Ex Parte Henry et al

Patent Trial and Appeal Board

Aug 8, 2018

14695092 (P.T.A.B. Aug. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/695,092 04/24/2015
92384 7590 08/08/2018
AT&T Legal Department - G&G
Attention: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
FIRST NAMED INVENTOR
Paul Shala Henry
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.
2015-0197_7785-1171 2896
EXAMINER
FOTAKIS, ARISTOCRATIS
ART UNIT PAPER NUMBER
2633
MAIL DATE DELIVERY MODE
08/08/2018 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 PAUL SHALA HENRY, ROBERT BENNETT,
IRWIN GERSZBERG, FARHAD BARZEGAR,
DONALD J. BARNICKEL, and
THOMAS M. WILLIS, III
(Applicant: AT&T Intellectual Property I, L.P.)
Appeal2018-001891
Application 14/695,092 1
Technology Center 2600
Before CAROLYN D. THOMAS, SHARON PENICK, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
1 References herein to "Appellant" are to the applicant, AT&T Intellectual
Property I, L.P ., also identified as the real party in interest. App. Br. 1.
Appeal 2018-001891
Application 14/695,092
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-3, 6, 8-11, 14, and 16-24. The Examiner has
withdrawn the rejections of claims 7 and 15. Claims 4, 5, 12, and 13 are
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
CLAIMED SUBJECT MATTER
The claims are directed to a passive electrical coupling device and
methods for use therewith. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A transmission device comprising:
a transmitter that generates a signal; and
at least one passive electrical circuit element, coupled to
the transmitter, that generates an electromagnetic field in
response to the signal, wherein the at least one passive electrical
circuit element includes a first capacitor and a second capacitor;
wherein the transmitter and the at least one passive
electrical circuit element are configured such that a portion of the
electromagnetic field is bound by an outer surface of a wire to
propagate as a guided electromagnetic wave longitudinally along
the wire, wherein the first capacitor is formed by a first plate
placed in proximity to the wire and wherein the second capacitor
is formed by a second plate placed in proximity to the wire, and
wherein the electromagnetic field generated by the first
capacitor and the second capacitor generates the guided
electromagnetic wave to at least partially surround the outer
surface of the wire.
App. Br. 14 (Claims Appendix).
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Application 14/695,092
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Washiro
Miller
Turner
US 2008/0064331 Al Mar. 13, 2008
US 2011/0136432 Al Jun. 9, 2011
US 2013/0064311 Al Mar. 14, 2013
REJECTIONS
Claims 1, 2, 6, 8-11, 14 and 16-18 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Turner et al. (US 2013/0064311 Al,
published Mar. 14, 2013), Washiro (US 2008/0064331 Al, published Mar.
13, 2008), and Shin et al. ("10 Gbps Millimeter-Wave OFDM Experimental
System with Iterative Phase Noise Compensation", Tokyo Institute of
Technology, 2013, IEEE). Final Act. 2-7.
Claim 3 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Turner, Washiro, Shin, and Miller et al. (US 2011/0136432 Al,
published June 9, 2011). Final Act. 7-8.
Claims 19-24 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Turner, Washiro, Shin, and Lodi (EP 1296146 Al).
Final Act. 9-12.
ISSUES
First Issue: Has the Examiner erred in finding the cited references
teach or suggest "wherein the first capacitor is formed by a first plate placed
in proximity to the wire, and wherein the second capacitor is formed by a
second plate in proximity to the wire," as recited in claim 1?
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Second Issue: Has the Examiner erred in combining Turner and Lodi
to reject independent claim 19?
ANALYSIS
First Issue
In rejecting independent claim 1, the Examiner relies on Turner and
Washiro. Relevant here, the Examiner finds the claimed "first capacitor"
and "second capacitor" taught by Turner. In particular, the Examiner finds
"Turner teaches of a first capacitor ( conductor # 119 with the conductive
metal plate and a dielectric layer# 118 forms the first capacitor, Fig. 1) and a
second capacitor ( conductor # 121 with the conductive metal plate and a
dielectric layer #118 forms the second capacitor, Fig. 1)." Ans. 7. The
Examiner further finds Turner teaches the "the first capacitor is formed by a
first plate placed in proximity to" a transmission line because the "conductor
#119 [is] in proximity to the guiding medium #102" and the "conductor
#121 [is] in proximity to the guiding medium #102." Final Act. 4--5. The
Examiner acknowledges that Turner does not teach that the transmission line
is a "wire" as claimed. The Examiner turns to Washiro and Shin, finding
that Washiro "teaches a surface wave transmission line made of a conductor
such as a copper wire" and Shin teaches "a communication system operating
in the 60GHz band that uses a 60GHz cable." Final Act. 5 (citing Washiro
,r,r 31, 153; Fig. 1 and Shin pp. 184--185). The Examiner finds it would have
been obvious to modify Turner's transmission medium to make it a wire as
taught by Washiro and Shin, "for its reduced costs so as to perform efficient
communication of the surface wave for very high frequencies." Final Act. 6.
