Ex Parte Pera et alDownload PDFPatent Trial and Appeal BoardAug 29, 201813783274 (P.T.A.B. Aug. 29, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/783,274 03/02/2013 Robert J. Pera 41173 7590 09/05/2018 PETER JAMES TORMEY 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. AntFeedSysCON 9206 EXAMINER 101 Gregory Lane Suite 46 PATEL,AMALA Pleasant Hill, CA 94523 ART UNIT PAPER NUMBER 2845 NOTIFICATION DATE DELIVERY MODE 09/05/2018 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): PJTormey@Gmail.com PT@AnTLegal.com mp@antlegal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT J. PERA and JOHN R. SANFORD Appeal2017-005609 Application 13/783,274 Technology Center 2800 Before: CATHERINE Q. TIMM, WESLEY B. DERRICK, and AVEL YN M. ROSS, Administrative Patent Judges. ROSS, Administrative Patent Judge. Appeal2017-005609 Application 13/783,274 DECISION ON APPEAL 1 Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 8, 12, 13, 17-22, 25, 27, 33-37, and 39. 3 We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM-IN-PART. STATEMENT OF THE CASE The subject matter on appeal "relates to wireless communications, and more specifically, to microwave antennas and microwave radio equipment." Spec. 2. The communication method claimed includes an "antenna feed system compris[ing] the radio transceiver, which is integrated with the antenna feed mechanism and the antenna conductors. Many benefits result from this integration, including the elimination of RF cabling and connectors." Id. at 12. Claim 8, reproduced below, is illustrative of the claimed subject matter: 8. A method of transmitting a radio frequency (RF) signal compnsmg: receiving a digital signal at a radio transceiver, wherein the radio transceiver is located on a printed circuit board, the printed circuit board is positioned along an axis of symmetry of a 1 In our Decision, we refer to the Specification filed March 2, 2013 ("Spec."), the Final Office Action appealed from dated January 21, 2016 ("Final Act."), the Appeal Brief filed July 27, 2016 (Appeal Br.), the Examiner's Answer dated December 20, 2016 ("Ans.") and the Reply Brief filed February 16, 2017 ("Reply Br."). 2 Appellants identify the real party in interest as Ubiquiti Networks, Inc. Appeal Br. 1. 3 Previously pending, and rejected, claims 9-11, 14--16, 23, 26, 28-32, and 40 have been canceled, and are no longer pending. Advisory Action, dated June 9, 2016. 2 Appeal2017-005609 Application 13/783,274 parabolic reflector, said circuit board having a distal portion positioned towards a focal point of the parabolic reflector, said circuit board having a proximal portion positioned away from the focal point of the parabolic reflector; generating an RF signal from the radio transceiver, wherein the RF signal is coupled to an antenna feed conductor which in tum is coupled to an active antenna element located on the distal portion of the printed circuit board; radiating radio waves from the active antenna element; and reflecting focused radio waves off a sub-reflector toward the parabolic reflector. Appeal Br. 29 (Claims App'x). REJECTIONS The Examiner maintains the following rejections4: A. Claims 8, 12, 13, 17-22, 24, 25, 27, 33-37 and 39 stand rejected under 35 U.S.C § 112 first paragraph as failing to comply with the enablement requirement. Final Act. 23; Ans. 2. B. Claims 8, 12, 13, 17-22, 24, 25, 27, 33-37 and 39 stand rejected under 35 U.S.C § 112 first paragraph as failing to comply with the written description requirement. Final Act. 36; Ans. 2. C. Claim 34 stands rejected under 35 U.S.C § 112 first paragraph as failing to comply with the written description requirement. Final Act. 42; Ans. 2. D. Claims 2 0 and21 stand rejected under 3 5 U.S. C § 112 second paragraph as indefinite for failing to particularly 4 Appellants amended the claims to cancel claims 9-11, 14--16, 23, 26, 28- 32, 38 and 40. Appeal Br. 2. The Examiner entered the amendment in an advisory action dated June 9, 2016. See Advisory Action dated June 9, 2016, 2. 3 Appeal2017-005609 Application 13/783,274 point out and distinctly claim the subject matter which the inventor regards as the invention. Final Act. 44; Ans. 2. E. Claims 8, 12, 13, 17, 18, 21, 22, 25, 27, and 33 stand rejected under 35 U.S.C § I03(a) as unpatentable over Hemmie5 in view of Hsueh. 6 Final Act. 45; Ans. 2. F. Claims 24, 34--37, and 39 stand rejected under 35 U.S.C § I03(a) as unpatentable over Hemmie in view of Hsueh and Nowak. 7 Ans. 3. Appellants seek our review of Rejections A---C and E-F. See generally Appeal Br. Appellants argue Rejection A, Rejections Band C together, and Rejections E and F together, and argue all claims within the rejections as a group. See id. Therefore, consistent with the provisions of 37 C.F.R. § 4I.37(c)(l)(iv) (2013), we limit our discussion to claim 8 (as applied to each of Rejections A, B, and E) and all other claims stand or fall together with claim 8. Appellants do not address Rejection D, and in doing so, fail to identify a reversible error by the Examiner. Accordingly, we summarily affirm the indefiniteness rejection as applied to claims 20 and 21 as set forth by the Examiner. Final Act. 44--45. OPINION A. Rejection A - Enablement The Examiner rejects claim 8, among others, under 35 U.S.C. § 112 as not enabled to their full scope without undue experimentation. Final Act. 5 Hemmie, et al., US 5,523,768, issued June 4, 1996 ("Hemmie"). 