Ex Parte Busson et al

Patent Trial and Appeal Board

Jan 29, 2013

10150524 (P.T.A.B. Jan. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/150,524 05/17/2002 Pierre Busson 01GR05154387 1079
7590 01/29/2013
CHRISTOPHER F. REGAN
ALLEN, DYER, DOPPELT, MILBRATH & GILCHRIST P.A.
1401 CITRUS CENTER, 255 SOUTH ORANGE AVENUE
P.O. BOX 3791
ORLANDO, FL 32802-3791
EXAMINER
HU, RUI MENG
ART UNIT PAPER NUMBER
2649
MAIL DATE DELIVERY MODE
01/29/2013 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 PIERRE BUSSON, BERNARD LOUIS-GAVET,
and PIERRE-OLIVIER JOUFFRE
____________

Appeal 2010-008430
Application 10/150,5241
Technology Center 2600
____________

Before ELENI MANTIS MERCADER, ANDREW CALDWELL, and
JOHN A. EVANS, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to
apparatus to decode digital satellite broadcast signals. The Examiner has
rejected the claims as anticipated and obvious. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed Nov. 25, 2009), the Answer (mailed Feb.

1 The real party in interest is STMICROELECTRONICS S.A.
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17, 2010), and the Reply Brief (filed Apr. 19, 2010). We have considered in
this decision only those arguments Appellants actually raised in the Briefs.
Any other arguments which Appellants could have made but chose not to
make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv).

STATEMENT OF THE CASE
The claims relate to an electronic component, fully integrated onto a
monolithic substrate, including a tuner, a demodulator, and a channel
decoder. The overall filtering is carried out in two parts, a baseband analog
filtering and a digital Nyquist filtering removing the information of adjacent
channels. See Abstract.
Claims 13-24 and 40-45 are on appeal. Claims 13 and 40 are
independent. An understanding of the invention can be derived from a
reading of exemplary claim 13, which is reproduced below:
13. An electronic component comprising:
a monolithic substrate;
a tuning module in said monolithic substrate, having zero intermediate
frequency, and comprising
a signal input for receiving analog signals containing digital
information coded by digital modulation and comprising a plurality of
channels extending over a predetermined frequency span,
an analog block comprising a frequency transposition stage and
an analog filtering stage following said frequency transposition stage,
said analog block for selecting a channel from among the plurality of
channels and outputting two phase quadrature baseband analog signals
containing information of the selected channel and information of at
least one channel adjacent the selected channel, and
an analog/digital conversion stage connected to an output of
said analog block; and
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a channel decoding digital module in said monolithic substrate and
connected to said analog/digital conversion stage to receive an output
thereof, said channel decoding digital module comprising
a demodulation stage for demodulating the output of said
analog/digital conversion stage,
a digital filtering stage for removing the information of the at
least one adjacent channel, and
an error correction stage for delivering a stream of data packets
corresponding to the information of the selected channel.
The claims are rejected as follows:2
1. Claims 40-45 are rejected under 35 U.S.C. § 102(b) as anticipated by
Ben-Efraim (US 6,091,931, issued July 18, 2000, filed June 18,
1997).3 Ans. 3-5.
2. Claims 13-19 are rejected under 35 U.S.C. § 103(a) as obvious over
Ben-Efraim and Stehlik (US 5,517,529, May 14, 1996). Ans. 6-9.
3. Claims 20-24 are rejected under 35 U.S.C. § 103(a) as obvious over
Ben-Efraim, Stehlik, and Nakanishi (US 5,722,062, Feb. 24, 1998).
Ans. 10-12.

