Ex Parte Reddy et al

Patent Trial and Appeal Board

Oct 31, 2017

13336451 (P.T.A.B. Oct. 31, 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.
13/336,451 12/23/2011 Madhukar Reddy 24615US02 7723
23446 7590 11/02/2017
MCANDREWS HELD & MALLOY, LTD
500 WEST MADISON STREET
SUITE 3400
CHICAGO, IL 60661
EXAMINER
BOLOURCHI, NADER
ART UNIT PAPER NUMBER
2631
NOTIFICATION DATE DELIVERY MODE
11/02/2017 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):
mhmpto @ mcandrews-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MADHUKAR REDDY, ERIC FOGLEMAN, and
CURTIS LING
Appeal 2017-003033
Application 13/336,451
Technology Center 2600
Before JAMES R. HUGHES, JOHNNY A. KUMAR, and
JOHN D. HAMANN, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1—20, which constitute all the claims
pending in this application. Final Act. 1.1 We have jurisdiction under 35
U.S.C. § 6(b).
We reverse.
1 We refer to Appellants’ Specification (“Spec.”) filed Dec. 23, 2011
(claiming benefit of US 61/427,088, filed Dec. 23, 2010); Appeal Brief
(“App. Br.”) filed Apr. 28, 2016; and Reply Brief (“Reply Br.”) filed Dec.
14, 2016. We also refer to the Examiner’s Answer (“Ans.”) mailed Oct. 26,
2016; and Final Office Action (Final Rejection) (“Final Act.”) mailed Dec.
10, 2015.
Appeal 2017-003033
Application 13/336,451
Appellants ’ Invention
The invention at issue on appeal concerns broadband data conversion
systems and methods for processing signal information, the system including
a receiver comprising receive chain circuits for processing one of a multiple
sub-bands of a signal received by the receiver and a digital signal processing
(DSP) module utilizing the output of the first receive chain to remove
undesired signals from the output of the second receive chain. (Spec. 5,
7, 20-30; Abstract.)
Illustrative Claim
Independent claim 1, reproduced below with key disputed limitations
emphasized, further illustrates the invention:
1. A system comprising:
one or more circuits of a receiver, said one or more circuits
comprising a plurality of first-type receive chains, each of said
plurality of first-type receive chains being operable to process a
respective one of a plurality of sub-bands of a received signal,
and
a digital signal processing module operable to utilize a
signal output by a first one of said plurality of first-type receive
chains to remove undesired signals from a signal output by a
second one of said plurality of first-type receive chains.
Rejections on Appeal
1. The Examiner rejects claims 1—20 under 35 U.S.C § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
2. The Examiner rejects claims 1—3, 8—13, and 18—20 under 35
U.S.C. § 103(a) as being unpatentable over Turner et al. (US 8,160,187 Bl,
issued Apr. 17, 2012 (filed Feb. 25, 2008)) (“Turner”).
2
Appeal 2017-003033
Application 13/336,451
3. The Examiner rejects claims 4—7 and 14—17 under 35 U.S.C.
§ 103(a) as being unpatentable over Turner and Walton et al. (US
2004/0137863 Al, published July 15, 2004) (“Walton”).
ISSUE
Based upon our review of the record, Appellants’ contentions, and the
Examiner’s findings and conclusions, the issue before us follows:
Did the Examiner err in finding that Turner would have taught or
suggested “a receiver . . . comprising a plurality of first-type receive chains,
each of said plurality of first-type receive chains being operable to process a
respective one of a plurality of sub-bands of a received signal,” within the
meaning of Appellants’ claim 1 and the commensurate limitations of claim
11?
ANALYSIS
The Indefiniteness Rejection
The Examiner rejects claims 1—20 and, in particular, independent
claims 1 and 11 as being indefinite because the term sub-band is unclear.
See Final Act. 11—12; Ans. 12—13. Appellants contend the Specification
explicitly describes separately amplifying sub—bands of a received cable
signal and, therefore, the terminology is not indefinite. See App. Br. 4;
Reply Br. 2—6.
We agree with Appellants, and disagree with the Examiner, that the
term sub-bands would have been understood by one of ordinary skill in the
relevant art. The essence of the requirement under 35 U.S.C. § 112, second
paragraph is that the language of the claims must make clear what subject
3
Appeal 2017-003033
Application 13/336,451
