Ex Parte Yakovlev et al

Patent Trial and Appeal Board

Jul 31, 2017

13734772 (P.T.A.B. Jul. 31, 2017)

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.
13/734,772 01/04/2013 Anatoly Anatolievich Yakovlev 081013-0419873/S11-469U 5994
27498 7590 08/02/2017
PILLSBURY WINTHROP SHAW PITTMAN LLP (SV)
P.O. BOX 10500
MCLEAN, VA 22102
EXAMINER
KASSA, ZEWDU A
ART UNIT PAPER NUMBER
2632
NOTIFICATION DATE DELIVERY MODE
08/02/2017 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):
docket_ip@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANATOLY ANATOLIEVICH YAKOVLEV,
DANIEL MICHAEL PIVONKA, ADA SHUK YAN POON,
and TERESA H. MENG
Appeal 2016-008346
Application 13/734,772
Technology Center 2600
Before ST. JOHN COURTENAY III, JOHNNY A. KUMAR, and
LARRY J. HUME, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants filed a Request for Rehearing (“Request”) under 37 C.F.R.
§ 41.52(a)(1) for reconsideration of our Decision on Appeal, mailed May 17,
2017 (“Decision”). Our Decision affirmed the Examiner’s decision rejecting
claims 1—26 under 35 U.S.C § 103(a).
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Application 13/734,772
In the Request (1—10), Appellants advance four principal arguments:
1. There is no teaching of the recited step of decoding the data encoded
on the RF carrier signal without synchronizing to the RF carrier
signal. (Request 1).
2. There would not have been any motivation by one of ordinary skill in
the art to combine Hatlestad1 and Makdissi.2 (Request 3).
3. The Examiner did not articulate any combination of Hatlestad and
Makdissi that would work for its intended purpose, and still meet the
limitations of the claims as recited. (Request 6).
4. The Board did not address the patentability of separately argued
subsets of claims. (Request 7).
Claims 22 and 23:
Appellants additionally present arguments regarding claims 22 and 23
(Request 8—11), responsive to our analysis in our Decision (11—14).
We have reconsidered our Decision, in light of Appellants’ arguments
in the Request, and are not persuaded that we misapprehended or overlooked
any points in rendering our Decision. We decline to change or modify our
prior Decision for the reasons discussed infra.
1 Hatlestad, US 2005/0187594 Al, issued Aug. 25, 2005.
2 Makdissi et al., US 2012/0093245 Al, published Apr. 19, 2012
(“Makdissi”).
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Argument One
Appellants contend: “There is no teaching of the recited step of
decoding the data encoded on the RF carrier signal without synchronizing to
the RF carrier signal.” (Request 1) (emphasis omitted).
The Examiner finds Hatlestad teaches, inter alia: “decoding the data
encoded on the RF carrier signal (Hatlestad, paragraph 0013-14).” (Final
Act. 4). The Examiner further concludes it would have been obvious to try
decoding without synchronizing to the RF carrier signal:
While Hatlestad teaches receiving data which requires
decoding, Hatlestad does not explicitly mention wherein the
decoding occurs without synchronizing to the RF carrier signal.
Makdissi teaches wherein the decoding occurs without
synchronizing to the RF carrier signal (Makdissi, paragraph
0091). Therefore, taking the combined teaching of Hatlestad
and Makdissi as a whole, it would have been obvious to try
[to] one having ordinary skill in the art at the time of the
invention, to incorporate this feature into the system of
Hatlestad, in the manner as claimed and as taught by Makdissi,
for the benefit of an alternative way of decoding data
without synchronizing.
(Final Act. 5) (emphasis added).
In the Appeal Brief (13), Appellants failed to advance a substantive
argument regarding the claimed negative limitation:
“Decoding without synchronizing to the RF carrier signal.”
It is apparent that a significant aspect of the present
invention recited in claim 1 is the combination of providing
through the body the power and data signal that includes “a RF
carrier signal and data encoded on the RF carrier signal” and
then decoding the data encoded on the RF carrier signal, where
“the decoding occurs without synchronizing to the RF carrier
signal.” Significantly, what is described in the present invention
is not only the recognition and advantages associated with
decoding without synchronizing to the same RF carrier signal
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that is also used to obtain power for a signal transmitted
through a body, but specific teachings of circuits and methods
to do this. Simply stated, none of this exists in the prior art.
