Ex Parte Lee

Patent Trial and Appeal Board

Sep 20, 2016

12577526 (P.T.A.B. Sep. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/577,526 10/12/2009
49579 7590 09/21/2016
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK A VENUE, N.W.
WASHINGTON, DC 20005
Robert J. LEE
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1875.3480002 4452
EXAMINER
SAMUEL, DEW ANDA A
ART UNIT PAPER NUMBER
2464
MAILDATE DELIVERY MODE
09/21/2016 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 ROBERT J. LEE
Appeal2014-007019
Application 12/577,526
Technology Center 2400
Before CAROLYN D. THOMAS, JAMES R. HUGHES, and
MONICA S. ULLAGADDI, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's non-final decision1 rejecting claims 1-20, which are all the
claims pending in the present patent application. Non-Final Act. 1-2; App.
Br. 1, 4.2 We have jurisdiction under 35 U.S.C. § 6(b).
1 The Examiner marks the Office Action mailed July 17, 2013 (hereinafter
Non-Final Office Action (Non-Final Rejection) ("Non-Final Act.")) as being
both final and non-final. The status of the action is moot in view of
Appellant's appeal.
2 We also refer to Appellant's Specification ("Spec."), filed Oct. 12, 2009
(claiming benefit of U.S. Provisional Application No. 60/439,461 (filed Jan.
13, 2003)); Appeal Brief ("App. Br.") filed Oct. 17, 2013; and Reply Brief
Appeal2014-007019
Application 12/577,526
We atlirm-in-part.
Appellant's Invention
The invention at issue concerns serial packet sync encoders and
decoders (apparatuses) and systems for synchronizing bit-rate sampled data
transmissions in a communications network. The system utilizes a serial
packet sync encoder and transmitter that encodes a serial packet sync
datastream, which includes a packet sync vector and a preamb 1 e, and
transmits the serial packet sync datastream by synchronously shifting each
bit of the serial packet sync datastream out of said serial packet sync
transmitter. The decoder includes a receiver, which receives the serial
packet sync datastream, and a comparator, which compares the serial packet
sync datastream to determine if the preamble therein matches a
predetermined preamble. Spec. i-fi-1 2, 6-7; Abstract.
Representative Claims
Independent claims 1 and 11, reproduced below with the key disputed
limitations emphasized, further illustrate the invention:
1. A system, comprising:
a media access controller that asserts a packet sync vector
comprising one or more bits in response to receiving a grant;
and
a serial packet sync encoder that encodes a serial packet
sync datastream, said serial packet sync datastream comprised
of said packet sync vector and a preamble, wherein said serial
packet sync encoder comprises a serial packet sync transmitter
("Reply Br.") filed June 2, 2014. We further refer to the Examiner's Answer
("Ans.") mailed Apr. 2, 2014, and the Non-Final Office Action ("Non-Final
Act.") mailed July 17, 2013.
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Application 12/577,526
that transmits said serial packet sync datastream by
synchronously shifting each bit of said serial packet sync
datastream out of said serial packet sync transmitter.
11. A serial packet sync decoder for receiving
indication of an event, comprising:
a serial packet sync receiver that synchronously receives
a serial packet sync datastream, the serial packet sync
datastream comprising a preamble, and a packet sync vector
that is consecutive to the preamble;
a preamble comparator that compares said received
serial packet sync datastream to determine if the preamble of
said received serial packet sync datastream matches a
predetermined preamble; and
a holding register for holding the packet sync vector
included in said serial packet sync datastream.
Rejections on Appeal
1. The Examiner rejects claims 1, 3, 6, and 11 on the ground of
nonstatutory obviousness-type double patenting over claims 1, 4, 5, and l 0
of Lee (US 7,602,816 B2, issued Oct. 13, 2009). 3
2. The Examiner rejects claims 1, 3, 4, 7, 8, and 10 under
35 U.S.C. § 103(a) as being unpatentable over Trachewsky (US
2001/0055311 Al, pub. Dec. 27, 2001) and Kline et al. (US 5,068,880,
issued Nov. 26, 1991).
3 The double patenting rejection is not addressed or contested by Appellant.
Accordingly, we summarily affirm the double patenting rejection. The
double patenting rejection includes all the independent claims (claims 1 and
11 ), but does not cover several dependent claims (in particular claims 2, 4, 5,
and 7-10).
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Application 12/577,526
3. The Examiner rejects claim 2 under 35 U.S.C. § 103(a) as being
unpatentable over Trachewsky, Kline, and Kumar et al. (US 5,970,069,
issued Oct. 19, 1999).
