Ex Parte Riggsby

Patent Trial and Appeal Board

Apr 21, 2016

13531613 (P.T.A.B. Apr. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/531,613 06/25/2012 Robert Ryan Riggsby
79207 7590 04/22/2016
MYERS BIGEL & SIBLEY, PA
P.O. BOX 37428
RALEIGH, NC 27627
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.
9457-339 2383
EXAMINER
OCAK,ADIL
ART UNIT PAPER NUMBER
2426
MAILDATE DELIVERY MODE
04/22/2016 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 ROBERT RYAN RIGGSBY
Appeal2014-006327
Application 13/531,613
Technology Center 2400
Before 1\1ICHAEL J. STF~AUSS, NABEEL U. KHAN, and
AARON W. MOORE, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-006327
Application 13/531,613
STATE~v1ENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
THE INVENTION
The claims are directed to low distortion signal amplifiers having
extended upstream bandwidths. Spec., Title. Claim 1, reproduced below, is
representative of the claimed subject matter:
1. A radio frequency ("RF") signal amplifier, comprising:
an RF input;
at least one RF output;
a downstream communications path that is coupled
between the RF input and the at least one RF output, the
downstream communications path being configured to pass
signals in a downstream frequency band;
a downstream power amplifier that is disposed along the
downstream communications path and configured to amplify
signals traversing the downstream communications path;
a first upstream communications path that is coupled
between the RF input and the at least one RF output, the first
upstream communications path being configured to pass signals
in a first upstream frequency band that encompasses frequencies
that are lower than the frequencies included within the
downstream frequency band;
a first upstream power amplifier that is disposed along the
first upstream communications path and configured to amplify
signals traversing the first upstream communications path;
a second upstream communications path that is coupled
between the RF input and the at least one RF output, the second
upstream communications path being configured to pass signals
in a second upstream frequency band that encompasses
frequencies that are between the frequencies included within the
downstream frequency band and the frequencies included within
the first upstream frequency band;
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Application 13/531,613
a second upstream power amplifier that is disposed along
the second upstream communications path and configured to-
amplify signals traversing the second upstream communications
path.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kim
Kolze
Weinstein
Dounaevski
Riggsby
Chapman
Brooks
Morgan
US 2007 /0022460 Al
US 7,359,332 B2
US 2008/0216144 Al
US 2009/0119735 Al
US 2010/0162340 Al
US 2011/0185263 Al
US 2011/0255452 Al
US 8,244,194 B2
REJECTIONS
The Examiner made the following rejections:
Jan.25,2007
Apr. 15, 2008
Sept. 4, 2008
May 7, 2009
June 24, 2010
July 28, 2011
Oct. 20, 2011
Aug. 14, 2012
Claims 5, 6, 15, and 16 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. Ans. 21.
Claims 1-3, 7, 8, 10-13, 17, and 18 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Riggsby and Weinstein. Ans. 2-13.
Claims 5, 6, 15, and 16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Riggsby, Weinstein, and Brooks. Ans. 13-16.
Claims 4 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Riggsby, Weinstein, and Chapman. Ans. 16-18.
Claims 9, 19, and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Riggsby, Weinstein, and Kolze. Ans. 18-21.
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Application 13/531,613
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments that the Examiner has erred. We disagree with Appellant's
conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken (Final Act. 2-27;
Ans. 2-21) and (2) the reasons set forth by the Examiner in the Examiner's
Answer in response to Appellant's Appeal Brief (Ans. 21-38) and concur
with the conclusions reached by the Examiner. We highlight the following
for emphasis.
Rejection under 35 USC§ 112, Second Paragraph
The Examiner rejects claims 5, 6, 15, and 16 under 35 U.S.C. § 112,
second paragraph, finding the claim limitation "about" indefinite because it
"is not defined by the claim, the specification does not provide a standard for
ascertaining the requisite degree, and one of ordinary skill in the art would
not be reasonably apprised of the scope of the invention." Ans. 21.
Appellant provides no arguments to suggest the claims are not indefinite.
App. Br. 25. Rather, Appellant argues the Examiner erred in not entering an
Amendment to claims 5, 6, 15, and 16 filed under 37 C.F.R. § 1.116 on
November 14, 2013 and requests entry of the Amendment by this Board. Id.
The Examiner responds "the Examiner chose not to enter the amendment at
the time of After Final since the amendments would have no change on the
outcome of the 103 rejections." Ans. 38.
Decisions within the Examiner's discretion, such as whether or not to
enter an amendment after final rejection, are reviewed only by way of
petition, not appeal. See In re Berger, 279 F.3d 975, 984--85 (Fed. Cir. 2002)
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(examiner's refi1sal to enter amendment after final may be the subject of a
petition, but may not be reviewed by the Board); 37 C.F.R. § 1.127 ("From
the refusal of the primary examiner to admit an amendment, in whole or in
part, a petition will lie to the Director under§ 1.181."). Therefore, because
Appellant did not contest the merits of the Examiner's rejection, we
summarily affirm the rejection of claims 5, 6, 15, and 16 under 35 U.S.C.
