Ex Parte Phillips et al

Patent Trial and Appeal BoardNov 26, 2018

12873742 (P.T.A.B. Nov. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/873,742 09/01/2010 135878 7590 11/28/2018 Fogg & Powers LLC/Commscope 4600 W 77th St Suite 305 Minneapolis, MN 55435 FIRST NAMED INVENTOR Fred William Phillips 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 100.1416US01 5900 EXAMINER LU,ZHIYU ART UNIT PAPER NUMBER 2649 NOTIFICATION DATE DELIVERY MODE 11/28/2018 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): docketing@fogglaw.com eofficeaction@appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRED WILLIAM PHILLIPS, THOMAS KUMMETZ, and NARIAN IZZAT Appeal2018-005529 Application 12/873,742 1 Technology Center 2600 Before ERIC S. FRAHM, JOHNNY A. KUMAR, and CATHERINE SHIANG, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Introduction Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1, 3-11, 14--21, 23, 25-30, 32-36, and 38-55. Claims 2, 12, 13, 22, 24, 31 and 37 have been canceled. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. 1 According to Appellants, CommScope Technologies, LLC is the real party in interest (App. Br. 1 ). Appeal2018-005529 Application 12/873,742 Disclosed Invention and Exemplary Claim The disclosed invention is a broadband transceiver ( claim 1) having a distributed antenna system, a system ( claim 23), and a method of performing broadband communication ( claim 36) by simultaneously transmitting and receiving radio frequency (RF) signals without additional elements, such as duplexers, to provide isolation between the transmitting and receiving antennae (Title; Abs.; Spec. ,r,r 3-8, 48; claims 1, 23, 36). Independent claim 1 is exemplary of the disclosed invention, and read as follows (with the disputed portion of the claim emphasized and bracket lettering added): 1. A broadband transceiver, comprising: at least one layer structure that is substantially impermeable to RF radiation, the at least one layer structure including a first face surface substantially opposite a second face surface; at least one dedicated receive antenna located proximate the first face surface and configured to receive RF transmissions; and at least one dedicated transmit antenna located proximate the second face surface and configured to transmit RF transmissions by generating a generally toroidal radiation pattern that is stronger in a first direction that is substantially parallel to the second face surface compared to a second direction that is substantially perpendicular to the second face surface; wherein the at least one layer structure provides isolation between the at least one dedicated receive antenna and the at least one dedicated transmit antenna that is necessary for simultaneous transmission and reception of the RF transmissions with a user device; wherein the broadband transceiver is configured to simultaneously transmit and receive RF transmissions with the user device [A] without needing additional elements other than the at least one layer structure to provide the isolation between the at least one dedicated receive antenna and the at least one dedicated transmit antenna; and 2 Appeal2018-005529 Application 12/873,742 wherein the broadband transceiver is configured to transmit RF transmissions using the at least one dedicated transmit antenna, wherein the broadband transceiver is configured to receive RF transmissions using the at least one dedicated receive antenna. Remaining independent claims 23 and 3 6 recite limitations commensurate with limitation [A] recited in claim 1. Examiner's Rejections (1) The Examiner rejected claims 1, 3-11, 14--17, 23, 25-30, 36, 42--44, and 47-55 under 35 U.S.C. Â§ I03(a) as being obvious over the combination of Proctor (US 2008/0225775 Al; published Sept. 18, 2008), Caimi (US 2007 /0222697 A 1; published Sept. 2 7, 2007), and Vitek (US 2010/0150060 Al; published June 17, 2010). 2 Final Act. 3-12; Ans. 2-11. (2) The Examiner rejected claims 18-20, 32-34, and 38 under 35 U.S.C. Â§ I03(a) as being obvious over the combination of Proctor, Caimi, Vitek, and Judd (US 2004/0110469 Al; published June 10, 2004). Final Act. 13-14; Ans. 12-13. (3) The Examiner rejected claims 21 and 35 under 35 U.S.C. Â§ I03(a) as being obvious over the combination of Proctor, Caimi, Vitek, Judd, and Hayes (US 2006/0035607 Al; published Feb. 16, 2006). Final Act. 15; Ans. 14. 2 Although claim 36 is not listed in the statement of the rejection heading (see Final Act. 3), we consider this to be harmless error, because (i) the rejection of claim 36 is addressed on the merits (see Final Act. 6); and (ii) Appellants argue, and therefore consider, claim 36 to be rejected (see App. Br. 16-20; Reply Br. 5). 