Ex Parte Flood et al

Patent Trial and Appeal Board

Oct 19, 2017

14270949 (P.T.A.B. Oct. 19, 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.
14/270,949 05/06/2014 Stephen Paul Flood 899.405US1 2390
140905 7590 10/23/2017
Schwegman Lundberg & Woessner / Starkey
P.O. Box 2938
Minneapolis, MN 55402
EXAMINER
SHAH, TANMAY K
ART UNIT PAPER NUMBER
2632
NOTIFICATION DATE DELIVERY MODE
10/23/2017 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):
uspto@slwip.com
slw@blackhillsip.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN PAUL FLOOD and JEFFREY PAUL SOLUM
Appeal 2017-004571
Application 14/270,949
Technology Center 2600
Before JOHN A. JEFFERY, BRUCE R. WINSOR, and
JUSTIN BUSCH, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1—23 which constitute all the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and institute new grounds of rejections within the
provisions of 37 C.F.R. § 41.50(b) (2015).
1 The real party in interest identified by Appellants is Starkey Laboratories,
Inc. App. Br. 2.
Appeal 2017-004571
Application 14/270,949
STATEMENT OF THE CASE
The Invention
Appellants’ disclosed invention “relates generally to wireless
communication systems and more particularly to methods and apparatus for
identifying desirable channels for wireless communication.” Spec. 11.
Claims 1 and 13, which are illustrative, read as follows:
1. A system, comprising:
a first device and a second device configured to
communicate over a selected wireless communication channel
selected from a band of channels or over a selected set of
channels used in an adaptive frequency hopping scheme;
the first device configured to transmit a probe signal that
has a plurality of frequencies contained within the band of
channels;
the second device configured to determine a signal
strength of the probe signal for each of a plurality of potential
communication channels within the band of channels; and
the first and second devices configured to switch to
another wireless communication channel or set of channels based
at least in part on the signal strength of the probe signal for each
of a plurality of potential wireless communication channels.
13. A method, comprising:
communicating over a selected wireless communication
channel selected from a band of channels;
transmitting a probe signal that has a plurality of
frequencies contained within the band of channels;
determining a signal strength for each of a plurality of
potential wireless communication channels within the band of
channels; and
switching to another wireless communication channel
based at least in part on a carrier signal (C) strength for the probe
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Application 14/270,949
signal for each of a plurality of potential wireless communication
channels.
The Examiner relies on the following prior art in rejecting the claims:
Paul et al. US 4,780,885 Oct. 25, 1988
Todd US 6,002,672 Dec. 14, 1999
Olson et al. US 2007/0197206 Al Aug. 23, 2007
Kyle et al. US 2008/0180273 Al July 31,2008
Solum et al. US 2011/0249842 Al Oct. 13,2011
Huang et al. US 2014/0355457 Al Dec. 4, 2014
Claims 1, 4, 6, 7, 9, 13, 16, 19, 20, and 22 stand rejected under
35 U.S.C. § 102(a)(2)2 as being anticipated by Kyle. Final Act. 2—5.3
Claims 2, 3, 14, and 15 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kyle and Olson. See Final Act. 6—8.
Claims 5, 17, and 18 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kyle and Paul. See Final Act. 8—9.4
2 All rejections are under the provisions of 35 U.S.C. in effect after the
effective date of the Feahy- Smith America Invents Act of 2011. Final
Act. 2.
3 In the header for the rejection under 35 U.S.C. § 102(a)(2), the Examiner
mistakenly omits claims 4, 6, 7, 9, 13, 16, 19, 20, and 22 that otherwise
appear in the body of the rejection (see Final Act. 2—5). We treat the
Examiner’s error as typographical or ministerial.
4 In the headers for the rejections of claims 5, 8, 10-12, 17, 18, 21, and 23
under 35 U.S.C. § 103, the Examiner mistakenly includes Olson (see Final
Act. 8—12). We treat the Examiner’s error as typographical or ministerial.
