Ex Parte Boenke

Patent Trial and Appeal Board

Sep 14, 2016

12305724 (P.T.A.B. Sep. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/305,724 08/02/2010
24972 7590 09/16/2016
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
FIRST NAMED INVENTOR
Bjoern Boenke
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.
BOSC.P5679US/l 1602895 7209
EXAMINER
TAYLOR,JOSHUAD
ART UNIT PAPER NUMBER
2426
NOTIFICATION DATE DELIVERY MODE
09/16/2016 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):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BJOERN BOENKE
Appeal2015-005374
Application 12/305,724
Technology Center 2400
Before NATHAN A. ENGELS, JAMES W. DEJMEK, and
MATTHEW J. McNEILL, Administrative Patent Judges.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 11-22. No other claims are pending. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part and institute a new ground of rejection within the
provisions of 37 C.F.R. § 41.50(b) (2012).
Appeal2015-005374
Application 12/305,724
ILLUSTRATIVE CLAIM
Appellant's Specification states "[t]he present invention relates to a
method and to a device for detecting a transmission channel not occupied by
a useful signal in a multi-channel transmission system." Spec. 1. Claim 11,
reproduced below, is illustrative of the claimed subject matter:
11. A method for detecting an unoccupied transmission
channel of a multi-channel transmission system having a
plurality of transmission channels, useful signals transmitted by
a variable number of signal sources being received by a central
unit and distributed to a variable number of receiving modules
on corresponding transmission channels, a transmission channel
being individually selectable at each receiving module from
among a predefined number of transmission channels, the
method comprising:
providing, by the central unit, only currently unoccupied
transmission channels of the transmission system with an
identification;
checking at each receiving module as to which
transmission channels include the identification; and
skipping or blocking a calling up of those unoccupied
transmission channels on the basis of the identification.
THE REJECTIONS
Claims 18 and 20 stand rejected under 35 U.S.C. § 112, second
paragraph as being indefinite.
Claims 11-14, 18, 19, and 21 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable in view ofCang et al. (US 2003/0023984 Al; Jan. 30,
2003) and Galipeau et al. (US 6,249,913 Bl; June 19, 2001).
Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of Cang, Galipeau, and Woolgar (WO 2005/060252
Al; Dec. 17, 2003).
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Application 12/305,724
Claims 16 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of Cang, Galipeau, and Shishegar et al. (US
2006/0085812 Al; Apr. 20, 2006).
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of Cang and W oolgar.
Claim 22 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of Cang, Galipeau, and W oolgar.
ANALYSIS
Indefiniteness
Appellant contends the Examiner erred in interpreting the claim terms
"central unit" in claim 18 and "component" in claim 20 as means-plus-
function limitations that invoke 35 U.S.C. § 112, sixth paragraph and in
concluding that claims 18 and 20 are indefinite. App. Br. 3-5; Reply Br. 3-
5. While a claim limitation that does not include the word "means" is
presumed to not invoke § 112, sixth paragraph, the limitation will still
invoke § 112, sixth paragraph if "the claim term fails to 'recite sufficiently
definite structure' or else recites 'function without reciting sufficient
structure for performing that function."' Williamson v. Citrix Online, LLC,
792 F.3d 1339, 1349-50 (Fed. Cir. 2015) (en bane in relevant part) (quoting
Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)). The inquiry
should consider limitations as a whole, not merely select words in the
limitation. Id. at 1350 (describing "distributed learning control module" as
an "introductory phrase" and considering it as part of the entire passage in
which it appears); see also Apex Inc. v. Raritan Comp., Inc., 325 F.3d 1364,
1372 (Fed. Cir. 2003) (finding error in a district court's means-plus-function
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Application 12/305,724
analysis of the term "circuit" where the court failed to consider the limitation
as a whole, e.g., "a first interface circuit for receiving keyboard and cursor
control device signals from the workstation").
Here, the limitations at issue are "a central unit adapted to transmit an
identification on only those transmission channels ... that are not occupied
by a useful signal" and "a component adapted to assign an identification of a
transmission channel not occupied by a useful signal using a direct-voltage
signal," as recited in claims 18 and 20, respectively. Appellant argues the
Examiner has not overcome the presumption that arises because the claims
do not use the phrase "means for" (App. Br. 3-5; Reply Br. 2), but Appellant
acknowledges that the limitations recite functions and does not identify any
definite structures in the claim limitations themselves.
