Ex Parte Busking

Board of Patent Appeals and Interferences

Mar 31, 2009

10608597 (B.P.A.I. Mar. 31, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ERIK BUSKING
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Appeal 2008-5566
Application 10/608,597
Technology Center 2600
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Decided:1 April 1, 2009
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Before KENNETH W. HAIRSTON, JOHN A. JEFFERY,
and CARL W. WHITEHEAD, JR., Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-5566
Application 10/608,597

2
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-92 (see App. Br. 1). We have jurisdiction under 35
U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Appellant invented a communication system with variable filter
bandwidth.3
Claim 1, which further illustrates the invention, follows:

1. A communication system with variable filter bandwidth comprises:
a first mixer circuit disposed within a high frequency integrated
circuit having input ports configured to receive a first communication
signal and shift the frequency range of said communication signal to a
first frequency range;
a second mixer circuit disposed within said high frequency
integrated circuit having input ports configured to receive said first
communication signal and shift the frequency range of said first
communication signal to a second frequency range;
an amplifier coupled to said first and second mixer circuits for
providing said first communication signal to said first and second
mixer circuits;
an activation circuit coupled to the first and second mixer
circuits so as to provide an activation signal that selectively activates
any one of the mixer circuits;
first and second filter circuits each configured to receive a
signal from said first and second mixer circuits, when a corresponding
one of said mixer circuits is activated and to provide a signal to a low
frequency integrated circuit; and

2 The Examiner objects to claim 9 (Ans. 3)—a petitionable matter that is not
before us. See MPEP § 706.01 (“[T]he Board will not hear or decide issues
pertaining to objections and formal matters which are not properly before the
Board.”); see also MPEP § 1201 (“The Board will not ordinarily hear a
question that should be decided by the Director on petition . . . .”).
3 See generally App. Br. 2-3.
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wherein when one of said mixer circuits is activated, the
remaining mixer circuit does not generate an output voltage signal.

The Rejections
The Examiner relies upon the following prior art references as
evidence of unpatentability:

Lindqvist US 5,530,929 Jun. 25, 1996
Hornak US 5,678,222 Oct. 14, 1997

Claims 1-9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hornak and Lindqvist (Ans. 3-5).4
Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Briefs (Appeal Brief filed Dec. 13, 2006, and Reply Brief filed
May 17, 2007) and the Answer (mailed Mar. 21, 2007) for their respective
details. In this decision, we have considered only those arguments actually
made by Appellant. Arguments which Appellant could have made but did
not make in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellant argues that Hornak only discloses a single mixer circuit
having a single mixer 123, a local oscillator 127 and a phase shifter 133
(App. Br. 4, ll. 3-6). The three elements fail to disclose or even suggest the

4 Appellant states that “[c]laims 1, 6, and 7 are being appealed” (App. Br. 2),
but omits the remaining rejected claims in this statement. “If upon filing an
appeal brief, the applicant limits the claims to be considered on appeal, then
it is the practice of the Patent and Trademark Office to treat the claims not
pursued in the appeal brief as having been withdrawn from the appeal.” See
Ex parte Ghuman, 88 USPQ2d 1478, 1480 (BPAI 2008) (precedential).
Appellant, however, nonetheless presents arguments for claims 2-5, 8, and 9
(App. Br. 5) and in doing so, constructively appeals those claims that would
otherwise be withdrawn. Therefore, claims 2-5, 8, and 9 are before us.
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existence of a second mixer circuit (App. Br. 4, ll. 5-6). The Examiner
argues that Hornak discloses two mixer circuits (the 1st circuit (123, 127),
and the 2nd circuit (123, 127, 133)) (Ans. 6-8).

ISSUE
Has the Appellant shown that the Examiner erred in finding that the
combination of Hornak and Lindqvist discloses two mixer circuits?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.

Hornak
1. Figure 5A of Hornak

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Figure 5A discloses a time share mixer circuit having an input (101), mixer
(123), switching element (135), switching signal source (129), phase shifter
(133), output (103), and local oscillator (127).

2. Figure 12 of Hornak

Figure 12 discloses a time share mixer circuit having an input (101), mixer
(123), switching element (135), switching signal source (129), phase shifter
(133), output (103), local oscillator (127), duty cycle element (203), low
pass filters (205, 207), and duty cycle signal source (187).

Lindqvist
3. Figure 2 of Lindqvist
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Figure 2 discloses a homodyne receiver incorporating amplifiers (16, 18, and
18’).

