Ex Parte Denney et al

Board of Patent Appeals and Interferences

Feb 12, 2010

11328174 (B.P.A.I. Feb. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte LISA V. DENNEY and DAVID R. DWORKIN
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Appeal 2009-008315
Application 11/328,174
Technology Center 2400
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Decided: February 12, 2010
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Before JOSEPH F. RUGGIERO, ELENI MANTIS MERCADER, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-7. Claims 8-14 have been canceled. An oral hearing was
conducted on this appeal on February 2, 2010. We have jurisdiction under
35 U.S.C. § 6(b).
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We affirm.
Rather than reiterate the arguments of Appellants and the Examiner,
reference is made to the Appeal Brief (filed April 8, 2008) and the Answer
(mailed May 14, 2008) for the respective details. Only those arguments
actually made by Appellants have been considered in this decision.
Arguments which Appellants could have made but chose not to make in the
Brief have not been considered and are deemed to be waived (see 37 C.F.R.
§ 41.37(c)(1)(vii)).

Appellants’ Invention
Appellants’ invention relates to the allocation of an initial
maintenance region (IMR) for an upstream channel in a communications
system. A first propagation delay from a headend of the communication
system to a remote device having the greatest delay is determined.
Similarly, a second propagation delay from the headend to the remote
having the least delay is determined. The IMR is then defined to be shorter
than the first propagation delay and as least as long as the difference
between the two propagation delays. (See generally Spec. ¶ [0015]).

Representative claim 1 is illustrative of the invention and reads as
follows:
1. A method of allocating an initial maintenance region for
a channel in a communications system including a plurality of remote
devices, the method comprising the steps of:
a. determining a propagation delay T2 from a headend to one of
the plurality of remote devices experiencing the greatest delay;
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b. determining a propagation delay T1 from the headend to one of
the plurality of remote devices experiencing the least delay; and
c. defining the size of the initial maintenance region based upon
the propagation delay T2 and the propagation delay T1.

The Examiner’s Rejection
The Examiner relies on the following prior art reference to show
unpatentability:

Khaunte US 6,956,865 B1 Oct. 18, 2005
(filed Jan. 7, 2000)

Claims 1-7, all of the appealed claims, stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Khaunte.

ISSUE
The pivotal issue before us is whether Appellants have demonstrated
that the Examiner erred in finding that Kaunte’s disclosure of determining
maximum and minimum propagation delay values between a system
headend and remote devices using physical distance values satisfies the
requirements of independent claim 1.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence:
1. Appellants’ disclosed invention relates to the determination of
propagation delays T1 and T2 between a system headend and remote devices
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experiencing, respectively, the least and the greatest propagation delays.
(Spec. ¶ [0035], ll. 1-8).
2. Appellants further disclose that one of the ways that
propagation delays can be determined is by measuring linear distance
between the headend and the remote devices. (Spec. ¶ [0035], ll. 8-9).
3. Kaunte discloses (col. 4, ll. 33-53 and col. 7, l. 65-col. 8, ll. 1-
15) the determination of maximum and minimum propagation delay values
between a system headend and remote devices and the calculation of look-
ahead offset values based on the determined delay values.
4. Kaunte further discloses (col. 9, ll. 51-54) that propagation
delay values experienced by remote devices are related to physical distance
between the system headend and the remote devices.

PRINCIPLES OF LAW
Anticipation
“It is axiomatic that anticipation of a claim under § 102 can be found
only if the prior art reference discloses every element of the claim….” See
In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986); Lindemann
Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1457
(Fed. Cir. 1984).
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992)). “Anticipation of a patent claim requires a finding that the claim
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at issue ‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO Inc.,
190 F.3d 1342, 1346 (Fed. Cir. 1999) (“In other words, if granting patent
protection on the disputed claim would allow the patentee to exclude the
public from practicing the prior art, then that claim is anticipated, regardless
of whether it also covers subject matter not in the prior art.”).

ANALYSIS
With respect to representative independent claim 1, Appellants’
arguments focus on the contention that, in contrast to the claimed invention,
the system disclosed by Kaunte determines minimum and maximum
propagation delay values based on the distance between the system headend
and a remote device.1 According to Appellants (App. Br. 9-12), the mere
determination of the physical distance between a headend and a remote
device does not provide a determination of the amount of propagation delay
experienced by the remote device as claimed.
We do not find Appellants’ arguments persuasive in convincing us of
any error in the Examiner’s stated position. As discussed by the Examiner
(Ans. 3-6), Kaunte first determines maximum and minimum propagation
delay values between the system headend and a plurality of remote devices
and then calculates a maintenance region offset value based on the
determined delay values as claimed (FF 3). Thus, we agree with the
Examiner that Kaunte discloses the determination of the propagation delays

1 Appellants argue claims 1-7 together as a group. See App. Br. 9.
Accordingly, we select claim 1 as representative. See 37 C.F.R. §
41.37(c)(1)(vii).

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from the system headend to “one of the plurality of remote devices”
experiencing, respectively, the greatest and the least delay as claimed.
Although Kaunte uses physical distance between a remote device
cable modem and the system headend to determine propagation delay values
(FF 4), the use of physical distance to determine propagation delays is not
precluded by the language of appealed claim 1. Conversely, to whatever
extent Appellants are contending that there may be factual situations in
which a physical distance measurement may not provide an indication of
which remote devices are experiencing the least and greatest propagation
delays (App.Br. 11-12), no such limiting language appears in claim 1. It is
also noteworthy that Appellants’ own disclosure provides for the
measurement of physical distance to determine propagation delay values
experienced by remote devices (FF 2).
In view of the above discussion, since Appellants have not
demonstrated the Examiner erred in finding Kaunte discloses all of the
claimed limitations, the Examiner’s 35 U.S.C. § 102(e) rejection of
representative independent claim 1, as well as dependent claims 2-7 not
separately argued by Appellants, is sustained.

CONCLUSION
Based on the findings of facts and analysis above, we conclude that
Appellants have not shown that the Examiner erred in rejecting claims 1-7
for anticipation under 35 U.S.C. § 102(e).

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DECISION
The Examiner’s decision rejecting claims 1-7 under 35 U.S.C.
§ 102(e) 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)(1)(iv) (2007).

AFFIRMED

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