Ex Parte Zeng et alDownload PDFBoard of Patent Appeals and InterferencesFeb 21, 201210635526 (B.P.A.I. Feb. 21, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/635,526 08/07/2003 Huaiyu Zeng ITL.1701US (P16402) 8592 21906 7590 02/22/2012 TROP, PRUNER & HU, P.C. 1616 S. VOSS ROAD, SUITE 750 HOUSTON, TX 77057-2631 EXAMINER WANG, TED M ART UNIT PAPER NUMBER 2611 MAIL DATE DELIVERY MODE 02/22/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte HUAIYU ZENG, JIMMY C. TRAN, ASHUTOSH DIXIT, and XIAO-FENG QI ____________ Appeal 2010-001567 Application 10/635,526 Technology Center 2600 ____________ Before JOHN A. JEFFERY, THOMAS S. HAHN, and ELENI MANTIS MERCADER, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1, 3-10, 12-15, and 27-29. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2010-001567 Application 10/635,526 2 STATEMENT OF THE CASE Appellants’ invention is a modem system with transmit functionality implemented in hardware, and some of the receive functionality implemented in software. See generally Abstract. Claim 1 is illustrative with key disputed limitations emphasized: 1. A method of operating a modem system having a transmit functionality and a receive functionality, comprising: implementing the transmit functionality entirely in hardware including a datapump, the datapump including a receive control module to implement control channel portions of the receive functionality, a receive digital front end to implement digital filtering, decimation and rate conversion portions of a receive functionality of the modem system, and a data compression module to implement compression portions of the receive functionality; and implementing one or more portions of the receive functionality in software; wherein the receive functionality is partitioned between the software and the hardware. The Examiner relies on the following as evidence of unpatentability: Sridhar US 5,802,153 Sept. 1, 1998 Yeh US 6,112,266 Aug. 29, 2000 Shim US 6,151,320 Nov. 21, 2000 Liu US 6,233,250 B1 May 15, 2000 Mirfakhraei US 6,570,912 B1 May 27, 2003 Walker US 6,862,701 B2 Mar. 1, 2005 (filed Mar. 6, 2001) Perumal US 7,106,760 B1 Sept. 12, 2006 (filed Mar. 29, 2002) Appeal 2010-001567 Application 10/635,526 3 THE REJECTIONS 1. The Examiner rejected claims 1, 9, 10, 12, 27, and 28 under 35 U.S.C. § 103(a) as unpatentable over Mirfakhraei, Dowling, and Walker. Ans. 3-11.1 2. The Examiner rejected claims 3 and 13 under 35 U.S.C. § 103(a) as unpatentable over Mirfakhraei, Dowling, Walker, and Liu. Ans. 11-12. 3. The Examiner rejected claim 4 under 35 U.S.C. § 103(a) as unpatentable over Mirfakhraei, Dowling, Walker, Liu, and Sridhar. Ans. 12- 13. 4. The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as unpatentable over Mirfakhraei, Dowling, Walker, Liu, and Yeh. Ans. 13-14. 5. The Examiner rejected claims 6-8 and 14 under 35 U.S.C. § 103(a) as unpatentable over Mirfakhraei, Dowling, Walker, Liu, and Perumal. Ans. 14-16. 6. The Examiner rejected claim 15 under 35 U.S.C. § 103(a) as unpatentable over Mirfakhraei, Dowling, Walker, Liu, Perumal, and Shim. Ans. 16-17. 7. The Examiner rejected claim 28 under 35 U.S.C. § 103(a) as unpatentable over Mirfakhraei, Dowling, Walker, and Sridhar. Ans. 17-18. 8. The Examiner rejected claim 29 under 35 U.S.C. § 103(a) as unpatentable over Liu, Mirfakhraei, Dowling, Walker, and Yeh. Ans. 18-19. 1 Throughout this opinion, we refer to (1) the Appeal Brief filed April 2, 2009; (2) the Examiner’s Answer mailed July 7, 2009; and (3) the Reply Brief filed August 26, 2009. Appeal 2010-001567 Application 10/635,526 4 THE OBVIOUSNESS REJECTION OVER MIRFAKHRAEI, DOWLING, AND WALKER The Examiner finds that Mirfakhraei discloses every recited feature of representative claim 1 except for implementing the modem’s transmit functionality entirely in hardware, but cites Walker as teaching this feature in concluding that the claim would have been obvious. Ans. 3-6, 20-23. In reaching this conclusion, the Examiner emphasizes that Mirfakhraei’s hardware/software boundary line 215 for transmit and receive functions in Figure 2 can be moved as desired.2 Id. Appellants argue that Walker teaches away from implementing at least some of the receive functionality in software as claimed since the relied upon passage in Walker is said to teach implementing both transmit and receive functionality entirely in hardware. App. Br. 11; Reply Br. 1-2. The issue before us, then, is as follows: ISSUE Under § 103, has the Examiner erred in rejecting claim 1 by finding that Mirfakhraei, Dowling, and Walker collectively would have taught or suggested implementing (1) modem transmit functionality entirely in hardware, and (2) at least some modem receive functionality in software? This issue turns on whether Walker teaches away from implementing at least some modem receive functionality in software. 