Ex Parte Sutioso et al

Patent Trial and Appeal BoardApr 9, 2013

11895974 (P.T.A.B. Apr. 9, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HENRI SUTIOSO and LEI WU ____________ Appeal 2010-011554 Application 11/895,974 Technology Center 2600 ____________ Before KARL D. EASTHOM, MICHAEL R. ZECHER, and JUSTIN T. ARBES, Administrative Patent Judges. ZECHER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-011554 Application 11/895,974 2 I. STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-25. Br. 5.1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appellants’ Invention Appellants invented a device, system, and method that relates to compensating a local clock of a device. Spec. ¶ [0002]. The device receives data from a host for frequency offset while transmitting data from the device to the host. Id. Illustrative Claim Claims 1, 11, and 20 are independent claims. Independent claim 1 is illustrative: 1. A device comprising: a transmitter; a receiver; a clock generator that generates a clock signal having a local clock frequency; a clock recovery circuit that communicates with said receiver and that recovers a host clock frequency from data received from a host by said receiver; a frequency offset circuit that communicates with said clock recovery circuit and said clock generator and that generates a frequency offset based on said clock frequency and said recovered host clock frequency; and 1 All references to the Brief are to the Brief filed on January 21, 2010, which replaced the Brief filed on May 4, 2009. Appeal 2010-011554 Application 11/895,974 3 a frequency compensator that compensates a frequency of said transmitter using said frequency offset, wherein said device transmits data back to said host based on said compensated frequency. Prior Art Relied Upon Nakagawa US 5,446,767 Aug. 29, 1995 van Driest US 6,314,145 B1 Nov. 6, 2001 Wong US 2003/0035504 A1 Feb. 20, 2003 (filed Aug. 19, 2002) Agazzi US 2008/0310330 A1 Dec. 18, 2008 (effectively filed May 14, 1998) Appellants’ Admitted Prior Art—Spec. ¶¶ [0003-0005] (hereinafter “AAPA”). Rejections on Appeal Claims 1, 2, 5-7, 9-12, 15-17, and 19-25 were rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of AAPA, Wong, and Agazzi. Ans. 3-8. Claims 3 and 13 were rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of AAPA, Wong, Agazzi, and Nakagawa. Id. at 8-9. Claims 4 and 14 were rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of AAPA, Wong, Agazzi, Nakagawa, and van Driest. Id. at 9-10. Claims 8 and 18 were rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of AAPA, Wong, Agazzi, and van Driest. Id. at 10-12. Appeal 2010-011554 Application 11/895,974 4 Examiner’s Findings and Conclusions The Examiner finds that AAPA discloses bi-directional communication between a host and a device. Ans. 12-13. However, the Examiner concedes that AAPA does not disclose “a frequency compensator that compensates a frequency of said transmitter using said frequency offset, wherein said device transmits data back to said host based on said compensated frequency,” as recited in independent claim 1. Id. at 13. To make up for the deficiency of AAPA, the Examiner finds that Wong teaches “a frequency compensator that compensates a frequency of said transmitter using said frequency offset,” as claimed. Id. at 13-14 (citing Wong, Fig. 5, elements 508 and 509; Fig. 6; and ¶¶ [0030] and [0032-0034]). Further, the Examiner finds that Agazzi teaches “said device transmits data back to said host based on said compensated frequency,” as claimed. Id. at 14-15 (citing Agazzi, Fig. 12 and ¶ [0057]). In addition, the Examiner provides a rationale to combine AAPA, Wong, and Agazzi. Id. at 15-16. Appellants’ Contentions Appellants contend that Figure 5 of Wong and its corresponding description (¶¶ [0030] and [0032-0034]) does not teach that the device in Wong, i.e., a retimer, transmits data back to a host based on the compensated frequency, as required by independent claim 1. Br. 11. Instead, Appellants argue that Figure 5 of Wong discloses that the retimer is an intermediate device that relays data from the host to another retimer or a destination device other than the host. Id. Appellants also disagree with the Examiner’s position that Agazzi teaches transmitting data back to a host based on the compensated frequency, as claimed. Id. at 11-12. Instead, Appellants allege that while Agazzi’s timing recovery system synchronizes the frequency of Appeal 2010-011554 Application 11/895,974 5 the transmitter clock, Agazzi is silent as to whether the timing recovery system uses a frequency offset. Id. at 12-13. In addition, Appellants assert that the Examiner fails to provide a sufficient rationale to combine AAPA, Wong, and Agazzi. Id. at 13-15. Appellants rely upon the same arguments presented for the obviousness rejection of independent claim 1 to rebut the obviousness rejection of independent claims 11 and 20. Ans. 15. II. ISSUE Has the Examiner erred in determining that the combination of AAPA, Wong, and Agazzi renders independent claims 1, 11, and 20 unpatentable? In particular, the issue turns on whether: (a) the combination of AAPA, Wong, and Agazzi collectively teaches “a frequency compensator that compensates a frequency of said transmitter using said frequency offset, wherein said device transmits data back to said host based on said compensated frequency,” as recited in independent claim 1, and similarly recited in independent claims 11 and 20; and (b) the Examiner provides an articulated reason with a rational underpinning to combine AAPA, Wong, and Agazzi. III. ANALYSIS 35 U.S.C. § 103(a) Rejection—Combination of AAPA, Wong, and Agazzi Claims 1, 11, and 20 Based on the record before us, we do not discern error in the Examiner’s obviousness rejection of independent claim 1, which recites, Appeal 2010-011554 Application 11/895,974 6 inter alia, “a frequency compensator that compensates a frequency of said transmitter