Ex Parte Wagner

Patent Trial and Appeal Board

Sep 12, 2016

12699560 (P.T.A.B. Sep. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/699,560 02/03/2010
51092 7590 09/14/2016
ESCHWEILER & AS SOCIA TES LLC
629 EUCLID A VENUE, SUITE 1000
NATIONAL CITY BUILDING
CLEVELAND, OH 44114
FIRST NAMED INVENTOR
Elmar Wagner
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.
IMCP170US 6120
EXAMINER
DSOUZA, JOSEPH FRANCIS A
ART UNIT PAPER NUMBER
2632
NOTIFICATION DATE DELIVERY MODE
09/14/2016 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):
Docketing@eschweilerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ELMAR WAGNER 1
Appeal2014-006193
Application 12/699,560
Technology Center 2600
Before KRISTEN L. DROESCH, DAVID M. KOHUT, and
JOHNNY A. KUMAR, Administrative Patent Judges.
DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks review under 35 U.S.C. § 134(a) of the Examiner's
Final Rejection of claims 1, 3-13, and 24--25 2. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant indicates the real party-in-interest is Intel Mobile
Communications GmbH. App. Br. 1.
2 Claims 2 and 14--16 have been cancelled. Claims 17-23 have been
withdrawn as drawn to a non-elected invention.
Appeal2014-006193
Application 12/699,560
The disclosed invention relates to a modulation scheme performed by
a transmitter to efficiently transmit data. The modulation scheme is
implemented by digital circuitry rather than analog circuitry in order to
provide greater flexibility and lower power consumption than analog
solutions. Embodiments of the disclosed invention include the use of a
digital modulator, a digital-to-analog converter (DAC) coupled to an output
of the digital modulator, and a resonant circuit coupled to the output of the
DAC to remove unwanted frequency components in the analog waveform
provided by the DAC. Spec. i-fi-f l-2, 14.
Representative claim 1, reproduced from the Claims Appendix of the
Appeal Brief, reads as follows (disputed limitation in italics):
1. A method of generating a radio-frequency (RF) signal in a
transmitter, comprising:
using a digital polar modulator to generate a multi-bit
representation of the RF signal; where the multi-bit
representation of the RF signal changes in time according to a
sampling rate; and
converting the multi-bit representation of the RF signal
into a time-varying analog RF signal by using a digital to analog
converter (DAC) having a resonant circuit is3 coupled to an
output of the DA C.
REJECTION
Claims 1, 3---6, and 24 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ken Gentile, DDS Simplifies Polar Modulation,
EDN, August 5, 2004, at 69 ("Gentile") and Eliezer et al. (US 2006/0291589
Al; published Dec. 28, 2006) ("Eliezer").
3 This occurrence of the term "is" appears to be a typographical error ..
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Application 12/699,560
Claims 7-10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gentile, Eliezer, and Boxho (US 2003/0085824 Al;
published May 8, 2003).
Claims 11-13 and 25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gentile, Eliezer, and Gomez (US 2008/0214138 Al;
published Sept. 4, 2008).
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellant's
arguments in the Appeal Brief presented in response to the Final Office
Action, and the arguments in the Reply Brief presented in response to the
Examiner's Answer. We disagree with Appellant's arguments, and agree
with, and adopt as our own, the Examiner's findings and conclusions. We
highlight and address specific findings and arguments below for emphasis.
Claims 1. 3-10. and 24
The Examiner relies on Gentile to teach or suggest all of the
limitations of claim 1, with the exception of an RF output signal and the
DAC having a resonant circuit coupled to an output of the DAC. See Final
Act. 5 (citing Gentile 69, 72, 74, Figs. 5, 6). The Examiner relies on Eliezer
to teach an RF output signal and a resonant circuit at the output of a DAC.
See id. (citing Eliezer i-fi-1 69-73, Fig. 5). The Examiner determined that it
would have been obvious to one with ordinary skill in the art at the time the
invention was made to use the resonant circuit and RF output signal, as
taught by Eliezer in the system of Gentile because it would allow for out-of-
band energy or harmonics to be attenuated and an RF signal to be provided.
See id. (citing Eliezer i1 61 ).
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Application 12/699,560
Appellant argues there is no suggestion or motivation for a person of
ordinary skill in the art to modify Gentile's polar modulator to include
Eliezer's resonant circuit. See App. Br. 4. Appellant asserts Gentile fails to
disclose a resonant circuit at an output of its DAC, and Eliezer's polar
modulator 30 (see Eliezer Fig. 2) fails to include a resonant circuit coupled
to an output of its DAC. See id. at 4--5. Appellant further contends:
"though Fig. 5 [of Eliezer] teaches a resonant circuit 86, this resonant circuit
is clearly not coupled to an output of a DAC of a polar modulator. See id. at
5 (emphases omitted).
