Ex Parte Dietrich et al

Patent Trial and Appeal Board

Dec 26, 2012

10404783 (P.T.A.B. Dec. 26, 2012)

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.
10/404,783 03/31/2003 Casper Dietrich P14498 8203
50890 7590 12/26/2012
Caven & Aghevli LLC
c/o CPA Global
P.O. BOX 52050
MINNEAPOLIS, MN 55402
EXAMINER
NGUYEN, STEVE N
ART UNIT PAPER NUMBER
2117
MAIL DATE DELIVERY MODE
12/26/2012 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CASPER DIETRICH and STEEN B. CHRISTENSEN
____________________

Appeal 2010-007830
Application 10/404,783
Technology Center 2100
____________________

Before: KALYAN K. DESHPANDE, MICHAEL J. STRAUSS, and
LARRY J. HUME, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-007830
Application 10/404,783

2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims l-4, 6, 7, 9-17, 19, 20, and 22-33. Claims 8, 21, 35, and 36 are
objected to and, together with claim 34, are not being appealed.
1
Claims 5
and 18 are canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to a receiver system with adjustable sampling
and reference levels. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method comprising:
providing a DC offset cancellation signal based on a first
characteristic of an input signal; and
providing a sampling phase adjustment based a second
characteristic of the input signal;
selectively applying the DC offset cancellation signal to
the input signal;
selectively adjusting a sampling phase of a clock signal
based on the sampling phase adjustment; and

1
The Notice of Appeal and Appellant’s Appeal Brief at page 4 both list the
claims being appealed as claims 1-4, 6, 7, 9-17, 19, 20, and 22-33. Claims 8,
21, 35 and 36 are explicitly excluded from the instant appeal (App. Br. 4)
and, in addition to claim 34, are omitted from the listings of claims on
appeal and from the Claims Appendix. While claim 20 is also absent from
the listing of claims to be reviewed on appeal appearing at page 9 of the
Appeal Brief, the omission appears to be a clerical error or oversight, claim
20 otherwise list among the claims on appeal and in the Claims Appendix.
We therefore conclude that Appellants do not intend to appeal the final
rejection of only claims 8, 21, and 34-36. Consistent with the holding of
BPAI precedential opinion Ex Parte Ghuman, 88 USPQ2d 1478, 1480
(BPAI 2008), the Examiner should cancel non-appealed claims 8, 21, and
34-36.
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sampling the input signal based on the adjusted clock
signal,
wherein the DC offset cancellation signal and the
sampling phase adjustment are generated by an eye adjuster
logic based on a comparison of the input signal to which the
DC offset cancellation signal has been applied and the adjusted
clock signal.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Palicot
Muto
Ballintine
Bannai
Ng
Lay
Hadjihassan
Sakamoto
US 5,159,609
US 5,497,377
US 6,594,047 B1
US 6,647,428 B1
US 6,737,995 B2
US 6,862,293 B2
US 6,871,304 B2
US 6,934,479 B2
Oct. 27, 1992
Mar. 5, 1996
Jul. 15, 2003
Nov. 11, 2003
May 18, 2004
Mar. 1, 2005
Mar. 22, 2005
Aug. 23, 2005

REJECTIONS
2,3

The Examiner made the following rejections:
Claims 1-4, 6, 8, 10-17, 19, 21, 23-26, and 34-36 stand rejected under
35 U.S.C. § 102(b) as being anticipated by or, in the alternative, under
§ 103(a) as being unpatentable over Ng and Palicot. Ans. 3.
Claims 7 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ng and Muto. Ans. 8.

2
The rejections of claims 8, 21 and 34-36 are not appealed.
3
Based on Appellants’ arguments, we will decide the appeal of claims 1-4,
6, 7, 9, 12 and 13 based on claim 1; claims 14-17, 19, 20, 22, 25 and 26
based on claim 14; claims 27-33 based on claim 27; and collectively
consider claims 2 and 15, claims 10 and 23, and claims 11 and 24. See 37
C.F.R. § 41.37(c)(1)(vii).
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Claims 9 and 22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ng and Sakamoto. Ans. 9.
Claims 27, 29, and 33 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ng and Bannai. Ans. 10.
Claims 28 and 32 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ng and Lay. Ans. 12.
Claim 30 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ng, Bannai, and Hadjihassan. Ans. 13.
Claim 31 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ng, Bannai, and Ballintine. Id.