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Application 14/270,949
Claims 8 and 21 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kyle and Todd. See Final Act. 9—10.
Claims 10 and 23 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kyle and Haung. See Final Act. 10-11.
Claims 11 and 12 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kyle and Solum. See Final Act. 11—12.
Rather than repeat the arguments here, we refer to (1) the Briefs
(“App. Br.” filed Sept. 1, 2016; “Reply Br.” filed Jan. 25, 2017) and the
Specification (“Spec.” filed May 6, 2014) for the positions of Appellants;
and (2) the Final Office Action (“Final Act.” mailed Dec. 16, 2015), the
Advisory Action (“Advisory Act.” Mailed Mar. 24, 2016), and Examiner’s
Answer (“Ans.” mailed Nov. 30, 2016) for the reasoning, findings, and
conclusions of the Examiner.
ISSUE
The dispositive issue5 presented by Appellants’ arguments is as
follows: Under § 102(a)(2), does the Examiner err in relying upon multiple
embodiments in Kyle to describe the limitations of claim 1 ?
ANALYSIS
The Examiner rejected independent claims 1 and 13 under 35 U.S.C.
§ 102(a)(2) as being anticipated by Kyle. Final Act. 2-4; Ans. 3—5.
Appellants argue the Examiner improperly relies upon multiple mutually
5 Appellants’ arguments present additional issues. Because the identified
issue is dispositive of the appeal, we do not reach the additional issues in
considering the rejections before us on appeal.
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Application 14/270,949
exclusive embodiments in Kyle to describe the limitations of claim 1.
See App. Br. 14. We agree with Appellants for the reasons stated by
Appellants.
In an anticipation rejection, “it is not enough that the prior art
reference . . . includes multiple, distinct teachings that [an ordinary] artisan
might somehow combine to achieve the claimed invention.” Net MoneyIN,
Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Rather, the
reference must “clearly and unequivocally disclose the claimed [invention]
or direct those skilled in the art to the [invention] without any need for
picking, choosing, and combining various disclosures not directly related to
each other by the teachings of the cited reference.” Id. (quoting In re Arkley,
455 F.2d 586, 587 (CCPA 1972)).
In addition to Kyle’s Background section (Kyle ^fl[ 2—5, 12, 22—27;
Figure 2), the Examiner relies on two separate embodiments of Kyle—the
first relied-on embodiment being directed to determining a usable carrier
frequency {id. ^fl[ 14, 42—64; Fig. 4) (hereinafter “Kyle’s first embodiment”);
the second relied-on embodiment being directed to determining a preferred
carrier frequency {id. ^fl[ 15, 65—68; Fig. 5) (hereinafter “Kyle’s second
embodiment”). See Final Act. 2-A (citing Kyle ^fl[ 3—4, 7, 29, 42, 47, 56, 66,
78, 82; Fig. 2; claims 7, 8); see also Ans. 3—5 (citing Kyle ^fl[ 43—64, 66;
Figs. 2, 4, 5). The Examiner states that “a rejection is made in light of the
entire reference cited by the [Ejxaminer.” Ans. 3—5, 9; see also Advisory
Act. 3, mailed Mar. 24, 2016. However, although “[s]uch picking and
choosing [among embodiments disclosed in a reference] may be entirely
proper in the making of a 103, obviousness rejection ... it has no place in
the making of a 102, anticipation rejection.” Arkley, 455 F.2d at 587—88.
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Application 14/270,949
Accordingly, the Examiner’s reference to the disparate features within
Kyle’s mutually exclusive embodiments falls short of proving that such
features are necessarily used together. Therefore, the Examiner fails to
demonstrate that “each and every element as set forth in the claim is found,
either expressly or inherently described, in a single prior art reference,”
Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir.
1987), “in as complete detail as is contained in the . . . claim,” Richardson v.
Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989), and “arranged as in
the claim under review,” In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). It
follows that the Examiner’s finding that Kyle anticipates independent claims
1 and 13, which was rejected on substantially the same basis as claim 1
(Final Act. 4), is based on erroneous analysis. Accordingly, we do not
sustain the rejections of claims 1 and 13 and of claims 2—12 and 14—23,
which depend from claims 1 and 13, respectively (see In re Fine, 837 F.2d
1071, 1076 (Fed. Cir. 1988) (“Dependent claims are nonobvious under
section 103 if the independent claims from which they depend are
nonobvious.”)).
NEW GROUND OF REJECTION UNDER 35 U.S.C. § 102
We enter a new ground of rejection of claims 1 and 13 under
35 U.S.C. § 102(a)(2) as being anticipated by Kyle’s second embodiment
pursuant to our authority under 37 C.F.R. § 41.50(b).
Claims 1 and 13
Kyle is generally directed to detecting a carrier frequency in a
downhole wireless telemetry system. Kyle, Abstract. Kyle’s Figure 5 is
illustrative and reproduced below:
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Appeal 2017-004571
Application 14/270,949
JOEL
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transom? b
m
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mmcimMm
SiCftfi. TO
DflERMBC
C4RRB?
fREQUENCT
65
(
A1TOWPT TO
DECODE-MESSAGE
AT DETERISNED
FREQUENCT
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TRANSMIT/fCCEftt
FREQUENCY
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t
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FIG. 5
Figure 5 of Kyle illustrates a method (100) for determining a preferred
carrier frequency between transceivers A and B. Kyle 15, 65—68.
Looking first to claim 1, we map the recited first device to Kyle’s
“transceiver B” and the recited second device to Kyle’s “transceiver A.”
Kyle Fig. 5. As illustrated in Figure 5 of Kyle, transceiver A transmits
“ping” commands at known incremented carrier frequencies across a
predetermined range of carrier frequencies to transceiver B and transceiver
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Application 14/270,949
B transmits responses to the “ping” commands when they are successfully
decoded across the received carrier frequencies. Id. 1 65.
We construe the phrase “probe signal” in claim 1. Appellants’
Specification defines a probe signal so as to limit its interpretation to a signal
consisting of multiple frequencies. See Spec. ]Hf 7, 8, 36—38. However,
Appellants’ Specification does not define temporal characteristics of the
probe signal so as to limit its interpretation. To be sure, the Specification
describes “the probe signal may be a pulse” {id. 136 (emphasis added)) or
“the probe signal may be a ‘chirp signal’” {id. 139 (emphasis added); see
also Fig. 8A). As known in the art, the term “pulse” is defined as “[a] wave
that departs from an initial level for a limited duration of time and ultimately
returns to the original level.” The Authoritative Dictionary of IEEE
Standards Terms 886 (7th ed. 2000). Although the Specification states
that a probe signal “may” be a pulse or a chirp signal (note the use of
permissive language), we find nothing in the claim or the Specification that
precludes the probe signal from being a series of pulses each at one of a
plurality of frequencies. Furthermore, claim 1 uses the transition term
“comprising” and is presumptively open-ended. Gillette Co. v. Energizer
Holdings Inc., 405 F.3d 1367, 1371 (Fed. Cir. 2005). “[CJourts ha[ve]
repeatedly emphasized that an indefinite article ‘a’ or ‘an’ in patent parlance
carries the meaning of ‘one or more’ in open-ended claims containing the
transitional phrase ‘comprising.’” KCJ Corp. v. Kinetic Concepts, Inc., 223
F.3d 1351, 1356 (Fed. Cir. 2000); see also In re Varma, 816 F.3d 1352,
1362—63 (Fed. Cir. 2016). On the other hand, “[w]hen the claim language
and specification indicate that ‘a’ means one and only one, it is appropriate
to construe it as such even in the content of an open-ended ‘comprising’
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Application 14/270,949
claim.” Harari v. Lee, 656 F.3d 1331, 1341 (Fed. Cir. 2011). We find no
such indication here. Therefore, under its broadest reasonable interpretation
consistent with Appellants’ Specification, a “probe signal” encompasses a
plurality of pulses having multiple frequencies over a limited duration of
time.