6 Hsueh, et al., US 6,429,827 Bl, issued August 6, 2002 ("Hsueh"). 7 Welville B. Nowak, US 2,627,028, issued January 27, 1953 ("Nowak"). 4 Appeal2017-005609 Application 13/783,274 23. In particular, the Examiner explains that "while being enabling for an antenna system comprising feed pins 205, director pins 206, the sub- reflector 207, transceiver 203 on a printed circuit board in the arrangement as shown in Fig. 2 of the Drawings, [the Specification] does not reasonably provide enablement for nearly any configuration of those individual elements described." Id. In short, the Examiner explains that the scope of the claim includes a large variety of antenna structures but [i]n contrast to the scope of the claims, Applicant's drawings and specification present only a handful of specific antenna structures ... [t]hus, the nature of Applicant's invention is a small, finite number of specific antenna structures, and Applicant's disclosure provides no direction to persons of skill for the manufacture, use, or investigation of any antenna structures, other than the specific structure shown or discussed in relation to the drawings. Id. at 26. The Examiner stresses that critical to Appellants antenna feed assembly is the combination of one or more antenna feed pins, director pins, and sub-reflectors. Id. at 32-33; see generally Ans. 7-14. But, the Examiner explains that the claims do not include these requisite elements. Final Act. 36. The Examiner further states that persons having ordinary skill in the art at the time would have understood that in designing or discovering the single specific antenna structure disclosed in Applicant's drawings and specification, Applicant, at best, discovered a connection between Applicant's antenna structure and Applicant's desired electromagnetic (and mechanical) properties, but did not discover a connection between the bulk of the remaining infinite and wide variety of claimed antenna structures and their electromagnetic properties. Id. at 27. Therefore, because the electromagnetic properties vary significantly based on antenna design and structure, the Examiner finds, 5 Appeal2017-005609 Application 13/783,274 after considering the Wands factors, that "an apparently infinite quantity and wide quality of experimentation would be required in order to enable the full scope of the invention recited in the claims." Id. at 30. Appellants argue that the Examiner is impermissibly requiring that the claims be "a perfected, commercially viable embodiment ... to enable the full scope of the claims," based on some sort of unclaimed performance standard. Appeal Br. 7-9; see also Reply Br. 4 (same). But, Appellants urge that the claims, directed to a method of using certain physical antenna elements, "are clearly taught in the drawings and specification." Appeal Br. 8-10; see Spec. ,r,r 52-57. Appellants assert that the Specification contemplates modifications to the various components and design of the antenna feed system to optimize performance and is therefore not limited to the configurations of the drawings alone. Appeal Br. 11-12, and 15. Appellants further argue that while some experimentation is expected, that level of experimentation is not undue. Id. at 16-17. On this record, we agree with Appellants. A specification complies with the enablement requirement of 35 U.S.C. § 112, first paragraph, if it allows those of ordinary skill in the art to make and use the claimed invention without undue experimentation. See In re Wright, 999 F .2d 1557, 1561 (Fed. Cir. 1993); Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984). Said another way, "[i]f, by following the steps set forth in the specification, one of ordinary skill in the art is not able to replicate the claimed invention without undue experimentation, the claim has not been enabled as required by§ 112, paragraph 1." National Recovery Technologies, Inc. v. Magnetic Separation Systems, Inc., 166 F .3d 1190, 1196 (Fed. Cir. 1999). When rejecting a claim under the enablement 6 Appeal2017-005609 Application 13/783,274 requirement of§ 112, the Examiner bears the initial burden of setting forth a reasonable explanation as to why the scope of protection provided by that claim is not adequately enabled by the specification; this includes providing sufficient reasons for doubting any assertions in the specification as to the scope of enablement. Wright, 999 F.2d at 1561---62. Enablement is a question of law based upon underlying factual determinations. In re Swartz, 232 F.3d 862, 863 (Fed. Cir. 2000). We do not understand the Examiner's rejection to be based on unclaimed performance criteria. In this regard, Appellants appear to misunderstand