APPELLANTS’ CONTENTIONS
4

1. With respect to claims 1 and 14, Ng fails to teach “selectively
adjusting a sampling phase of a clock signal” or “eye adjuster logic.” App.
Br. 11-12.
2. Further with respect to claims 1 and 14, Palicot’s disclosure of an
eye diagram does not teach or suggest “eye adjuster logic” that generates a
DC offset cancellation signal and sampling phase adjustment as claimed.
App. Br. 15.

4
Appellants raise an additional contention of Examiner error that Ng fails to
teach a sampling phase adjustment which is based on a second characteristic
of the input signal. Reply Br. 4 and 7. We note that this new argument was
raised by Appellants for the first time in the Reply Brief and it is not in
response to a new issue brought up by the Examiner in the Answer. We
therefore find this new argument unavailing.

“[I]t is inappropriate for
appellants to discuss in their reply brief matters not raised in ... the principal
brief[]. Reply briefs are to be used to reply to matter[s] raised in the brief of
the appellee.” Kaufman Co. v. Lantech, Inc., 807 F.2d 970, 973 n.* (Fed.
Cir. 1986).
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3. In connection with the rejection of claims 14, “the Office appears
to be merely pointing to certain text within Ng that fails to teach the specific
couplings set forth in claim 14.” App. Br. 12 (emphasis omitted).
4. With respect to claims 2 and 15, “the Examiner has failed to show
that Ng teaches or suggests determining the peak amplitude of the input
signal.” App. Br. 13 (emphasis omitted).
5. With respect to claims 10 and 23 and claims 11 and 24, “[t]he
Examiner has simply failed to meet the burdens for showing inherency [as
provided by MPEP § 2112].” App. Br. 13 (emphasis omitted).
6. With respect to claim 27 “the summary rejection basis provided by
the Examiner fails to suggest the claimed combination of features set forth
by claim 27.” App. Br. 15 (citation omitted) (emphasis omitted).

ISSUES ON APPEAL
Based on Appellants’ arguments in the Appeal Brief (App. Br. 10-16)
and Reply Brief (Reply Br. 3-7), the issues presented on appeal are whether
the Examiner erred in
1. finding that Ng discloses (i) “selectively adjusting a sampling
phase of a clock signal” or (ii) singularly or in combination with
Palicot, “eye adjuster logic,” as required by claims 1 and 14; or
(iii) determining the peak amplitude of an input signal as required
by claims 2 and 15; or
2. Improperly relying on inherency in rejecting claims 10, 11, 23 and
24.

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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred.
We disagree with Appellants’ conclusions as to all rejections. We
adopt as our own (1) the findings and reasons set forth by the Examiner in
the action from which this appeal is taken and (2) the reasons set forth by the
Examiner in the Examiner’s Answer in response to Appellants’ Appeal
Brief. We concur with the conclusions reached by the Examiner. We
highlight the following arguments for emphasis.

Claims 1-4, 6, 7, 9, 12 and 13
In connection with contention 1, Appellants argue that Ng fails to
teach “selectively adjusting a sampling phase of a clock signal” and that the
adjusting is “based on the sampling phase adjustment.” App. Br. 11. The
Examiner responds that Ng teaches the disputed limitation at col. 4, ll. 25-
35. Ans. 14-15. We agree with the Examiner. While Appellants
characterize Ng’s disclosure as sampling of a transition bit, concluding that
it “is clearly not the same as adjusting sampling phase of a clock signal, as
claimed” (Reply Br. 3-4), no reason for the nonequivalence is given. Absent
persuasive evidence contradicting the reasonableness of the Examiner’s
application of Ng and finding that it teaches the disputed limitations, we
agree with the Examiner and find no error.
Appellants further contend that Ng fails to teach “eye adjuster logic.”
App. Br. 11-12. The Examiner responds Ng teaches structure and logic that
performs as required by the eye adjusting logic of claim 1 although not
labeled as such by Ng. Ans. 15. The Examiner further explains that, in the
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absence of Ng’s labeling of the logic as “‘an eye adjuster logic’ even though
the functionality is disclosed” (id), it is appropriate that the basis of the
rejection be expressed as a 35 U.S.C. 102/103 rejection as per MPEP 2112
(III). Id. In contrast, Appellants have not provided persuasive argument or
evidence showing that Ng’s logic functions differently from or otherwise
does not meet the claimed functionality provided by the eye adjuster logic of
the disputed claims.
We further note that Appellants’ Specification provides no definition
of the disputed eye adjuster logic. Nor have Appellants offered any
evidence that such logic would operate other than as asserted by the
Examiner with reference to Ng alone or in view of the teachings of Palicot.
Therefore, absent persuasive evidence of error, we agree with the Examiner
that Ng discloses eye adjuster logic meeting the limitations of claim 1.
For the reason presented supra we are not persuaded that the
Examiner erred in finding that Ng discloses the limitations of claim 1.
Accordingly we will sustain the rejection of claim 1 under 35 U.S.C.
§ 102(b) as being anticipated by Ng together with the rejection of dependent
claims 2-4, 6, 7, 9, 12 and 13, not separately argued.
In connection with contention 2, Appellants argue that Palicot’s
disclosure of an eye diagram does not teach or suggest “eye adjuster logic”
that generates a DC offset cancellation signal and sampling phase
adjustment as claimed. App. Br. 15. The Examiner responds that, contrary
to Appellants’ contention, Ng and not Palicot is relied upon for disclosing
logic for generating a DC offset cancellation signal and sampling phase
adjustment. Ans. 17. Palicot is instead relied upon in support of labeling the
functionality of Ng as eye adjuster logic since “it would have been obvious
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to a person of ordinary skill in the art at the time the invention was made to
name the logic in the slice level adjustment loop and timing acquisition loop
of Ng as eye adjuster logic.” Id. (emphasis omitted). We agree with the
Examiner absent persuasive evidence to the contrary. Accordingly we will
sustain the rejection of claim 1 under 35 U.S.C. § 103(a) as being
unpatentable over Ng and Palicot together with the rejection of claims 2-4,
6, 7, 9, 12 and 13, not separately argued.

