Ex Parte Knutson et al

Patent Trial and Appeal Board

Sep 28, 2012

10084773 (P.T.A.B. Sep. 28, 2012)

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.
10/084,773 02/26/2002 Paul Gothard Knutson PU020045 1194
7590 09/28/2012
JOSEPH S. TRIPOLI
THOMSON MULTIMEDIA LICENSING INC.
2 INDEPENDENCE WAY
P.O. BOX 5312
PRINCETON, NJ 08543-5312
EXAMINER
SHEPARD, JUSTIN E
ART UNIT PAPER NUMBER
2424
MAIL DATE DELIVERY MODE
09/28/2012 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 G. KNUTSON,
KUMAR RAMASWAMY, and MAX W. MUTERSPAUGH
________________

Appeal 2010-000949
Application 10/084,773
Technology Center 2400
________________

Before JOSEPH F. RUGGIERO, BRADLEY W. BAUMEISTER, and
ANDREW CALDWELL, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

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SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-11 and 13-15:
1

Claims 1-4, 6-9, 11, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as
obvious over Saunders (US 6,091,703; issued July 18, 2000) in view of Ortega
(US 2002/0087991 A1; published July 4, 2002) and Tanabe (US 5,918,156; issued
June 29, 1999); and
Claims 5, 10, and 15 stands rejected under 35 U.S.C. § 103(a) as obvious
over Saunders in view of Ortega, Tanabe, and Kwentus (US 2002/0122511 A1;
published Sep. 5, 2002).
We have jurisdiction under 35 U.S.C. § 6(b). We review the appealed
rejections for error based upon the issues identified by Appellants, and in light of
the arguments and evidence produced thereon. Cf. Ex parte Frye, 94 USPQ2d
1072, 1075 (BPAI 2010) (citing In re Oetiker, 977 F.2d 1443, 1445) (Fed. Cir.
1992).
We reverse.

STATEMENT OF CASE
Appellants describe the present invention as follows:
A satellite television ground system, particularly for a make or
break satellite television signal system, includes an outdoor unit and
an indoor unit that are in communication with each other via a single
coaxial cable and an optional separate single conductor for power.
The satellite television ground system is operative to measure and
reverse frequency conversion errors utilizing [digital signal processor]
DSP techniques, allowing for more precise generation and
transmission of uplink signals from the satellite television ground

1
Claims 12, 16, and 17 have been canceled (Ans. 2).
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system. Control data for the system is sent via a low data rate
connection on a power cable thereof, or by a narrowband signaling
channel via a coax cable. The system also utilizes a single reference
oscillator to drive the various frequency synthesizers and the like.
The satellite television ground system utilizes related oscillators for
the uplink and downlink sections. Carrier frequency offset in the
downlink is measured in a carrier tracking loop part of a television
signal demodulator. The carrier frequency offset of the downlink is
utilized to synthesize various frequency signals for the uplink and
downlink sections to correct frequency errors. For the uplink section,
the carrier frequency offset of the downlink is reversed in the uplink.
If the uplink is on a different frequency, the measured offset of the
system master oscillator can be scaled by different synthesizer ratios.
(Abstract).
Independent claim 1, which is illustrative of claims 6 and 11, is reproduced
with key claim language emphasized:
1. An outdoor unit for a satellite television ground system
comprising:
downlink circuitry operative to receive a satellite television
signal from a satellite, frequency lock to the satellite television signal,
process the satellite television signal, and provide the processed
satellite television signal to an indoor unit of the satellite television
ground system; and
uplink circuitry operative to receive an uplink signal from the
indoor unit, process the received uplink signal, and transmit the
processed uplink signal to the satellite[s] only when said downlink
circuitry is simultaneously receiving said satellite television signal
from said satellite and is frequency locked to said satellite television
signal from said satellite.

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CONTENTIONS
The Examiner finds that Saunders teaches uplink circuitry operative to
transmit a processed uplink signal to a satellite only when said downlink circuitry
is simultaneously receiving a satellite signal from said satellite and is frequency
locked to the satellite signal from said satellite (Br. 7). The Examiner’s rejection is
premised upon interpreting the claim term “simultaneous” broadly so as to be
merely setting forth a conditional requirement, but not a temporal requirement
(Ans. 7-8). That is, the Examiner interprets claim 1 as reading on transmission of
an uplink signal at any time, merely so long as a downlink signal has been received
prior to the uplink transmission. Appellants assert, inter alia, that Saunders fails to
teach or suggest conditioning an uplink signal on the simultaneous reception of a
downstream signal (Br. 6). More specifically, Appellants assert that claim 1
requires the transmission of the uplink signal overlap with the reception of a
downlink signal (Br. 5-6).

PRINCIPLES OF LAW
“[I]nterpreting what is meant by a word in a claim is not to be confused with
adding an extraneous limitation appearing in the specification, which is improper.”
In re Cruciferous Sprout Litig., 301 F.3d 1343, 1348 (Fed. Cir. 2002) (internal
quotation marks and citations omitted; emphasis in original).
It is well settled that “[d]uring patent examination the pending claims must
be interpreted as broadly as their terms reasonably allow.” In re Zletz, 893 F.2d
319, 321 (Fed. Cir. 1989). The broadest reasonable interpretation of the claims
must be consistent with the interpretation that those skilled in the art would reach.
In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999). “‘[E]ach claim does not
necessarily cover every feature disclosed in the specification. When the claim
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addresses only some of the features disclosed in the specification, it is improper to
limit the claim to other, unclaimed features.’” Broadcom Corp. v. Qualcomm Inc.,
543 F.3d 683,689 (Fed. Cir. 2008) (quoting Ventana Med. Sys., Inc. v. Biogenex
Labs., Inc., 473 F.3d 1173, 1181 (Fed. Cir. 2006)); see also Golight, Inc. v. Wal-
Mart Stores, Inc., 355 F.3d 1327, 1331 (Fed. Cir. 2004) (“[P]atentees [are] not
required to include within each of their claims all of [the] advantages or features
described as significant or important in the written description.”).

