Ex Parte Knutson et al

Patent Trial and Appeal BoardSep 28, 2012

10084773 (P.T.A.B. Sep. 28, 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. 10/084,773 02/26/2002 Paul Gothard Knutson PU020045 1194 7590 09/28/2012 JOSEPH S. TRIPOLI THOMSON MULTIMEDIA LICENSING INC. 2 INDEPENDENCE WAY P.O. BOX 5312 PRINCETON, NJ 08543-5312 EXAMINER SHEPARD, JUSTIN E ART UNIT PAPER NUMBER 2424 MAIL DATE DELIVERY MODE 09/28/2012 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 PAUL G. KNUTSON, KUMAR RAMASWAMY, and MAX W. MUTERSPAUGH ________________ Appeal 2010-000949 Application 10/084,773 Technology Center 2400 ________________ Before JOSEPH F. RUGGIERO, BRADLEY W. BAUMEISTER, and ANDREW CALDWELL, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-000949 Application 10/084,773 2 SUMMARY Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-11 and 13-15: 1 Claims 1-4, 6-9, 11, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as obvious over Saunders (US 6,091,703; issued July 18, 2000) in view of Ortega (US 2002/0087991 A1; published July 4, 2002) and Tanabe (US 5,918,156; issued June 29, 1999); and Claims 5, 10, and 15 stands rejected under 35 U.S.C. § 103(a) as obvious over Saunders in view of Ortega, Tanabe, and Kwentus (US 2002/0122511 A1; published Sep. 5, 2002). We have jurisdiction under 35 U.S.C. § 6(b). We review the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (citing In re Oetiker, 977 F.2d 1443, 1445) (Fed. Cir. 1992). We reverse. STATEMENT OF CASE Appellants describe the present invention as follows: A satellite television ground system, particularly for a make or break satellite television signal system, includes an outdoor unit and an indoor unit that are in communication with each other via a single coaxial cable and an optional separate single conductor for power. The satellite television ground system is operative to measure and reverse frequency conversion errors utilizing [digital signal processor] DSP techniques, allowing for more precise generation and transmission of uplink signals from the satellite television ground 1 Claims 12, 16, and 17 have been canceled (Ans. 2). Appeal 2010-000949 Application 10/084,773 3 system. Control data for the system is sent via a low data rate connection on a power cable thereof, or by a narrowband signaling channel via a coax cable. The system also utilizes a single reference oscillator to drive the various frequency synthesizers and the like. The satellite television ground system utilizes related oscillators for the uplink and downlink sections. Carrier frequency offset in the downlink is measured in a carrier tracking loop part of a television signal demodulator. The carrier frequency offset of the downlink is utilized to synthesize various frequency signals for the uplink and downlink sections to correct frequency errors. For the uplink section, the carrier frequency offset of the downlink is reversed in the uplink. If the uplink is on a different frequency, the measured offset of the system master oscillator can be scaled by different synthesizer ratios. (Abstract). Independent claim 1, which is illustrative of claims 6 and 11, is reproduced with key claim language emphasized: 1. An outdoor unit for a satellite television ground system comprising: downlink circuitry operative to receive a satellite television signal from a satellite, frequency lock to the satellite television signal, process the satellite television signal, and provide the processed satellite television signal to an indoor unit of the satellite television ground system; and uplink circuitry operative to receive an uplink signal from the indoor unit, process the received uplink signal, and transmit the processed uplink signal to the satellite[s] only when said downlink circuitry is simultaneously receiving said satellite television signal from said satellite and is frequency locked to said satellite television signal from said satellite. Appeal 2010-000949 Application 10/084,773 4 CONTENTIONS The Examiner finds that Saunders teaches uplink circuitry operative to transmit a processed uplink signal to a satellite only when said downlink circuitry is simultaneously receiving a satellite signal from said satellite and is frequency locked to the satellite signal from said satellite (Br. 7). The Examiner’s rejection is premised upon interpreting the claim term “simultaneous” broadly so as to be merely setting forth a conditional requirement, but not a temporal requirement (Ans. 7-8). That is, the Examiner interprets claim 1 as reading on transmission of an uplink signal at any time, merely so long as a downlink signal has been received prior to the uplink transmission. Appellants assert, inter alia, that Saunders fails to teach or suggest conditioning an uplink signal on the simultaneous reception of a downstream signal (Br. 6). More specifically, Appellants assert that claim 1 requires the transmission of the uplink signal overlap with the reception of a downlink signal (Br. 5-6). PRINCIPLES OF LAW “[I]nterpreting what is meant by a word in a claim is not to be confused with adding an extraneous limitation appearing in the specification, which is improper.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1348 (Fed. Cir. 2002) (internal quotation marks and citations omitted; emphasis in original). It is well settled that “[d]uring patent examination the pending claims must be interpreted as broadly as their terms reasonably allow.” In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). The broadest reasonable interpretation of the claims must be consistent with the interpretation that those skilled in the art would reach. In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999). “‘[E]ach claim does not necessarily cover every feature disclosed in the specification. When the claim Appeal 2010-000949 Application 10/084,773 5 addresses only some of the features disclosed in the specification, it is improper to limit the claim to other, unclaimed features.’” Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683,689 (Fed. Cir. 2008) (quoting Ventana Med. Sys., Inc. v. Biogenex Labs., Inc., 473 F.3d 1173, 1181 (Fed. Cir. 2006)); see also Golight, Inc. v. Wal- Mart Stores, Inc., 355 F.3d 1327, 1331 (Fed. Cir. 2004) (“[P]atentees [are] not required to include within each of their claims all of [the] advantages or features described as significant or important in the written description.”). ANALYSIS Contrary to the Examiner’s interpretation (Ans. 7-8), we interpret claim 1 as requiring that transmission of the uplink signal occur concurrently with reception of satellite television signals. Accordingly, we find Appellants’ arguments to be persuasive. The Examiner’s interpretation is based upon an embodiment of the Specification wherein the downlink is received and uplink transmission occurs subsequently thereafter (Ans. 7 (citing Spec. 24, ll. 1-15)). However, the portion of the Specification cited by the Examiner only describes “[one] aspect of the subject invention” (Spec. 24), and this passage does not use the word simultaneous. The only portion of Appellants’ Specification that expressly sets forth the word “simultaneous” is the BACKGROUND INFORMATION section: In the context of satellite television systems, the use of multiple non-geosynchronous satellites (i.e. LEO and MEO satellite systems) requires that a subscriber’s television equipment be capable of tracking and receiving signals from multiple satellites. Accordingly, a subscriber's television equipment should include multiple receivers that operate in a simultaneous manner. Moreover, in order to accommodate interactive television services, it is also desirable for a subscriber's television equipment to include a means for transmitting signals to the satellites. In the case of the next generation television Appeal 2010-000949 Application 10/084,773 6 satellite system, the consumer's television equipment must therefore have a ground station that is capable of receiving two satellite signals and provide an uplink signal to a satellite. The ground station typically consists of an indoor unit and an outdoor unit. (Spec. 2:11-22). This usage does not indicate that Appellants are using the term “simultaneous” in an unconventional, broad manner that would encompass those disclosed embodiments wherein the uplink transmission occurs after the downlink is received. Further, the Examiner has not provided any other support for a broad construction of the term “simultaneous.” Therefore, the Examiner has not established a factual basis for the broad interpretation of claim 1 relied upon in the Examiner’s Answer, which effectively reads out of claim 1 the limitation “only when said downlink circuitry is simultaneously receiving said satellite television signal from said satellite.” Saunders teaches a code division multiple access communication system comprising user terminals, which transmit user signals to a satellite (Saunders, col. 1, ll. 5-10). Prior to the transmission of a user signal to the satellite, a user terminal must monitor a downlink signal broadcast from the satellite for the purpose of acquiring timing information (Saunders, col. 2, ll. 52-57). Next, the user terminal uses the timing information to establish time synchronization with the satellite (Saunders, col. 3, ll. 5-10). Once in synchronization with the satellite, the user terminal transmits the user signals to the satellite in an uplink channel (id.). Restated, Saunders discloses that a downlink transmission must occur prior to uplink transmission (e.g., col. 4, ll. 25-31). Saunders, however, does not teach or suggest that the uplink transmission must only occur only when said downlink circuitry is simultaneously receiving said satellite television signal from said satellite,” or more specifically, simultaneously with a downlink transmission as Appeal 2010-000949 Application 10/084,773 7 recited in claim 1 (see, e.g., id.). As such, Saunders fails to teach or suggest conditioning an uplink signal on the simultaneous reception of a downstream signal. We therefore do not sustain the Examiner’s obviousness rejection of independent claim 1; of independent claim 11, which also requires conditioning an uplink signal on the simultaneous reception of a downstream signal. Independent claim 6 is a means-plus-function claim, which recites similar language to claim 1: “means for providing the processed uplink signal to said satellite only when said means for receiving is receiving the satellite television signal from said satellite and is frequency locked to said satellite television signal from said satellite” (emphasis added). Claim 6 initially appears to be broader than claim 1 in that claim 6 omits the word “simultaneously” from the italicized passage. Furthermore, it is a well-established canon of claim interpretation that every term in a claim is presumed to have some meaning. In the present case, though, we can find no substantive difference resulting from the inclusion, or alternative omission, of the word “simultaneous.” That is, the entire language “only when said means for receiving is receiving the satellite television signal from said satellite” narrows the claimed occurrence from being merely when the recited means “is frequency locked to said satellite television signal from said satellite” to being specifically occurring simultaneously. Adding the word “simultaneously,” as in claim 1, would merely seem to be redundant. We therefore do not sustain the Examiner’s obviousness rejection of independent claim 6 for the reasons set forth in relation to claim 1. For the stated reasons, we likewise do not sustain the obviousness rejection of claims 2-4, 7-9, and 13-14, which depend from independent claims 1, 6, and 11. Appeal 2010-000949 Application 10/084,773 8 With respect to the remaining rejection of dependent claims 5, 10, and 15, the Examiner does not rely on Kwentus to cure the deficiency of the rejection explained above. Accordingly, we do not sustain the obviousness rejection of claims 5, 10, and 15 for the reasons noted in relation to independent claims 1, 6, and 11. DECISION The Examiner’s decision rejecting claims 1-11 and 13-15 is reversed. REVERSED kis