Ex Parte Ehrentraut

Patent Trial and Appeal Board

Sep 27, 2018

14416129 (P.T.A.B. Sep. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/416,129 01/21/2015
21171 7590 10/01/2018
ST AAS & HALSEY LLP
SUITE 700
1201 NEW YORK A VENUE, N.W.
WASHINGTON, DC 20005
FIRST NAMED INVENTOR
Herbert Ehrentraut
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2319.1125 6344
EXAMINER
BATAILLE, FRANTZ
ART UNIT PAPER NUMBER
2677
NOTIFICATION DATE DELIVERY MODE
10/01/2018 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):
ptomail@s-n-h.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HERBERT EHRENTRAUT 1
Appeal2018-006919
Application 14/416,129
Technology Center 2600
Before CARLA M. KRIVAK, JASON V. MORGAN, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 18--40. Claims 1-1 7 are canceled. Appeal Br. 23. We
have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
Invention
The Specification discloses a mobile radio apparatus having a
switching device that: ( 1) in a first switching state, couples a first signal
1 Appellant is the Applicant, AUDI AG, identified in the Appeal Brief as
the real party in interest. Appeal Br. 2.
Appeal2018-006919
Application 14/416,129
connection to a first antenna and a second signal connection to a second
antenna and (2) in a second switching state, couples the first signal
connection to the second antenna and the second signal connection to the
first antenna. Substitute Abstract (Jan. 21, 2015).
Representative Claim (key limitations emphasized)
18. A mobile radio apparatus for a motor vehicle, comprising:
one or more processors to implement:
a first mobile radio module to interchange a first mobile radio
signal with a first external mobile radio station via a first signal
connector of the first mobile radio module, the first mobile
radio signal being based on at least one first mobile radio
standard; and
a second mobile radio module to interchange a second mobile
radio signal with a second external mobile radio station via a
second signal connector of the second mobile radio module, the
second mobile radio signal being based on a second mobile
radio standard, the second mobile radio standard being different
from the first mobile radio standard;
first and second antennas to selectively transmit the first and second
mobile radio signals; and
a switch connected to the first and second antennas and to the first and
second signal connectors, to change over, based on a switching signal,
between a first switching state, in which the first signal connector is
coupled to the first antenna and the second signal connector is
coupled to the second antenna, and a second switching state, in which
the first signal connector is coupled to the second antenna and the
second signal connector is coupled to the first antenna, wherein
the switching signal is produced so as to switch the switch to the
second switching state at a beginning of a voice transmission and to
maintain the switch in the second switching state during voice
telephony.
2
Appeal2018-006919
Application 14/416,129
Rejections
The Examiner rejects claims 18-22, 24--27, 32, 35, and 37 under
35 U.S.C. § I03(a) as being unpatentable over Berra et al (US 2005/0153743
Al; published July 14, 2005) ("Berra") and Leinonen et al. (US 2007/
0082622 Al; published Apr. 12, 2007) ("Leinonen"). Final Act. 13-28.
The Examiner rejects claim 23 under 35 U.S.C. § I03(a) as being
unpatentable over Berra, Leinonen, and Robinett (US 2012/0202561 Al;
published Aug. 9, 2012). Final Act. 28-29.
The Examiner rejects claim 28 under 35 U.S.C. § I03(a) as being
unpatentable over Berra, Leinonen, and Royalty (US 2004/0180653 Al;
published Sept. 16, 2004). Final Act. 29-30.
The Examiner rejects claims 29-31 under 35 U.S.C. § I03(a) as being
unpatentable over Berra, Leinonen, and Komninakis et al. (US 2011/
0136446 Al; published June 9, 2011) ("Komninakis"). Final Act. 30-33.
The Examiner rejects claims 33-34 and 36 under 35 U.S.C. § I03(a)
as being unpatentable over Berra, Leinonen, and Davis (US 2012/0027221
Al; published Feb. 2, 2012). Final Act. 33-36.
