Ex Parte Link et al

Patent Trial and Appeal Board

Dec 6, 2012

11541916 (P.T.A.B. Dec. 6, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/541,916 10/02/2006 Hermann Link 2000-5509CON 9737
7590 12/06/2012
Patrick J. O'Shea
O'Shea, Getz & Kosakowski, P.C.
Suite 912
1500 Main Street
Springfield, MA 01115
EXAMINER
MILLER, BRANDON J
ART UNIT PAPER NUMBER
2645
MAIL DATE DELIVERY MODE
12/06/2012 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 HERMANN LINK and STEFAN SCHRADI
____________

Appeal 2010-007888
Application 11/541,916
Technology Center 2600
____________

Before DENISE M. POTHIER, JEREMY J. CURCURI,
and DAVID C. McKONE, Administrative Patent Judges.

McKONE, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-3, 6, 7, 9, 11, 14, and 15, which constitute all the claims pending in
this application. See Am. App. Br. 2.1 Claim 7 also stands objected to for
informalities. See id. Claims 4, 5, 8, 10, 12, and 13 are cancelled. See id.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Throughout this opinion, we refer to the Appeal Brief filed November 16,
2009, the Amended Appeal Brief filed December 4, 2009, the Examiner’s
Answer mailed March 4, 2010, and the Reply Brief filed May 4, 2010.
Appeal 2010-007888
Application 11/541,916

2
STATEMENT OF THE CASE
Appellants’ invention relates to selecting a television receiver from a
plurality of receivers in a diversity receiver system based on automatic gain
control (“AGC”). See Spec. 2. Claim 1, which is illustrative of the
invention, reads as follows:
1. A method for selecting one of several
television receivers of a television diversity receiving
system, comprising comparing levels of control signals
of automatic gain control of the television receivers, and
selecting the television receiver whose control signal has
the lowest level, where switchover is performed between
receiving blocks of data.

THE REJECTION
Claims 1-3, 6, 7, 9, 11, 14, and 15 stand rejected under 35 U.S.C.
§ 103(a) as being unpatenable over Higuchi (U.S. 5,161,252, issued Nov. 3,
1992) and Kaewell (U.S. 4,953,197, issued Aug. 28, 1990). See Ans. 4-11.

ISSUES
Appellants present several arguments for the patentability of claim 1,
see App. Br. 9-16, and only nominally argue the remaining claims, see App.
Br. 16-18.
Regarding claim 1, the Examiner finds that Higuchi teaches a method
for selecting one of several receivers of a diversity receiving system,
including comparing levels of control signals of a plurality of receivers,
selecting the receiver that has a maximum reception level, and performing a
switchover between receiving blocks of data. See Ans. 4. The Examiner
further finds that Higuchi’s receivers could include television receivers
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Application 11/541,916

3
because it was well-known that such a modification would not have
materially affected how the receivers function. See Ans. 4-5. However, the
Examiner concedes that Higuchi does not disclose comparing levels of
control signals of automatic gain control of the receivers. See Ans. 5. For
that limitation of claim 1, the Examiner finds that Kaewell teaches selecting
a receiver whose control signal has the lowest automatic gain control level,
and that modifying Higuchi to incorporate this feature would have improved
Higuchi’s method by providing more accurate means for selecting a receiver
that has a maximum reception level. See id.
Appellants argue that Higuchi and Kaewell are not properly
combinable, see App. Br. 10-12, and that even if they were combined, the
combination would not teach or suggest “comparing levels of control signals
of automatic gain control of the television receivers, and selecting the
television receiver whose control signal has the lowest level . . . ,” App. Br.
12-16 (emphasis in original). Thus, the issues are whether the Examiner
erred in finding that (1) Higuchi and Kaewell are properly combinable; and
(2) Higuchi and Kaewell teach or suggest “comparing levels of control
signals of automatic gain control of the television receivers, and selecting
the television receiver whose control signal has the lowest level.” See id.
In their Reply Brief, Appellants raise an additional issue: whether the
Examiner erred in finding that Higuchi and Kaewell teach or suggest “a
diversity receiver output signal indicative of the television receiver output
signal associated with the receiver that has the smallest gain correction,” as
recited in claim 11. Reply Br. 6 (emphasis in original).

Appeal 2010-007888
Application 11/541,916

4
ANALYSIS
REJECTION OF CLAIMS 1-3, 6, 7, 9, 11, 14, AND 15 UNDER 35 U.S.C. § 103(a)
Claims 1-3, 6, 7, and 9
Appellants argue that Higuchi and Kaewell are not properly
combinable because modifying Higuchi with Kaewell’s technology would
introduce the disadvantages Higuchi intended to avoid. See App. Br. 10-12.
Specifically, the prior art described in Higuchi has the disadvantage that,
when switching from one receiving system to another, data could be lost due
to phase differences introduced by differences in the propagation paths of
the receiving systems. See App. Br. 10-11 (citing Higuchi, col. 2, ll. 17-68).
According to Appellants, Kaewell is not combinable with Higuchi because it
is similar to the prior art described in Higuchi. See App. Br. 11. Appellants
argue that modifying Higuchi’s system to compare AGC levels from two
parallel paths, per Kaewell, instead of merely switching between reception
signals, would increase the likelihood of data loss. See id.
In response, the Examiner argues that Appellants improperly contend
that obviousness requires a showing that the features of Kaewell can be
bodily incorporated into the structures of Higuchi. See Ans. 11-12. We
agree with the Examiner that Appellants are reading the combination of
Higuchi and Kaewell too restrictively. “The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference . . . . Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981)
(citations omitted)); accord KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007) (“[I]f a technique has been used to improve one device, and a person
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Application 11/541,916

