Ex Parte Williams et al

Patent Trial and Appeal BoardSep 27, 2012

11012579 (P.T.A.B. Sep. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte WENDI WILLIAMS, PAUL MARKO, and CRAIG WADIN ____________________ Appeal 2010-005725 Application 11/012,579 Technology Center 2600 ____________________ Before ERIC S. FRAHM, KALYAN K. DESHPANDE, and MICHAEL J. STRAUSS, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005725 Application 11/012,579 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1- 12 and 14-20. Claim 13 has been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Exemplary Claims Exemplary claims 1 and 9 under appeal read as follows: l. A method of digital remodulation of a received signal using a digital audio radio and a first digital radio frequency, comprising the steps of: receiving the received signal at the digital audio radio, wherein the digital audio radio is a mobile radio device for playback of digital audio re-encoding the received signal to provide a re-encoded digital signal; reformatting the re-encoded digital signal into a new digital format signal; digitally modulating a radio frequency carrier with the new digital format signal; selectively switching the digital audio radio from the first digital radio frequency to a second radio frequency having the radio frequency carrier with the new digital format signal; and providing audio of the new digital format signal in lieu of a digital broadcast signal received at the digital audio radio when the digital audio radio is switched to the second radio frequency having the radio frequency carrier. 9. A method of providing an audio signal from an auxiliary source to a mobile digital radio receiver for playback in lieu of a digital broadcast signal received at the digital radio receiver comprising the steps of: reformatting the audio signal into a digital audio format compatible with the digital broadcast signal; Appeal 2010-005725 Application 11/012,579 3 digitally modulating the reformatted audio signal onto a radio frequency to which the mobile radio receiver can be tuned, for transmission via a conductor; providing the modulated reformatted audio signal to an antenna switch unit via the conductor, the antenna switch unit also being connected to an antenna for receiving the broadcast signal wherein the antenna switch unit switches the digital radio receiver from a first digital radio frequency to a second radio frequency having a radio frequency carrier with a new digital format signal; and providing the audio signal of the new digital format signal from the auxiliary source to the mobile digital radio receiver for playback in lieu of the digital broadcast signal received at the digital radio receiver when the digital radio receiver is switched to the second radio frequency having the radio frequency carrier. References The prior art relied upon by the Examiner in rejecting the claims on appeal is: Name Number Pub. Date Filing Date Nguyen US 6,272,328 B1 Aug. 7, 2001 May 12, 1999 Kroeger US 2003/0137928 A1 Jul. 24, 2003 Jan. 15, 2003 Walker US 2004/0184614 A1 Sep. 23, 2004 Mar. 18, 2003 Kwon US 2005/0143047 A1 Jun. 30, 2005 Nov. 3, 2004 Appeal 2010-005725 Application 11/012,579 4 Rejections at Issue 1 The Examiner made the following rejections: Claims 9-11 stands rejected under 35 U.S.C § 103(a) as being unpatentable over Kwon and Nguyen. Ans. 3. Claims 12, 16, and 17 stand rejected under 35 U.S.C § 103(a) as being unpatentable over Kwon and Kroeger. Ans. 6. Claims 1-4, 8, 14, 15, and 18 stand rejected under 35 U.S.C § 103(a) as being unpatentable over Kwon, Kroeger and Nguyen. Ans. 9. Claims 5-7, 19, and 20 stand rejected under 35 U.S.C §103(a) as being unpatentable over Kwon, Kroeger, Nguyen, and Walker. Ans. 15. Appellants’ Contentions 2 (1) Appellants contend (App. Br. 3-5) that the Examiner erred in rejecting claim 9 under 35 U.S.C. § 103(a) because: (a) “the Kroeger transmitters is out of context for use with a mobile radio as claimed in claim 1 or amended claim 9” (App. Br. 5); 3 and 1 Appellants argue the rejection of claims 1, 9, 10, and 12 and collectively argue the rejection of claims 3 and 4 under 35 U.S.C. § 103(a). Separate patentability is not argued for claims 2, 5-8, 11, and 14-20. “A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.” 