Ex Parte Dooley et al

Patent Trial and Appeal Board

Jul 22, 2013

10564422 (P.T.A.B. Jul. 22, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte SAUL R. DOOLEY and ANDREW T. YULE
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Appeal 2010-008568
Application 10/564,422
Technology Center 2600
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Before DEBRA K. STEPHENS, JASON V. MORGAN, and
PATRICK M. BOUCHER, Administrative Patent Judges.

BOUCHER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-008568
Application 10/564,422

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STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1–13. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Illustrative Claim
The claimed subject matter relates to correlating a sampled direct-
sequence spectrum signal with a locally provided replica signal containing
spreading code (Spec., p. 1, ll. 6–10).
Claim 1 is illustrative and is reproduced below with the disputed
limitation emphasized:
1. A method of correlating a sampled direct sequence spread
spectrum signal with a locally provided replica signal
containing a spreading code, the method comprising:
combining the bit or bits of at least two signal samples of
the received signal to form a first word;
providing a second word containing bits corresponding to
the replica signal; and
executing one or more software based instructions to
carry out word-based, hard-wired operations to process the
first and second words in order to obtain a correlation value.

References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Harrison
Laudel
US 5,982,811
US 6,657,986 B1
Nov. 9, 1999
Dec. 2, 2003
Medlock US 2001/0048713 A1 Dec. 6, 2001
Appeal 2010-008568
Application 10/564,422

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Rejections
The Examiner made the following rejections:
Claims 1, 2, 4, 6, 7, 9, and 11–13 stand rejected under 35 U.S.C.
§102(b) as anticipated by Medlock (Ans. 3–5).
Claims 3 and 8 stand rejected under 35 U.S.C. §103(a) as
unpatentable over Medlock and Laudel (Ans. 5–6).
Claims 5 and 10 stand rejected under 35 U.S.C §103(a) as
unpatentable over Medlock and Harrison (Ans. 6–7).

Issue1
Appellants’ contentions present us with the issue of whether the
Examiner erred in finding Medlock discloses “executing one or more
software based instructions to carry out word-based, hard-wired operations
to process the first and second words in order to obtain a correlation value,”
as recited in claim 1.2

ANALYSIS

1 The objections to the drawings (Final Office Action dated April 28, 2009,
p. 2–3) relate to petitionable matters and are therefore not before us.
2 We treat claim 1 as representative of all claims pending in the application.
37 C.F.R. § 41.37(c)(1)(vii). Although claims 3, 5, 8, and 10 are presented
under separate headings, Appellants merely reference the arguments
presented for claim 1 while asserting that such claims “may be allowable for
further reasons” (App. Br. 9) without articulating such reasons. We do not
consider such assertions to be arguments. See In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011). Except for our ultimate decision, claims 2–13 are not
discussed further herein.
Appeal 2010-008568
Application 10/564,422

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We find Medlock discloses a search device for a spread
communication system (Medlock, Abs.). The Examiner identifies Fig. 2A
and related discussion as disclosing the disputed limitation (Ans. 3–4). As
shown in Fig. 2A, each of multiple computation circuits coupled in parallel
are used to perform correlation operations on bit slices extracted from input
data and from a code sequence (Medlock ¶29).
Appellants contend Medlock does not disclose word-based operations
because those correlation operations are performed with substeps
implemented one chip at a time (App. Br. 6, citing Medlock ¶50).
Conversely, the Examiner reasons that Medlock discloses word-based
operations because Medlock teaches parallel correlation performed on
sequences containing multiple bits (Ans. 8–9).
The broad term “word-based operations” is not explicitly defined in
the Specification and a relevant technical dictionary defines “word” as “[a]
collection of bits the computer recognizes as a basic information unit and
uses in its operation” and as “a group of characters capable of being
processed simultaneously in the processor and treated by computer circuits
as an entity and capable of being stored in one storage location” (Newton’s
Telecom Dictionary, 20th ed. (CMP Books, 2004), pp. 924–25). Thus, taking
a broad but reasonable interpretation in light of the Specification, because
Medlock’s parallel-correlation operations are simultaneously performed on
defined bit groups (i.e., multiple-bit slices) that are treated as an entity and
capable of storage in a single location, we are not persuaded that the
Examiner’s finding is in error.
We accordingly sustain the Examiner’s rejection of claim 1 under 35
U.S.C. §102(b) as anticipated by Medlock.
Appeal 2010-008568
Application 10/564,422

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CONCLUSION
On the record before us, we conclude the following:
(1) the Examiner did not err in rejecting claims 1, 2, 4, 6, 7, 9, and 11–
13 under 35 U.S.C. §102(b) as anticipated by Medlock;
(2) the Examiner did not err in rejecting claims 3 and 8 under 35
U.S.C. §103(a) as unpatentable over Medlock and Laudel; and
(3) the Examiner did not err in rejecting claims 5 and 10 under 35
U.S.C §103(a) as unpatentable over Medlock and Harrison.

DECISION
The Examiner’s decision rejecting claims 1–13 is affirmed. 3

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).

3 We have decided the appeal before us. However, should there be further
prosecution of claims 1–5, 12, or 13, we direct the Examiner’s attention to
claim 1’s recitation of “the received signal,” which appears to be without
antecedent basis. We leave it to the Examiner to determine whether those
claims satisfy the requirements of 35 U.S.C. §112, second paragraph. In
addition, we direct the Examiner’s attention to In re Nuijten, 500 F.3d 1346,
1356–57 (Fed. Cir. 2007) and the Director’s Memo Subject Matter
Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212
(Feb. 23, 2010) to determine whether claims 12 and 13 are directed to non-
statutory subject matter, and thus unpatentable under 35 U.S.C. § 101. See
also Ex parte Mewherter, No. 2012-007692 (PTAB May 8, 2013) (expanded
panel), available at http://e-foia.uspto.gov/Foia/
ReterivePdf?system=BPAI&flNm=fd2012007692-05-08-2013-4 (holding
recited machine-readable storage medium ineligible under § 101 since it
encompasses transitory media).

Appeal 2010-008568
Application 10/564,422

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AFFIRMED

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