Ex Parte Lavean

Patent Trial and Appeal Board

Nov 16, 2016

11130885 (P.T.A.B. Nov. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111130,885 05/17/2005
24374 7590 11/18/2016
VOLPE AND KOENIG, P.C.
DEPT. ICC
UNITED PLAZA
30 SOUTH 17TH STREET
PHILADELPHIA, PA 19103
FIRST NAMED INVENTOR
GilLavean
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.
I-2-0079.3US 3759
EXAMINER
NGUYEN, STEVEN HD
ART UNIT PAPER NUMBER
2414
NOTIFICATION DATE DELIVERY MODE
11/18/2016 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):
eoffice@volpe-koenig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GIL LA VEAN
Appeal2015-005526
Application 11/130,885 1
Technology Center 2400
Before LINZY T. McCARTNEY, JAMES W. DEJMEK, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 11, 12, 14, 16, and 17, which are all the claims pending
in this application. 2 We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 According to Appellant, the real party in interest is InterDigital
Technology Corporation. App. Br. 3.
2 Claims 1-10, 13, and 15 have been canceled. App. Br. 3.
Appeal2015-005526
Application 11/130,885
STATEMENT OF THE CASE
Introduction
Appellant's application relates to a system and method of using
orthogonal codes and knowledge of the distance between a mobile terminal
and a base station to adjust and align the phase of an information channel to
achieve orthogonality at the base station. Spec. i-f 5. Claim 11 is illustrative
of the subject matter on appeal and reads as follows:
11. A mobile station comprising:
circuitry configured to transmit a sequence;
the circuitry further configured, in response to the
transmitted sequence, to receive a timing adjustment; and
the circuitry further configured to transmit a first signal
and a second signal;
wherein the first signal has a transmission timing
adjusted in response to the received timing adjustment; wherein
the second signal includes a pilot signal and does not have a
transmission timing adjusted in response to the received timing
adjustment.
The Examiner's Rejections
Claims 11, 12, 14, 16, 17 stand rejected under 35 U.S.C. § 112 (pre-
AIA), first paragraph, as failing to comply with the written description
requirement. Ans. 2-3.
Claims 11, 12, 14, 16, 17 stand rejected under 35 U.S.C. § 112 (pre-
AIA), second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter. Ans. 3.
Claims 11, 12, 14, 16, 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Schilling (US 5,365,544; Nov. 15, 1994), Gilhousen et al.
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Application 11/130,885
(US 5,309,474; May 3, 1994), and Davidovici (US 5,627,855,; May 6,
1997). Ans. 3-5.
Claims 11, 12, 14, 16, 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Gilhousen and Odenwalder et al. (US 5,930,230; July 27,
1999). Ans. 5.
ANALYSIS
We have reviewed the Examiner's rejections in consideration of
Appellant's contentions and the evidence of record. Appellant persuades us
the Examiner fails to establish the claims are unpatentable.
Written Description
The Examiner finds the limitation "the second signal includes a pilot
signal and does not have a transmission timing adjusted in response to the
received timing adjustment" is not described in the Specification and,
therefore, constitutes new matter. Ans. 6; Final Act. 2. Appellant argues the
Examiner erred because the Specification teaches a second signal, such as a
user pilot, that is not adjusted by the receiving timing adjustment. App.
Br. 6 (citing Spec. i-fi-f 165, 178, 180). In particular, the Specification teaches
a user pilot slaved to the base station pilot, which indicates that there is no
timing adjustment for the user pilot. Id. (citing Spec. i-f 180). The Examiner
responds by reiterating the rejection without explaining how or why the cited
portions of the Specification fail to teach the "second signal" limitation.
Ans. 6.
Appellant has persuaded us of Examiner error. The Examiner has
failed to establish that the "second signal" limitation is not taught by the
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Specification because the Specification teaches a user pilot (the claimed
"second signal") that does not receive a timing adjustment. Accordingly, we
do not sustain the rejection of claim 11 under 35 U.S.C. § 112 (pre-AIA),
first paragraph, for failing to comply with the written description
requirement. We also do not sustain the written description rejection of
claims 12, 14, 16, and 17, which contain similar limitations and were
rejected for the same reasons. See Final Act. 2.
Indefiniteness
The Examiner finds the limitation "a sequence" is indefinite because
"it is unclear what it is constituted for." Final Act. 3. The Examiner
explains in the Answer that the Specification discloses the mobile unit
transmits two sequences, such as a random sequence and a synchronization
sequence, and therefore the limitation "a sequence" is indefinite. Ans. 6
(citing Spec. i120, i\.bstract).
