Ex Parte VAN DER HORST et alDownload PDFPatent Trial and Appeal BoardJun 9, 201612725746 (P.T.A.B. Jun. 9, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121725,746 03/17/2010 79159 7590 TIPS/MAXIM 960 San Antonio Road Suite 200 Palo Alto, CA 94303-4921 06/13/2016 FIRST NAMED INVENTOR Allard VAN DER HORST 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. MAX1P039.US01/MAXM0977 9852 EXAMINER JOSEPH, JAISON ART UNIT PAPER NUMBER 2633 NOTIFICATION DATE DELIVERY MODE 06/13/2016 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): phickman@tipsgroup.com gvouraki@tipsgroup.com tj ellison @tips group. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALLARD VAN DER HORST, ANDREW SHARRATT, BEN WILLCOCKS, CHRIS BORN, and MIGUEL MARQUINA Appeal2015-001876 Application 12/725,746 Technology Center 2600 Before THU A. DANG, KRISTEN L. DROESCH, and JOHN A. EVANS, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON APPEAL I. STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection of claims 1-14 and 16-21. Claim 15 has been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. A. INVENTION According to Appellants, the invention relates to "an adaptive equalizer, especially to a repeater which includes an adaptive equalizer to compensate for the distortion introduced by a communications channel and in particular to repeater which supports multiple data rates" (Spec. i-f 1 ). Appeal2015-001876 Application 12/725,746 B. ILLUSTRATIVE CLAIM Claim 1 is exemplary: 1. An equalizing repeater comprising an adaptive equalizer, an adaptation block and an output stage, said equalizer for receiving an input data signal and coupled to said output stage for outputting an output data signal to compensate for distortion introduced by a communications channel, said output data signal being based on said input data signal and at least one equalizer setting determined by said adaptation block, wherein said adaptation block is coupled to said output stage and is configured to mute said output data signal whilst said at least one equalizer setting is being adapted responsive to said input data signal, whereby said output data signal is inhibited during adaptation of said equalizer. C. REJECTION Claims 1-14 and 16-21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Appellants' Admitted Prior Art ("AAPA") in view of Liu (US 2008/0219431 Al, publ. Sept. 11, 2008). II. ISSUE The principal issue before us is whether the Examiner erred in concluding that one of ordinary skill in the art at the time that the invention was made would have found Liu to be from the same field of endeavor as the claimed invention. III. FINDINGS OF FACT The following Findings of Fact (FF) are shown by a preponderance of the evidence. Appellants' Admitted Prior Art (AAPA) 1. Appellants disclose as prior art that when establishing connection between two entities in communication system (i-f 2), a problem occurs in which a received signal will include an additional noise component (i-f 5). 2 Appeal2015-001876 Application 12/725,746 Thus, Appellants admit that it is well known to provide an equalizer to solve the problem (i-f 8). Figure 2 is reproduced below: Figure 2, reproduced above, shows a prior art equalizer repeater 102 comprising input 101 for receiving a signal and providing the signal to the equalizer 103. The output of the equalizer is provided to the output stage 104, and the settings of the equalizer are controlled by the integrated adaptation functionality 105 (i-f 14). Liu 2. Liu discloses a telephony system equipped with an echo cancellation module containing an adaptive filter to cancel the line echo in an inbound signal (Abstr.). The line echo canceller comprises a mute controller, enabled when in the calibration mode to prevent a difference signal from being output (i-f l 0). In the normal mode, the calibration signal generator, mute controller, first notch filter and second notch filter are disabled (i-f 11 ). During the calibration mode, the mute controller is enabled to prevent the line echo cancelled signal from being output to a loud-speaker and the local listener (i-f 12). IV. ANALYSIS As for independent claim 1, Appellants contend that Liu is "Nonanalogous Art" (App. Br. 8), wherein "the Examiner failed to even contend, much less establish, that Liu is from the same field of endeavor as 3 Appeal2015-001876 Application 12/725,746 the claimed invention," or that "Liu is reasonably pertinent to the problem faced by the inventor" (App. Br. 9, emphases omitted). According to Appellants, "an equalizer reverses the distortion in the signal" and thus "it would not be appropriate to substitute