Ex Parte Ohhashi

Patent Trial and Appeal Board

Oct 26, 2012

09988208 (P.T.A.B. Oct. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIALS AND APPEAL BOARD
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Ex parte KAZUYUKI OHHASHI
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Appeal 2010-007311
Application 09/988,208
Technology Center 2600
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Before ST. JOHN COURTENAY III, GREGORY J. GONSALVES, and
ANDREW J. DILLON, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-007311
Application 09/988,208
2
STATEMENT OF THE CASE
The Patent Examiner rejected claims 25-31 and 33-35. Claims 1-24
and 32 were canceled. (App. Br. 2). Appellant appeals therefrom under 35
U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

INVENTION
This invention relates to phase offset circuits in communication
systems that give a signal a desired phase shift. (See Spec. 1). Claim 25,
reproduced below, is illustrative of the claimed subject matter:
25. A phase offset calculator, comprising:
a sign inverter that inverts a sign of signed binary data to
obtain a first phase offset of a multiple of 90°;
an amplitude adjuster that adjusts an amplitude of a
signal output from the sign inverter; and
a phase offsetter that provides a second phase offset
smaller than 90° to a signal output from the amplitude adjuster.

REJECTION
Claims 25-31 and 33-35 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over U.S. Patent No. 5,956,328 ("Sato") and Appellant's
admitted prior art ("AAPA"). (Ans. 3-8).

GROUPING OF CLAIMS
Based on Appellant's arguments, we will decide the appeal of the
obviousness rejection of claims 25, 26, and 27 on the basis of claim 25. See
37 C.F.R. § 41.37(c)(1)(iv).
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Based on Appellant's arguments, we will decide the appeal of the
obviousness rejection of claims 28-31 and 33-35 on the basis of claim 28.
See id.

ANALYSIS
We disagree with Appellant's contentions regarding the Examiner’s
obviousness rejection of the claims. We 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 set forth by the Examiner in the Answer in
response to arguments made in Appellant's Appeal Brief. (Ans. 8-13). We
highlight and address specific findings and arguments below.