ANALYSIS
Contrary to the Examiner’s interpretation (Ans. 7-8), we interpret claim 1 as
requiring that transmission of the uplink signal occur concurrently with reception
of satellite television signals. Accordingly, we find Appellants’ arguments to be
persuasive.
The Examiner’s interpretation is based upon an embodiment of the
Specification wherein the downlink is received and uplink transmission occurs
subsequently thereafter (Ans. 7 (citing Spec. 24, ll. 1-15)). However, the portion
of the Specification cited by the Examiner only describes “[one] aspect of the
subject invention” (Spec. 24), and this passage does not use the word simultaneous.
The only portion of Appellants’ Specification that expressly sets forth the word
“simultaneous” is the BACKGROUND INFORMATION section:
In the context of satellite television systems, the use of multiple
non-geosynchronous satellites (i.e. LEO and MEO satellite systems)
requires that a subscriber’s television equipment be capable of
tracking and receiving signals from multiple satellites. Accordingly, a
subscriber's television equipment should include multiple receivers
that operate in a simultaneous manner. Moreover, in order to
accommodate interactive television services, it is also desirable for a
subscriber's television equipment to include a means for transmitting
signals to the satellites. In the case of the next generation television
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satellite system, the consumer's television equipment must therefore
have a ground station that is capable of receiving two satellite signals
and provide an uplink signal to a satellite. The ground station
typically consists of an indoor unit and an outdoor unit.
(Spec. 2:11-22).
This usage does not indicate that Appellants are using the term
“simultaneous” in an unconventional, broad manner that would encompass those
disclosed embodiments wherein the uplink transmission occurs after the downlink
is received. Further, the Examiner has not provided any other support for a broad
construction of the term “simultaneous.” Therefore, the Examiner has not
established a factual basis for the broad interpretation of claim 1 relied upon in the
Examiner’s Answer, which effectively reads out of claim 1 the limitation “only
when said downlink circuitry is simultaneously receiving said satellite television
signal from said satellite.”
Saunders teaches a code division multiple access communication system
comprising user terminals, which transmit user signals to a satellite (Saunders, col.
1, ll. 5-10). Prior to the transmission of a user signal to the satellite, a user terminal
must monitor a downlink signal broadcast from the satellite for the purpose of
acquiring timing information (Saunders, col. 2, ll. 52-57). Next, the user terminal
uses the timing information to establish time synchronization with the satellite
(Saunders, col. 3, ll. 5-10). Once in synchronization with the satellite, the user
terminal transmits the user signals to the satellite in an uplink channel (id.).
Restated, Saunders discloses that a downlink transmission must occur prior to
uplink transmission (e.g., col. 4, ll. 25-31). Saunders, however, does not teach or
suggest that the uplink transmission must only occur only when said downlink
circuitry is simultaneously receiving said satellite television signal from said
satellite,” or more specifically, simultaneously with a downlink transmission as
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recited in claim 1 (see, e.g., id.). As such, Saunders fails to teach or suggest
conditioning an uplink signal on the simultaneous reception of a downstream
signal.
We therefore do not sustain the Examiner’s obviousness rejection of
independent claim 1; of independent claim 11, which also requires conditioning an
uplink signal on the simultaneous reception of a downstream signal.
Independent claim 6 is a means-plus-function claim, which recites similar
language to claim 1: “means for providing the processed uplink signal to said
satellite only when said means for receiving is receiving the satellite television
signal from said satellite and is frequency locked to said satellite television signal
from said satellite” (emphasis added). Claim 6 initially appears to be broader than
claim 1 in that claim 6 omits the word “simultaneously” from the italicized
passage. Furthermore, it is a well-established canon of claim interpretation that
every term in a claim is presumed to have some meaning.
In the present case, though, we can find no substantive difference resulting
from the inclusion, or alternative omission, of the word “simultaneous.” That is,
the entire language “only when said means for receiving is receiving the satellite
television signal from said satellite” narrows the claimed occurrence from being
merely when the recited means “is frequency locked to said satellite television
signal from said satellite” to being specifically occurring simultaneously. Adding
the word “simultaneously,” as in claim 1, would merely seem to be redundant. We
therefore do not sustain the Examiner’s obviousness rejection of independent claim
6 for the reasons set forth in relation to claim 1.
For the stated reasons, we likewise do not sustain the obviousness rejection
of claims 2-4, 7-9, and 13-14, which depend from independent claims 1, 6, and 11.
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With respect to the remaining rejection of dependent claims 5, 10, and 15,
the Examiner does not rely on Kwentus to cure the deficiency of the rejection
explained above. Accordingly, we do not sustain the obviousness rejection of
claims 5, 10, and 15 for the reasons noted in relation to independent claims 1, 6,
and 11.

DECISION
The Examiner’s decision rejecting claims 1-11 and 13-15 is reversed.

REVERSED

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