using said frequency offset, wherein said device transmits data back to said host based on said compensated frequency.” We also do not discern error in the Examiner’s obviousness rejection of independent claims 11 and 20, which recite a similar claim limitation. We begin our analysis by addressing the arguments presented by Appellants in turn. We are not persuaded by Appellants’ argument that Figure 5 of Wong and its corresponding description (¶¶ [0030] and [0032- 0034]) does not teach transmitting data back to a host based on the compensated frequency, as required by independent claim 1. Br. 11. The Examiner does not rely upon Wong’s cited disclosure to teach that disputed aspect of independent claim 1. Instead, the Examiner takes the position that Wong’s low pass filter and frequency shift device amount to the “frequency compensator that compensates a frequency of said transmitter using said frequency offset,” as claimed. Ans. 13-14 (citing Wong, Fig. 5, elements 508 and 510; Fig. 6; and ¶¶ [0030] and [0032-0034]). The Examiner relies upon the functionality of Agazzi’s slave transceiver, which synchronizes its local clock and transmits data back to the master transceiver, to teach “[the] device transmits data back to [the] host based on [the] compensated frequency,” as claimed. Ans. 15 (citing to Agazzi, Fig. 12 and ¶ [0057]). We agree with the Examiner. Based on the cited disclosure of Agazzi, one with ordinary skill in the art would have recognized that transmitting data back to the master transceiver or host is based on the compensated frequency achieved by synchronizing the local clock in the slave transceiver or device. Next, to the extent Appellants argue that Agazzi’s timing recovery system does not transmit data back to the host based on the compensated Appeal 2010-011554 Application 11/895,974 7 frequency, we are not persuaded of error. Br. 12-13. As discussed above, the Examiner does not rely on Agazzi’s timing recovery system to teach that the claimed “device transmits data back to [the] host based on [the] compensated frequency,” but instead relies upon the functionality of Agazzi’s slave transceiver. See Agazzi, Fig. 12; ¶ [0057]. Therefore, Appellants’ argument in that regard is misplaced. The Examiner has presented sufficient evidence to warrant a finding that the combination of Wong and Agazzi teaches the disputed claim limitation. Rationale to Combine We are not persuaded by Appellants’ argument that the Examiner fails to provide a sufficient rationale to combine AAPA, Wong, and Agazzi. The U.S. Supreme Court has held that “[t]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Instead, the relevant inquiry is whether the Examiner has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418). In addition, the Court instructs that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416. Upon reviewing the record before us, we conclude that the Examiner’s rationale for combining AAPA, Wong, and Agazzi suffices as an articulated reason with a rational underpinning to justify the legal conclusion of obviousness. That is, one with ordinary skill in the art of Appeal 2010-011554 Application 11/895,974 8 transferring data between a host and a device, at the time of the claimed invention, would have modified AAPA’s host/device configuration (Spec. ¶¶ [0003-0005]) to include Wong’s low pass filer and frequency shift device (Fig. 5, elements 508 and 510; ¶¶ [0030] and [0032]) and Agazzi’s functionality with respect to synchronizing the local clock in the slave transceiver and transmitting data back to the master transceiver or host (¶ [0057]). This proffered combination would “be able to keep the synchronization information in both the transceivers so as to be able to keep the data received by the first transceiver in synch with it’s [sic] clock thus avoiding a repetition of the synchronization process.” Ans. 15-16. In addition, the Examiner’s proposed combination of AAPA, Wong, and Agazzi amounts to the combination of familiar elements according to known methods that would predictably result in synchronizing the local clock in the transmitter of AAPA’s device, such that it conforms with a standard for transferring data. See KSR, 550 U.S. at 416. It follows that the Examiner has not erred in concluding that the combination of AAPA, Wong, and Agazzi renders independent claims 1, 11, and 20 unpatentable. Claims 2, 5-7, 9, 10, 12, 15-17, 19, and 21-25 Appellants do not provide separate and distinct arguments for patentability with respect to dependent claims 2, 5-7, 9, 10, 12, 15-17, 19, and 21-25. Therefore, we accept Appellants’ grouping of these dependent claims with their underlying base claim. See Br. 15. Consequently, dependent claims 2, 5-7, 9, 10, 12, 15-17, 19, and 21-25 fall with independent claims 1, 11, and 20, respectively. See 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2010-011554 Application 11/895,974 9 Remaining 35 U.S.C. § 103(a) Rejections Claims 3, 4, 8, 13, 14, and 18 Appellants contend that neither Nakagawa nor van Driest cures the alleged deficiencies in the Examiner’s combination of AAPA, Wong, and Agazzi. Br. 16-17. As discussed above, there are no such deficiencies in the combination of AAPA, Wong, and Agazzi for either Nakagawa or van Driest to remedy. It follows that the Examiner has not erred in concluding that: (1) the combination of AAPA, Wong, Agazzi, and Nakagawa renders dependent claims 3 and 13 unpatentable; (2) the combination of AAPA, Wong, Agazzi, Nakagawa, and van Driest renders dependent claims 4 and 14 unpatentable; and (3) the combination of AAPA, Wong, Agazzi, and van Driest renders dependent claims 8 and 18 unpatentable. IV. CONCLUSION For the foregoing reasons, the Examiner has not erred in rejecting claims 1-25 as being unpatentable under 35 U.S.C. § 103(a). V. DECISION We affirm the Examiner’s decision to reject claims 1-25. 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). AFFIRMED peb