Ex Parte 7135941 et al

Patent Trial and Appeal BoardApr 21, 2016

95002319 (P.T.A.B. Apr. 21, 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. 95/002,319 09/14/2012 7135941 19VL-162627 4073 89098 7590 04/21/2016 Christos Tsironis c/o Focus Microwaves 1603 St.Regis Dollard-des-Ormeaux, QC H9B 3H7 CANADA EXAMINER NGUYEN, MINH T ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 04/21/2016 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 PATENT TRIAL AND APPEAL BOARD ____________ MAURY MICROWAVE, INC. Requester and Appellant v. FOCUS MW IP Inc. Patent Owner and Respondent ____________________ Appeal 2016-002145 Reexamination Control 95/002,319 Patent US 7,135,941 B1 Technology Center 3900 ____________ Before JOHN A. JEFFERY, STEPHEN C. SIU, and ANDREW J. DILLON, Administrative Patent Judges. DILLON, Administrative Patent Judge DECISION ON APPEAL Appeal 2016-002145 Reexamination Control 95/002,319 Patent US 7,135,941 B1 2 STATEMENT OF THE CASE Requester appeals under 35 U.S.C. § 134(b) (2002) from the Examiner’s decision not to adopt certain proposed rejections of claims 6 and 18. We have jurisdiction under 35 U.S.C. § 315 (2002). A hearing was held on April 13, 2016, and a transcript of that hearing will be made part of the record. Invention The '941 patent describes an automatic electromechanical microwave tuner, used for load pull transistor testing which employs three horizontally and vertically adjustable RF probes. See Abstract. Claims Claims 1–6 are original claims and were subject to reexamination. Claims 7–19 are proposed new claims. Claims 1–5, 11, and 12 were rejected and Claims 7–10, 13–17 and 19 have been canceled. Claims 6 and 18 are illustrative, with key disputed limitations emphasized: 6. A calibration method for said electromechanical tuner of claim 2, in which scattering parameters (S-parameters) are measured using a calibrated vector network analyzer (VNA) between the test and idle ports of the tuner at a given fundamental frequency of operation and its two harmonics, as a function of a selected number of horizontal and vertical positions of each RF probe, the horizontal positions selected such as to cover 360º of phase at the Appeal 2016-002145 Reexamination Control 95/002,319 Patent US 7,135,941 B1 3 fundamental frequency and the vertical positions chosen such as to cover from minimum to maximum amplitude of the reflection factor at the test port in five steps, step 1 consisting of measuring S-parameters of the tuner as a function of the positions of probe 1, probes 2 and 3 being initialized, step 2 consisting of measuring S-parameters of the tuner as a function of the positions of probe 2, probes 1 and 3 being initialized, step 3 consisting of measuring S-parameters of the tuner as a function of the positions of probe 3, probes 1 and 2 being initialized, step 4 consisting of cascading the S-parameters measured in steps 2 and 3 with the inverse S-parameter matrix of the tuner, measured when all probes are initialized, and step 5 consisting of saving the S-parameters collected and calculated in steps 1 to 4 in a total of 3 calibration data files, one for each of 3 harmonic frequencies, ready for retrieval. 18. A programmable electromechanical, microwave load pull tuning system comprising: a programmable tuner including: an input (test) and an output (idle) port, a horizontal transmission airline in form of a slotted coaxial or parallel plate airline (slabline), three carriages movable parallel to the airline, which hold one vertically adjustable capacitive probe each and mechanisms for separate remote control of each horizontal and vertical movement of the carriages and probes to proper positions based on calibration data for synthesizing an impedance at a selected frequency, wherein capacitive coupling between each said Appeal 2016-002145 Reexamination Control 95/002,319 Patent US 7,135,941 B1 4 probe and a central conductor of the slab line creates a wideband reflection; an electronic memory storing thereon S-parameters in a total of 3 calibration data files, one for each of 3 harmonic frequencies, wherein said S-parameters are calculated by: measuring first S-parameters of