The Examiner rejects claims 38--40 under 35 U.S.C. § I03(a) as being
unpatentable over Berra, Leinonen, and Parmar et al. (US 6,725,039 Bl;
issued Apr. 20, 2004) ("Parmar"). Final Act. 36-39.
FINDINGS AND CONTENTIONS
Leinonen's switch module 950 modifies a radio frequency (RF)
"transmit path 970 to couple the duplex filter 960, 961 to the RF transmit
path 970 when certain conditions are met." Leinonen ,r 79. In rejecting
claim 18 as obvious, the Examiner relies on Leinonen's switch module to
teach or suggest a switch to change between: (I) a first switching state, in
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Appeal2018-006919
Application 14/416,129
which a first signal connector is coupled to a first antenna and a second
signal connector is coupled to a second antenna and (2) a second switching
state, in which the first signal connector is coupled to the second antenna
and the second signal connector is coupled to the first antenna. Final Act.
15 (citing Leinonen Fig. 9, ,r,r 76-82); Ans. 3.
Appellant contends the Examiner erred because Leinonen's switch has
"only one input/output on the left side of the switch module that can be
connected to an input/output on the right side of the switch module."
Appeal Br. 17; see also Reply Br. 2. Appellant argues this differs from the
claimed switch, in which a first switching state "must be able to couple a
first input/output ... to a second input/output ... and couple a third
input/output ... to a fourth input/output." Appeal Br. 17.
ANALYSIS
The claimed invention requires both a connection from a first signal
connector to one of two antenna and a connection from a second signal
connector to the other of the two antenna in each of the two claimed
switching states. A switch capable of being switched between the two
claimed states (i.e., switching which one of the two antenna that each signal
connector is connected to) is illustrated in the Specification's Figure 2,
reproduced below.
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Appeal2018-006919
Application 14/416,129
42
A2
I
J
52
26
Tx/Rx
-,-...::""' __ .. F _ _.__....___
f
I
J
I
: t
I
t \-----
..... _1'M'M'~i.:""' w~..,;i-ti,'Plil ....
f
I
I
44
LTE/HSPA
S3
60
\ ,
40
,,
48
18
62 '.,,------,,/ ..,,, __ ,.. __ ~
36 38 Fig.2
The Specification's Figure 2 illustrates a switching device 40 with
connections S 1 and S2 that, in a first state (illustrated), are connected to
connections S4 and S3 respectively, and, in a second state, are connected to
connections S3 and S4 respectively. Spec. ,r 27.
As Appellant correctly argues, Leinonen's switch differs because it
only connects one input on the left side in any of the disclosed states.
Appeal Br. 17. Specifically, Leinonen's switch connects: (1) either the
global system for mobile communications (GSM) bus 920 or wide-band
code-division multiple-access (WCDMA) bus 940 (on the left side of the
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Appeal2018-006919
Application 14/416,129
switch) to (2) either GSM power amplifier (PA) 930 or WCDMA PA 980
( on the right side of the switch). One of these switch configurations is
depicted in Leinonen's Figure 9, reproduced below.
910
RF ASIC
955
RF TRANSMIT PATH,970
/·--------·
930
950 r···----· --·--·----------,
~ swrrcH MODULE :
l !
: ls21
p;SM l ,,-920 l l
I I
ai1RA~N~c~o! l 922 .___ _ ___,
--------------~--J
[wcowi) 956 '951 '952
\ 940 SWITCH CONFJGURAIJON
0 0 GSM -> GSM
0 1 GSM -> WCDMA
1 0 WCOMA -> GSM (NOT ALLOWED)
l 1 WCIJMA - > WCDMA
TABLE,957 _/
FIG.9
\ 980
~ 900,
' DUAL-MODE
TRANSCEIVER
,,-931
(
DUPLEX
FILTER
(850)
'960
--·-----
! DUPLEX
FJLTER
(1900)
961
/
\
965
rr975
l
! '···+······ i 941 i \i
i ) i 971 ,,,,.,u •••un1
: I
: I
v-·975]
' l
)
: I
I !