3 Appeal2018-005529 Application 12/873,742 Appellants' Arguments As to independent claims 1, 23, and 36, Appellants argue, inter alia (see generally App. Br. 9-20; Reply Br. 1---6) the following: (1) negative limitation [A] recited in claim 1 ( e.g., "without needing additional elements"), and commensurately recited in claims 23 and 36, is supported by paragraph 48 of the Specification, and therefore the Examiner erred by not giving patentable weight to limitation [A] (App. Br. 9-11; Reply Br. 1-2); (2) the Examiner erred in determining that the term "to provide the isolation" in limitation [A] of claim 1, and as commensurately recited in claims 23 and 36, is intended use not to be given patentable weight (Reply Br. 4); and (3) because Proctor's paragraph 75 only teaches eliminating some (and not all) duplexers, Proctor, and thus, the combination of Proctor, Caimi, and Vitek fails to disclose, teach, or suggest limitation [A] of claim 1, and the commensurate limitations of claims 23 and 36 (App. Br. 11-13; Reply Br. 5-7). Issue on Appeal We have reviewed Appellants' arguments in the Briefs (App. Br. 5- 25; Reply Br. 1-7), the Examiner's rejection (Final Act. 3-15; Ans. 2-14), and the Examiner's response (Ans. 15-18) to Appellants' arguments. The dispositive issue on appeal is whether or not Proctor, and thus the combination of Proctor, Caimi, and Vitek, teaches or suggests the negative limitation (italicized below as limitation [A]) recited in independent claim 1 (and as commensurately recited in remaining independent claims 23 and 36): 4 Appeal2018-005529 Application 12/873,742 ... without needing additional elements other than the at least one layer structure to provide the isolation between the at least one dedicated receive antenna and the at least one dedicated transmit antenna ... Claim 1 ( emphasis added). This issue is, in tum, premised on whether the Examiner erred in rejecting representative claim 1 as being obvious because the Examiner improperly interpreted representative claim 1 as not actually requiring (i) negative limitation [A]; and (ii) that the "at least one layer structure" in limitation [A] provide isolation between the transmit and receive antennae as recited in independent claims 1 and 23, and as commensurately recited in remaining independent claim 3 6. ANALYSIS We have reviewed the Examiner's rejections (Final Act. 3-12; Ans. 2-14) in light of Appellants' arguments in the Appeal Brief and Reply Brief that the Examiner has erred (App. Br. 8-25; Reply Br. 1-71), as well as the Examiner's response to Appellants' arguments in the Appeal Brief (Ans. 15- 18). We agree with Appellants' contentions enumerated above (see App. Br. 9-20; Reply Br. 1---6) that the Examiner erred in rejecting claims 1, 23, and 36 under 35 U.S.C. Â§ 103(a), as obvious over the base combination of Proctor, Caimi, and Vitek. We provide the following explanation for emphasis. "During examination, 'claims ... are to be given their broadest reasonable interpretation consistent with the specification, and ... claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art."' In re Am. Acad. of Sci. Tech. 5 Appeal2018-005529 Application 12/873,742 Cir., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Morris, 127 F.3d 1048, 1053-54 (Fed. Cir. 1997) (citation omitted). The relevant limitation at issue in claim 1, namely that "the broadband transceiver is configured to simultaneously transmit and receive RF transmissions with the user device without needing additional elements other than the at least one layer structure to provide the isolation between the at least one dedicated receive antenna and the at least one dedicated transmit antenna," is a negative limitation. Negative limitations may be claimed so long as the limitation is clear and supported by the original disclosure, and the mere absence of a positive recitation of an element is not a basis for a negative limitation. See MPEP Â§ 2173.05(i). Regarding the patentable weight to be given to the negative limitation at issue, Appellants' Specification at paragraph 48 provides explicit written description support for the negative limitation recited in claims 1, 23, and 36, stating that the disclosed broadband receiver receives and transmits "signals anywhere in a range of approximately 400 MHz to approximately 2.7GHz. This broad response range is facilitated by eliminating the duplexer found in traditional transceiver designs. Instead of relying on a duplexer to achieve high isolation between the transmit antenna 54 and the receive antenna 56 .... " (Spec. ,r 48)(emphasis added). Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1355 (Fed. Cir. 2015) (holding that advantages or disadvantages of each feature can constitute a "reason to exclude" under the standard articulated in Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012) ("Negative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation. Such written description support need not rise to the level of 6 Appeal2018-005529 Application 12/873,742 disclaimer. In fact, it is possible for the patentee to support both the inclusion and exclusion of the same material.")); In re Johnson, 558 F.2d 1018 (CCP A 1977) ("It is for the inventor to decide what bounds of protection he will seek."). A negative limitation is accorded the broadest reasonable construction in light of the Specification and the "evidence before the Board" (In re Morris, 127 F.3d at 1055). Therefore, we consider the extent that Appellants have provided support in the Specification for the negative limitation of claims 1, 23, and 36 in concluding that the combination of Proctor and Caimi fails to meet this negative limitation. Appellants' Specification at paragraph 48 provides adequate support for the negative limitation in claim 1 at issue before us, and it is incumbent upon the Examiner to articulate sufficient findings and reasoning in this regard in making a conclusion of obviousness. The Examiner finds that paragraph 48 of the Specification allows for a duplexer to "still be partially responsible for isolation" (Ans. 16), and thus negative limitation [A] is not supported. We agree with Appellants' contentions that the Examiner erred by not giving patentable weight to limitation [A] (App. Br. 9-11; Reply Br. 1-2). Because we also agree with Appellants that paragraph 48 of the Specification, taken with the language of limitation [A] recited in claim 1, requires no additional elements (i.e., duplexers ), we also agree with Appellants' arguments that Proctor's paragraph 7 5 only teaches eliminating some ( and not all) duplexers, Proctor, and thus, the combination of Proctor, Caimi, and Vitek fails to disclose, teach, or suggest limitation [A] of claim 1 (App. Br. 11-13; Reply Br. 5-7). 