4. The Examiner rejects claim 5 under 35 U.S.C. § 103(a) as being
unpatentable over Trachewsky, Kline, and Rabenko et al. (US 7,801, 176 B2,
issued Sept. 21, 2010 (filed Oct. 21, 2005, claiming benefit of US
60/119,872, filed Feb. 12, 1999 and US 60/136,684, filed May 28, 1999)).
5. The Examiner rejects claim 6 under 35 U.S.C. § 103(a) as being
unpatentable over Trachewsky, Kline, and Eng (US 7, 194,009 B2, issued
Mar. 20, 2007 (filed Apr. 15, 2002)).
6. The Examiner rejects claim 9 under 35 U.S.C. § 103(a) as being
unpatentable over Trachewsky, Kline, and Mannette et al. (US 6,975,652
Bl, issued Dec. 13, 2005 (filed Oct. 18, 2000)).
7. The Examiner rejects claims 11, 15, 17, and 19 under 35 U.S.C.
§ 103(a) as being unpatentable over Gordon (US 3,510,777, issued May 5,
1970) and Tanahashi (US 5,550,831, issued Aug. 27, 1996).
8. The Examiner rejects claims 12-14, 16, and 18 under 35 U.S.C.
§ 103(a) as being unpatentable over Gordon, Tanahashi, and Eng.
9. The Examiner rejects claim 20 under 35 U.S.C. § 103(a) as
being unpatentable over Gordon, Tanahashi, and Rabenko.
ISSUES
Based upon our review of the administrative record, Appellant's
contentions, and the Examiner's findings and conclusions, the pivotal issues
before us follow:
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Application 12/577,526
1. Does the Examiner err in finding that Trachewsky and Kline
collectively would have taught or suggested the "serial packet sync encoder
that encodes a serial packet sync datastream ... comprised of said packet
sync vector and a preamble" and that the "serial packet sync encoder
comprises a serial packet sync transmitter that transmits said serial packet
sync datastream by synchronously shifting each bit of said serial packet sync
datastream out of said serial packet sync transmitter," as recited in
Appellant's claim 1?
2. Does the Examiner err in finding that Gordon and Tanahashi
collectively would have taught or suggested a "serial packet sync decoder"
comprising "a serial packet sync receiver that synchronously receives a
serial packet sync datastream ... comprising a preamble, and a packet sync
vector that is consecutive to the preamble" and "a preamble comparator that
compares said received serial packet sync datastream to determine if the
preamble of said received serial packet sync datastream matches a
predetermined preamble," as recited in Appellant's claim 11?
ANALYSIS
The 35 U.S.C. § 103(a) Rejection of Claims 1, 3, 4, 7, 8, and 10
Appellant does not separately argue dependent claims 3, 4, 7, 8, and
10. App. Br. 8-12. Accordingly, we select independent claim 1 as
representative of Appellant's arguments and grouping with respect to claims
1, 3, 4, 7, 8, and 10. See 37 C.F.R. § 41.37(c)(l)(iv).
Appellant contends that Trachewsky and Kline do not teach the
disputed features of representative claim 1. App. Br. 8-12; Reply Br. 2-5.
Specifically, Appellant contends that Trachewsky does not teach the recited
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serial packet sync encoder or "provide any basis to conclude what type of
encoder Trachewsky' s constellation encoder 530 is" (Reply Br. 5 (emphasis
omitted). See App. Br. 9-10; Reply Br. 4--5. We find Appellant's
contentions persuasive of Examiner error.
We agree with Appellant that Trachewsky, cited by the Examiner as
teaching a serial encoder (Ans. 4--5 (citing Trachewsky i-f 142)), does not
describe the type of encoding (e.g., serial or parallel) the constellation
encoder performs (App. Br. 9-10). The Examiner relies on Kline to teach a
serial transmitter (Non-Final Act. 9-10). Even if we were to combine
Trachewsky and Kline as proffered by the Examiner, the Examiner does not
sufficiently explain how the encoders (encoding techniques) of Trachewsky
and Kline could be combined to provide Kline's serial transmitter the recited
serial packet sync datastream.
Consequently, we are constrained by the record before us to find that
the Examiner erred in finding Trachewsky and Kline teach the disputed
limitations of Appellant's claim 1. Dependent claims 3, 4, 7, 8, and 10, not
separately argued (supra), depend on claim 1. Thus, we reverse the
Examiner's obviousness rejection of claims 1, 3, 4, 7, 8, and 10.
The 35 U.S.C. § 103(a) Rejection of Claims 2, 5, 6, and 9
Appellant does not separately argue dependent claims 2, 5, 6, and 9.