the basis of the Examiner's rejection. However, other than asserting the scope of the claim is large and encompasses a wide variety of methods and antennas for transmitting a radio frequency, the Examiner does not articulate a reasonable explanation as to why the scope of protection is not enabled by Appellants' Specification. The Examiner reasons that the Specification only enables the claims to the limits of the drawing and the exemplified embodiment. However, this is not the measure of enablement. While drawings and examples may be useful, specific "examples are not required to satisfy section 112, first paragraph" so long as a person skilled in the art can practice the invention without undue experimentation. In re Strahilevitz, 668 F.2d 1229, 1232 (CCPA 1982); In re Borkowski, 422 F.2d 904, 950-51 (CCPA 1970). The Examiner, while finding experimentation is required (Final Act. 29--32), does not establish that such experimentation is undue, that is, anything more than "merely routine." Wands, 858 F.2d at 737 (explaining that enablement is not precluded by the necessity for some experimentation, as long as amount of experimentation is not undue); see also Wyeth & Cordis Corp. v. Abbott Labs., 720 F.3d 1380, 1386 (Fed. Cir. 7 Appeal2017-005609 Application 13/783,274 2013) ("a considerable amount of experimentation is permissible," as long as it is "merely routine" or the specification "'provides a reasonable amount of guidance' regarding the direction of experimentation" ( quoting Johns Hopkins Univ. v. CellPro, Inc., 152 F.3d 1342, 1360-61 (Fed. Cir. 1998)). Thus, without more, we do not sustain the Examiner's lack of enablement rejection. B. Rejection B (and C) - Written Description The Examiner rejects claim 8 under 35 U.S.C. § 112 as failing to comply with the written description requirement. Final Act. 36. According to the Examiner, the Specification lacks support for the breadth of the claims which includes "numerous possibilities of the many various configurations and arrangements for the claimed active antenna with respect to the printed circuit board within the radio antenna device and elements focusing radio waves is not conventional in the art nor known to one of ordinary skill in the art." Id. at 36-37. The Examiner states that "persons of skill at the time of the invention would have concluded that the Applicant failed to design the bulk of the infinite and wide variety of antennas falling within the scope of' the claims. Id. at 40. Further, the Examiner explains that "critical features must be recited in the claims," and "a person of skill in the antenna arts, would ... have found the specific shapes of the various portions of Applicants disclosed structures ( especially those that are electrically conductive and those that feed the antenna), together with the relative dimensions and relative placement of those shapes to be critical to the proper operation of Applicant's antenna." Id. Because these features are unrecited 8 Appeal2017-005609 Application 13/783,274 by the claims, the Examiner determines the claims do not comply with the written description requirement. Id. at 41. Appellants urge that the Examiner is "parsing" the claims too narrowly and relying "on some sort of 'perfected' use of the claimed systems to support its rejection." Appeal Br. 18-19. Appellants argue that Figure 2 in conjunction with the written description of paragraph 43 provides the requisite written description support for the claims. Id. at 19. We agree with Appellants and find that the written description requirement is met by the Specification and accompanying figures. To comply with the written description requirement, an applicant's specification must convey with reasonable clarity to a person of ordinary skill in the art that, as of the filing date, that the applicant was in possession of the claimed invention. Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008). Here, as Appellants point out (Appeal Br. 18- 19), Figure 2 and paragraph 43 of the Specification provide sufficient written description to support claim 8. The Specification describes an antenna feed system where the functions of the radio transceiver 108 are integrated with the functions of the antenna feed conductor 105, and the functions of the conventional antenna feed mechanism 104. The exemplary antenna feed system 200 is located in the same position relative to a reflective antenna as the conventional antenna feed mechanism 104. The exemplary antenna feed system 200 is assembled on a common substrate, which may be a multi-layer printed circuit board 208, as illustrated in FIG. 2. The antenna feed system 200 comprises a digital connector 201 which is equivalent to digital connector 110 of FIG. 1. 