Ex Parte Palm et al

Patent Trial and Appeal Board

Feb 27, 2017

13026350 (P.T.A.B. Feb. 27, 2017)

United States Patent and Trademark Office
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.
13/026,350 02/14/2011 Stephen Palm BP2752C1 4718
51472 7590 03/01/2017
GARLICK & MARKISON (BRCM)
106 E. 6th Street, Suite 900
AUSTIN, TX 78701
EXAMINER
SANDERS, JUSTIN B
ART UNIT PAPER NUMBER
2422
NOTIFICATION DATE DELIVERY MODE
03/01/2017 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):
MMURDOCK@ TEXASPATENTS .COM
ghmptocor@texaspatents.com
bpierotti @ texaspatents .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN PALM and DAVID FIFIELD
Appeal 2016-000947
Application 13/026,3501
Technology Center 2400
Before JUSTIN BUSCH, JAMES W. DEJMEK, and JOYCE CRAIG,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’
Final Rejection of claims 1—20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 According to Appellants, the real party in interest is Broadcom
Corporation. App. Br. 2.
Appeal 2016-000947
Application 13/026,350
INVENTION
Appellants’ application relates to transporting home networking
frame-based communication signals over coaxial cables. Abstract. Claim 1
is illustrative of the appealed subject matter and reads as follows:
1. An apparatus comprising:
a first port to couple to a cable that transfers an
entertainment signal;
a second port to couple to an antenna that is configured for
wireless transmission of a radio frequency (RF) signal at a
particular radio frequency within a RF spectrum, in which the RF
signal contains data utilizing an 802.11 communication protocol;
a third port to couple to a coax line to transfer both the RF
signal at the particular radio frequency and the entertainment
signal; and
a tap to couple the third port to the first and second ports
to route the entertainment signal between the first and third ports
and to route the RF signal between the second and third ports, in
which the coax line coupled to the third port is to carry both the
entertainment signal and the RF signal, in which the RF signal
and the entertainment signal coexist together on the coax line that
is part of a coaxial network distributed within a premise, and in
which the coax line is used to extend a location of the antenna
from an access point for the transmission of the RF signal at the
antenna.
REJECTIONS
Claims 1, 3, 5, 7—8, 10, 12, 14—17, and 19 stand rejected under
35 U.S.C. § 103(a) as unpatentable over the combination of Chen et al. (US
2001/0030950 Al; published Oct. 18, 2001) (“Chen”); Kubler et al. (US
5,726,984; issued Mar. 10, 1998) (“Kubler”); and Moreland et al. (US
5,896,556; issued Apr. 20, 1999) (“Moreland”).
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Claims 2 and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Chen, Kubler, Moreland, and Baran
(US 5,926,479; issued July 20, 1999).
Claims 4, 6, 11, 13, 18, and 20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Chen, Kubler, Moreland,
and Russ et al. (US 2002/0059642 Al; published May 16, 2002) (“Russ”).
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. We disagree with Appellants’
contentions. Except as noted below, 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 Examiner’s
Answer in response to Appellants’ Appeal Brief. We concur with the
conclusions reached by the Examiner. We highlight the following additional
points.
In rejecting claim 1, the Examiner found that Chen teaches or suggests
all of the recited limitations, except “wireless transmission of a radio
frequency (RF) signal at a particular radio frequency within a RF spectrum,”
and “the coax line [that carries the entertainment signal] is used to extend a
location of the antenna from an access point for the transmission of the RF
signal at the antenna,” for which the Examiner relied on Kubler, and “in
which the RF signal and the entertainment signal coexist together on the
coax line that is part of a coaxial network distributed within a premise,” for
which the Examiner relied on Moreland. Final Act. 2—5.
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Application 13/026,350
Appellants contend the Examiner erred in rejecting claim 1 over the
combination of Chen, Kubler, and Moreland because “the Final Office
Action disregards the specific language of the claims in assessing the
rejections.” App. Br. 9. Appellants argue “the rejection of Appellant’s
claims is based upon generalization of the claims, and that the specific
teachings of the cited references are disregarded in rejection of Appellant’s
claims.” Id.
Appellants’ arguments are conclusory in nature and, therefore, not
persuasive. Appellants do not provide any basis for their arguments. It is
well settled that mere attorney arguments and conclusory statements, which
are unsupported by factual evidence, are entitled to little probative value. In
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Pearson,
494 F.2d 1399, 1405 (CCPA 1974) (attorney argument is not evidence).
Appellants’ next contend the Examiner erred because Chen does not
