Ex Parte 7027418 et al

Patent Trial and Appeal Board

Sep 11, 2017

95002108 (P.T.A.B. Sep. 11, 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.
95/002,108 08/29/2012 7027418 52637-0027 8175
29989 7590 09/11/2017
HICKMAN PALERMO BECKER BINGHAM LLP
1 ALMADEN BOULEVARD
FLOOR 12
SAN JOSE, CA 95113
EXAMINER
POKRZYWA, JOSEPH R
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/11/2017 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 TRADEMARKOFFICE
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.
95/000,648 10/27/2011 7027418 52637-0027 7148
29989 7590 09/11/2017
HICKMAN PALERMO BECKER BINGHAM LLP
1 ALMADEN BOULEVARD
FLOOR 12
SAN JOSE, CA 95113
EXAMINER
POKRZYWA, JOSEPH R
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/11/2017 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
____________

CSR TECHNOLOGY INC. & MOTOROLA MOBILITY, LLC
Requesters and Respondents

v.

BANDSPEED, INC.
Patent Owner and Appellant
____________

Appeal 2017-010093
Inter partes Reexamination Control 95/000,648 & 95/002,1081
United States Patent 7,027,418 B2
Technology Center 3900
____________

Before JAMES T. MOORE, JOHN A. JEFFERY, and
PATRICK M. BOUCHER, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

1 These two reexamination proceedings were merged on January 10, 2013.
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DECISION ON APPEAL
Patent Owner appeals under 35 U.S.C. §§ 134 and 315 the Examiner’s
decision to reject claims 2–18, 20–24, 28–78, 83–106, 108–110, 114–122,
125–434, 436–591, and 593–598. App. Br. 1.2 Claims 1, 19, 25–27, 79–82,
107, 111–113, 435, and 592 were cancelled, and claims 123 and 124 are not
subject to re-examination.3 App. Br. 4. We have jurisdiction under 35
U.S.C. §§ 134 and 315. We affirm-in-part.

STATEMENT OF THE CASE
This proceeding arose from a first request for inter partes
reexamination filed on behalf of Requester, CSR Technology, Inc., on
October 27, 2011, of United States Patent 7,027,418 (“the ’418 patent”),
issued to Gan et al. on April 11, 2006. This proceeding was assigned
Control No. 95/000,648.
A second request for inter partes reexamination was filed on behalf of
another Requester, Motorola Mobility LLC, on August 29, 2012, and was
assigned Control No. 95/002,108. These two proceedings were merged on
January 10, 2013.

2 Throughout this opinion, we refer to (1) the Right of Appeal Notice mailed
May 6, 2015 (“RAN”); (2) Patent Owner’s “Alternative Corrected” Appeal
Brief filed May 12, 2016 (“App. Br.”) that was entered via a Petition
Decision mailed September 23, 2016; (3) the Examiner’s Answer mailed
April 5, 2017 (“Ans.”) (incorporating the RAN by reference); and (4) Patent
Owner’s Rebuttal Brief filed May 3, 2017 (“Reb. Br.”). Requesters did not
file briefs in this appeal.
3 Although the Examiner incorrectly indicates that claims 123 and 124 were
cancelled (RAN 1), they are nevertheless not subject to reexamination as
Patent Owner indicates. App. Br. 4 n.2.
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The ’418 patent describes selecting sets of communications channels
based on channel performance to adaptively avoid channels with poor
performance. To this end, a set of channels is selected based on the results
of performance testing and specified criteria. A participant then generates
data identifying the selected set of channels, and provides that data to other
participants on a network. If this set of channels performs poorly, then the
participant selects another set of channels based on additional performance
testing. See generally Abstract. Claims 2, 14, and 43 are illustrative of the
invention and reproduced below:
2. A method for selecting communications channels for a
communications system, the method comprising the computer-implemented
steps of:
selecting, based upon performance of a plurality of communications
channels at a first time and channel selection criteria, a first set of
two or more communications channels from the plurality of
communications channels, wherein the channel selection criteria
specifies that for a particular communications channel to be
selected, the particular communications channel (a) receives a
specified number of affirmative votes to use the particular
communications channel from a plurality of participants and (b)
does not receive a negative vote from a particular participant to
not use the particular communications channel;
selecting, based upon performance of the plurality of communications
channels at a second time that is later than the first time and the
channel selection criteria, a second set of two or more
communications channels from the plurality of communications
channels;
wherein the communications system is a frequency hopping
communications system and the plurality of communications
channels correspond to a set of frequencies to be used based on
a hopping sequence according to a frequency hopping protocol;
and
wherein at each hop in the hopping sequence, only one
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communications channel is used for communications between a
pair of participants.

14. A method for selecting communications channels for a frequency
hopping communications system, the method comprising the computer-
implemented steps of:
selecting, based upon performance of a plurality of communications
channels at a first time and channel selection criteria, a first set of
two or more communications channels from the plurality of
communications channels, wherein the plurality of
communications channels correspond to a set of frequencies to be
used based on a hopping sequence according to a frequency
hopping protocol, and wherein at each hop in the hopping
sequence, only one communications channel is used for
communications between a pair of participants;
determining, based upon performance of the first set of two or more
communications channels at a second time that is later than the
first time, a number of communications channels from the first
set of two or more communications channels that satisfy the
channel selection criteria; and
if the number of communications channels from the first set of two or
more communications channels that satisfy the channel selection
criteria at the second time is less than a specified number, then
selecting, based upon the performance of the plurality of
communications channels at a third time that is later than the
second time and the channel selection criteria, a second set of
two or more communication channels from the plurality of
communications channels in the frequency hopping
communications system.

43. A communications device for use in a network of devises,
comprising: a memory containing identification data that identifies a
first a first set of two or more communications channels from a
plurality of communications channels, wherein channel
performance of the first set of two or more communications
channels and at least one performance criterion are used to
select the first set of two or more communications channels;
a transceiver that is communicatively coupled to the memory
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and that is configured to transmit and receive, based on the
identification data, over the first set of two or more
communications channels, according to a frequency hopping
protocol;
a hop selection mechanism configured to output channel identification
identifying a channel of the plurality communications channels;
a processor that is communicatively coupled to the memory, wherein
the memory includes one or more sequences of instructions
which, when executed by the processor, cause the processor to:
determine whether the channel identification information output
by the hop selection mechanism identifies a channel of
plurality of communications channels that is not in the first
set of two or more communications channels; and
in response to determining that the channel identification
information identifies a channel of the plurality of
communications channels that is not in the first set of two or
more communications channels, select a channel from the
first set of two or more communications channels to use for
frequency hopping communications in place of the channel
identified by the channel identification information;
wherein the plurality of communications channels correspond to a
set of frequencies to be used based on a hopping sequence
according to the frequency hopping protocol; and
wherein at each hop in the hopping sequence, only one
communications channel is used for communications between a
pair of participants.