CLAIMS 25-27
A.
Issue 1: Under § 103, did the Examiner err in finding that the
combined teachings the cited references would have taught or suggested the
limitations of claim 25?
Appellant contends that "there is no proper explanation in the record
as to how SATO could be modified with Appellant's disclosed prior art so as
to obtain the combination of claim 25." (App. Br. 8).
We find Appellant's arguments unpersuasive because the Examiner
has provided an articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness. (Ans. 3-4; 9). Regarding the
modification of Sato with the placement of AAPA's amplitude adjuster and
associated signal processing, the Examiner finds:
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Application 09/988,208
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[T]he placement of the amplitude adjuster does not affect the
phase of the input signed binary data or vice versa as they are
two mutually exclusive processes and this can be best viewed in
the illustration provided by the Appellant in the appeal brief
dated November 6, 2009 (pg. 13), which shows no matter how
the phase of the input signed binary data is manipulated its
amplitude remains the same.
(Ans. 10) (emphasis omitted).
The Examiner further concludes:
Examiner submits that it would have been obvious to one of
ordinary skill in the art to place the amplitude adjuster between
the sign inverter and the phase offsetter because no matter how
the phase of the input signed binary data is manipulated its
amplitude remains the same.
(Ans. 12) (emphasis omitted).
Appellant does not rebut the Examiner's specific findings as set forth
in the grounds of rejection (Ans. 3-4). Nor has Appellant further rebutted
the Examiner's response in the “Response to Arguments” section (Ans. 10,
12) by filing a Reply Brief.
Appellant contends that "[s]ignificant calculation and signal
processing concerns need to be addressed in ordering sign inverters, phase
shifters and amplitude adjusters in the manner of Appellant's claims in
comparison with that shown in Appellant's disclosed prior art." (App.
Br. 15).
However, we find Appellant's argument is unpersuasive because the
claims do not recite the "significant calculations and signal processes" upon
which Appellant relies. We decline to read such limitations into the claim.
Appellant also contends that the combination of cited references
would not have taught or suggested the limitations of claim 25 since
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"[n]either SATO nor Appellant's disclosed prior art discloses an amplitude
adjuster that both adjusts an amplitude of a signal output from a sign
inverter, and feeds a signal to a phase offsetter." (App. Br. 9).
However, Appellant's argument is unavailing because the Examiner
relies on the combination of Sato and AAPA to teach or suggest the disputed
limitation. (Ans. 9-10). Appellant's arguments attack the teachings of the
applied prior art references individually instead of addressing what the
combined teachings would have suggested to one of ordinary skill in the art.
See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (one cannot
show nonobviousness by attacking references individually where the
rejections are based on combinations of references (citation omitted)).
For the above reasons, we are not persuaded of Examiner error.
B.
Issue 2: Under § 103, did the Examiner err in combining the cited references
relied upon in the rejection of claim 25?
Appellant contends:
[C]laim 25 is not rendered obvious by SATO in view of
Appellant's disclosed prior art. Finally, the Examiner has
reconstructed Appellant's claimed invention together
impermissibly in hindsight, using Appellant's disclosure as a
roadmap to combine SATO and Appellant's disclosed prior art
in a way unrelated entirely to the teachings of either SATO or
Appellant's disclosed prior art.
(App. Br. 8).
Regarding Appellant's argument of an improper combination under
§ 103 (App. Br. 8), we agree with the Examiner's factual findings and
ultimate conclusion of obviousness:
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[I]t would have been obvious to one of ordinary skill in the art
to place the amplitude adjuster between the sign inverter and
the phase offset calculation circuit of Sato, or before both the
sign inverter and the phase offset calculation circuit of Sato, or
after the sign inverter and the phase offset calculation circuit of
Sato as long as the amplitude adjustment is performed in order
to comply with the IMT2000 W-CDMA requirements and to
improve the level of a reception signal and to clearly
distinguish between interference signals from other mobile
stations and the original received signal (spec. pg. 2, lines 2-5).
(Ans. 11).
In particular, we observe that Appellant does not rebut the Examiner's
specific findings regarding the motivation for combining the references
relied upon to reject claim 25.
Regarding Appellant's hindsight argument (App. Br. 8), we are
cognizant that our reviewing courts have not established a bright-line test for
hindsight. The U.S. Supreme Court guides that “[a] factfinder should be
aware, of course, of the distortion caused by hindsight bias and must be
cautious of arguments reliant upon ex post reasoning.” KSR Int’l Co.v.
Teleflex, Inc., 550 U.S. 398, 421 (2007) (citing Graham v. John Deere Co.of
Kansas City, 383 U.S. 1, 36 (1966)). Nevertheless, in KSR, the Supreme
Court also qualified the issue of hindsight by stating that “[r]igid
preventative rules that deny factfinders recourse to common sense, however,
are neither necessary under our case law nor consistent with it.” Id.
Here, we see the question before us to be whether the Examiner’s
proffered combination of SATO's signal inverter and phase offsetter with
AAPA's amplitude adjuster is merely “the predictable use of prior art
elements according to their established functions” (KSR, 550 U.S. at 417),
or, would an artisan have reasonably combined Sato and AAPA in the
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manner proffered by the Examiner to formulate the claimed circuit but for
having the benefit of Appellant’s claim to use as a guide (i.e., impermissible
hindsight)?
We agree with the Examiner that an artisan having knowledge of
phase offset circuits and common sense at the time of Appellant’s invention
would have known to:
[P]lace the amplitude adjuster between the sign inverter and the
phase offset calculation circuit of Sato, or before both the sign
inverter and the phase offset calculation circuit of Sato, or after
the sign inverter and the phase offset calculation circuit of Sato
as long as the amplitude adjustment is performed in order to
comply with the IMT2000 W-CDMA requirements and to
improve the level of a reception signal and to clearly
distinguish between interference signals from other mobile
stations and the original received signal (spec. pg. 2, lines 2-5).
(Ans. 11).
The Examiner further concludes:
Examiner submits that it would have been obvious to one of
ordinary skill in the art to place the amplitude adjuster between
the sign inverter and the phase offsetter because no matter how
the phase of the input signed binary data is manipulated its
amplitude remains the same.
(Ans. 12) (emphasis omitted).
We agree with the reasons articulated by the Examiner (id.).
Moreover, we are of the view that the placement of the amplitude adjuster
between the sign inverter and the phase offsetter would have been at least
obvious to try since there are only three possible placements. (See Ans. 11).1