the tuner as a function of the positions of probe 1, probes 2 and 3 being initialized; measuring second S-parameters of the tuner as a function of the positions of probe 2, probes 1 and 3 being initialized; measuring third S-parameters of the tuner as a function of the positions of probe 3, probes 1 and 2 being initialized; and cascading the second and third S-parameters with an inverse S- parameter matrix of the tuner, measured when all probes are initialized; saving the said S-parameters from each step above in the electronic memory in the 3 calibration data files. Prior Art Martens US 6,665,628 B2 Dec. 16, 2003 Saito JP 2000-221233A Aug. 11, 2000 Tsironis CA 2,311,620 A1 Sept. 1, 2001 Operating Manual: Automated Tuner System Model MT981D, 2000, (hereinafter “MT981D Operating Manual’). Jack Browne, Coaxial Tuners Control Impedances to 65 GHz, Microwaves & RF Magazine, Jan. 2003, (hereinafter “Brown”). Focus Microwaves Inc. Product Note 44: Programmable Harmonic Tuner, PHT, Nov. 1997, (hereinafter “Product Note 44”). Appeal 2016-002145 Reexamination Control 95/002,319 Patent US 7,135,941 B1 5 Focus Microwaves Inc. Calibrations in a Load Pull System (www.focus- microwaves.com/FAQs/faqs/htm) May 11, 2003 (hereinafter “Focus Web Page”). Requester’s Contentions Requester contends that the Examiner erred in declining to adopt the following grounds of rejections against claims 6 and 18 (App. Br. 8–26): A. The rejection of claims 6 and 18 under 35 U.S.C. §103(a) as obvious over Tsironis in view of certain admissions of prior art from the '941 patent ("APA") and the Focus Web Page; B. The rejection of claims 6 and 18 under 35 U.S.C. §103(a) as obvious over Tsironis in view of APA and Product Note 44; C. The rejection of claims 6 and 18 under 35 U.S.C. §103(a) as obvious over Tsironis in view of Saito, APA, and Focus Web Page; D. The rejection of claims 6 and 18 under 35 U.S.C. §103(a) as obvious over Tsironis in view of Saito, APA, and Product Note 44; E. The rejection of claims 6 and 18 under 35 U.S.C. §103(a) as obvious over Tsironis in view of Browne, APA, and Focus Web Page; F. The rejection of claims 6 and 18 under 35 U.S.C. §103(a) as obvious over Tsironis in view of Browne, APA, and Product Note 44; G. The rejection of claims 6 and 18 under 35 U.S.C. §103(a) as obvious over Tsironis in view of APA, Focus Web Page, and Martens; H. The rejection of claims 6 and 18 under 35 U.S.C. §103(a) as obvious over Tsironis in view of APA, Product Note 44, and Martens; I. The rejection of claims 6 and 18 under 35 U.S.C. §103(a) as obvious over Tsironis in view of Saito, APA, Focus Web Page, and Martens; Appeal 2016-002145 Reexamination Control 95/002,319 Patent US 7,135,941 B1 6 J. The rejection of claims 6 and 18 under 35 U.S.C. §103(a) as obvious over Tsironis in view of Saito, APA, Product Note 44, and Martens; K. The rejection of claims 6 and 18 under 35 U.S.C. §103(a) as obvious over Tsironis in view of Browne, APA, Focus Web Page, and Martens; L. The rejection of claims 6 and 18 under 35 U.S.C. §103(a) as obvious over Tsironis in view of Browne, APA, Product Note 44, and Martens; M. The rejection of claim 18 under 35 U.S.C. § 112, first paragraph, for lack of written description of “an electronic memory;” and, N. The rejection of claim 18 under 35 U.S.C. § 112, second paragraph, for failing to particularly point out and distinctly claim the subject matter which the Patent Owner regards as his invention. ANALYSIS Proposed Ground of Rejection A With respect to proposed ground of rejection A, Requester relies on the limitations of claim 6 and does not provide separate and distinct arguments for claim 18. Accordingly, we will decide the appeal with respect to this proposed ground of rejection on the basis of claim 6 alone. See 37 C.F.R. § 41.67(c)(1)(vii). Requester argues that the Examiner erred in not rejecting claim 6 in view of the rejection of claim 1 as obvious over Tsironis, in view of APA and various other references. Requester argues that the Examiner determined that Tsironis teaches all of the features of claim 1, with the Appeal 2016-002145 Reexamination Control 95/002,319 Patent US 7,135,941 B1 7 exception of