Ex Parte Heiman et alDownload PDFPatent Trial and Appeal BoardMay 30, 201411518751 (P.T.A.B. May. 30, 2014) Copy Citation 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. 11/518,751 09/11/2006 Arie Heiman 3875.1190001 4289 26111 7590 06/02/2014 STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 NEW YORK AVENUE, N.W. WASHINGTON, DC 20005 EXAMINER AHN, SUNG S ART UNIT PAPER NUMBER 2631 MAIL DATE DELIVERY MODE 06/02/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ARIE HEIMAN and NELSON SOLLENBERGER ____________ Appeal 2011-007637 Application 11/518,751 Technology Center 2600 ____________ Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-007637 Application 11/518,751 2 STATEMENT OF THE CASE The Examiner finally rejected claims 1-30. Appellants appeal from the final rejection under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). We affirm and set forth new grounds of rejection under 35 U.S.C. § 112, second paragraph, for claims 1-15 and 17-30 using our authority under 37 C.F.R. § 41.50(b). INVENTION This invention relates to a “[m]ethod and system for an improved cellular interference cancelling diversity receiver.” (Title). Claim 1, reproduced below, is representative of the claimed subject matter: 1. A method for signal processing, the method comprising: performing by one or more processors and/or circuits integrated within a single chip: [a] receiving a plurality of individual path signals associated with a multipath cluster for each of a plurality of mobile terminals; [b] selecting at least a portion of said plurality of individual path signals for one or more of said plurality of mobile terminals; [c] generating one or more intermediate decoded bit sequences based on said selecting; [d] selecting, based on redundancy information, [d1] a bit sequence from said one or more intermediate decoded bit sequences and [d2] a decoded bit sequence produced by a combination of said selected at least a portion of said plurality of individual path signals; and [e] generating one or more decoded output bit sequences by a frame process based on said selected bit sequence. Appeal 2011-007637 Application 11/518,751 3 (Steps lettered and disputed limitation emphasized). REJECTIONS R1. Claim 16 stands rejected under 35 U.S.C. § 112, second paragraph as being indefinite. (App. Br. 6). See detailed discussion infra. R2. Claims 1-10 and 16-25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over U.S. Patent Application Publication No. 2004/0213360 A1 (“McElwain”), U.S. Patent Application Publication No. 2007/0060061 A1 (“Sampath”), and U.S. Patent Application Publication No. 2006/0281485 A1 (“Johnson”). (Ans. 4).1 R3. Claims 11-15 and 26-30 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over McElwain, Sampath, Johnson, and U.S. Patent No. 6,609,008 B1 (“Whang”). (Ans. 10, 12). GROUPING OF CLAIMS Based on Appellants’ arguments, we decide the appeal of § 103 rejection R2 of claims 1-10 and 16-25 on the basis of representative claim 1. See 37 C.F.R. § 41.37(c)(1)(vii)(2004). 2 1 Claim 15 is rejected under rejection R3 under §103. (Ans. 12). The heading for §103 rejection R2 on page 4 of the Answer incorrectly lists claim 15. We consider this as a typographical error by the Examiner. (Ans. 4). 2 Appellants filed a Notice of Appeal on April 21, 2010. The date of filing the Notice of Appeal determines which set of rules applies to an Ex Parte appeal. If a Notice of Appeal is filed prior to January 23, 2012, then the 2004 version of the Board Rules last published in the 2011 edition of Title 37 of the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to the appeal. See also MPEP Rev. 8, July 2010. Appeal 2011-007637 Application 11/518,751 4 We address § 103 rejection R3 of claims 11-15 and 26-30 separately, infra. ANALYSIS We disagree with Appellants’ contentions regarding the Examiner’s § 103 rejections of the claims. Regarding § 103 rejections R2 and R3, we adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons set forth by the Examiner in the Answer in response to arguments made in Appellants’ Appeal Brief. (Ans. 13-24). We address the §112, second paragraph rejection R1 of independent claim 16 separately below. R1. 