§ 112, second paragraph, for the reason cited by the Examiner in the
rejection. Final Act. 8-9; Ans. 21; see Berger, 279 F.3d at 984 (where
Appellant only argued the Examiner improperly refused to enter
amendments to obviate a§ 112, second paragraph rejection and did not
contest the merits of the rejection in the appeal brief, the issue is waived by
Appellant).
Rejections under 35 US.C. § 103(a)
Appellant's contentions of Examiner error in rejecting the
independent claims under 35 U.S.C. § 103(a) are based on argument that the
combination of Riggsby and Weinstein is improper because (i) "one of skill
in the art would not have looked to Weinstein to modify the RF signal
amplifier of Riggsby" (App. Br. 9); (ii) "the teachings of Weinstein could
not be applied to the RF signal amplifier of Riggsby" (id.); (iii) "The
Alleged Motivation for Modifying Riggsby Based on Weinstein Asserted in
the Final Action is Incorrect" (App. Br. 10); and (iv) "Modifying Riggsby
Based on Weinstein in the Manner Stated in the Final Action Would Render
the Signal Amplifier of Riggsby Inoperable for its Intended Purpose" (App.
Br. 11 ). As further discussed infra, such arguments are unpersuasive
because, other than attorney argument, Appellant provides insufficient
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evidence or technical explanation in rebuttal to the Examiner's articulated
reasoning with rational underpinning for combining the references, i.e., to
provide a second upstream band of frequencies in view of the limited
capacity available for upstream communications. Ans. 4; see KSR Int 'l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441F.3d977,
988 (Fed. Cir. 2006)). As explained by the Examiner, "[a] substantially
wider upstream bandwidth is required to carry the increasingly heavy
upstream traffic. Therefore, the motivation [for modifying Riggsby to
incorporate Weinstein's second upstream band of frequencies] is to increase
upstream bandwidth." Ans. 25. Appellant's argument that the teachings of
Riggsby and Weinstein could not be combined or would render Riggsby's
amplifier inoperative are likewise unpersuasive as improperly based on a
mechanical incorporation of structure disclosed by Weinstein into the
structure of Riggsby. Such argument fails to take into account the creativity
of the skilled artisan, 1 and lacks evidence that the asserted modification
would have been beyond the skill level of a person of ordinary skill in the art
or that the combination of elements as claimed yields more than predictable
results. See KSR, 550 U.S. at 417. Appellant's further arguments directed to
1 See KSR, 550 U.S. at 420-21 (The skilled artisan, "[a] person of ordinary
creativity, not an automaton," would "be able to fit the teachings of multiple
patents together like pieces of a puzzle."); In re Keller, 642 F.2d 413, 425
( CCP A 1981) ("The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference; nor is it that the claimed invention must be expressly
suggested in any one or all of the references. Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.").
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the dependent claims are unpersuasive as consisting of little more than naked
assertions the disputed claim elements are not found in the prior art. 2
Specifically, in connection with claim 1, Appellant contends the
references are directed to diverse applications, Riggsby to an RF amplifier
used at an individual subscriber premise, Weinstein to spectral node splitting
of available bandwidth in a hybrid fiber-coax network serving hundreds or
thousands of subscriber premises. Appellant concludes the combination is
improper because "Weinstein simply contains no teachings whatsoever
regarding how to improve the operation of an RF signal amplifier, nor would
one of skill in the art look to the design of an HFC distribution node (which
is an optical-to-electrical device) to modify an RF signal amplifier." App.
Br. 9. In response, the Examiner finds "the claims do not recite 'radio
frequency ('RF') signal amplifier is located in subscriber premise' (or
neither mentions location of the signal amplifier)." Ans. 22. The Examiner
finds Weinstein teaches a second upstream path such that:
[T]he Riggsby design could be changed to include a second
upstream communication path in the MOCA frequency band.
[A ]dding an op amp in the same manner as shown in Figure 1
of Riggsby for the upstream communication path, between the
MOCA filter of the two triplexers and changing the MOCA
filters to upstream filters, results in a second upstream
communication path [as claimed].
Ans. 24.
2 See 37 C.F .R. § 41.37 ( c )(1 )(iv) ("A statement which merely points out
what a claim recites will not be considered an argument for separate
patentability of the claim."); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011) ("[W]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art.").
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Appellant's argument is unpersuasive of Examiner error. Appellant
fails to provide sufficient evidence or reasoning explaining why Riggsby' s
and Weinstein's respective fields of endeavor are so different that a person
of skill in the art would not have looked to the multiple upstream paths
taught by Weinstein to provide enhanced upstream data transmission
capabilities to the bi-directional CATV RF amplifier of Riggsby. Instead,
we agree with the Examiner in finding one skilled in the art would have been
motivated to use two upstream paths as taught by Weinstein in the RF
amplifier of Riggsby "[b ]y adding an op amp in the same manner as shown
in Figure 1 of Riggsby for the upstream communication path, between the
MOGA filter of the two triplexers and changing the MOGA filters to
upstream filters, [resulting] in a second upstream communication path [as
claimed]." Ans. 24.