the requirement that the tuner comprises three tuning slugs, which the Examiner found would have been obvious to a person of ordinary skill in the art. App. Br. 8. Claim 6 recites a calibration method for the electromechanical tuner of claim 1, and Requester points out that the Examiner, in the Action Closing Prosecution mailed on July 31, 2014, only distinguishes claim 6 from the cited prior art with respect to recited step 4. Id. at 9. The fourth step of claim 6 recites “cascading (multiplying) the S- parameters measured in steps 2 and 3 with the inverse S-parameter matrix of the tuner, measured when all probes are initialized” which Requester argues is equivalent to “de-embedding” which is described in Tsironis at page 9, lines 5–7. Id. at 11. Requester then relies upon the second declaration of Gary Simpson, the Chief Technology Officer of Requester, who opines that “de- embedding” refers to a mathematical operation involving the cascading (multiplying) of S-parameters with an inverse S-parameter matrix, also arguing that “de-embedding” was “an elementary concept in the art before the filing/priority date of the ‘941 patent.” Id. at 11–12. Finally, Requester argues that a person of ordinary skill in the art would have found it obvious to cascade the S parameters measured in steps 2 and 3, as opposed to steps 1 and 2 or steps 1 and 3 as one of a finite number of possibilities. Id. at 15. Owner submits multiple declarations from independent experts which each argue that the addition of a third probe to an existing two probe tuner and the calibration of that tuner was widely believed to be an unsolvable Appeal 2016-002145 Reexamination Control 95/002,319 Patent US 7,135,941 B1 8 problem in the community. Further, Owner’s submitted declarations describe “de-embedding” as a general expression which entails a different approach for different set-ups, urging that no special significance should be attributed to the use of the term “de-embedding” within the Tsironis reference. Resp. Br. 5. With regard to Requester’s argument that discovery of the claimed calibration technique necessitated only the investigation of a finite number of possibilities, the declarations submitted by Owner support the argument that “de-embedding” a three-probe tuner involves “significantly more variables,” rendering existing methods of calibration irrelevant. (First Decl. of Popovic, ¶6) Id. at 7. The Examiner found that assuming it was obvious to include a third tuner in series with the two tuners disclosed by Tsironis, the many possibilities of parameters which might be utilized to “de-embed” that system would have precluded one of ordinary skill in the art from choosing the claimed approach, absent the impermissible use of hindsight. RAN 26- 27. We concur with the Examiner. While it may appear, against the backdrop of the claimed solution, that there were only a finite number of possible solutions to investigate, we find the overwhelming weight of the Appeal 2016-002145 Reexamination Control 95/002,319 Patent US 7,135,941 B1 9 evidence tends to show that the claimed solution was not an obvious extension of the calibration technique disclosed by Tsironis. With respect to claim 18, as noted above, Requester merely incorporates the arguments set forth above regarding claim 6. App. Br. 19. We therefore find that the Examiner did not err by failing to adopt Proposed Ground of Rejection A. Proposed Ground of Rejection B Proposed Ground of Rejection B differs from Proposed Ground of Rejection A only by the substitution of a different secondary reference, and Patent Owner’s arguments do not persuasively rebut the Examiner’s decision not to adopt this rejection. For the reasons we set forth above, we find no error in the Examiner’s failure to adopt Proposed Ground of Rejection B. Proposed Ground of Rejection C Proposed Ground of Rejection C differs from Proposed Ground of Rejection A only by the additional reference to Saito for a teaching that it would have been obvious to add a third probe to the two-probe tuner of Tsironis, and Patent Owner’s arguments do not persuasively rebut the Examiner’s decision not to adopt this rejection For the