Ex Parte Lida et al

Patent Trial and Appeal Board

May 27, 2016

12348310 (P.T.A.B. May. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/348,310 0110412009
16759 7590 06/01/2016
Active Knowledge Ltd,
P.O. Box294
Kiryat Tivon, 36011
ISRAEL
FIRST NAMED INVENTOR
EyranLida
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.
Va_SameWire2 2762
EXAMINER
TAYONG, HELENEE
ART UNIT PAPER NUMBER
2631
NOTIFICATION DATE DELIVERY MODE
06/01/2016 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
following e-mail address( es):
ari@activekn.com
gil@activekn.com
taltiber@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BYRAN LIDA, NADA V BANET, and
GABY GUR COHEN
Appeal fd2014-007 692
Application 12/348,3101
Technology Center 2600
Before ERIC S. FRAHM, LARRY J. HUME, and CARLL. SILVERMAN,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1--40. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is V alens
Semiconductor Ltd. App. Br. 3.
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Application 12/348,310
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed invention relates to methods for
transmitting digital multimedia and data over the same wires. Title.
Exemplary Claims
Claims 1 and 2, reproduced below, are representative of the subject
matter on appeal (formatting added):
1. A method for bidirectional communication over
same wires, compnsmg:
transmitting, by a first transceiver, a first transmission
compnsmg
lossless high definition digital video multiplexed with
first data over a set of wires;
receiving, by the first transceiver from a second
transceiver, a second transmission comprising second data over
at least a subset of the set of wires; and
deriving, by the second transceiver, digital video timing
of the digital video based on the following parameters that are
comprised in the first transmission: video clock related data,
order in which video pixel data is received, and order in which
video synchronization data is received.
2. The method of claim 1, further comprising
receiving, by the first transceiver, before the step of
transmitting the first transmission, a first symbol associated
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Dec. 7, 2013); Examiner's Answer ("Ans.," mailed Apr. 24, 2014); Final
Office Action ("Final Act.," mailed May 21, 2013); and the original
Specification ("Spec.," filed Jan. 4, 2009). We note Appellants did not file a
Reply Brief in response to the factual findings and legal conclusions in the
Examiner's Answer.
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with a first level of protection against noise and a second
symbol associated with a second level of protection against
noise; and
successively transmitting, in the first transmission, the
first symbol using a first modulation providing the first level of
protection against noise and the second symbol using a second
modulation providing the second level of protection against
n01se.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Shahar et al. ("Shahar") US 6,987,754 B2 Jan.17, 2006
Wolf et al. ("Wolf') US 7,088,398 Bl Aug. 8, 2006
Ungerboeck et al. ("Ungerboeck") US 2007 /0076722 Al Apr. 5, 2007
Cromer et al. ("Cromer") US 2007/0237166 Al Oct. 11, 2007
Tzeng et al. ("Tzeng") US 2007 /0280282 Al Dec. 6, 2007
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1 u l;;l cu. ~ 1 u ) U ~ LVVO/ VVU7 1 '"t'"t J"""\.1 lYUU. LV, LVVO
Rejections on Appeal
RI. Claims 1, 8-16, 18, 24--28, 34, and 36-39 stand rejected under
35 U.S.C. § 103(a) as being obvious over the combination of Wolf, Tzeng,
and Cromer. Final Act. 5-12.
R2. Claims 2, 3, 7, 19, 20, 22, 29, and 30 stand rejected under 35
U.S.C. § 103(a) as being obvious over the combination of Wolf, Tzeng,
Cromer, and Shahar. Final Act. 12-15.
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R3. Claims 4---6, 17, 21, 23, and 31-3 3 stand rejected under 3 5
U.S.C. § 103(a) as being obvious over the combination of Wolf, Tzeng,
Cromer, Shahar, and Ungerboeck. Final Act. 15-17.
R4. Claims 35 and 40 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combination of Wolf, Tzeng, Cromer, and Yu. Final
Act. 17-18.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 4--11), we decide the
appeal of obviousness Rejection RI of claims 1, 8-16, 18, 24--28, 34, and
36-39 on the basis of representative claim 1. We decide the appeal of
obviousness Rejection R2 of claims 2, 3, 7, 19, 20, 22, 29, and 30 on the
basis of representative dependent claim 2.
Remaining claims 4---6, 17, 21, 23, 31-33, 35, and 40 in Rejections R3
and R4, not argued separately, stand or fall with the respective independent
claim from which they depend. 3
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv).
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Application 12/348,310
We disagree with Appellants' arguments with respect to claims 1--40,
and we incorporate herein and 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 and rebuttals set forth in the Examiner's Answer in
response to Appellants' arguments. We incorporate such findings, reasons,
and rebuttals herein by reference unless otherwise noted. However, we
highlight and address specific findings and arguments regarding claims 1
and 2 for emphasis as follows.