1 Where “the problem is known, the possible approaches to solving the
problem are known and finite, and the solution is predictable through use of
a known option,” a solution that is obvious to try may indeed be obvious.
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Notwithstanding Appellant's arguments (App. Br. 8-16), we find the
weight of the evidence supports the Examiner's underlying factual findings
and ultimate legal conclusion of obviousness. Therefore, on this record, we
are not persuaded that the Examiner erred in rejecting representative claim
25 under §103.
Accordingly, we sustain the Examiner's rejection of claim 25.
Regarding claim 26, Appellant recites the claim language for certain
features, and merely asserts that the respective limitations are not taught or
suggested by the cited references. (App. Br. 16). However, “[a] statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim.” See 37 C.F.R.
§ 41.37(c)(1)(iv). Therefore, claim 26 falls with claim 25.
Regarding claim 27, Appellant argues the claims are allowable
for the same reasons given for claim 25, which we did not find persuasive.
Appellant additionally recites the claim language regarding certain features,
and merely asserts that the respective limitations are not taught or suggested
by the cited references. (App. Br. 16). Thus, similar to our discussion of
claim 26, claim 27 falls with claim 25. See 37 C.F.R. § 41.37(c)(1)(iv).

CLAIMS 28-31 AND 33-35
A.
Issue: Under § 103, did the Examiner err in finding that the cited
references, either alone or in combination, would have taught or suggested

Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1351 (Fed. Cir. 2008), citing
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007).

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Application 09/988,208
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"a transmission controller that provides control information to the signal
point mapper based on a message included in a reception signal from a
receiver that receives communication signals from the CDMA transmission
apparatus," within the meaning of claim 28?
Appellant contends:
There is no feature of SATO or Appellant's disclosed prior art
that discloses controlling the second phase offsetting based on a
signal from a remote source. At no time has the Examiner
established that any combination of SATO and Appellant's
disclosed prior art would result in such features.
(App. Br. 17).
As discussed above, “[a] statement which merely points out what a
claim recites will not be considered an argument for separate patentability of
the claim.” See 37 C.F.R. § 41.37(c)(1)(iv). Moreover, Appellant does not
rebut the specific findings by the Examiner:
Examiner disagrees with the Appellant because the instant
application's disclosed prior art teaches a transmission
controller that provides control information from a remote
source to control the operation of the signal point mapper that
includes an amplitude adjuster and a phase offsetting circuitry,
wherein the control information is based on a message included
in a received signal from a receiver that receives
communication signals from the CDMA transmission apparatus
(Pg. 1, Lines 16-28; Pg. 2, Lines 1-5).
(Ans. 12, emphasis added).
Appellant additionally contends (App. Br. 16-17) that claim 28 is
patentable for the same reasons previously argued for claim 25. Thus, we
sustain the Examiner’s obviousness rejection of claim 28 for the same
reasons give above regarding claim 25. See 37 C.F.R. § 41.37(c)(1)(iv).
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B.
Regarding Appellant's argument with respect to claims 29-31 and 33-
35, Appellant rely on the same unpersuasive arguments advanced for claim
25. Furthermore, Appellant recites the claim language regarding certain
features, and merely asserts that the respective limitations are not taught or
suggested by the cited references. (App. Br. 18-19). As discussed above,
“[a] statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.” See 37
C.F.R. § 41.37(c)(1)(iv). Therefore, we sustain the Examiner's rejection of
claims 28-31 and 33-35 for the same reasons discussed above regarding
claim 25.

DECISION
We affirm the Examiner's rejection of claims 25-31 and 33-35 under
§ 103.
No time for taking any action connected 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).

AFFIRMED

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