Appellant argues the Examiner erred in finding "a sequence" as
recited in claim 11 is indefinite because an ordinarily skilled artisan would
understand the meaning of the claimed "sequence," and the Specification
teaches examples of a sequence, including a random sequence, a pseudo-
noise sequence, and a pseudo-random sequence. App. Br. 7 (citing Spec.
i1i139, 48).
Appellant has persuaded us of Examiner error. The Examiner finds "a
sequence" is indefinite because the Specification provides multiple examples
of potential sequences. Ans. 6. However, the Examiner has failed to
establish that an ordinarily skilled artisan would fail to understand the scope
of the claimed "sequence." We agree with Appellant that an ordinarily
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Application 11/130,885
skilled artisan would understand the plain meaning of the term and the
Specification provides examples of the claimed "sequence." Accordingly,
we do not sustain the indefiniteness rejection of claim 11 or claims 12, 14,
16, and 17, which contain similar limitations and were rejected for the same
reasons. See Final Act. 3.
Obviousness
Appellant argues the Examiner erred in rejecting claim 11 as
unpatentable over Schilling, Gilhousen, and Davidovici because an
ordinarily skilled artisan would not have been motivated to combine
Gilhousen with Schilling or Davidovici and, even if the combination were
made, the result would not satisfy the "wherein the second signal includes a
pilot signal and does not have a transmission timing adjusted in response to
the received timing adjustment" limitation. App. Br. 8-10; Reply Br. 6-8.
i\.ppellant argues an ordinarily skilled artisan \vould not have looked to
Gilhousen to modify the teachings of Schilling because Schilling teaches
data and pilot signals that are synchronized or, in other words, time aligned.
App. Br. 8. Gilhousen, on the other hand, teaches transmitting a voice signal
without the use of a pilot signal, stating "[i]f a pilot were used, it would
require significantly more power than the voice carrier." Gilhousen 27:28-
36. Gilhousen explains, "[t]his situation is clearly not desirable since overall
system capacity would be greatly reduced .... " Id. Gilhousen states
unequivocally that "a modulation capable of efficient demodulation without
a pilot signal must be used." Id.
Appellant has persuaded us the Examiner erred in finding an
ordinarily skilled artisan would have been motivated to combine Gilhousen
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Application 11/130,885
with the teachings of Schilling and Davidovici. As argued by Appellant,
Gilhousen teaches transmitting a pilot signal and voice signal is "clearly not
desirable" and a modulation without a pilot signal "must be used." Id. The
Examiner relies on this particular embodiment of Gilhousen for the teaching
of a timing adjustment on a voice signal. See Ans. 7 (citing Gilhousen 29:4-
33).
Moreover, the Examiner finds Gilhousen teaches "a method and
system for reducing interference in the uplink when the mobile transmits an
uplink pilot by adjusting timing error between the mobile and base station."
Ans. 7 (citing Gilhousen 29:4-33) (emphasis added). As noted above,
Gilhousen teaches an uplink pilot should not be used and, therefore, the
Examiner's finding that Gilhousen teaches transmitting an uplink pilot is
erroneous.
Accordingly, on this record, we are constrained to reverse the
Examiner's rejection of claim 11 as unpatentable over Schilling, Gilhousen,
and Davidovici. We are also constrained to reverse the rejection of claims
12, 14, 16, and 17, which contain similar limitations and were rejected for
the same reasons. See Final Act. 3-4.
We also do not sustain the rejection of claims 11, 12, 14, 16, and 17
under 35 U.S.C. § 103(a) as unpatentable over Gilhousen and Odenwalder
because, like Schilling, Odenwalder teaches transmitting time-aligned data
and pilot signals and, therefore, an ordinarily skilled artisan would not have
been motivated to combine Gilhousen and Odenwalder for the same reasons
discussed above.
DECISION
We reverse the decision of the Examiner to reject claims 11, 12, 14,
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Application 11/130,885
16, and 17 under 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to
comply with the written description requirement.
We reverse the decision of the Examiner to reject claims 11, 12, 14,
16, and 17 under 35 U.S.C. § 112 (pre-AIA), second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter.
We reverse the decision of the Examiner to reject claims 11, 12, 14,
16, and 17 under 35 U.S.C. § 103(a) as unpatentable over Schilling,
Gilhousen, and Davidovici. Ans. 3-5.
We reverse the decision of the Examiner to reject claims 11, 12, 14,
16, and 17 under 35 U.S.C. § 103(a) as unpatentable over Gilhousen and
Odenwalder.
REVERSED
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