Ex Parte Chen

Board of Patent Appeals and Interferences

Jul 10, 2009

10165710 (B.P.A.I. Jul. 10, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ERNEST C. CHEN
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Appeal 2008-005861
Application 10/165,710
Technology Center 2600
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Decided:1 July 13, 2009
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Before KENNETH W. HAIRSTON, ROBERT E. NAPPI, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

BAUMEISTER, 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 2008-005861
Application 10/165,710

2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s final
rejection of claims 1-36. We have jurisdiction under 35 U.S.C. § 6(b)
(2002). We reverse.

A. Appellant’s invention
Appellant’s invention relates to satellite communication systems that
employ a traveling wave tube amplifier (TWTA) within the communication
system’s transponder. More specifically, the invention relates to methods
and systems of measuring the TWTA’s non-linear performance
characteristics while the TWTA operates. Spec. ¶¶ [0003]-[0006]; Abstract.

B. The claims
Independent claim 1 is illustrative.2 It reads as follows:
1. A method of measuring a non-linear transmission
performance characteristic, comprising the steps of:
receiving a signal having a symbol stream;
extracting the symbol stream from the received signal;
generating an ideal signal from the extracted symbol
stream;
generating data points of a measured property of the
generated ideal signal;

2 Appellant argues claims 1, 2, 4-13, 15-20, 22-31, and 33-36 together as a
group (App. Br. 4-7); claims 3 and 21 separately as a second group (App.
Br. 8-9); and claims 14 and 32 separately as a third group (App. Br. 9-10).
We select independent claim 1 as representative of the first group. See 37
C.F.R. § 41.37(c)(1)(vii).
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generating data points of the measured property of the
received signal corresponding to the data points of the
measured property of the generated ideal signal;
estimating the non-linear performance characteristic from
a difference between the data points of the measured property
of the generated ideal signal and the generated data points of
the measured property of the received signal.

C. The references and rejections
The Examiner relies on the following prior art references to show
unpatentability:
Maruyama US 6,144,708 Nov. 7, 2000
Lindquist US 2002/0071506 A1 June 13, 2002
(filed Mar. 9, 1995)
Estinto US 6,411,797 B1 June 25, 2002
(filed Sept. 20, 1996)
Yakhnich US 6,731,700 B1 May 4, 2004
(filed Jan. 4, 2001)
Claims 1, 2, 4-13, 15-20, 22-31, and 33-36 stand rejected under 35
U.S.C. § 103(a) as obvious over Yakhnich in view of Estinto.3
Claims 3 and 21 stand rejected under 35 U.S.C. § 103(a) as obvious
over Yakhnich in view of Estinto and Maruyama.
Claims 14 and 32 stand rejected under 35 U.S.C. § 103(a) as obvious
over Yakhnich in view of Estinto and Lindquist.
Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Briefs and the Answer for their respective details.4 In this

3 We understand the Examiner’s assertion that “[c]laims . . . 22-32, and 33-
36 are rejected [over Yakhnich and Estinto]” (Ans. 3 (emphasis added)) to
intend to recite “claims 22-31, and 33-36.”
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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).

ISSUE
Appellant asserts that none of the references discloses generating an
ideal signal from an extracted symbol stream, as required by the claims.
App. Br. 6-7; Reply Br. 4-6.5
The Examiner asserts (1) the claim term “signal” may be interpreted
broadly to mean “[t]he physical representation of data,” and (2) Appellant
“provides very little information as [to] how the ideal signal is generated.”
Ans. 10.
The issue before us, then, is whether Appellant has shown that the
Examiner erred in finding that the cited prior art collectively teaches or
suggests the claim 1 limitation, “generating an ideal signal from the
extracted symbol stream.”

