CommScope Technologies LLC

Patent Trials and Appeals Board

Aug 25, 2021

2020003378 (P.T.A.B. Aug. 25, 2021)

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.
16/011,333 06/18/2018 Christopher Goodman Ranson 2677/100.1359US03 9134
135878 7590 08/25/2021
Fogg & Powers LLC/Commscope
4600 W 77th St
Suite 305
Minneapolis, MN 55435
EXAMINER
MOUTAOUAKIL, MOUNIR
ART UNIT PAPER NUMBER
2476
NOTIFICATION DATE DELIVERY MODE
08/25/2021 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):
docketing@fogglaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER GOODMAN RANSON, THOMAS KUMMETZ,
VAN E. HANSON, and KELD KNUT LANGE
Appeal 2020-003378
Application 16/011,333
Technology Center 2400
Before MAHSHID D. SAADAT, JOHNNY A. KUMAR, and
LARRY J. HUME, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–3, 6–10, 14–16, 18, and 19. The
Examiner indicates that claims 4, 5, 11–13, and 17 are objected to, but
would be allowable if rewritten in independent form. See Final Act. 8. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as CommScope
Technologies LLC. Appeal Br. 1.
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STATEMENT OF THE CASE2
The claimed subject matter is directed to a wideband remote unit for
distributed antenna system. See Spec. (Title). In particular, Appellant’s
disclosed embodiments and claimed invention “relate[] generally to
telecommunication systems and more particularly (although not necessarily
exclusively) to wideband remote units for distributed antenna systems.”
Spec. ¶ 2.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
Appeal (emphasis and formatting added to contested prior-art limitation):
1. A wideband remote unit of a digital antenna
system, the remote unit comprising:
a downlink path, wherein the wideband remote unit is
configured to wirelessly transmit a downlink RF signal received
from a base station via a unit of the distributive antenna system
in communication with the base station; and
a wideband uplink path that transmits in the uplink
direction to the unit of the distributive antenna system a signal
comprising a digital representation of an uplink RF signal
wirelessly received from a user by the wideband remote unit
and a digital representation of a leaked downlink RF signal,
wherein the leaked downlink RF signal includes signal
power from the downlink RF signal that has leaked into the
uplink path.

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Nov. 11, 2019); Reply Brief (“Reply Br.,” filed Apr. 1, 2020; Examiner’s
Answer (“Ans.,” mailed Feb. 4, 2020); Final Office Action (“Final Act.,”
mailed July 9, 2019); and the original Specification (“Spec.,” filed
June 18, 2018) (claiming benefit of US 61/979,948, filed Apr. 15, 2014).
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REFERENCES
The Examiner relies upon the following prior art as evidence:
Name Reference Date
Earls et al. (“Earls”) US 6,532,358 B1 Mar. 11, 2003
Masenten US 6, 704,349 B1 Mar. 9, 2004
Morrison et al. (“Morrison”) US 2012/0309328 A1 Dec. 6, 2012
Stewart et al. (“Stewart”) US 2012/0329523 A1 Dec. 27, 2012
Li et al. (“Li”) US 2013/0308693 A1 Nov. 21, 2013
REJECTIONS3
R1. Claims 1, 2, 6–9, and 18 stand rejected under 35 U.S.C. § 103
as being unpatentable over the combination of Stewart and Li. Final Act. 3.4
R2. Claims 3, 10, and 18 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the combination of Stewart, Li, and Earls. Final
Act. 4.
R3. Claims 14, 15, and 19 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the combination of Stewart, Li, and Morrison. Final
Act. 5.

3 We note the Examiner does not address dependent claim 20 by way of
rejection or objection, and Appellant does not separately argue or otherwise
acknowledge this claim which is not before us on appeal.
4 The Examiner omits claim 8 in the explicit statement of Rejection R1
(Final Act. 3), but addresses claim 8 in the detailed rejection. See Final
Act. 4.
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R4. Claim 16 stands rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Stewart, Li, and Masenten. Final
Act. 6.
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 3–12) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of obviousness
Rejection R1 of claims 1, 2, 6, 7–9, and 18 on the basis of representative
claim 1.
Remaining claims 3, 10, 14–16, 18, and 19 in Rejections R2 through
R4, not argued separately with specificity, stand or fall with the respective
independent claim from which they depend.5
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
We disagree with Appellant’s arguments with respect to claims 1–3,
6–10, 14–16, 18, and 19 and, unless otherwise noted, we incorporate by
reference herein and adopt as our own: (1) the findings and reasons set forth