teach an “antenna” (App. Br. 10) or a “coax line that is part of a coaxial
network distributed within a premise,” or that “the coax line is used to
extend a location of an antenna from an access point for transmission of the
RF signal at the antenna” {id. at 11), as recited in claim 1. Appellants also
contend that Kubler relates to a FAN device that would not implement
antennas for wireless FAN implementation, without further explanation. See
App. Br. 12.
We are not persuaded of Examiner error because Appellants’
arguments are not responsive to the Examiner’s rejection and attack the
references separately, whereas the Examiner’s rejection relies on the
combined teachings of Chen, Kubler, and Moreland. Final Act. 2—5; In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The test for
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Application 13/026,350
obviousness is not whether the claimed invention is expressly suggested in
any one or all of the references, but whether the claimed subject matter
would have been obvious to those of ordinary skill in the art in light of the
combined teachings of those references. In re Keller, 642 F.2d 413, 425
(CCPA 1981).
Appellants further contend that “the broadband device of Chen, the
coax LAN backbone of Kubler, and the modem digital-signal distribution of
Moreland are submitted as not leading one of ordinary skill in the art to
achieve the apparatus and/or method of Appellant’s claims.” App. Br. 14.
With regard to claim 1, Appellants contend
the hypothetical combination of the broadband device of Chen,
the coax LAN backbone of Kubler, and the digital-signal
distribution of Moreland does not provide a prima facie
showing of obviousness because the cited references do not
teach or disclose the limitations of Appellant’s claim 1, as set
out by way of example in the emphasized text above,
where certain claim language is identified and italicized, but no further
explanation is provided. Id. at 16.
Appellants’ arguments are not persuasive of Examiner error because
they are conclusory, merely reciting the claim limitations, the teachings of
Chen, Kubler, and Moreland, and stating that the two are not the same. Id.
As stated by the Federal Circuit, Rule 41.37 “require[s] more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.” In reLovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
Appellants’ arguments regarding impermissible hindsight are
similarly conclusory and unpersuasive. Appellants merely contend
“Appellant’s own disclosure was used for the improper combination of the
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Application 13/026,350
cited references to achieve the invention of Appellant’s invention.” App.
Br. 15. We find the Examiner provided persuasive articulated reasoning
with rational underpinning for an artisan of ordinary skill to have modified
the teachings of Chen with those of Kubler and Moreland. Final Act. 4, 5;
Ans. 13. Appellants present insufficient persuasive explanation or objective
evidence to rebut the Examiner’s findings.
Appellants further argue for the first time in the Reply Brief that,
because the cited references do not recite the limitations of Appellants’
claims, the cited references also lack the rationale to modify or combine the
cited references. Reply Br. 7. Appellants argue that “the rationale may not
be impliedly contained in the references when they are silent to the
limitations upon which the Examiner represents they hold.” Appellants,
however, have waived this argument because they presented it for the first
time in the Reply Brief, without a showing of good cause. See 37 C.F.R.
§ 41.41(b)(2) (2012); accord Ex parte Borden, 93 USPQ2d 1473, 1473-74
(BPAI 2010) (informative opinion) (“[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.”). We note,
however, that the Examiner provides a comprehensive response to
Appellants’ arguments by describing the features of each reference which
the ordinary skilled artisan would have combined consistent with the
guidelines stated inKSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007). See
Final Act. 4, 5, Ans. 13.
Accordingly, we are not persuaded by Appellants’ arguments that the
Examiner erred in rejecting claim 1. Appellants’ arguments for claims 2—20
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are similarly conclusory. See App. Br. 6—28. Thus, we are not persuaded by
Appellants’ arguments that the Examiner erred in rejecting these claims.
We sustain the 35 U.S.C. § 103(a) rejection of independent claim 1, as
well as the 35 U.S.C. § 103(a) rejection of independent claims 7 and 15,
which Appellants argue are patentable for similar reasons. App. Br. 19, 23.
We also sustain the Examiner’s rejection of dependent claims 2—6, 8—14, and
16—20, for which Appellants make no additional arguments. Id. at 16, 19,
23.
DECISION
We affirm the decision of the Examiner rejecting claims 1—20.
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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