Ex Parte Petruzzelli

Patent Trial and Appeal Board

Dec 11, 2017

14034912 (P.T.A.B. Dec. 11, 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.
14/034,912 09/24/2013 Edmund Petruzzelli P2013-04-11 (0875222) 6705
100597 7590 12/18/2017
KILPATRICK TOWNSEND & STOCKTON LLP (DISH)
DISH Network L.L.C.
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
BAIG, SAHAR A
ART UNIT PAPER NUMBER
2424
NOTIFICATION DATE DELIVERY MODE
12/18/2017 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):
ipefiling@kilpatricktownsend.com
KT S Docketing2 @ kilpatrick. foundationip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDMUND PETRUZZELLI
(Applicant: EchoStar Technologies L.L.C.)
Appeal 2017-007476
Application 14/034,9121
Technology Center 2400
Before ROBERT E. NAPPI, JAMES W. DEJMEK, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1—20, which constitute all of the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellant identifies itself, EchoStar Technologies L.L.C., as the real party
in interest. App. Br. 3.
Appeal 2017-007476
Application 14/034,912
THE INVENTION
The disclosed and claimed invention is directed to a field-
programmable low-noise block downconverter that “may, as part of a system
install or upgrade for example, be programmed in the field to source
channels containing programming to a particular television receiver based on
the particular configuration of the receiver.” Abstract; see also Spec. 116.
Claim 1, reproduced below with relevant language emphasized, is
illustrative of the claimed subject matter:
1. A method for programmatically configuring a low-noise
block downconverter (LNB), comprising:
receiving, at the LNB from at least one television
receiver, an indication of the sourcing scheme or mode that the
at least one receiver is configured to exhibit;
accessing, by the LNB, a particular file stored locally on
the LNB and containing instructions to configure the LNB so
that output signals provided by the LNB to the at least one
receiver are formatted according to the sourcing scheme or
mode indicated by the at least one receiver; and
modifying logic of the LNB based on the instructions so
that output signals provided by the LNB to the at least one
receiver are formatted according to the sourcing scheme or
mode of the at least one receiver.
RELERENCE
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Gurantz US 7,522,875 B1 Apr. 21,2009
REJECTIONS
Claims 18—20 stand rejected under 35 U.S.C. § 112(b) as being
indefinite. Final Act. 3—5.
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Application 14/034,912
Claims 1—20 stand rejected under 35 U.S.C. § 102(a)(1) as being
anticipated by Gurantz. Id. at 6—9.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellant. We
are persuaded by Appellant’s arguments.
Section 112(b) Rejection
In the Final Action, the Examiner concluded the input module and
output module recited in claims 18—20 were indefinite. Final Act. 4—5.
More specifically, the Examiner concludes that although the limitations
invoke 35 U.S.C. § 112(f), “the written description fails to clearly link or
associate the disclosed structure, material, or acts to the claimed function
such that one of ordinary skill in the art would recognize what structure,
material, or acts perform the claimed function.” Id. at 4. The Examiner
further states that “[tjhere must be an explanation of how the computer or
component performs the claimed function.” Id.2
Appellant argues the input module and output module are not nonce
words; instead the claim, when considered as a whole, recites specific
structure and is not governed by Section 112(f). App. Br. 5.
2 Although the Examiner does not identify this ground of rejection in the
Answer, the Examiner does not indicate that it has been withdrawn. Ans. 2.
Because the rejection was not withdrawn, we treat it as being maintained.
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Application 14/034,912
“[T]he failure to use the word ‘means’ . . . creates a rebuttable
presumption—. . . that § 112[(f)] does not apply.” Williamson v. Citrix
Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (citation omitted).
However, “if the challenger demonstrates that the claim term fails to recite
sufficiently definite structure or else recites function without reciting
sufficient structure for performing that function,” this presumption may be
rebutted. Id. (internal quotation marks, brackets, and citation omitted).
We agree with Appellant that claim 18 recites specific, definite
structure associated with the input module and the output module.
Specifically, claim 18 recites that the input module includes “a plurality of
input ports each communicatively coupleable to a feedhom to receive as
input signals broadcast by a particular satellite” and the output module
includes “plurality of output ports each communicatively coupleable to a
particular television receiver to supply as output signals in accordance with a
television receiver sourcing scheme or mode.” App. Br. 18 (Claims App’x).
Accordingly, although module is a nonce word (Williamson, 792 F.3d at
1350 (“‘[mjodule’ is a well-known nonce word that can operate as a
substitute for ‘means’ in the context of § 112[(f)]”)), because the claim
recites structure for performing the function, the claim is not governed by