a filter such as taught by Liu for the equalizer recited" because "a filter would eliminate a component or feature of the signal that could affect recognition of the signal by the receiver when reversing the distortion in the signal utilizing an equalizer" (App. Br. 10, emphasis omitted). Appellants also contend "[ t ]he Examiner failed to consider the problem faced by the inventors" (App. Br. 11 ). In particular, Appellants point to the Declaration of Bernard Widrow ("Widrow Deel.") which declares "[a ]daptive equalizers and adaptive echo cancellers are completely different systems with distinctly different purposes" wherein "[ t ]he Liu, et al[.] patent is in the field of adaptive echo cancellation and its subject matter does not pertain to the [claimed] invention" (App. Br. 12, citing Widrow Deel., emphasis omitted). Appellants then contend "[ t ]he circuit path between the input and the output ... of Liu is not inhibited by the mute controller 304" as required by claim 1 (App. Br. 15, citing Widrow Deel., emphasis omitted). We have considered all of Appellants' arguments and evidence presented. However, we disagree with Appellants' contentions regarding the Examiner's rejections of the claims. We agree with the Examiner's findings, and find no error with the Examiner's combination of the references and the conclusion that the claims would have been obvious over the combined teachings. The nonanalogous art test considers the threshold question whether a prior art reference is "'too remote to be treated as prior art."' In re Clay, 966 4 Appeal2015-001876 Application 12/725,746 F.2d 656, 658 (Fed. Cir. 1992) (quoting In re Sovish, 769 F.2d 738, 741 (Fed. Cir. 1985)). As Appellants concede, "[a] reference is analogous art to the claimed invention" if: (1) "the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem)"; or (2) "the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention)" (App. Br. 8, citing In re Bigio, 381F.3d1320, 1325 (Fed. Cir. 2004), emphasis added). We agree with the Examiner that Liu "is in the same field of endeavor as applicants['] invention of adaptive interference cancellation" (Ans. 2). In particular, we agree that "adaptive equalizers," such as that set forth in the claimed invention, "remove unwanted distortion or interference to a signal" (id.; see also FF 1 ), similar to "echo cancellers," such as that in Liu, which "remove a specific type of distortion/interference known as echo" (id.; see also FF 2). Although Appellants contend Appellants' "equalizer reverses the distortion in the signal" whereas Liu' s "filter would eliminate a component or feature of the signal that could affect recognition of the signal" (App. Br. 10), we agree with the Examiner that both are directed to eliminating unwanted components in the signal (Ans. 2). Thus, we agree that Liu is a reference from the same field of endeavor as the claimed invention (eliminating unwanted components in the signal), thereby it is analogous art to the claimed invention. See Bigio, 381 F.3d at 1325. In fact, Liu also addresses the same problem as that of the claimed invention, i.e., reducing the error in a signal (Ans. 4; see also FF 1-2). Furthermore, even assuming arguendo that Liu is not in the same field of endeavor as the claimed invention, we also agree with the Examiner that one of ordinary skill in the art "would explore the different adaptive filter 5 Appeal2015-001876 Application 12/725,746 structures including the equalizer [of the claimed invention] and echo cancellers [of Liu] to remedy [the same problem]" wherein "[t]he particular problem to be solved is reducing the error in signal while the filter coefficients being calculated or adapted ... "(Ans. 2, 4). In particular, Liu is reasonably pertinent because, as discussed above, it discloses using an adaptive filter to cancel unwanted echo in the signal (FF 2) for the same or similar purpose as in the current application (FF 1 }-i.e., reducing the error in a signal. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1380-81 (Fed. Cir. 2007) (prior art disclosing springs as part of a counterbalancing mechanism in a folding bed is reasonably pertinent to an application describing a gas spring used as part of a lift assist assembly in a claimed treadmill). Thus, we agree that Liu is reasonably pertinent to the problem faced by the inventor (reducing the error in a signal), thereby is analogous art to the claimed invention. See Bigio, 381 F.3d at 1325. Further, as discussed above Liu is also in the same field of endeavor as the claimed invention (FF l ), i.e., eliminating unwanted components in the signal (FF 2). Thus, we agree with the Examiner the Liu is not "'too remote to be treated as prior art."' See Clay, 966 F.2d at 658. Moreover, we also note that our reviewing court provides further guidance that it is irrelevant that the prior art and the present invention may have different purposes. See Nat 'l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed. Cir. 2004). Although Appellants contend "[Appellants'] [a]daptive equalizers and [Liu's] adaptive echo cancellers are completely different systems with distinctly different purposes" (App. Br. 12, emphasis omitted), it is sufficient that Liu suggests doing what Appellants did, although Appellants' particular purpose was different from that of the references. In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) 6 Appeal2015-001876 Application 12/725,746 (citing In re Gershon, 372 F.2d 535, 538-39 (CCPA 1967)). "Obviousness is not to be determined on the basis of purpose alone." In re Graf, 343 F.2d 774 (CCPA 1965). We agree with the Examiner that Liu teaches and suggests "an equalizer or filter configured to mute said output data signal whilst said at least one equalizer setting is being adapted responsive to said input data signal, whereby said output data signal is inhibited during adaptation of said equalizer" (Ans. 8-9, citing Liu Fig. 3 and i-fi-f 10-13; FF 2). Further, we agree that it would have been obvious to an ordinary skilled in the art "to mute the output of an equalizer while the parameters are being calculated" wherein "[t]he motivation or suggestion to do so is to disable the output of unwanted signals" (Ans. 8-9, citing Liu i-f 12). We conclude that a person of ordinary skill in the art seeking to improve AAPA's distortion/interference reduction would have considered Liu' s teachings concerning the beneficial effects of muting the output of an equalizer while the parameters are being calculated, because "[ w ]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (emphasis added). When considering obviousness of a combination of known elements, the operative question is thus "whether the improvement is more than the predictable use of prior art elements according to their established functions." Id. Here, the preponderance of the evidence supports the Examiner's position. We have weighed and evaluated the evidence provided by the Examiner supporting the position that Liu is analogous art and the evidence provided by Appellants, including the Widrow Declaration, that Liu is 7 Appeal2015-001876 Application 12/725,746 nonanalogous art. Upon careful consideration of the evidence as a whole, and weighing it anew, the evidence supporting the conclusion that Liu is analogous art outweighs the evidence to the contrary. We also find Appellants' contention "[t]he circuit path between the input and the output ... of Liu is not inhibited by the mute controller 304" (App. Br. 15, citing Widrow Deel., emphasis omitted), unpersuasive. We note claim 1 does not require that the "circuit path between the input and the output" be inhibited as Appellants contend, but rather the "output data signal" is inhibited. We find no error with the Examiner's finding that Liu discloses and suggests "an equalizer or filter configured to mute said output data signal whilst said at least one equalizer setting is being adapted responsive to said input data signal, whereby said output data signal is inhibited during adaptation of said equalizer" (Ans. 8-9; FF 2). On this record, we find no error in the Examiner's rejection of claim 1 over AAP A and Liu. Appellants do not provide substantive arguments for dependent claims 2-7 and 19 separate from claim l from which they depend other than repeating the claim language and contending that "Liu does not disclose" such limitation (App. Br. 15-16). Thus, these claims fall with claim 1. Similarly, with respect to independent claims 8, 14, and 16, Appellants merely repeat the arguments of claim 1, and specifically, repeat "Liu is nonanalogous art" (App. Br. 16-23, emphasis omitted). Appellants also merely repeat the language of the claims and their dependent claims depending therefrom, and then contend Liu fails to disclose such limitation (id.). As discussed above, we find these arguments unpersuasive. On this record, we also find no error in the Examiner's rejection of claims 8, 14, and 16 and the dependent claims falling therewith over AAP A and Liu. 8 Appeal2015-001876 Application 12/725,746 V. CONCLUSION AND DECISION We affirm the Examiner's rejection of claims 1-14 and 16-21 under 35 U.S.C. § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 9 Copy with citationCopy as parenthetical citation