Ex Parte Wong et al

Patent Trial and Appeal Board

May 23, 2017

12972791 (P.T.A.B. May. 23, 2017)

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.
12/972,791 12/20/2010 Kenneth H. Wong 20100221-01 1615
126149 7590
Key sight Technologies, Inc.
C/O CPA Global
P.O. Box 52050
Minneapolis, MN 55402
05/25/2017 EXAMINER
NATALINI, JEFF WILLIAM
ART UNIT PAPER NUMBER
2868
NOTIFICATION DATE DELIVERY MODE
05/25/2017 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):
key sightdocketing @ cpaglobal. com
notice, legal @key sight, com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH H. WONG, ROBERT E. SHOULDERS,
JOEL P. DUNSMORE, THOMAS REED, and
ERWIN F. SIEGEL
Appeal 2016-005336
Application 12/972,791
Technology Center 2800
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
Appellants1 seek our review2 under 35 U.S.C. § 134 of the Examiner’s
1 The Real Party in Interest is stated to be Keysight Technologies, Inc.
(Appeal Br. 3).
2 Appellants argue the After-Final amendment of June 30, 2015 remedies the
objections to claims 19 and 23 and the amendment should be entered.
Appeal Br. 5. However, this matter is properly raised by a petition under
37 C.F.R. § 1.181. 37 C.F.R. § 1.144 (2013). Petitionable matters are not
appealable to the Patent Trial and Appeal Board. In re Berger, 279 F.3d
975, 984—985 (Fed. Cir. 2002) (citing In reHengehold, 440 F.2d 1395, 1403
(CCPA 1971)); see also MPEP § 1201.
Appeal 2016-005336
Application 12/972,791
final decision rejecting claims 1—3, 7, and 133 under 35 U.S.C. § 103(a) as
obvious over the combination of Reinhardt et al. (US 5,644,243 A, issued
July 1, 1997) (“Reinhardt”) and Cemy, Jr. (US 4,519,096, issued May 21,
1985) (“Cemy”) and rejecting claims 4—6, 8, and 9 under 35 U.S.C. § 103(a)
as obvious over the combination of Reinhardt and Cemy and further in view
of Huang et al. (US 4,246,535, issued Jan. 20, 1981) (“Huang”). We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Claim 1 is representative of the claimed invention:
1. A method, comprising:
providing a control signal to control a frequency and/or a
phase of a first periodic signal, and/or a frequency and/or a phase
of a second periodic signal;
combining the first periodic signal and the second periodic
signal to produce a combined signal, wherein the second periodic
signal has at least one of a phase difference and a frequency
difference with respect to the first periodic signal;
applying the combined signal to an input of a device; and
determining a linearity of the device from an output signal
of the device based on the at least one of the phase difference and
frequency difference between the first periodic signal and the
second periodic signal, wherein the first periodic signal and the
second periodic signal are phase coherent during the determining
of the linearity of the device.
(Emphasis added).
3 Claims 10-12, 14—17, 19, and 23 have been indicated as including
allowable subject matter. Final Act. 9-10 and Adv. Act. Continuation Sheet.
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Application 12/972,791
Appellants present arguments that mainly focus on independent claim
1 (see Appeal Br., Reply Br. generally). Appellants separately argue
dependent claims 2, 3, 6, and 7 as individual groups (Appeal Br. 10-15).
ANALYSIS
Claims 1 and 13
We have reviewed each of Appellants’ arguments for patentability.
Having done so, we determine that a preponderance of the evidence supports
the Examiner’s determination that the claimed subject matter of
representative claim 1 is unpatentable within the meaning of § 103. Thus,
we sustain the Examiner’s rejection for essentially those reasons expressed
in the Final Action and Answer, including the Examiner’s Response to
Argument section, and we add the following primarily for emphasis.
Appellants’ main argument is that Reinhardt does not disclose
“determining a linearity of the device from an output signal of the device
based on the at least one of the phase difference and frequency difference
between the first periodic signal and the second periodic signal,” as recited
in claim 1 (Appeal Br. 6—8, 9-10; Reply Br. 4—6). Specifically, Appellants
contend “a skilled artisan would recognize that the particular frequency
difference between the two signals that creates the beat frequency has no
influence on whether the detector is perfectly or imperfectly linear” and “the
particular frequency difference between the two signals determines the
frequency at which the beat occurs, not whether the detector will produce
first and second harmonics” (Appeal Br. 7).
These arguments are unpersuasive. The Examiner correctly finds
Reinhardt discloses oscillators that produce frequencies slightly different
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Application 12/972,791
from one another, which in turn produce a modulated beat frequency, and a
spectrum analyzer that measures first and second harmonics of an output
signal caused by the beat frequency (Ans. 8—9). The Examiner further finds
Reinhardt discloses a relationship between the first and second harmonics
and the linearity of a detector, which demonstrates that linearity of the
detector is “based on” the frequency difference produced by Reinhardt’s
oscillators, as recited in claim 1, due to the relationship between the
frequency difference, the beat frequency, and the harmonics produced at the
beat frequency (id. at 9). Therefore, Appellants’ arguments do not identify a
reversible error in the Examiner’s findings.
Appellants further assert “the linearity of the detector must necessarily
be based upon something other than the difference between the frequencies
of the two signals” (Appeal Br. 7). However, Appellants do not proffer any
alternative basis for determining the linearity of Reinhardt’s detector.
In addition, Appellants assert there would have been a lack of reason
to combine Reinhardt and Cemy because, although the Examiner has
provided a reason to combine the references, the Examiner has not presented
a reason “why it is necessary to ‘maximize-ratio combining of signals that
have substantially the same frequency’” (Appeal Br. at 8) (emphasis added).
This argument is also unpersuasive. As stated by the Examiner at
page 10 of the Examiner’s Answer, obviousness under § 103 does not
require a reason why it would have been necessary to combine prior art