1. Rejection RI of Claims 1, 8-16, 18, 24--28, 34, and 36-39
Issue 1
Appellants argue (App. Br. 4--9) the Examiner's rejection of claim 1
under 35 U.S.C. § 103(a) as being obvious over the combination of Wolf,
Tzeng, and Cromer is in error. These contentions present us with the
following issue:
Did the Examiner err in combining Wolf, Tzeng, and Cromer in the
manner suggested to render claim 1 obvious under§ 103?
Analysis
Appellants contend, 11 [ t ]he combination of Wolf and Tzeng lacks
objective reason and renders the claim limitations essentially irrelevant, thus
the combination with Tzeng cannot show multiplexing of video data and
bidirectional data. 11 App. Br. 4 (emphasis omitted). Appellants additionally
contend the Examiner's stated basis for motivation to combine the references
is deficient because it does not:
[R]efer[] to the fact that Tzeng transmits an over optical fiber,
nor provides any objective reason to combine the unrelated
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teachings of the Wolf and Tzeng. As a result, it is unclear how
the teaching of Tzeng (transmitting over optical fiber) should be
combined with the teaching of Wolf (transmitting over
conductive wires) in order to result in the claimed invention. In
addition, the Applicant respectfully submits that the
combination of Tzeng with Wolf is unclear ... at least because
... Tzeng transmits over optical fiber by mere multiplexing of
the data. And transmitting over optical fiber by mere
multiplexing of the data require[ s making] essentially irrelevant
the [transmitting over a set of wires] limitation of independent
claim 1.
App. Br. 4--5.
Objective Reason to Combine Wolf and Tzeng
In KSR, the Court stated " [ t ]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results." KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007).
\X/hen a \~1ork is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill . . . . [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
Id. at 417.
Further, the relevant inquiry is whether the Examiner has set forth
"some articulated reasoning with some rational underpinning to support the
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legal conclusion of obviousness." Jn re Kahn, 441 F .3d 977, 988 (Fed. Cir.
2006) (cited with approval in KSR, 550 U.S. at 418).
With respect to the motivation to combine Wolf and Tzeng, the
Examiner finds, and we agree, it would have been obvious to one of ordinary
skill in the art "to have known to arrange to multiplex received
uncompressed video, audio, and/or control signals to handle various types of
signal[ s]. The motivation would be to protect against channel noise and
improve the reliability of data transmission." Final Act. 7; see Ans. 5.
We find this stated basis for motivation provides the "articulated
reasoning" and "rational underpinning" required by KSR.
Alleged Teaching Away by Tzeng
Appellants additionally contend "Tzeng (who transmits over fiber)
teaches against transmitting over wires" (App. Br. 5), at least because
paragraph 31 of Tzeng teaches "[p ]rior art copper wire solutions are limited
in transmitting high bandwidth, especially at distances over about 10
meters." App. Br. 6.
We are not persuaded by Appellants argument. Our reviewing court
guides:
"A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was
taken by the applicant. The degree of teaching away will of
course depend on the particular facts; in general, a reference
will teach away if it suggests that the line of development
flowing from the reference's disclosure is unlikely to be
productive of the result sought by the applicant."
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Jn re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (citing United States v.
Adams, 383 U.S. 39, 52 (1966)). However, a reference that "teaches away"
does not per se preclude a prima facie case of obviousness, but rather the
"teaching away" of the reference is a factor to be considered in determining
unobviousness. Id.
We find the Examiner has considered Tzeng's statement and
Appellants' related arguments and, by a preponderance of the evidence, has
sufficiently addressed this argument on pages 4 through 6 of the Answer. In
particular, we agree with the Examiner's finding that the combined teachings
of Wolf and Tzeng were relied upon because:
[I]t would have been obvious to one of ordinary skill in the art
at the time the invention was made not to replace the serial
link of Wolf et al with optical fibers, but to utilize the well
known technology of multiplexing information over a
medium [in Tzeng], a method by which multiple analogue
message signals or digital data streams are combined into one
signal over a shared medium. In multiplexing[,] the type of
medium does not matter[,] nor [does it matter] if wires are in a
set or sub-set.
Ans. 5.
Moreover, because the Examiner rejects the claims as obvious over
the combined teachings of Wolf, Tzeng, and Cromer, the test for
obviousness is not what the references show individually but what the
combined teachings would have suggested to one of ordinary skill in the art.
See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Accordingly, we do not find Appellants' arguments concerning the
purported "teaching away" of Tzeng to be persuasive.
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Combination Renders Cromer Inoperable for its Intended Purpose
Appellants contend "Cromer directly contradicts the claimed
invention, thus the combination of Wolf and Cromer both renders Cromer
inoperable for its intended purpose and does not result in the claimed
limitation of transmission over a subset of the initial set of wires. App. Br. 8
(emphasis omitted). Appellants further contend, "Cromer cannot be
combined with Wolf and Tzeng in order to result in the claimed limitation of
transmission over at least a subset of the initial set of wires, because Cromer
changes the subset of wires to a second subset that differ from the initial
subset." Id.