We are also not persuaded of Examiner error by Appellant's
contention "the teachings of Weinstein could not be applied to the RF signal
amplifier of Riggsby." App. Br. 9. According to Appellant:
The techniques of Weinstein cannot be applied at signal
amplifiers that are located at subscriber premises, as the
downstream signals that arrive at the signal amplifiers will
already be in the 54--1002 MHz frequency band and hence
upconverting some or all of the downstream signals into a
higher (and larger) frequency band at that point will not
increase the communications bandwidth as the downstream
communications bandwidth is already limited to a certain data
rate because the links between the coaxial distribution node and
each signal amplifier is carried in the 54--1002 MHz frequency
band.
Id. However, Appellant's argument is premised on incorporating the
specific frequency division and allocations used in Weinstein's amplifiers
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rather than the more general teaching of providing two upstream
communication paths and respective power amplifiers instead of a single
path using a single amplifier. Such arguments emphasizing problems
resulting from the bodily incorporation of the structure of one reference into
the structure of another other reference are unpersuasive because it is not the
disclosed embodiments that are combined according to the rejection, but the
teachings of the references. Because we disagree with Appellant that the
teachings of Riggsby and Weinstein are limited to the specific embodiments
and implementations disclosed by the references, we also disagree that the
teaching of Weinstein (i.e., providing two or more rather than a single
upstream path) could not be applied to the RF signal amplifier of Riggsby.
Appellant further contends modifying Riggsby according to Weinstein
would render Riggsby inoperative for its intended purpose because
Riggsby's second upstream path in the 1150-1550 MHz range could not be
moved to a frequency range between the 5--42 MHz CATV upstream
spectrum band and the 54--1002 MHz downstream frequency band as
required by the frequency arrangement of claim 1 without conflicting with
standardized frequency requirements. App. Br. 11-12. The Examiner
responds by finding Weinstein's D3, Ul, and U2 teach the respective
downstream, first, and second upstream communication paths, arranged as
required according to claim 1. Ans. 26. The Examiner explains:
Weinstein is used for the purpose of teaching a second
upstream communications path, and not for the purpose to
modify the signal amplifier of Riggsby with Weinstein's design
techniques. The test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
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the references would have suggested to those of ordina1 y skill
in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871
(CCPA 1981).
Ans. 26-27.
We find Appellant's arguments unpersuasive of Examiner error.
Appellant's argument is again premised on wholesale incorporation of the
specific frequency bands used by Weinstein into the amplifier of Riggsby
rather than on modifying Weinstein according to Riggsby's teaching of
using two (or more) upstream paths rather than a single path. Furthermore,
we are not persuaded of Examiner error by Appellant's argument in rebuttal
to the Examiner's response to arguments appearing in the Final and
Advisory Actions (App. Br. 12-19) for the reasons discussed supra. Instead,
we agree with the Examiner in finding the combination of Weinstein and
Riggsby is proper and teaches or suggests the argued limitations of claim 1.
Appellant does not present separate arguments for patentability in
connection with independent claim 18 or dependent claims 2-9, 19, and 20
but, instead, relies on or repeats arguments presented in connection with
claim 1 (App. Br. 19-20) and/or merely asserts a particular claim element is
not found in the prior art without specifically addressing the Examiner's
findings (App. Br. 20-21 ). Such contentions do not amount to separate
arguments for patentabilty. 3 Therefore, for the reasons supra, we sustain the
rejection of independent claim 1 and, for the same reasons, the rejection of
3 See 37 C.F .R. § 41.37 ( c )(1 )(iv) ("A statement which merely points out
what a claim recites will not be considered an argument for separate
patentability of the claim."); Lovin, 652 F.3d at 1357 ("[W]e hold that the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.").
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independent claim 18 under 35 U.S.C. § 103(a) over Riggsby and \Veinstein,
together with the rejections of dependent claims 2-9, 19, and 20, which are
not argued separately.
In connection with independent claim 10, in addition to the
contentions asserted in connection with claim 1, Appellant argues one
skilled in the art would not incorporate Weinstein's guard bands into
Riggsby's amplifier because the entirety of Riggsby's upstream traffic is
generated at a single subscriber premise, such that there is no need for the
guard bands. App. Br. 22. The Examiner responds by finding that Figure 5
and paragraph 41 of Weinstein disclose upstream bands Ul, U2, U3, and U4
separated by guard bands, as required by claim 10. The Examiner further
finds "it is well known in the art that guard bands are used for the purpose of
preventing interference, so it would be obvious for Riggsby to use guard
bands." Ans. 36.
Appellant's contention is unpersuasive of Examiner error. In
particular, we agree Weinstein's disclosure that "the four frequency bands
224, 226, 228, 230 ... are suitably separated by guard bands" (Weinstein
i-f 41) teaches the disputed guard bands and that it would have been obvious
to similarly include such guard bands when incorporating Weinstein's two
or more upstream paths into Riggsby's CATV amplifier. Ans. 36.
Accordingly, we sustain the rejection of independent claim 10 under 35
U.S.C. § 103(a) over Riggsby and Weinstein, together with the rejections of
dependent claims 11-17, which are not argued separately.
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DECISION
The Examiner's decision to reject claims 1-20 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)(l )(iv).
AFFIRMED
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