references. Moreover, as stated by the Supreme Court, “‘there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.’” KSR Intern. Co. v. Teleflex Inc.,550 U.S. 398,
418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The
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Application 12/972,791
Examiner provided articulated reasoning with some rational underpinning by
concluding it would have been obvious to modify Reinhardt in view of
Cemy to “maximize-ratio combining of signals that have substantially the
same frequency” (Ans. 4). Moreover, “any need or problem known in the
field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed.” 550
U.S. at 420.
Thus, a preponderance of the evidence supports the Examiner’s
determination that claim 1 would have been obvious over the combination of
Reinhardt in view of Cemy. Accordingly, we affirm the Examiner’s
rejection of claim 1. Appellants do not argue independent claim 13
separately from claim 1 (Appeal Br. 8).
Claims 2, 3
Claim 2 depends from claim 1 and further recites “wherein the second
periodic signal has the phase difference with respect to the first periodic
signal, and wherein the phase difference is varied to determine the linearity
of the device.”
The Examiner finds claim 2 further limits part of an exclusive
limitation of claim 1 that was not required (i.e., “at least one of the phase
difference and frequency difference”) (Ans. 3 4). The Examiner further
explains Appellants’ position with regard to claim 2 would result in the
elimination of a limitation of claim 1 (i.e., a frequency difference between
the first and second periodic signals), which is an impermissible broadening
of claim 1 (id. at 12—13).
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Appellants contend claim 2 further limits the scope of claim 1 and the
Examiner has not made a prima facie rejection of claim 2 (Appeal Br. 10—
11).
Appellants’ arguments are persuasive. Claim 1 recites “wherein the
second periodic signal has at least one of a phase difference and a frequency
difference with respect to the first periodic signal.” Claim 2 recites “wherein
the second periodic signal has the phase difference with respect to the first
periodic signal,” which is a de facto selection of the phase difference set
forth in claim 1, as the Examiner finds at page 14 of the Examiner’s Answer.
The Examiner’s interpretation of claim 2 is incorrect because the
selection of the phase difference, as recited in claim 2, does not require
elimination of a frequency difference between the two signals. As noted
above, claim 1 recites “at least one” of the phase difference and the
frequency difference occurs, which means one of the differences may be
selected or they may both be selected. Thus, only the phase difference may
be selected in claim 2 or both the phase difference and frequency difference
may be selected. This is consistent with the language and scope of claim 1,
which recites “wherein the second periodic signal has at least one of a phase
difference and a frequency difference with respect to the first periodic
signal.”
The Examiner has not made any findings that the applied references
disclose or suggest a phase difference, as required by claim 2. Asa result,
the Examiner has not set forth a prima facie case of obviousness for claim 2.
Claim 3 depends from claim 2. For the above reasons, we do not sustain the
Examiner’s § 103 rejection of claims 2 and 3 over Reinhardt and Cemy.
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Claim 7
Claim 7 depends from claim 1 and further recites “wherein the second
periodic signal has the frequency difference with respect to the first periodic
signal, and wherein the linearity of the device is determined from a time
varying characteristic of the output signal of the device.” The Examiner
finds Reinhardt discloses determining linearity of a device from a time
varying characteristic of an output signal of a device (Ans. 4—5).
Appellants argue Reinhardt discloses a constant frequency difference
between its two input signals and therefore a constant beat frequency
(Appeal Br. 14). Appellants further assert the Examiner has not provided
any evidence of Reinhardt disclosing a frequency difference between two
signals that varies with time (id.).
The Examiner responds to Appellants’ arguments by finding
Reinhardt discloses an alternative embodiment in which a stable beat
frequency is not generated, which would vary over time (Ans. 16). The
disclosures of Reinhardt at column 4, lines 21—24, and column 10, lines 64—
67, support the Examiner’s finding. Moreover, Appellants do not respond to
the Examiner’s finding or otherwise identify a reversible error in the
Examiner’s rejection of claim 7.
For these reasons, a preponderance of the evidence supports the
Examiner’s obviousness determination for claim 7.
Claims 4—6
Claims 4—6 depend from claim 2. The Examiner does not rely upon
Huang to cure the deficiencies discussed above with regard to the rejection
of claim 2. Therefore, we do not sustain the Examiner’s rejection of claims
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Application 12/972,791
4—6 under § 103 over Reinhardt, Cemy, and Huang for at least the same
reasons as discussed above for the rejection of claim 2.
Claims 8 and 9
Appellants do not set forth any arguments for the § 103 rejection of
claims 8 and 9. We therefore summarily affirm the Examiner’s § 103
rejection of claims 8 and 9 over Reinhardt, Cemy, and Huang.
DECISION
On the record before us, we:
A. sustain the Examiner’s decision to reject claims 1, 7 and 13
under 35 U.S.C. § 103(a) as being unpatentable over Reinhardt in view of
Cemy;
B. do not sustain the Examiner’s decision to reject claims 2 and 3
under 35 U.S.C. § 103(a) as being unpatentable over Reinhardt in view of
Cemy;
C. do not sustain the Examiner’s decision to reject claims 4—6
under 35 U.S.C. § 103(a) as being unpatentable over Reinhardt and Cemy in
view Huang; and
D. sustain the Examiner’s decision to reject claims 8 and 9 under
35 U.S.C. § 103(a) as being unpatentable over Reinhardt and Cemy in view
Huang.
We affirm-in-part the decision of the Examiner to reject the claims.
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).
AFFIRMED-IN-PART
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