Ex Parte Marchok et al

Patent Trial and Appeal Board

Mar 6, 2017

13945847 (P.T.A.B. Mar. 6, 2017)

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.
13/945,847 07/18/2013 DANIEL J. MARCHOK 2376.2170-023 (PA070005) 7530
57690 7590 03/08/2017
HAMILTON, BROOK, SMITH & REYNOLDS, P.C.
530 VIRGINIA ROAD
P.O. BOX 9133
CONCORD, MA 01742-9133
EXAMINER
EBRAHIM, ANEZ C
ART UNIT PAPER NUMBER
2467
NOTIFICATION DATE DELIVERY MODE
03/08/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL J. MARCHOK, RICHARD C. YOUNCE,
SAMIR KAPOOR, and PETER J. W. MELSA
Appeal 2016-007221
Application 13/945,847
Technology Center 2400
Before MICHAEL J. STRAUSS, JOSEPH P. LENTIVECH, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1—14, the only claims pending in the
application on appeal. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Tellabs Operations,
Inc. App. Br. 2.
Appeal 2016-007221
Application 13/945,847
STATEMENT OF THE CASE
Appellants ’ Invention
Appellants’ invention generally relates to attaining symbol alignment
in a multi-point, OFDM/DMT (Orthogonal Frequency Division
Multiplexing/Discrete Multi-Tone) digital communications system.
Spec. 1:14—17. Claim 1, which is representative, reads as follows:
1. An apparatus for processing OFDM/DMT data, the
apparatus comprising:
an intermediate frequency (IF) mixer configured to
transpose an OFDM/DMT analog signal, output by a head-end
unit to a communication path in a first number of data bins, to an
IF signal;
a converter configured to band pass filter the IF signal and
under-sample the IF signal filtered resulting in OFDM/DMT
digital data over a second number of bins, the second number of
bins being smaller than the first number of bins;
a processor to process the OFDM/DMT digital data in the
second number of bins to extract features including frequency,
amplitude, or phase information from the OFDM/DMT digital
data; and
a reporter to report the features to a module configured to
reconstruct the OFDM/DMT analog data as a function of the
features.
Rejections
Claims 1—3, 7—9, 13, and 14 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Brede et al. (US
2002/0098795 Al; published July 25, 2002) (“Brede”) and Harada et al. (US
5,774,450; issued June 30, 1998) (“Harada”). Final Act. 4—9.
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Application 13/945,847
Claims 4 and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Brede, Harada, and Asghar (US
5,890,187; issued Mar. 30, 1999). Final Act. 9—10.
Claims 5, 6, 11, and 12 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Brede, Harada, and Williams
(US 5,867,764; issued Feb. 2, 1999). Final Act. 10-11.
Issue on Appeal
Did the Examiner err in finding Brede qualifies as prior art under 35
U.S.C. § 103(a)?
ANALYSIS
Independent claim 1 recites, inter alia, “a converter configured to
band pass filter the IF signal and under-sample the IF signal filtered
resulting in OFDM/DMT digital data over a second number of bins, the
second number of bins being smaller than the first number of bins”
(“disputed limitation”). Corresponding limitations are recited in the
remaining independent claims, claims 7 and 13. The Examiner finds Brede
teaches or suggests this limitation. Final Act. 4 (citing Brede, Fig. 13;
11337-338).
To overcome the rejection, Appellants filed a Declaration of one of
the four named inventors (filed November 18, 2014) and Exhibits A—F under
37 C.F.R. § 1.131. Appellants contend the Declaration establishes a date of
conception of the invention as of at least September 21, 1995, as well as a
diligent reduction to practice between September 21, 1995, and the filing
date of August 26, 1996 of application No. 08/700,779, of which the present
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Application 13/945,847
application is a continuation application. App. Br. 5—7. Appellants contend
the Declaration and Exhibits provide the required support. App. Br. 5—7;
Reply Br. 2—3. Appellants acknowledge the term “OFDM” does not appear
in Exhibits A—F (App. Br. 5), but contend “Exhibits A—F, which are
documents produced by the inventors during reduction to practice, employ
the term ‘DMT’ as a shorthand for ‘OFDM/DMT’” (Reply Br. 3).
Appellants further contend:
The Declaration and cited Exhibits A-F describe
embodiments of the invention that employ OFDM/DMT. In
particular, Exhibit B describes a remote service unit (RSU) that
provides processing of “DMT” signals and producing “DMT”
data. DMT is a shorthand term referring to OFDM/DMT signals
and modulation. Specifically, DMT refers to a type of OFDM-
based communications in which the transmission is adapted to
the channel conditions individually for each sub-carrier. Such
DMT-based systems are understood in the art by the term
OFDM/DMT. Thus, the term DMT, as it appears in the Exhibits,
refers to OFDM/DMT signals and modulation.
App. Br. 5. Appellants contend, therefore, the present application antedates
the Brede reference, which has an earliest effective filing date of May 20,
1996. App. Br. 5.
The Examiner finds the Declaration is insufficient for antedating the
Brede. Ans. 4—5. In particular, the Examiner finds Exhibits A—F describe
only DMT modulation techniques and, therefore, fail to provide support for