Appellant's initial arguments are not persuasive of error in the
rejection because they address the teachings of Gentile in isolation and the
teachings of Eliezer in isolation, instead of addressing the teachings of
Gentile and Eliezer, as combined by the Examiner. One cannot show non-
obviousness by analyzing a reference individually, as Appellant has done
here, where the rejection is based on a combination of references. See In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellant argues that the Examiner's proposed combination of the
teachings of Gentile and Eliezer is improper because Eliezer discloses
nMOS transistors 90 in Fig. 5 produce a non-sinusoidal waveform, and "it
appears the purpose of the LC network in Fig. 5 is to change this 'non-
sinusoidal waveform' from transistors 90 to a sinusoidal RF signal." App.
Br. 5 (citing Eliezer i-f 70). Appellant contends that one advantage of
Gentile's Direct Digital Synthesis (DDS) is that the digital means alone
produces a sinusoid frequency, allowing Gentile's DDS architecture to be
less hardware intensive than a traditional quadrature modulator. See App.
Br. 5---6 (citing Gentile 74:1:11-14, 74:3:22-27). Appellant argues that,
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Appeal2014-006193
Application 12/699,560
because Gentile's digital means alone already produces a sinusoidal
waveform and the purpose ofEliezer's LC network is to generate a
sinusoidal RF signal, it would be unnecessary to add Eliezer' s LC network
to the teachings of Gentile, and adding Eliezer's LC network to the teachings
of Gentile would make Gentile's polar modulator more hardware intensive.
See App. Br. 6.
Appellant's arguments are not persuasive of error in the rejection
because, although Eliezer discloses that the switching elements/array 90 of
Fig. 5 produces a non-sinusoidal waveform (see Eliezer i-fi-169, 70),
Appellant does not direct us to objective evidence to demonstrate that the
purpose of Eliezer's matching network 86 is to generate a sinusoidal
waveform from a non-sinusoidal waveform. To the contrary, and consistent
with the Examiner's findings, Eliezer teaches "[h ]igher-order harmonics of
the digital carrier signal are filtered out by a matching network" (i.e.,
matching network 86 that includes inductors 96, and L 1 and capacitors C 1,
C2 ). Eliezer i1 61; see Eliezer i1 69, Fig. 5; Final Act. 5 (citing Eliezer i-fi-1 61,
69). Eliezer also teaches the residual second harmonic of the transmit
frequency is filtered by the series combination of C2 and L 1 of matching
network 86. Eliezer i-f 70; see Final Act. 5 (citing Eliezer i-fi-169, 70).
Appellant also argues that the Examiner's proposed combination of
the teachings of Gentile and Eliezer is improper because Gentile does not in
any way suggest that a filter is needed at the output of Gentile's DAC. See
App. Br. 7. Appellant contends that Gentile requires sample-rate conversion
to prevent spectral images from appearing in the first place. See id.; Reply
Br. 2-3. Appellant further asserts that "Gentile's techniques (e.g., mandated
sample rate conversion) prevents spectral images from ever appearing, and
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Appeal2014-006193
Application 12/699,560
hence eliminates the need for a filter at the output of Genitle's DAC." App.
Br. 7 (emphasis omitted); see Reply Br. 2-3. Appellant further contends that
absent impermissible hindsight there is no motivation for a person of
ordinary skill in the art to add an LC network as taught by Eliezer to the
digital polar modulator of Gentile because adding a filter, such as the filter
taught by Eliezer, would only add additional hardware cost and complexity.
See App. Br. 7.
We are not persuaded of error in the rejection because the analysis
underlying an obviousness determination need not seek out precise teachings
directed to the specific subject matter of the challenged claim, because
inferences and creative steps that a person of ordinary skill in the art would
employ can be taken into account. KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007). As explained by the Examiner:
Gentile's system is a discrete time system, with a sampling
frequency of F s· Any discrete time system has replicas of the
signal in the frequency domain. These \vill be spaced F s apart.
Even if the output within the [O, Fs] range has a single sinusoid,
that sinusoid will appear again at spacings F s apart. So the
output of the DAC will have multiple sinusoids spaced F s apart.
A filter after the DAC is necessary to attenuate these images.
This is true for any discrete time system, not just Gentile's
system.
