Ex Parte Link et al

Patent Trial and Appeal BoardDec 6, 2012

11541916 (P.T.A.B. Dec. 6, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/541,916 10/02/2006 Hermann Link 2000-5509CON 9737 7590 12/06/2012 Patrick J. O'Shea O'Shea, Getz & Kosakowski, P.C. Suite 912 1500 Main Street Springfield, MA 01115 EXAMINER MILLER, BRANDON J ART UNIT PAPER NUMBER 2645 MAIL DATE DELIVERY MODE 12/06/2012 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 HERMANN LINK and STEFAN SCHRADI ____________ Appeal 2010-007888 Application 11/541,916 Technology Center 2600 ____________ Before DENISE M. POTHIER, JEREMY J. CURCURI, and DAVID C. McKONE, Administrative Patent Judges. McKONE, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-3, 6, 7, 9, 11, 14, and 15, which constitute all the claims pending in this application. See Am. App. Br. 2.1 Claim 7 also stands objected to for informalities. See id. Claims 4, 5, 8, 10, 12, and 13 are cancelled. See id. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Throughout this opinion, we refer to the Appeal Brief filed November 16, 2009, the Amended Appeal Brief filed December 4, 2009, the Examiner’s Answer mailed March 4, 2010, and the Reply Brief filed May 4, 2010. Appeal 2010-007888 Application 11/541,916 2 STATEMENT OF THE CASE Appellants’ invention relates to selecting a television receiver from a plurality of receivers in a diversity receiver system based on automatic gain control (“AGC”). See Spec. 2. Claim 1, which is illustrative of the invention, reads as follows: 1. A method for selecting one of several television receivers of a television diversity receiving system, comprising comparing levels of control signals of automatic gain control of the television receivers, and selecting the television receiver whose control signal has the lowest level, where switchover is performed between receiving blocks of data. THE REJECTION Claims 1-3, 6, 7, 9, 11, 14, and 15 stand rejected under 35 U.S.C. § 103(a) as being unpatenable over Higuchi (U.S. 5,161,252, issued Nov. 3, 1992) and Kaewell (U.S. 4,953,197, issued Aug. 28, 1990). See Ans. 4-11. ISSUES Appellants present several arguments for the patentability of claim 1, see App. Br. 9-16, and only nominally argue the remaining claims, see App. Br. 16-18. Regarding claim 1, the Examiner finds that Higuchi teaches a method for selecting one of several receivers of a diversity receiving system, including comparing levels of control signals of a plurality of receivers, selecting the receiver that has a maximum reception level, and performing a switchover between receiving blocks of data. See Ans. 4. The Examiner further finds that Higuchi’s receivers could include television receivers Appeal 2010-007888 Application 11/541,916 3 because it was well-known that such a modification would not have materially affected how the receivers function. See Ans. 4-5. However, the Examiner concedes that Higuchi does not disclose comparing levels of control signals of automatic gain control of the receivers. See Ans. 5. For that limitation of claim 1, the Examiner finds that Kaewell teaches selecting a receiver whose control signal has the lowest automatic gain control level, and that modifying Higuchi to incorporate this feature would have improved Higuchi’s method by providing more accurate means for selecting a receiver that has a maximum reception level. See id. Appellants argue that Higuchi and Kaewell are not properly combinable, see App. Br. 10-12, and that even if they were combined, the combination would not teach or suggest “comparing levels of control signals of automatic gain control of the television receivers, and selecting the television receiver whose control signal has the lowest level . . . ,” App. Br. 12-16 (emphasis in original). Thus, the issues are whether the Examiner erred in finding that (1) Higuchi and Kaewell are properly combinable; and (2) Higuchi and Kaewell teach or suggest “comparing levels of control signals of automatic gain control of the television receivers, and selecting the television receiver whose control signal has the lowest level.” See id. In their Reply Brief, Appellants raise an additional issue: whether the Examiner erred in finding that Higuchi and Kaewell teach or suggest “a diversity receiver output signal indicative of the television receiver output signal associated with the receiver that has the smallest gain correction,” as recited in claim 11. Reply Br. 6 (emphasis in original). Appeal 2010-007888 Application 11/541,916 4 ANALYSIS REJECTION OF CLAIMS 1-3, 6, 7, 9, 11, 14, AND 15 UNDER 35 U.S.C. § 103(a) Claims 1-3, 6, 7, and 9 Appellants argue that Higuchi and Kaewell are not properly combinable because modifying Higuchi with Kaewell’s technology would introduce the disadvantages Higuchi intended to avoid. See App. Br. 10-12. Specifically, the prior art described in Higuchi has the disadvantage that, when switching from one receiving system to another, data could be lost due to phase differences introduced by differences in the propagation paths of the receiving systems. See App. Br. 10-11 (citing Higuchi, col. 2, ll. 17-68). According to Appellants, Kaewell is not combinable with Higuchi because it is similar to the prior art described in Higuchi. See App. Br. 11. Appellants argue that modifying Higuchi’s system to compare AGC levels from two parallel paths, per Kaewell, instead of merely switching between reception signals, would increase the likelihood of data loss. See id. In response, the Examiner argues that Appellants improperly contend that obviousness requires a showing that the features of Kaewell can be bodily incorporated into the structures of Higuchi. See Ans. 11-12. We agree with the Examiner that Appellants are reading the combination of Higuchi and Kaewell too restrictively. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted)); accord KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique has been used to improve one device, and a person Appeal 2010-007888 Application 11/541,916 5 of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). The Examiner finds that Higuchi selects a receiver based on reception level, see Ans. 4, and that Kaewell’s AGC signal is an improved measure of reception level that would similarly improve Higuchi, see Ans. 5. Moreover, the relative advantages and disadvantages in selecting AGC as a basis for comparing signal levels in lieu of maximum reception level amounts to an engineering tradeoff well within the level of skill of ordinarily skilled artisans. Thus, we are not persuaded by Appellants’ argument that the Examiner improperly combined Higuchi and Kaewell. Appellants also contend that even if Higuchi and Kaewell were combined, the combination would not teach or suggest “comparing levels of control signals of automatic gain control of the television receivers, and selecting the television receiver whose control signal has the lowest level . . . ,” App. Br. 12-16 (emphasis in original). Appellants argue that Higuchi teaches two parallel paths: (1) a “processing side” that compares the “reception signals” (using CPU 85) to determine which of the receiving systems has the signal with the highest reception level; and (2) a “reception side” that actually selects, in accordance with the determination made by the processing side, the reception signal to send to the “signal receiver 6.” App. Br. 13-14. According to Appellants, the signal with maximum strength is selected before the signal is provided to the receiver 6. See App. Br. 14. This gives rise to three arguments by Appellants. First, if Higuchi’s receiver 6 is modified to generate an AGC signal, that signal will not be compared to signals from other receivers because Appeal 2010-007888 Application 11/541,916 6 Higuchi’s comparison takes place before the selected reception signal reaches the receiver 6. See App. Br. 14, 16. Thus, “gain control would occur within the receiver 6 and thus would not be used for receiver selection since receiver selection is performed upstream of the receiver 6 and as a function of the demodulator 83 output . . . .” Reply Br. 4-5. Second, in order to compare different signals from the same receiver 6, it would be necessary to cycle the various reception signals through the receiver 6, which could result in weak signals or data loss. See App. Br. 14-15. Third, if the CPU 85 of Higuchi compared reception signals based on AGC, those reception signals would not be “signals . . . of the television receivers” because the CPU 85 receives those signals from distributors 4a, 4b, 4c, and 4d rather than from receiver 6. See App. Br. 15-16. The Examiner again faults Appellants for arguing against bodily incorporating Kaewell into Higuchi rather than focusing on the teachings of those references. See Ans. 12-14. Each of Appellants’ arguments incorrectly assumes that Higuchi’s “receiver 6” is the “receiver” recited in claim 1. Rather, the Examiner finds that antennas 3a, 3b, 3c, and 3d and distributors 4a, 4b, 4c, and 4d are “receivers,” see Ans. 4 (citing Higuchi, col. 6, ll. 35-45 (“At the mobile station side, directive antennas 3a, 3b, 3c and 3d are disposed in two directions to receive the radio waves. The distributors 4a, 4b, 4c and 4d distribute each reception signal to the receiving system change-over means 5 and the level comparator 8. . . .”); col. 6, ll. 62-68), and that it would have been obvious to modify Higuchi’s device, per the teachings of Kaewell, to include automatic gain control of the receivers, see Ans. 5. Appellants present no persuasive arguments that the Examiner erred in these findings. Appeal 2010-007888 Application 11/541,916 7 Finally, in reply, Appellants contend that Higuchi’s device makes its comparison based on sampling of the reception signals received by the distributors, rather than from control signals. See Reply Br. 3. According to Appellants, Higuchi’s system extracts certain timing information from the reception signals. See Reply Br. 4. If Higuchi’s device were modified in view of Kaewell to make determinations based on control signals, it would in Appellants’ view “prevent the resultant system from properly extracting the change-over timing signals required for the proper operation of the system disclosed in Higuchi.” Id. Appellants could have made this argument in their Appeal Brief, but did not. Instead, the argument was first presented in the Reply Brief. Accordingly, the argument is waived. See, e.g., Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not.”). Moreover, Appellants have cited inadequate evidence to support this argument. Thus, it is not persuasive. Accordingly, we sustain the rejection of (1) claim 1; (2) claim 7, which includes recitations substantially the same as those of claim 1; (3) claims 2, 3, and 6, which depend on claim 1; and (4) claim 9, which depends on claim 7. Claims 11, 14, and 15 Appellants do not separately argue claims 11, 14, and 15 in their Appeal Brief. See App. Br. 17-18. In their Reply Brief, however, Appellants contend that Higuchi and Kaewell do not teach or suggest “a diversity receiver output signal indicative of the television receiver output Appeal 2010-007888 Application 11/541,916 8 signal associated with the receiver that has the smallest gain correction.” Reply Br. 6 (emphasis in original). Specifically, Appellants argue that Higuchi’s switchover control (changeover means 5) is not based on AGC, but instead is based upon the output of demodulator 83. See id. Appellants could have, but did not raise this argument in their Appeal Brief. Thus, it is waived. See Borden, 93 USPQ2d at 1474. Moreover, the Examiner does not find that Higuchi’s changeover means 5 switches based on AGC. See Ans. 9. Rather, the Examiner finds that it would have been obvious in light of Kaewell to modify Higuchi’s device to switch based on AGC. See id. Appellants’ argument does not address this finding, see Reply Br. 6, and thus it is not persuasive. Accordingly, we sustain the rejection of (1) claim 11; and (2) claims 14 and 15, which depend on claim 11. ORDER The decision of the Examiner to reject claims 1-3, 6, 7, 9, 11, 14, and 15 is affirmed. 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). See 37 C.F.R. § 1.136(a)(1)(iv) (2010). AFFIRMED rwk