Ex Parte Hurwitz et al

Patent Trial and Appeal Board

Dec 20, 2016

12144511 (P.T.A.B. Dec. 20, 2016)

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.
12/144,511 06/23/2008 Jonathan Ephraim David Hurwitz BP23181 1710
51472 7590 12/22/2016
GARLICK & MARKISON (BRCM)
P.O. BOX 160727
AUSTIN, TX 78716-0727
EXAMINER
AMRANY, ADI
ART UNIT PAPER NUMBER
2836
NOTIFICATION DATE DELIVERY MODE
12/22/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
MMURDOCK@ TEXASPATENTS .COM
ghmptocor@texaspatents.com
bpierotti @ texaspatents .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN EPHRAIM DAVID HURWITZ and
DAVID GIMENEZ ROCAMORA1
Appeal 2015-005669
Application 12/144,511
Technology Center 2800
Before BRADLEY R. GARRIS, JEFFREY W. ABRAHAM, and
MONTE T. SQUIRE, Administrative Patent Judges.
ABRAHAM, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 25—27 and 29-45. We have jurisdiction
pursuant to 35 U.S.C. § 6(b). We reverse.
1 According to the Appeal Brief, the real party in interest is Broadcom
Corporation. App. Br. 2.
Appeal 2015-005669
Application 12/144,511
BACKGROUND
Appellants’ claimed invention relates to the field of communications
over power lines. Spec. 13.
Independent claim 25 is illustrative, and reproduced below:
25. An alternating current power line communication
interface device comprising:
a first signal source configured to generate a first
data encoded signal;
first signal conditioning circuitry connected to the
first signal source for modifying the first data encoded
signal;
a first transformer connected to the first signal
conditioning circuitry and configured to receive and
transform an output from the first signal conditioning
circuitry at a primary winding, the primary winding
having a secondary to primary winding ratio that is
greater than one;
second signal conditioning circuitry connected to
the first transformer for modifying an output from the
first transformer; a second transformer connected in
series with the second signal conditioning circuitry to
receive and transform an output from the second signal
conditioning circuitry at a primary winding of the
second transformer, the second transformer including a
secondary winding electromagnetically coupled to the
primary winding to provide an output signal, the
second transformer having a secondary-to-primary
winding ratio that is greater than one; the first
transformer and the second transformer configured to
change a voltage of the first data encoded signal in a
stepwise fashion; and
signal coupling circuitry coupled to the secondary
winding of the second transformer, the signal coupling
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Application 12/144,511
circuitry configured to couple the output signal to the
alternating current power line.
App. Br. 18 (Claims App’x).
The Examiner maintains,2 and Appellants appeal, the rejection of
claims 25—27, 30-32, 37, 40, and 43—45 under 35 U.S.C. § 102(b) as
anticipated by Abraham (US 5,559,377, issued Sept. 24, 1996); and claims
29, 33—36, 38, 39, 41, and 42 as unpatentable under 35 U.S.C. §103(a) over
Abraham.
OPINION
1. Rejection of Claims 25—27, 30—32, 37, 40, and 43—45 Under
35 U.S.C. § 102(b)
The Examiner finds that Abraham discloses each and every limitation
of claims 25—27, 30-32, 37, 40, and 43—45. Final Act. 5—10. With regard to
independent claim 25, the Examiner finds that power transformer 27
depicted in Figure 6A corresponds to the “first transformer connected to the
first signal conditioning circuitry” recited in claim 25. Id. at 5. The
Examiner further finds that the distribution transformer 145 and three phase
large transformer 147 depicted in Figure 25 correspond to the “second signal
conditioning circuity connected to the first transformer” and the “second
transformer connected in series with the second signal conditioning
circuitry,” respectively, recited in claim 25. Id. at 5—6.
The Examiner provides an annotated version of Abraham Figure 25
that “demonstrate[s] the Examiner’s interpretation of’ Abraham for purposes
2 In the Answer, the Examiner withdrew the rejection of claims 25—27, 31,
and 33—39 as unpatentable under 35 U.S.C. § 103(a) over Koga (US
2008/0304577 Al, published Dec. 11, 2008) in view of Abraham. Ans. 2.
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Application 12/144,511
of the anticipation rejection. Ans. 5—6. According to the Examiner, the
annotated version of Figure 25 combines original Figures 6 A and 25 of
Abraham, such that power transformer 27 from Figure 6A is included