Final Act. 2; Ans. 11; see also Gentile 74:2:10-12 ("DDS is a sampled
system"); Eliezer i-f 22 (explaining a discrete-time system has spectral
replicas as integer multiples of the sampling frequency). As explained by
the Examiner, Gentile's following description confirms the existence of
spectral images: "If you do not employ a sample-rate conversion, the
spectral images of the symbol spectrum, which occur in frequency bands
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Application 12/699,560
that are multiples of the symbol rate, appear in the final output spectrum-an
undesirable consequence of sampling theory." Gentile 74:2:27-33; see Final
Act. 3; Ans. 11. We agree with, and adopt as our own, the Examiner's
finding that a filter at the output of the Gentile's DAC would be necessary to
attenuate undesired spectral replicas/images. See Final Act. 3; Ans. 11. In
addition, we are not persuaded by Appellant's suggestion that the use of
sample-rate conversion in Gentile would prevent all spectral replicas/images
from appearing in the first place, and would eliminate the need for a filter at
the output of Gentile's DAC. Appellant does not direct us to evidence
sufficient to demonstrate that sample rate conversion completely prevents
the appearance of spectral replicas/images. Gentile merely teaches that
spectral images appear in the final output spectrum if sample-rate conversion
is not used (see Gentile 74:2:27-33). However, Gentile is silent regarding
whether attenuated spectral images disappear completely in the final output
spectrum if sample rate conversion is used.
Lastly, Appellant argues that the Examiner's proposed combination of
the teachings of Gentile and Eliezer is improper because Eliezer denigrates
the use of polar modulators, such as taught by Gentile. App. Br. 8 (citing
Eliezer i-fi-f 12, 21 ). Appellant contends that, in view of Eliezer' s denigration
of polar modulators, a person of ordinary skill in the art would not look to
incorporate Eliezer's resonant circuit relating to an IQ modulator with a
polar modulator as taught by Gentile. See id.
Appellant's arguments are not persuasive of error in the rejection.
Contrary to Appellant's suggestion that Eliezer denigrates the use of polar
modulators, Eliezer discusses disadvantages of prior art Cartesian
modulators (see Eliezer i-f l 0), prior art analog quadrature Cartesian
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Appeal2014-006193
Application 12/699,560
modulators (see Eliezer ilil I 1, 19), and prior art polar architectures (see
Eliezer i-f 12, 20, 21 ). To address the disadvantages of each of these
modulators, Eliezer proposes a complex modulator to substitute for prior art
analog quadrature modulator structures of the type shown in Eliezer' s
Figure, and to substitute for prior art modulators based on a digital polar
architecture of the type shown in Eliezer's Figure 2. See Eliezer i-f 15.
Furthermore, to the extent that Appellant suggests that Eliezer' s teachings of
a resonant circuit are limited to application in IQ modulators, we also are not
persuaded. "A [prior art] reference must be considered for everything it
teaches by way of technology and is not limited to the particular invention it
is describing and attempting to protect." EWP Corp. v. Reliance Universal
Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (emphasis omitted).
In the Reply Brief, Appellant argues for the first time that Eliezer
teaches an LC filter but provides no teaching that the LC filter is a resonant
circuit. See Reply Br. 3. Appellant's aforementioned argument is not
responsive to an argument raised for the first time in the Answer.
Arguments raised for the first time in the Reply Brief are deemed waived
and will not be considered by the Board without a showing of good cause.
See 37 C.F.R. § 41.41(b)(2) (2012); see also Ex parte Borden, 93 USPQ2d
1473, 1474 (BPAI 2010) (informative) ("[T]he reply brief [is not] an
opportunity to make arguments that could have been made in the principal
brief on appeal to rebut the Examiner's rejections, but were not.").
Appellant does not provide good cause for consideration of Appellant's
belated arguments. See Reply Br. 3--4. Moreover, in contradiction to
Appellant's new argument, Appellant admits that Eliezer teaches a resonant
circuit. See App. Br. 5 ("though Fig. 5 [ofEliezer] teaches a resonant circuit
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Appeal2014-006193
Application 12/699,560
86, this resonant circuit is clearly not coupled to an output of a DAC of a
polar modulator as required by claim 1.") (emphases omitted).
For all of the foregoing reasons, we are not persuaded of error in the
rejection of claims 1, 3-6, and 24 as unpatentable over Gentile and Eliezer.
Appellant does not address substantively the rejection of dependent claims
7-10. See App. Br. 9. Accordingly, for the same reasons as claims 1, 3---6,
and 24, we are not persuaded of error in the rejection of claims 7-10, as
unpatentable over Gentile, Eliezer, and Boxho.
