10712005 (B.P.A.I. Aug. 16, 2011)

Ex Parte Spanke

Board of Patent Appeals and InterferencesAug 16, 2011

10712005 (B.P.A.I. Aug. 16, 2011)

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. 10/712,005 11/14/2003 Dietmar Spanke 7817 23364 7590 02/03/2012 BACON & THOMAS, PLLC 625 SLATERS LANE FOURTH FLOOR ALEXANDRIA, VA 22314-1176 EXAMINER SOTOMAYOR, JOHN B ART UNIT PAPER NUMBER 3662 MAIL DATE DELIVERY MODE 02/03/2012 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 DIETMAR SPANKE ____________ Appeal 2009-013787 Application 10/712,005 Technology Center 3600 ____________ Before ROBERT E. NAPPI, LINDA E. HORNER, and CHARLES N. GREENHUT, Administrative Patent Judges.1 HORNER, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Dietmar Spanke (Appellant) filed a request for rehearing under 37 C.F.R. § 41.52 requesting that we reconsider our decision of August 16, 2011 (“Decision”). Requests for rehearing are limited to matters misapprehended or overlooked by the panel in rendering the original decision. 37 C.F.R. § 41.52(a)(1). 1 Judge William F. Pate III has retired from the Board since the date of the original decision and is replaced on the panel by Judge Charles N. Greenhut. Appeal 2009-013787 Application 10/712,005 2 In the Decision, we affirmed the rejections of claims 14-16, 20, 21, 28-36, 47-58, 61, and 62 under 35 U.S.C. § 103(a) as unpatentable over Otto (US 5,614,911; iss. Mar. 25, 1997), Woodward (US 6,169,706 B1; iss. Jan. 2, 2001), and Lalla (US 6,087,978; iss. July 11, 2000) and claims 17-19, 24- 26, 37-41, 45, 46, 63, 72, 74-78, 81, and 82 under 35 U.S.C. § 103(a) as unpatentable over Otto, Woodward, Lalla, and Fehrenbach (DE 44 07 369 A1; pub. Sep. 14, 1995). The Decision found that the Examiner’s determination that Otto inherently discloses “a control unit with a volatile data memory for storing, at least temporarily, a finite sampling sequence currently representing the intermediate-frequency signal” as called for in claim 14 is reasonable, and that Appellant failed to meet his burden to show that the subject matter shown to be in the prior art does not possess this characteristic. In the Briefs, Appellant argued that Otto “must inherently also realize the step of (amplitude) demodulating the analogue intermediate frequency signal” in the mixer and that this step of destroys the intermediate frequency signal. Reply Br. 3. We found no suggestion in Otto of the asserted demodulation of the intermediate-frequency signal in the mixer and Appellant’s argument that the prior art must inherently contain a different characteristic absent some argument or evidence to support such an assertion was insufficient to overcome the Examiner’s inherency finding that Otto discloses the claimed characteristic. Decision 7-8. Appellant argues in the Request for Rehearing that the Board’s determination that the Examiner’s inherency finding is sound misapprehends Appeal 2009-013787 Application 10/712,005 3 the disclosure in Otto. Request 2. In particular, Appellant argues that the cited passage of Otto (col. 5, ll. 14-28 and fig. 2) discloses “attenuation of the echo signal and the generation of sample values” and has “little, if anything to do with [the claimed volatile data memory].” Appellant further argues that the Board’s reference on page 6 of the Decision to the disclosure in Otto that “[t]he sampled signal is then digitized in an analog-to-digital converter 46 and stored in RAM in Otto’s computer 50” has no significance to the claimed volatile data memory. Request 3. The Board specifically found on page 6 of the Decision: Appellant appears to admit that Otto discloses creating an intermediate frequency signal in the mixer by mixing the echo signals and the signal derived from the output of the signal generator. Reply Br. 3; see also Otto, col. 5, 11. 9-14; fig. 2. Appellant appears to contest only the Examiner's determination that Otto's mixer outputs this intermediate frequency signal. Id. We find that the Examiner had a sound basis for finding that Otto's mixer outputs an intermediate frequency signal based on the disclosure in Otto. In particular, Otto discloses that the signal created by mixing the echo signals and a signal derived from the output of the signal generator is sent from the mixer to the low pass filter 39 and is then amplified and logarithmized before being sampled. Otto, col. 5, ll. 14-28; fig. 2. The sampled signal is then digitized in an analog-to-digital converter 46 and stored in RAM in Otto's computer 50. Otto, col. 5, ll. 28-43; fig. 2. The Board relied on these cited portions of Otto to show that Otto stores a finite sampling sequence currently representing the intermediate-frequency signal in a volatile data memory. In particular, Otto describes in column 5, lines 14-28 that the intermediate-frequency signal (i.e., the signal from the Appeal 2009-013787 Application 10/712,005 4 mixer) is sampled, and describes in column 5, lines 28-43 that this sampled signal is digitized and then stored in a volatile data memory (i.e., RAM)2 in Otto’s computer. Appellant, in this Request, failed to cogently explain why the Board’s reading of Otto as meeting the claimed subject matter is in error. Appellant argues that the circuit disclosed in Otto is sufficient evidence to rebut the Examiner’s inherency finding because one skilled in the art would understand from the circuit depicted in Figure 2 of Otto that its mixer 38 “must demodulate the analogue intermediate frequency signal.” Request 3 (“The suggestion lies in the circuit. Circuits speak for themselves.”). Figure 2 of Otto shows a block circuit diagram of the transmission circuit and of the reception and evaluation circuit of the level measuring device. Otto, col. 4, ll. 60-64. Otto contains no explicit disclosure of such a demodulation step in its description of the mixer 38 in Figure 2. Rather, Otto describes two inputs to mixer 38: (1) echo signals received as a consequence of short pulses from antenna 14; and (2) a signal derived from the output signal of the generator 24 by the beam splitter 26. Otto, col. 4, l. 67 – col. 5, l. 15. Otto then discloses steps performed on the output from mixer 38. Otto, col. 5, ll. 14-19 (“The envelope signal obtained by the mixing of the two signals in the mixer 38 is filtered in a low pass 2 Appellant acknowledged in the briefs that “RAM” is “volatile data memory.” App. Br. 11 (“Neither Lalla et al, Woodward et al nor Otto et al teach a volatile memory (RAM) for storing a digitized intermediate frequency signal …”); Reply Br. 5 (“they could also not suggest the use of a volatile-memory (RAM) for storing the sampling sequence representing said digitized intermediate-frequency signal.”). Appeal 2009-013787 Application 10/712,005 5 filter 39 and then amplified in an amplifier 40, the output of which is connected to a logarithmizing circuit 42 which compensates the attenuation of the echo signals as a function of the transit time.”). Appellant failed to explain why those skilled in the art would understand from Otto’s circuit, as shown in Figure 2, that the asserted demodulation step occurs in mixer 38. Simply pointing to the circuit of Figure 2 of Otto when Otto is silent in its discussion of mixer 38 as to any demodulation step is insufficient evidence in this case to meet Appellant’s burden. Appellant also questions the burden shifting referenced in the Board’s decision. Request 3. The basis for this burden shifting was set forth in the Principles of Law section of the Board’s opinion, which explained that where the Patent Office has reason to believe that a functional limitation may be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. Decision 4-5 (citing, inter alia, In re Spada, 911 F.2d 705 (Fed. Cir. 1990) and In re Swinehart, 439 F.2d 210 (CCPA 1971)). DECISION For the reasons provided supra, we deny the Request to change the Decision. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). DENIED nlk