In light of the above, claim 1 contains allowable subject
matter.
(Appeal Brief 13).
We are not persuaded by Appellants’ contention {id.), because
Appellants: (1) recite the claim language, (2) refer to the description in the
Specification of the invention, and (3) merely assert, “[sjimply stated, none
of this exists in the prior art. In light of the above, claim 1 contains
allowable subject matter.” (Appeal Br. 13).
Regarding such form of argument, we cited our procedural rule in our
Decision (3): “To the extent Appellants have not advanced separate,
substantive arguments for particular claims, or other issues, such arguments
are waived. See 37 C.F.R. § 41.37(c)(l)(iv).” 3
We particularly note our reproduction of claim 1 in our Decision (2)
did not emphasize in italics the claim 1 language “decoding the data encoded
on the RF carrier signal, wherein the decoding occurs without synchronizing
to the RF carrier signal,” as being contested, because we did not find that a
substantive argument, specifically contesting this negative limitation, was
advanced in the Appeal Brief (13).
3 See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”). Cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir.
1991) (“It is not the function of this court to examine the claims in greater
detail than argued by an appellant, looking for nonobvious distinctions over
the prior art.”).
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For the reasons set forth in our Decision (9): “Because there are only
two possibilities (synchronous, asynchronous), we agree with the Examiner
that asynchronous decoding would have been obvious try with predictable
results, at the time of Appellants invention.” See also Decision (10):
“Therefore, we find a preponderance of the evidence (id.) supports the
Examiner’s finding that Appellants’ claimed negative limitation (“without
synchronizing to the RF carrier signal”) was known in the art. (Final
Act. 5).”
We find Appellants’ additional arguments in the Request (1—3)
regarding the negative limitation are untimely. Pursuant to our procedural
rule 37 C.F.R. § 41.52(a)(1), “Arguments not raised, and Evidence not
previously relied upon, pursuant to §§ 41.37, 41.41, or 41.47 are not
permitted in the request for rehearing except as permitted by paragraphs
(a)(2) through (a)(4) of this section.”
To the extent our reviewing court may disagree and find Appellants’
arguments in the Request (1—3) are timely, for the reasons set forth in our
Decision (3—4), we agree with adopt as our own the Examiner’s findings and
legal conclusions (see Final Act. 4—5; Ans. 18—19 regarding the negative
limitation), and we restate our analysis in our Decision (9—10) pertaining to
the negative limitation, emphasizing our findings and legal conclusion of
obviousness:
In reviewing the record, we find the Examiner (Ans. 5)
merely looks to Makdissi (191) for teaching that asynchronous
decoding of signals was known in the art: “The decoding of the
detected signal is made with no clock, asynchronously . . . .”
Because there are only two possibilities (synchronous,
asynchronous), we agree with the Examiner that asynchronous
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decoding would have been obvious try with predictable results,
at the time of Appellants invention.4
Decision (9).
Therefore, we find Appellants’ Argument One unpersuasive.
Argument Two
Appellants contend: “There would not have been any motivation by
one of ordinary skill in the art to combine Hatlestad and Makdissi.”
(Request 3) (emphasis omitted).
Appellants contend: “The Board improperly suggests that
‘asynchronous decoding would have been obvious to try with predictable
results.’” (Request 4) (emphasis omitted). Appellants argue:
[DJecoding can be synchronous to any of the signal parameters
and asynchronous to others. Accordingly, rather than there
being “only 2 possibilities” as stated by the Board, in fact the
number of possibilities are almost endless, given the different
combinations of carrier signal, data symbols/bits, the data rate,
packets, etc. that can exist in any one signal.
(Request 5).
We find Appellants’ contention is unpersuasive, because
“synchronous” and “asynchronous” communications are two broad
4 Where “the problem is known, the possible approaches to solving the
problem are known and finite, and the solution is predictable through use of
a known option,” a solution that is obvious to try may indeed be obvious.
Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1351 (Fed. Cir. 2008), citing
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). See also Ortho-
McNeil Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358, 1364 (stating the
number of options must be “small or easily traversed”).
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categorical approaches understood and known to artisans. Because all forms
of communication necessarily fall into one of the two categories, we find the
choice of one approach over the other would have merely realized a
predictable result, regardless of how it is actually implemented at a lower
level. Therefore, we agree with the Examiner:
There are two known methods of transmission
synchronization, synchronous and asynchronous. Both
reference[s] disclose[] a communication between [an] implant
device and an external device and it would have been obvious
to one having ordinary skill in the art to use, apply and/or try
one of the known teaching [s] disclosed in Makdissi to improve
the communication of implant device and an external device.
For the reasons discussed above, the teaching of Makdissi, an
implant device communicating with the external device via RF
telemetry and decoding asynchronously, is applicable to the
teaching of Hatlestad. Furthermore, teaching alternative ways
of communication and/or operation [are] not necessarily
considered] as a teaching] away.
(Ans. 16).
As we stated in our Decision (9), “[w]e find Makdissi (191)
evidences that asynchronous decoding of signals was known in the art.” 5
Buttressing the Examiner’s findings, we note that the general concept of
encoding and decoding asynchronous signals has historically been applied
in a wide variety of communication mediums. Morse code is one well-
known example, whether implemented as gated flashed light signals (in
maritime and navy applications, inter alia), or by using electrical pulses or
tones asynchronously communicated over landline telegraph or wireless
radio frequency (RF) communication links, and decoded by human operators
5 See Makdissi 191: “The decoding of the detected signal is made with no
clock, asynchronously . . . .” (emphasis added).
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(e.g., Marconi wireless Morse code communications; also Morse code used
by ham radio operators around the world). See, e.g., O'Reilly v. Morse, 56
U.S. 62 (1853); Marconi Wireless T. Co. of America v. U.S., 320 U.S. 1
(1943).
Here, regarding Appellants’ restated argument B (Request 5), as
reproduced from the Appeal Brief (12—13), we find Appellants’ alternative
proposed combination of Hatlestad and Makdissi fails to address the
Examiner’s specific underlying factual findings and ultimate legal
conclusion of obvious, because Appellants’ alternative combination is
premised upon a bodily incorporation of one reference into the other.6
Moreover, Appellants do not provide any evidence of record sufficient to
demonstrate that combining the teachings of the cited references in the
manner proffered by the Examiner (Final Act. 5) would have been “uniquely
challenging or difficult for one of ordinary skill in the art,” {Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)).
For the reasons stated in our Decision (8—11), we disagree with
Appellants’ contention that combining Makdissi’s Human Body
Communication (HBC) approach with “RF is not possible7 or
6 See Decision 10, n.6 (‘“It is well-established that a determination of
obviousness based on teachings from multiple references does not require an
actual, physical substitution of elements.’ In reMouttet, 686 F.3d 1322,
1332 (Fed. Cir. 2012) (citing In re 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.’)). Instead,
the relevant issue is ‘what the combined teachings of the references would
have suggested to those of ordinary skill in the art.’ Id.”).
1 Makdissi (195) expressly indicates that “[o]ne skilled in the art will
appreciate the present invention may be practiced by embodiments other
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advantageous.” (Request 6) (emphasis added). Although Makdissi (Fig. 1,
1 53) teaches that master device 10 communicates using HBC with slave
implanted devices 12—17, and also with external armband device 18, we note
Makdissi also teaches that master device 10 may use both HBC and RF
communications, whereby master device 10 becomes a gateway to the
outside world by using RF telemetry to communicate with an external
device 20 (Fig. 1, | 54).
As previously argued by Appellants in the Appeal Brief (9), Makdissi
(118) notes using non-HBC signals for the wake-up signal would require the
implantation of specific communications circuits both on the receiver and on
the transmitter side of the communication.* * * * 8 However, a “finding that the
prior art as a whole suggests the desirability of a particular combination need
not be supported by a finding that the prior art suggests that the combination
claimed by the patent applicant is the preferred, or most desirable,
combination.” In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004)
(emphasis added).