We disagree with Appellant that the presumption that arises where
limitations do not use the word "means" has not been overcome for the
limitations at issue. We conclude (as did the Examiner) that the limitations
at issue recite functions without reciting sufficiently definite structure for
performing the recited functions and are properly subject to 35 U.S.C. § 112,
sixth paragraph. See Williamson, 792 F.3d at 1351.
Having found that§ 112, sixth paragraph applies, we first identify the
claimed functions and then determine what structures, if any, disclosed in
Appellant's Specification correspond to the claimed functions. Id. at 13 51-
52. "Structure disclosed in the specification qualifies as 'corresponding
structure' if the intrinsic evidence clearly links or associates that structure to
the function recited in the claim." Id. at 1352. Further, "[e]ven if the
specification discloses corresponding structure, the disclosure must be of
'adequate' corresponding structure to achieve the claimed function." Id.
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Application 12/305,724
Here, claim 18 recites a "central unit" that performs the function of
"transmit[ing] an identification on only those transmission channels ... that
are not occupied by a useful signal." Appellant argues, in light of
Appellant's Specification, a person of ordinary skill in the art would
understand the structures associated with the claimed central unit include "a
unit that includes signal input and/or output interfaces that transmit[] and/or
receive[] signals, and an encoder that processes signals" and the "exemplary
circuit diagram of a central unit" depicted in Appellant's Figure 2. App.
Br. 4 (citing Spec. Fig. 2, p. 5, 11. 2-20, p. 6, 11. 24--32, p. 8, 11. 5-16); accord
Reply Br. 2.
Having reviewed the Specification, we agree with the Examiner that
Appellant's disclosures, including the cited signal interfaces, encoder, and
the exemplary circuit diagram of Figure 2, are not adequate corresponding
structure to achieve the function of "transmit[ing] an identification on only
those transmission channels ... that are not occupied by a useful signal."
Accordingly, we agree with the Examiner's conclusion that claim 18 is
indefinite. See Williamson, 792 F.3d at 1352; see also App. Br. 5 (arguing
regarding claim 20 that the claimed "component," which is part of a central
unit, is the structure corresponding to the function of assigning an
identification).
We also agree with the Examiner's conclusion that claim 20 is
indefinite. Appellant argues a person of ordinary skill would understand "'a
component' in the context of claim 20 to be the name for the structure that
performs the function of assigning an identification of a transmission
channel not occupied by a useful signal using a direct-voltage signal, even
when 'a component' covers a broad class of structures." App. Br. 5 (citing
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Appeal2015-005374
Application 12/305,724
Spec. pp. 6, 7); accord Reply Br. 2. We disagree. Appellant does not
identify any structure disclosed in the Specification, and we find none, that
adequately corresponds to the cited function.
Accordingly, we sustain the Examiner's rejections of claims 18 and
20 under 35 U.S.C. § 112, second paragraph.
Claim 19 depends from claim 18 but is not subject to an indefiniteness
rejection. Claim 19 recites "[ t ]he device as recited in claim 18, wherein the
device is installed in one of a bus, a train, an airplane or in an auditorium or
conference room." Accordingly, Claim 19 includes the "central unit"
addressed above, and does not recite sufficiently definite structures for
performing the claimed function associated with the claimed central unit.
Accordingly, we enter a new ground of rejection under 35 U.S.C. § 112,
second paragraph for the same reasons addressed above with respect to
claim 18.
Obviousness1
Appellant contends the Examiner erred in the obviousness rejections
of independent claims 11, 18, and 21 because the combination of Cang and
Galipeau does not teach or suggest "providing, by the central unit, only
currently unoccupied transmission channels of the transmission system with
an identification." App. Br. 6-8. Specifically, Appellant argues that
"[a]lthough Cang describes separating channels that contain programming
from those that do not, Cang does not disclose or suggest providing all
1 Even though claims 18 and 20 stand rejected as indefinite, we consider the
obviousness rejections of claims 18 and 20 in the interest of advancing
prosecution. Cf In re Steele, 305 F.2d 859, 862---63 (CCPA 1962).
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Application 12/305,724
unoccupied channels with an identifier" and "merely separating occupied
from unoccupied channels does not disclose providing an identifier only for
unoccupied channels." App. Br. 7. Further, Appellant argues "in Cang 'all
channels contain identifiers,' meaning that both occupied and unoccupied
transmission channels are provided with an identification. By contrast,
claim 11 requires providing only currently unoccupied transmission
channels with an identification .... " Reply Br. 3 (quoting Answer 8).
