Ex Parte Schwager et al

Patent Trial and Appeal Board

Aug 9, 2016

13750454 (P.T.A.B. Aug. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
131750,454 01125/2013 Andreas SCHWAGER
22850 7590 08/11/2016
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
409797US8X CONT 6521
EXAMINER
AMRANY,ADI
ART UNIT PAPER NUMBER
2836
NOTIFICATION DATE DELIVERY MODE
08/11/2016 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):
patentdocket@oblon.com
oblonpat@oblon.com
ahudgens@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREAS SCHWAGER and
WERNER BAESCHLIN
Appeal2015-001969
Application 13/750,454
Technology Center 2800
Before TERRY J. OWENS, JAMES C. HOUSEL, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 13-17 and 33--47. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim a multiple-input multiple-output (MIMO) power
line communication (PLC) modem. Claim 13 is illustrative:
13. A multiple-input and multiple-output (MIMO)
Power Line Communication (PLC) modem for a PLC network,
compnsmg:
Appeal2015-001969
Application 13/750,454
a first line coupled to a phase line input terminal of the
MIMO PLC modem, the first line being connectable to a phase
line of the PLC network;
a second line coupled to a neutral line input terminal of
the MIMO PLC modem, the second line being connectable to a
neutral line of the PLC network;
a third line connected to a protective earth line input
terminal of the MIMO PLC modem, the third line being
connectable to a protective earth line of the PLC network;
a first capacitor coupled in line with the first line and
connected to the phase line input terminal;
a second capacitor coupled in line with the second line
and connected to the neutral line input terminal; and
a third capacitor coupled in line with the third line and
connected to the protective earth line input terminal,
wherein the phase line input terminal, the neutral line
input terminal, and the protective earth line input terminal,
collectively, are constructed and arranged for connection to the
phase line, the neutral line, and the protective earth line,
respectively, of the PLC network.
Washburn
Maier
The References
US 2009/0067614 Al
US 7,609,492 B2
The Rejections
iviar. 12, 2009
Oct. 27, 2009
The claims stand rejected as follows: claims 13, 14, 16 and 33--47
under 35 U.S.C. § 103 over Washburn in view of Maier, claim 15 under
35 U.S.C. § 103 over Washburn in view of Maier and the Appellants'
admitted prior art, and claim 17 under 35 U.S.C. § 112, fourth paragraph, as
being of improper dependent form for failing to further limit the subject
matter of the claim upon which it depends.
OPINION
We reverse the rejections.
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Appeal2015-001969
Application 13/750,454
Rejections under 35 U.S.C. § 103
We need address only the sole independent claim, i.e., claim 13. 1
That claim requires a MIMO PLC modem for a PLC network.
Washburn discloses "dynamic, impedance matched, transmission line
terminations for common mode signals" (if 3) and "focus[ es] on an
application with unshielded, twisted pair lines in a broadband
communication application (digital subscriber line or DSL)" (if 6).
Maier discloses a solid state power controller having a ground fault
interrupt function (Abstract) and is relied upon by the Examiner (Final
Act. 5) for a disclosure that "there are three-phase power supplies both with
and without a fourth neutral wire" (col. 1, 11. 19-20).
The Examiner acknowledges that "Washburn does not mention a
MIMO type of PLC modem" (Final Act. 5) but argues that the applied prior
art need not disclose or suggest such a modem because the Appellants'
preamble ("A multiple-input and multiple-output (MIMO) Power Line
Communication (PLC) modem for a PLC network") "does not breathe life
into the claim" (id.) but, rather, "refers to the 'purpose or intended use' of
the 'device' [recited in the body of the claim]" (Ans. 4), where "[t]he
'device' is to be used within (or perhaps next to) a MIM 0 PLC modem"
(id.).
The effect preamble language is to be given is determined by
reviewing the entirety of the Appellants' disclosure to gain an understanding
of what the Appellants actually invented and intended to encompass by the
claim. See Corning Glass Works v. Sumitomo Electric, 868 F.2d 1251, 1257
1 The Examiner does not rely upon the Appellants' admitted prior art for any
disclosure that remedies the deficiency in the references applied to the
independent claim (Final Act. 10).
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Appeal2015-001969
Application 13/750,454
(Fed. Cir. 1989). The Appellants' disclosure that "[t]he device 100 might be
as well a part of a power line modem that receives power line signals"
(Spec. i-f 19) indicates that claim 13 's preamble limits the claim to a MIMO
PLC modem comprising the device recited in the body of the claim.
Moreover, the recitations in the body of the claim that the input terminals are
MIMO PLC modem input terminals further indicate that the claim is limited
to a MIMO PLC modem.
The Examiner asserts that "Washburn is not limited to a DSL
communication format" (Ans. 9).
That assertion is not well taken because the Examiner does not
establish that Washburn's disclosure of a DSL communication format would
have suggested, to one of ordinary skill in the art, a MIMO PLC modem.
The Examiner asserts that "one skilled in the art would recognize the
usefulness of the Washburn device in any modem that experiences
differential-mode and common-mode signals" (Ans. 10).
That assertion is unpersuasive due to lacking evidentiary support.
The Examiner asserts that "[i]t would be within the level of ordinary
skilled artisan to apply the Washburn disclosure to a PLC modem (MIMO or
otherwise)" (Ans. 11) and that "the combination of references would enable
one skilled in the art to duplicate the Washburn structure (line, in-line
capacitor, input terminal) for each of the 3 lines of the Maier network"
(Ans. 9).
Establishing a prima facie case of obviousness requires showing that
one of ordinary skill in the art would have had both an apparent reason or
suggestion to modify the prior art as proposed by the Examiner and
predictability or a reasonable expectation of success in doing so. See KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); In re Vaeck, 947 F.2d
4
Appeal2015-001969
Application 13/750,454
488, 493 (Fed. Cir. 1991 ). The Examiner's assertions do not provide that
showing.
For the above reasons we reverse the rejections under
35 U.S.C. § 103.
Rejection under 35 U.S. C. § 112, fourth paragraph
Claim 17, which depends from claim 13, requires that "each of the
first, second, and third capacitors is coupled as an isolation capacitor to
isolate said MIMO PLC modem against direct current signals in the
respective first, second, and third lines via the phase line input terminal, the
neutral line input terminal, and the protective earth line input terminal,
respectively."
The Examiner asserts that "[t]he only added feature of claim 17 is that
the capacitors are renamed as 'isolation capacitors'. The new name does not
further limit claim 13. It merely describes a function that is inherently
included in the claim 13 capacitors" (Final Act. 3--4).
The Appellants assert that "coupling of the first through third
capacitors as isolation capacitors precludes a bypass for the respective
capacitors, for instance, a bypass of the capacitor via a resistor branch (e.g.,
a discharge capacitor" (App. Br. 17).
The Examiner responds that "[i]f the appellants intend for there to be
a 'precluded bypass', then such language must be expressly recited in the
claim" (Ans. 13).
The Examiner does not establish that inline capacitors necessarily
provide the isolation required by the Appellants' claim 17 such that the
claim does not further limit claim 13. Consequently, we reverse the
rejection under 35 U.S.C. § 112, fourth paragraph.
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Appeal2015-001969
Application 13/750,454
DECISION/ORDER
The rejections of claims 13, 14, 16 and 33--47 under 35 U.S.C. § 103
over Washburn in view of Maier, claim 15 under 35 U.S.C. § 103 over
Washburn in view of Maier and the Appellants' admitted prior art, and
claim 17 under 35 U.S.C. § 112, fourth paragraph, are reversed.
It is ordered that the Examiner's decision is reversed.
REVERSED
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