In other words, an invention may be suggested by the prior art and
therefore obvious, even if inferior to alternatives that would be made by
following other prior art suggestions. See Ans. 16: “teaching alternative
ways of communication and/or operation [are] not necessarily considered]
as a teaching] away.”
than those disclosed herein, which are provided for purposes of
illustration and not of limitation.” (Emphasis added). See also Makdissi
112: Whatever the communication technique used, the processing of the
HBC signal collected . . . .” (emphasis added).
8 See also Makdissi 19 describing the known use of RF communication
techniques in intracorporeal tissue.
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Therefore, we find Appellants’ Argument Two unpersuasive.
Argument Three
Appellants contend: “The Examiner did not articulate any
combination of Hatlestad and Makdissi that would work for its intended
purpose, and still meet the limitations of the claims as recited.” (Request 6).
Appellants contend, inter alia:
On the facts that exist with the Hatlestad and Makdissi
references, there is no showing that the Examiner’s hypothetical
combination would work for its intended purpose. As such,
applicants respectfully assert that for this additional reason,
claim 1 is patentable. Further, the claims dependent on claim 1
are allowable since the premise on which all of these dependent
claims were rejected was made in error.
(Request 7).
However, Appellants cite to no specific evidence in support. (Request
6—7). It is well settled that mere attorney arguments and conclusory
statements, which are unsupported by factual evidence, are entitled to little
probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see
also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney argument is
not evidence).
Therefore, we find Appellants’ Argument Three unpersuasive.
Argument Four
Appellants contend: “The Board did not address the patentability of
separately argued subset[s] of claims.” (Request 7) (emphasis omitted).
However, we cited to our procedural rule in our Decision (3): “To the
extent Appellants have not advanced separate, substantive arguments for
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particular claims, or other issues, such arguments are waived. See 37 C.F.R.
§ 41.37(c)(l)(iv).” To the extent we have not addressed in detail some of
Appellants’ arguments for specific claims, we specifically noted in our
Decision (3—4):
We have considered all of Appellants’ arguments and
any evidence presented. We disagree with Appellants’
arguments, and we adopt as our own: (1) the findings and legal
conclusions set forth by the Examiner in the action from which
this appeal is taken (Final Act. 2—14), and (2) the findings, legal
conclusions, and explanations set forth in the Answer in
response to Appellants’arguments. (Ans. 13—21). We
highlight and address specific findings and arguments for
emphasis in our analysis below.
(emphasis added).
Claim 2 (See Request 7—8)
Regarding claim 2, as further contested in the Request (8), we find
Appellants’ argument in the Appeal Brief (14) for claim 2 is not a separate,
substantive argument, because it is conclusory:
The claims dependent on claim 1 are also allowable, by virtue
of them being dependent on an allowable independent claim,
and separately. For example, with respect to claim 2, Hatlestad
is used for one of the limitations while Makdissi is used for the
other - and while each element is known in the abstract, there
would have been no motivation to combine these specific
elements absent the specification teachings of the present
invention.
(App. Br. 14).
As discussed above, it is well settled that mere attorney arguments and
conclusory statements, which are unsupported by factual evidence, are
entitled to little probative value. Geisler, 116 F.3d at 1470. Additional
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arguments not presented in the Appeal Brief, or not made in the Reply Brief
in response to a shift in the Examiner’s position in the Answer, are
untimely.9
Claims 4—9, 11, and 12 (See Request 7)
Regarding claims 4—9, 11, and 12, Appellants contended in the
Appeal Brief (14) that “the Examiner again refers to Makdissi, but this again
ignores the fact that in Makdissi data is transmitted through the body on a
HBC channel that does not transfer power.”
However, we fully addressed the power signal issue on pages 6—8 of
our Decision.
Claims 16—18 (See Request 7—8)
In the Request (8), Appellants contend: “[t]he group of claims 16-18
is significant as the Examiner at page 6—7 of the Examiner's Answer of
July 8, 2016 makes reference to a different reference (Masoud) that
highlights the claims are not rendered obvious by the cited references.”