between the coupler and distribution transformer 145 in Figure 25. Id.
Appellants argue that Abraham fails to disclose all of the elements of
independent claim 25 as they are arranged in the claim, including the
“positively claimed interconnections.” App. Br. 8 (citing In re Bond, 910 F.
2d 831, 832 (Fed. Cir. 1990)). Appellants contend that Abraham does not
teach or suggest placing a transformer between the coupler and 120V power
line (below transformer 145) in Figure 25. Id. Appellants assert that in
rejecting claim 25, “the Examiner has chosen to create their own ‘new’
hybrid drawing (page 5 of Examiner’s Answer) to demonstrate their own
interpretation. This new hybrid drawing is clearly not part of the Abraham
reference and further is not supported by Abraham’s specification.” Reply
Br. 8.
We agree with Appellants that, for a rejection under 35 U.S.C. § 102,
the Examiner may not “pick and choose elements from one drawing to add
to another separate embodiment without providing support.” Id.', see also
NetMoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008)
(holding that the district court was “wrong to combine parts of the separate
protocols shown in the [prior art] reference in concluding that [the] claim . . .
was anticipated”); In reArkley, 455 F.2d 586, 587 (CCPA 1972) (“[T]he
[prior art] reference must clearly and unequivocally disclose the claimed
[invention] or direct those skilled in the art to the [invention] without any
need for picking, choosing, and combining various disclosures not directly
related to each other by the teachings of the cited reference.”).
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Application 12/144,511
The Examiner acknowledges combining elements from Figure 6A of
Abraham (e.g. transformer 27) with elements from Figure 25 of Abraham in
rejecting claim 25 under 35 U.S.C. 102(b) as anticipated by Abraham. Ans.
5—6; Final Act. 3^4. The Examiner, however, does not direct us to any
portion of Abraham that teaches such a combination or discloses all of the
limitations of claim 25 “combined in the same way as in the claim.” Net
MoneyIN, 545 F.3d at 1371. We thus determine that the Examiner’s
decision to combine elements from separate embodiments of Abraham in
rejecting claim 25 under 35 U.S.C. § 102(b) constitutes reversible error.
Accordingly, we reverse the Examiner’s rejection of independent claim 25,
and claims 26, 27, 30-32, and 37, which depend therefrom, under 35 U.S.C.
§ 102(b).
Because the Examiner also relies on the unsupported combination of
elements from Figures 6A (transformer 27) and 25 (transformer 145 or 147)
in rejecting independent claims 40 and 43 under 35 U.S.C. § 102(b), we
reverse the Examiner’s rejection of these claims, as well as claims 44 and
45, which depend from claim 43, for the same reasons. Final Act. 9—10.
2. Rejection of Claims 29, 33—36, 38, 39, 41, and 42 under 35 U.S.C.
§103.
Claims 29, 33—36, 38 and 39 depend from independent claim 25, and
claims 41 and 42 depend from independent claim 40. For the rejections
under 35 U.S.C. § 103, the Examiner addresses expressly only the additional
limitations recited in each dependent claim. Final Act. 11—13. The
Examiner does not address whether the limitations of independent claims 25
and 40 would have been obvious to a person of ordinary skill in the art, but
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Application 12/144,511
instead relies on the aforementioned findings and conclusions that claims 25
and 40 are anticipated by Abraham. As discussed above, we find that the
Examiner erred reversibly in determining that Abraham anticipates claims
25 and 40.
We note that although “picking and choosing may be entirely proper
in the making of a 103, obviousness rejection,” the Examiner has not
presented evidence sufficient to demonstrate that the subject matter of
claims 25 and 40 would have been obvious to a person of ordinary skill in
the art. In re Arkley, 455 F.2d at 587—88; In re Kahn, 441 F.3d 977, 987
(Fed. Cir. 2006) (“[T]o establish a prima facie case of obviousness based on
a combination of elements disclosed in the prior art, the [Examiner] must
articulate the basis on which it concludes that it would have been obvious to
make the claimed invention.”). For all of the foregoing reasons, we reverse
the rejections of claims 29, 33—36, 38, 39, 41, and 42.
CONCFUSION
For the reasons set forth above, we reverse the rejections of claims
25-27 and 29-A5.
REVERSED
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