5
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.”). The Examiner finds that Higuchi
selects a receiver based on reception level, see Ans. 4, and that Kaewell’s
AGC signal is an improved measure of reception level that would similarly
improve Higuchi, see Ans. 5. Moreover, the relative advantages and
disadvantages in selecting AGC as a basis for comparing signal levels in lieu
of maximum reception level amounts to an engineering tradeoff well within
the level of skill of ordinarily skilled artisans. Thus, we are not persuaded
by Appellants’ argument that the Examiner improperly combined Higuchi
and Kaewell.
Appellants also contend that even if Higuchi and Kaewell were
combined, the combination would not teach or suggest “comparing levels of
control signals of automatic gain control of the television receivers, and
selecting the television receiver whose control signal has the lowest level . .
. ,” App. Br. 12-16 (emphasis in original). Appellants argue that Higuchi
teaches two parallel paths: (1) a “processing side” that compares the
“reception signals” (using CPU 85) to determine which of the receiving
systems has the signal with the highest reception level; and (2) a “reception
side” that actually selects, in accordance with the determination made by the
processing side, the reception signal to send to the “signal receiver 6.” App.
Br. 13-14. According to Appellants, the signal with maximum strength is
selected before the signal is provided to the receiver 6. See App. Br. 14.
This gives rise to three arguments by Appellants.
First, if Higuchi’s receiver 6 is modified to generate an AGC signal,
that signal will not be compared to signals from other receivers because
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Application 11/541,916

6
Higuchi’s comparison takes place before the selected reception signal
reaches the receiver 6. See App. Br. 14, 16. Thus, “gain control would
occur within the receiver 6 and thus would not be used for receiver selection
since receiver selection is performed upstream of the receiver 6 and as a
function of the demodulator 83 output . . . .” Reply Br. 4-5. Second, in
order to compare different signals from the same receiver 6, it would be
necessary to cycle the various reception signals through the receiver 6,
which could result in weak signals or data loss. See App. Br. 14-15. Third,
if the CPU 85 of Higuchi compared reception signals based on AGC, those
reception signals would not be “signals . . . of the television receivers”
because the CPU 85 receives those signals from distributors 4a, 4b, 4c, and
4d rather than from receiver 6. See App. Br. 15-16. The Examiner again
faults Appellants for arguing against bodily incorporating Kaewell into
Higuchi rather than focusing on the teachings of those references. See
Ans. 12-14.
Each of Appellants’ arguments incorrectly assumes that Higuchi’s
“receiver 6” is the “receiver” recited in claim 1. Rather, the Examiner finds
that antennas 3a, 3b, 3c, and 3d and distributors 4a, 4b, 4c, and 4d are
“receivers,” see Ans. 4 (citing Higuchi, col. 6, ll. 35-45 (“At the mobile
station side, directive antennas 3a, 3b, 3c and 3d are disposed in two
directions to receive the radio waves. The distributors 4a, 4b, 4c and 4d
distribute each reception signal to the receiving system change-over means 5
and the level comparator 8. . . .”); col. 6, ll. 62-68), and that it would have
been obvious to modify Higuchi’s device, per the teachings of Kaewell, to
include automatic gain control of the receivers, see Ans. 5. Appellants
present no persuasive arguments that the Examiner erred in these findings.
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Application 11/541,916

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Finally, in reply, Appellants contend that Higuchi’s device makes its
comparison based on sampling of the reception signals received by the
distributors, rather than from control signals. See Reply Br. 3. According to
Appellants, Higuchi’s system extracts certain timing information from the
reception signals. See Reply Br. 4. If Higuchi’s device were modified in
view of Kaewell to make determinations based on control signals, it would
in Appellants’ view “prevent the resultant system from properly extracting
the change-over timing signals required for the proper operation of the
system disclosed in Higuchi.” Id. Appellants could have made this
argument in their Appeal Brief, but did not. Instead, the argument was first
presented in the Reply Brief. Accordingly, the argument is waived. See,
e.g., 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.”). Moreover, Appellants have cited inadequate
evidence to support this argument. Thus, it is not persuasive.
Accordingly, we sustain the rejection of (1) claim 1; (2) claim 7,
which includes recitations substantially the same as those of claim 1; (3)
claims 2, 3, and 6, which depend on claim 1; and (4) claim 9, which depends
on claim 7.

Claims 11, 14, and 15
Appellants do not separately argue claims 11, 14, and 15 in their
Appeal Brief. See App. Br. 17-18. In their Reply Brief, however,
Appellants contend that Higuchi and Kaewell do not teach or suggest “a
diversity receiver output signal indicative of the television receiver output
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Application 11/541,916

8
signal associated with the receiver that has the smallest gain correction.”
Reply Br. 6 (emphasis in original). Specifically, Appellants argue that
Higuchi’s switchover control (changeover means 5) is not based on AGC,
but instead is based upon the output of demodulator 83. See id.
Appellants could have, but did not raise this argument in their Appeal
Brief. Thus, it is waived. See Borden, 93 USPQ2d at 1474. Moreover, the
Examiner does not find that Higuchi’s changeover means 5 switches based
on AGC. See Ans. 9. Rather, the Examiner finds that it would have been
obvious in light of Kaewell to modify Higuchi’s device to switch based on
AGC. See id. Appellants’ argument does not address this finding, see Reply
Br. 6, and thus it is not persuasive.
Accordingly, we sustain the rejection of (1) claim 11; and (2) claims
14 and 15, which depend on claim 11.

ORDER
The decision of the Examiner to reject claims 1-3, 6, 7, 9, 11, 14, and
15 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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