Ex Parte Kolze

Patent Trial and Appeal Board

Jun 14, 2017

13346071 (P.T.A.B. Jun. 14, 2017)

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.
13/346,071 01/09/2012 Thomas J. Kolze 2875.0900005 3517
49579 7590 06/16/2017
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
DUONG, FRANK
ART UNIT PAPER NUMBER
2474
NOTIFICATION DATE DELIVERY MODE
06/16/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS J. KOLZE
Appeal 2015-007869
Application 13/346,071
Technology Center 2400
Before ROBERT E. NAPPI, CARL W. WHITEHEAD JR and
SHARON FENICK, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant is appealing the Final Rejection of claims 1—4, 6—10 and 21
under 35 U.S.C. § 134(a). Appeal Brief 15. Claim 5 is cancelled. Appeal
Brief 17. Claims 11—20 have been indicated as allowed. Final Rejection 11.
We have jurisdiction under 35 U.S.C. § 6(b) (2012).
We affirm-in-part.
Introduction
The invention is directed to “a cable modem system wherein
information is communicated between a plurality of cable modems and a
cable modem termination system.” Specification, paragraph 2.
Illustrative Claim (disputed limitations emphasized)
Appeal 2015-007869
Application 13/346,071
1. A method, comprising:
initializing a modem to transmit to a cable modem termination system
(CMTS) on a first communications channel having a first transmission
parameter and on a second communications channel having a second
transmission parameter, wherein the first communications channel is a
wideband channel and the second communications channel is a narrowband
channel;
receiving, at the modem, a data packet for transmission, wherein the
data packet is characterized by a packet length;
selecting one of the first communications channel and the second
communications channel for transmission of the data packet based on the
packet length and the first and second transmission parameters; and
transmitting the data packet on the selected communications channel from
the modem to the CMTS.
Rejections on Appeal
Claims 1-4, 6-10 and 21 are rejected on the ground of nonstatutory
obviousness type double patenting as being unpatentable over claims 1—17
of Kolze (US 8,094,676 B2; issued Jan. 10, 2012).1 Final Rejection 3—6.
1 “Appellant respectfully requests that the currently asserted double
patenting rejection be held in abeyance until the claimed subject matter is
otherwise deemed allowable.” Appeal Brief 14. Appellant does not present
arguments on the accuracy of the double patenting rejection. We sustain the
Examiner’s obviousness type double patenting rejection of claims 1—4, 6—10
and 21. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI2010)
(precedential) (“If an appellant fails to present arguments on a particular
issue — or, more broadly, on a particular rejection — the Board will not, as
a general matter, unilaterally review those uncontested aspects of the
2
Appeal 2015-007869
Application 13/346,071
Claims 1—4, 6—10 and 21 stand rejected under pre-AIA 35 U.S.C.
§ 102(e) as being anticipated by or, in the alternative, under pre-AIA 35
U.S.C. § 103(a) as obvious over Lee et al. (US 7,017,176 Bl; issued Mar,
21, 2006). Final Rejection 6—11.
ANALYSIS
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (filed March 09, 2015), the Reply Brief (filed
August 26, 2015), the Answer (mailed June 26, 2015) and the Final
Rejection (mailed October 7, 2014) for the respective details. We have
considered in this decision only those arguments Appellant actually raised in
the Brief.
Anticipation Rejection
Appellant contends, “Lee discloses the initialization of a modem
based on two channels that are available and different, but not that the
initialized modem has a wideband channel and a narrowband channel.”
Appeal Brief 9. We find Appellant’s argument persuasive because Lee does
not teach employing wideband and narrowband channels. See Final
Rejection 7; Answer 3. We also agree with Appellant’s arguments that
using UCD (upstream channel descriptors) parameters to define or determine
the characteristics of Lee’s channels is a possibility but is not one that is
readily available or taught by Lee. See Appeal Brief 10. We do not sustain
the Examiner’s anticipation rejection of claims 1—4, 6—10 and 21.
rejection. See, e.g., Hyatt v. Dudas, 551 F.3d 1307, 1313—14 (Fed. Cir. 2008)
