14260875 - (D) (P.T.A.B. Aug. 1, 2019)

Manish J. Manglani et al.

Patent Trials and Appeals BoardAug 1, 2019

14260875 - (D) (P.T.A.B. Aug. 1, 2019)

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. 14/260,875 04/24/2014 Manish J. Manglani 26256.0164- NP (APD4895-2) 5258 110506 7590 08/01/2019 Patent Capital Group - Analog Attn: Bonnie Boyle 4524 Briar Hollow Drive Plano, TX 75093 EXAMINER OBERLY, ERIC T ART UNIT PAPER NUMBER 2184 NOTIFICATION DATE DELIVERY MODE 08/01/2019 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): PAIR_110506@patcapgroup.com bonnie@patcapgroup.com eofficeaction@appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _____________ Ex parte MANISH J. MANGLANI and CHRISTOPHER MAYER _____________ Appeal 2018-0015891 Application 14/260,875 Technology Center 2100 ______________ Before ERIC S. FRAHM, JOHN A. EVANS, and JOYCE CRAIG, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL 1 According to Appellants in the Appeal Brief (App. Br. 4), Analog Devices Global is the real party in interest. Appeal 2018-001589 Application 14/260,875 2 STATEMENT OF THE CASE This is a decision on appeal under 35 U.S.C. § 134(a) of a final rejection of claims 1–7, 9–12, and 23–27.2 Claims 13, 14, and 16–20 have been canceled. Claims 8, 21, and 22 stand objected to as being dependent upon a rejected base claim, but allowable if rewritten to include all limitations of the base claim and any intervening claims (Final Act. 22; Advisory Action mailed April 14, 2017, p. 1, box 15; Ans. 2; App. Br. 6, 11). We have jurisdiction under 35 U.S.C. § 6(b). We reverse. We have reviewed Appellants’ arguments in the Appeal Brief (App. Br. 11–19) and the Reply Brief (Reply Br. 2–4) that the Examiner’s rejections (see Final Act. 3–10) of (i) all independent claims 1, 15, and 25, as well as corresponding dependent claims 2 and 4–6 under 35 U.S.C. § 103(a) as being unpatentable over Rofougaran (US 2008/0146186 A1; published June 19, 2008), Nibe (US 2010/0290566 A1; published Nov. 18, 2010), and Holland et al. (US 5,617,367; issued April 1, 1997)(hereinafter, “Holland”); and (ii) dependent claims 3, 7, 9–12, 23, 24, 26, and 27 as being unpatentable over the base combination of Rofougaran, Nibe, and Holland taken with various other references, are in error. We have also reviewed the Examiner’s obviousness rejections (Final Act. 3–10), as well as the 2 Although the Examiner includes claim 22 in the heading of the statement of the obviousness rejection over Rofougaran, Nibe, and Holland (see Final Act. 3), and also includes claim 22 in the body of the rejection (see Final Act. 5), we consider this harmless error and do not consider claim 22 to be rejected for the following reason. As noted by Appellants (see App. Br. 11), claim 22 depends on claim 21 which was indicated as containing allowable subject matter (see Final Act. 22). As a result, the Examiner has withdrawn the rejection of claim 22 (see Ans. 2). Appeal 2018-001589 Application 14/260,875 3 Examiner’s response to Appellants’ arguments in the Appeal Brief (Ans. 3– 5). The Examiner relies on Nibe as teaching a signal having “a format including a header and payload ([0009])” (Final Act. 4), and Holland as disclosing “a next capture clock edge in the clock input immediately following a transition in the framing signal” as recited in claim 1, and commensurately recited in remaining independent claims 15 and 25 (see Final Act. 4). Appellants argue (App. Br. 11–13; Reply Br. 2) that (i) Nibe describes a data transfer path as having a sync, header, and payload, but never mentions a framing signal or enable signal (App. Br. 12); (ii) Nibe’s signal format includes a sync signal, and “the combination of Rofougaran and Nibe would change the principle operation of Nibe” (App. Br. 11), because “a sync pattern would conflict with the operation and function of a framing signal if both are used” (App. Br. 12); and (iii) the use of sync headers in Nibe contradicts and conflicts with the use of a framing signal as claimed” (App. Br. 12). As a result, Appellants contend “[c]ombining the sync pattern and the claimed framing signal would render Nibe unsatisfactory for its intended purpose,” because “one would have to change the principle operation of Nibe: get rid of the sync pattern and render Nibe unusable and unsatisfactory for its intended purpose,” therefore “there is no suggestion or motivation to combine Rofougaran and Nibe” (App. Br. 13). We agree. Although we agree with the Examiner (Final Act. 4; Ans. 4–5) that Nibe teaches exchanging control data on transfer paths between a baseband processor and transceiver using a format including a header and payload (see Nibe ¶ 9; see also Abstract; Fig. 8), we find that Nibe clearly describes that “[d]ata transferred on the Tx path and the Rx path includes a sync, a header, Appeal 2018-001589 Application 14/260,875 4 and a payload” (¶ 9)(emphasis added). In other words, the sync signal is integral to the format. Therefore, we agree with Appellants that the Examiner erred in formulating the obviousness rejections by failing to address (i) how/why such an incompatible format (sync, header, payload) would work in/with Rofougaran’s device, and/or (ii) what suggestion or motivation would be present to remove the sync signal from Nibe’s format before combining with Rofougaran. For the Examiner to pick and choose which of the three format elements of Nibe to include in Rofougaran is the epitome of impermissible hindsight. Additionally, Appellants contend (App. Br. 13–14) “[o]ne skilled in the art would find no reasonable expectation of success in combining the sync pattern and the framing signal with no change in their respective functions” and “[t]he Final Office Action has not provided any rationale or evidence that there is a reasonable expectation of success” (App. Br. 14). Not only do we agree with Appellants, but we note the Examiner fails to respond to Appellants’ arguments in this regard (see Ans. 4–5). Based on the foregoing, we concur with Appellants’ assertions (see App. Br. 11–14; Reply Br. 2) that it would not have been obvious to combine Nibe with Rofougaran, and thus any combination with Holland would not teach or suggest “a framing signal at the framing input indicates to the transceiver that control[s] data, said control data comprising a frame header and payload control data,” as recited in independent claim 1; or (ii) the commensurate limitations recited in remaining independent claims 15 and 25. Accordingly, we do not sustain the Examiner’s obviousness rejections of independent claims 1, 15, and 25, as well as claims 2–7, 9–12, 23, 24, 26, and 27 depending respectively therefrom. Appeal 2018-001589 Application 14/260,875 5 CONCLUSION The Examiner erred in rejecting claims 1–7, 9–12, and 23–27 under 35 U.S.C. § 103(a) as being unpatentable over the base combination of Rofougaran, Nibe, and Holland. DECISION We reverse the Examiner’s obviousness rejections of claims 1–7, 9– 12, and 22–27. REVERSED