matter the claims encompass — i.e., ‘“whether those skilled in the art would
understand what is claimed when the claim is read in light of the
specification.’” Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d
1364, 1380 (Fed. Cir. 2011) (quoting Orthokinetics, Inc. v. Safety Travel
Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986)); see In re Packard, 751
F.3d 1307, 1310—14 (Fed. Cir. 2014) (agreeing that a claim fails to comply
with § 112^2 “when it contains words or phrases whose meaning is
unclear”).
The Examiner fails to sufficiently explain why one of ordinary skill in
the art would not understand what is claimed by Appellants. Consequently,
we are constrained by the record before us to find that the Examiner erred in
rejecting Independent claims land 11 and dependent claims 2—10 and 12—20
as being indefinite. Accordingly, we reverse the Examiner’s indefmiteness
rejection of claims 1—20.
The Obviousness Rejections
The Examiner rejects independent claim 1 (and independent claim 11)
as being obvious in view of Turner. See Final Act. 12—14; Ans. 13—14.
Appellants contend Turner does not teach the disputed features of claim 1.
See App. Br. 5—8; Reply Br. 6—7. Specifically, Appellants contend, inter
alia, that “each of Turner’s front ends 11—13 processes a different one of a
plurality of signals, and thus Turner does not teach ‘each of said plurality of
first-type receive chains being operable to process a respective one of a
plurality of sub-bands of a received signal'” (App. Br. 7 (quoting claim 1))
and that Turner instead “teaches that each of the FE Rx Elements 11—13
receives a respective one or a plurality of different signals via a respective
4
Appeal 2017-003033
Application 13/336,451
one of a plurality of subscriber lines 16—18” (App. Br. 7 (citing Turner col.
4,11. 5—6)). See App. Br. 5—8; Reply Br. 6—7.
We agree with Appellants, and disagree with the Examiner, that
Turner describes receiving a signal (cable spectrum signal) and separate
receive chain circuits processing sub-bands of the received signal. As
pointed out by Appellants, claim 1 (and claim 11) explicitly recite
processing “sub-bands” of a “received signal” (Reply Br. 7) and the
Examiner dismisses these claim elements — the “Examiner’s Answer states”
(Reply Br. 7 (emphasis omitted)) that the “‘sub-band of the received signal
is not applicable’” (Reply Br. 7 (quoting Ans. 12)). See App. Br. 5—8; Reply
Br. 6—7. As further pointed out by Appellants, Turner describes separate
receivers receiving separate signals (from different subscriber lines)
(separate digital multi-tone (DMT) signals from separate subscriber lines
(digital subscriber lines or DSLs)). See Turner col. 4,11. 4—6. Turner further
explains that the system includes a “plurality of receivers” that receive
distinct signals from “a plurality of subscriber lines” (Turner col. 3,11. 6—10)
and that Turner’s front end (FE) elements each separate “the received signal
into many individual subcarrier tones” (Turner col. 3,11. 54—56). Thus, we
agree with Appellants that the Examiner has improperly construed the
disputed claim elements (“sub-bands” of a “received signal”) and that
Turner does not teach or suggest processing sub-bands of a received signal.
Consequently, we are constrained by the record before us to find that
the Examiner erred in finding that Turner teaches or suggests the disputed
limitations of Appellants’ claim 1. Independent claim 11 includes
limitations of commensurate scope. Dependent claims 2, 3, 8—10, 12, 13,
and 18—20 depend on and fall with claims 1 and 11.
5
Appeal 2017-003033
Application 13/336,451
Regarding the obviousness rejection of dependent claims 4—7 and 14—
17, the Examiner has not established on this record that the additionally cited
Walton reference overcomes or cures the aforementioned deficiency of
Turner. Dependent claims 4—7 and 14—17 depend on claims 1 and 11,
respectively. Accordingly, we do not sustain the Examiner’s obviousness
rejections of claims 1—20.
CONCLUSIONS
Appellants have shown the Examiner erred in rejecting claims 1—20
under 35 U.S.C § 112, second paragraph.
Appellants have shown the Examiner erred in rejecting claims 1—20
under 35 U.S.C. § 103(a).
DECISION
We reverse the Examiner’s rejections of claims 1—20.
REVERSED
6