9 Appeal2017-005609 Application 13/783,274 Spec. ,r 43. The identified disclosures are sufficient to convey to the person having ordinary skill in the art that Appellants were in possession of the claimed invention as recited in claim 8. We, therefore, do not sustain the Examiner's rejection of claim 8, among others, for failing to comply with the written description requirement of 35 U.S.C. § 112, first paragraph. C. Rejection E (and F)- Obviousness8 The Examiner finds that Hemmie describes a down-converter that practices the method steps according to claim 8 except that Hemmie fails to suggest that the down-converter is a transceiver. Final Act. 46-4 7. However, the Examiner finds that Hsueh describes a "MMDS transceiver 125' having a transceiver circuitry ... integrated together with [a] dipole antenna body 105, 115' as a single body structure." Id. at 47. The Examiner explains that "Hsueh even suggests that bi-directional converter circuitry may be integrated into the boom of a similar technology ... which only teaches down-converter circuitry in the boom." Id. The Examiner reasons that the person skilled in the art would have been motivated to include a transceiver in the down-converter of Hemmi "in order to adapt the antenna of Hemmi for bi-directional communication and minimize transmission loss between the transceiver and antenna, especially since antennas are reciprocal[ly] able to receive or transmit based on signal circuitry." Id. at 47--48. 8 Appellants' arguments as to the obviousness rejections are grounded on the combination of Hemmie and Hsueh. Appeal Br. 6. 10 Appeal2017-005609 Application 13/783,274 Appellants assert that Hemmie fails to teach transmitting an RF signal, rather, Hemmie describes receiving a signal, not transmitting a signal. Appeal Br. 20-21. As a result, Appellants urge that "one having ordinary skill in the art would not look to Hemmie for any guidance on RF transmission or operations of a transceiver." Id. at 21. Appellants contend that while Hsueh may describe the transceiver, the claims require the transceiver to be "mounted on the circuit board with active elements also mounted on the same circuit board, with the circuit board positioned in relationship to a parabolic reflector" and "Hsueh only discloses a transceiver in a box mounted on the base and not unified as disclosed in the text of claim 8." Id. at 22. Appellants argue that to modify the system of Hemmie to include the transceiver of Hsueh would require changing the basic function of Hemmie "from a single stage in a one-way communications system to a full-fledged communication system." Id. at 27. Appellants do not persuade us of reversible error. "Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Rather, "[t]he test [for obviousness] 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 (CCP A 1981 ). As the Examiner stresses (Ans. 20), the rejection relies on the combination of Hemmie and Hsueh. The Examiner relies Hemmie to describe, inter alia, a receiver located on a printed circuit board. Final Act. 46. Hemmie explains that by providing for an integrated antenna/down converter system, costly coax connections can be eliminated. Hemmie, col. 3, 11. 56-63. The Examiner further relies on Hsueh which describes 11 Appeal2017-005609 Application 13/783,274 modifying down-converter systems like that of Hemmie to include a bidirectional converter for bi-directional communication. Final Act. 46-47; Ans. 21. The Examiner's reasoning to include the transceiver of Hsueh-in place of the down converter of Hemmie-to improve the system of Hemmie to include bi-directional communication and minimize transmission loss (Final Act. 48) is supported by the record (Hsueh, col. 2, 11. 45-56) and does not impermissibly alter the functionality of Hemmie. Appellants further contend that "[ n ]either Hemmie nor Hsueh disclose any operations on digital signals or transceivers that operate on digital signals." Appeal Br. 23. Appellants explain that the instant Specification describes USB and Ethernet connectors as supplying a digital signal as opposed to coaxial cables of the prior art which are designed to carry RF signals only. Id. Appellants further assert that the digital signals discussed in Hsueh, i.e., MMDS "transmitter for transmitting and receiving analog and digital signals," does not include digital signals as contemplated by Appellants. Id. at 25 (quoting Hsueh, col. 1, 11. 14--16). Appellants' arguments are not persuasive of reversible error. As the Examiner notes, no claim limits the invention to USB or Ethernet systems and only claim 19 limits the digital signal to one that supports OSI models. Ans. 22. Therefore, the digital signal of claim 1 may include USB and Ethernet systems and systems that support OSI models, but is not necessarily limited to those specific embodiments. The Examiner defined "digital signal" as "any electrical signal which contains information represented by discrete values via a prescribed law including for example, telegraph signals, and not limited to signals traveling through USB or Ethernet cables." Final Act. 10. The Examiner further explains that "[ w Ji th out additional 12 Appeal2017-005609 Application 13/783,274 specificity, any wireless or wired signal containing information represented by discreet values via a proscribed law, i.e., any communication signals ... is a "digital signal." Id. The Examiner finds that the coax bracket of Hemmie is a digital connector capable of carrying a digital signal and that "[ c ]oax brackets and connectors are extensively used in home cable and data systems." Id. at 18 ( citing Hemmie, col. 8, 1. 