Ex Parte Starr

Patent Trial and Appeal Board

Apr 29, 2014

11709103 (P.T.A.B. Apr. 29, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/709,103 02/20/2007 Thomas J J Starr 7785-0629-04 (A00406
Con)
3504
92384 7590 04/29/2014
AT&T Legal Department - G&G
Attention: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
TORRES, JOSEPH D
ART UNIT PAPER NUMBER
2112
MAIL DATE DELIVERY MODE
04/29/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THOMAS JJ STARR
___________

Appeal 2011-006542
Application 11/709,103
Technology Center 2100
____________

Before CARLA M. KRIVAK, CARL W. WHITEHEAD JR., and
JOHNNY A. KUMAR, Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-006542
Application 11/709,103

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STATEMENT OF THE CASE
Appellant is appealing the final rejection of claims 1-21 under 35
U.S.C. § 134(a). Appeal Brief 1. We have jurisdiction under 35 U.S.C.
§ 6(b) (2012).
We affirm.

Introduction
The invention is directed to a controller for an interleaver wherein the
interleaver is operative to receive first and second signals and generate an
interleaver control signal based upon the first and second signals. Appeal
Brief 3.

Representative Claim (Emphasis Added)
1. A controller for an interleaver comprising:
a processor that is operative to receive a first signal, to
receive a second signal, and to generate an interleaver control
signal based on the first and second signals;
wherein the first signal comprises a signal to noise ratio
signal and the second signal is selected from a group consisting
of a signal to noise ratio signal, a data rate signal, and a bit error
rate signal.

Rejections on Appeal1
Claims 1-21 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Blasbalg (US Patent Number 3,534,264; issued October

1 The Examiner withdrew the 35 U.S.C. § 112, first paragraph rejection of
claims 1-10 and 12-20, as well as the non-statutory double patenting
rejection of claims 1-20 over various US Patents. Answer 3.
Appeal 2011-006542
Application 11/709,103

3
13, 1970) and Klayman (US Patent Number 5,699,365; issued December 16,
1997). Answer 3-6.
ANALYSIS
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (filed December 6, 2010), the Answer (mailed
January 4, 2011), and the Reply Brief (filed February 28, 2011) for their
respective details. We have considered in this decision only those
arguments Appellant actually raised in the Briefs. Any other arguments
which Appellant could have made but chose not to make in the Briefs are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
We have reviewed the Examiner’s rejection in light of Appellant’s
contentions that the Examiner has erred. We disagree with Appellant’s
contentions. We concur with the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and the reasons set
forth by the Examiner in the Answer in response to Appellant’s Appeal Brief
and adopt them as our own, except as to those findings that we expressly
overturn or set aside in the analysis as follows.
Appellant contends claims 1-11 are allowable over the combination of
Blasbalg and Klayman because “Blasbalg teaches away from the features of
claims 1-11 of a processor that is operative to receive first and second
signals, and to generate an interleaver control signal based on the first and
second signals” “since Blasbalg describes varying the transmission rate to
compensate for environmental conditions and is attempting to avoid
encoding mechanisms as a solution to undesired environmental conditions.”
Appeal Brief 8-9.
Appeal 2011-006542
Application 11/709,103

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However, the Examiner finds Blasbalg does not teach away from
combining the references because Blasbalg teaches an Error Control
Encoder 36/14 that changes in response to monitored changes in the
environment such as signal to noise ratio, bit error rate, and data
transmission rate. Answer 8-9.
We find nothing in Blasbalg would have discouraged a person skilled
in the art from making such a modification. See In re ICON Health &
Fitness, Inc., 496 F.3d 1374, 1381 (Fed. Cir. 2007) (“A reference may be
said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant.” (Citation omitted)). We do not find Appellant’s
arguments to be persuasive because claim 1 merely requires an interleaver
controller comprising of a nonspecific processor that is operable or capable
to generate signals based on received signals. The proposed function of the
processor is not sufficient to structurally distinguish the invention over the
cited art of record. Further, the patentability of the claimed structure cannot
be based upon the proposed signals generated.
Further, we observe Appellant only argues the merits of Blasbalg.
(Appeal Brief 8-9). Appellant’s 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. As the Court stated in 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
Appeal 2011-006542
Application 11/709,103

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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.
(Emphasis added) (citations omitted).
Therefore, we sustain the Examiner’s obviousness rejection of
independent claim 1, as well as, dependent claims 2-11 for the reasons
articulated above.
Appellant contends, “Blasbalg teaches away from the features of
claims 12-21 of generating an interleaver control signal based on received
first and second signals, since Blasbalg describes varying the transmission
rate to compensate for environmental conditions and is attempting to avoid
encoding mechanisms as a solution to undesired environmental condition.”
Appeal Brief 9.
We do not find Appellant’s arguments to be persuasive for the
articulated above reasons and therefore we sustain the Examiner’s
obviousness rejection of independent claim 12, as well as, dependent claims
13-21.

DECISION
The Examiner’s obviousness rejection of claims 1-21 is 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). See 37
C.F.R. § 41.50(f).
AFFIRMED

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