Section 112(f).
Because the Examiner’s rejection is predicated on the claims being
governed by Section 112(f), we do not sustain the Examiner’s rejection of
claims 18—20 as indefinite.
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Appeal 2017-007476
Application 14/034,912
Section 102 Rejection
The Examiner finds Gurantz discloses “modifying logic of the LNB
based on the instructions so that output signals provided by the LNB to the
at least one receiver are formatted according to the sourcing scheme or mode
of the at least one receiver,” as recited in claim 1. Final Act. 6 (citing
Gurantz 10:42—11:11); see also id. at 2 (citing Gurantz 10:42—11:23); Ans. 8
(citing Gurantz 11:20—23). Specifically, the Examiner maps the LNB to the
ODU (outdoor unit) disclosed in Gurantz. Ans. 8 (finding the disputed
limitation “is met by Gurantz when it is shown that that channel information
is communicated to the ODU (LNB) and that device configuration, channel
mapping and channel requests are the type of data communicated between
the LNB (ODU) and the STB (receiver)”) (citing Gurantz 11:20—23). The
Examiner further finds, based on Gurantz’s Figure 1, “that a satellite
receiver outdoor unit (‘ODU’) 110 typically comprises a dish antenna 150,
one or more antenna feed horns 130, one or more low noise amplifier and
block down converters (‘LNB’) 140.” Final Act. 2.
Appellant argues the Examiner erred in mapping the outdoor unit to
the LNB recited in claim 1. Reply Br. 3. More specifically, Appellant
argues:
Repeatedly, the Answer equates Gurantz’s ODU with an LNB.
(E.g., Answer, pg. 8.) Yet, this overbroad interpretation ignores
the clear distinctions of Gurantz and the present application, both
of which distinguish an LNB from other components of a satellite
ODU.
Gurantz distinguishes multiple LNBs from other
components of the ODU, such as Gurantz’s signal selector and
combiner. (See, e.g., Gurantz Fig. 3 (multiple LNBs distinct
from the allegedly inventive signal selector and combiner 350).)
The present application distinguishes an outdoor satellite unit
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Application 14/034,912
from the LNB. (See PG Pub. 113.) Further, the present
application specifies that: “[T]he present disclosure is directed
to or towards a field-programmable LNB. It is contemplated that
the LNB as described throughout may represent a paradigm shift
with respect to LNB design. . . . [T]he LNB of the present
disclosure may, as part of a system install or upgrade, be
programmed or reprogrammed in the field to source channels
containing programming to a particular television receiver based
on the particular configuration of the receiver.” (Id. at 116.)
Reply Br. 3.
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). Moreover, the reference must also “disclose[]
within the four comers of the document not only all of the limitations
claimed but also all of the limitations arranged or combined in the same way
as recited in the claim.” Net Money IN, Inc. v. VeriSign, Inc., 545 F.3d 1359,
1371 (Fed. Cir. 2008). The absence of a single limitation—even if that
limitation would be obvious from the cited reference—negates anticipation.
In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
We are persuaded by Appellant’s arguments as the Examiner has not
identified sufficient evidence or provided sufficient explanation as to how
Gurantz discloses the modifying logic of the LNB step as recited in claim 1.
Specifically, we agree with Appellant that, as used in Gurantz, the outdoor
unit includes more than just the LNB. Although the Examiner’s finding
relies on Gurantz’s Figure 1 to support the mapping of the ODU to the LNB,
that figure shows the prior art, not the Gurantz invention. See Gurantz 1:32—
67, 3:60—61, Fig. 1. However, Figure 3, which is an embodiment of the
Gurantz invention, shows both the LNB and a signal selector 350, including
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Application 14/034,912
a controller 355, as part of the ODU. Gurantz 4:44—59, Fig. 3. Although the
sections of Gurantz relied on by the Examiner refer to the ODU determining
which format to use (see id. at 11:1—23), Gurantz does not specify what part
of the ODU is making that determination. That is, it is unclear whether it is
the LNB or the signal selector. We cannot sustain a rejection based on
speculation. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“The
Patent Office has the initial duty of supplying the factual basis for its
rejection. It may not, because it may doubt that the invention is patentable,
resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in its factual basis.”).3
Accordingly, based on the current record, we are constrained to
reverse the Examiner’s rejection of claim 1, along with the rejections of
claims 11 and 18, which recite limitations commensurate in scope with the
disputed limitation, and dependent claims 2—10, 12—17, 19, and 20.
DECISION
For the above reasons, we reverse the Examiner’s decisions rejecting
claims 1—20.
REVERSED
3 Appellant raises additional issues in the Appeal Brief. Because we are
persuaded the Examiner erred with respect to this dispositive issue, we do
not reach the additional issues.
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