Claims 11-13 and 25
Claim 11 depends from claim 1 and recites: "where the resonant
circuit comprises at least one of the following three elements: a surface-
acoustic wave (SAW) filter, a bulk acoustic wave (BAW) filter, or a
duplexer. The Examiner acknowledges that Gentile does not disclose a
SAW filter, BAW filter, or a duplexer. See Final Act. 10. The Examiner
finds that Gomez teaches a SAW filter. See id. (citing Gomez i-f 11 ). The
Examiner determined "it would have been obvious to one with ordinary skill
in the art at the time the invention was made to use the SAW filter, as taught
by Gomez, in the system of Gentile because this would allow for the benefits
of a SAW filter to be utilized, namely sharp cutoff." Id. (citing Gomez i-f 7).
Appellant argues a person of ordinary skill in the art would not
combine the teachings of Gentile, Eliezer, and Gomez to arrive at the
claimed invention because the references teach away from the combination.
See App. Br. 9. Specifically, Appellant argues that Eliezer attempts to
eliminate the need for SAWs because a SAW adds considerable cost and
silicon area. See App. Br. 9 (citing Eliezer i-fi-1 11, 19); Reply Br. 4--5 (citing
Eliezer i-fi-1 11, 19).
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Application 12/699,560
"Under the proper legal standard, a reference will teach away when it
suggests that the developments flowing from its disclosures are unlikely to
produce the objective of the applicant's invention." Syntex (US.A.) v.
Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005), citing In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994). We disagree that Eliezer's digital complex
modulator that eliminates the need for a SAW filter in the transmit path by
providing lower noise levels than those achievable by analog solutions,
along with Eliezer's teaching that the need for a SAW filter adds
considerable cost and silicon area to the transceiver provides a teaching
away from the combination with Gomez. See Eliezer i-fi-f 11, 19. Although
the substitution of a SAW filter, such as taught by Gomez, for the resonant
circuit (i.e., LC) of the combined teachings of Gentile and Eliezer may add
considerable cost and silicon area to the transmitter, Appellant does not
direct us to a suggestion in Eliezer that the use of a SAW filter is unlikely to
produce the objective of Appellant's invention. That is, Appellant does not
direct us to a suggestion in Eliezer that the use of a SAW filter is unlikely to
result in filtering unwanted frequency components from the output of a DAC
(see Spec. i132). For this reason, we are not persuaded of error in the
rejection of claims 11-13 as unpatentable of Gentile, Eliezer, and Gomez.
In the Event of Further Prosecution
In the event of further prosecution, we direct the Examiner and
Appellant to the following prior art:
JASON THAIN STAUTH & SETH R. SANDERS, DIRECT DIGITAL
MODULATION: A NEW APPROACH TO POLAR SYSTEMS, 119, 136, 140, 144--
145, 152 (2009), available at
https://www2.eecs.berkeley.edu/Pubs/TechRpts/2009/EECS-2009-22.pdf
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Application 12/699,560
(depicting in Figures 65, 83, 85, 89 a digital polar transmitter with a filter at
the output of a DAC, disclosing that to filter images and other out-of-band
spectral content, the RF DAC is followed by a bandpass filter, and
disclosing a high quality factor (Q) on-board passive filter attenuates out-of-
band nose and reduces power loss);
ANALOG DEVICES, A TECHNICAL TUTORIAL ON DIGIT AL SIGNAL
SYNTHESIS, 12-13, 31-32 (1999), available at:
http://www.analog.com/media/cn/training-
seminars/tutorials/450968421DDS_Tutorial_rev12-2-99.pdf (describing the
spectrum of a sampled output of a DDS Device and that in typical DDS
applications a low-pass filter is utilized to suppress the effects of the image
responses in the output spectrum);
DAVID BRANDON & KEN GENTILE, ANALOG DEVICES, DDS-BASED
CLOCK JITTER PERFORMANCE VS. DAC RECONSTRUCTION FILTER
PERFORMANCE (AN 837 APPLICATION NOTE), 1, 3 (2006), available at
http://www.analog.com/media/en/technical-documentation/application-
notes/351016224 AN_83 7. pdf (disclosing a reconstruction filter is used at the
output of the DAC to attenuate image frequencies, and that off-the-shelf
SAW and pre-packaged LC filters are valid candidates for reconstruction
filters).
DECISION
We AFFIRM the rejection of claims 1, 3-13, and 24--25.
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
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