Ex Parte Gunnels

Patent Trial and Appeal Board

Jul 15, 2016

13250561 (P.T.A.B. Jul. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/250,561 09/30/2011
24628 7590 07118/2016
Husch Blackwell LLP
Husch Blackwell Sanders LLP Welsh & Katz
120 S RIVERSIDE PLAZA
22NDFLOOR
CHICAGO, IL 60606
FIRST NAMED INVENTOR
Robert Gunnels
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.
9467-113212 UTI 5901
EXAMINER
TRAN,HAIV
ART UNIT PAPER NUMBER
2845
MAILDATE DELIVERY MODE
07/18/2016 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 ROBERT GUNNELS
Appeal2015-000365
Application 13/250,561
Technology Center 2800
Before CHUNG K. PAK, KAREN M. HASTINGS, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of a decision of
the Primary Examiner to reject claims 6-13 and 15-21under35 U.S.C. §103
(a) based on at least2 the combined prior art of Schadler3 and Fortney. 4 We
have jurisdiction under 35 U.S.C. § 6.
1 According to Appellant, the Real Party in Interest is "PC-TEL, Inc." (App.
Br. 2).
2 The Examiner also applies Rupp (US 3,623,112, issued Nov. 23, 1971) to
claims 17-19 and 21 (Final Act. 10-12).
3 Schadler, US 7,339,541 B2, issued Mar. 4, 2008.
4 Fortney, US 4,965,869, issued Oct. 23, 1990.
Appeal2015-000365
Application 13/250,561
Appellant argues the claims as a group (App. Br.; Reply Br.
generally); thus, all claims stand or fall with independent claim 6 which is
representative of the invention, and reproduced here:
6. An apparatus comprising:
a waveguide defined by a plurality of waveguide walls;
a probe disposed within the waveguide;
a back plane connected to one end of each of the plurality
of waveguide walls to short the waveguide; and
a plurality of adjustable plates connected to open ends of
at least some of the plurality of waveguide walls at an angle e,
each of the plurality of adjustable plates having a length L,
wherein the probe excites a mode of the waveguide, and
wherein maintaining the angle e at a first constant angle
while adjusting the length L varies an E-plane half power
beamwidth of radiation emitted from the waveguide while
maintaining a substantially constant input impedance.
Upon consideration of the appeal record, including the Appellant's
position in this appeal as set forth on pages 8-10 of the Appeal Brief, we
affirm the Examiner's rejections based on the detailed findings stated by the
Examiner and for essentially the reasons stated by the Examiner (Final Act.
mailed Dec. 30, 2013 at 2-12; Examiner's Answer mailed July 24, 2014 at
3-5).
We add the following primarily for emphasis.
Appellant has not presented any cogent arguments sufficient to
address the Examiner's detailed position. Appellant asserts first, without
elaboration or specific criticism of the Examiner's detailed findings, that
none of Fortney's teachings are "tantamount to varying an E-plane half
power beamwidth of emitted radiation or maintain a constant input
impedance" and "[t]he claims are different." (App. Br. 9, first full
paragraph.) Cf In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e
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Application 13/250,561
hold that the Board reasonably interpreted Rule 41.37 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art. Because Lovin did not provide such arguments, the
Board did not err in refusing to separately address claims 2-15, 1 7-24, and
31-34.").
Next, Appellant asserts that the "claimed apparatus is more than a
rearrangement of the Schadler waveguide 1 O" (App. Br. 9). Appellant urges
further that even if the length of the Schadler box plates were adjustable or it
were obvious to make them adjustable, "Schadler still does not teach" that
maintaining an angle of the box plates constant while adjusting the length of
the box plates varies an E-plane half power bandwidth of radiation emitted
from the waveguide while maintaining a substantially constant input
impedance (App. Br. 10).
Appellant's arguments are not persuasive of error in the Examiner's
obviousness conclusion. Claim 6 is drawn to an apparatus. 5 Appellant's
Specification is devoid of any specific adjustment mechanisms (Spec.
generally). Rather, the Specification merely describes that the length Land
an angle of the waveguide plates "are capable of being adjusted to produce a
desired impedance" and bandwidth (Spec. iJ15; see also Spec iJiJ45, 46).
It is well established that when there is a reason to conclude that the
structure of the prior art is capable of performing the claimed function, the
burden shifts to the applicant to show that the claimed function patentably
5 While claim 20 recites a method, the steps de facto mirror the apparatus
claim 6 (e.g., having an adjustable plate length while maintaining a constant
angle (Claims App.). Appellant also does not separately argue claim 20
(Briefs generally).
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Appeal2015-000365
Application 13/250,561
distinguishes the claimed structure from the prior art structure. See, e.g., In
re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Notably, Appellant has
not specifically disputed the Examiner's finding that Fortney exemplifies the
obviousness of an adjustable plate that adjusts the dimension L of a
waveguide plate kept at a constant angle (e.g., Final Action 5). Thus, a
preponderance of the evidence supports the Examiner's determination that it
would have been obvious to make the appropriate walls/plates of the
Schadler waveguide adjustable so as to use walls of different lengths yet
maintain a relevant angle constant (e.g. Final Action 3, 4). Appellant has not
shown that the Schadler apparatus modified to have such adjustable length
walls/plates as exemplified in Fortney would not have been capable of the
claimed functions (Ans. 4, 5; App. Br; Reply Br. generally).
Appellant has thus not shown error in the Examiner's determination
that one of ordinary skill in the art, using no more than ordinary creativity,
would have predictably used adjustable walls L at a constant angle for the
angled walls of Schadler as exemplified in Fortney to take advantage of the
known advantages of extending the walls of an antennae waveguide
(generally, Ans.; Br.). It is well established that obviousness does not
require absolute predictability of success, rather, all that is required is a
reasonable expectation of success. In re Kubin, 561F.3d1351, 1360 (Fed.
Cir. 2009). As the Supreme Court has noted, "[t]he combination of familiar
elements [or steps] according to known methods is likely to be obvious
when it does no more than yield predictable results." KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 416 (2007). Appellant has not come forward
with any credible evidence that the Examiner erred in characterizing the
references or in concluding that the claimed combination of familiar
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Appeal2015-000365
Application 13/250,561
elements/steps for known purposes would have been obviousness, and
would have de facto been capable of the claimed functions.
Accordingly, we affirm the Examiner's§ 103 rejections on appeal.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 ).
AFFIRMED
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