RELATED PROCEEDINGS
This appeal is said to be related to various proceedings. First, Patent
Owner informs us of six cases in the U.S. District for the Western District of
Texas involving the ’418 patent and three related patents, namely U.S.
Patents 7,477,624, 7,903,608, and 8,542,643. App. Br. 2–3.
Five of those cases have concluded. Id.
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Patent Owner also informs us of nine inter partes reviews involving
the three related patents, namely (1) IPR2015-00237; (2) IPR2015-00314;
(3) IPR2015-00315; (4) IPR2015-00316; (5) IPR2015-005314; (6) IPR2015-
01577; (7) IPR2015-01580; (8) IPR2015-01581; and (9) IPR2015-01582.
App. Br. 3–4.

THE APPEALED REJECTIONS
Patent Owner appeals the Examiner rejecting the claims as follows:
Claims 14–18, 21–24, 32–42, 78, 93–106, 108–110, 118, 119, 304–
309, 313, 315–320, 324, 588, and 593–598 under 35 U.S.C. § 102(e) as
anticipated by Dicker (US 6,272,353 B1; Aug. 7, 2001) (“Issue 1”).5 RAN
52–77.
Claims 14, 41, 42, 93, 94, 96, 120–122, 125, 127, 128, 304, 305, 310–
312, 314–316, 321–323, 325–371, and 588–591 under 35 U.S.C. § 102(e) as
anticipated by Gerten (US 6,760,319 B1; July 6, 2004) (“Issue 2”). RAN
77–109.
Claims 14–17, 21, 24, 32, 33, 36, 37, 40–42, 78, 93–98, 101, 102,
104, 105, 108, 110, and 118 under 35 U.S.C. § 102(e) as anticipated by
Zoran Kostic & Ivana Maric, Dynamic Frequency Hopping in Wireless

4 Although Patent Owner cites IPR2015-00316 twice by stating that
IPR2015-00316 was filed on January 5, 2014 and November 26, 2014 (see
App. Br. 4), we nevertheless presume that Patent Owner intended to also cite
IPR2015-00531 as noted in Exhibit 116 in the Related Proceedings
Appendix. See App. Br. 280. We, therefore, include the ’531 proceeding
here for clarity.
5 For clarity, we refer to the issue numbers used by Patent Owner and the
Examiner.
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Cellular Systems – Simulations of Full-Replacement and Reduced-Overhead
Methods, 49th Vehicular Tech. Conf., IEEE (1999) (“Kostic”) (“Issue 3”).
RAN 109–20.
Claims 2–18, 20–22, 24, 28–42, 75–78, 83–106, 108–110, 114–122,
129–296, 372–434, 436–587, and 593–598 under 35 U.S.C. § 102(e) as
anticipated by Gendel (US 6,115,407; Sept. 5, 2007) (“Issue 4”). RAN 120–
80.
Claims 2–17,6 21–24, 28–42, 75–78, 83–106, 108–110, 114–119,
129–296, 304–306, 310–317, 321–325, 372, 373, 376, 384, 385, 396, 397,
408, 420, 421, 432, 433, 444, 445, 456,7 457, 468, 469, 480, 481, 492, 493,
498, 504, 505, 516, 517, 528, 529, 540, 541, 546, 552, 553, 564, 565, 576,
577, and 588 under 35 U.S.C. § 102(e) as anticipated by Schmidl (US
7,440,484 B2; Oct. 21, 2008) (“Issue 5”). RAN 180–227.
Claim 120 under 35 U.S.C. § 102(e) as anticipated by JP10-107693 A;
Apr. 24, 1998 (“Imamura”) (“Issue 6”). RAN 227–28.

6 Although the Examiner omits independent claims 6 and 9 from this
rejection, the Examiner nonetheless rejects their respective dependent claims
138–175 as anticipated by Schmidl. See RAN 180. Accordingly, we
presume that the Examiner intended to also so reject independent claims 6
and 9. Accord App. Br. 39–41 (including claims 6 and 9 in the arguments
pertaining to this rejection). We, therefore, present the correct claim listing
here for clarity, and deem the Examiner’s error in this regard as harmless.
7 Although the Examiner omits independent claim 456 from this rejection,
the Examiner nonetheless rejects its dependent claim 457 as anticipated by
Schmidl. See RAN 180. Accordingly, we presume that the Examiner
intended to also so reject independent claim 456. We, therefore, present the
correct claim listing here for clarity, and deem the Examiner’s error in this
regard as harmless.
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Claims 43–54, 56–61, 68–70, 72–74, 297–303, 326–330, and 589
under 35 U.S.C. § 102(e) as anticipated by Haartsen (US 7,280,580 B1; Oct.
9, 2007) (“Issue 18”). RAN 228–44.
Claims 2–9, 11, 12, 75–77, 85–90, 192, 212, 243, and 263 under 35
U.S.C. § 103(a) as obvious over Dicker and Cuffaro (US 6,418,317 B1; July
9, 2002) (“Issue 7”). RAN 245–59.
Claims 28, 29, 83, 84, 114, and 115 under 35 U.S.C. § 103(a) as
obvious over Dicker and Larsson (US 5,956,642; Sept. 21, 1999) (“Issue
11”). RAN 259–62.
Claims 30, 31, 116, and 117 under 35 U.S.C. § 103(a) as obvious over
Dicker and Gendel (“Issue 13”). RAN 263–65.
Claim 126 under 35 U.S.C. § 103(a) as obvious over Gerten and Gillis
(US 5,323,447; June 21, 1994) (“Issue 17”). RAN 265–67.
Claims 43–45, 47–54, 56–61, 68–70, and 72–74 under 35 U.S.C.
§ 103(a) as obvious over Gerten and Haartsen (“Issue 19”). RAN 268.
Claims 43–74 under 35 U.S.C. § 103(a) as obvious over Gendel and
Haartsen (“Issue 20”). RAN 268–69.
Claims 43, 45, 46, 48, 50–52, 54, 56, 59, 60, 64, 66, 69, 72, and 73
under 35 U.S.C. § 103(a) as obvious over Imamura and Haartsen (“Issue
21”). RAN 269–70.
Claims 43–74 and 297–303 under 35 U.S.C. § 112(a) or 35 U.S.C.
§ 112 (pre-AIA), first paragraph as failing to comply with the written
description requirement (“Issue 23”). RAN 9, 50–52.
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Claims 360 and 370 under 35 U.S.C. § 112(b) or 35 U.S.C. § 112
(pre-AIA), second paragraph as indefinite.8 RAN 9, 51.
Claims 360 and 370 under 35 U.S.C. § 112(d) or 35 U.S.C. § 112
(pre-AIA), fourth paragraph as failing to further limit the subject matter of
the claim upon which it depends. RAN 9, 51–52.