2 The Examiner also cites Dowling for other undisputed features of claim 1. Ans. 5. Appeal 2010-001567 Application 10/635,526 5 ANALYSIS We begin by noting that it is undisputed that Walker teaches implementing modem transmit functionality entirely in hardware. Nor is it disputed that Mirfakhraei’s hardware/software boundary line 215 in Figure 2 can be moved between any two blocks for transmit and receive functions, respectively. Accord Mirfakhraei, col. 7, ll. 56-59; col. 8, ll. 13-16. This dispute, then, turns on one question: Does Walker teach away from implementing at least some modem receive functionality in software? On this record, our answer to this question is: “no.” To be sure, Walker indicates that transmitter 120 and receiver 122 may be constructed from hardware. Walker, col. 17, ll. 43-47. But leaving aside Walker’s permissive language (i.e., the term “may”) in this context which suggests that these components need not necessarily be hardware- based, we nonetheless find this passage hardly teaches away from implementing at least some receive functions in software as claimed. A reference teaches away when an ordinarily skilled artisan, upon reading the reference, would be (1) discouraged from following the path set out in the reference, or (2) led in a direction divergent from the path taken by Appellants. In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006). We find neither prong of this test satisfied here, not only in view of Walker’s permissive language, but also the relative brevity of Walker’s passage which, by merely providing a hardware option, hardly discourages at least some software-based receive functions, let alone leads skilled artisans in a direction divergent from the claimed invention. The Examiner’s reliance on Mirfakhraei is well taken, for it expressly indicates independently varying hardware and software implementations of Appeal 2010-001567 Application 10/635,526 6 both transmitter and receiver functions by simply moving the boundary line 215 between respective transmit and receive functions as the Examiner indicates. Ans. 20-23. Given this design flexibility, we see no reason why skilled artisans would not implement (1) modem transmit functionality entirely in hardware, and (2) at least some modem receive functionality in software, in view of their relative advantages and disadvantages. As Mirfakhraei indicates, dedicated transceiver hardware for signal modulation and/or demodulation functions reduces burden on the host processor despite its cost and additional hardware requirement. Executing transceiver functions via software, on the other hand, is less expensive and simplifies adaptation to new protocols. Mirfakhraei, col. 4, ll. 35-55. Accord Spec. ¶¶ 0004-07 (discussing the relative advantages and disadvantages of hardware- and software-based modems). In short, balancing these relative advantages and disadvantages by selecting an appropriate blend of hardware and software implementations for modem transmit and receive functions via the arrangement in Mirfakhraei’s Figure 2 is, therefore, an engineering trade-off involving design considerations well within the level of ordinary skill in the art. That there are a finite number of identified, predictable solutions— namely six—in this engineering analysis as summarized below only bolsters the Examiner’s position. Appeal 2010-001567 Application 10/635,526 7 Transmit Functionality Receive Functionality All hardware All hardware Mixed hardware and software Mixed hardware and software All software All software Table 1: Summary of Six Identified Predictable Solutions for Modem Function Implementation Where, as here, there is (1) a design need to solve a problem (i.e., implement modem transmit and receive functions), and (2) a finite number of identified, predictable solutions (i.e., the six options noted above), ordinarily skilled artisans would have good reason to pursue those options within their technical grasp. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007). Accordingly, we find it would have been obvious to try at least two of those options, namely, implementing (1) modem transmit functionality entirely in hardware, and (2) at least some modem receive functionality in software as claimed. See id. We are therefore not persuaded that the Examiner erred in rejecting representative claim 1, and claims 9, 10, 12, 27, and 28 not separately argued with particularity. THE OTHER OBVIOUSNESS REJECTIONS We also sustain the Examiner’s obviousness rejections of claims 3-8, 13-15, and 29. Ans. 11-19. Appellants do not particularly identify errors in the Examiner’s reasoning to overcome the Examiner’s obviousness conclusion for these claims, but reiterate similar arguments made in Appeal 2010-001567 Application 10/635,526 8 connection with claim 1. App. Br. 12. We are not persuaded by these arguments, however, for the reasons previously discussed. CONCLUSION The Examiner did not err in rejecting claims 1, 3-10, 12-15, and 27-29 under § 103. ORDER The Examiner’s decision rejecting claims 1, 3-10, 12-15, and 27-29 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). 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