Ex Parte Smaini et al

Patent Trial and Appeal Board

Feb 25, 2014

11685356 (P.T.A.B. Feb. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte LYDI SMAINI and PIERRE BAUDIN
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Appeal 2011-011203
Application 11/685,3561
Technology Center 2600
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Before JEAN R. HOMERE, CAROLYN D. THOMAS, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is STMicroelectronics N.V. and
STMicroelectronics SA.
Appeal 2011-011203
Application 11/685,356

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner
finally rejecting claims 22-46, all the claims pending in the application.
Claims 1-21 are cancelled. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We AFFIRM.
The present invention relates generally “to the minimization of the
signal leakage or ‘TX leakage’ from the transmission channel towards the
receive channel.” Spec. ¶ [0001].
Claim 22 is illustrative:
22. A method for processing an incident signal received by a
full-duplex type communications device including a receive
channel and a transmission channel, the method comprising:
performing a receiver frequency transposition of the
incident signal, an analog-digital conversion of the transposed
signal and a digital processing of the converted signal within
the receive channel;
performing a transmission frequency transposition within
the transmission channel;
generating a correction signal by applying an adjustable
gain/attenuation value and an adjustable phase value to a
transmission signal sampled on the transmission channel after
the transmission frequency transposition;
subtracting the correction signal from a signal present on
the receive channel before the receiver frequency transposition
is performed to define a subtracted signal;
generating digital information representative of the
subtracted signal; and
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adjusting the gain/attenuation value and the phase value
to reduce the digital information.

Appellants appeal the following rejection:
Claims 22-46 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sugar (U.S. 6,526,264 B2, Feb. 25, 2003) and Vakilian
(U.S. 7,369,871, B2, May 6, 2008).

ANALYSIS
Claims 22-46
Issue: Did the Examiner err in finding that the combination of Sugar
and Vakilian, particularly Sugar, teaches and/or suggest generating a
correction signal, as set forth in claim 22?

Appellants contend that “there is nothing in the portion of the Sugar et
al. reference . . . that teach the generation of a correction signal by applying
an adjustable gain/attenuation value and/or an adjustable phase value to a
transmission signal sampled on the transmission channel after the
transmission frequency transposition” (App. Br. 8-9).
The Examiner found that Appellants are “doing a piecemeal argument
(only arguing that Sugar does not teach all limitations which the examiner
admits in the rejection and therefore does a 103 combination rejection with
Vakilian) and is failing to factor the reference Vakilian into the rejection”
(Ans. 10). We agree with the Examiner.
In the principal Brief, Appellants only argue that Sugar does not
disclose the “generating a correction signal” as set forth in claim 22, and fail
to comment on any of the Examiner’s cited teachings of Vakilian (see App.
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Br. 6-10). While the Examiner initially appears to rely predominantly on
Sugar’s Fig. 2 for the argued limitation (see Ans. 6-7), the Examiner also
clearly cites Vakilian’s Fig. 1 for the argued limitation (id. at 7). However,
Appellants have provided no evidence to the contrary, i.e., that Vakilian
does not teach the argued limitation, at least not in the principal Brief.
In other words, Appellants’ contentions about Sugar do not address
the Examiner’s findings regarding Vakilian. Appellants have therefore
failed to rebut the Examiner’s finding that the combination of Sugar and
Vakilian teaches the argued limitation. Moreover, arguments not made are
waived. See 37 C.F.R. § 41.37(c)(1)(vii). Cf. In re Baxter Travenol Labs.,
952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court to
examine the claims in greater detail than argued by an appellant, looking for
nonobvious distinctions over the prior art.”).
Appellants’ arguments do not take into account what the collective
teachings of the prior art would have suggested to one of ordinary skill in the
art and are therefore ineffective to rebut the Examiner’s prima facie case of
obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test
for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference; nor is it that
the claimed invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.”) (citations
omitted, emphasis added). This reasoning is applicable here.
We note that Appellants present belated arguments regarding Vakilian
in the Reply Brief (see Reply Brief 3-5). However, the Examiner’s
statement of rejection for claims 22-46 in the Answer appears to be
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substantially the same as, if not identical to, the statement of the rejection in
the Final Rejection (see Final 5-8). Appellants thus could have presented the
new argument about Vakilian in support of claims 22-46 in the principal
Appeal Brief, such that we would have had benefit of the Examiner’s
evaluation of the argument in the responsive Answer. Appellants’ comment
that a “new position” was presented in the Answer (see Reply Brief 2) is
unavailing given that the Answer appears to be substantially the same as the
statement of the rejection in the Final Rejection. Appellants’ new argument
is thus untimely and has, accordingly, not been considered. See Ex parte
Borden, 93 USPQ2d 1473 (BPAI 2010) (informative).
In view of the above discussion, because Appellants have not
demonstrated that the Examiner erred in finding the argued limitations in the
combined disclosures of Sugar and Vakilian, the Examiner’s 35 U.S.C.
§103(a) rejection of representative independent claim 22, as well as claims
23-46 not separately argued by Appellants, is sustained.

DECISION
We affirm the Examiner’s § 103 rejection.
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

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