Ex Parte Karaoguz et al

Board of Patent Appeals and Interferences

Dec 17, 2009

10937315 (B.P.A.I. Dec. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEYHAN KARAOGUZ and JAMES BENNETT
____________

Appeal 2009-001482
Application 10/937,315
Technology Center 2100
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Decided: December 18, 2009
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Before JOSEPH L. DIXON, HOWARD B. BLANKENSHIP, and
CAROLYN D. THOMAS, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
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The Appellants appeal rejected claims 1-25 under 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

I. STATEMENT OF THE CASE
The Invention
The Appellants invented a method of installing multiple over-the-air
antennas such that at least one antenna is a satellite antenna mounted on the
installation surface and one is a broadband access antenna which is attached
to a portion of the satellite antenna and the installation surface (Abstract).

The Illustrative Claim
9. An antenna assembly, comprising:
a satellite antenna, having a mounting structure that is
configured to mount to an installation surface that allows the
satellite antenna to be adjusted to communicate with a satellite,
and having a first output wiring;
a broadband access antenna, attached to one of the
installation surface and a portion of the satellite antenna,
wherein the broadband access antenna can be adjusted to
communicate with a broadband access source, and having a
second output wiring; and
a common downconverter, having inputs connected to
the first and second wiring and an output to a cable in
communication with at least a satellite receiver.

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The References
The Examiner relies upon the following prior art as evidence in
support of rejections:
Lusignan US 5,930,680 Jul. 27, 1999
Cardiasmenos US 6,204,822 B1 Mar. 20, 2001
Pinto US 6,754,584 B2 Jun. 22, 2004
Clymer US 6,950,073 B2 Sept. 27, 2005

The Rejections
Claims 9-14, 16, 17, 19-22, 24, and 25 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Clymer.
Claims 9, 10, 16, and 21 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Pinto.
Claims 1-3 and 7 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Cardiasmenos.
Claims 15, 18, and 23 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Clymer in view of Lusignan.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cardiasmenos in view of Lusignan.
Claims 4-6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cardiasmenos in view of Clymer.

II. ISSUES
Have the Appellants shown that the Examiner erred in finding that
Clymer discloses “a satellite antenna, having a mounting structure that is
configured to mount to an installation surface . . . a broadband access
antenna, attached to one of the installation surface and a portion of the
satellite antenna,” as recited in independent claim 9?
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Have the Appellants shown that the Examiner erred in finding that
Pinto discloses “a satellite antenna . . . having a first output wiring . . . a
broadband access antenna, attached to one of the installation surface and a
portion of the satellite antenna . . . having a second output wiring . . . a
common downconverter, having inputs connected to the first and second
wiring and an output to a cable in communication with at least a satellite
receiver,” as recited in independent claim 9?
Have the Appellants shown that the Examiner erred in finding that
Cardiasmenos discloses “mounting a satellite antenna to a installation
surface . . . attaching a broadband access antenna to one of the installation
surface and a portion of the satellite antenna,” as recited in independent
claim 1?

III. PRINCIPLES OF LAW
Prima Facie Case of Unpatentability
The allocation of burden requires that the United States Patent and
Trademark Office (USPTO) produce the factual basis for its rejection of an
application under 35 U.S.C. §§ 102 and 103. In re Piasecki, 745 F.2d 1468,
1472 (Fed. Cir. 1984) (citing In re Warner, 379 F.2d 1011, 1016 (CCPA
1967)). Appellant has the opportunity on appeal to the Board of Patent
Appeals and Interferences (BPAI) to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).

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Anticipation
“[A]nticipation of a claim under § 102 can be found only if the prior
art reference discloses every element of the claim . . . .” In re King, 801
F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik
GMBH v. Am Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984)).
“[A]bsence from the reference of any claimed element negates anticipation.”
Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571 (Fed. Cir.
1986) (citing Atlas Powder Co. v. E.I. Du Pont De Nemours & Co., 750 F.2d
1569, 1573-74 (Fed. Cir. 1984)). Inherency is not established by
probabilities or possibilities. MEHL/Biophile Int’l Corp. v. Milgraum, 192
F.3d 1362, 1365 (Fed. Cir. 1999) (citing In re Oelrich, 666 F.2d 578, 581
(CCPA 1981)). That a certain thing may result from a given set of
circumstance is not sufficient to establish inherency. Id.