35 U.S.C. §112, second paragraph In the Final Office action (mailed January 21, 2010) the Examiner rejected claims 1 and 15 under §112, second paragraph, as being indefinite. (Final Office Action 2). However, the rejection of claim 15 appears to be a typographical error as the Examiner refers to commensurate language recited in independent claims 1 and 16 (instead of 15). (Id.) In the Answer (13), the Examiner withdrew the §112, second paragraph, rejection of independent claim 1, but did not withdraw the rejection of claim 16 under §112, second paragraph. (Ans. 4). The Examiner repeats the typographical error on page 4 of the Answer, incorrectly referring to dependent claim 15 instead of independent claim 16. The issue of which claims stand rejected on appeal under § 112, second paragraph is further confused on page 16 of the Answer, where the Examiner indicates a suggested amendment that would overcome the § 112, second paragraph, rejection of claims 1 and 16: Appeal 2011-007637 Application 11/518,751 5 To overcome the rejection, the suggested amendments for claims 1 and 16 would be either "selecting, based on redundancy information, a bit sequence from said one or more intermediate decoded bit sequences, or a decoded bit sequence produced by a combination of said selected at least a portion of said plurality of individual path signals; and" or "selecting, based on redundancy information, a bit sequence from either said one or more intermediate decoded bit sequences or a decoded bit sequence produced by a combination of said selected at least a portion of said plurality of individual path signals; and". (Ans. 16).3 Appellants filed an after-final amendment to overcome the §112, second paragraph, rejection on March 22, 2010. The Examiner indicated in an Advisory Action (mailed April 8, 2010) that “[f]or purposes of appeal, the proposed amendment would not be entered.” 4 Therefore, on this record, we consider the §112, second paragraph rejection of independent claim 16 to be before us on appeal and the rejection of claim 1 under § 112, second paragraph to have been withdrawn by the Examiner. (See Ans. 4, 13). Independent claim 16 recites in pertinent part: said one or more circuits enable selection, based on redundancy information, of a bit sequence from said one or more intermediate decoded bit sequences and a decoded bit sequence 3 Regarding Appellants’ request (App. Br. 9) to enter an amendment after final, we note this is a petitionable matter not within the jurisdiction of the Board. Appellants may petition to the Director under 37 C.F.R. § 1.181. See 37 C.F.R. § 1.127; See Also MPEP § 1002.02. 4 In future appeals, we urge the participants in the appeal conference to closely review the record to ensure it is clear exactly which claims stand rejected on appeal. The record below is confusing for Appellants and the Board. Appeal 2011-007637 Application 11/518,751 6 produced by a combination of said selected at least a portion of said plurality of individual path signals; (Emphasis added). See commensurate language recited in independent claim 1: [d] selecting, based on redundancy information, a bit sequence from said one or more intermediate decoded bit sequences and a decoded bit sequence produced by a combination of said selected at least a portion of said plurality of individual path signals; (Emphasis added). Appellants contend: Properly construed, this limitation merely requires that a given bit sequence is selected from either (1) one or more intermediate decoded bit sequences or (2) a decoded bit sequence produced by a combination of said selected at least a portion of said plurality of individual path signals. This construction is consistent with and supported by the specification. (See, e.g., Application, ¶¶ 109-112 and Fig. 9, steps 912-924.) Nevertheless, the Examiner contends that, as presently written, “the limitation is interpreted as ‘selecting, based on redundancy information, (1) a bit sequence from said one or more intermediate decoded bit sequences and (2) a decoded bit sequence produced by a combination of said selected at least a portion of said plurality of individual path signals.’” The Examiner’s interpretation is incorrect because it is inconsistent with how a person of ordinary skill in the art would interpret this limitation in light of the specification. (Reply Br. 3, emphasis and underline added). We are not persuaded by Appellants’ contentions. We conclude the aforementioned claim 16 limitation and the commensurate claim 1 limitation [d] are each amenable to multiple different claim constructions, under a broad but reasonable construction. (Ans. 14-15). “[I]f a claim is amenable to two or more plausible claim constructions, the USPTO is justified in Appeal 2011-007637 Application 11/518,751 7 requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim . . . indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential).5 Here, we conclude claim 1 limitation [d] may be broadly but reasonably read in