Ex Parte Apfel - Page 7




         Appeal No. 2006-2089                                                       
         Application No. 09/778,291                                                 

              For the above reasons, since it is our opinion that the               
         Examiner’s prima facie case of obviousness has not been overcome           
         by any convincing arguments from Appellants, the Examiner’s 35             
         U.S.C. § 103(a) rejection of independent claims 1, 12, and 24, as          
         well as dependent claims 2-5 and 13-16 not separately argued by            
         Appellant, is sustained.2                                                  
              We also sustain the Examiner’s 35 U.S.C. § 103(a) rejection           
         of claims 6-11, 17-23, and 25, grouped and argued together by              
         Appellant, based on the disclosure of Shenoi alone.  We refer to           
         our earlier discussion of Shenoi and further find that, in                 
         addition to determining the bandwidth requirement of a signal              
         path and applying an appropriate gain to the signal path, Shenoi           
         also discloses (column 8, lines 3-24) the determination of the             
                                                                                   
              2                                                                     
               Although Appellant’s arguments focus on the contention that          
         the applied references lack a teaching of controlling gain of a            
         signal portion based on a determination of bandwidth requirement,          
         independent claims 12 and 18 merely require the separation of              
         signal paths “based upon at least one characteristic” and                  
         applying a corresponding gain to the signal paths, a feature               
         disclosed by Shenoi at column 8, lines 3-24.                               











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