7 Appeal2018-005529 Application 12/873,742 For the following reasons, we also agree with Appellants' contention that the Examiner erred in determining that the term "to provide the isolation" in limitation [A] of claim 1, and as commensurately recited in claims 23 and 36, is intended use not to be given patentable weight (Reply Br. 4). "An [] intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates." Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). The determination of whether preamble recitations are structural limitations or mere statements of purpose or use "can be resolved only on review of the entirety of the patent to gain an understanding of what the inventors actually invented and intended to encompass by the claim." Corning Glass Works, 868 F.2d [1251] at 1257 [(Fed. Cir. 1989)]. The inquiry involves examination of the entire patent record to determine what invention the patentee intended to define and protect. Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). Although "[s]uch statements often ... appear in the claim's preamble," In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a statement of intended use or purpose can appear elsewhere in a claim. 3 Id. In the instant case, the first wherein clause of claims 1 and 23 recites "wherein the at least one layer structure provides isolation between the at least one dedicated receive antenna and the at least one dedicated transmit antenna," and claim 36 recites "isolating the dedicated receive antenna from 3 In the instant case on appeal, the intended use language read out of the claim by the Examiner, "to provide the isolation" (limitation [A] of claim 1 ), occurs in the body of the claim and not in the preamble. 8 Appeal2018-005529 Application 12/873,742 the downlink RF signal transmitted from the dedicated transmit antenna with a layer structure." These limitations provide perspective to limitation [A] recited in claim 1 ( and as commensurately recited in claims 23 and 3 6), namely that the layer structure "provide the isolation" between the receive and transmit antennae. That is, under this interpretation, the term "to provide the isolation" is not merely a descriptive name or intended purpose of the invention: it is an essential functional and/or structural element of the invention. See Catalina Marketing Int'! Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (internal quotation and citation omitted); see also Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997) (noting that when the claim recites structural limitations of the claimed invention, the USPTO must give effect to that usage). In this light, the Examiner has not adequately shown how/why Proctor, and thus the combination of Proctor, Caimi, and Vitek meets the requirements of claims 1, 23, and 36 of transmitting/receiving RF signals "without needing additional elements other than the at least one layer structure to provide the isolation between the at least one dedicated receive antenna and the at least one dedicated transmit antenna."4 Claim 36. Based on the foregoing, the Examiner has not made a sufficient prima facie case of obviousness with respect to either the disputed negative limitation or the remainder of limitation [A] recited in independent claim 1, and similarly recited in claims 23 and 36. As such, based on the record before us, we find that the Examiner improperly relied upon Proctor to teach or suggest the 4 As described by Appellants' Specification at paragraph 48. 9 Appeal2018-005529 Application 12/873,742 disputed negative claim limitation. Therefore, we concur with Appellants' arguments (App. Br. 9-20; Reply Br. 1---6) that the Examiner erred in finding that the combination of Proctor, Caimi, and Vitek teaches or suggests limitation [A] recited in claim 1, and as commensurately recited in claims 23 and 36. 5 Accordingly, we do not sustain the Examiner's obviousness rejections of independent claims 1, 23, and 36, and claims 2, 4--7, 9, 12, 13, 15, 17, 19, and 21 which depend upon claims 1, 23, and 36. CONCLUSIONS ( 1) Appellants have persuaded us of the error in Examiner's decision to reject claims 1, 3-11, 14--21, 23, 25-30, 32-36, and 38-55 as being obvious over the base combination of Proctor, Caimi, and Vitek. (2) The Examiner erred in rejecting (1) claims 1, 3-11, 14--17, 23, 25- 30, 36, 42--44, and 47-55 over the base combination of Proctor, Caimi, and Vitek; (2) claims 18-20, 32-34, and 38 over the base combination taken with Judd; and (3) claim 21 and 35 over the base combination taken with Judd and Hayes. 5 We recognize that Appellants' arguments present additional issues. Because we were persuaded of error by this issue concerning limitation [A] (the negative limitation, "without needing additional elements" and the limitation, "to provide the isolation ... "), as set forth in claims 1, 23, and 3 6, we do not reach the additional issues. 10 Appeal2018-005529 Application 12/873,742 DECISION The Examiner's rejections of claims 1, 3-11, 14--21, 23, 25-30, 32- 36, and 38-55 under 35 U.S.C. Â§ 103(a) as being obvious over the base combination of Proctor, Caimi, and Vitek are reversed. REVERSED 11