Ex Parte Pera et al

Patent Trial and Appeal Board

Aug 29, 2018

13783274 (P.T.A.B. Aug. 29, 2018)

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.
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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.
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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").
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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,
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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
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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.
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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
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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.
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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.
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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
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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
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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
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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).
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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.
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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
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