Ex Parte Binder

Patent Trial and Appeal Board

Sep 21, 2016

12016324 (P.T.A.B. Sep. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/016,324 01/18/2008 Yehuda BINDER
113631 7590 09/23/2016
Winstead PC (Core Wireless)
P.O. Box 131851
Dallas, TX 75313-1851
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.
55807-P020C2 4076
EXAMINER
TRAN, THINHD
ART UNIT PAPER NUMBER
2466
NOTIFICATION DATE DELIVERY MODE
09/23/2016 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
following e-mail address( es):
coredocket@winstead.com
smithani@winstead.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YEHUDA BINDER
Appeal2015-001790
Application 12/016,324
Technology Center 2400
Before CARLA M. KRIVAK, MICHAEL J. STRAUSS, and
JON M. JURGOV AN, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-001790
Application 12/016,324
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
44---67, 69, 71, and 72. Claims 1--43, 68, 70, and 73-104 are canceled. We
have jurisdiction over the pending claims under 35 U.S.C. § 6(b ).
We affirm.
THE INVENTION
The claims are directed to an addressable outlet for use as part of local
area data communications network based on wiring installed in a building,
such as telephone wiring. Abstract. Claim 44, reproduced below, is
representative of the claimed subject matter:
44. A system in a building for coupling a data unit to the
Internet via a home network and a Wide Area Network (WAN),
said system comprising:
wiring comprising a telephone wire pair that forms a part
of the home network and that is at least in part in walls of the
building and is accessible at an outlet opening, said wiring
being connected for carrying digital data in a digital data
frequency band that is distinct from, and higher than, another
analog telephone frequency band;
a residential gateway housed in a first single enclosure in
the building and comprising a telephone connector for
connecting to said wiring telephone wire pair at a first
connection point, and a WAN port couplable to the Wide Area
Network (WAN) for connecting to the Internet, said gateway
being operative to pass the digital data between the WAN and
said wiring; and
a first adapter in the building connected to said wiring at
a second connection point distinct from said first connection
point and couplable to a first data unit, said first adapter being
operative for passing the digital data between said wiring and
2
Appeal2015-001790
Application 12/016,324
the first data unit, and said first adapter comprising an address
unit storing an address that is unique within the network,
wherein said residential gateway and said first adapter
are each addressable in a digital data network, said first adapter
being addressable based on the address stored in said address
unit.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Deng
Krinsky et al.
Vasquez et al.
Pitsoulakis
Kusayanagi
Schain et al.
Borelli et al.
Lavian et al.
US 6,243,394 Bl
US 2001/0040918 Al
US 2002/0161912 Al
US 2003/0035471 Al
US 2003/0123462 Al
US 2003/0161333 Al
US 2006/0020525 Al
US 7,039,724 Bl
REJECTIONS
June 5, 2001
Nov. 15, 2001
Oct. 31, 2002
Feb.20,2003
July 3, 2003
Aug. 28, 2003
Jan. 26, 2006
May 2, 2006
The Examiner made the following rejections:
Claims 44--48, 52-55, 59-62, 65-67, and 69 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Pitsoulakis, Deng, and
Borelli. Final Act. 10-17.
Claims 49 and 51 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pitsoulakis, Deng, Borelli, and AAP A. Id. at 17-19.
Claim 50 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pitsoulakis, Deng, Borelli, AAPA, and Vasquez. Id. at
19.
3
Appeal2015-001790
Application 12/016,324
Claims 56-58 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pitsoulakis, Deng, Borelli, and Schain. Id. at 20-21.
Claim 63 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pitsoulakis, Deng, Borelli, and Krinsky. Id. at 21-22.
Claim 64 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pitsoulakis, Deng, Borelli, and Lavian. Id. at 22-23.
Claims 71 and 72 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pitsoulakis, Deng, Borelli, and Kusayanagi. Id. at 23-24.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments the Examiner has erred. We disagree with Appellant's
conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken and (2) the
reasons set forth by the Examiner in the Examiner's Answer in response to
Appellant's Appeal Brief and concur with the conclusions reached by the
Examiner. We highlight the following for emphasis. We consider
Appellant's arguments seriatim, as they are presented in the Appeal Brief,
pages 4--12 and Reply Brief, pages 1--6.
Independent Claim 44
Appellant contends Borelli does not disclose the first adapter of claim
44. App. Br. 5. In particular, Appellant argues:
Borelli does not disclose "a first adapter in the building
connected to said wiring at a second connection point distinct
from said first connection point ... said first adapter
comprising an address unit storing an address that is unique
4
Appeal2015-001790
Application 12/016,324
within the network, wherein said residential gateway and said
first adapter are each addressable in a digital data network,
said first adapter being addressable based on the address
stored in said address unit."
Id. Appellant argues Borelli "merely lists a variety of communication
devices that may have an Ethernet network address" but "none of the
devices listed in Borelli is described as including an adapter connected to a
telephone wire pair as claimed in claim 44." App. Br. 6. The Examiner
responds by finding Pitsoulakis teaches the disputed adapter, explaining
Pitsoulakis' Ethernet ports provide connectivity to other devices and,
therefore, would be considered equivalent to and disclose the disputed
adapters. Ans. 4. Furthermore, because Pitsoulakis' device includes DSL
port 308 connected to a DSL cable, it further teaches or suggests the
disputed connection to a telephone wire pair. Id.
Appellant's contention is unresponsive to the Examiner's finding that
Pitsoulakis; not Borelli as argued; teaches or suggests the disputed first
adapter and is, therefore, unpersuasive of error. Although Appellant quotes
portions of claim 44 that are found to be taught or suggested by the
combination of Pitsoulakis and Borelli (i.e., the limitations of the "first
adapter" clause taught by Pitsoulakis and the address unit of the "wherein"