THE ANTICIPATION REJECTION OVER GENDEL (“ISSUE 4”)
Regarding independent claim 2, the Examiner finds that Gendel’s
communications channel selection includes, among other things, criteria
specifying that a particular channel (1) receives a specified number of
affirmative votes to use the channel from plural participants, and (2) does
not receive a negative vote from a participant to not use the channel as
claimed. RAN 120–22. According to the Examiner, a transceiver’s
acknowledging a request to replace an erroneous segment of frequencies
with an unused segment in step 656 of Gendel’s Figure 6 is an “affirmative
vote” to use the channel. RAN 14–15. Another transceiver’s request to
modify a hopping pattern in step 658 of Gendel’s Figure 6 is also said to be
a “negative vote” to not use the channel. RAN 15.
Patent Owner argues that neither Gendel’s per-segment error value
nor Gendel’s acknowledgement is a vote that expresses a preference whether

8 Although the Examiner omits the statutory basis for this rejection, the
Examiner nonetheless explicitly states that claims 360 and 370 are indefinite
and unclear regarding their scope. RAN 51. Accordingly, we presume that
the Examiner intended to reject these claims as indefinite under § 112,
second paragraph. Accord RAN 9 (noting that claims 360 and 370 stand
rejected under § 112).
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or not to use a particular channel. App. Br. 37–39; Reb. Br. 4–5. Patent
Owner argues various other recited limitations summarized below.

ISSUES
Under § 102, has the Examiner erred by finding that Gendel discloses:
(1) channel selection criteria specifying that a particular channel (a)
receives a specified number of affirmative votes to use the channel from
plural participants, and (b) does not receive a negative vote from a
participant to not use the channel as recited in claim 2?
(2) the conditions recited in claims 14, 15, and 41?
(3) providing encrypted identification data to the participant as recited
in claim 18?
(4) causing a second set of communications channels to be loaded into
the first register of the first participant and the second register of the second
participant after selecting that set as recited in claim 120?

ANALYSIS
Claims 2–13, 75–77, 85–92, 129–282, 372–434, and 436–587
We begin by construing the term “vote” in claim 2. Notably, the term
“vote” is not defined in the ’418 patent’s Specification, unlike at least one
other term whose concrete definition leaves no doubt as to its meaning. See,
e.g., ’418 patent, col. 10, ll. 20–22 (defining “packet”). The ’418 patent,
however, describes a “referendum” approach that considers channel
performance where each participant votes on whether a channel is used or
not. Id. col. 16, ll. 23–67. In Table 2, for example, a vote of “0” means that
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a participant votes to not use the channel, and a vote of “1” means that a
participant votes to use the channel. Id. col. 16, ll. 23–48. Each
participant’s votes are tallied, and if a certain number of votes meet or
exceed a particular threshold known as a “Passing Mark” (e.g., seven), the
channel is judged “good” and, therefore, available for use. Although this
discussion is exemplary and non-limiting, it nonetheless informs our
interpretation of the term “vote” in claim 2, and, in particular, affirmative
and negative votes to use or not use a channel, respectively.
The Examiner construes the term “vote” as “a signal that indicates
whether a channel is good or bad that is received from a participant.” RAN
13. Patent Owner, however, construes the term “vote” as “an expression of
a preference as to whether or not to use a particular communications
channel.” App. Br. 33–34; Reb. Br. 5.
Given the term’s usage in the ’418 patent and its plain meaning, we
agree with Patent Owner to the extent that a vote expresses a preference to
use a particular channel—a construction that comports with the Board’s
interpretation of the term “vote” in related proceedings. See Marvell
Semiconductor, Inc. v. Bandspeed, Inc., No. IPR2015-00237 (PTAB May 4,
2015), at 7 (construing the term “votes to use the particular communications
channel” to mean “expressions of preference for using a particular
communication channel” based on a dictionary definition of “vote” as a
“formal expression of preference . . . for a proposed resolution of an issue”);
see also Qualcomm Inc. v. Bandspeed, Inc., No. IPR2015-00314 (PTAB
Sept. 7, 2016) (“Qualcomm I”), at 9–11 (construing the term “votes to use a
particular communications channel” as “expressions of preference for using
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the particular communications channel”); Qualcomm Inc. v. Bandspeed, Inc.,
No. IPR2015-00315 (PTAB Sept. 7, 2016) (“Qualcomm II”), at 9–11
(same); Qualcomm Inc. v. Bandspeed, Inc., No. IPR2015-00316 (PTAB
Sept. 7, 2016) (“Qualcomm III”), at 8–10 (same). As such, we find that the
recited affirmative and negative votes express a preference to use or not use
a particular channel, respectively.
With this preference-based construction, we find problematic the
Examiner’s reliance on steps 656 and 658 of Gendel’s Figure 6 for
anticipating the recited affirmative and negative votes, respectively. See
RAN 14–15. In step 654, Gendel’s system transmits a signal, such as a
replacement request, to another party requesting that a particular erroneous
segment (i.e., channel)9 is to be replaced with an unused segment. Gendel,
col. 12, ll. 36–39. Then, in step 656, the system checks whether a reply was
received from the other party acknowledging receipt of the request to modify
the hopping pattern and, if so, the segment hopping table is updated
accordingly in step 662. Id. col. 12, ll. 42–48.
Our emphasis underscores that the other party in Gendel merely
acknowledges receipt of the request in step 656: it does not express a
preference in that regard. Therefore, the Examiner’s equating this mere
acknowledgement to an affirmative vote (RAN 14)—a vote that requires a
preference to use a particular channel—is problematic for that reason alone.
Accord Marvell Semiconductor, at 23 (“Although we are persuaded that the