both: (1) the manner urged by Appellants (App. Br. 6-7) and (2), the manner interpreted by the Examiner. (Ans. 14-15). Independent claim 16 recites the limitation in commensurate form, as indicated above. For these reasons, on this record, we are not persuaded the Examiner erred. Therefore, we sustain the Examiner’s rejection R1 under § 112, second paragraph, of independent claim 16 (not withdrawn by the Examiner in the Answer). Because independent claim 1 recites commensurate language, we set forth new grounds of rejection under 35 U.S.C. § 112, second paragraph, for claim 1, and dependent claims 2-15 and 16-30 using our authority under 37 C.F.R. § 41.50(b). R2. Regarding limitations [d] and [e] of claim 1, Appellants contend: [C]laim 1 requires that such selection occur before decoded bit sequences are generated, i.e., before decoding. . . . Sampath, on the other hand, only discloses "selecting based on redundancy information" after decoding. [] Sampath discloses . . . [stream selection] after decoding, in which stream selection is based on a validity check (see Fig. 3B). Hence, although Sampath may disclose stream selection based on validity checking, such selection only occurs after decoding. 5 See also In re Packard, 2013-1204, WL 1775996 at *15 (Fed. Cir. May 6, 2014), (J. Plager concurring)(“ In my view (and that of the per curiam court), it is within the authority of the USPTO to so interpret the applicable standard”). Appeal 2011-007637 Application 11/518,751 8 (Emphasis added; Reply Br. 8-9). Appellants’ contentions are not persuasive. First, Appellants’ contention that Sampath alone does not teach or suggest the claim 1 [d] selecting step and then the [e] generating step is not persuasive because, for limitation [e] (the generating step), the Examiner relied upon the combination of McElwain, Sampath, and Johnson, not Sampath alone. (Ans. 5-7). Second, the Examiner finds Sampath’s decoding would have taught or suggested limitation [c] (“intermediate decoded bit sequences”), and not [e] as Appellants contend. (Ans. 6). Moreover, the Examiner finds, and we agree, Sampath teaches or suggests limitation [d] selecting based on the CRC-based validity check of decoded bit sequences in Fig. 3b. (Ans. 19; Sampath ¶[0045]). Appellants do not rebut these findings by the Examiner. Further, Appellants’ contention claim 1 requires step [d] “selecting, based on redundancy information” to be performed “before decoding” is not commensurate with the scope of claim 1. First, claim 1 does not preclude decoding before “selecting” step [d]. Specifically, step [c] “generating one or more intermediate decoded bit sequences . . .” (i.e., decoding) occurs before “selecting” step [d], as recited in claim 1. (Emphasis added; Ans. 5). Second, claim 1 step [e] does not recite “decoding” but recites “generating one or more decoded output bit sequences…. ” Our reviewing court guides: “although the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments. . . . [C]laims may embrace ‘different subject matter than is illustrated in the specific embodiments in the specification.’” Phillips v. AWH Corp., 415 F.3d 1303, Appeal 2011-007637 Application 11/518,751 9 1323 (Fed. Cir. 2005) (en banc) (citations omitted). Moreover, because “applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted). For these reasons, on this record, we are not persuaded the Examiner erred. Therefore, we sustain § 103 rejection R2 of representative claim 1 and clams 2-10 and 16-25, which fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii)(2004). R3. Appellants urge that claims 11-15 and 26-30 are patentable for the same reasons previously advanced regarding claim 1. (App. Br. 14-17). However, we are not persuaded the Examiner erred regarding rejection R3 of claims 11-15 and 26-30 for the same reasons given above regarding claim 1. Therefore, we sustain the § 103 rejection R3 of dependent claims 11-15 and 26-30. DECISION We affirm the Examiner’s rejection R1 of claim 16 under §112, second paragraph. We affirm the Examiner’s rejections R2 and R3 of claims 1-30 under §103. We enter a new ground of rejection against claims 1-15 and 17-30 under 35 U.S.C. § 112, second paragraph. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial Appeal 2011-007637 Application 11/518,751 10 review.” 37 C.F.R. § 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 prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. No time for taking any action connected with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED 37 C.F.R. § 41.50(b) rwk Copy with citationCopy as parenthetical citation