting claim 8, the Examiner finds that Atarashi's disclosure of a
switch with NxM outputs satisfies disputed limitation [ii] (i.e., "each
respective subset of the plurality of switch outputs contains at least six
switch outputs"). (Final Act. 6; Ans. 13.) In particular, the Examiner finds
that N and Meach can be greater than two and thus the product ofNxM can
be at least six. (Final Act. 6; Ans. 13.)
Appellants argue that the product of N x M does not represent the
number of recited outputs for this limitation because NxM represents the
total number of outputs for the switch, rather than the number of outputs for
each respective subset. (App. Br. 11; Reply Br. 18-20.)
We agree with Appellants that NxM represents the total number of
switch outputs, not the outputs for each respective subset. Therefore, we
agree with Appellants the Examiner erred and reverse the Examiner's 35
U.S.C. § 102(b) rejection of claim 8.
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Application 13/558, 175
Nonetheless, we newly reject claim 8 under 35 U.S.C. § 102(b)
because Atarashi discloses M outputs for each respective subset, and we find
that disclosure of M outputs satisfies the disputed limitation. (Atarashi i-f
37.)
In claim 8, the outputs for each respective subset are those coupled to
each frequency converting circuit. (See claim 8.) Claim 8 incorporates the
limitations of claim 1 through dependency. (Id.) Claim 1 recites "each
transponder circuit ... coupled to a respective subset of the plurality of
switch outputs." (See claim 1.) As the Examiner finds, and Appellants do
not dispute, the recited transponder circuits in Atarashi are its frequency
converting circuits (e.g., frequency converting circuits 30A and 30B). (Final
Act. 4--5; Ans. 3.) Therefore, each respective subset of the plurality of
switch outputs recited in claim 8 is coupled to a frequency converting
circuit.
Atarashi discloses M outputs coupled to each frequency converting
circuit. (Atarashi i-f 37.) Specifically, Atarashi discloses the use ofN
frequency converting circuits with an N x M switch, where each frequency
converting circuit would convert frequency bands of M signals, meaning M
signals would be output to each frequency converting circuit. (Id.)
Therefore, Atarashi discloses M outputs per respective subset.
Atarashi' s disclosed range for M, and hence for the respective subsets,
describes the range of outputs recited in claim 8 with sufficient specificity to
anticipate the disputed limitation [ii]. Mis greater than or equal to two,
meaning it encompasses the recited range of greater than or equal to six.
(Atarashi i-f 37.) The record indicates no criticality to the claimed range or
any difference in effect across the disclosed range. In particular, in
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describing an embodiment with six outputs per respective subset, the
Specification teaches fewer outputs could be chosen. (Spec. 10.) More
particularly, in addressing inputs to the digital transponder stacker switch,
which as discussed above are the outputs per respective subset, the
Specification describes six inputs, but teaches: "However, the digital
transponder stacker switch 301 may have fewer or more inputs in various
other embodiments." (Id.) On this record, we find the disclosed range
anticipates claim 8, thus rendering claim 8 unpatentable under 35 U.S.C.
§ 102(b) as being anticipated by Atarashi. Ineos USA LLC v. Berry Plastics
Corp., 783 F.3d 865, 869-870 (Fed. Cir. 2015); Osram Sylvania, Inc. v.
American Induction Technologies, Inc., 701 F. 3d 698, 704--705 (Fed. Cir.
2012); Clearvalue, Inc. v. Pearl River Polymers, Inc., 668 F.3d 1340, 1344--
45 (Fed. Cir. 2012) (See also MPEP § 2131.03). We also conclude that
Atarashi's disclosed range renders claim 8 obvious, thus we newly reject
claim 8 under 35 U.S.C. § 103(a) as being unpatentable of Atarashi. In re
Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003); Ex parte Lee, 31 USPQ2d
1105, 1107 (BPAI 1993) (plurality decision, expanded panel) (See also
MPEP § 2144.05).
Because we have changed the thrust of the Examiner's anticipation
rejection of claim 8, we designate our rejection of claim 8 under 35 U.S.C.
§ 102(b) as a new ground of rejection under 37 C.F.R. § 41.50(b). Our 35
U.S.C. § 103(a) rejection of claim 8 is also a new ground of rejection under
37 C.F.R. § 41.50(b).
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Application 13/558, 175
DECISION
The decision of the Examiner to reject claims 1-7 and 9-20 is
affirmed.
The decision of the Examiner to reject claim 8 for anticipation over
Atarashi is reversed.
We newly reject claim 8 under 35 U.S.C. §§ 102(b), 103(a) as being
anticipated by and unpatentable over Atarashi.
37 C.F.R. § 41.50(b) provides that, "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
exammer ....
(2) Request rehearing. Request that the proceeding be reheard
under 37 C.F.R. § 41.52 by the Board upon the same Record ...
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
37 C.F.R. § 41.50(b)
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