Ex Parte Karabinis

Patent Trial and Appeal BoardDec 13, 2012

11036230 (P.T.A.B. Dec. 13, 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. 11/036,230 01/14/2005 Peter D. Karabinis 9301-92 5147 20792 7590 12/14/2012 MYERS BIGEL SIBLEY & SAJOVEC PO BOX 37428 RALEIGH, NC 27627 EXAMINER KARIKARI, KWASI ART UNIT PAPER NUMBER 2641 MAIL DATE DELIVERY MODE 12/14/2012 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 PETER D. KARABINIS ____________ Appeal 2010-007429 Application 11/036,230 Technology Center 2600 ____________ Before, SALLY C. MEDLEY, JENNIFER S. BISK, and BRIAN J. McNAMARA, Administrative Patent Judges. McNAMARA, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-007429 Application 11/036,230 2 SUMMARY Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-66. 1 We have jurisdiction under 35 U.S. C. § 6(b). We reverse. STATEMENT OF THE CASE Appellant’s invention concerns a space segment for a radioterminal communications system in which a satellite has service link antennas of different sizes configured to communicate with at least one radioterminal. The service link antennas of different sizes may serve different size geographic areas, which may partially overlap. (Spec. p. 3, ll. 17-22). Claim 1 is illustrative. A space segment for a radioterminal communications system comprising: a satellite including service link antennas of different sizes, each of said service link antennas being configured to communicate with at least one radioterminal, at least one of the service link antennas being configured to receive 1 All pending rejected claims were presumptively on appeal at the time of filing the Notice of Appeal. Page 1 of Appellant’s Brief states that claims 1-66 are the subject of the present appeal. However, Appellant also states that the Grounds of Rejection To Be Reviewed on Appeal are the rejection of independent claims 1, 13, 25, 32, 39 and 50, the rejection of dependent claims 2, 14, 26, 33, 42 and 54, and the rejection of dependent claims 9, 10, 21, 22, 28, 29, 35, 36, 46, 47, 57 and 58. (Br. 7). “If upon filing an appeal brief, the applicant limits the claims to be considered on appeal, then it is the practice of the Patent and Trademark Office to treat the claims not pursued in the appeal brief as having been withdrawn from appeal.” See, Ex Parte Ghuman, 88 USPQ 2d 1478, 1480 (BPAI 2008). Nevertheless, in this case and based on the arguments at page 1 of Appellant’s brief, we understand Appellant to be appealing the rejection of claims 1-66. Appeal 2010-007429 Application 11/036,230 3 both Left Hand Circularly Polarized (LHCP) radiation and Right Hand Circularly Polarized (RHCP) radiation, wherein a gain-to-temperature ratio (G/T) of the at least one of the service link antennas that is configured to receive both LHCP radiation and RHCP radiation comprises a value of 21 dB/K. THE REJECTIONS Claims 1-66 were rejected under U.S.C. 103(a) as unpatentable over US Patent Publication 20040259497 A1 (“Dent”) in view of US Patent Publication 20020006795 A1 (“Norin”). ANALYSIS Appellant argues the patentability of independent claims 1, 13, 25, 32, 39 and 50 as a group. Therefore, claim 1 is illustrative of the claims of this group. The positions of the Appellant and the Examiner are detailed in the Appeal Brief filed on January 6, 2010 and the Examiner’s Answer mailed on February 4, 2010. The Examiner finds that Dent discloses bi-directionally communicating service link antennas configured to receive both Left Hand Circularly Polarized radiation and Right Hand Circularly Polarized radiation. (Ans. 4). The Examiner further finds Norin to disclose that antennas with different reflector sizes and larger reflectors produce better roll-off characteristics. (Id.). The Examiner acknowledges that the combination of Dent and Norin fails to mention that the “gain-to-temperature” ratio (G/T) of at least one of the service link antennas comprises a value of 21dB/K. (Id.). However, the Examiner notes that Norin discloses a peak gain and carrier-to-interference ratio (Ans. 23) and finds it would be obvious to a person of ordinary skill in the art to recognize the need to choose a Appeal 2010-007429 Application 11/036,230 4 specific numerical value for G/T, such as 21 dB/K, to achieve desired results for a specific system. (Ans. 4, 24). Noting that Appellant’s specification fails to mention the significance of G/T being 21 dB/K, the Examiner reasons that the value is arbitrary. (Ans. 23-24). The Examiner further reasons that it would be obvious to combine the teachings of Norin with the system of Dent to achieve the system with an antenna feed horn layout that produces spot beam patterns at different target areas. (Ans. 4-5). Appellant argues that none of the cited references contains any description or suggestion of the claimed G/T ratio of 21 dB/K. (Br. 9). According to Appellant, there is an infinite number of G/T for each of the two different antennas and there is nothing in the art of record which would make it obvious to try the claimed G/T of 21 dB/K. (Br.10). The only support in the specification for G/T comprising a value of 21dB/K is the designation of that value for the larger antenna in Figure 1. Appellant’s specification contains no discussion of selecting G/T to be 21dB/K. Notwithstanding the lack of discussion in Appellant’s specification, Figure 1 shows a specific G/T of 21 dB/K, which Appellant has recited in claim 1. As Appellant argued during prosecution, G/T is a well-known parameter in receiving antenna systems. (Remarks filed December 3, 2008, p. 17; Remarks filed October 30, 2008, p. 14). However, the Examiner has not identified any discussion in either reference of appropriate values for G/T, nor for G/T being 21 dB/K in a system comprising the antennas claimed. The Examiner has also not established any basis for finding that a G/T of 21dB/K in the claimed system is obvious from Norin’s disclosure of carrier-to-interference ratio. In view of the absence of any such disclosure in the Appeal 2010-007429 Application 11/036,230 5 references, we are not persuaded that the Examiner has established a prima facie case of obviousness. Therefore, we reverse the rejection of claim 1. Since all the remaining claims on appeal contain this same limitation, we need not address Appellant’s other arguments and reverse the rejection of claims 1- 66. ORDER The rejection of claims 1-66 under 35 U.S.C. 103(a) as unpatentable over Dent in view of Norin is reversed. REVERSED