IV. FINDINGS OF FACT
The following findings of fact (FFs) are supported by a preponderance
of the evidence.
Clymer
1. Clymer discloses an antenna array (102) with four horn antennas (110)
and four dielectric lenses (114) separately mounted on the flanges (180) and
the horn antennas are coupled to the feed network (112) (Figs. 4 and 8; col. 8,
ll. 9-63; col. 16, ll. 3-29).
2. Clymer discloses that “[b]y providing all of gain and phase matching
with” a polarization converter unit (PCU) and the antenna array, a more
reliable system with improved worldwide performance may result for
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operating a variety of satellites in “broad bands of frequency operations”
(col. 23, ll. 65-67; col. 24, ll. 30-32).
3. Clymer further discloses a down-converter unit (DCU) 400 receive
input signal on line 106 from the antenna assembly 100 (Fig. 2; col. 7 ll. 12-
21).
Pinto
4. Pinto discloses a broadband antenna array 49 and two separately
mounted GPS antennas 7 on a mounting surface 47 (Fig. 12; col. 21, ll. 53-
64).
5. Pinto also discloses that a transmitting and receiving chain 34 receives
the broadband signal from the broadband antenna 49 and passes the received
signal to a down-conversion and gain control 35, and a pointing controller
43 receives the GPS signal from the GPS antennas 7, and processes the
received signal at RF processing 44 and GPS process 45 (Fig. 12; col. 21, l.
65-col. 22, l. 17).
Cardiasmenos
6. Cardiasmenos discloses a three-primary-reflector antenna system with
three positioners 112, 114, and 116, in which each positioner assembly is
supported by a post 120 at the center of the assembly and the secondary
reflector of the positioner is positioned along the axis of the primary
reflector (Figs. 8 and 9; col. 11, ll. 56-62).
7. Cardiasmenos further discloses the positioner consists of an azimuth
bearing 124 and step motor 132 and 134 to move the secondary reflector 142
for the phase correction in order to receive two or more independent
frequencies (Fig. 9; col. 12, ll. 1-41; abstract).

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V. ANALYSIS
35 U.S.C. § 102 rejections
With respect to claim 9, the Appellants contend that “Clymer does not
teach an antenna assembly having both a satellite antenna and a broadband
access antenna, as expressly recited in claim 9.” (App. Br. 7.) In addition,
Appellants contend that “110 is described in Clymer as being a ‘horn
portion’ of a satellite antenna, not a broadband access antenna (See Figures 4
and 5, and column 7, line 57 to column 8, line 30.).” (App. Br. 7-8.)
The Examiner maintains that the claim language is anticipated by
Clymer.
As presented, the range or Broad bands of frequencies found in prior
art inherently includes the ability to communicated signal within the
broadband as claimed. Clymer clearly discloses the broadband a
satellite antenna and a broadband access antenna (see column 23, line
66). Furthermore, the claim 9 does not recited word “both” in claimed
language.

