Ex Parte Sedarat

Patent Trial and Appeal BoardJul 22, 2015

11377114 (P.T.A.B. Jul. 22, 2015)

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. 11/377,114 03/15/2006 Hossein Sedarat 2875.3800001 5985 49579 7590 07/22/2015 STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 NEW YORK AVENUE, N.W. WASHINGTON, DC 20005 EXAMINER YU, LIHONG ART UNIT PAPER NUMBER 2631 MAIL DATE DELIVERY MODE 07/22/2015 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 HOSSEIN SEDARAT ____________ Appeal 2013-001211 Application 11/377,114 Technology Center 2600 ____________ Before CAROLYN D. THOMAS, BRUCE R. WINSOR, and CHARLES J. BOUDREAU, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING INTRODUCTION Appellant requests rehearing of the Patent Trial and Appeal Board’s (“Board”) Decision mailed May 1, 2015 (“Decision”), in which we affirmed the rejections of claims 1, 3–10, and 12–19, 22, and 23 under 35 U.S.C. § 103(a) as being unpatentable over various combinations of Rao (US 5,978,760, Nov. 2, 1999), Paivike (US 6,396,827 B1, May 28, 2002), Hamilton (US 4,009,371, Feb. 22, 1977), Bodenschatz (US 2002/0122515 A1, Sept. 5, 2002), Luo (US 6,378,234 B1, Apr. 30, 2002), Cai (US Appeal 2013-001211 Application 11/377,114 2 6,205,410 B1, Mar. 20, 2001), and Yousef (US 7,215,727 B2, May 8, 2007) (see Final Act. 3–10).1 ANALYSIS In the Request for Rehearing (“Request”), Appellant alleges that (1) “nowhere does the Decision on Appeal ever identify where [Rao] or Paivike teach or suggest the duration and the period of [Rao] are ‘estimat[ed]’” (Req. 3) and that the Decision “improperly concludes that [the] weight[ed] average is used to determine the duration or the period” (id. at 4); (2) “[t]he Board overlooked Appellant’s Arguments regarding the offset of Paivike” (id., emphasis omitted); and (3) “[t]he Board misapprehended the scope of [one or more parameters] . . . independent claim 1 requires three parameters” (Req. 6). We disagree with each of Appellant’s aforementioned allegations. Specifically, regarding allegation (1), we emphasize that our Decision does not conclude that “the weight[ed] average is used to determine the duration or the period,” as alleged by Appellant (Req. 4). Rather, our Decision states: In Rao, a decoder “uses a novel weighted-average method for estimating statistics of the background noise” . . . . Rao further discloses “computing a weighted average of said auto-correlation values to represent said noise-analysis f[r]ames” (6:16–17). Paivike discloses that “[t]he timing offset calculator produces the timing offset between the current IS-136 frame” (10:3–5). It is the combined teachings of Rao and Paivike that the Examiner is relying on to teach and/or suggest the argued limitations. 1 In our Decision, we reversed the rejection of claims 20 and 21 (Decision 6). Appeal 2013-001211 Application 11/377,114 3 Decision 4. Stated differently, Rao discloses a noise parameter generator which uses a weighted average of the auto-correlation values for estimating statistics of the background noise. As for parameters, Appellant concedes that Rao discloses the “first sixteen frames or k+1, … , k+N of [Rao] can be characterized as having a duration or a period” (Req. 3) and that “Paivike discloses an offset parameter” (id. at 5). Our Decision agreed with the Examiner and used the combined teachings of Rao’s noise parameter generator, which estimates parameters, with at least Paivike’s offset parameter calculator to show that it would have been obvious to one of ordinary skill in the art to estimate one or more parameters of the impulse noise, wherein the one or more parameters comprise a period, an offset, and a duration. Appellant’s allegation does not take into account what the collective teachings of the prior art would have suggested to one of ordinary skill in the art and is therefore ineffective to rebut the Examiner’s prima facie case of obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 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.”) (citations omitted). Regarding Appellant’s allegation (2), the Board did not overlook Appellant’s argument regarding the offset of Paivike. Rather, the Board noted that Appellant failed to “dispute that Paivike discloses calculating an offset parameter” (see Decision 5), the sole reason the Examiner imported Appeal 2013-001211 Application 11/377,114 4 Paivike (see Final Act. 4). Paivike was not used by the Examiner to illustrate a parameter for impulse noise, Rao was used for this limitation (id.). Paivike was merely used to show that it was known to calculate offset parameters of a signal using the corresponding frame number (id.). Again, Appellant’s allegations do not take into account what the collective teachings of the prior art would have suggested to one of ordinary skill in the art and are therefore ineffective to rebut the Examiner’s prima facie case of obviousness. Finally, regarding Appellant’s allegation (3), we disagree that independent claims 1 and 10 each require three parameters. Claims 1 and 10 recite, inter alia, estimating one or more parameters . . . wherein the one or more parameters of the impulse noise comprise a period, an offset and a duration of the impulse noise (see claims 1 and 10). Because Appellant chose to broaden the scope of the claim by using the alternative language “one or more,” Appellant in essence allows the claim to be met by the selection of one item. If Appellant sought to have “one or more” mean “each of a period, an offset, and a duration,” then this should have been recited in the claim. Although we interpret claims broadly but reasonably in light of the Specification, we nonetheless must not import limitations from the Specification into the claims, and thus find Appellant’s reliance on the Specification disclosure of impulse noise comprising all three parameters unavailing (see Req. 7). See Phillips v. AWH Corp., 415 F.3d 1303, 1316, 1323 (Fed. Cir. 2005) (en banc) (citations omitted). Appeal 2013-001211 Application 11/377,114 5 DECISION Accordingly, we have granted Appellant’s Request to the extent that we have reconsidered the original Decision but have DENIED it with respect to making any changes to the Decision. 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)(iv). REHEARING DENIED mls