37 C.F.R. § 41.37(c)(1)(vii)(last sentence). Further, merely restating with respect to a second claim an argument, previously presented with respect to a first claim, is not an argument for separate patentability of the two claims. 2 Appellants contend numerous additional errors on the part of the Examiner without providing persuasive evidence or argument. Appellants are reminded that merely reciting what a claim recites or making a general allegation of patentability is not a separate patentability argument. See Ex parte Belinne, No. 2009-004693, slip op. at 7-8 (BPAI Aug. 10, 2009) (informative). Appeal 2010-005725 Application 11/012,579 5 (b) the application of Nguyen is improperly based on hindsight and is further improper because “the transmitter of Kroeger involves infrastructure and not a mobile device, and re-encoding and re-formatting is non-existent in Nguyen . . .; ”(id);. (2) Appellants further contend (App. Br. 6-7) that the Examiner erred in rejecting claim 12 under 35 U.S.C. § 103(a) because “Kroeger is out of context for use with a mobile radio.” App. Br. 7 (3) Appellants further contend (App. Br. 7-8) that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) based on “arguments and deficiencies noted already above with respect to Kwon, Kroeger and Nguyen regarding claim 9 [which] are equally applicable to claim l.” App. Br. 8 (4) Appellants further contend (App. Br. 8) that the Examiner erred in rejecting claims 3 and 4 under 35 U.S.C. § 103(a) because “Nguyen [fails to teach] receiving the received signal in a format of a digital transmission signal, extracting a channel of encoded information, and decoding the channel of encoded information before the step of re-encoding, particularly since Nguyen does not re-encode.” Id. 3 Appellants acknowledge that claim 9 was amended by the Amendment After Final of February 9, 2009 (App. Br. 1) but then mistakenly state that the amendment was not entered (App. Br. 4.) See Ans. 20 confirming that the amendment was entered. We note that claim 9 as it appears in Appellants’ Claim Appendix includes the language added by the Amendment. Appeal 2010-005725 Application 11/012,579 6 Issues Did the Examiner err in rejecting claim 9 as being obvious over Kwon and Nguyen because the teachings of the references are not properly combinable under 35 U.S.C. § 103(a)? Did the Examiner err in rejecting claim 12 as being obvious over Kwon and Kroeger because the teachings of those references are not properly combinable under 35 U.S.C. § 103(a)? Did the Examiner err in rejecting claim 1 as being obvious over Kwon, Kroeger, and Nguyen because the teachings of the references are not properly combinable under 35 U.S.C. § 103(a) and because “the transmitter of Kroeger involves infrastructure and not a mobile device, and re-encoding and re-formatting is non-existent in Nguyen (App. Br. 5)”? Did the Examiner err in rejecting claims 3 and 4 as being obvious over Kwon, Kroeger, and Nguyen because the combination fails to teach or suggest “receiving the received signal in a format of a satellite digital audio radio transmission signal, extracting a channel of encoded audio, and decoding the channel of encoded audio before the step of re-encoding (App. Br. 8)”? Analysis We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. We disagree with Appellants’ conclusions with regard to the contentions above and adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal. We concur with the Appeal 2010-005725 Application 11/012,579 7 conclusions reached by the Examiner and highlight the following arguments for emphasis. In connection with contention 1(a) above, Appellants’ arguments are directed to claims 1-4 and are not relevant to or recited by the language of claim 9 as amended. Likewise, Appellants’ arguments directed to Kroeger are irrelevant to the disputed rejection of claim 9 since the reference was not applied or otherwise relied upon in the formulation of the rejection. See also Ans. 20. As such, we do not find the Appellants’ arguments persuasive because the Appellants’ arguments are not commensurate with the scope of claim 9. In connection with contention 1(b), the Examiner has fully responded to this argument. See Ans. 4-5 and 20-21. We agree with the Examiner and accordingly adopt the Examiner’s findings and conclusions