(the Board may treat arguments appellant failed to make for a given ground
of rejection as waived)”).
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Appeal 2015-007869
Application 13/346,071
Obviousness Rejection
Appellant contends, “Lee’s modem initialization protocol results in
two channels that are available and different, but does not result in an
initialized modem that has a wideband channel and a narrowband
channel” and “Lee shows a complete disinterest in channel initialization that
would result in different bandwidths.” Appeal Brief 11. Appellant further
contend, “Even Lee’s description of load balancing does not implicate
initialization, but is directed to post-initialization concerns of real-time
traffic management, whereby traffic is managed based on actual traffic and
available capacity.” Appeal Brief 12 (citing Lee, column 3, lines 36—61).
We agree with Appellant’s contentions that Lee is silent in regard to
discloses two channels differentiated by the wideband or narrowband
nomenclature. However, as Appellant acknowledges, Lee discloses
initializing a modem that “results in two channels that are available and
different.” Appeal Brief 11. We disagree with Appellant’s conclusory
argument on page 11 of the Appeal Brief that Lee is “disinterested] in
channel initialization that would result in different bandwidths” because
Lee’s different channels would inherently have different bandwidths.
Appellant’s Specification discloses in paragraph 17, “according to the
present invention, a CM [cable modem] can be ranged on at least two carrier
frequencies, or channels, at least one channel is narrowband and at least one
channel is wideband.” Appellant fails to disclose any criticality associated
with the narrowband or wideband nomenclature and therefore we agree with
the Examiner’s finding that modifying Lee to include channels that are
differentiated by either a wideband or narrowband designation would be
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Appeal 2015-007869
Application 13/346,071
obvious to one of ordinary skill in the art.2 See Final Rejection 8.
Accordingly, we sustain the Examiner’s obviousness rejection of claims 1—4,
6-9 and 21.
Appellant argues that both the anticipation rejection and the
obviousness rejection of claim 10 are erroneous because Lee only mentions
a descriptor ring and it is not “inherent that data are fragmented as it is
referenced in the descriptor ring.” Appeal Brief 13 (citing Final Rejection
13). Appellant contends “Lee’s descriptor ring is no different than any other
descriptor ring - a descriptor ring is merely a circular chain of descriptor
elements, where each descriptor element points to a memory segment,
which holds the data” and “[pjointing is not fragmenting.” Appeal Brief 14.
The Examiner finds Lee’s descriptor ring renders the claimed fragmenting
step obvious because “It is well known to those skilled in the art that the data
are fragmented as it is referenced in the descriptor ring because in descriptor
ring, a packet or data is broken up into small pieces prior to being stored into
a memory or buffer.” Answer 9. We disagree with the Examiner’s finding.
Lee is silent in regard to the functionality of the descriptor ring and in view
of Appellant’s arguments, we find the Examiner has failed to establish a
prima facie case of obviousness. Accordingly, we reverse the Examiner’s
obviousness rejection of claim 10. We also reverse the Examiner’s
anticipation rejection of claim 10 because Lee does not teach the claimed
fragmenting.
2 “As our precedents make clear, 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.” KSR Int’l v. Teleflex Inc.,
550 U.S. 398,418 (2007).
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Appeal 2015-007869
Application 13/346,071
DECISION
The Examiner’s obviousness type double patenting rejection of claims
1—4, 6—10 and 21 is affirmed.
The Examiner’s anticipation rejection of claims 1—4, 6—9 and 21 is
reversed.
The Examiner’s anticipation rejection of claim 10 is reversed.
The Examiner’s obviousness rejection of claims 1—4, 6—9 and 21 is
affirmed.
The Examiner’s obviousness rejection of claim 10 is reversed.
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). See 37 C.F.R.
§ 1.136(a)(l)(v).
AFFIRMED
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