Ex Parte Perlman

Board of Patent Appeals and Interferences

Dec 15, 2011

10395749 (B.P.A.I. Dec. 15, 2011)

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.
10/395,749 03/24/2003 Stephen G. Perlman 08258.P006X 7562
27660 7590 12/15/2011
THE LAW OFFICES OF BRADLEY J. BEREZNAK
800 WEST EL CAMINO REAL
SUITE 180
MOUNTAIN VIEW, CA 94040
EXAMINER
NGUYEN, TU X
ART UNIT PAPER NUMBER
2618
MAIL DATE DELIVERY MODE
12/15/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEPHEN G. PERLMAN
____________

Appeal 2009-013950
Application 10/395,749
Technology Center 2600
____________

Before KARL D. EASTHOM, GREGORY J. GONSALVES, and ERIC B.
CHEN, Administrative Patent Judges.

GONSALVES, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 1-32. (App. Br. 3.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Introduction
Appellants’ invention includes a satellite antenna assembly with an
integrated wireless transceiver to provide “a wireless local area network
(WLAN) which both distributes a wide range of video services (digitally-
encoded broadcast services, pay-per–view television, and on-demand video
services, etc.) and provides two-way (i.e., interactive) data services to
individuals located across a wireless coverage region.” (Spec. ¶ [0032].)
The satellite antenna assembly includes a reflector dish 16, a signal unit 18
positioned at a focal point of the dish, and an antenna 77 attached to the
signal unit 18. (Id. at ¶ [0035], FIGs. 1 and 2). The signal unit 18 includes a
wireless transceiver 71 and a pair of low noise block converters (LNBs) (72
and 73). (Id at ¶ [0036], FIG. 3.) The signal unit 18 “converts the
electromagnetic radiation reflected from dish 16 into electrical signals….”
(Id. at ¶ [0035].) “LNBs 72 & 73 may be configured to receive horizontally
and vertically polarized satellite transmission signals.” (Id. at ¶ [0037].)
The wireless transceiver 71 uses the antenna 77 “to effectuate wireless
transmissions.” (Id. at ¶ [0036].)
The satellite antenna assembly may also include a tuner 126 to tune
channels from satellite service providers. (Id. at ¶ [0065].) When video/data
content is received from a satellite, the tuner “functions as a wireless server
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to distribute that video/data content to authorized users connected to the
wireless network.” (Id. at ¶ [0070].) Claim 1, which is illustrative of the
invention, reads as follows:
1. A unit for mounting outdoors comprising:
a reflector dish;
a low-noise block converter (LNB) to receive a satellite
transmission reflected off the reflector dish;
a tuner coupled to the LNB, the tuner including a wireless
transceiver operable to transmit video/data contained in the satellite
transmission to one or more destination devices in a local area.

The Examiner’s Rejections

The Examiner rejected claims 5, 7, 10-11, 19, 22, and 28 under 35
U.S.C. §102(e) as anticipated by B-J Kim (U.S.7,289,478 B1). (Ans. 7-9.)
1

The Examiner rejected claims 1-4, 6, 12-15, 17-18, 23-25, 27, 29-30
and 32 as obvious under 35 U.S.C. §103(a) based on B-J Kim and J-G Kim
(U.S. 6,925,285 B2). (Ans. 3-5.)
The Examiner rejected claims 8-9, 16, 20-21, and 31 as obvious under
35 U.S.C. §103(a) based on B-J Kim and Talmola (U.S. Pub.
2002/0038459 A1). (Ans. 5-6.)
The Examiner rejected claims 12-14 as obvious under 35 U.S.C.
§103(a) based on B-J Kim and Strienmer (U.S. Pub. 2003/0199247 A1).
(Ans. 6.)
The Examiner rejected claims 23-24 as obvious under 35 U.S.C.
§103(a) based on B-J Kim, Talmola, and Strienmer. (Ans. 6-7.)

1
The Examiner addresses claim 22 on page 8 of the Final Rejection.
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The Examiner rejected claim 26 as obvious under 35 U.S.C. §103(a)
based on Talmola and Barrett (U.S. Pub. 2004/0034865 A1 ). (Ans. 7.)

ISSUES
Appellant’s responses to the Examiner’s positions present the
following issues:
1. Does B-J Kim disclose “an outdoor unit that includes … a
wireless transceiver” and inherently disclose a “low-noise block converter
(LNB),” as recited in independent claim 5 and as similarly recited in
independent claim 28?
2. Did Appellant establish that B-J Kim is inoperative?
3. Did the Examiner establish that one of ordinary skill in the art
would have been motivated to combine B-J Kim and J-G Kim?

