Ex Parte LeeDownload PDFPatent Trial and Appeal BoardFeb 15, 201712066553 (P.T.A.B. Feb. 15, 2017) 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. 432-0003 1693 EXAMINER FOX, JOSEPH PATRICK ART UNIT PAPER NUMBER 2694 MAIL DATE DELIVERY MODE 12/066,553 03/12/2008 60803 7590 02/15/2017 Paratus Law Group, PLLC 1765 Greensboro Station Place Suite 320 Tysons Corner, VA 22102 Yong-Jae Lee 02/15/2017 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 YONG-JAE LEE Appeal 2015-004958 Application 12/066,553 Technology Center 2600 Before JOSEPH L. DIXON, JOHNNY A. KUMAR, and CARL L. SILVERMAN, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2015-004958 Application 12/066,553 Appellant filed a Request for Rehearing under 37 C.F.R. § 41.52(a)(1) (“Request”) on December 20, 2016, for reconsideration of our Decision mailed October 20, 2016 (“Decision”).1 The Decision affirmed the Examiner’s rejections of claims 16, 18—23, 27, and 49. We reconsider our decision in light of Appellant’s Request for Rehearing, but we decline to change the decision. We find Appellant’s arguments unpersuasive for the reasons given in our prior Decision. For the reasons given in the Final Rejection and Examiner’s Answer, we agree with the Examiner’s findings (Final Act. 2— 16; Ans. 3—10) that (1) claims 16, 18—21, 27, and 49 are obvious under 35 U.S.C. § 103(a) over Ogawa and Suzuki; and (2) claims 22 and 23 are obvious under 35 U.S.C. § 103(a) over Ogawa, Suzuki, and Lofstrom. We highlight the following for emphasis. Appellant contends: 1. The Patent and Trial Appeal Board did not consider “wherein the clock signal is embedded within the data signal and has a different amplitude than the data signal, and to separate the clock signal from the data signal using amplitude difference of the received signal, and to perform sampling of the data signal from the received signal using the separated clock signal to output the data signal,” as recited by claim 16. Request 4 (emphasis omitted). 2. The Patent and Trial Appeal Board failed to consider the fact that the “clock signal” recited by Appellant’s claim 16 is explicitly 1 “The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board.” 37 C.F.R. § 41.52(a)(1). 2 Appeal 2015-004958 Application 12/066,553 recited to have a different amplitude than the data signal, and also, is separated from the data signal using amplitude difference of the received signal and sampling of the data signal is performed from the received signal using the separated clock signal to output the data signal. Request 4. 3. The Patent and Trial Appeal Board did not confirm whether the combination of the prior references to Ogawa and Suzuki contains a teaching or suggestion of such a “data signal” with the characteristics as explicitly recited by claim 16, and in fact, Ogawa in view of Suzuki clearly lacks teaching or suggestion of such a “data signal” as Appellant’s claim recites. Request 5. 4. The Patent and Trial Appeal Board refused to consider whether the prior art teaches or suggests “that such a clock signal to be associated is one that has been extracted from being embedded within the data signal.” Request 5 (citing Decision 3). 5. Suzuki’s disclosure clearly explains that a clock pulse is not being separated based on amplitude difference, but predetermined data pattern, and it is asserted by Suzuki’s Figs. 3A to 3E that there are no signals embedded in the SA, SEC, E nor RD having different amplitude in CRC area. Request 6—11. According to Appellant’s contentions 1 through 4 above, our prior Decision did not consider Appellant’s arguments presented in the Appeal Brief for claim 16. Request 4—5. Our Decision is based upon the factual findings stated by the Examiner in the Final Office Action of May 20, 2014, and the Answer mailed January 28, 2015. We disagree with Appellant’s contentions because 3 Appeal 2015-004958 Application 12/066,553 it misstates the facts of record. Contrary to Appellant’s contention, this Board did not merely presume that the Examiner is correct. Rather, as the panel stated: We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellant’s Appeal Brief. Decision 2 (emphasis added). Adoption of the Examiner’s findings and reasons can form an adequate record to permit judicial review. In Hyatt, the Federal Circuit explicitly pointed out that “[t]he Board adopted the examiner’s findings” and “[t]he Board adopted the examiner’s analysis.” In re Hyatt, 211 F.3d 1367, 1370—71 (Fed. Cir. 2000). The court in Hyatt then concluded that “the Board addressed the limitations of each claim in a manner adequate to permit judicial review” and the court “decline[d] the invitation to vacate the Board’s decision on the ground that [the Board] failed to explain its reasoning sufficiently to enable us to review its rulings.” Id. at 1371. Further, Appellant’s attention is directed to the court’s Rule 36 decision in In re Carnahan, 440 F. App’x 927 (Fed. Cir. 2011) (nonprecedential), where the Federal Circuit affirmed the Board decision in Ex parte Carnahan, Appeal 2010-011437 (BPAI Jan. 13, 2011), which “incorporate[d] ... by reference” the Examiner’s Answer {id. at 2). Appellant’s contentions 1 through 4 are restatements of the arguments presented in Appellant’s briefing as to alleged errors in the Examiner’s fact finding. We find that the Appellant’s restatements of arguments are addressed to the Examiner’s application of the references rather than to the points believed to have been misapprehended or overlooked by the Board. 4 Appeal 2015-004958 Application 12/066,553 Appellants’ arguments that are not newly raised in the Request were addressed in our Decision (Decision 2-4); there is no need to repeat our findings and conclusions here. Based on the Examiner’s claim construction, we agreed with findings and conclusions made by the Examiner (see Ans. 4— 7). (Decision 3). As to contention 5 that relates to the contentions provided in the Appeal Brief and the Reply Brief2, we have reconsidered, but do not change, our Decision as we see no error in the Examiner’s findings that in Suzuki the extrapolated clock pulse CP is “a pulse signal which represents the timing for reading the data.” Thus, the amplitude of the clock signal is distinct from the data signal, in order for PLL circuit to separate the clock pulse CP from the data pulse DP. Furthermore, Signal SEN is not only for controlling the gain of AGC, it is also provided to op-amp 29 which then goes to comparator 29 for modifying the read data RD. Ans. 7. Appellant has failed to show any matter that was misapprehended or overlooked by the Board in rendering this Decision. We decline to change our prior Decision. 2 We note that a “Rehearing” is limited to matters overlooked or misapprehended by the Board in rendering the initial decision. See 37 C.F.R. § 41.52(a)(1). To the extent Appellant presents supplemental or new arguments in the Request for Rehearing at Request 6-11, such arguments at this stage of the prosecution are untimely and will not be considered unless good cause is shown. See id. Belated arguments are technically waived. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not.”). This is equally applicable to belated arguments in the Request for Rehearing. We decline to entertain such arguments at this late stage. 5 Appeal 2015-004958 Application 12/066,553 CONCLUSION In view of the foregoing discussion, we grant Appellant’s Request for Rehearing to the extent of reconsidering our decision, but we deny Appellant’s request with respect to making any change thereto. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). REHEARING DENIED 6 Copy with citationCopy as parenthetical citation