Cang discloses identifying occupied and unoccupied channels by
encoding and then processing the encoded portions of each channel to
determine which channels contain still video patterns. Cang i-fi-f 18, 23-29.
Cang teaches that because the still video pattern on unoccupied channels
almost never varies, the unoccupied channels will contain very little encoded
information in contrast to occupied channels that contain substantially more
encoded information. Cang i125. As stated by the Examiner, "[t]he fact that
the channels, after being encoded and processed, return different results
which allow the system of Cang to determine whether a channel is occupied
or unoccupied means that all channels contain identifiers." Ans. 7-8; but
see Spec. 6-7 (describing providing a direct-voltage signal to unoccupied
channels as a contrast to the alternating-voltage signals existing on occupied
channels; "One very simple possibility for an identification is to encode the
unused transmission channels ... by a direct voltage or a direct-voltage
signal.").
Because Cang applies the same encoding process to all channels, we
disagree with the Examiner's finding that Cang teaches providing an
identification to only unoccupied channels as required by claim 11.
Accordingly, we agree with Appellant that Cang does not teach the step of
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Application 12/305,724
providing only unoccupied channels with an identification as required by
claims 11 and 18 and do not sustain the Examiner's 35 U.S.C. § 103(a)
rejections of claims 11 and 18, as well as their respective dependent claims
12-17, 19, and 22.
We disagree with Appellant's arguments as they pertain to claim 21,
however. Claim 21 reads as follows:
21. A receiving module for detecting an unoccupied
transmission channel of a multichannel transmission system
having a plurality of transmission channels, wherein:
only unoccupied transmission channels are provided with
an identification, and
the receiving module is located in a region of a seat for a
person, the receiving module includes a decoder with whose aid
an unoccupied transmission channel provided with the
identification is detectable, the receiving module is blocked
from selecting the unoccupied transmission channel provided
with the identification.
Claim 21 is a system claim directed to a "receiving module" that includes a
decoder, and the patentability of a system claim "depends on the claimed
structure, not on the use or purpose of that structure." Catalina Marketing
Int'!. Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002).
While Appellant contends "[ e Jach of independent claims 11, 18, and
21 recites providing, by the central unit, only currently unoccupied
transmission channels of the transmission system with an identification"
(App. Br. 5), nothing in claim 21 affirmatively claims the central unit or the
step of providing an identification to only unoccupied transmission channels.
In the rejection, the Examiner finds, and Appellant does not substantively
contest, that Cang discloses a receiving module that includes a decoder as
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Application 12/305,724
claimed. See Final Act. 8-9. Accordingly, we agree with the Examiner's
findings and sustain the Examiner's rejection of claim 21.
Appellant additionally contends the Examiner erred in the rejection of
claim 20 because W oolgar describes adding an identifier to an occupied
transmission channel, not an unoccupied transmission channel. App. Br. 9.
Claim 20 recites the following:
20. A central unit for detecting an unoccupied transmission channel
of a multichannel transmission system having a plurality of transmission
channels, the central unit comprising:
a component adapted to assign an identification of a transmission
channel not occupied by a useful signal using a direct-voltage signal.
While Woolgar discloses a direct-current voltage pulse that can be
added to a signal as an identifier, we agree with Appellant that W oolgar
discloses adding such identifiers to occupied channels, not unoccupied
channels. The Examiner has not adequately explained how a person of
ordinary skill would have combined the teachings of Cang (which, as
addressed above, encodes all channels and evaluates encoding properties to
distinguish occupied channels from unoccupied channels) with the direct-
voltage signals taught by W oolgar. We, therefore, do not sustain the
Examiner's rejection of claim 20.
DECISION
For the above reasons, we affirm the Examiner's rejection of claims
18 and 20 under 35 U.S.C. § 112, second paragraph and the Examiner's
rejection of claim 21under35 U.S.C. § 103(a).
We reverse the Examiner's rejection of claims 11-20 and 22 under 35
U.S.C. § 103(a).
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Application 12/305,724
We enter a new ground of rejection for claim 19 under 35 U.S.C. §
112, second paragraph.
Section 41.50(b) provides that "[a] new ground of rejection ... shall
not be considered final for judicial review."
Section 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal 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 prosecution will be remanded to
the examiner ....
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same Record.
No time period for taking any subsequent action in connection with
this appeal may be extended. 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)
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