Claims 14-17, 19, 20, 22, 25 and 26
In connection with claim 14 Appellants argue that the rejection is
flawed for at least the reasons presented in connection with claim 1. Having
found no such error as detailed supra, we are equally not persuaded that
those same contentions support a finding that the rejection of claim 14 is
improper.
In connection with contention 3, Appellants broadly assert that Ng
fails to anticipate the subject matter of claim 14 arguing that “the Office
appears to be merely pointing to certain text within Ng that fails to teach the
specific couplings set forth in claim 14.” App. Br. 12 (emphasis omitted).
As noted by the Examiner at page 3 of the Final Office Action of Nov. 13,
2007 addressing the same assertion when earlier made during examination,
“Applicant’s arguments fail to comply with 37 CFR 1.111 (b) because they
amount to a general allegation that the claims define a patentable invention
without specifically pointing out how the language of the claims patentably
distinguishes them from the references.” We agree. Such statements are not
considered to be arguments. 37 C.F.R. § 41.37(c)(1)(vii) (“A statement
which merely points out what a claim recites will not be considered an
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argument for separate patentability of the claim.”); 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.”). Accordingly
such assertions of error are not persuasive.
Furthermore, in spite of Appellants’ deficient traversal, we note that
the Examiner has provided further explanation addressing the disputed
fourth logic limitations (Ans. 16) which, absent persuasive evidence to the
contrary, we find to be a reasonable application of Ng meeting the disputed
limitations of claim 14. Therefore we again do not find Appellants’
arguments to be persuasive and we will sustain the Examiner’s rejection of
claim 14 and of dependent claims 15-17, 19, 20, 22, 25 and 26 not separately
argued.

Claims 2 and 15
In connection with contention 4, Appellants argue that “the Examiner
has failed to show that Ng teaches or suggests determining the peak
amplitude of the input signal.” App. Br. 13 (emphasis omitted). The
Examiner responds that “[i]n Fig. 2A the peak amplitude is shown at
B(Anext). Ng determines this amplitude as a logical ‘1.’” Ans. 17 (citing to
Ng col. 3, lines 42-44). We agree with the Examiner.
Claims 2 and 15 require “measuring a peak amplitude of the input
signal.” When construing this or other claim terminology during
prosecution before the Office, claims are to be given their broadest
reasonable interpretation consistent with the specification, reading claim
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language in light of the specification as it would be interpreted by one of
ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). In this case, Appellants’ Specification does not
expressly define the term “measuring” or otherwise indicate that this term is
used in a manner other than its ordinary and customary meaning. Therefore,
in determining the ordinary and customary meaning of “measuring” as
viewed by a person of ordinary skill in the art, it is appropriate to consult a
general dictionary definition for guidance. Comaper Corp. v. Antec, Inc.,
596 F.3d 1343, 1348 (Fed. Cir. 2010). An ordinary and customary meaning
of “measuring” is “the act or process of ascertaining the extent, dimensions,
quantity, etc. of something.”
5
Therefore, one of ordinary skill in the art
would understand the determining that the amplitude of a signal constitutes a
logical “1” includes measuring a peak amplitude of the signal by this
definition. Accordingly, in the absence of persuasive evidence to the
contrary, we agree with the Examiner that Ng teaches the disputed
limitations of claims 2 and 15 and will sustain the rejection thereof.