9 It is undisputed that Gendel’s segments correspond to the recited channels.
See Request filed Oct. 27, 2011 in the ’648 proceeding (“’648 Request”), at
74–75.
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replacement request in Gendel is an expression of preference for using the
unused segment based on the error value of the used segment, we are not
persuaded that the reply in Gendel represents the same expression.”)
(emphasis added).
We reach this conclusion even assuming, without deciding, that
another transceiver’s request to modify the hopping pattern in step 658 in
Gendel’s Figure 6 constitutes a “negative vote” to not use the particular
segment for which replacement is requested in step 654 as the Examiner
seems to suggest. See RAN 15. Although such a “negative vote” would not
be received if the acknowledgement is received in step 656 (i.e., the “YES”
prong of step 656), there is still no affirmative vote to use the channel in
Gendel as noted above.
That said, we disagree with Patent Owner’s contention that because
the used and unused segments ostensibly have already been selected when
the acknowledgement is sent in Gendel, the acknowledgement cannot be part
of associated selection criteria. See App. Br. 38. These segments, however,
are merely candidates for selection—a selection process in Gendel’s Figure
6 that completes in step 662 after acknowledgement is received in step 656.
Therefore, this acknowledgement is a fundamental aspect of Gendel’s
segment selection criteria despite lacking an expressed preference in that
regard.
But this lack of expressed preference in Gendel is fatal to the
Examiner’s anticipation rejection of claim 2. Therefore, we are persuaded
that the Examiner erred in rejecting (1) independent claim 2; (2) independent
claims 6, 9, 75, 85, 192, 212, 243, 263, 372, 384, 396, 408, 420, 432, 444,
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456, 468, 480, 492, 504, 516, 528, 540, 552, 564, and 576 that recite
commensurate vote-based limitations; and (3) dependent claims 3–5, 7, 8,
10–13, 76, 77, 86–92, 129–191, 193–211, 213–242, 244–262, 264–282,
373–383, 385–395, 397–407, 409–419, 421–431, 433, 434, 436–443, 445–
455, 457–467, 469–479, 481–491, 493–503, 505–515, 517–527, 529–539,
541–551, 553–563, 565–575, and 577–587 for similar reasons. Because this
issue is dispositive regarding our reversing the Examiner’s rejection of these
claims, we need not address Patent Owner’s other associated arguments.

Claims 14, 283, and 290
We sustain the Examiner’s rejection of claim 14 reciting, in pertinent
part, if the number of communications channels from the first set of two or
more channels satisfying the channel selection criteria at a second time is
less than a specified number, then selecting a second set of channels based
on the channels’ performance at a third time later than the second time and
the channel selection criteria. See RAN 132–34.
Our emphasis on the word “if” underscores that claim 14’s last clause
is a conditional limitation that need not be satisfied to meet the claim under
its broadest reasonable interpretation. See Ex parte Schulhauser, No. 2013-
007847, slip op. at 9–10 (PTAB Apr. 28, 2016) (precedential).10 Therefore,
Patent Owner’s contentions regarding Gendel’s alleged shortcomings in this

10 This decision is available at the Board’s web site at
https://www.uspto.gov/patents-application-process/appealing-patent-
decisions/decisions-and-opinions/precedential.
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regard (App. Br. 50–51) are not commensurate with the scope of the claim
and, therefore, are unavailing for that reason alone.
Nevertheless, even if the recited condition had to occur (which it does
not), we are still unpersuaded of error in the Examiner’s reliance on Gendel
for anticipating the conditional limitation. See RAN 133–34 (citing Gendel
col. 7, ll. 28–32, col. 4, ll. 18–22, and col. 11, ll. 57–61). As shown in
Gendel’s Figure 5, if (1) an error occurs in a received packet for a current
hopping frequency in a currently-used segment in step 604, and (2) the
associated error value is greater than a threshold in step 618, the segment is
marked as a candidate for replacement in step 616, and the replacement
process with the other party commences in step 614. Gendel, col. 11, ll. 24–
54. This process then repeats for the next frequency in the next used
segment until all frequencies in all segments have been visited at least once,
thus completing one cycle. See Gendel Fig. 5 (“NO” prong in step 620); col.
11, ll. 54–65. After completing this cycle, the error values of segments with
no reception errors are modified in step 622, and the process returns to step
604 to repeat the process. Gendel, col. 11, ll. 57–65; col. 12, ll. 10–17.
Given this sequential process, we see no error in the Examiner’s
rejection at least to the extent that a first set of channels (i.e., segments) are
selected based on channel performance at some first time, and then a number
of channels from the first set that satisfy channel selection criteria is
determined depending on the associated error value. Because this process
repeats, if the number of channels from the first set that satisfy the selection
criteria is less than a specified number due to the associated error value later
exceeding the threshold (e.g., in the next cycle), then a second set of
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channels would be selected based on the channels’ performance at some
later third time. See ’648 Request, at 186, 188 (noting that Gendel’s
teachings allow both the second and third times to be arbitrarily defined).
Notably, in every cycle where channels are selected in the process in
Gendel’s Figure 5, the channels’ performance is based on its associated error
value—an error-based performance determination that occurs sequentially in
every cycle. Patent Owner’s contention, then, that Gendel does not (1) re-
determine segment performance when an erred segment is identified, and (2)
reselect channels based on the re-determined performance (App. Br. 50–51;
Reb. Br. 6–7) is unavailing given Gendel’s sequential performance-based
channel selection process.
So even if the condition in claim 14’s last clause had to be satisfied to
meet the claim (again, which it does not), Gendel still anticipates the claim.
Therefore, we are not persuaded that the Examiner erred in rejecting claim
14, and claims 283 and 290 not argued separately with particularity.

Claims 94, 288, and 295
For similar reasons, we also sustain the Examiner’s rejection of
independent claim 94 reciting limitations commensurate with those in claim
14, but directed to a computer-readable medium. See RAN 152. The
broadest reasonable interpretation of an apparatus claim with structure that
performs a function, which only needs to occur if a condition precedent is
met, still requires structure for performing the function should the condition
occur. Schulhauser at 14–15. We see no reason to treat the medium claim
any differently.
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Therefore, our interpretation of medium claim 94 differs from method
claim 14 because the structure, namely the medium carrying the instructions
that, when executed, cause one or more processors to perform the recited
steps, is present regardless of whether the condition is met and the step is
actually performed. Nevertheless, we find that Gendel anticipates these
limitations for the reasons previously discussed.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 94, and claims 288 and 295 not argued separately with particularity.