App. Br. 8-12. But, the Examiner has not shown that the additional
references - Kumar, Rabenko, Eng, and Mannette overcome the
deficiencies of Trachewsky and Kline (supra). See Ans. 2-7; Non-Final
Act. 12-15. Consequently, we are constrained by the record before us to
find that the Examiner erred in finding Trachewsky and Kline (in
combination with Kumar, Rabenko, Eng, or Mannette) teach the disputed
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limitations of Appellant's claims 2, 5, 6, and 9. Thus, we reverse the
Examiner's obviousness rejections of claims 2, 5, 6, and 9.
The 35 U.S.C. § 103(a) Rejection of Claims 11, 15, 17, and 19
Appellant does not separately argue dependent claims 15, 17, and 19.
App. Br. 14. Accordingly, we select independent claim 11 as representative
of Appellant's arguments and grouping with respect to claims 11, 15, 17,
and 19. See 37 C.F.R. § 41.37(c)(l)(iv).
Appellant contends that Gordon and Tanahashi do not teach the
disputed features of representative claim 11. App. Br. 12-14; Reply Br. 5-7.
Specifically, Appellant contends that Tanahashi does not teach the recited
preamble comparator or "'the preamble of said received serial packet sync
datastream' and a 'predetermined preamble,' as recited in independent claim
11" (App. Br. 6). See App. Br. 12-14; Reply Br. 5-7. We find Appellant's
contentions unpersuasive of Examiner error.
We concur with and adopt the findings and conclusions reached by
the Examiner. Non-Final Act. 15-24; Ans. 5-7. We provide the following
for emphasis.
We give claim language its "broadest reasonable interpretation
consistent with the [S]pecification" in accordance with our mandate that
"claim language should be read in light of the [S]pecification as it would be
interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations and internal quotation
marks omitted). We broadly but reasonably construe "preamble" as an
introductory segment of data or bit sequence. Appellant does not argue and
Appellant's Specification does not explicitly define a preamble in a serial
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packet sync datastream, but refers to the preamble as a "unique preamble bit
sequence." Spec. i-f 6 (see Spec. i-f 44; Fig. 4).
As explained by the Examiner, Tanahashi describes a data comparator
that compares segments of data and/or a sequence of bits. Ans. 5-7; Non-
Final Act. 16-1 7. In particular Tanahashi describes a comparator comparing
a unique word of a preamble extracted from a main signal data stream. Ans.
5-7; Non-Final Act. 16-17 (citing Tanahashi, col. 3, 1. 60-col. 4. 1. 14; col.
4, 1. 47---col. 5, 1. 25; col. 5, 11. 35-56). Appellant argues that Tanahashi
"compares a demultiplexed signal, but not the 'received serial packet sync
datastream,' as required by independent claim 11" (App. Br. 13), but this
argument is not commensurate with the scope of Appellant's claim. Nothing
in the claim language of claim 11 excludes additional operations such as
multiplexing and demultiplexing of a serial data stream. Further, the
Examiner relies on Gordon, not Tanahashi for the receiving unit (receiver)
and receiving the serial data stream (serial packet sync datastream). Non-
Final Act. 15-1 7. Appellant does not contest the Examiner's findings with
respect to Gordon or sufficiently demonstrate why Gordon and Tanahashi
would not have been combined by one of ordinary skill in the art.
Thus, Appellant does not persuade us of error in the Examiner's
obviousness rejection of representative independent claim 11. Accordingly,
we affirm the Examiner's obviousness rejection of representative claim 11
and dependent claims 15, 17, and 19, not separately argued with particularity
(supra).
The 35 U.S.C. § 103(a) Rejection of Claims 12-14, 16, 18, and 20
Appellant does not separately argue dependent claims 12-14, 16, 18,
and 20 or their respective grounds of rejection. App. Br. 14. Dependent
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Application 12/577,526
claims 12-14, 16, 18, and 20 and fall with claim 11. Thus, for the same
reasons as claim 11 (supra), we affirm the Examiner's obviousness
rejections of claims 12-14, 16, 18, and 20.
CONCLUSIONS
We summarily affirm the double patenting rejection of claims 1, 3, 6,
and 11.
Appellant has shown that the Examiner erred in rejecting claims 1-10
under 35 U.S.C. § 103(a).
Appellant has not shown that the Examiner erred in rejecting claims
11-20 under 35 U.S.C. § 103(a).
DECISION
We reverse the Examiner's 35 U.S.C. § 103(a) rejections of claims 1-
10; we affirm the Examiner's double patenting rejection of claims 1, 3, 6,
and 11; and we affirm the Examiner's 35 U.S.C. § 103(a) rejections of 11-
20.
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).
AFFIRMED-IN-PART
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