5 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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by the Examiner in the action from which this appeal is taken, and (2) the
reasons and rebuttals set forth in the Examiner’s Answer in response to
Appellant’s arguments. We highlight and address specific findings and
arguments regarding claim 1 for emphasis as follows.
1. § 103 Rejection R1 of Claims 1, 2, 6–9, and 18
Issue 1
Appellant argues (Appeal Br. 5–8; Reply Br. 1–5) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Stewart and Li is in error. These contentions present us with
the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests “[a] wideband remote unit of a digital antenna system” that
includes, inter alia, the limitations of “a wideband uplink path that transmits
in the uplink direction to the unit of the distributive antenna system a signal
comprising a digital representation of an uplink RF signal wirelessly
received from a user by the wideband remote unit and a digital
representation of a leaked downlink RF signal,” as recited in claim 1?
Principles of Law
“[O]ne cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations of
references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). “The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art.” Id. at 425.
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In KSR, the Court stated “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill . . . . [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
Id. at 417.
Further, the relevant inquiry is whether the Examiner has set forth
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (cited with approval in KSR, 550 U.S. at 418).
Analysis
The Examiner finds the combination of Stewart and Li teach or
suggest all the limitations of claim 1 (see generally Final Act. 3–4), and
more specifically finds Stewart teaches the contested “wideband uplink path
that transmits in the uplink direction to the unit of the distributive antenna
system a signal” (Final Act. 3, citing Stewart ¶¶ 23, 31, 44, 49, 50, 52, 53),
and Li teaches or suggests that the uplink path transmits “a signal
comprising a digital representation of an uplink RF signal wirelessly
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received from a user by the wideband remote unit and a digital
representation of a leaked downlink RF signal.” Final Act. 4 (citing Li
¶¶ 55, 66, 75).
Appellant asserts “[i]ndependent claim 1 takes a counterintuitive
approach of addressing the problem of downlink signal leakage within a
DAS remote units by attempting to faithfully capture and transport within
the upstream signal path a desired uplink RF signal along with the undesired
high power ‘leaked downlink RF signal’ as opposed to attempting to
mitigate the leaked downlink RF signal as soon as possible to keep it out of
the upstream signal path.” Appeal Br. 6. “[T]he wideband uplink path
transmits from the remote unit in an upstream direction both ‘a digital
representation of an uplink RF signal wirelessly received from a user by the
wideband remote unit’ and ‘a digital representation of a leaked downlink RF
signal.’” Id.
Although the Examiner cites to Li for this limitation as indicated
above, Appellant further argues, “Stewart et al. makes no attempt to permit a
leaked downlink RF signal to be transmitted upstream from the wideband
remote unit. Instead, as shown in Figures 3 and 4, Stewart includes an RF
coupler 227 whose purpose is to intentionally extract a portion of the
downlink RF signal from the downlink signal path prior to the duplexer
230.” Appeal Br. 6. “Stewart does not teach or suggest transmitting in the
uplink direction to the unit of the distributive antenna system a signal
comprising a digital representation of a digital representation of a leaked
downlink RF signal.” Appeal Br. 7.
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With respect to the Examiner’s reliance upon Li, Appellant contends
that, based upon Li’s teaching
in paragraph [0055] that “a local oscillator leakage signal
couple from the transmitter 204 to the receiver 202”, the
reference is describing that leakage signal as occurring 1) from
an uplink path 203 into a downlink path 201, and 2) within a
master unit. Both of these characteristics are contrary to claim 1
is which a leaked downlink RF signal is leaked 1) from a
downlink path into an uplink path, and 2) within a remote unit.
The Examiner has failed to show that the calibration sub-system
108 in the master unit 102 of Li is a relevant teaching with
respect to teaching the elements of Applicant’s claim 1.
. . .
What is completely absent from Li, is any mention of its
“intentional leakage” being transmitted upstream from the
remote antenna unit 104 to the master unit 102 or upstream to
anywhere else.
. . .
In other words, the “controlled leakage signal” from module
432 is provided as an input into the processor 416 and used
exclusively within the remote antenna unit 105 for “automatic
nulling of local oscillator leakage and sideband image
components.” What is significant is to note that during
calibration, the receiving antenna 401 is disconnected by the
switch 502 so that the remote antenna unit 104 does not receive
any uplink RF signals wirelessly received from a user during
the calibration process.
Appeal Br. 7–8.
In response, the Examiner clarifies:
[C]laim 1 only recites “a wideband uplink path that transmits in
the uplink direction to the unit of the distributive antenna
system a signal comprising a digital representation of an uplink
RF signal wirelessly received from a user by the wideband
remote unit and a digital representation of a leaked
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downlink RF signal wherein the leaked downlink RF signal
includes signal power from the downlink RF signal that has
leaked into the uplink path’’. The claim language does not
clearly indicate neither a problem nor a solution to a problem.
The claim language only teaches an uplink path that comprises
an uplink signal and a leaked downlink signal that has leaked
into the uplink signal. Appellants arguments are directed to a
subject not claimed.
Ans. 4.
The Examiner reiterates:
[A]s indicated in the final office action Stewart discloses all the
limitations of the claimed invention with the exception of a
digital representation of a leaked downlink RF signal, wherein
the leaked downlink RF signal includes signal power from the
downlink RF signal that has leaked into the uplink path.
However, Li, from the same field of endeavor, teaches
transmitting leaked downlink signals over uplink path and the
leaked downlink signal has a power from a unit to a base
station.
Ans. 5.
We agree with the Examiner’s finding that the combination of Stewart
and Li teaches or suggests the disputed limitations of claim 1, particularly
because Li stands for the underlying generalized proposition that a digital
sample or representation of a high power signal in one path that interferes
with a different, lower power signal in another path may be used, through
processing, to compensate for the high power interference in the lower
signal power path.
We further agree with the Examiner because Appellant is arguing the
references separately when the rejection is based upon what the combination
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of references would have suggested to a person of ordinary skill in the art.
See Keller, 642 F.2d at 426.
Based upon the findings above, on this record, we are not persuaded
of error in the Examiner’s reliance on the cited prior art combination to teach
or suggest the disputed limitation of claim 1, nor do we find error in the
Examiner’s resulting legal conclusion of obviousness. Therefore, we sustain
the Examiner’s obviousness rejection of independent claim 1, and grouped
claims 2, 6–9, and 18 which fall therewith. See Claim Grouping, supra.
Alternative Claim Construction of Independent Claims 1 and 7
Alternatively, as a matter of claim construction that further supports
the obviousness rejection of the claims, we note remote unit (device)
claim 1, at its core, only requires (1) “a downlink path,” and (2) “a wideband
uplink path.” The remainder of the dispositive portion of claim 1 describes
the signal in the uplink path, i.e., “a signal comprising a digital
representation of an uplink RF signal wirelessly received from a user by the
wideband remote unit and a digital representation of a leaked downlink RF
signal, wherein the leaked downlink RF signal includes signal power from
the downlink RF signal that has leaked into the uplink path.” Claim 7 recites
similar non-functional description of the signal in the uplink path. We find
that the mere description of the signal in the uplink path does not impart any
particularized structure to any of the claim elements in claims 1 and 7.
Our reviewing court guides that the patentability of an apparatus claim
“depends on the claimed structure, not on the use or purpose of that
structure.” Catalina Marketing Int’l. Inc. v. Coolsavings.com, Inc., 289 F.3d
801, 809 (Fed. Cir. 2002) (citation omitted); see also Superior Industries,
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Inc. v. Masaba, Inc., 553 F. App’x. 986, 991 (Fed. Cir. 2014) (Rader, J.,
concurring) which guides:
“[A] system claim generally covers what the system is, not what
the system does. Hewlett-Packard Co. v. Bausch & Lomb Inc.,
909 F.2d 1464, 1468 (Fed. Cir. 1990); see also Roberts v. Ryer,
91 U.S. 150, 157 [] (1875) (‘The inventor of a machine is
entitled to the benefit of all the uses to which it can be put, no
matter whether he had conceived the idea of the use or not.’).
Thus, it is usually improper to construe non-functional claim
terms in system claims in a way that makes infringement or
validity turn on their function. Paragon Solutions, LLC v. Timex
Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009).”[6]
This reasoning is applicable to each of Appellant’s unit (apparatus)
claims 1, 2, and 6, and system (apparatus) claims 7–9 rejected under
Rejection R1 and we would also affirm the rejection of these claims under
this alternative claim construction.
2. § 103 Rejections R2–R4 of Claims 3, 10, 14–16, 18, and 19
In view of the lack of any substantive or separate arguments directed
to obviousness Rejections R2 through R4 of claims 3, 10, 14–16, 18, and 19
under § 103 (see Appeal Br. 10–12), we sustain the Examiner’s rejection of
these claims. Arguments not made are waived.7

