Ex Parte James et al

Patent Trial and Appeal Board

Dec 12, 2012

11097724 (P.T.A.B. Dec. 12, 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.
11/097,724 04/01/2005 Thomas H. James PD-204059 5386
20991 7590 12/13/2012
THE DIRECTV GROUP, INC.
PATENT DOCKET ADMINISTRATION
CA / LA1 / A109
2230 E. IMPERIAL HIGHWAY
EL SEGUNDO, CA 90245
EXAMINER
TILAHUN, ALAZAR
ART UNIT PAPER NUMBER
2424
MAIL DATE DELIVERY MODE
12/13/2012 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 THOMAS H. JAMES and DIPAK M. SHAH
____________________

Appeal 2010-0072131
Application 11/097,724
Technology Center 2400
____________________

Before JEAN R. HOMERE, KALYAN K. DESHPANDE, and
TREVOR M. JEFFERSON, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is DIRECTV Group, Inc. (App. Br. 1.)

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-20. (App. Br. 2.) We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Appellants’ Invention
Appellants invented a system for delivering satellite signals to a
plurality of receivers. In particular, upon receiving a satellite signal (120) at
a low noise block (LNB) amplifier (128) of a satellite antenna (108), the
LNB forwards the received signal to a module (300) coupled thereto where a
multi-switch (400) directs specific portions of the signal to a plurality of
tuners (402) respectively to thereby tune the signal portions to specific
viewer channels requested by the receivers. The tuned signal portions are
then forwarded to an interface where their respective strengths are measured,
and the signal portions are combined into a single signal, which is delivered
to the receivers. (Figures 2, 3, Specification 6, ll. 1-15.)

Illustrative Claim
Independent claim 1 further illustrates the invention as follows:

1. A system for delivering satellite signals, comprising:
a receive antenna, including at least one low noise block
amplifier (LNB); and
a module, coupled to and proximate the receive antenna,
the module comprising:
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a multiswitch, coupled to the LNB, for directing the
satellite signals received by the LNB to a plurality of outputs of
the multiswitch;
a plurality of tuners, respectively coupled to the outputs
of the multiswitch, for tuning to a plurality of specific portions
of the satellite signals in a respective fashion, the specific
portions of the satellite signals selected based on commands
received from a plurality of receivers; and
an interface for delivering the specific portions of the
satellite signals to the plurality of receivers, wherein a signal
strength of the specific portions of the satellite signals are
monitored within the module and the specific portions of the
satellite signals are combined into a single combined signal and
delivered to the plurality of receivers on a single output of the
interface.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Pedlow US 5,923,288 Jul. 13, 1999
Davis US 2002/0154055 A1 Oct. 24, 2002
Fyke US 2005/0066367 A1 Mar. 24, 2005
Gurantz US 7,130,576 B1 Oct. 31, 2006

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claims 1-5, 10, and 18-20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Davis, Gurantz, and Pedlow.
2. Claims 6-9 and 11-17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Davis, Gurantz, Pedlow, and Fyke.
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ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the principal Brief, pages 6-11.
Dispositive Issue: Have Appellants shown the Examiner erred in
finding that the combination of Davis, Gurantz, and Pedlow teaches or
suggests monitoring the signal strength of specific portions of satellite
signals, as recited claim 1?
Appellants argue that Pedlow discloses measuring the strength of an
entire signal as a whole, as opposed to measuring the signal strength of
specific portions of the signal, as required by the claim. (App. Br. 6-8.)
Therefore, Appellants submit that Pedlow’s disclosure teaches away from
the invention. (Id.) Further, Appellants argue that there is insufficient
motivation to incorporate Pedlow’s signal strength monitor in Davis and
Gurantz to thereby monitor the specific portions of a signal as required by
the disputed limitations. (Id. at 8-10.)
In response, the Examiner finds that because a transmitted signal
includes a plurality of portions, Pedlow’s disclosure of monitoring the
strength of an entire signal teaches measuring the strength of the different
portions thereof. (Ans. 14.) Consequently, the Examiner finds that Pedlow
does not teach away from the invention. (Id. at 15.) Accordingly, the
Examiner finds that the combination of Pedlow with David and Gurantz
teaches the disputed limitations. (Id. at 15-16.)
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On the record before us, we agree with the Examiner’s findings and
ultimate conclusion of obviousness.
Figure 3 of Pedlow is reproduced below:

Figure 3 illustrates a home satellite receiver system.
Pedlow discloses an antenna alignment indicator system having a
signal strength detector (16) for measuring the strength of a signal obtained
from a receiver (14) coupled to an antenna (12). (Col. 3, ll. 11-22.) We agree
with the Examiner that by measuring the strength of the entire satellite
signal, the disclosed signal strength detector teaches measuring as well the
strength of the specific portions that make up the signal. Consequently, we
find unavailing Appellants’ argument that Pedlow teaches away from the
invention.
Figure 1 of Davis is reproduced below:
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Figure 1 illustrates a typical satellite communication system.
Further, as depicted above, Davis discloses a multi-switch (20) that
processes different portions of a signal received from the LNB (13) of a
satellite antenna (11). (¶¶ [0034], [0035].) We find that by coupling
Pedlow’s signal strength monitor to Davis’ multi-switch, the monitor would
serve the purpose of monitoring the different portions of the signal exiting
the multi-switch. Additionally, we find that Gurantz’ disclosure of a
gateway that combines the specific portions of a signal before they are
transmitted to a plurality of receivers (col. 4, ll. 28-35) would complement
the Davis-Pedlow’s system by allowing the specific portions of a received
signal to be combined as a single signal. Therefore, we find that the
combination of Davis, Gurantz, and Pedlow discloses prior art elements that
perform their ordinary functions to predictably result in a satellite system
that monitors the strength a plurality of signal portions received from an
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antenna that tunes the signals portions, and then combines them into a single
signal before they are transmitted to a plurality of receivers.
In considering the general form of Appellants’ arguments in the
principal Brief, they appear to have attacked the individual teachings of
Davis, Gurantz, and Pedlow separately, as opposed to the combined
disclosures proffered by the Examiner. We note that one cannot show
nonobviousness by attacking the references individually where the rejections
are based on combinations of references. In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986). Here, the respective references relied on by the
Examiner must be read, not in isolation, but for what the combination
teaches or suggests when considered as a whole. We find nonetheless that
the cumulative weight and the totality of the evidence on this record favor
the Examiner’s position that the combined disclosures of Davis, Gurantz,
and Pedlow would have taught or suggested the disputed limitations.
Next, regarding the lack of logical reason to combine argument, we
note that U.S. Supreme Court has held that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR Int'l Co. v. Teleflex, Inc., 550
U.S. 398, 416 (2007). The Court further instructs that:
[o]ften it will be necessary for a court to look to interrelated
teachings of multiple patents; . . . and the background
knowledge possessed by a person having ordinary skill in the
art, all in order to determine whether there was an apparent
reason for combining the known elements in a the fashion
claimed by the patent at issue.

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Id. at 418.
Additionally, the Court instructs that:
“rejections on obviousness grounds cannot be sustained by
mere conclusory statements. Instead, there must be some
articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness”…. [H]owever, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.

Id. (citation omitted).
First, we find that the ordinarily skilled artisan, being a creative
individual would have been able to fit the teachings of the cited references
together like pieces of a puzzle to predictably result in the disputed
limitations. That is, as discussed above, the proffered combination of the
cited references would predictably result in a satellite system that monitors
the strength of a plurality of signal portions received from an antenna, tunes
the signals portions, and then combines them into a single signal before they
are transmitted to a plurality of receivers.
Further, as prescribed by the controlling case law, while it is often
necessary for an Examiner to identify a reason for combining the familiar
elements obtained from the prior art in establishing a prima facie case of
obviousness, the identification of such a reason is not a sine qua non
requirement. So long as the Examiner provides an articulated reasoning
with some rational underpinning to substantiate the obviousness rejection,
such a conclusion is proper. In this case, the Examiner provides more than
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just a mere conclusory statement. The Examiner notes that at the time of the
claimed invention, an ordinarily skilled artisan would have been motivated
to combine the cited disclosures because users of Davis’ system would be
motivated to utilize Pedlow’s signal strength monitor to optimally align
antenna for a home satellite receiver. (Ans. 5.) In our view, such a statement
suffices as an articulated reason with a rational underpinning to support the
cited combination. As noted above, the case law allows the Examiner to
look to the state of the prior art, including the knowledge of the ordinarily
skilled artisan to arrive at such a reason for combining the known elements
of the prior art. Consequently, the Examiner’s reliance upon the cited
references in order to arrive at an articulated reason with a rational
underpinning to support the proffered combination is proper. For these same
reasons, Appellants’ argument that the combination is improper is not
persuasive.
It follows that Appellants have not shown error in the Examiner’s
conclusion that the proffered combination renders claim 1 unpatentable.
Because claims 2-20 are argued together with claim 1 (App. Br. 10-
11), claims 2-20 fall for the reasons set forth in our discussion of claim 1
above. See 37 C.F.R. § 1.37(c)(1)(vii).

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DECISION
We affirm the Examiner’s rejections of claims 1-20 as set forth above.
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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