Ex parte LI

Board of Patent Appeals and Interferences

Apr 28, 1999

08352190 (B.P.A.I. Apr. 28, 1999)

Application for patent filed December 01, 1994. 1
According to the appellant, this application is a continuation
of Application 08/185,177, filed January 24, 1994, which is a
continuation of Application 08/018,388, filed February 17,
1993.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte MING-CHIANG LI

_____________
Appeal No. 97-3561
Application 08/352,1901
______________
ON BRIEF
_______________
Before THOMAS, JERRY SMITH and FLEMING, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 97-3561
Application No. 08/352,190
2
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 1-20, which constitute
all the claims in the application. An amendment after final
rejection was filed on August 16, 1996 but was denied entry by
the examiner.
The invention pertains to an interferoceiver and a
method for operating an interferoceiver. More particularly,
an RF signal train generator is provided with one or more RF
delay loops. The RF delay loops store received RF signals,
generate replicas of the stored signals, and align and vary
the alignments of the regenerated replicas.
Representative claim 1 is reproduced as follows:
1. An interferoceiver comprising an RF signal train
generator; wherein the RF signal train generator comprises one
or more RF delay loops; wherein the RF signal train generator
further comprises means for receiving RF signals from a
source; wherein the RF delay loops comprise means for storing
received RF signals, for regenerating replicas of stored RF
signals, for aligning and varying alignments of regenerated
replicas.
The examiner relies on the following references:
Weverka 5,144,468 Sep. 01,
1992
Kiasaleh 5,319,438 June 07,
1994
Lipsky 5,331,453 July 19,
Appeal No. 97-3561
Application No. 08/352,190
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1994
Shaw 5,442,720 Aug. 15,
1995
(filed Mar. 21,
1994)
Claims 1-20 stand rejected under 35 U.S.C. § 112,
first paragraph, as being based on an inadequate disclosure.
Claims
1, 9 and 17 also stand rejected under 35 U.S.C. § 102 as being
anticipated by the disclosures of Weverka, Kiasaleh or Lipsky.
Finally, claims 2-8, 10-16 and 18-20 also stand rejected under
35 U.S.C. § 103. As evidence of obviousness the examiner
offers Weverka, Kiasaleh or Lipsky in view of Shaw.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner, the arguments
in support of the rejections and the evidence of anticipation
and obviousness relied upon by the examiner as support for the
prior art rejections. We have, likewise, reviewed and taken
Appeal No. 97-3561
Application No. 08/352,190
4
into consideration, in reaching our decision, the appellant’s
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejections and arguments in
rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record
before us, that the disclosure in this application describes
the claimed invention in a manner which complies with the
requirements of
35 U.S.C. § 112. We are also of the view that the inventions
of claims 1, 9 and 17 are not fully met by any of the
disclosures of Weverka, Kiasaleh or Lipsky. We are further of
the view that the collective evidence relied upon and the
level of skill in the particular art would not have suggested
to one of ordinary skill in the art the obviousness of the
invention as set forth in claims 2-8, 10-16 and 18-20.
Accordingly, we reverse.
We consider first the rejection of claims 1-20 under
the first paragraph of 35 U.S.C. § 112. The final rejection
indicated that the disclosure was enabling only for claims
limited to an RF signal train generator and interferoceiver
which is optical fiber based [page 2]. In the answer the
Appeal No. 97-3561
Application No. 08/352,190
5
examiner observes that “Appellant has failed to point out
exactly where in the original specification provides support
for a non-optical fiber based RF signal train generator and
interferoceiver”
[page 5].
We note that the claims do not recite that the RF
generator and interferoceiver are non-optical fiber based, but
rather, recite these elements generically, that is the claims
include within their scope both optical fiber based elements
and non-optical fiber based elements. Appellant has disclosed
as the preferred embodiment an optical fiber based system.
The examiner has not questioned that this more specific
embodiment is adequately disclosed.
The examiner’s rejection is tantamount to a rejection of these
claims on undue breadth.
With respect to the examiner’s request that appellant
point to support in the disclosure for a non-optical fiber
based system, appellant points to page 15 of the specification
wherein it is stated:
As the technology evolves, instead of
optical fibers, new means may become
available to us for designing new
Appeal No. 97-3561
Application No. 08/352,190
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variations of RF signal train
generators and interferoceivers. Thus
the scope of the invention should be
determined by appended claims and
their legal equivalent, rather [than]
by the examples presented here.
The examiner has not responded to the merits of appellant’s
position in relying on this portion of the specification for
disclosure support under 35 U.S.C. § 112.
We will not sustain this rejection. The examiner
does not contest that the disclosure satisfies 35 U.S.C. § 112
for the invention using optical fiber based elements. We are
aware of no requirement that forces appellant to narrow his
claimed invention to be commensurate in scope with the
preferred embodiment. In fact, the general rule is that an