(Ans. 9 (emphasis added).)
We disagree with the Examiner’s finding. We find that Clymer
teaches four antennas separately mounted on flanges (FF 1) and only
mentions “broad bands of frequency operations” for a variety of satellites
(FF 2), however does not expressly mention a broadband access antenna.
Even if we considered the antenna array of Clymer as a broadband access
antenna, the antenna array is not attached on “a portion of the satellite
antenna” as required in claim 9 because Clymer teaches only one antenna
array (FF 1).
In response to the alternative rejection, the Appellants further contend
that “Pinto does not teach . . . the satellite antenna and the broadband
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antenna are both connected to a common downconverter that is in
communication with at least a satellite receiver” (App. Br. 16).
We agree with the Appellants’ contention. We find that Pinto teaches
two different types of antennas, one is a broadband access antenna and the
other is GPS antenna (FF 4). However, those antennas are separately
mounted on the mounting surface; thus, the broadband access antenna is not
attached to the portion of the GPS antennas (FF 4), as required in claim 9.
Furthermore, the down-conversion and gain control unit receives only output
of the broadband access antenna (FF 5); thus, the down-conversion and gain
control unit does not have “inputs connected to the first and second wiring,”
as required in claim 9.
Accordingly, we cannot sustain the anticipation rejection of claim 9
over either Clymer or Pinto.
The rejection of dependent claims 10-14 contains the same
deficiencies. Because we agree with at least one of the Appellants’
contentions, we therefore reverse the anticipation rejections of claims 9-14.
With respect to independent claims 16 and 21, the Appellants contend
that neither Clymer nor Pinto teaches a down converting circuitry which has
two inputs, one is a satellite antenna input and the other is a broadband
access antenna input (App. Br. 11 and 18).
We agree with the Appellants’ contentions. We find both Clymer and
Pinto disclose that the down converting circuitry has only one signal input
from one type of antenna (FF 3 and FF 5).
Accordingly, we cannot sustain the anticipation rejection of claims 16
and 21 over either Clymer or Pinto.
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The rejection of dependent claims 17, 19-22, and 24-25 contains the
same deficiency. Because we agree with at least one of the Appellants’
contentions, we therefore reverse the anticipation rejections of claims 16, 17,
19-22, and 24-25.
With respect to independent claim 1, the Appellants contend that
“Cardiasmenos does not teach installing an antenna including the step of
attaching a broadband access antenna to one of the installation surface and a
portion of the satellite antenna,” and that element 116 in Cardiasmenos is a
positioner, not a broadband access antenna (App. Br. 21-22).
We agree with the Appellants’ contention. We find Cardiasmenos
teaches three-reflector antenna with three positioners that the three
positioners are phase correction devices and are not mounted on the portion
of the satellite antenna as required by claim 1 (FF 6 and 7).
Accordingly, we cannot sustain the anticipation rejection of claim 1
over Cardiasmenos.
The rejection of dependent claims 2-3 and 7 contains the same noted
deficiency. Because we agree with at least one of the Appellants’
contentions, we therefore reverse the anticipation rejection of claims 1-3 and
7.

35 U.S.C. § 103(a) rejection
With respect to claims 15, 18, and 23, the rejection of dependent
claims 15, 18, and 23 contains the same noted deficiency. The Lusignan
reference and the combination of Clymer and Lusignan does not cure the
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deficiency. Therefore, we reverse the obviousness rejection of claims 18
and 23.
With respect to claim 8, the rejection of dependent claim 8 contains
the same noted deficiency. The Lusignan reference and the combination of
Cardiasmenos and Lusignan does not cure the deficiency. Therefore, we
reverse the obviousness rejection of claim 8.
With respect to claims 4-6, the rejection of dependent claims 4-6
contains the same noted deficiency. The Clymer reference does not teach
attaching the additional broadband antenna to a portion of a satellite antenna.
The combination of Cardiasmenos and Clymer does not cure the deficiency.
Therefore, we reverse the obviousness rejection of claims 4-6.

VI. CONCLUSION
We conclude that the Appellants have shown that the Examiner erred
in finding that Clymer discloses “a satellite antenna, having a mounting
structure that is configured to mount to an installation surface . . . a
broadband access antenna, attached to one of the installation surface and a
portion of the satellite antenna,” as recited in independent claim 9.
We conclude that the Appellants have shown that the Examiner erred
in finding that Pinto discloses “a satellite antenna . . . having a first output
wiring . . . a broadband access antenna, attached to one of the installation
surface and a portion of the satellite antenna . . . having a second output
wiring . . . a common downconverter, having inputs connected to the first
and second wiring and an output to a cable in communication with at least a
satellite receiver” as recited in independent claim 9.
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We conclude that the Appellants have shown that the Examiner erred
in finding that Cardiasmenos discloses “mounting a satellite antenna to a
installation surface . . . attaching a broadband access antenna to one of the
installation surface and a portion of the satellite antenna” as recited in
independent claim 1.

VII. DECISION
We reverse the Examiner’s rejection of claims 1-25.

REVERSED

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