Regarding claims 16—18, Appellants merely contended in the Appeal
Brief (14) “the Examiner refers to the Masaud \sic) reference, which was not
used in making a rejection — and such an attempt to suggest obviousness in
9 To the extent Appellants have advanced new arguments in the Reply Brief
not in response to a shift in the Examiner’s position in the Answer, we note
arguments raised in a Reply Brief that were not raised in the Appeal Brief or
are not responsive to arguments raised in the Examiner’s Answer will not be
considered except for good cause. See 37 C.F.R. § 41.41(b)(2). See also 37
C.F.R. § 41.52(a)(1) regarding untimely arguments presented in the Request.
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this is inappropriate.” However, Appellants’ one-sentence argument (id.)
failed to address the Examiner’s specific findings (Final Act. 8):
As per claim 16, Hatlestad in view of Makdissi teaches
the method according to claim 5 wherein the step of providing
changes a data rate to accommodate a configuration of the
decoder (it is well known in the art to control transmission
parameter such as data rate as required by different
transmission/reception requirement or criteria such as available
power, channel condition and so on, see Masoud US
2007/0123946 for example paragraph 0006).
The Examiner finds “it is well known in the art to control transmission
parameter such as data rate as required by different transmission/reception
requirement or criteria such as available power, power consumption
management, channel condition and so on” and provides extrinsic evidence
in support (“see Masoud US 2007/0123946 for example paragraph 0006).”
(Id.).
We find nothing in the form of the Examiner’s rejection that fails to
comply with the MPEP guidance and requirements as set forth under section
2144.03. Therefore, we find Appellants’ nominal argument in the Request
(8) regarding representative claim 16 is unavailing.
Claims 19—21 (See Request 7—8)
Regarding claims 19-21, Appellants further contend in the Request
(8): “The group of claims 19-21 is significant as the Examiner at page 7-8
of the Examiner’s Answer of July 8, 2016 makes reference to ‘a reflected RF
carrier signal’ of Makdissi, which is factually inconsistent with the facts —
including the Board’s finding at page 9 of its Decision — that Makdissi
taught ‘non-RF method of data communication.’”
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However, Appellants merely advanced another one-sentence
argument regarding claims 19—21 in the Appeal Brief (14): “As to claims
19-21, neither Hatlestad nor Makdissi contemplate or suggest a reflected RF
carrier signal.”
Under our procedural rule, 37 C.F.R. § 41.37(c)(l)(iv), “A statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim.” Therefore, we find
Appellants did not timely advance a separate, substantive argument for
claims 19—21.
Claim 26 (See Request 7—8)
Regarding claim 26, Appellants further contend in the Request (8):
“The group of claim 26 is significant in that the Examiner’s erroneous
assertion (page 9 of the Examiner's Answer of July 8, 2016), simply repeats
his previous erroneous assertion, which erroneous assertion was addressed at
Appeal Brief page 14.”
We reproduce the Examiner’s rejection of claim 26 below (Final
Act. 10), as also identically copied in the Answer (9):
As per claim 26, Hatlestad in view of Makdissi teaches the
method according to claim 1 wherein, during the step of
directing, the distance between the forward link transmitter and
the implantable device is in the range of carrier wavelength/100
to carrier wavelength* 100 (Makdissi, paragraph 0022).
In the Appeal Brief (14), Appellants argued:
Lastly, as to claim 26, the Examiner claims (10/22/14 Office
Action) that Makdissi teaches a distance between the
transmitter and receiver in paragraph [0022], This is a dramatic
misunderstanding of paragraph [0022], which describes the
attenuation of HBC signals (not even electromagnetic waves) in
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tissue as a function of distance. The highest frequency
mentioned (which isn't even a carrier frequency) is 10MHz,
which has wavelength/100 of 30cm - clearly not a usable
distance for an implanted device.
We note the frequencies discussed in Makdissi (122) are within the
radio frequency spectrum:
[0022] As regards more particularly the signal attenuation by
body tissues in the frequency range 500 kHz-10 MHz (band
B), which is the one with minimal attenuation by the interstitial
tissues of the body, the attenuation in this frequency range
typically varies between 10 dB and 40 dB, depending on the
distance between the transmitter and the receiver, the distance
between the respective electrodes of the pair of electrodes of the
transmitter or of the receiver, and the surface of these
electrodes. A typical attenuation value is 20 dB at 1 MHz for a
distance of 10 to 12 cm between the transmitter and the
receiver.
