10787432 (B.P.A.I. Aug. 27, 2012)

Ex Parte Schilling et al

Board of Patent Appeals and InterferencesAug 27, 2012

10787432 (B.P.A.I. Aug. 27, 2012)

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. 10/787,432 02/26/2004 Harry Schilling 5858-01900 SR 2000/20 US 4755 35617 7590 08/27/2012 DAFFER MCDANIEL LLP P.O. BOX 684908 AUSTIN, TX 78768 EXAMINER CORRIELUS, JEAN B ART UNIT PAPER NUMBER 2611 MAIL DATE DELIVERY MODE 08/27/2012 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 HARRY SCHILLING and GEORG LOHR ____________ Appeal 2009-011802 Application 10/787,432 Technology Center 2600 ____________ Before DENISE M. POTHIER, ERIC B. CHEN, and JOHN A. EVANS, Administrative Patent Judges. EVANS, Administrative Patent Judge. Opinion Concurring filed by POTHIER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-011802 Application 10/787,432 2 SUMMARY Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1, 2, and 5-13. Claims 3 and 4 have been canceled. Br. 2. Claims 1, 6, 12, and 13 stand rejected under 35 U.S.C. § 102(e) as anticipated by Yang (US 7,072,289 B1, issued July 4, 2006 and filed June 1, 2001). Ans. 3-4. Claim 2 stands rejected under 35 U.S.C. § 103(a) as obvious over Yang. Ans. 4-5. Claims 5 and 7-9 stand rejected under 35 U.S.C. § 103(a) as obvious over Yang and Jewett (US 5,793,318, issued Aug, 11, 1998). Ans. 5-6. Claim 10 stands rejected under 35 U.S.C. § 103(a) as obvious over Yang, Jewett, and Ooi (US 5,007,088, issued Apr. 9, 1991). Ans. 7-8. Claim 11 stands rejected under 35 U.S.C. § 103(a) as obvious over Yang, Jewett, Ooi, and van der Gracht (US 4,835,517, issued May 30, 1989). Ans. 8. We affirm-in-part. STATEMENT OF CASE “The invention relates to a device and a method for transmitting digital signals between at least two units disposed to move relative to each other. By combining information signals with random signals, the spectral power density of a signal is reduced for the same transmission power.” (Abstract). Appeal 2009-011802 Application 10/787,432 3 Independent claim 1 is illustrative: 1. A data communication system, comprising: - a first unit and a second unit, wherein the first unit is configured to transmit digital signals to the second unit, the first unit comprising: - a data transmitter for emitting first digital signals within first time intervals; - a pseudo random-generator or a random generator for generating pseudo random values or random values, respectively, - a combining unit for combining the first digital signals with the pseudo random values or the random values at substantially the entirety in which the first digital signals are absent; and - a control unit for controlling the combining unit in such a manner that pseudo random values or random values are transmitted at times other than the first time intervals; and the second unit comprising: - a data receiver connected to the data transmitter by a transmission path. CONTENTIONS 1 Appellants present two arguments: (1) that Yang should be disqualified as a reference (Br. 6-8); and (2) that Yang fails to teach combining or inserting pseudo-random values in substantially the entirety in which the first digital data signals are absent (Br. 5-6). Appellants first argue that: Addressing the allegation of insufficient diligence: Appellants wish to point out that the critical period for due diligence is roughly 3 months -- between June 1,2001 (filing date of Yang) and August 30, 2001 (filing date of priority German application). This timeframe includes approximately 60 1 Rather than repeat the Examiner’s positions and Appellants’ arguments in their entirety, we refer to the following documents for their respective details: the Appeal Brief (Br.) filed December 3, 2008 and the Examiner’s Answer (Ans.) mailed February 2, 2009. Appeal 2009-011802 Application 10/787,432 4 business days. Upon reviewing the file, the Examiner would note that the agent who prepared the German priority application (10142102.8) is also the inventor (Georg Lohr). While it can be appreciated that patent agents and patent attorneys cannot prepare and get approval for filing a patent application overnight, certainly in the case of having multiple inventors, Georg Lohr must prepare the application with sufficient breadth and scope, and including all embodiments, obtain approval, and file the German application within 60 business days. (Br. 7). The Examiner notes that “no evidence of facts with actual dates of acts relied on to establish diligence are provided per MPEP 715.07(a) and 715.07[R-3](11).” (Ans. 10) (emphasis in original). Appellants further argue that “independent claims 1, 12, and 13 each recite combining or inserting pseudo-random values in substantially the entirety in which the first digital data signals are absent.” (Br. 5). “Independent claims 1, 12, and 13 recite a combining unit (claim 1) or an inserting step (claims 12, 13). The combining unit 12 allows for the combining or insertion of pseudo-random [PN] values generated by generator 6 into first digital signals generated by transmitter 4 (Specification --pg. 9, lines 11-31, Fig. 1).” (Br. 4). The Examiner disagrees, finding: Yang describes not placing PN values in the header portion of DFT, where data of the payload is absent.’ Applicants[’] comment is not understood since at col. 6, lines 11-13, Yang et al[.] clearly teaches that DFT/FFT block 81 convert a received data into a digital format. And further [F]ig. 2A and [F]ig. 2B Appeal 2009-011802 Application 10/787,432 5 show a plurality of such digital data generated by block 81 that correspond to applicant claimed “digital signals.” (Ans. 9). ISSUES Appellants raise two allegations of error, each of which severally would be dispositive if persuasive. First, under 37 C.F.R. § 1.131, has the Examiner erred in not accepting Appellants’ declaration as adequate to “swear behind” the Yang reference? And second, under § 102 and/or § 103, has the Examiner erred by finding that Yang discloses or teaches: a combination unit for combining the first digital signals with the pseudo random values or the random values at substantially the entirety in which the first digital signals are absent as recited in claim 1? ANALYSIS Yang is the sole or primary reference underlying each rejection. Therefore, each rejection stands or falls with Yang. Yang is a reference under § 102(e). (Ans. 3). A prior art reference that is not a statutory bar may be overcome, inter alia, by submitting an affidavit satisfying the requirements of 37 C.F.R. § 1.131. (See In re Costello, 717 F.2d 1346, 1349 (Fed. Cir. 1983)). Appellants filed a declaration under 37 C.F.R. § 1.131 alleging conception of their invention prior to the June 1, 2001 filing date of the Yang reference. (See Br. 6). The Examiner accepted the Declaration as establishing “conception of the invention prior to the effective date of the Yang et al[.] reference.” (Ans. 10). However, the Examiner held the evidence submitted was not sufficient “indication of being diligence [sic].” (Ans. 10). “The showing of facts shall be such, in character and weight, as to Appeal 2009-011802 Application 10/787,432 6 establish reduction to practice prior to the effective date of the reference, or conception of the invention prior to the effective date of the reference coupled with due diligence from prior to said date to a subsequent reduction to practice or to the filing of the application.” (37 C.F.R. § 1.131(b)). Although the Declaration is suggestive of demonstrating the required diligence, it has been couched in conclusory statements which, in our view lack the requisite “character and weight” of specific facts to satisfy Rule 131. We, therefore, concur with the Examiner’s finding that Appellants’ Declaration does not suffice to overcome the Yang reference. Appellants raise a second allegation of error and argue that Yang does not disclose or teach combining or inserting pseudo-random values in substantially the entirety in which the first digital data signals are absent. (Br. 5-6). The Examiner finds that Yang discloses a multiplexor “MUX 85 (combining unit) for combining the first digital signals [F]ig[ure] 5B with the pseudo random values [F]ig[ure] 5A at substantially the entirety of intervals in which the first digital signals are absent[;] see [F]ig[ure] 2A.” (Ans. 3). The Examiner has shown Yang to teach a “combination” of a PN sequence and a signal sequence. (Ans. 3) The Yang combination relates to an interdigitation of PN and data sequences where the “DFT blocks or frame bodies labeled 21A, 21B, and 21C in Figs. 2A, 2B, and 2C of Yang constitute the claimed first digital data signals.” (Br. 5). Appellants object that: Yang describes placing pseudo-random or pseudo-noise (PN) sequences between DFT blocks or frame bodies. However, each block or frame body contains data and non-data header information. Since Yang only teaches places PN between blocks, the header information within each block, exclusive of the payload data, does not contain PN values. Therefore, Yang Appeal 2009-011802 Application 10/787,432 7 cannot teach placing pseudo-random values in substantially the entirety in which digital data signals are absent. (Br. 6). Although claim 1 does not recite the word “means for,” the term “combining unit for,” in this particular instance, does not connote sufficiently definite structure so as to avoid means-plus-function treatment under 35 U.S.C. § 112 (¶ 6). (See Welker Bearing