Claims 15–17, 20–22, 24, 28–40, 78, 83, 84, 95, 97–106, 108–110, 114–119,
284, 286, 289, 291, 293, 296, and 593–598

We also sustain the Examiner’s rejection of claim 15 reciting, in
pertinent part, if the number of communications channels from the first set of
channels is less than a specified number, then selecting, based on third
performance data that indicates performance of the plural communications
channels at a third time that is at or later than the second time and at least a
third performance criterion, a second set of two or more communications
channels. See RAN 134–37.
Our emphasis on the word “if” underscores that this clause in claim 15
is a conditional limitation that need not be satisfied to meet the claim under
its broadest reasonable interpretation. See Schulhauser, at 9–10. Therefore,
Patent Owner’s contentions regarding Gendel’s alleged shortcomings in this
regard (App. Br. 56–57; Reb. Br. 8–9) are not commensurate with the scope
of the claim and, therefore, are unavailing for that reason alone.
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Nevertheless, even if the recited condition had to occur (which it does
not for method claim 15), we are still unpersuaded of error in the Examiner’s
reliance on Gendel for anticipating the conditional limitation for reasons
similar to those indicated with respect to claim 14. As such, we find no error
in the Examiner’s reliance on Gendel with respect to the method claims in
this group. We reach a similar conclusion regarding the other non-method
claims in this group reciting commensurate limitations, despite those claims
requiring structure for performing the recited functions should the condition
occur. See Schulhauser at 14–15.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 15 and claims 16, 17, 20–22, 24, 28–40, 78, 83, 84, 95, 97–106, 108–
110, 114–119, 284, 286, 289, 291, 293, 296, and 593–598 not argued
separately with particularity.11

Claim 18
We do not sustain the Examiner’s rejection of claim 18 reciting, in
pertinent part, encrypting the first identification data and providing that
encrypted data to the participant. The Examiner finds that Gendel’s encoded
data that is modulated via frequency shift keying or phase shift keying in
column 1, lines 39 to 45 is “encrypted” because this data is converted into a
code for communication. RAN 31–32, 138. The Examiner further cites a
general-purpose dictionary defining “encrypt” as “encode.” RAN 32.

11 Although Patent Owner also argues that dependent claim 23 is also not
anticipated by Gendel (App. Br. 56–57; Reb. Br. 8–10), the claim was not so
rejected. See RAN 120.
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These findings are problematic given the commonly understood
meaning of “encrypting” in the art, and its recognized distinction from
“encoding.” A noted information technology dictionary, for example,
defines the term “encode” in the data communications context as (1) “to
convert data, by means of a code, in such a way that it may be subsequently
reconverted to its original form,” or (2) “to convert from one system of
communication to another.” Dennis Longley & Michael Shain, DICTIONARY
OF INFORMATION TECHNOLOGY 110 (2d ed. 1986). That dictionary,
however, defines “encryption” differently, namely in a data security context
as “the conversion of a plaintext message into a form which renders it
unavailable for reading or modification, by an unauthorized person.” Id.
Other special-purpose dictionaries similarly distinguish encoding and
encryption. See, e.g., DICTIONARY OF COMPUTER SCIENCE, ENGINEERING,
AND TECHNOLOGY 158 (Phillip A. Laplante ed. 2001) (defining “encoding”
in pertinent part as “the act of placing information to be transmitted in a
form which can be transmitted over a particular medium and which will be
recognizable by the receiver,” and defining “encryption” as “the
transformation employed to transform information to be transmitted (plain-
text) into a format which is unintelligible (ciphertext or a cryptogram)”);
Peter Dyson, DICTIONARY OF NETWORKING 125 (3d ed. 1999) (defining
“encryption” as “[t]he process of encoding information in an attempt to
make it secure from unauthorized access, particularly during transmission,”
and defining “encode” as [t]o convert a binary file into a form suitable for
data transmission”).
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Although the latter dictionary defines “encryption” in terms of
encoding information, encryption is nonetheless a particular type of
encoding that attempts to secure information from unauthorized access. See
id. So while it may be possible that Gendel’s encoded data is encrypted, we
cannot say that this data is necessarily encrypted—a crucial requirement for
anticipation. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999).
Rather, Gendel’s encoding may only represent information digitally as
Patent Owner indicates (App. Br. 58–59): we simply cannot tell based on
Gendel’s limited disclosure in this regard. But what we can say is that the
Examiner’s reliance on Gendel’s encoded data in column 1 as anticipating
claim 18 is erroneous.
Therefore, we are persuaded that the Examiner erred in rejecting clam
18.

Claims 41, 42, 93, 96, 285, 287, 292, and 294
We sustain the Examiner’s rejection of claim 41 reciting, in pertinent
part, if the performance data indicates that at least a specified number of
communications channels of the first set of channels do not satisfy specified
performance criteria, then (1) determining second performance data for the
plural channels based on one or more additional performance measurements
of the channels; (2) determining additional classifications based on the
second performance data and at least a second performance criterion of at
least two communications channels; and (3) selecting a second set of two or
more channels based on the additional classifications. See RAN 146–148,
38–40.
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Our emphasis on the word “if” underscores that this clause in claim 41
is a conditional limitation that need not be satisfied to meet the claim under
its broadest reasonable interpretation. See Schulhauser, at 9–10. Therefore,
Patent Owner’s contentions regarding Gendel’s alleged shortcomings in this
regard (App. Br. 63–65; Reb. Br. 10–12) are not commensurate with the
scope of the claim and, therefore, are unavailing for that reason alone.
Nevertheless, even if the recited condition had to occur (which it does
not for method claim 41), we are still unpersuaded of error in the Examiner’s
reliance on Gendel for anticipating the conditional limitation for reasons
similar to those indicated with respect to claim 15. Nor do we see error in
the Examiner’s finding that Gendel classifies segments as erred if a
performance threshold is exceeded. RAN 39 (citing Gendel, col. 6, ll. 27–
56). As such, we find no error in the Examiner’s reliance on Gendel not
only with respect to the method claims in this group, but also medium claim
93 reciting commensurate limitations, despite requiring structure for
performing the recited functions should the condition occur. See
Schulhauser at 14–15.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 41, and claims 42, 93, 96, 285, 287, 292, and 294 not argued
separately with particularity.

