Ex Parte Vogel

Patent Trial and Appeal Board

Apr 23, 2013

11135194 (P.T.A.B. Apr. 23, 2013)

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.
11/135,194 05/23/2005 Mark Vogel 9040-35 3729
79207 7590 04/24/2013
MYERS BIGEL SIBLEY & SAJOVEC
P.O. BOX 37428
RALEIGH, NC 27612
EXAMINER
DUFFIELD, JEREMY S
ART UNIT PAPER NUMBER
2427
MAIL DATE DELIVERY MODE
04/24/2013 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 MARK VOGEL
____________

Appeal 2010-011121
Application 11/135,194
Technology Center 2400
____________

Before DEBRA K. STEPHENS, LYNNE E. PETTIGREW, and
GEORGIANNA W. BRADEN, Administrative Patent Judges.

PETTIGREW, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-25. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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STATEMENT OF THE CASE
Introduction
Appellant’s invention relates to determining a noise source in a
communication network by attenuating signal transmission on an upstream
path between a cable modem and a cable modem termination system
(CMTS) during a noise test interval. Abstract.
Claims 1, 12, 16, 20, and 23 are independent. Claims 1 and 23 are
illustrative of the invention (disputed limitations in italics):
1. A method of operating a communication network,
comprising:
attenuating signal transmission on an upstream path
between a cable modem and a cable modem termination system
(CMTS) during a noise test interval by modifying the upstream
path; and
removing attenuation on the upstream path outside of the
noise test interval.
23. A method of operating a communication network
comprising a plurality of gating devices, each gating device
comprising a Data Over Cable System Interface Specification
(DOCSIS) module connected in series between an associated
gating element and a cable modem termination system (CMTS),
comprising:
determining that at least one of the DOCSIS modules is
unable to initialize on the communication network;
configuring the gating elements in respective upstream
communication paths between respective cable modems and the
CMTS so as to block transmission to the CMTS during intervals
that DOCSIS modules transmit to the CMTS, respectively.
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Prior Art Relied Upon
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Roeck US 6,742,186 B1 May 25, 2004
Cooper US 6,772,437 B1 Aug. 3, 2004
Kauffman US 6,880,170 B1 Apr. 12, 2005
Millet US 7,246,368 B1 July 17, 2007
Rejections on Appeal
The Examiner has rejected claims 1-5, 12, 13, and 16-22 under 35
U.S.C. § 103(a) as being unpatentable over Cooper and Kauffman. Ans. 3-
10.
The Examiner has rejected claims 6-10, 14, and 15 under 35 U.S.C.
§ 103(a) as being unpatentable over Cooper, Kauffman, and Millet. Ans.
10-13.
The Examiner has rejected claim 11 under 35 U.S.C. § 103(a) as
being unpatentable over Cooper, Kauffman, Millet, and Roeck. Ans. 13-14.
The Examiner has rejected claims 23-25 under 35 U.S.C. § 103(a) as
being unpatentable over Cooper, Kauffman, and Roeck. Ans. 14-17.
Issues on Appeal
1. Does the combination of Cooper and Kauffman teach or
suggest “attenuating signal transmission on an upstream path between a
cable modem and a cable modem termination system (CMTS) during a noise
test interval by modifying the upstream path,” as recited in claim 1 and
commensurately recited in claims 12, 16, and 20 (App. Br. 6-7)?
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2. Do Cooper and Kauffman teach away from the invention as
recited in claims 1, 12, 16, and 20 (App. Br. 7-8)?
3. Does the combination of Cooper, Kauffman, and Roeck teach
or suggest “configuring the gating elements in respective upstream
communication paths between respective cable modems and the CMTS so as
to block transmission to the CMTS during intervals that DOCSIS modules
transmit to the CMTS, respectively,” as recited in claim 23 (App. Br. 9-10)?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
conclusions. We adopt as our own the findings and reasoning set forth in the
Examiner’s Answer. We highlight and address the following findings and
arguments for emphasis.
Claims 1, 12, 16, and 20
Appellant first contends that “Cooper does not disclose or suggest
modifying the upstream path to affect the attenuation thereon, but instead
explains that the cable modem suspends upstream transmission during a
noise test interval.” App. Br. 7. This argument does not persuade us that the
Examiner erred in finding that the combination of Cooper and Kauffman
teaches or suggests “attenuating signal transmission on an upstream path
between a cable modem and a [CMTS] during a noise test interval by
modifying the upstream path,” as recited in the claims. As the Examiner
correctly finds, suspending upstream transmission as taught in Cooper
effectively attenuates the signal on the upstream path between the cable
modem and the CMTS. Ans. 17-18. The Examiner also relies on Kauffman,
which teaches a gateway between the cable modem and CMTS containing
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an attenuator/switch that attenuates or removes return path signals. Ans. 18;
Kauffman, col. 5, ll. 14-17. Thus, Appellant’s individual attack on Cooper
does not establish nonobviousness because the combined teachings of
Cooper and Kauffman disclose or suggest attenuating signal transmission on
the upstream path between a cable modem and a CMTS during a noise test
interval by modifying the upstream path. See In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA
1981)).
