Ex Parte Zeng et al

Board of Patent Appeals and Interferences

Feb 21, 2012

10635526 (B.P.A.I. Feb. 21, 2012)

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)

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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.
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Application 10/635,526

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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.
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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
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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.

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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
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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).

AFFIRMED

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