Claims 120–122
We do not sustain the Examiner’s rejection of independent claim 120
reciting, in pertinent part, causing the second set of communications
channels to be loaded into the first register of the first participant and the
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second register of the second participant after selecting the second set of
channels. See RAN 156–57.
As Patent Owner indicates, the registers in Gendel on which the
Examiner relies store signal strength values—not channels. App. Br. 80–81
(citing Gendel, col. 14, ll. 6–30). Nor has the Examiner explained how or
why the technique described in the other cited passage, namely Gendel’s
column 12, lines 15 to 32, necessarily stores channels in the first and second
registers of the first and second participants, respectively, as claimed. See
RAN 156–57.
Therefore, we are persuaded that the Examiner erred in rejecting
independent claim 120, and dependent claims 121 and 122 for similar
reasons.12

THE ANTICIPATION REJECTION OVER GERTEN (“ISSUE 2”)
Claims 14, 94, 304, 305, 310–312, 314–316, 321–323, 325–371, and 588–
591

We sustain the Examiner’s rejection of independent claim 14 reciting,
in pertinent part, if the number of communications channels from the first set
of two or more channels satisfying the channel selection criteria at a second
time is less than a specified number, then selecting a second set of channels
based on the channels’ performance at a third time later than the second time
and the channel selection criteria. See RAN 77–79, 37.

12 Although Patent Owner also argues that dependent claims 125–128 are
also not anticipated by Gendel (App. Br. 80–81; Reb. Br. 12–13), the claims
were not so rejected. See RAN 120.
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Our emphasis on the word “if” underscores that claim 14’s last clause
is a conditional limitation that need not be satisfied to meet the claim under
its broadest reasonable interpretation. See Schulhauser, at 9–10. Therefore,
Patent Owner’s contentions regarding Gerten’s alleged shortcomings in this
regard (App. Br. 46–48; Reb. Br. 6–7) are not commensurate with the scope
of the claim and, therefore, are unavailing for that reason alone.
Nevertheless, even if the recited condition had to occur (which it does
not), we are still unpersuaded of error in the Examiner’s reliance on Gerten
for anticipating the conditional limitation. See RAN 77–79 (citing Gerten
col. 4, l. 17 – col. 5, l. 24; col. 4, ll. 58–6313; col. 5, ll. 24–63; col. 6, l. 33 –
col. 7, l. 5; Fig. 3).
As shown in Gerten’s Figure 3, at the end of a transmission, the
master device scans channels and determines which channels to avoid in step
130 because they have the strongest interference. Gerten, col. 4, ll. 38–51.
This identification is detailed in Figure 4, where channels whose signal
strength exceeds “Level 1” and “Level 2” thresholds are placed on
corresponding lists of interferers in steps 260 and 265, respectively. Gerten,
col. 5, ll. 19–63; col. 6, ll. 33–55. This process is repeated until all channels
have been considered or the Level 2 list is full. Gerten, col. 6, ll. 57–59. If
the Level 2 list does not contain four channels after scanning, it can be filled
with channels immediately before and after those channels already on the

13 Although the Examiner cites column 5, lines 58 to 63 (RAN 78), the
associated quoted passage is in column 4. We, therefore, present the correct
citation here for clarity.
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Level 2 list and, if necessary, the Level 2 list can be replaced with channels
in the Level 1 list. Gerten, col. 6, l. 60 – col. 7, l. 5.
As shown in Gerten’s Figure 3, after determining channels to avoid in
step 130, the hopping sequence is modified in step 160 that is detailed in
Figure 5. Gerten, col. 4, ll. 38–65, col. 7, ll. 7–20. As shown in Figure 5,
after removing synthesizer code for “M” channels to be avoided, an alternate
register bank with N–M codes for N–M channels is loaded in step 330.
Gerten, col. 7, ll. 8–18. After communicating the channels to avoid to the
remote device in step 150, both the master and remote devices modify their
respective hopping sequences in step 160 that are then used to transmit data
in step 170. Gerten, col. 4, ll. 53–58. In step 180, the master periodically
updates the channels to avoid, and steps 140 to 180 are repeated. See
Gerten, col. 58–65; Fig. 3 (“YES” prong in step 180).
Given this sequential process, we see no error in the Examiner’s
rejection at least to the extent that Gerten’s system selects a first set of
channels based on channel performance at some first time, and then
determines a number of channels from the first set that satisfy channel
selection criteria depending on their signal strength. Because this process
repeats, if the number of channels from the first set that satisfy the selection
criteria is less than a specified number due to their associated signal strength
values (e.g., in the next cycle), then a second set of channels would be
selected based on the channels’ performance at some later third time.
Notably, in every cycle where channels are selected in the process in
Gerten’s Figure 3, the channels’ performance is based on its associated
signal strength—a performance determination that occurs sequentially in
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every cycle. Patent Owner’s contention, then, that Gerten does not (1) re-
determine performance of the original set of channels from which a first set
is selected, and (2) reselect channels based on the re-determined
performance (App. Br. 46–48; Reb. Br. 6–7) is unavailing given Gerten’s
sequential process.
In addition, as part of this sequential process, nothing in the claim
precludes Gerten’s selecting certain channels to include in the Level 2 list if
the number of channels is less than a specified number as noted previously.
See Gerten, col. 6, l. 60 – col. 7, l. 5; see also RAN 37, 79 (noting this
functionality). Patent Owner’s arguments to the contrary (App. Br. 47) are
unavailing given Gerten’s sequential performance-based channel selection
process.
As such, we find no error in the Examiner’s reliance on Gerten not
only with respect to the method claims in this group, but also medium claim
94 reciting commensurate limitations, despite requiring structure for
performing the recited functions should the condition occur. See
Schulhauser at 14–15.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 14, and claims 94, 304, 305, 310–312, 314–316, 321–323, 325–371,
and 588–591 not argued separately with particularity.14