A “band” is defined as “a contiguous range of frequencies used for a
particular purpose.” Microsoft Computer Dictionary 50 (5th ed. 2002).
A “channel” is defined as “a medium for transferring information.” Id. at
94. We find Kyle’s second embodiment (Kyle 15, 65—68; Fig. 5)
discloses a well system (10), comprising: a transceiver B (the claimed “first
device”) and a transceiver A (the claimed “second device”) configured to
communicate over a selected medium (the claimed “wireless communication
channel”) selected from a contiguous range of frequencies (the claimed
“band of channels”).
As further shown in Figure 5 of Kyle, upon receiving each ping
command, transceiver B analyzes the ping command to determine the carrier
frequency (step 66), and transmits a response to transceiver A at the
determined frequency (step 74) if the signal is successfully decoded (step
68). To be sure, Kyle discloses that “[t]he carrier frequency on which the
response message is modulated could be different from the carrier frequency
(either initial or incremented) on which the successfully decoded message
was modulated” (Kyle 1 53 (emphasis added)), however, Figure 5 discloses
that transceiver B’s response is normally modulated on the same carrier
frequency on which the successfully decoded message was modulated from
transceiver A (compare id. Fig. 5, item 66 (“determine carrier frequency”),
with id. items 68, 74 (“determined frequency”)). Thus, Kyle’s second
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Application 14/270,949
embodiment (id. Tflf 15, 65—68; Fig. 5) discloses that transceiver B is
configured to transmit a plurality of responses over time to transceiver A,
each modulated on the same carrier frequency on which the successfully
decoded message was modulated, that has a plurality of frequencies
contained within the band of channels. Therefore we find that Kyle’s
responses sent from transceiver B to transceiver A are encompassed by the
broadest reasonable interpretation, consistent with the Specification, of the
recited “probe signal,” as discussed above.
Figure 5 of Kyle further illustrates that after transmission of the
predetermined range of carrier frequencies is completed, transceiver A
evaluates the responses in step (102) by considering characteristics including
signal power level and signal to noise ratio of each response. Kyle 1 66.
“Based on this evaluation, a preferred carrier frequency may be selected” at
step (80). Id. 1 67. Thus, Kyle’s second embodiment (id. Tflf 15, 65—68; Fig.
5) further discloses that transceiver A is configured to determine a signal
power level and signal to noise ratio (the recited “signal strength”) of the
plurality of responses for each of a plurality of potential communication
channels within the band of channels; and that transceivers A and B are
configured to switch to another wireless communication channel or set of
channels based at least in part on the signal power level and signal to noise
ratio of the plurality of responses for each of a plurality of potential wireless
communication channels.
Accordingly, regarding claim 1, and, for substantially the same
reasons, claim 13, we find Kyle’s second embodiment discloses “each and
every element as set forth in the claim,” Verdegaal, 814 F.2d at 631, “in as
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Application 14/270,949
complete detail as is contained in the . . . claim,” Richardson, 868 F.2d at
1236, “arranged as in the claim,” Bond, 910 F.2d at 832.
Dependent Claims
We have entered new grounds of rejection for independent claims 1
and 13. We leave to the Examiner to consider the patentability of dependent
claims 2—12 and 14—23 in light of our findings and conclusions supra
regarding claims 1 and 13. The fact that we did not enter new grounds of
rejection for the remaining claims should not be construed to mean that we
consider any of claims 2—12 and 14^23 to be patentable.
DECISION
The Examiner’s decision to reject claims 1—23 is reversed.
We enter new grounds of rejections for claims 1 and 13 under 35
U.S.C. § 102(a)(2) as being anticipated by Kyle.
This decision contains new grounds of rejections pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.”
Section 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be remanded
to the examiner. . . .
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Application 14/270,949
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record.
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). See 37 C.F.R.
§§ 41.50(f), 41.52(b).
REVERSED
37 C.F.R, $ 41.50(b)
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