60-col. 9, 1. 5). Appellants assert that a digital signal cannot "include 'any communications signal,"' and that a grounded coaxial cable is not a digital connector. Appeal Br. 23. However, by speaking in generalities, these arguments provide no meaningful response to the Examiner's proffered construction-requiring "wireless or wired signal containing information represented by discreet values via a proscribed law"----or findings regarding "typical" usage of coaxial cable connectors as transporting digital signals. As Appellants acknowledge, MMDS system of Hemmie "may or may not be modulated with digital information." Appeal Br. 24. Furthermore, the Examiner finds that "Hsueh clearly teaches at least 'digital signals' as defined by the Applicant and Applicant's own admission as discussed." Final Act. 20. Therefore, on this record, the preponderance of the evidence supports the Examiner's findings and conclusions. Lastly, Appellants urge that the Examiner "fails to state a reason why a skilled artisan would combine the elements in accordance with the claims." Appeal Br. 26. Appellants complain that the reason offered by the Examiner is based on impermissible hindsight and "is merely a recitation of the 13 Appeal2017-005609 Application 13/783,274 resulting claims, not an articulated motivation disclosed or even hinted at by the references at all." Id. at 27. We find no evidence that the Examiner relies on impermissible hindsight reasoning as the Examiner's reasons for combining the teachings of Hemmie and Hsueh are supported by the prior art disclosures themselves. See, e.g., Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) ("The invention must be viewed not after the blueprint has been drawn by the inventor, but as it would have been perceived in the state of the art that existed at the time the invention was made." ( citing Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138 (Fed. Cir. 1985))). Here, as the Examiner explains that the modification of the down-converter of Hemmie to include a bi-directional communication system as taught by Hsueh because Hsueh expressly describes making the modification. Ans. 23-24. Thus, we discern no error in these findings and conclusions. Moreover, Appellants do not identify any knowledge relied upon by the Examiner that was gleaned only from the Appellants' disclosure and was not within the level of skill in the art at the time of the invention. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Appellants, in reply, argue for the first time that "Hsueh specifically teaches away from combining with Hemmie because Hemmie is inferior and because Hsueh solves a different problem from Hemmie." Reply Br. 8-9. Appellants have not explained, nor is it apparent, that these arguments were necessitated by the Examiner's Answer or could not have been presented in the principal brief. Therefore, these arguments are untimely and we will not reach arguments presented for the first time in a reply brief in the absence of good cause. 37 C.F.R. §41.41(b)(2). 14 Appeal2017-005609 Application 13/783,274 Accordingly, we sustain the Examiner's rejections of claims 8, 12, 13, 17, 18, 21, 22, 24, 25, 27, 33-37, and 39, over the recited art. CONCLUSION Appellants identified a reversible error in the Examiner's rejection of claims 8, 12, 13, 17-22, 24, 25, 27, 33-37 and 39, under 35 U.S.C § 112 first paragraph, as failing to comply with the enablement requirement. Appellants identified a reversible error in the Examiner's rejection of claims 8, 12, 13, 17-22, 24, 25, 27, 33-37and 39, under 35 U.S.C § 112 first paragraph, as failing to comply with the written description requirement. Appellants identified a reversible error in the Examiner's rejection of claim 34, under 35 U.S.C § 112 first paragraph, as failing to comply with the written description requirement. Appellants fail to identify a reversible error in the Examiner's rejection of claims 20 and 21, under 35 U.S.C § 112 second paragraph, as indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention. Appellants fail to identify a reversible error in the Examiner's rejection of claims 8, 12, 13, 17, 18, 21, 22, 25, 27, and 33, under 35 U.S.C § 103(a), as unpatentable over Hemmie in view of Hsueh. Appellants fail to identify a reversible error in the Examiner's rejection of claims 24, 26, 34--37, and 39, under 35 U.S.C § 103(a), as unpatentable over Hemmie in view of Hsueh and Nowak. 15 Appeal2017-005609 Application 13/783,274 DECISION For the above reasons, the Examiner's rejection of claims 8, 12, 13, 17, 18, 20-22, 24, 25, 27, 33-37 and 39 is affirmed. The Examiner's rejection of claim 19 is reversed. No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). AFFIRMED-IN-PART 16 Copy with citationCopy as parenthetical citation