14 Although Patent Owner argues that dependent claims 283, 288, 290, and
295 are not anticipated by Gerten (App. Br. 48), these claims were not so
rejected. See RAN 77.
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Claims 41, 42, 93, and 96
We sustain the Examiner’s rejection of claim 41 reciting, in pertinent
part, if the performance data indicates that at least a specified number of
communications channels of the first set of channels do not satisfy specified
performance criteria, then (1) determining second performance data for the
plural channels based on one or more additional performance measurements
of the channels; (2) determining additional classifications based on the
second performance data and at least a second performance criterion of at
least two communications channels; and (3) selecting a second set of two or
more channels based on the additional classifications. See RAN 79–83, 38–
40.
Our emphasis on the word “if” underscores that this clause in claim 41
is a conditional limitation that need not be satisfied to meet the claim under
its broadest reasonable interpretation. See Schulhauser, at 9–10. Therefore,
Patent Owner’s contentions regarding Gerten’s alleged shortcomings in this
regard (App. Br. 61–62; Reb. Br. 10–12) are not commensurate with the
scope of the claim and, therefore, are unavailing for that reason alone.
Nevertheless, even if the recited condition had to occur (which it does
not for method claim 41), we are still unpersuaded of error in the Examiner’s
reliance on Gerten for anticipating the conditional limitation for reasons
similar to those indicated with respect to claim 14. Nor do we see error in
the Examiner’s finding that Gerten classifies channels as claimed. RAN 39
(citing Gerten, col. 6, l. 33 – col. 7, l. 21). As such, we find no error in the
Examiner’s reliance on Gerten not only with respect to the method claims in
this group, but also medium claim 93 reciting commensurate limitations,
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despite requiring structure for performing the recited functions should the
condition occur. See Schulhauser at 14–15.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 41, and claims 42, 93, and 96 not argued separately with
particularity.15

Claims 120–122, 125, 127, and 128
We sustain the Examiner’s rejection of independent claim 120 as
anticipated by Gerten. RAN 84–86. Although Gerten’s frequency hopping
scheme determines channels to avoid as Patent Owner indicates (App. Br.
79–80), Patent Owner does not persuasively rebut the Examiner’s findings at
least to the extent that Gerten’s system loads data in respective participant
registers that identify channels used to communicate between those
participants. In Gerten’s Figure 3, for example, after channels are
determined to be avoided in step 130, the hopping sequence is modified in
step 160 that is detailed in Figure 5. Gerten, col. 4, ll. 38–65, col. 7, ll. 7–20.
As shown in Figure 5, after removing synthesizer code for “M” channels to
be avoided, an alternate register bank with N–M codes for N–M channels is
loaded in step 330. Gerten, col. 7, ll. 8–18.
By removing channels to avoid, Gerten’s functionality fully meets
loading channels to be used in the participants’ registers as claimed—not
loading channels to avoid as Patent Owner asserts (App. Br. 80). Accord

15 Although Patent Owner argues that dependent claims 285, 287, 292, and
294 are not anticipated by Gerten (App. Br. 62), these claims were not so
rejected. See RAN 77.
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Qualcomm I, at 21 (crediting expert testimony that Gerten’s synthesizer code
identifies channels used in the frequency hopping sequences and loaded in
master and slave device registers); Qualcomm II, at 20 (same); Qualcomm
III, at 20 (same); Marvell Semiconductor, at 14 (“We are persuaded that the
steps in Gerten involving storing N–M synthesizer code words in the
alternate register banks of the master and slave devices disclose the recited
limitations regarding loading the first and second registers with the first and
second sets of communications channels.”).
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 120, and claims 121, 122, 125, 127, and 128 not argued separately
with particularity.16

THE ANTICIPATION REJECTION OVER DICKER (“ISSUE 1”)
Claims 14, 94, 304–309, 313, 315–320, 324, 588, and 595–598

We sustain the Examiner’s rejection of independent claim 14 reciting,
in pertinent part, if the number of communications channels from the first set
of two or more channels satisfying the channel selection criteria at a second
time is less than a specified number, then selecting a second set of channels
based on the channels’ performance at a third time later than the second time
and the channel selection criteria. See RAN 52–54, 36–37.
Our emphasis on the word “if” underscores that claim 14’s last clause
is a conditional limitation that need not be satisfied to meet the claim under

16 Although Patent Owner argues that dependent claims 285, 287, 292, and
294 are not anticipated by Gerten (App. Br. 62), these claims were not so
rejected. See RAN 77.
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its broadest reasonable interpretation. See Schulhauser, at 9–10. Therefore,
Patent Owner’s contentions regarding Dicker’s alleged shortcomings in this
regard (App. Br. 45–46; Reb. Br. 6–8) are not commensurate with the scope
of the claim and, therefore, are unavailing for that reason alone.
Nevertheless, even if the recited condition had to occur (which it does
not), we are still unpersuaded of error in the Examiner’s reliance on Dicker
for anticipating the conditional limitation. See RAN 52–54, 36–37 (citing
Dicker, col. 6, ll. 11–21; col. 6, l. 63 – col. 7, l. 14).
Dicker’s system selects to use the best ten of twelve subsets of
channels in the available frequency range from 2.4 GHz to 2.4835 GHz,
where each subset has eight channels as shown in Figure 3. Dicker, col. 6,
ll. 11–18. This selection process is detailed in Dicker’s Figure 4.
As shown in that figure, a base station establishes an active
communication link with a mobile unit in step 42, and, in doing so, the base
station selects either (1) a default set of frequencies, or (2) the last
frequencies available for the prior active communication link with that
mobile unit (e.g., the last available ten subsets). Dicker, col. 6, ll. 1–21.
Then, in step 67, the base station excludes the two worst-quality subsets,
namely those with the highest error rates. Dicker, col. 6, l. 63 – col. 7, l. 1.
This exclusion may involve substituting the poor-quality subsets with
currently active subsets via various algorithms. Dicker, col. 7, ll. 1–3.
In light of this substitution in Dicker’s sequential process of Figure 4,
Dicker’s re-determining subset performance and reselecting subsets is
effectively based on the number of subsets that satisfy selection criteria
being less than a specified number. As noted above, Dicker can re-establish
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a communication link with the same mobile unit in step 42 and, in doing so,
select to use either (1) a default set of frequencies, or (2) the last 10 subsets
that were used to communicate with that mobile unit. See Dicker, col. 6, ll.
1–21; Fig. 4 (arrow returning to step 40 from step 52). But by later
determining that the two worst-quality subsets are to be substituted with
other currently-active subsets in step 67, Dicker’s system effectively
determines that the number of subsets that initially satisfied the selection
criteria based on their earlier performance is now less than a specified
number.
Although this re-determination and reselection of subsets is
sequential, this process is not based solely on the passage of time as Patent
Owner contends (App. Br. 46), but rather also based on the number of
channels being less than a specified number. Moreover, Patent Owner’s
contention that Dicker allegedly does not re-determine performance “when a
good channel goes bad” (Reb. Br. 6–8) is unavailing given Dicker’s
sequential process that involves such a re-determination as noted above. As
such, we find no error in the Examiner’s reliance on Dicker not only with
respect to the method claims in this group, but also medium claim 94
reciting commensurate limitations, despite requiring structure for performing
the recited functions should the condition occur. See Schulhauser at 14–15.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 14, and claims 94, 304–309, 313, 315–320, 324, 588, and 595–598 not
argued separately with particularity.