FINDINGS OF FACT
The record supports the following Findings of Fact (FF) by a
preponderance of the evidence:
1. Appellant’s Specification states:

4 We refer to (1) the Appeal Brief filed May 22, 2006; (2) the Examiner’s
Answer mailed Aug. 9, 2006; and (3) the Reply Brief filed Oct. 6, 2006,
throughout this opinion.
5 Appellant also makes further arguments (See App. Br. 4-9; Reply Br. 6-7),
but resolution of this issue is dispositive.
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“The receiver . . . generates an ideal signal, i.e. a signal without
the effects of the TWTA and noise.” Spec. ¶ [0030].
“The demodulated signal is used in a signal generator 204 to
generate an ideal signal, i.e. one representing the pre-transmitted
signal. In the case of a digital signal, the signal will be further
decoded to obtain the signal symbols which will be used to generate
the ideal signal.” Spec. ¶ [0032].
“FIG. 2A depicts an embodiment where the performance
characteristic is estimated from a difference between the ideal signal
(noise-free and without TWTA non-linearity) and the received signal
after demodulation.” Spec. ¶ [0033].
2. Yakhnich discloses an inner decoder section 24 of receiver 13.
Yakhnich, col. 2, ll. 23-26; Fig. 1. The function of the inner decoder 24 is to
“detect the symbols that were originally transmitted by the modulator.”
Yakhnich, col. 2, ll. 33-35.
3. Estinto depicts in Figure 4 a reference signal received directly from
the modulated data stream. Estinto, Fig. 4.

PRINCIPLES OF LAW
To establish prima facie obviousness of a claimed invention, all the
claim limitations must be taught or suggest by the prior art. See In re Royka,
490 F.2d 981, 985 (CCPA 1974).
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
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or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.” (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998))).

ANALYSIS
“Before considering the rejections . . . , we must first [determine the
scope of the] claims . . . .” In re Geerdes, 491 F.2d 1260, 1262 (CCPA
1974). We therefore first interpret the meaning of the claim term “ideal
signal.” Appellant’s Specification defines the term “ideal signal” to be a
signal without the effects of the TWTA non-linearity and noise. FF 1.
Turning to the rejection, the Examiner asserts that Yakhnich’s Figure
1 embodiment possesses a “means 24,” which generates an ideal signal.
Ans. 3. Yakhnich’s element 24 is an inner decoder section of receiver 13.
FF 2. The function of the inner decoder 24 is to “detect the symbols that
were originally transmitted by the modulator.” FF 2. Restated, the inner
decoder 24 merely generates the signal symbols. We find no basis in the
record to conclude that the inner decoder further produces the ideal signals
that are generated from the signal symbols.
The Examiner also interprets the claimed “ideal signal” as reading on
Estinto’s reference signal. Ans. 4 (citing Estinto, Fig. 4). However,
Estinto’s Figure 4 depicts that the reference signal is received directly from
the modulated data stream. FF 3. The Examiner has not explained any basis
for concluding that Estinto’s reference signal is noise free or without the
TWTA non-linearity effects. Furthermore, even assuming solely for the
sake of argument that Estinto’s reference signal could be deemed to be an
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ideal signal, the Examiner does not allege, and we find no basis to conclude,
that Estinto generates the reference signal from an extracted symbol stream.
For the foregoing reasons, Appellant has persuaded us of error in the
Examiner’s obviousness rejection of representative claim 1. Accordingly,
we will reverse the Examiner’s rejection of independent claims 1 and 19 and
dependent claims 2, 4-13, 15-18, 20, 22-31, and 33-36.
With respect to the rejection of dependent claims 3 and 21, the
Examiner further asserts that “Maruyama teaches estimating performance
characteristic by obtaining the difference between the ideal signal and the
received signal before demodulation (Fig. 1, means 14; Col. 4, [lines] 52-
67).” Ans. 6. However, the Examiner has not set forth any factual basis or
rationale for concluding that Maruyama generates from an extracted symbol
stream, a signal that is free of noise or the non-linearity effects of a TWTA.
With respect to the remaining rejection of dependent claims 14 and 32,
Lindquist does not cure the deficiency of the obviousness rejection
explained above. Accordingly, for the reasons discussed above, we also
reverse the rejections of claims 3, 14, 21, and 32.

CONCLUSION OF LAW
Appellant has shown that the Examiner erred in finding that the cited
prior art collectively teaches or suggests the claim 1 limitation, “generating
an ideal signal from the extracted symbol stream.” Appellant has therefore
shown that the Examiner erred in rejecting claims 1-36 under § 103.

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DECISION
We do not sustain the Examiner’s rejections with respect to all
pending claims on appeal. Therefore, the Examiner’s rejection of claims 1-
36 is reversed.

REVERSED

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