Claims 10 and 23 and 11 and 24
In connection with contention 5 Appellants argue that “[t]he Examiner
has simply failed to meet the burdens for showing inherency [as provided by
MPEP § 2112].” App. Br. 13 (emphasis omitted). Specifically, in
connection with claims 10 and 23, the Examiner takes the position that “the
logic components shown in Fig. 1 [of Ng] are inherently described by
algebraic relationships of logic functions.” Ans. 7. We take this to mean

5
Webster's encyclopedic unabridged dictionary of the English language.
(1996). New York: Gramercy Books.
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that the logic components taught by Ng together with their corresponding
logic functions define algebraic relationships and thereby meet the language
of claims 10 and 23 including determining a DC offset cancellation signal
based on an algebraic relationship with at least one characteristic of the input
signal. In contrast, Appellants have not provided persuasive evidence or
argument challenging the Examiner’s position other than to broadly allege
error. We find such argument unpersuasive. Once a prima facie case of
anticipation or obviousness has been established, the burden shifts to the
Appellant to prove that the prior art does not necessarily or inherently
possess the characteristics of the claimed invention. In re Best, 562 F.2d
1252, 1255 (CCPA 1977) (“Where, as here, the claimed and prior art
products are identical or substantially identical, or are produced by identical
or substantially identical processes, the PTO can require an applicant to
prove that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product.”). See also Spada, 911 F.2d 705, 708-
09 (Fed. Cir. 1990). Absent persuasive evidence to the contrary, we agree
with the Examiner that Ng teaches the disputed limitations and will sustain
the rejections of claims 10 and 23.
Claims 11 and 24 recite limitations directed to determining a sampling
phase adjustment corresponding to the previously discussed limitation
directed to determining a DC offset cancellation signal per claims 10 and 23,
i.e., based on an algebraic relationship with at least one characteristic of the
input signal. Therefore, for the same reasons presented supra, Appellants’
allegations of Examiner error are not persuasive and we will sustain the
rejection of claims 11 and 24.

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Claims 27-33
In connection with contention 6 Appellants argue that “the summary
rejection basis provided by the Examiner fails to suggest the claimed
combination of features set forth by claim 27.” App. Br. 15 (citation
omitted) (emphasis omitted). However Appellants’ arguments merely point
out what claim 27 recites and, as such, will not be considered an argument
for separate patentability of the claim. See discussion supra. Furthermore,
as in the case of claim 14, and in spite of Appellants’ deficient traversal, we
note that the Examiner has again provided further explanation addressing the
disputed fourth logic limitations (Ans. 18) which, absent persuasive
evidence to the contrary, we find to be a reasonable application of Ng
meeting the disputed limitations of claim 27. Thus, we do not find
Appellants’ arguments to be persuasive and we will sustain the Examiner’s
rejection of claim 27 and of dependent claims 28-33 not separately argued.

CONCLUSIONS
On the record before us, we conclude that the Examiner did not err in
rejecting:
Claims 1-4, 6, 10-17, 19, and 23-26 under 35 U.S.C. § 102(b) as being
anticipated by or, in the alternative, under § 103(a) as being unpatentable
over Ng and Palicot;
Claims 7 and 20 under 35 U.S.C. § 103(a) as being unpatentable over
Ng and Muto;
Claims 9 and 22 under 35 U.S.C. § 103(a) as being unpatentable over
Ng and Sakamoto;
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Claims 27, 29, and 33 under 35 U.S.C. § 103(a) as being unpatentable
over Ng and Bannai;
Claims 28 and 32 under 35 U.S.C. § 103(a) as being unpatentable
over Ng and Lay;
Claim 30 under 35 U.S.C. § 103(a) as being unpatentable over Ng,
Bannai, and Hadjihassan; and
Claim 31 under 35 U.S.C. § 103(a) as being unpatentable over Ng,
Bannai, and Ballintine.

DECISION
The decision of the Examiner to reject claims l-4, 6, 7, 9-17, 19, 20,
and 22-33 is affirmed. Claims 8, 21, and 34-36 are to be canceled.
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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