Appellant also contends that a person of ordinary skill in the art would
not be motivated to modify Cooper’s cable system to incorporate
Kauffman’s gateway device because the references teach away from such a
modification. App. Br. 7. Specifically, Appellant argues that because
Cooper teaches suspending upstream transmission during the noise test
interval, “there would appear to be no benefit in incorporating Kauffman’s
gateway device 140 in the path between the cable modem and the CMTS to
act as a switch to isolate the cable modem.” Id. Appellant also argues that
because Cooper teaches that a switch may be provided in the cable modem
to isolate the cable modem if it is found to be a source of unwanted noise,
there is no need to add Kauffman’s gateway as a second device between the
cable modem and the CMTS in Cooper’s system for the purpose of isolating
the cable modem. Id. Appellant further argues that modifying Cooper’s
system to incorporate Kauffman’s gateway device “would merely increase
the cost and complexity of Cooper’s system.” App. Br. 8.
Appellant’s arguments are not persuasive for several reasons. First,
Appellant has not pointed to any language in Cooper or Kauffman that
criticizes, discredits, or otherwise discourages modifying Cooper’s system to
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include a gateway device as taught by Kauffman. See In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004). Second, even if such a modification would
increase the cost and complexity of Cooper’s system, as Appellant contends,
tradeoffs regarding features and costs do not necessarily prevent, or teach
away from, the proposed combination. See Medichem, S.A. v. Rolabo, S.L.,
437 F.3d 1157, 1165 (Fed. Cir. 2006) (“[A] given course of action often has
simultaneous advantages and disadvantages, and this does not necessarily
obviate motivation to combine.”).
Third, Appellant’s argument does not take into account that the
Examiner’s rejection is based on the combined teachings of the references
rather than physically adding Kauffman’s gateway device to Cooper’s
system. That is, the Examiner finds it would have been obvious to an
ordinarily skilled artisan to attenuate or suspend upstream transmission in
Cooper’s system using a gateway device between the cable modem and
CMTS as taught by Kauffman instead of a switch in the cable modem as
taught by Cooper. Ans. 4-5, 18-19; see Keller, 642 F.2d at 425 (“The test
for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference [but] what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.”).
Finally, as stated by the Examiner, moving the attenuation switch
from the cable modem, as taught in Cooper, to a gateway device between the
cable modem and CMTS, as taught in Kauffman, “is merely the
rearrangement of well-known devices in a well-known manner yielding
predictable results.” Ans. 19; see KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 416 (2007). We concur with the Examiner’s conclusion that it would
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have been obvious to modify Cooper’s system in this manner so that noise
from all sources inside a subscriber’s home (e.g., telephone, television, and
cable modem) may be attenuated to provide a more reliable and less noisy
return path. See Ans. 4-5, 19.
For the foregoing reasons, we sustain the Examiner’s § 103(a)
rejection of independent claims 1, 12, 16, and 20 over Cooper and
Kauffman. We also sustain the Examiner’s § 103(a) rejection of the
following dependent claims for which Appellant has not made separate,
detailed arguments (see App. Br. 8-9): (i) claims 2, 3, 17, 18, 21, and 22
based on Cooper and Kauffman, (ii) claims 6-10, 14, and 15 based on
Cooper, Kauffman, and Millet, and (iii) claim 11 based on Cooper,
Kauffman, Millet, and Roeck.
Claim 23
We are not persuaded by Appellant’s argument that the combination
of Cooper, Kauffman, and Roeck fails to teach or suggest “configuring the
gating elements in respective upstream communication paths between
respective cable modems and the CMTS so as to block transmission to the
CMTS during intervals that DOCSIS modules transmit to the CMTS,
respectively,” as recited in claim 23. See App. Br. 9-10. Appellant focuses
on Kauffman, arguing that RF module 200 in Kauffman, corresponding to
the recited gating element, attenuates or blocks return path signals “when
ingress noise is determined to be unacceptable,” rather than “during the time
intervals that the host interface controller 220 transmits.” App. Br. 10. As
the Examiner points out, however, “Cooper is relied upon as teaching
‘blocking transmissions on the upstream path during specific time intervals’
and thus, Kauffman does not need to teach this limitation.” Ans. 21. As
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discussed with respect to claim 1, Appellant cannot show nonobviousness by
attacking the references individually because the Examiner’s rejection is
based on the combined teachings of the references. See Ans. 22; Merck, 800
at 1097 (citing Keller, 642 at 425). Accordingly, we sustain the Examiner’s
§ 103(a) rejection of claim 23 over Cooper, Kauffman, and Roeck, as well as
the rejection of dependent claims 24 and 25, not argued separately. See
App. Br. 10.
CONCLUSION
On the record before us, we conclude the Examiner did not err in
rejecting claims 1-25 under 35 U.S.C. § 103(a) as being unpatentable over
the various combinations of references.
DECISION
The Examiner’s rejection of claims 1-25 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).
AFFIRMED

ELD