-4--~-j
\ 941
Leinonen's Figure 9 illustrates switch module 950 and enumerates the
switch configurations (table 957), two of which provide for GSM input on
the left and two of which provide for WCDMA on the left ( one marked as
"NOT ALLOWED").
As Appellant correctly notes, "there is only one RF transmit path 970,
as both WCDMA and GSM signals will not be transmitted at the same
time." Appeal Br. 18 (quoting Leinonen, 79). That is, in the switch
module configurations identified in Leinonen's Figure 9, only one of the
inputs on the left (GSM bus 920 or WCDMA bus 940) is coupled to any
outputs on the right in any particular configuration (i.e., in any of the
disclosed states).
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Appeal2018-006919
Application 14/416,129
Notably, the Examiner's finding that Leinonen's switch teaches or
suggests the claimed invention is not based on how switch module 950
connects GSM bus 920 or WCDMA bus 940 to RF transmit path 970. See
Final Act. 15. Rather, the Examiner maps antenna coupling 931 to the
claimed first signal connector and antenna couplings 941 to the second
signal connector. See id.; Leinonen ,r 77. However, Leinonen's couplings
931, 941 to the antenna are static rather than being switched based on the
configuration of switch module 950. See Leinonen Fig. 9. Although their
role in RF transmit path 970 reflects the configuration of switch module 950
(id. ,r 79), the switch module 950 configuration merely determines whether
the selected input (i.e., either GSM bus 920 or WCDMA bus 940) is coupled
to GSM PA 930 (and thus antenna coupling 931) or to WCDMA PA 980
( and thus, through duplex filters 960, 961, to antenna couplings 941) as the
output (id. Fig. 9). Because antenna couplings 931, 941 (i.e., first and
second signal connectors) are static with respect to the antenna, the
Examiner's mapping fails to show that switch module 950 teaches or
suggests a switch that changes between: (1) a first switching state, in which
a first signal connector is coupled to a first antenna and a second signal
connector is coupled to the second antenna and (2) a second switching state,
in which the first signal connector is coupled to the second antenna and the
second signal connector is coupled to the first antenna.
Accordingly, we do not sustain the Examiner's 35 U.S.C. § 103(a)
rejection of claim 18, and claims 19-22, 24--27, 32, 35, and 37, which
contain similar recitations. The Examiner does not show that the other cited
references cure the noted deficiency of Leinonen. Therefore, we also do not
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Appeal2018-006919
Application 14/416,129
sustain the Examiner's 35 U.S.C. § 103(a) rejections of claims 23, 28-31,
33, 34, 36, and 38--40.
Although we do not sustain the Examiner's 35 U.S.C. § 103(a) of
independent claim 35, we note that claim 35 is directed to a method
comprising only two steps. The disputed recitations of claim 35 are part of
an extensive preamble detailing features of a mobile radio apparatus
operated by performing the two steps. In the event of further prosecution, or
before allowance of claim 35, the Examiner should ascertain whether the
disputed recitations are necessary to give the claimed method life, meaning,
and vitality. See Catalina Mktg. Inti, Inc. v. Coolsavings.com, Inc., 289 F.3d
801, 808 (Fed. Cir. 2002). If the disputed recitations are unnecessary to give
such life, meaning, and vitality, then the Examiner does not need to show
that the prior art teaches or suggests the disputed recitations to reject the
claimed method as obvious. Rather, the Examiner would only need to show
that the prior art renders obvious the method steps-and whatever preamble
recitations are necessary to give the claimed method life, meaning, and
vitality to the claimed method.
The Examiner should also ascertain whether claim 3 5, by reciting
both an apparatus and a method, fails to "apprise a person of ordinary skill in
the art of its scope," and thus raises issues of indefiniteness under
35 U.S.C. § 112, second paragraph. See IPXL Holdings, L.L.C. v.
Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005).
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Appeal2018-006919
Application 14/416,129
DECISION
We reverse the Examiner's decision rejecting claims 18--40.
REVERSED
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