“OFDM/DMT digital data,” as recited in the independent claims. Id.
37 C.F.R. § 1.131 provides in pertinent part:
(a) When any claim of an application or a patent under
reexamination is rejected, the inventor of the subject matter of
the rejected claim, the owner of the patent under reexamination,
or the party qualified under §§ 1.42, 1.43, or 1.47, may submit
an appropriate oath or declaration to establish invention of the
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subject matter of the rejected claim prior to the effective date of
the reference or activity on which the rejection is based ....
(b) The showing of facts shall be such, in character and weight,
as to establish reduction to practice prior to the effective date of
the reference, or conception of the invention prior to the effective
date of the reference coupled with due diligence from prior to
said date to a subsequent reduction to practice or to the filing of
the application. Original exhibits of drawings or records, or
photocopies thereof, must accompany and form part of the
affidavit or declaration or their absence must be satisfactorily
explained.
37 C.F.R. § 1.131. Accordingly, we decide the question of whether
Appellants’ Declaration and supporting exhibits under 37 C.F.R. § 1.131
include evidence of sufficient character and weight to establish conception
of the present invention (as the first requisite element under § 1.131) for the
purpose of antedating the Brede reference. The Board evaluates a
declaration submitted pursuant to 37 C.F.R. § 1.131 on its merits,
considering the evidence relied upon in light of the arguments explaining
why the evidence is sufficient. In re Am. Acad. ofSci. Tech Ctr., 367 F.3d
1359, 1368 (Fed. Cir. 2004); In re Inland Steel, Co., 265 F.3d 1354, 1366
(Fed. Cir. 2001).
The Declaration does not present a showing of facts sufficient to
establish conception of the subject matter of the claimed invention
(OFDM/DMT) prior to the effective date of Brede. Specifically, the
Declaration does not mention “OFDM” or “OFDM/DMT” in the relevant
paragraphs discussing the work performed in the 1995—1996 timeframe.
Rather, as observed by the Examiner, only “DMT” is described in those
paragraphs, as well as in the supporting Exhibits A—F. Nor does the
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Declaration sufficiently establish that the use of “DMT” was intended as a
shorthand form of “OFDM/DMT” as used in Exhibits A—F.
In addition, Appellants have not cited to a single authority showing
any use of the term “OFDM/DMT” or otherwise indicating that “DMT” is
the shorthand form of “OFDM/DMT.” See App. Br. 5; Reply Br. 3.
Appellant cites to three unauthenticated sources2 in support of the argument
that the term “OFDM/DMT” is well understood in the art: (1) Wikipedia,
“Orthogonal frequency-division multiplexing,”
https://en.wikipedia.org/wiki/Orthogonal_frequency-division_multiplexing
(last accessed March 1, 2017) (hereafter “Wikipedia”); (2) Lou Frenzel,
What’s the Difference Between Cable And Broadband Access?, Electronic
Design (Feb. 19, 2013), http://electronicdesign.com/communications/what-s-
difference-between-cable-and-dsl-broadband-access (last accessed March 1,
2017) (hereafter “Frenzel”); and (3) Chran Langton, OFDM Tutorial (2004),
http://home.iitj.ac.in/~ramana/ofdm-tutorial.pdf (last accessed March 1,
2017) (hereafter “Langton”). (App. Br. 6.) We observe the Wikipedia
article is undated, and both the Frenzel and Langton articles are dated well
after the alleged 1995 date of conception of the present invention, and thus,
cannot evidence the understanding of an ordinary skilled artisan at the time
of the invention. Even so, none of the citations to the three sources provided
by Appellants sufficiently establishes that “DMT” is a shorthand form of
“OFDM/DMT.”
2 None of the three sources are identified in the Evidence Appendix to the
Appeal Brief.
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Application 13/945,847
For the reasons discussed above, Appellants’ contention is not
supported by sufficient persuasive argument or evidence to persuade us that
the assertion is true. Arguments of counsel cannot take the place of factually
supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40
(Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). As
such, we are not persuaded one of ordinary skill in the art at the time of the
invention would have understood the term “DMT,” as used in Exhibits A—F
in support of the Declaration under 37 C.F.R. § 1.131, as being a shorthand
for, or otherwise equivalent to or meaning “OFDM/DMT.” Accordingly,
based on an insufficiency of the evidence, we are not persuaded the
Examiner erred.
Appellants do not present any arguments regarding the Examiner’s
findings with respect to the teachings of the applied references. See App.
Br. 4—7; Reply Br. 2—3.
For the foregoing reasons, we are not persuaded the Examiner erred in
rejecting independent claims 1, 7, and 13; and claims 2—6, 8—12, and 14,
which depend from claims 1 and 7 and are not separately argued with
particularity.
DECISION
We affirm the Examiner’s rejections of claims 1—14 under 35 U.S.C.
§ 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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