Ex Parte Mechaik

Patent Trial and Appeal Board

Sep 5, 2018

13894596 (P.T.A.B. Sep. 5, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/894,596 05/15/2013
102469 7590 09/07/2018
PARKER JUSTISS, P.C./Nvidia
14241 DALLAS PARKWAY
SUITE 620
DALLAS, TX 75254
FIRST NAMED INVENTOR
Mehdi M. Mechaik
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.
AU-12-0407-USl 1086
EXAMINER
PHAN, THO GIA
ART UNIT PAPER NUMBER
2845
NOTIFICATION DATE DELIVERY MODE
09/07/2018 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):
docket@pj-iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MEHDI M. MECHAIK
Appeal2017-011395
Application 13/894,596
Technology Center 2800
Before CATHERINE Q. TIMM, KAREN M. HASTINGS, and
LILAN REN, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner's decision to reject claims 1-20. We have jurisdiction under
35 U.S.C. § 6(b ).
We AFFIRM.
1 In explaining our Decision, we cite to the Specification of May 15, 2013
(Spec.), Final Office Action of May 9, 2016 (Final), Appeal Brief of January
19, 2017 (Appeal Br.), Examiner's Answer of July 7, 2017 (Ans.), and
Reply Brief of September 7, 2017 (Reply Br.).
2 Appellant is the applicant, NVIDIA Corporation, which, according to the
Brief, is the real party in interest. Appeal Br. 3.
Appeal2017-011395
Application 13/894,596
The claims are directed to an antenna with an active element and a
ground element (see, e.g., claims 1, 14) and an electronic device containing
an antenna having an active element and ground element (see, e.g., claim
19). Claims 1 and 19 require the active element and ground element be
structurally or functionally equivalent. Claim 1 is illustrative:
1. An antenna, comprising:
an active element, the active element including a resonant
portion operable to effect an antenna for communication in a
band of frequencies; and
a ground element, wherein the ground element and active
element are structurally equivalent or functionally equivalent.
Appeal Br. 13 (claims appendix).
The Examiner maintains the following rejections:
A. The rejection of claims 1, 2, and 7-13 under 35 U.S.C.
§ 102( a )(1) as anticipated by Kurashima 3; and
B. The rejection of claims 3---6 and 14--20 under 35 U.S.C.
§ 103 as obvious over Kurashima.
OPINION
Turning first to the rejection of claims 1, 2, and 7-13 under 35 U.S.C.
§ I02(a)(l) as anticipated by Kurashima, we note that Appellant does not
argue any claim apart from the others. Appeal Br. 5-8. We select claim 1 as
representative for resolving the issue on appeal. The issue is: Has Appellant
identified a reversible error in the Examiner's finding that Kurashima
3 Kurashima et al., US 2013/0093642 Al, pub. Apr. 18, 2013 (hereinafter
"Kurashima").
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Application 13/894,596
describes an antenna having an active element and a ground element that are
structurally equivalent?
Appellant has not identified such an error.
The Examiner's rejection is as follows:
Kurashima et al disclose in figure 2, an antenna device
used for an electronic device comprising an active element
including a resonant portion 120 operable an antenna for
communication in a band of frequencies, a ground element,
wherein the ground element and active element are structurally
equivalent, and a ground plane 210 which is coplanar with the
ground element. The active element and the ground element are
formed on a printed circuit board 110.
Final 2 ( emphasis added).
Appellant contends that "[t]he Examiner has provided so little detail
in his rejection that he, as a matter of law, cannot meet the stringent standard
of anticipation under 35 U.S.C. § 102." Appeal Br. 6. Also, in the portion
of the arguments best relating to the Examiner's rejection, Appellant
contends ground element 130 and ground pattern 210, collectively, are not
structurally equivalent to the antenna element 120. Appeal Br. 7-8.
First, we determine that the rejection was detailed enough to properly
notify Appellant of the basis for rejection and serve as a basis for a prima
facie case. As our reviewing court has repeatedly stated "the prima facie
case is merely a procedural device that enables an appropriate shift of the
burden of production." In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011)
( quoting Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007) ( citing In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) and In re Piasecki, 745 F.2d
1468, 1472 (Fed. Cir. 1984)). As further stated in Jung:
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Application 13/894,596
The Patent and Trademark Office ("PTO") satisfies its initial
burden of production by "adequately explain[ing] the
shortcomings it perceives so that the applicant is properly
notified and able to respond." Hyatt, 492 F.3d at 1370. In other
words, the PTO carries its procedural burden of establishing a
prima facie case when its rejection satisfies 35 U.S.C. § 132, in
"notify[ing] the applicant ... [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application." 35
U.S.C. § 132. That section "is violated when a rejection is so
uninformative that it prevents the applicant from recognizing
and seeking to counter the grounds for rejection." Chester v.
Miller, 906 F.2d 1574, 1578 (Fed.Cir.1990).
In re Jung, 637 F.3d at 1362.
By citing Kurashima's Figure 2 and pointing to antenna element 120
and the ground element, the Examiner put Appellant on notice that the
Examiner considered antenna element 120 and ground element 130 the
structurally equivalent active and ground elements of claim 1.
Appellant need only have consulted Kurashima's description of
Figure 2, and the description of related Figures 1 and 3, to verify that the
Examiner's finding was supported by Kurashima. Kurashima discloses
antenna element 120 and ground element 130 are "substantially
symmetrically formed from each other" (Kurashima ,r 48; see also ,r 61 and