reasons we set forth above, we find no error in the Examiner’s failure to adopt Proposed Ground of Rejection C. Proposed Ground of Rejection D Proposed Ground of Rejection D differs from Proposed Ground of Rejection B only by the additional reference to Saito for a teaching that it would have been obvious to add a third probe to the two-probe tuner of Appeal 2016-002145 Reexamination Control 95/002,319 Patent US 7,135,941 B1 10 Tsironis and Patent Owner’s arguments do not persuasively rebut the Examiner’s decision not to adopt this rejection For the reasons we set forth above, we find no error in the Examiner’s failure to adopt Proposed Ground of Rejection D. Proposed Ground of Rejection E Proposed Ground of Rejection E differs from Proposed Ground of Rejection A only by the additional reference to Browne for a teaching that it would have been obvious to add a third probe to the two-probe tuner of Tsironis and Patent Owner’s arguments do not persuasively rebut the Examiner’s decision not to adopt this rejection For the reasons we set forth above, we find no error in the Examiner’s failure to adopt Proposed Ground of Rejection E. Proposed Ground of Rejection F Proposed Ground of Rejection F differs from Proposed Ground of Rejection B only by the additional reference to Browne for a teaching that it would have been obvious to add a third probe to the two-probe tuner of Tsironis and Patent Owner’s arguments do not persuasively rebut the Examiner’s decision not to adopt this rejection For the reasons we set forth above, we find no error in the Examiner’s failure to adopt Proposed Ground of Rejection E Proposed Ground of Rejection G Proposed Ground of Rejection G differs from Proposed Ground of Rejection A only by the additional reference to Martens for a teaching that de-embedding was known in the art at the time of the filing date of the ‘941 Appeal 2016-002145 Reexamination Control 95/002,319 Patent US 7,135,941 B1 11 Patent and Patent Owner’s arguments do not persuasively rebut the Examiner’s decision not to adopt this rejection. For the reasons we set forth above, we find no error in the Examiner’s failure to adopt Proposed Ground of Rejection G. Proposed Ground of Rejection H Proposed Ground of Rejection H differs from Proposed Ground of Rejection B only by the additional reference to Martens for a teaching that de-embedding was known in the art at the time of the filing date of the ‘941 Patent and Patent Owner’s arguments do not persuasively rebut the Examiner’s decision not to adopt this rejection. For the reasons we set forth above, we find no error in the Examiner’s failure to adopt Proposed Ground of Rejection H. Proposed Ground of Rejection I Proposed Ground of Rejection I differs from Proposed Ground of Rejection C only by the additional reference to Martens for a teaching that de-embedding involved cascading (or multiplying) a matrix with an inverse matrix to correct for the effects of the test environment and Patent Owner’s arguments do not persuasively rebut the Examiner’s decision not to adopt this rejection. For the reasons we set forth above, we find no error in the Examiner’s failure to adopt Proposed Ground of Rejection I. Proposed Ground of Rejection J Proposed Ground of Rejection J differs from Proposed Ground of Rejection D only by the additional reference to Martens for a teaching that de-embedding involved cascading (or multiplying) a matrix with an inverse Appeal 2016-002145 Reexamination Control 95/002,319 Patent US 7,135,941 B1 12 matrix to correct for the effects of the test environment and Patent Owner’s arguments do not persuasively rebut the Examiner’s decision not to adopt this rejection . For the reasons we set forth above, we find no error in the Examiner’s failure to adopt Proposed Ground of Rejection J. Proposed Ground of Rejection K Proposed Ground of Rejection K differs from Proposed Ground of Rejection E only by the additional reference to Martens for a teaching that de-embedding involved cascading (or multiplying) a matrix with an inverse matrix to correct for the effects of the test environment and Patent Owner’s arguments do not persuasively rebut the Examiner’s decision not