Ex Parte Belk

Board of Patent Appeals and Interferences

Aug 31, 2010

10694074 (B.P.A.I. Aug. 31, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NATHAN R. BELK
____________

Appeal 2010-014746
Application 10/694,074
Technology Center 2600
____________

Before KENNETH W. HAIRSTON, JOHN C. MARTIN and
MAHSHID D. SAADAT, Administrative Patent Judges.
HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2010-014746
Application 10/694,074

2
This is an appeal under 35 U.S.C. §§ 6(b) and 134 from the final
rejection of claims 1 to 8, 10, 11, 26, and 27. We will reverse.
The disclosed invention relates to a system that includes a filter for
filtering a number of undesired channels from an input signal, and a tuner
for receiving the output of the filter and for communicating a number of
channels less than the number of channels at the output of the filter. At least
a portion of the filter and at least a portion of the tuner are formed on an
integrated circuit (Fig. 1; Spec. 3-10; Abstract).
Claim 1 is representative of the claims on appeal, and it reads as
follows:
1. A system, comprising:
a filter operable to receive an input signal comprising a first number
of television channels and further operable to communicate an intermediate
output signal comprising a second number of television channels less than
the first number of television channels, wherein at least a portion of the filter
is formed on an integrated circuit so as to dissipate a plurality of undesired
channels associated with the input signal in elements of the integrated circuit
such that at least a portion of the undesired signals are not reflected back to a
transmitter of the input signal; and
a tuner coupled to the filter and operable to receive the intermediate
output signal and further operable to communicate an output signal
comprising a third number of television channels less than the second
number of television channels, wherein at least a portion of the tuner is
formed on the integrated circuit.
Appeal 2010-014746
Application 10/694,074

3
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Birleson US 6,177,964 B1 Jan. 23, 2001
Fulga2 US 7,196,737 B1 Mar. 27, 2007
The Examiner rejected claims 1 to 8, 10, 11, 26, and 27 under 35
U.S.C. § 103(a) based upon the teachings of Birleson and Fulga.
According to the Examiner (Final Rej. 3), the preferred embodiment
in Figure 1 of Birleson describes a filter 101 on the front end of a tuner that
lets all television channels input the tuner, whereas the prior art in Figure 4
of Birleson describes a conventional filter 404 on the front end of a tuner
that filters television channels prior to input to the tuner. The Examiner
indicates (Final Rej. 3) that “by simply replacing the filter 101 of Birleson
with the conventional filter, would render obvious the pending claims.”
Appellant argues inter alia:
Birleson not only teaches away from using “a filter
operable to receive an input signal comprising a
first number of television channels and further
operable to communicate an intermediate output
signal comprising a second number of television
channels less than the first number of television
channels,” as recited, in part, in Claim 1, but also
explicitly rejects an input filter as a solution.
Birleson states that input filters are “a critical
drawback” that had to be eliminated. Birleson,
Col. 3, lines 19-21.
(App. Br. 15).

2 Filed on January 24, 2003.
Appeal 2010-014746
Application 10/694,074

4
According to Appellant (App. Br. 14,15), Fulga, like Birleson, also teaches
away from the claimed technique because he adopted the Birleson technique
of using an input filter that “passes all channels in the television band” (col.
2, ll. 64-67).
Based upon the foregoing, we have to determine whether the
Examiner erred by combining input filter teachings from the Figure 4 prior
art embodiment in Birleson with the Figure 1 preferred embodiment in
Birleson.
Birleson describes performance problems with the input filter in prior
art Figure 4, and states that “[t]his was a critical drawback of previous tuners
that had to be eliminated because it is a source of tremendous error and
distortion, as well as complexity” (col. 3, ll. 13 to 21).
In view of such an express teaching in Birleson that the Figure 4 prior
art input filter led to problems that had to be eliminated, we agree with
Appellant that Birleson clearly teaches away from modifying the preferred
embodiment in Figure 1 with the problematic input filter from the Figure 4
prior art embodiment. We also agree with Appellant that the teachings of
Fulga merely endorse Birleson’s preferred Figure 1 embodiment that uses a
filter that “passes all channels in the television band.”
In view of the clear teaching away by Birleson, the Examiner erred by
combining the input filter teachings from the Figure 4 prior art embodiment
in Birleson with the Figure 1 preferred embodiment in Birleson.
In summary, the obviousness rejection of claims 1 to 8, 10, 11, 26,
and 27 is reversed because we agree with Appellant’s teaching away
argument.
Appeal 2010-014746
Application 10/694,074

5
The decision of the Examiner is reversed.

REVERSED

KIS

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