Ex Parte Karabinis et al

Patent Trial and Appeal Board

Sep 24, 2014

10914515 (P.T.A.B. Sep. 24, 2014)

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.
10/914,515 08/09/2004 Peter D. Karabinis 9301-89 5796
20792 7590 09/25/2014
MYERS BIGEL SIBLEY & SAJOVEC
PO BOX 37428
RALEIGH, NC 27627
EXAMINER
PASIA, REDENTOR M
ART UNIT PAPER NUMBER
2474
MAIL DATE DELIVERY MODE
09/25/2014 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 PETER D. KARABINIS and SANTANU DUTTA
____________________

Appeal 2012-005130
Application 10/914,515
Technology Center 2400
____________________

Before MICHAEL J. STRAUSS, DANIEL N. FISHMAN, and
LINZY T. McCARTNEY, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-005130
Application 10/914,515
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1, 4, 7, 10, 14, 18, 22, and 26–32. Claims 2, 3, 5, 6, 8, 9, 11–13, 15–17, 19–
21, and 23–25 have been canceled. We have jurisdiction over the pending
claims under 35 U.S.C. § 6(b).
We affirm.

THE INVENTION
The claims are directed to wireless systems, methods and devices
employing forward- and/or return-link carriers having different numbers of
sub-band carriers. Abs. Claim 1, reproduced below, is representative of the
claimed subject matter:
1. A wireless communications system comprising:
a forward link carrier comprising a plurality of
OFDM/OFDMA forward link subcarriers comprising identical
forward link subcarrier bandwidth therebetween; and
a return link carrier comprising only a single return link
subcarrier comprising a return link subcarrier bandwidth that is
different than the forward link subcarrier bandwidth,
wherein the forward link carrier comprising the plurality
of OFDM/OFDMA forward link subcarriers and the return link
carrier comprising only the single return link subcarrier together
form a bidirectional communications link for one wireless user
device.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Frodigh US 5,726,978 Mar. 10, 1998
Walton US 2003/0128658 A1 July 10, 2003
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REJECTION1
The Examiner rejected claims 1, 4, 7, 10, 14, 18, 22, and 26–32 under
35 U.S.C. § 103(a) as being unpatentable over Walton and Frodigh. Ans. 5–
23.
APPELLANTS’ CONTENTION
“The mere existence of one or more frequency subchannels in Walton
et al.’s MIMO-OFDM system . . . does not disclose or suggest treating
forward and return links differently such that a plurality of forward link
subcarriers are provided but only a single return link subcarrier is provided.”
App. Br. 8.

ISSUE ON APPEAL
Based on Appellants’ arguments in the Appeal Brief (App. Br. 6–12)
and Reply Brief (Reply Br. 4–5), the issue presented on appeal is whether
the Examiner erred in finding Walton’s description of frequency subchannel
groups ranging in number between 1 ≤ NG ≤ NF teaches or suggests the
disputed limitations of a plurality of forward link subcarriers and a single
return link subcarrier.2

1 Appellants argue the rejection of independent claims 1, 4, 7, 10, 14, 18,
and 22 on the basis of claim 1 alone. App. Br. 12. Separate patentability is
not argued for dependent claims 26–32. Id. Therefore, based on Appellants’
arguments, we decide the appeal of claims 1, 4, 7, 10, 14, 18, 22, and 26–32
based on claim 1 alone. See 37 C.F.R. § 41.37(c)(1)(vii).
2 We note claim 1 recites “a return link carrier comprising only a single
return link subcarrier.” Although the “comprising” transition is considered
open ended and not limiting of additional elements (i.e., equivalent to
“including at least”), for purposes of this opinion we consider the limitation
restrictive of any additional elements to exclude additional return link
subcarriers beyond the recited single return link subcarrier.
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Application 10/914,515
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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken (Ans. 4–23) and
(2) the reasons set forth by the Examiner in the Examiner’s Answer in
response to Appellants’ Appeal Brief (Ans. 23–28) and concur with the
conclusions reached by the Examiner. We highlight the following for
emphasis.
Appellants contend “Walton et al.’s MIMO-OFDM system does not
disclose or suggest treating forward and return links differently such that a
plurality of forward link subcarriers are provided but only a single return
link sub carrier is provided.” App. Br. 7. Appellants argue there is no
reason provided by Walton to treat the forward link differently from the
return link in terms of the number of subcarriers. App. Br. 7–8. In support
of their contention Appellants direct attention to various portions of Walton
that “appear[] to describe downlink and uplink as having the same number
of subcarriers.” App. Br. 9.
The Examiner responds by finding Walton teaches “[t]he number of
subchannel group includes the range 1 ≤ NG ≤ NF.” Ans. 25. Because
Walton allows for different treatment of downlink and uplink configurations
based on system design and the efficient use of resources, the Examiner
finds the available transmission channels are allocated such that channels are
utilized by a proper set of one of more terminals in the MIMO-OFDM
system. Id. citing Walton ¶ 9. The Examiner concludes Walton teaches or
suggests treating the downlink and uplink differently including a
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“configuration of a bidirectional communications link includes a downlink
comprises of a plurality of subchannel groups, while the uplink comprises of
a single (i.e. 1) subchannel group.” Id. Addressing Appellants’ argument
Walton teaches downlinks and uplinks having the same rather than a
different number of subcarriers (App. Br. 9–12), the Examiner finds the cited
portions disclose various embodiments but Walton is not limited to these
embodiments. Ans. 27.
We agree with the Examiner. Appellants have provided insufficient
evidence or argument to persuade us Walton’s number of subchannel groups
in the range 1 ≤ NG ≤ NF, i.e., one or more, fails to teach or suggest both a
single subchannel group and a plurality of subchannel groups used for the
forward and return links. Furthermore, we agree with the Examiner Walton
allows for different downlink and uplink configurations based on system
design, i.e., as a matter of design choice. In particular, Walton teaches single
and plural (i.e., ≤ NF ) subchannel groups, depending on system design
factors.
Although we affirm the rejection based on the Examiner’s findings
and conclusions for the reasons supra, we note in passing there are only a
finite number of types of downlink and uplink configurations—a
configuration having one subchannel group and a configuration having more
than one subchannel group. Accordingly, the disputed return link carrier
comprising only a single return link subcarrier (when it might otherwise
include plural subcarriers) and a forward link carrier comprising plural
forward link subcarriers (when the alternative is one) is one of a finite
number of predicable (in the present case, four possible) configurations. We
further note a finite number of configurations or solutions within the skill
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and understanding of ordinarily skilled artisans can be indicative of
obviousness:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
For the reasons supra and in the absence of sufficient evidence or
argument in rebuttal to the Examiner’s findings and conclusions, we are
unpersuaded of Examiner error. Accordingly, we sustain the rejection of
independent claim 1 and, for the same reasons, independent claims 4, 7, 10,
14, 18, and 22 under 35 U.S.C. § 103(a) over Walton and Frodigh together
with the rejection of dependent claims 26–32 not separately argued.

CONCLUSION
The Examiner did not err in finding Walton’s description of frequency
subchannel groups ranging in number between 1 ≤ NG ≤ NF teaches or
suggests the disputed limitations of a plurality of forward link subcarriers
and a single return link subcarrier.

DECISION
The Examiner’s decision to reject claims 1, 4, 7, 10, 14, 18, 22, and
26–32 is affirmed.
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).

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AFFIRMED
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