as our own. Id. As such, we find no persuasive argument that the Examiner has erred in basing the rejection of claim 9 on the combination of Kwon and Nguyen. In connection with claims 10 and 11, Appellants do not provide any persuasive evidence or argument to demonstrate that the Examiner erred. Appellants merely recite claim language without detailing specific deficiencies in what the applied combination of references teaches or suggests. Appellants' naked allegations that the recited limitations are not disclosed without attempting to indicate how the recited claim language distinguishes over the recited portions of the references do not constitute substantive arguments in response to the Examiner's findings. Merely reciting the claim language followed by an unsubstantiated allegation of patentability does not constitute a separate argument for separate Appeal 2010-005725 Application 11/012,579 8 consideration by the Board. See Ex parte Belinne, 2009 WL 2477843 (Bd. Pat. App. & Interf. Aug. 10, 2009) (informative). In connection with contention (2), Appellants again argue that the combination of Kwon and Kroeger is improper. Appellants argue that “[t]he Kroeger transmitter is a transmitter used in the infrastructure of a transmission station whereas the claimed embodiments with respect to the modulator apply to a mobile radio device. This is not the same context as claimed nor is it for the same purpose.” App. Br. 7. We find that the Examiner has fully responded to this contention. See Ans. 8 and 23. We agree with the Examiner and accordingly adopt the Examiner’s findings and conclusions as our own. Id. We are not persuaded by Appellants’ arguments that one skilled in the art would have been dissuaded or otherwise discouraged from combining the teachings of Kwon and Kroeger as applied by the Examiner. Id. The Examiner has provided a reason with rational underpinning for combining the references and Appellants have not provided any persuasive evidence or rationale to illustrate why a person with ordinary skill in the art would not have found it obvious to combine the cited prior art. In connection with contention 3, to the extent that Appellants contend that the rejection is improper because Kwon fails to disclose “four major elements of the claim” (App. Br. 7), we note that these elements were identified and acknowledged as missing from Kwon by the Examiner (Ans. 9) and Kroeger was applied to cure this deficiency in Kwon (Ans. 7-8.) Any Appeal 2010-005725 Application 11/012,579 9 such argument improperly attempts to attack the combination of references separately. 4 In connection with the “arguments and deficiencies noted . . . with respect to Kwon, Kroeger and Nguyen regarding claim 9 [which] are equally applicable to claim l,” (App. Br. 8) we are again not persuaded of Examiner error for the reasons presented supra. We instead agree with the Examiner as set forth at pages 23-25 of the Examiner’s Answer. Therefore, on the record before us, we find Appellants have failed to rebut the Examiner's rejection of the cited claims with any persuasive evidence or rationale. Consequently, we find that Appellants have not shown that the Examiner erred in rejecting claim 1, 9-11, 12, 16, and 17. In connection with contention 4, Appellants' allegations that the recited limitations are not disclosed without indicating how the recited claim language distinguishes over the recited portions of the references do not constitute substantive arguments in response to the Examiner's findings. “A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.” 37 C.F.R. § 41.37(c)(1)(vii)(last sentence). We find Appellants have not provided persuasive evidence or argument controverting the Examiner’s findings of what Nguyen discloses. See Ans. 11-12 and 25. Consequently, we find that Appellants have not shown that the Examiner erred in rejecting claims 3 and 4. 4 One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appeal 2010-005725 Application 11/012,579 10 Accordingly, we sustain the Examiner’s rejection of claims 1, 3, 4, 9, 10 and 12 and of dependent claims 2, 5-8, 11, and 14-20, which were not argued separately. DECISION The decision of the Examiner to reject claims 1-12 and 14-20 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)(1)(iv)(2010). AFFIRMED ELD