2 Based on Appellants’ arguments in the Appeal Brief, we will decide the
appeal on the basis of claims as set forth below. See 37 C.F.R. §
41.37(c)(1)(vii).
3 The present invention benefits from the priority of FR 0106592, filed May
18, 2001. Therefore, Ben-Efraim, US 6,091,931, issued July 18, 2000, is not
prior art under 35 U.S.C. § 102(b). Rather it is prior art under 35 U.S.C. §
102(e) in view of its filing date, June 18, 1997. Appellants did not raise the
issue. Accordingly, we address the substance of the anticipation rejection.
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THE ANTICIPATION REJECTION
CONTENTIONS AND ISSUE
The Examiner has rejected claims 40-45 under 35 U.S.C. § 102(b) as
anticipated. The Examiner finds that Ben-Efraim discloses each limitation
recited in claims 40-45. Ans. 3-5.
Appellants argue claims 40-45 as a group. Appellants contend that
Ben-Efraim lacks any teaching of: “delivering two phase quadrature
baseband analog signals in response to the selection of the selected channel.”
App. Br. 10. And in particular, Appellants contend that Ben-Efraim fails to
teach that: “the analog signals contain[] digital information of the selected
channel and of the at least one adjacent channel before conversion,
demodulation and filtering, as claimed.” Id.
The Examiner’s Answer finds that: “Ben- Efraim et al. disclose in
figure 4 and column 4 lines 61-63, the tuner having a precision-configurable
low-pass filter, thereby providing accurate adjacent channel removal.” Ans.
13. Moreover, then the Examiner further finds: “clearly the adjacent channel
signals are present after frequency conversion 420, while the frequency
conversion 420 is tuned to a selected channel.” Id.
Appellants’ Reply contends that: “An advantage of the present
invention is that the analog signals purposely include the selected channel
and at least one adjacent channel. This may advantageously be provided by a
soft analog filter, for example, which in turn allows ready integration thereof
on a monolithic substrate.” Reply Br. 2. Appellants further contend that Ben-
Efraim operates differently:
The I/Q down converter 420 does not purposely deliver
analog signals to include the selected channel and at least one
adjacent channel as in the claimed invention. Instead, the I/Q
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down converter 420 is designed to deliver the selected channel,
and any information on the adjacent channels is inadvertent.
The function of the lowpass filter 422 is to remove any
inadvertent information on the adjacent channels.
Reply Br. 3-4.
The issue before us is whether Ben-Efraim discloses delivering analog
signals to include the selected channel and at least one adjacent channel as
claimed.
ANALYSIS
Appellants are persuasive that there is no teaching that “the desired
baseband signal components” are admixed with adjacent channel
information. App. Br. 12 (citing Ben-Efraim col. 8, ll. 59-61). The Examiner
finds that Ben-Efraim discloses that “the improved lowpass filter 422
provides more accurate of lowpass filtering and ‘a greater noise immunity’,
but not ‘a complete noise immunity’.” Ans. 14. From which, it appears that
the Examiner finds that the output of lowpass filter 422 comprises the
selected channel signal and inherently contains information from at least one
adjacent channel:
the embodiment in figure 4 of Ben-Efraim et al. discloses the
argued limitation, lowpass filter 422 outputs two phase
quadrature baseband analog signals in response to the selection
of the selected channel, the analog signals containing digital
information of the selected channel and of the at least one
adjacent channel.
Ans. 15.
However, Ben-Efraim explicitly states that the “lowpass filter 422
removes the undesirable signals, leaving only the desired baseband signal
components. Ben-Efraim col. 6, ll. 55-57. We, therefore, agree with
Appellants that there is no teaching that “the desired baseband signal
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components” are admixed with adjacent channel information. App. Br. 12.
In view thereof, we decline to sustain the rejection of claims 40-45.

THE OBVIOUSNESS REJECTIONS
CLAIMS 13-19
CONTENTIONS AND ISSUE
The Examiner has rejected claims 13-19 under 35 U.S.C. § 103(a) as
obvious over Ben-Efraim and Stehlik. Ans. 6-9. The Examiner finds that
Ben-Efraim teaches the claimed invention, as discussed above, but finds that
Ben-Efraim fails to disclose that the receiver is formed on a monolithic
substrate. Ans. 7. However, the Examiner finds that in the same field of
endeavor, Stehlik discloses a satellite digital signal receiver comprising an
analog circuit and a digital circuit formed on a monolithic substrate. Id.
Appellants argue claims 13-19 as a group and re-allege that Ben-
Efraim does not disclose that the desired baseband signal components are
admixed with adjacent channel information, as discussed above. Appellants
further contend that Stehlik does not provide the required disclosure. App.
Br. 12.
The issue before us is whether Ben-Efraim discloses delivering analog
signals to include the selected channel and at least one adjacent channel as
claimed.
ANALYSIS
As discussed above, we agree with Appellants that there is no
teaching that “the desired baseband signal components” are admixed with
adjacent channel information. App. Br. 12. Moreover, the Examiner has not
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found Stehlik to so teach. In view thereof, we decline to sustain the rejection
of claims 13-19.
CLAIMS 20-24
CONTENTIONS AND ISSUE
The Examiner has rejected claims 20-24 under 35 U.S.C. § 103(a) as
obvious over Ben-Efraim, Stehlik, and Nakanishi. Ans. 10-12. The
Examiner finds Ben-Efraim and Stehlik fail to teach a digital block of a
tuning module comprising at least first means of calculation to calculate an
overall power value based on an overall power of a signal received by said
tuning module. The Examiner cites Nakanishi for this teaching.
Appellants argue claims 20-24 as a group and re-allege that Ben-
Efraim does not disclose that the desired baseband signal components are
admixed with adjacent channel information, as discussed above. Appellants
further contend that Nakanishi does not provide the required disclosure.
App. Br. 14-15.
The issue before us is whether Ben-Efraim discloses delivering analog
signals to include the selected channel and at least one adjacent channel as
claimed.
ANALYSIS
As discussed above, we agree with Appellants that there is no
teaching that “the desired baseband signal components” are admixed with
adjacent channel information. App. Br. 12. Moreover, the Examiner has not
found Nakanishi to so teach. In view thereof, we decline to sustain the
rejection of claims 20-24.

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SUMMARY
We reverse the rejection of claims 40-45 under 35 U.S.C. § 102.
We reverse the rejection of claims 13-24 under 35 U.S.C. § 103.

REVERSED

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