6 Superior Industries is a recent non-precedential opinion of the Court of
Appeals for the Federal Circuit. However, we consider the concurring
opinion by former Chief Judge Rader as guiding because it cites precedential
authority in support.
7 Appellant merely argues the additionally cited Earls, Morrison, and
Masenten references do not overcome the alleged deficiencies of Stewart
and Li argued with respect to independent claims 1, 7, and 18. Appeal
Br. 10–12.
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REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 1–6) not in response to a shift in the Examiner’s position in
the Answer, arguments raised in a Reply Brief that were not raised in the
Appeal Brief or are not responsive to arguments raised in the Examiner’s
Answer will not be considered except for good cause (see 37 C.F.R.
§ 41.41(b)(2)), which Appellant has not shown.
CONCLUSIONS
We AFFIRM the Examiner’s rejections.
More specifically, Appellant has not persuasively argued that the
Examiner erred with respect to obviousness Rejections R1 through R4 of
claims 1–3, 6–10, 14–16, 18, and 19 under 35 U.S.C. § 103 over the cited
prior art combinations of record, and we sustain the rejections.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
References/
Basis Affirmed Reversed
1, 2, 6–9, 18 103 Stewart, Li. 1, 2, 6–9, 18
3, 10, 18 103 Stewart, Li, Earls 3, 10, 18
14, 15, 19 103 Stewart, Li, Morrison 14, 15, 19
16 103 Stewart, Li, Masenten 16
Overall
Outcome
1–3, 6–10,
14–16, 18, 19
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TIME PERIOD FOR RESPONSE
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). See 37
C.F.R. § 41.50(f).
AFFIRMED