to adopt this rejection . For the reasons we set forth above, we find no error in the Examiner’s failure to adopt Proposed Ground of Rejection K. Proposed Ground of Rejection L Proposed Ground of Rejection L differs from Proposed Ground of Rejection F only by the additional reference to Martens for a teaching that de-embedding involved cascading (or multiplying) a matrix with an inverse matrix to correct for the effects of the test environment and Patent Owner’s Appeal 2016-002145 Reexamination Control 95/002,319 Patent US 7,135,941 B1 13 arguments do not persuasively rebut the Examiner’s decision not to adopt this rejection . For the reasons we set forth above, we find no error in the Examiner’s failure to adopt Proposed Ground of Rejection L. Proposed Ground of Rejection M Requester argues the Examiner erred in failing to reject claim 18 under 35 U.S.C. § 112, first paragraph, for lack of written description of an “electronic memory.” Requester urges that an “electronic memory” is not disclosed in the specification of the ‘941 Patent, and Owner’s reliance on the disclosure of a “control computer” as inherently providing “electronic memory” is not well placed. App. Br. 24. Owner argues that electronic memory is “ubiquitous” and “an absolute requirement for the operation of a computer” and responds that the MPEP expressly recites that "[a] patent need not teach, and preferably omits, what is well known in the art." (MPEP 2164.01) Resp. Br. 17–18. "The disclosure as originally filed does not . . . have to provide in haec verba support for the claimed subject matter at issue." Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1364 (Fed. Cir. 2003) (citation omitted). Here, we find that the presence of an “electronic memory” within the disclosed “control computer” to be clearly inherent. We therefore find no error in the Examiner’s failure to adopt Proposed Ground of Rejection M. Proposed Ground of Rejection N Finally, Requester argues the Examiner erred in failing to reject claim 18 under 35 U.S.C. § 112, second paragraph, for failing to particularly point Appeal 2016-002145 Reexamination Control 95/002,319 Patent US 7,135,941 B1 14 out and distinctly claim the subject matter which the Patent Owner regards as the invention. Specifically, Requester argues that the amendment to claim 18 which characterizes the saved S-parameters as “from each step above” makes it unclear which S-parameters are being saved. App. Br. 25. Owner argues that the meaning of the added phrase is “abundantly clear to any person of ordinary skill in the art” and, by way of additional support, points out that the Examiner entered the amendment in question. ”he legal standard for definiteness is whether a claim reasonably apprises those of skill in the art of its scope.” In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994) (citing Amgen Inc. v. Chugai Pharma. Co., 927 F.2d 1200, 1217 (Fed. Cir. 1991)). "[T]he definiteness of the language employed must be analyzed — not in a vacuum, but always in light of the teachings of the prior art and of the particular application disclosure as it would be interpreted by one possessing the ordinary level of skill in the pertinent art." In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). In this particular set of facts, we find that the phrase “from each step above” simply refers to the S-parameters recited in the steps above, and that this phrase does not give rise to any confusion when read by one of ordinary skill. We find no error in the Examiner’s failure to adopt Proposed Ground of Rejection N. Appeal 2016-002145 Reexamination Control 95/002,319 Patent US 7,135,941 B1 15 DECISION The Examiner’s decision not to adopt the proposed grounds of rejections enumerated above is affirmed. Requests for extensions of time in this proceeding are governed by 37 C.F.R. §§ 1.956 and 41.79(e). AFFIRMED Appeal 2016-002145 Reexamination Control 95/002,319 Patent US 7,135,941 B1 16 Patent Owner: Christos Tsironis c/o Focus Microwaves 1603 St. Regis Dollard-des-Ormeaux, QC H9B 3H7 CANADA Third Party Requester: Sheppard, Mullin, Richter & Hampton LLP 12275 El Camino Real Suite 200 San Diego, CA 92130 kmm