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Appellant disputes these findings. In particular, Appellant contends
"Turner discloses a structure whereby Zenneck waves are generated by a
patch antenna having two conductive surfaces 119 and 121 that interact with
a guiding surface 101 having a dielectric layer 102 and a conductive layer
103." App. Br. 7. Appellant argue the structure of Turner does not teach the
recited first and second capacitors because Turner's disclosure is of
"conductive surfaces 119 and 121, operating as patch antennas above
conductive layer 103, and not two capacitors, each formed by a plate placed
in proximity to a wire." Id. ( emphasis omitted). Appellant further argues
"[t]hese patch antenna structures of Turner operate as patch antennas above
a conductive layer 103, and not two capacitors, each formed by a plate
placed in proximity to a wire." Reply Br. 3. We agree with Appellant.
The Examiner finds "conductor # 119 with the conductive metallic
plate and a dielectric layer # 118 forms the first capacitor" and "conductor
# 121 with the conductive metallic plate and a dielectric layer # 118 forms the
second capacitor." Ans. 5. In order for Turner to teach the disputed
limitation, it must have two characteristics: ( 1) there must be two separate
capacitors; and (2) they each must be formed by a separate plate "placed in
proximity to a wire." However, the Examiner has not sufficiently explained
why conductor 119, which is described by Turner as a single layer of
conductive sheet material over a single layer of dielectric material, can be
considered two separate capacitors.
Moreover, the Examiner also does not explain how the single
conductive layer 119 can constitute a "first capacitor [ ] formed by a first
plate" and a "the second capacitor is formed by a second plate." The
Examiner states that conductive layer 119, together with dielectric 118,
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forms a first capacitor, and that conductor #121 together with dielectric 118
is the second capacitor. Ans. 5. However, this finding is not consistent with
the description in Turner, which indicates "[a]n upper surface 121 of the
dielectric layer 118 is covered in the layer of conductive sheet material 119."
Turner ,r 24. Turner characterizes item 121 merely as the "upper surface[]
of dielectric layer 118 [which] is covered in the layer of conductive sheet
material 119." Turner ,r 24. It is not a separate component as found by the
Examiner. Still further, although Turner describes metallic patch 123 as a
"metal plate," nowhere does Turner characterize the conductor sheet
material 119 as a "plate." Accordingly, we are persuaded the Examiner
erred in finding Turner teaches disputed limitation, and we do not sustain the
rejection of claim 1. For the same reasons, we also do not sustain the
rejection of independent claim 11, which recites the same limitation. We
also do not sustain the rejections of claims 2, 3, 6, 8-10 (which depend from
claim 1) and claims 14--18 (which depend from claim 11).
Second Issue
We reach a different result for independent claim 19, which is rejected
as unpatentable over Turner, Washiro, Shin, and Lodi. Final Act. 9-10. In
arguing for patentability of claim 19, Appellant presents an argument similar
to that of claim 1. In particular, Appellant argues:
Lodi also fails to disclose a first capacitor that is formed by a first
plate placed in proximity to a wire and wherein the second
capacitor is formed by a second plate placed in proximity to the
wire where the first capacitor and the second capacitor generate
the guided electromagnetic wave to at least partially surround the
outer surface of the wire.
App. Br. 12 (emphasis omitted). However, the limitation argued by
Appellant does not appear in claim 19, which does not require first and
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second capacitors formed by first and second plates. As such, we are not
persuaded by this argument.
Appellant also argues with respect to claim 19 that "the application of
Lodi to Turner would require a change in the principles of operation in
Turner." App. Br. 12. To that end, Appellant contends incorporating the
teachings of Lodi into Turner would require Turner to be changed from
generating guided Zenneck waves to conventional electric signal
propagation. According to Appellant, such a modification would change the
principle of operation of Turner. We disagree.
The Examiner cites Lodi for the limited purpose of demonstrating it
was known in the art to space capacitors "a distance apart that corresponds
to substantially one quarter of the wavelength." Final Act. 10 ( citing Lodi
Fig. 4; ,r,r 12, 17-21 ). Appellant does not explain why applying the
teachings of Lodi for the limited purpose of adopting the spacing
configuration of Lodi would require a change in the principle of operation of
Turner. Accordingly, we are not persuaded the Examiner has erred in
rejecting claim 19, and we sustain its rejection under 3 5 U.S. C. § 10 3 .
Appellant does not separately argue dependent claims 20-24, which fall
along with claim 19.
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DECISION
We reverse the Examiner's rejections of claims 1-3, 6, 8-11, 14, and
16-18.
We affirm the Examiner's rejection of claims 19-24.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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