Co., v. PHD, Inc., 550 F.3d 1090, 1096 (internal quotation marks omitted) (noting “[t]he generic terms 'mechanism,' 'means,' 'element,' and 'device,' typically do not connote sufficiently definite structure to avoid means-plus-function treatment”). Notably, the phrase, “combining unit for combining the first digital signals with the pseudo random values and the random values at substantially the entirety in which the first digital signals are absent” as recited in claim 1, is modified by functional language but not by sufficient structure, material, or acts for achieving the specified combining function. We, therefore, review the application to determine “the corresponding structure, material, or acts [are] described in the Specification.” (See id.). Our review of the Specification further suggests the “structure, material, or acts” that correspond to “the combination unit” requires an encoding process or is a type of encoder. “A particularly good spectral distribution can be obtained by means of especially long code sequences. As a rule, these cannot be achieved by an emission of single short data packages. Therefore, an arrangement is proposed which converts the data stream with a conventional coding.” (Spec. 5:23-26). Appellants provide an example of a suitable conventional coding: “such as for example 4B/5B.” (Spec. 5:26). Appellants show how the coding operation works “According to the invention, the conversion is performed with a pseudo random Appeal 2009-011802 Application 10/787,432 8 generator which generates a deterministic pseudo random sequence, and a combination of this bit sequence with the data stream.” (Spec. 5:27-30). Appellants disclose the EXOR function to be a preferred example of the combining operation “Such a combination may be, for example, the exclusive OR- (EXOR-) combination. The output signal now has the sequence length of the pseudo random-number sequence, and with a high random-number sequence can lead to a substantial reduction of the noise.” (Spec. 5:30-6:1). This “combination” is further depicted in Figure 3: Fig. 3 shows an example of an encoding or a decoding of data with the aid of a pseudo random signal. In this, the curve 31 shows the original data stream, as generated from the data transmitter. In the curve 32 a pseudo random sequence of the first pseudo random generator is shown. The curve 33 finally shows the output signal which is transmitted via the data path. Here this output signal arises, for example, from an exclusive OR-combination of the signals 31 and 32. The input signal of the second movable unit 34 corresponds to the emitted signal 33. The original data signal 36 can be restored by means of a second pseudo random signal 35 from a second pseudo random generator. In this case too, an exclusive OR-combination is again made. (Spec. 9:20-29). The Specification, thus, describes “combination unit” as a type of encoder, including one that performs an EXOR operation. However, we note that the multiplexor of Yang, cited by the Examiner, does not encode a data sequence. In view of the foregoing, we are persuaded that Yang neither discloses, nor teaches the claimed “combining unit.” We, therefore, do not affirm the rejection of claim 1 and of claim 6, dependent therefrom. Appeal 2009-011802 Application 10/787,432 9 Dependent claim 2 is rejected based only on Yang under § 103. We reverse this rejection for the same above-discussed reasons. Concerning the rejections of dependent claims 5 and 7-11, Appellants argues that neither Jewett, nor the combination of Jewett, Ooi, and Van der Gracht provided the teaching missing from Yang with respect to claims 5 and 7-11. (See Br. 9). The Examiner did not find any of Jewett, Ooi, or Vander Gracht to relate to the limitations alleged by Appellants to be missing from Yang. (See Ans. 5-8). We therefore, do not affirm the rejection of claims 5 and 7-11. With respect to claims 12 and 13, Appellants argue the claimed “inserting” step is not met by Yang. (Br. 5-6). Yang, in Figure 2, shows a signal stream wherein pseudo-random values (PN) are alternated (“inserted”) between data, (DFT). Appellants have not argued that the term “inserted” has a special meaning that would preclude the disclosure of Yang as found by the Examiner. We therefore, are not persuaded that the Examiner has erred with respect to claims 12 and 13. DECISION The Examiner’s decision rejecting claims 1, 2, and 5-11, under 35 U.S.C. §§ 102 or 103 is reversed. The rejections of claims 12 and 13 are 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-IN-PART kis Appeal 2009-011802 Application 10/787,432 10 POTHIER, Administrative Patent Judge, CONCURRING. I concur with the Majority’s decision in result only.