inventor can claim his invention as broadly as the prior art
permits. Additionally, the examiner’s only rationale in
support of this rejection is rebutted by the specification as
noted by appellant in the reply brief. The examiner has
offered no response to appellant’s reply brief, and we find
appellant’s position to be legally and factually correct.
We now consider the rejection of claims 1, 9 and 17
under 35 U.S.C. § 102 as anticipated by the disclosure of
Appeal No. 97-3561
Application No. 08/352,190
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Weverka, Kiasaleh or Lipsky. Anticipation is established only
when a single prior art reference discloses, expressly or
under the principles of inherency, each and every element of a
claimed invention as well as disclosing structure which is
capable of performing the recited functional limitations. RCA
Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440,
1444, 221 USPQ 385, 388 (Fed. Cir.); cert. dismissed, 468 U.S.
1228 (1984); W.L. Gore and Associates, Inc. v. Garlock, Inc.,
721 F.2d 1540, 1554, 220 USPQ 303, 313 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984).
The examiner never reads independent claims 1, 9 and
17 on the prior art references so that we are not certain how
the examiner finds anticipation. The initial rejection simply
stated that each of the applied references disclosed an
interferometer having an optical fiber, delay loops and means
for generating replicas of the delayed signals. The final
rejection observed that appellant’s arguments were not
commensurate with the scope of the claims, and the examiner
argued that each of the references show an interferoceiver
comprising optical fiber loops. The examiner’s answer added
nothing to the record with respect to the rejections under 35
Appeal No. 97-3561
Application No. 08/352,190
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U.S.C. § 102.
Appellant’s initial appeal brief did not respond to
any prior art rejections. A reply brief was filed by
appellant which was entered by the examiner with a statement
that “no further response by the examiner is deemed necessary”
[Paper No. 14]. The reply brief contains arguments by
appellant as to why the disclosures of Weverka, Kiasaleh and
Lipsky do not anticipate the claimed invention.
With respect to Weverka, appellant argues that there
is no apparatus to regenerate replicas from a signal pulse.
Appellant also argues that the dither means of Weverka are not
RF delay loops. Finally, appellant argues that there is no
structure in Weverka for aligning and varying the alignments
of regenerated replicas as recited in the claims. With
respect to Kiasaleh, appellant argues that there is no
apparatus to regenerate replicas from a signal pulse.
Appellant also argues that Kiasaleh’s phase shifting delay
loop does not have the alignment capabilities recited in the
claims. With respect to Lipsky, appellant argues that Lipsky
does not teach or suggest any delay loops or anything
resembling a delay loop. Appellant also argues that there is
Appeal No. 97-3561
Application No. 08/352,190
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no structure in Lipsky for aligning and varying the alignments
of regenerated replicas as recited in the claims. The
examiner has not responded to any of these arguments made by
appellant in the reply brief.
We will not sustain any of the examiner’s rejections
under 35 U.S.C. § 102. The examiner’s rejection seems to
assert that any optical interferometer in which two paths, one
having a delay and one not, are compared to each other meets
the claimed invention. We do not agree. The path delays in
the applied prior art are not capable of storing received RF
signals, regenerating replicas of these signals, and aligning
and varying the alignment of regenerated replicas. At best
the applied prior art shifts signals based on a comparison
between an undelayed signal and a delayed signal, but there is
no disclosure of varying the alignments of the regenerated
replicas. Appellant has presented compelling analysis that
the claimed delay loops are not disclosed by Weverka, Kiasaleh
or Lipsky, and the examiner has offered nothing in rebuttal.
Therefore, we do not sustain this rejection of the claims.
Claims 2-8, 10-16 and 18-20 have been rejected under
Appeal No. 97-3561
Application No. 08/352,190
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35 U.S.C. § 103 as being unpatentable over Weverka, Kiasaleh
or Lipsky in view of Shaw. Weverka, Kiasaleh and Lipsky are
relied on in the same manner as in the rejection under Section
102. For reasons discussed above, the examiner’s findings as
to what is disclosed by these references is incorrect. Shaw
does not overcome the deficiencies in each of the primary
references. There are differences between the claimed
invention and the applied prior art which have not been
addressed by the examiner. Therefore, the examiner has failed
to establish a prima facie case of obviousness. Accordingly,
we do not sustain the examiner’s rejection of these claims.
Appeal No. 97-3561
Application No. 08/352,190
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In summary, we have not sustained any of the
examiner’s rejections of the claims. Therefore, the decision
of the examiner rejecting claims 1-20 is reversed.
REVERSED
)
James D. Thomas )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Jerry Smith )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Michael R. Fleming )
Administrative Patent Judge )
dm
Appeal No. 97-3561
Application No. 08/352,190
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Ming- Chiang Li
11415 Bayard Drive
Mitchellville MD 20721