(Makdissi 122) (emphasis added).
As noted in our Decision (8): ‘“The Authoritative Dictionary of IEEE
Standards Terms’ (Seventh Edition, 2000) provides a broad general
definition: radio frequency (RF) — ‘The frequency in the portion of the
electromagnetic spectrum that is between the audio-frequency portion and
the infrared portion.’[10] See n.2 [Decision], supra.” We further note the
generally accepted range of human hearing is from around 20 Hz to
approximately 20 KHz (with the upper range generally declining with age).
Infrared light has longer wavelengths (approximately 700 nanometers (430
THz) to 1,000,000 nm (300 GHz)), than visible light (approximately 400 to
10 See 37 C.F.R. § 41.30 regarding reliance on dictionaries in PTAB
proceedings.
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700 nm). Thus, according to the IEEE definition, radio frequencies occupy
the frequency spectrum from at least around 20 KHz to around 300 GHz.
An embodiment of the HBC system described by Makdissi (| 25):
generates modulated pulse trains having a series of HBC
signal pulses that are applied to electrodes of the transmitter
.... The receiver device includes electrode terminals to
receive the HBC signals and receiver circuits that process, e.g.,
condition, filter, amplify and demodulate signal pulse trains,
the HSC signals collected at the receiver device electrode
terminals.
(Emphasis added).
Such RF communication (Makdissi 122) using currents that
oscillate at radio frequencies exhibits special properties not shared by AC
current at lower (non-RF) frequencies, such as the “skin effect” in which
current tends to flow along the surface of the conducting material at higher
frequencies, causing the effective resistance of the conductor to increase
where the skin depth is smaller.11
But for the conductivity of the interstitial tissues of the body
(Makdissi 12) to electrically propagate the transmitted modulated pulse
trains, we are of the view that such electrode terminals (Makdissi 125) of
the transmitter and receiver would otherwise function as RF antennas, at
least in close proximity, assuming a sufficient transmitter power level,
receiver sensitivity, and electrode (antenna) wavelength (e.g., full-wave,
half-wave, quarter-wave).
In any event, we conclude Appellants’ claims 1—26 do not clearly
11 See, e.g., The Authoritative Dictionary of IEEE Standards Terms”
(Seventh Edition, 2000, “skin effect” and “skin depth.” See also 37 C.F.R.
§41.30 regarding reliance on dictionaries, which may be cited by
Appellants, the Examiner, or the Board.
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distinguish communication using RF currents from communication
using RF electromagnetic radiation, so as to preclude the Examiner’s
broad but reasonable reading.12
Without additional evidence to the contrary, on this record, we find
Appellants’ arguments regarding claim 26 are unpersuasive because they are
merely assertions unsupported by objective evidence.
Moreover, given the aforementioned evidence relied upon by the
Examiner, we find the contested limitations of claim 26 are at least
suggested by the proffered combination of Hatlestad and Makdissi. Our
reviewing court guides: ‘“the question under [35 U.S.C. § 103] is not
merely what the references expressly teach but what they would have
suggested to one of ordinary skill in the art at the time the invention was
made.’” Merck & Co. v. Biocraft Laboratories, Inc., 874 F.2d 804, 807
(Fed. Cir. 1989), cert, denied, 493 U.S. 975 (1989); see also MPEP § 2123.
For the aforementioned reasons, we find Appellants’ Argument Four
unpersuasive.
Independent Claim 22:
Regarding claim 22, Appellants additionally contend in the Request
(9), that the “switching step causes a variable impedance to be switched ‘into
a signal path of the high frequency carrier signal,’ which one of ordinary
12 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 111 F.3d
1048, 1054 (Fed. Cir. 1997). See, e.g., Appellants’ Spec. 148: “Although
the embodiments have been particularly described with reference to
embodiments thereof, it should be readily apparent to those of ordinary
skill in the art that various changes, modifications and substitutes are
intended within the form and details thereof, without departing from the
spirit and scope intended.” (emphasis added).