FINDINGS OF FACT (FF)
B-J Kim
1. B-J Kim discloses an “apparatus for integrating Fixed Wireless
Broadband Access (FWBA) and a Wireless Local Access radio Network
(WLAN).” (Abstract.) B-J Kim’s integrator includes “an RF processing
component, 30, a modulator/demodulator component 40 and a wireless local
area radio component 50.” (3:62-65.)
2. The integrator “may be mounted on the roof outside of home
and/or business.” (4:33-34.) In addition, an antenna that is shown to be
mounted outside, “can instead be a satellite dish.” (3:35-36.)

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J-G Kim
3. J-G Kim discloses “an apparatus for transmitting and receiving an
MPEG data using a wireless LAN in which a satellite broadcast receiver and
a wireless transceiver in conformity to an IEEE802.11a protocol are
effectively combined.” (1:47-50.)

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
conclusions. We adopt as our own the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and the reasons set
forth by the Examiner in the Examiner’s Answer (Ans. 3-12) in response to
Appellants’ Appeal Brief. But we highlight and address specific findings
and arguments regarding the B-J Kim and K-G Kim references as follows.

Issue - Claims 5, 7, 10-11, 22, 19, and 28
Appellant asserts that B-J Kim does not disclose “an outdoor unit that
includes a wireless transceiver.” (App. Br. 11 (citation omitted).) But
contrary to the Appellant’s assertion, B-J Kim does, in fact, disclose that
both a satellite dish, and an integrator containing a wireless transceiver, may
be mounted outside. (FF 2.)
Appellant also asserts that B-J Kim does not inherently disclose a
low-noise block converter (LNB). (App. Br. 11-12.) Appellant argues that
many reflector dishes do not have an LNB and identifies examples of
reflector dishes that do not have an LNB. (Id. at 12.) But as explained by
the Examiner, the dishes identified by the Appellant are not satellite dishes.
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(Ans. 11.) And a definition of an LNB found by the Examiner “shows that
an LNB is an essential part of a satellite receiver and is always located with
the antenna.” (Ans. 10 (emphasis omitted).)
Appellant also argues that B-J Kim is inoperative because it
“describes a device that receives the entire broadband signal from a fixed
wireless broadband source, e.g, a satellite, and then retransmits that entire
signal into a home into a WLAN.” (App. Br. 12.) Appellant argues that
such a device is not feasible because it “introduces into the home’s WLAN
transmission data rates well beyond a gigabit/sec per device – a bandwidth
that no commercially –available WLAN can come even close to handling.”
(Id.) But B-J Kim is an issued patent and therefore, is presumed to be valid
and therefore, operative. And notwithstanding Appellant’s arguments, B-J
Kim does not state that its device receives an entire broadband signal and
retransmits the entire signal over a WLAN.
For these reasons and the reasons expressed by the Examiner (Ans. 3-
12.), we will sustain the Examiner’s rejections of independent claims 5 and
28. We will also sustain the Examiner’s rejection of dependent claims 7, 10-
11, 19, and 22, because Appellant did not set forth separate patentability
arguments for those claims. (See App. Br. 10-14.)
Issue - Claims 5, 7, 10-11, 19, and 28
Appellant asserts that “the Examiner has failed to properly explain the
reason why one of ordinary skill in the art would have been motivated to
select the references…” (App. Br. 20.) Appellant argues that “one of
ordinary skill in the communication arts would not have attempted to
combine the two references because B-J Kim is aimed at a two-way wireless
video transmission system, whereas J-G Kim teaches a one-way wireless
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video transmission system.” (App. Br. 16-19.) But the Examiner explained
that one of ordinary skill in the art would have been motivated to add a tuner
as taught by J-G Kim to B-J Kim’s system “in order to provide selectively
receiving a particular frequency bank or a channel signal amount the satellite
broadcast signal.” (Ans. 4.) And Appellant fails to explain why one of
ordinary skill in the art would have been dissuaded to add a tuner as taught
by K-J Kim to B-J Kim’s system merely because of one difference between
the systems of B-J Kim and J-G Kim (i.e., two-way and one-way
transmission systems). (See App. Br. 17-19.) In other words, Appellant
fails to explain why one of ordinary skill in the art would not have added a
tuner to B-J Kim’s system without changing the two-way nature of B-J
Kim’s system. (Id.)
Appellant also argues that one of ordinary skill in the art would have
lacked motivation to combine the teachings of B-J Kim and J-G Kim
because B-J Kim is inoperative. (App. Br. 16.) But as explained supra,
Appellant has not shown that B-J Kim is inoperative.
For these reasons and the reasons expressed by the Examiner (Ans. 3-
4 and 9-12), we sustain the Examiner’s rejections of independent claim 1, as
well as dependent claims 2-4, 6, 15, 17-18, 25, 27, 29-30, and 32 because
Appellant did not set forth any additional argument as to why those claims
are not obvious. (See App. Br. 14-21.)
As to dependent claims 12-14 and 23-24, Appellant argues that “it
was not common knowledge to use repeaters to distribute broadband video
throughout a residential or business structure.” (App. Br. 20.) Appellant
further argues that repeaters would not be used in a system that relies upon
forward error correction like J-G Kim’s system because “with each
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successive repeater the probability of an error occurring would increase.”
(App. Br. 21.) But Appellant does not explain why one of ordinary skill in
the art would not use repeaters in systems that do not rely on forward error
correction like the system of the other reference that was used in the
rejection of claims 12-14 and 23-24 (i.e., B-J Kim). (See App. Br. 20-21.)
Appellant also asserts, in response to the Examiner’s use of Strienmer
to teach the use of repeaters, that “a person of ordinary skill in the art at the
time of the invention would have lacked any motivation to combine
Strienmer with B-J Kim…” (App. Br. 25; see also App. Br. 26.) Appellant
argues that Strienmer is not relevant to the claims because it teaches the use
of a wireless repeater and controller to turn a light bulb on or off. (App. Br.
25.) But Strienmer also teaches that the wireless repeater and controller,
upon receiving a wireless message, “repeats the wireless message at a
predetermined power level.” (Strienmer, Abstract.) In other words, as
explained by the Examiner, Strienmer teaches “a wireless repeater for
extending coverage area.” (Ans. 12.) Thus, one of ordinary skill in the art
would be motivated to combine the teachings of a wireless repeater in
Strienmer to B-J Kim’s system to extend the coverage area of its wireless
transmissions.
Accordingly, we sustain the Examiner’s rejection of claims 12-14 and
23-24.