In response to Appellants' arguments, the Examiner finds:
The . . . Cromer reference discloses communication between
devices over a physical medium. In fig. 3, Cromer discloses a
method of communicating between first and second devices
connected by a network media comprising a set of wires. As
disclosed, an attempt to communicate between the network
devices over an initial subset of the network media wires is
shown. If the communication fails, a subsequent subset of
media wires is selected. The wires of this subsequent subset
differ from the wires of the initial subset. If the attempted
communication succeeds, the current subset of network media
wires is used as the media over which subsequent network data
is transmitted.
Ans. 7 (citing Cromer Abstract, Fig. 3, claim 1). The Examiner further
provides a statement of motivation to use Cromer's teachings in conjunction
with the teachings of Wolf and Tzeng. Ans. 7-8.
We agree with the Examiner's findings concerning the reference
combination. Contrary to Appellants' argument that the combination would
have changed the references' principle of operation, it is well settled that "a
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determination of obviousness based on teachings from multiple references
does not require an actual, physical substitution of elements." In re Mouttet,
686 F.3d 1322, 1332 (Fed. Cir. 2012) (citations omitted). Nor is the test for
obviousness whether a secondary reference's features can be bodily
incorporated into the structure of the primary reference. See In re Keller,
642 F.2d 413, 425 (CCPA 1981). "Combining the teachings of references
does not involve an ability to combine their specific structures." In re
Nievelt, 482 F.2d 965, 968 (CCPA 1973).
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
limitations of claim 1, nor do we find error in the Examiner's resulting legal
conclusion of obviousness. Therefore, we sustain the Examiner's
obviousness rejection of independent claim 1, and grouped claims 8-16, 18,
24--28; 34; and 36-39 which fall therewith. See Claim Grouping; supra.
2. Rejection R2 of Claims 2, 3, 7, 19, 20, 22, 29, and 30
Issue 2
Appellants argue (App. Br. 10-11) the Examiner's rejection of claim 2
under 35 U.S.C. § 103(a) as being obvious over the combination of Wolf,
Tzeng, Cromer, and Shahar is in error. These contentions present us with
the following issue:
Did the Examiner err in combining Wolf, Tzeng, Cromer, and Shahar
in the manner suggested to render claim 2 obvious under § 103 because the
wireless system of Shahar cannot be combined with the wired system of
Wolf?
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Analysis
Appellants contend, inter alia, "it is impossible to combine the
wireless system of Shahar with the wired system of Wolf 'using known and
obvious standards within the scope of digital communication systems', as
argued in the Final Office Action .... " App. Br. 10.4 Appellants further
argue, "[i]t is clear that there is no objective reason to combine the wireless
system of Shahar with the wired systems of Wolf, Tzeng, and Cromer, and
the Examiner did not provide such." App. Br. 11.
We specifically note Appellants' challenge to the references
individually is not convincing of error in the Examiner's position because all
of the features of the secondary reference need not be bodily incorporated
into the primary reference, but consideration should be given to what the
combined teachings, knowledge of one of ordinary skill in the art, and the
nature of the problem to be solved as a whole would have suggested to those
of ordinary skill in the art (see In re Keller, 642 F.2d at 425). Furthermore,
the artisan is not compelled to blindly follow the teaching of one prior art
reference over the other without the exercise of independent judgment (see
Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984)).
The Examiner provides detailed discussion regarding the teachings
and suggestions of each of the Wolf, Tzeng, Cromer, and Shahar references
(Ans. 9-10), and also provides detailed reasoning regarding the motivation
4 We note the Board, as well as Examiners, make findings of fact, reach
conclusions of law, and make decisions regarding the exercise of discretion,
but do not make "arguments " "contentions " "admissions " or "concessions "
' ' ' '
because neither the Examiner nor the Board are parties in any ex parte
proceeding.
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to combine the references in the manner suggested, which we incorporate
herein and adopt as our own. Ans. 10-11.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
limitations of claim 2, nor do we find error in the Examiner's resulting legal
conclusion of obviousness. Therefore, we sustain the Examiner's
obviousness rejection of dependent claim 2, and grouped claims 3, 7, 19, 20,
22, 29, and 30 which fall therewith. See Claim Grouping, supra.
3. Rejections R3 and R4 of Claims 4---6, 17, 21, 23, 31-33, 35, and 40
In view of the lack of any substantive or separate arguments directed
to obviousness Rejections R3 andR4 of claims 4---6, 17, 21, 23, 31-33, 35,
and 40 under § 103 (see App. Br. 4--11 ), we sustain the Examiner's
rejections of these claims. Arguments not made are waived.
CONCLUSION
The Examiner did not err with respect to obviousness Rejections RI
through R4 of claims 1--40 under 35 U.S.C. § 103(a) over the cited prior art
combinations of record, and we sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1--40.
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
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