Fig. 3), both are in reversed "F" shape (Kurashima ,r,r 51, 89). Further,
Kurashima discloses using equal lengths and widths for the antenna element
and ground element of the antenna of Figure 18, which is the same antenna
shown in Figure 2 (Kurashima ,r 115). Thus, Kurashima' s depiction of
antenna element 120 and ground element 130 as having the same shape,
width, and extent in Figure 2 is supported by Kurashima's description of the
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Application 13/894,596
figures. Although the Examiner's final rejection did not explicitly cite to the
disclosure of Kurashima, that does not mean Appellant was not given
adequate notice. Kurashima discloses the two elements as structurally
equivalent within the meaning of claim 1 as shown in Figure 2 and verified
by a perusal of the description. This is particularly so given Appellant's
definition of structurally equivalent encompasses widths that can differ as
much as 20% and areas that can differ as much as 10%. Spec. ,r 16.
Moreover, in responding to Appellant's argument, the Examiner cited
to paragraphs 22, 87, 89-91, 95, 115, and 116 of Kurashima to further
explain why Kurashima supports the finding. In the Reply Brief, Appellant
contends that the Examiner's reference to those paragraphs is new matter
and "the Examiner may not now, after prosecution has closed and the
Applicant without an opportunity to fully respond, bring in new paragraphs"
to establish anticipation. Reply Br. 2. We disagree because the Examiner
cited those paragraphs in response to Appellant's argument and Appellant
had the opportunity to respond ( and did respond) in the Reply Brief. The
Examiner's response did not change the thrust of the rejection and, thus, was
not a new ground of rejection. See In re Jung, 637 F.3d at 1365
(thoroughness in responding to an argument does not change the rejection).
In the Reply Brief, Appellant faults the Examiner's citation to
paragraph 115. Reply Br. 2-3. According to Appellant, preceding
paragraph 114 of Kurashima "makes it clear that they have 'a structure
similar to that of the circuit substrate 200A but does not include the ground
element portion 230 and the group pattern 21 OB."' Reply Br. 2.
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Application 13/894,596
The evidence does not support Appellant's argument. Paragraph 114
of Kurashima discloses that Figure 19 shows the VSWR characteristics of
circuit substrate 200A, the structure shown in Figure 18, and also shows the
VSWR characteristics of a comparative antenna without ground element 230
and ground pattern 21 OB. It is the comparative antenna that does not have
the elements 230 and 210B. The Figure 18 structure 200A still includes
those elements and its VSWR characteristics are shown in Figure 19 as a
solid line. Paragraph 115 supports the Examiner's finding.
Appellant was given adequate notice of the rejection and has not
identified a reversible error in it.
Turning to the rejection of claims 3---6 and 14--20 under 35 U.S.C.
§ 103 as obvious over Kurashima, Appellant again argues the rejection
contains too little detail to support the rejection. Appeal Br. 10. According
to Appellant, the rejection only addresses limitations contained in claims 6
and 19. Id. Appellant, however, overlooks the first three sentences of the
Examiner's rejection. Final 3. The first three sentences point out that
Kurashima does not disclose the specific frequency range of the resonant
portion and this portion of the rejection provides a rationale for why the
frequency ranges of the claims would have been obvious to those of ordinary
skill. Id. As pointed out by the Examiner in response to Appellant's
argument, claims 3-5, 14--18, and 20 contain frequency range limitations.
Ans. 3. Appellant does not further respond. Thus, we cannot say that
Appellant has identified a reversible error in this regard.
Appellant makes a further argument focusing on claim 14. Appeal Br.
10-11. Claim 14 requires the active element include "a resonant portion
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Application 13/894,596
operable to effect an antenna for communication in a Global Positioning
Satellite (GPS) band ranging from about 1.575 GHz to about 1.6 GHz,
wherein a voltage-standing wave-ratio (VSWR) value is less than about 2. 0
over the entire Global Positioning Satellite (GPS) band ranging from about
1.575 GHz to about 1.6 GHz." Claim 14 (emphasis added).
Appellant contends that the rejection does not even reference the term
VSWR, and Appellant also contends that Figure 2 of Kurashima fails to
address VSWR values as well. Appeal Br. 11. According to Appellant, "[i]t
is fundamentally, and legally, impossible for the Examiner to meet his
burden of establishing that [Kurashima] teaches or suggests a particular
claim element without even mentioning that element in the rejection." Id.
The Examiner responds that during prosecution (in response to
Appellant's argument filed November 19, 2015) the Examiner cited US
6,542,128 to Johnson "as evidence [ of the] conventionality of a voltage-
standing wave-ratio (VSWR) value being less than about 2.0 over the entire
Global Positioning Satellite (GPS) band ranging from about 1.575 GHz to
about 1.6 GHz (see col.IO, lines 14-31 )." Ans. 4. Column 10, lines 14--31
of Johnson describe Figure 5, a plot ofVSWR vs. frequency that shows a
VSWR of 1.6 nominal at 1.575 GHz, indicating that the antenna is tuned for
operation in the GPS band. Appellant does not respond. Reply Br. 3. Thus,
Appellant has not identified a reversible error in the Examiner's rejection.
CONCLUSION
We sustain the Examiner's rejections.
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DECISION
The Examiner's decision is affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.I36(a)(l).
AFFIRMED
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