Ex Parte James et al

Patent Trial and Appeal Board

Jan 31, 2013

11097481 (P.T.A.B. Jan. 31, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/097,481 04/01/2005 Thomas H. James PD-204061 7148
20991 7590 01/31/2013
THE DIRECTV GROUP, INC.
PATENT DOCKET ADMINISTRATION
CA / LA1 / A109
2230 E. IMPERIAL HIGHWAY
EL SEGUNDO, CA 90245
EXAMINER
TILAHUN, ALAZAR
ART UNIT PAPER NUMBER
2424
MAIL DATE DELIVERY MODE
01/31/2013 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 THOMAS H. JAMES and DIPAK M. SHAH
____________________

Appeal 2010-0077081
Application 11/097,481
Technology Center 2400
____________________

Before JEAN R. HOMERE, KALYAN DESHPANDE, and TREVOR M.
JEFFERSON, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is DIRECTV Group, Inc. (App. Br. 1.)

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1-20. (App. Br. 2.) We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants invented a system for delivering satellite signals to a
plurality of receivers. In particular, upon receiving a satellite signal
(120) at a low noise block (LNB) amplifier (128) of a satellite antenna
(108), the LNB forwards the received signal to a module (300) coupled
thereto. A multi-switch (400) included in the module (300) forwards the
signal to an interface (410), which subsequently delivers the signal to a
receiver (308) via a power inserter (302) that controls the signal flow
and the command flow between the multi-switch and the receiver.
(Figures 1, 3, 4, Specification 6, ll. 1-12.)
Illustrative Claim
Independent claim 1 further illustrates the invention as follows:
1. A system for delivering satellite video signals
for display on a monitor, comprising:
a module comprising a multiswitch, the multiswitch
selectively directing the satellite video signals to a plurality of
outputs of the multiswitch;
an interface for delivering the satellite video signals to at
least one receiver; and
a power inserter, coupled between the interface and the at
least one receiver, for controlling the flow of signals between
the multiswitch and the at least one receiver, wherein the
satellite video signals continuously flow through the power
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inserter to the at least one receiver while commands selectively
flow between the module and the at least one receiver through
the power inserter.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Green US 5,805,975 Sep. 8, 1998

Coffin US 7,010,265 B2 Mar. 7, 2006
(filed May 22, 2002)

Gurantz US 7,130,576 B1 Oct. 31, 2006
(filed Nov. 6, 2002)

Lindstrom US 2005/0193419 A1 Sep. 1, 2005
(filed Dec. 31, 2004)

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claims 1-8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Gurantz and Green.
2. Claims 9-14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Gurantz, Green, and
Lindstrom.
3. Claims 15-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Coffin, Gurantz, and
Green.
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ANALYSIS
We consider Appellants’ arguments seriatim as they are presented
in the principal Brief, pages 6-12.
Dispositive Issue: Have Appellants shown by a preponderance of
the evidence that the Examiner erred in finding that Gurantz and Green
are properly combined to teach or suggest a power inserter coupled
between a multi-switch interface and a receiver for controlling the flow
of signals and the flow of command therebetween, as recited claim 1?
Appellants argue that the combination of Gurantz and Green does
not teach or suggest the disputed limitations emphasized above. In
particular, Appellants argue that Green discloses a processor that
converts different signal polarities into a single polarity as opposed to a
multi-switch system that selects between different polarizations for a
given satellite. Further, Appellants argue that Green discloses a power
inserter that merely serves as an entry point from a power source, as
opposed to a mechanism for controlling the signal flow and the flow of
commands between the multi-switch and a receiver. (App. Br. 7-9.)
Therefore, Appellants submit that Green’s elimination of the multi-
switch teaches away from the invention. (Id.) Additionally, Appellants
argue that there is insufficient motivation to incorporate Green’s power
inserter in Gurantz to thereby control the signal flow and the command
flow between the multi-switch and the receiver as required by the
disputed limitations. (Id. at 10.)
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In response, the Examiner finds that because Green’s disclosure of
a communicating satellite signals to a receiver via a power inserter
complements Gurantz’s disclosure of communicating satellite signals
between a multi-switch and a receiver, the cited references are properly
combined to teach the disputed limitations. (Ans. 11-14.)
On the record before us, we agree with the Examiner’s findings
and ultimate conclusion of obviousness. We note at the outset that
Appellants have not disputed the Examiner’s findings regarding
Gurantz’ disclosure of a multi-switch for selectively directing satellite
signals to a receiver. Appellants mainly argue that Green’s power
inserter cannot be properly incorporated between Gurantz’ multi-switch
and the receiver because the Green’s processor is not compatible with
Gurantz’ multi-switch. This argument is not persuasive. We find that
while Green’s processor converts the polarity of incoming satellite
signals (col. 5, ll. 1-11), as opposed to selecting between the different
signal polarizations as would a multi-switch, Green’s use of the
processor does not teach away from the multi-switch.2 We find no

