Ex Parte Hurwitz et alDownload PDFPatent Trial and Appeal BoardDec 20, 201612144511 (P.T.A.B. Dec. 20, 2016) Copy Citation 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 2 Appeal 2015-005669 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. 3 Appeal 2015-005669 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.”). 4 Appeal 2015-005669 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 5 Appeal 2015-005669 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 6 Copy with citationCopy as parenthetical citation