Issue - Claims 8-9, 16, 20-21, 26 and 31
Appellant asserts that, contrary to the Examiner’s finding, claims 8-9,
16, 20-21 and 31 are not obvious based on B-J Kim and Talmola because
Talmola teaches away from the claimed invention by teaching “the
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conventional approach of connecting an outdoor-located satellite dish to an
indoor-located terminal or receiver via a cable.” (App. Br. 24 (citation
omitted).) But Appellant does not explain why the mere fact that Talmola
discloses a more conventional approach indicates that it teaches away from
the claimed invention of including a satellite dish and a wireless transceiver
in the same outdoor unit. (See App. Br. 23-24.)
Appellant also states that the article titled “Helpless, Hopeless,
Wireless” establishes “a long felt need which was recognized, persistent, and
not solved by others.” (App. Br. 23.) Although this article mentions some
of the problems of WiFi, however, it also mentions that these problems
were, in fact, solved by a company named Aruba Wireless so that the “Wi-Fi
network is more stable.” (“Helpless, Hopeless, Wireless,” Evidence
Appendix, p. A-58.)
Appellant also states in a declaration that “ordinary practitioners
would have considered it practically impossible in 2002-03 to achieve a
wireless network comprising a unit capable of both receiving satellite
transmission signals and terrestrially transmitting those satellite signals
wirelessly to local users.” (App. Br. 22, quoting Declaration Under 37
C.F.R § 1.132, paragraph 29.) But Appellant does not provide any
meaningful explanation to support his statement, particularly in light of the
disclosures of B-J Kim and J-G Kim. (See App. Br. 21-24.) Indeed, the
Declarations submitted by Appellant do not even mention either B-J Kim or
J-G Kim. (See Declaration Under 37 C.F.R § 1.132, Supplemental
Declaration Under 37 C.F.R § 1.132.) For these reasons, we sustain the
Examiner’s rejections of claims 8-9, 16, 20-21 and 31.
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Appellant presents additional argument for claim 26, which depends
from independent claim 16. (App. Br. 27-33.) More particularly, Appellant
argues that neither Barrett nor Talmola teaches an apparatus including a
satellite dish, a LNB, and a wireless transceiver. (App. Br. 28-29.) But, the
Examiner did not rely on either reference to teach such an apparatus; he
instead relied on B-J Kim for these claim limitations, as discussed supra.
(Ans. 3-4). Appellant also makes a series of arguments explaining that
Barrett teaches away from the claimed invention because it teaches a
headend, which is a “central hub that supports a cable or TV network for a
large geographic area (e.g. a city) or that supports an uplink center for a
satellite operator that may cover an entire continent.” (App. Br. 29-32.)
But the Examiner does not rely on the portions of Barrett relating to headend
service to teach the claimed invention; he instead relies on Barrett’s teaching
of a redundant array of inexpensive drives called RAIDs to meet the
corresponding limitation of claim 26. (Ans. 12.) For these reasons, we also
sustain the Examiner’s rejection of claim 26.

DECISION
The decision of the Examiner rejecting claims 1-32 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

ELD