2 It has been held that “[w]hat the prior art teaches and whether it
teaches toward or away from the claimed invention … is a determination
of fact.” Para-Ordnance Mfg., Inc. v. SGS Importers Int'l, Inc., 73 F.3d
1085, 1088 (Fed. Cir. 1995.) “A reference may be said to teach away
when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be
led in a direction divergent from the path that was taken by the
applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994.) Teaching
an alternative or equivalent method, however, does not teach away from
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disclosure in Green that tends to criticize, discredit or discourage the use
of the multi-switch. Rather, the cited portion of Green merely provides
an alternative mechanism for processing satellite signals to a receiver.
Further, we find unavailing Appellants’ argument that the power
inserter disclosed in Green does not teach or suggest the claimed power
inserter because Green’s power inserter is not used for controlling the
signal flow and the command flow between the multi-switch and the
receiver. Because the recited power inserter is not actually controlling
the signal flow and the command flow, but it is merely capable of
controlling such data, it is a statement of intended use, which is not
entitled to patentable weight.3 Additionally, we note that the limitation
at issue is directed to a functional limitation recited as part of an
apparatus. It has been held that functional limitations are distinguishable
over the prior art of record only after Appellants have made a showing
that the prior art of record does not teach such capability.4 The record

the use of a claimed method. See In re Dunn, 349 F.2d 433, 438 (CCPA
1965.)
3 See, e.g. Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough
Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003) (a statement of intended
use “usually will not limit the scope of the claim because such
statements usually do no more than define a context in which the
invention operates”).
4 Claims directed to an apparatus must be distinguished from the prior
art in terms of structure rather than function, see, e.g., In re Schreiber,
128 F.3d 1473, 1477-78 (Fed. Cir. 1997), in order to satisfy the
functional limitations in an apparatus claim, however, the prior art
apparatus must be capable of performing the claimed function. Id. at
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before us is devoid of such showing.5 Even if we were to give
patentable weight to the functional limitation or intended use limitation,
as claimed, we find that Green’s disclosure teaches or at least suggests
the claimed limitation. Green discloses a satellite broadcast system to
accommodate two different polarity commands from two or more
sources at the same time. In particular, signals received from a satellite
are converted to standard frequencies and transmitted to a satellite
receiver via a single coaxial cable and a power inserter. (Col. 2, l. 46-
col. 3, l. 4, Fig. 2.) Green further discloses that the power inserter is
used to insert power into a power source to thereby amplify signals with
additional amplifiers. (Col. 5, ll. 39-49.) We thus find that by
amplifying the signal, the power inserter is able to control the signal
flow and the command flow from the processor to the satellite receiver.

1478. The prior art structure must be capable of performing the function
without further programming. Typhoon Touch Techs., Inc. v. Dell, Inc.,
659 F.3d 1376, 1380 (Fed. Cir. 2011) (discussing Microprocessor
Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 1367
(Fed.Cir.2008)). When the functional language is associated with
programming or some other structure required to perform the function,
that programming or structure must be present in order to meet the claim
limitation. Id.
5 Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed.
Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of
secondary indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d
1350, 1355 (Fed. Cir. 1998)).
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In considering the general form of Appellants’ arguments in the
principal Brief, they appear to have attacked the teachings of Gurantz
and Green separately, as opposed to the combined disclosures proffered
by the Examiner. We note that one cannot show nonobviousness by
attacking the references individually where the rejections are based on
combinations of references. In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986). Here, the respective references relied on by the
Examiner must be read, not in isolation, but for what the combination
teaches or suggests when considered as a whole. We find nonetheless
that the cumulative weight and the totality of the evidence on this record
favor the Examiner’s position that the combined disclosures of Gurantz,
and Green would have taught or suggested the disputed limitations.
Next, regarding the lack of logical reason to combine arguments,
we note that U.S. Supreme Court has held that “[t]he combination of
familiar elements 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). The Court further instructs
that:
[o]ften, it will be necessary for a court to look to
interrelated teachings of multiple patents; . . . and the background
knowledge possessed by a person having ordinary skill in the art,
all in order to determine whether there was an apparent reason for
combining the known elements in a the fashion claimed by the
patent at issue.
Id. at 418.
Additionally, the Court instructs that:
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‘rejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness’… however, the analysis need
not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the
art would employ.
Id. (citation omitted).

First, we find that the ordinarily skilled artisan, being a creative
individual would have been able to fit the teachings of the cited
references together like pieces of a puzzle to predictably result in the
disputed limitations. That is, as discussed above, the proffered
combination of the cited references would predictably result in a satellite
system that couples a multi-switch to a power inserter to predictably
regulate the flow of satellite signals to a receiver.
Further, as prescribed by the controlling case law, while it is
often necessary for an Examiner to identify a reason for combining the
familiar elements obtained from the prior art in establishing a prima
facie case of obviousness, the identification of such a reason is not a sine
qua non requirement. So long as the Examiner provides an articulated
reasoning with some rational underpinning to substantiate the
obviousness rejection, such a conclusion is proper. In this case, the
Examiner provides more than just a mere conclusory statement. The
Examiner notes that at the time of the claimed invention, an ordinarily
skilled artisan would have been motivated to combine the cited
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disclosures because users of Gurantz’s system would be motivated to
utilize Green’s power inserter to regulate the signal flow to the receiver.
(Ans. 4.) In our view, such a statement suffices as an articulated reason
with a rational underpinning to support the cited combination. As noted
above, the case law allows the Examiner to look to the state of the prior
art, including the knowledge of the ordinarily skilled artisan to arrive at
such a reason for combining the known elements of the prior art.
Consequently, the Examiner’s reliance upon the cited references in order
to arrive at an articulated reason with a rational underpinning to support
the proffered combination is proper. For these same reasons,
Appellants’ argument that the combination is improper is not persuasive.
It follows that Appellants have not shown error in the
Examiner’s conclusion that the proffered combination renders claim 1
unpatentable.
Regarding claims 2-20, Appellants reiterate substantially the same
arguments submitted for patentablity of claim 1 above. (Ans. 11-12.) As
discussed above, these arguments are not persuasive. Consequently,
claims 2-20 fall for the reasons set forth in our discussion of claim 1
above. See 37 C.F.R. § 1.37(c)(1)(vii).
DECISION
We affirm the Examiner’s rejections of claims 1-20 as set forth
above.
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).
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AFFIRMED

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