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skill in the art would recognize is on the transmitter side.”
As we stated in our Decision (12):
Although the preamble of claim 22 is directed to “A
method for amplitude modulation of a high frequency carrier
signal that is transmitted through a body,” we find nothing in
the language of method claim 22 that limits the contested step
recited in the body of claim 22 to being performed only by a
transmitter. The preamble of claim 22 does not specify who or
what entity or element transmits the high frequency carrier
signal, nor does the body of claim 22 limit the contested
“switching of a variable impedance into a signal path” to being
performed on the transmitter or receiver side. Method claim 22
is silent regarding any recited transmitter or receiver structure.
Appellants could have amended claim 22 during prosecution to
preclude a broader interpretation (under BRI) of the second recited
switching step of claim 22 from being performed on the receiving side, even
if the first generation step (of the high frequency carrier signal) is performed
on the transmitter side.13 Method claim 22 simply does not restrict who or
what performs the steps or acts of the method. Therefore, we do not find the
Examiner’s broader reading to be unreasonable. (Final Act. 12).
Accordingly, we find Appellants’ arguments in the Request (8—10)
pertaining to claim 22 are unpersuasive.
13 Because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
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Appeal 2016-008346
Application 13/734,772
Claim 23:
Claim 23 recites: “The method according to claim 22 wherein the
step of switching uses a transistor to act as a switch and cause an
impedance to vary, with the impedance being adjusted by a voltage applied
to one of the dependent terminals of the transistor.” (Emphasis added).
Regarding claim 23, Appellants contend in the Request (10):
Luzzi only describes using the transistors as switches in [0047].
In this dependent claim, the transistor itself is the variable
impedance, and the claim specifically reads “... with the
impedance being adjusted by a voltage applied to one of the
dependent terminals of the transistor.” Luzzi does not teach
controlling the impedance by adjusting a voltage at the
dependent terminals of the transistor. The footnote 8 on page 14
of the Decision is also irrelevant, as it is a description of using a
set of different elements to produce the impedance, not the
transistor itself. Nowhere does the Board address using the
transistor itself as the variable impedance, and none of the cited
reference teach this method.
We note claim 23 positively recites that the “transistor [ ] act as a
switch” to “cause an impedance to vary.” Thus, our interpretation is
reasonable under BRI, i.e., that the transistor functions as a switch to
selectively cause an external (resistive) impedance to vary, because the
external resistors are switched in or out of the circuit. See our Decision (14)
referring to “Luzzi, figure 2A, depicting resistors (Ri . . . Rn-i, Rn} being
switched in or out of the parallel circuit using transistors T<1> . . . T.
(Luzzi, H 46-47).”14
14 See n.8 in our Decision (14): “As known in the art, the total resistance of
resistors connected in parallel is the reciprocal of the sum of the reciprocals
of the individual resistors. Such circuit (Luzzi, figure 2A) presents a load
impedance Z = R +jX having only a (real) resistive component R (as
19
Appeal 2016-008346
Application 13/734,772
To the extent the claimed switching transistor itself provides the
varying impedance (claim 23), we find any switch, including a transistor
functioning and biased to perform as a switch, provides a high impedance
state (OFF = NOT CONDUCTING) and a low impedance state (ON =
CONDUCTING). This is a varying impedance (ON, OFF). See Luzzi Fig.
2A (transistors T<1> . . . T).
Therefore, under either interpretation, we find Appellants’ arguments
in the Request (10) pertaining to claim 23 are unpersuasive.
CONCLUSION
We have considered all of the arguments raised by Appellants in the
Request, but Appellants have not persuaded us that we misapprehended or
overlooked any points in rendering our Decision.
DECISION
We have granted Appellants’ request to the extent that we have
reconsidered our Decision, but we deny the Request with respect to making
any changes therein.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See also 37 C.F.R.
§ 41.52(b).
REQUEST FOR REHEARING DENIED
switched in parallel by transistors T<1> . . . T), and having no
significant (imaginary) reactive component X (such as a capacitive or
inductive reactance) that would vary the total load impedance Z as a
function of frequency.”
20