PRINCIPLES OF LAW
During examination of a patent application, a claim is given its
broadest reasonable construction “in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted) (internal
quotation marks omitted). “[T]he words of a claim ‘are generally given their
ordinary and customary meaning.’” Phillips v. AWH Corp., 415 F.3d 1303,
1312 (Fed. Cir. 2005) (en banc) (internal citations omitted).
Office personnel must rely on Appellant’s disclosure to properly
determine the meaning of the terms used in the claims. Markman v.
Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc).
“[I]nterpreting what is meant by a word in a claim is not to be confused with
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adding an extraneous limitation appearing in the specification, which is
improper.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1348 (Fed. Cir.
2002) (citations omitted) (internal quotation marks omitted).
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966) (stating that 35 U.S.C. §
103 leads to three basic factual inquiries: the scope and content of the prior
art, the differences between the prior art and the claims at issue, and the
level of ordinary skill in the art). If the Examiner’s burden is met, the
burden then shifts to Appellant to overcome the prima facie case with
argument and/or evidence. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). Obviousness is then determined on the basis of the evidence as a
whole and the relative persuasiveness of the arguments. Id.

ANALYSIS
Claims 1 and 6
Appellant argues that Hornak discloses a single mixer 123 while claim
1 requires two mixers (App. Br. 3-4). Appellant further argues that
Hornak’s local oscillator 127 and phase shifter 133 do not disclose or
suggest a second mixer circuit (App. Br. 4). The Examiner argues that
Hornak discloses a first mixer circuit (123, 127) and a second mixer circuit
(123, 127, 133) (Ans. 6-7). The Appellant’s arguments are not
commensurate with the scope of the claims.
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We agree that Hornak only discloses one mixer (FF 1-2). However,
the claims specify mixer circuits (App. Br. 7-9; emphasis added), and
therefore the mixer alone is not a dispositive distinction between the claims
and the prior art. Although Hornak’s two circuits share a common mixer,
the existence of other components such as phase shifters and local oscillators
constitutes separate circuits (FF 1-2). Thus, we consider the Examiner’s
interpretation to be reasonable based upon the record before us.
Appellant further argues that Lindqvist does not address the
deficiencies of Hornak because both fail to disclose circuits that are
selectively activated (App. Br. 4). However, Examiner did not employ
Lindqvist to address the activation of the circuits (Ans. 3-5). The Examiner
relies upon Hornak to disclose a switch that selectively activates the two
circuits so, when one of the circuits is active, the other circuit does not
generate an output voltage signal (FF 1-2). We are not persuaded by
Appellant’s arguments and we find the Examiner’s interpretation to be
reasonable based upon the record before us.
Appellant argues that the claimed invention has two sets of input ports
and Hornak only discloses a single set of input ports (Reply Br. 3). “It is
well settled that the mere duplication of parts has no patentable significance
unless a new and unexpected result is produced.” See In re Harza, 274 F.2d
669, 671 (1960). We are therefore not persuaded by the Appellant’s
argument that two sets of inputs demonstrate nonobviousness.
Appellant argues that the combination of Hornak and Lindqvist fails
to disclose shifting the frequency range by each mixer circuit to a first and
second frequency range (Reply Br. 3-5).
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Claim 1 requires the input signal to be shifted to a first and second
frequency range (App. Br. 7). However, there is no quantitative comparison
between the first and second frequency ranges defined in claim 1. Therefore
a reasonable interpretation of claim 1 would encompass the first and second
frequency ranges to either be equivalent or dissimilar (Ans. 8). Further,
defining what constitutes equivalent or dissimilar frequency ranges is
problematic because there are no boundaries for the ranges set forth in the
claims. Therefore in the absence of both quantitative range comparisons and
definitive range boundaries in the claims, we find the Examiner’s
interpretation to be reasonable.
Appellant argues that the combination of Hornak and Lindqvist fails
to disclose plural mixing circuitry required in claim 6 for shifting the
frequency range of the communication signal (Reply Br. 4). The Examiner
argues that Hornak discloses a first mixer circuit (123, 127) and a second
mixer circuit (123, 127, 133) (Ans. 6-7). We are not persuaded by
Appellant’s argument for the reasons previously discussed in connection
with claim 1.

Claim 7
Appellant argues that claim 7 further requires the step of shifting the
frequency range via each mixer circuit to substantially the same frequency
range, and the combination of Hornak and Lindqvist does not disclose such a
step (App. Br. 5). The Examiner argues that Hornak’s output IF signals
would have the same frequency range based upon the data disclosed in
Hornak (Ans. 8). We are not persuaded by Appellant’s argument for the
reasons previously discussed in connection with claim 1.
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Claims 2-5, 8, and 9
Appellant does not separately argue with particularity the limitations
of claims 2-5, 8, and 9 apart from merely asserting that these claims recite
further features that are not taught or suggested by cited prior art (App.
Br. 5). Such conclusory assertions without supporting explanation or
analysis particularly pointing out errors in the Examiner’s reasoning fall well
short of persuasively rebutting the Examiner’s prima facie case of
obviousness. See Oetiker, 977 F.2d at 1445. We therefore sustain the
Examiner’s rejection of claims 2-5, 8, and 9 for the reasons indicated
previously.

CONCLUSION OF LAW
Appellant has not shown that the Examiner erred in finding that the
combination of Hornak and Lindqvist discloses two mixer circuits.

ORDER
We sustain the Examiner’s decision to reject claims 1-9 under 35
U.S.C. § 103(a).
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).

AFFIRMED

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