clause taught by Borelli), the thrust of Appellant's argument is directed to
the limitations found to be taught by Pitsoulakis, not the argued Borelli
reference. Thus, Appellant fails to address the Examiner's findings in
connection with Pitsoulakis. Furthermore, Appellant's contention is not
persuasive because it is based on the teachings of Borelli in isolation and
fails to specifically rebut the Examiner's ultimate legal conclusion of
obviousness based on the combination of Pitsoulakis and Borelli. One
5
Appeal2015-001790
Application 12/016,324
cannot show nonobviousness by attacking references individually where the
rejections are based on combinations of references. In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellant next contends "Deng does not disclose 'a residential
gateway' or 'a first adapter' with both being located in 'the building."' App.
Br. 6. Appellant argues Deng's ADSL access device 14 is located in central
office 10 and, therefore, is not a residential gateway. Id. at 7. The Examiner
responds by finding Pitsoulakis teaches the disputed residential gateway,
reasoning it is housed in a single enclosure in a building because the
disclosed Ethernet ports are part of Pitsoulakis' access device. Ans. 5. The
Examiner further finds Deng's ADSL teaches the disputed first adapter
(Final Act. 11) (as well as the disputed residential gateway (Ans. 5)), again
reasoning the access device's Ethernet ports are in the same building as the
device thereby teaching or suggesting the residential gateway and first
adapter are in the building with the residential gateways housed in a single
enclosure (id.)
Appellant's contention that Deng does not teach the disputed first
adapter fails to address the Examiner's finding that the limitation is taught or
suggested by Pitsoulakis. Appellant's argument that ADSL access device 14
is located in central office 10 is unpersuasive because (i) it fails to explain
why claim 44 requires the entirety of the ADSL access device be located in
or at a residence, (ii) fails to address the Examiner's reasoning explaining
why Deng's Ethernet ports teach or suggest locating the residential gateway
and first adapter in or at the residence, and (iii) ignores the admitted fact that
"Deng discloses an ADSL system having an ADSL Termination Unit-
Remote (ATU-R) at a customer location" (App. Br. 7 (emphasis added)).
6
Appeal2015-001790
Application 12/016,324
Furthermore, we note in passing, Appellant fails to provide evidence or
argument that the locations of the disputed gateway and adapter are anything
other than routine design expedients. In particular, the locations of these
elements in the building and/or in a single enclosure are but two of few
possible locations and are not shown to result in any different function or
provide any unexpected result. See KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398, 402---03 (2007) ("When there is a design need or market pressure to
solve a problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill in the art has good reason to pursue the
known options within his or her technical grasp. If this leads to the
anticipated success, it is likely the product not of innovation but of ordinary
skill and common sense.") Accordingly, Appellant's contention is
unpersuasive of Examiner error.
Appellant further contends "the cited combination [of references] does
not provide any hint or suggestion for a system in which a residential
gateway and an adapter are connected to the wiring at two separate
connection points to communicate over the wiring [as required by claim
44]." App. Br. 8. The Examiner responds by finding:
The [person of] ordinary skill in the art would connect the
ADSL in DENG to the access device in PITSOULAKIS, [to]
which the Ethernet ports connected. The connection from
ADSL to the access device is the first connection and the
connection of the Ethernet ports is the second connection.
Therefore, the combination would disclose "a residential
gateway and an adapter are connected to the wiring at the two
separated connection points to communication over the wiring."
Ans. 6.
7
Appeal2015-001790
Application 12/016,324
Appellant's naked contention the prior art fails to teach or suggest the
disputed claim language does not address the Examiner's findings and is
insufficient to persuade us of error. See 37 C.F.R. § 41.37(c)(l)(iv) ("A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim."); In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board
reasonably interpreted Rule 41.3 7 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.")
Instead, we agree with the Examiner in finding the combination of
Pitsoulakis and Deng teaches or, at a minimum, suggests the first and second
distinct connection points.
For the reasons discussed supra, Appellant's contentions in
connection with the rejection of independent claim 44 are unpersuasive of
Examiner error. Accordingly, we sustain the rejection of independent claim
44 under 35 U.S.C. § 103(a) over Pitsoulakis, Deng, and Borelli together
with the rejections of dependent claims 45, 46, 53----67, 71, and 72, which are
not argued separately.
Dependent Claims 47, 49, 52, and 69
Appellant contends the prior art fails to teach or suggest the
limitations of dependent claims 47, 49, 52, and 69. App. Br. 9-11. The
Examiner addresses Appellant's contention at pages 7-9 of the Answer. We
have reviewed Appellant's arguments and find them unpersuasive of error.
Although Appellant separately addresses these dependent claims under
individual headings, insufficient substantive argument is presented rebutting
8
Appeal2015-001790
Application 12/016,324
the Examiner's findings other than the naked contentions that the prior art
fails to teach or suggested the respective limitations. See 37 C.F.R.
§ 41.37(c)(l)(iv); Lovin, 652 F.3d at 1357. Instead, in the absence of
sufficient rebuttal, we agree with and adopt the Examiner's findings as set
forth in the Final Rejection and Answer. Final Act. 14, 17-18; Ans. 7-9.
Accordingly, we sustain the rejection of dependent claims 47, 49, 52, and 69
under 35 U.S.C. § 103(a) together with the rejections of dependent claims
48, 50, and 51, which are not argued separately.
DECISION
The Examiner's decision to reject claims 44---67, 69, 71, and 72 is
affirmed.
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
9