Ex Parte Ling et alDownload PDFPatent Trial and Appeal BoardAug 7, 201814918793 (P.T.A.B. Aug. 7, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/918,793 10/21/2015 23446 7590 08/09/2018 MCANDREWS HELD & MALLOY, LTD 500 WEST MADISON STREET SUITE 3400 CHICAGO, IL 60661 FIRST NAMED INVENTOR Curtis Ling 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. 28536US02 2275 EXAMINER CADEAU, WEDNEL ART UNIT PAPER NUMBER 2632 NOTIFICATION DATE DELIVERY MODE 08/09/2018 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): mhmpto@mcandrews-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRIS LING and SHENG YE 1 Appeal2018-001786 Application 14/918, 793 Technology Center 2600 Before THU A. DANG, ERIC S. FRAHM, and CARL L. SILVERMAN, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 According to Appellants, the real party in interest is MaxLinear, Inc. App. Br. 1. Appeal2018-001786 Application 14/918,793 Claim 1, reproduced below, is representative of the subject matter on appeal (bracketed letter and emphasis added): 1. A system comprising: local oscillator circuitry operable to generate a local oscillator signal; phase noise determination circuitry operable to introduce a frequency-dependent phase shift to said local oscillator signal to generate a phase-shifted version of said local oscillator signal; mixing circuitry operable to mix said local oscillator signal and said phase-shifted version of said local oscillator to generate a baseband signal having an amplitude proportional to a phase difference between said local oscillator signal and said phase-shifted version of said local oscillator signal; and [A] digital signal processing circuity operable to: process said baseband signal to determine a phase error of said local oscillator signal; and perform signal compensation based on said determined phase error. We have reviewed Appellants' arguments in the Appeal Brief (App. Br. 3-13) and the Reply Brief (Reply Br. 2--4) that the Examiner's rejections of: (1) claims 1, 11, and 17 under 35 U.S.C. § I03(a) as being unpatentable over Booth (US 2002/0196864 Al; published Dec. 26, 2002) and Kasperkovitz (US 4,426,735; issued Jan. 17, 1984) (Final Act. 7-9); (2) claims 2-7, 12, and 18-20 as being unpatentable over Booth, Kasperkovitz, and Anthony (US 3,653,047; issued Mar. 28, 1972) (Final Act. 9-11); and 2 Appeal2018-001786 Application 14/918,793 (3) claims 8 and 13-16 as being unpatentable over Booth, Kasperkovitz, and Seendripu (US 2005/0239428 Al; published Oct. 27, 2005) (Final Act. 11-12), are in error, and the Examiner's response to Appellants' arguments in the Appeal Brief (Ans. 2-6). Based on the record before us, we agree with Appellants' contentions (App. Br. 7; Reply Br. 3) that Booth's amplifier 107 cannot be the recited "phase noise determination circuitry" because Booth discloses correcting for distortion in an amplifier (107; see ,r,r 5, 16), not a local oscillator as claimed. As a result, we agree with Appellants that the sections of Booth, and thus the combination of Booth and Kasperkovitz, as relied upon by the Examiner, fails to teach or suggest the "digital signal processing circuitry" set forth in claims 1 and 11, and/ or the "digital circuitry" set forth in claim 17. In addition, the Examiner relies on two different embodiments of Booth (Fig. 1, ,r,r 14, 16-31; and Fig. 2, ,r,r 15, 32-37) in the base rejection of Booth and Kasperkovitz, without explaining how the two embodiments would be modified/combined to achieve the claimed features. Finally, we agree with Appellants' contention that the sections of Booth and Kasperkovitz as relied upon by the Examiner also fail to teach or suggest "mixing circuitry operable to generate the required proportionality" (Reply Br. 2), because we find Booth's mixers 115a and 115b are not connected the same way as claim 1 calls for in the "mixing circuitry" limitation ( compare e.g., Booth's Fig. 1 with Appellants' Fig. 2). Based on the foregoing, we find that the Examiner has not properly established factual determinations and articulated reasoning with a rational 3 Appeal2018-001786 Application 14/918,793 underpinning to support the legal conclusion of obviousness for claims 1, 11, and 17, resulting in a failure to establish prima facie obviousness. 2 As a result, we do not sustain the Examiner's obviousness rejection of claims 1, 11, and 17 over Booth and Kasperkovitz. For similar reasons, we also do not sustain the Examiner's obviousness rejections of (i) claims 2-7, 12, and 18-20 over the combination of Booth, Kasperkovitz, and Anthony; (ii) claims 8 and 13-16 over the combination of Booth, Kasperkovitz, and Seendripu for the same reasons as provided supra, with respect to claims 1, 11, and 17, from which claims 2-8, 12-16, and 18-20 ultimately depend. 3 2 Notably, the Examiner does not squarely respond (see generally Ans. 2-5) to many of Appellants' detailed arguments in the Appeal Brief concerning claim 1 (see App. Br. 7-9). 3 Notably, the Examiner does not adequately respond (see Ans. 6, Section IV.E.) to Appellants' separate arguments on the merits (see App. Br. 11-13) for claims 2, 7, and 13. 4 Appeal2018-001786 Application 14/918,793 CONCLUSION4 The Examiner erred in rejecting (1) claims 1, 11, and 17 over the combination of Booth and Kasperkovitz; (2) claims 2-7, 12, and 18-20 over the combination of Booth, Kasperkovitz, and Anthony; and (3) claims 8 and 13-16 over the combination of Booth, Kasperkovitz, and Seendripu. DECISION We reverse the Examiner's rejections of claims 1-20. REVERSED 4 When a dependent claim and the independent claim it incorporates are not separately argued, precedent guides that absent some effort at distinction, the claims rise or fall together. See Gardner v. TEC Sys., Inc., 725 F.2d 1338, 1350 (Fed. Cir. 1984) (en bane). Furthermore, "dependent claims are nonobvious if the independent claims from which they depend are nonobvious." In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992); see also In re Nielson, 816 F.2d 1567, 1569, 1572 (Fed. Cir. 1987) (dependent claims, not argued separately, fall with the independent claims, even though the dependent claims were rejected based on additional (or different) references.). Therefore, we do not sustain the rejections of dependent claims 2-10, 12-16, and 18-20 for the same reasons as provided for claims 1, 11, and 17 from which these claims respectively depend. 5 Copy with citationCopy as parenthetical citation