Ex Parte Waters et al

Patent Trial and Appeal Board

Dec 27, 2016

12712520 (P.T.A.B. Dec. 27, 2016)

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.
12/712,520 02/25/2010 Deric Wayne Waters TI-67765 2864
23494 7590 12/29/2016
TEXAS INSTRUMENTS INCORPORATED
P O BOX 655474, M/S 3999
DALLAS, TX 75265
EXAMINER
ISSING, GREGORY C
ART UNIT PAPER NUMBER
3646
NOTIFICATION DATE DELIVERY MODE
12/29/2016 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):
uspto@ti.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DERIC WAYNE WATERS, SANDEEP RAO, and
KARTHIK RAMASUBRAMANIAN
Appeal 2015-000431
Application 12/712,520
Technology Center 3600
Before BRETT C. MARTIN, ANNETTE R. REIMERS, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants, Deric Wayne Waters et al.,1 appeal under 35 U.S.C. § 134
from the Examiner’s Non-Final decision, dated September 26, 2013,
rejecting claims 1—29 and 34.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellants identify Texas Instruments Incorporated as the real party
in interest. Br. 3.
2 Claims 30—33 are withdrawn from consideration. Br. 5.
Appeal 2015-000431
Application 12/712,520
THE CLAIMED SUBJECT MATTER
The claims are directed to a position engine feedback to improve
Global Navigation Satellite System receiver performance. Spec. 14, Title.
Claims 1,10, and 27 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. An apparatus comprising:
a plurality of power-controlled blocks;
a power control circuit operable to impress a power
controlling duty cycle, said power control circuit comprising:
a power save mode controller for delivering the
power controlling duty cycle and a plurality of power
control enable and disable signals to the plurality of
power-controlled blocks[;]
a power gating circuit controlled by the power-save
mode controller;
a control circuit for establishing a rate and the duty
cycle of turning the power on and off by the power gating
circuit;
a measurement engine operable to process an incoming
signal to obtain a plurality of measurements; and
a position engine operable to use a set of the plurality of
measurements to compute a position and provide feedback to the
power control circuit for setting a specific blanking pattern for
the power controlling duty cycle.
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
REFERENCES
Lau
Rodal
Farine
Harvey
US 5,592,173
US 5,650,785
Jan. 7, 1997
July 22, 1997
Jan. 10, 2002
Apr. 21,2005
Sept. 29, 2005Horslund
US 2002/0004708 A1
US 2005/0083230 A1
US 2005/0212699 A1
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Appeal 2015-000431
Application 12/712,520
REJECTIONS
The Examiner made the following rejections:
1. Claims 1—9 and 34 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement.
2. Claims 1—9 and 34 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
3. Claims 1—29 and 34 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Rodal.
4. Claims 1—29 and 34 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Lau.
5. Claims 1—29 and 34 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Harvey.
6. Claims 1—29 and 34 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Horslund.
7. Claims 1—29 and 34 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Farine.
Appellants seek our review of these rejections.
ANALYSIS
The Rejection of Claims 1—29 and 34 as Non-enabled
Appellants argue claims 1—29 and 34 as a group. Br. 12—14. We
select claim 1 as the representative claim, and claims 2—29 and 34 stand or
fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that the claims do not meet the enablement
requirement because “the scope of the claims encompasses a much broader
scope than is enabled by the [Specification due to the preamble amendment
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Appeal 2015-000431
Application 12/712,520
of ‘an apparatus’ for the previous ‘GNSS receiver.’” Non-Final Act. 3. The
Examiner also finds that
The subject matter of claim 1, particularly a power control circuit
that includes (1) a power save mode controller, (2) a power
gating circuit and (3) a control circuit, is insufficiently disclosed
in the specification as originally filed. The Examiner cannot find
support for these three separate and distinct elements in the
specification for providing the intended functions. The applicant
has not responded to this rejection.
Id.
In response, Appellants state
The Applicant amended the claims as a result of a previous
112 rejection to more distinctly point out and claim
Apparatus because not necessary receiver which does power
modulation [sic].
Examiner also opines that the claims contain subject
matter not described in the specification-namely power
control circuit that includes:
power save mode controller,
power gating circuit, and
a control circuit.
Br. 12—13. Appellants’ argument continues by stating that “[smarting on
page 12 is a description [sic] Fig. 3A and a description of these elements”,
and by quoting paragraphs 61 and 62 of the Specification. Id. at 13.
Appellants’ argument — amending claim 1 and quoting two
paragraphs of the Specification, however, does not address the Examiner’s
findings, including how the three cited elements provide their intended
functions. Thus, Appellants do not show error by the Examiner. The
Examiner’s rejection of claim 1 is sustained, and claims 2—29 and 34 fall
with claim 1.
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Appeal 2015-000431
Application 12/712,520
The Rejection of Claims 1—29 and 34 as Indefinite
Appellants argue claims 1—29 and 34 as a group. Br. 12—14. We
select claim 1 as the representative claim, and claims 2—29 and 34 stand or
fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
On pages 4—5 of the Non-Final Action, the Examiner presents five
reasons that the claims are indefinite, including reference to indefinite
limitations in the claims such as “power controlled block” (claim 1),
“measurement engine” (claim 1), “position engine” (claim 1), “power save
mode controller” (claim 1), “power gating circuit” (claim 1), “control
circuit” (claim 1), “a prearranged set of blanking patterns” (claims 6 and 19),
“it has locked into a false peak” (claims 6 and 19), “determine the duty-
cycle, blanking pattern and the parameter provided in feedback” (claim 20),
and “processing inputs from a positioning engine” (claim 27).
Ignoring the Examiner’s five reasons that the claims are indefinite,
Appellants merely state
The Examiner has opined that the claims are not clear. The
Examiner cites [0066] for some reason. Paragraph [0066]
describes Fig. 3B which [] must be read in combination with Fig.
3A.
Br. 14. Appellants do not address the rejection as articulated by the
Examiner and, thus, do not show error by the Examiner. The Examiner’s
rejection of claim 1 is sustained, and claims 2—29 and 34 fall with claim 1.
The Rejection of Claims 1—29 and 34 as Anticipated
by Rodal, Harvey, Horslund, Farine, or Lau
Having determined that claims 1—29 and 34 are non-enabled and
indefinite, we cannot sustain the rejections of these claims under 35 U.S.C.
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Appeal 2015-000431
Application 12/712,520
§102 because to do so would require speculative assumptions as to the
meaning and scope of the claims. See In reAoyama, 656 F.3d 1293, 1298
(Fed. Cir. 2011) (holding that the Board erred in affirming an anticipation
rejection of indefinite claims). We emphasize that our reversal of the
rejections is because the claims are non-enabled and indefinite; hence, a
decision has not been made based on the merits of the prior art rejections of
claims 1—29 and 34.
DECISION
For the above reasons, the Examiner’s rejections of claims 1—29 and
34 under 35 U.S.C. § 112, first and second paragraphs, are AFFIRMED.
The Examiner’s rejections of claims 1—29 and 34 under 35 U.S.C.
§ 102 are REVERSED.
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-IN-PART
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