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Claims 15–17, 21–24, 32–40, 78, 95, 97–106, 108–110, 118, 119, 593, and
594

We also sustain the Examiner’s rejection of claim 15 reciting, in
pertinent part, if the number of communications channels from the first set of
channels is less than a specified number, then selecting, based on third
performance data that indicates performance of the plural communications
channels at a third time that is at or later than the second time and at least a
third performance criterion, a second set of two or more communications
channels. See RAN 55–57, 24–26.
Our emphasis on the word “if” underscores that this clause in claim 15
is a conditional limitation that need not be satisfied to meet the claim under
its broadest reasonable interpretation. See Schulhauser, at 9–10. Therefore,
Patent Owner’s contentions regarding Dicker’s alleged shortcomings in this
regard (App. Br. 53–54; Reb. Br. 8–10) are not commensurate with the
scope of the claim and, therefore, are unavailing for that reason alone.
Nevertheless, even if the recited condition had to occur (which it does
not for method claim 15), we are still unpersuaded of error in the Examiner’s
reliance on Dicker for anticipating the conditional limitation for reasons
similar to those indicated with respect to claim 14. As such, we find no error
in the Examiner’s reliance on Dicker with respect to the method claims in
this group. We reach a similar conclusion regarding the other non-method
claims in this group reciting commensurate limitations, despite those claims
requiring structure for performing the recited functions should the condition
occur. See Schulhauser at 14–15.
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Therefore, we are not persuaded that the Examiner erred in rejecting
claim 15 and claims 16, 17, 21–24, 32–40, 78, 95, 97–106, 108–110, 118,
119, 593, and 594 not argued separately with particularity.17

Claim 18
We do not sustain the Examiner’s rejection of claim 18 reciting, in
pertinent part, encrypting the first identification data and providing that
encrypted data to the participant. See RAN 58, 31–32. Although encoded
transmission data can be sent to the mobile unit in step 71 of Figure 4 as
noted in column 7, lines 28 to 36, this encoded data is not necessarily
encrypted as Appellant indicates. See App. Br. 58; Reb. Br. 10.
As noted previously, despite the Examiner’s reliance on a general-
purpose dictionary defining “encrypt” as “encode” (RAN 32), the commonly
understood meaning of “encrypting” in the art differs from “encoding.” A
noted information technology dictionary, for example, defines the term
“encode” in the data communications context as (1) “to convert data, by
means of a code, in such a way that it may be subsequently reconverted to its
original form,” or (2) “to convert from one system of communication to
another.” Dennis Longley & Michael Shain, DICTIONARY OF INFORMATION
TECHNOLOGY 110 (2d ed. 1986). That dictionary, however, defines
“encryption” differently, namely in a data security context as “the

17 Although Patent Owner argues that claims 20, 28–31, and 114–117 are not
anticipated by Dicker (App. Br. 53–54; Reb. Br. 8–10), these claims were
not so rejected. See RAN 52.
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conversion of a plaintext message into a form which renders it unavailable
for reading or modification, by an unauthorized person.” Id.
Other special-purpose dictionaries similarly distinguish encoding and
encryption. See, e.g., DICTIONARY OF COMPUTER SCIENCE, ENGINEERING,
AND TECHNOLOGY 158 (Phillip A. Laplante ed. 2001) (defining “encoding”
in pertinent part as “the act of placing information to be transmitted in a
form which can be transmitted over a particular medium and which will be
recognizable by the receiver,” and defining “encryption” as “the
transformation employed to transform information to be transmitted (plain-
text) into a format which is unintelligible (ciphertext or a cryptogram)”);
Peter Dyson, DICTIONARY OF NETWORKING 125 (3d ed. 1999) (defining
“encryption” as “[t]he process of encoding information in an attempt to
make it secure from unauthorized access, particularly during transmission,”
and defining “encode” as [t]o convert a binary file into a form suitable for
data transmission”).
Although the latter dictionary defines “encryption” in terms of
encoding information, encryption is nonetheless a particular type of
encoding that attempts to secure information from unauthorized access. See
id. So while it may be possible that Dicker’s encoded data is encrypted, we
cannot say that this data is necessarily encrypted—a crucial requirement for
anticipation. See Robertson, 169 F.3d at 745. Rather, Dicker’s encoding
may merely format the data to the mobile unit as tabular data as Patent
Owner indicates (App. Br. 58) or for some other purpose: we simply cannot
tell based on Dicker’s limited disclosure in this regard. But what we can say
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is that the Examiner’s reliance on Dicker’s encoded data in column 7 as
anticipating claim 18 is erroneous.
Therefore, we are persuaded that the Examiner erred in rejecting clam
18.

Claims 41, 42, 93, and 96
We sustain the Examiner’s rejection of claim 41 reciting, in pertinent
part, if the performance data indicates that at least a specified number of
communications channels of the first set of channels do not satisfy specified
performance criteria, then (1) determining second performance data for the
plural channels based on one or more additional performance measurements
of the channels; (2) determining additional classifications based on the
second performance data and at least a second performance criterion of at
least two communications channels; and (3) selecting a second set of two or
more channels based on the additional classifications. See RAN 65–69, 38–
40.
Our emphasis on the word “if” underscores that this clause in claim 41
is a conditional limitation that need not be satisfied to meet the claim under
its broadest reasonable interpretation. See Schulhauser, at 9–10. Therefore,
Patent Owner’s contentions regarding Dicker’s alleged shortcomings in this
regard (App. Br. 60–61; Reb. Br. 10–12) are not commensurate with the
scope of the claim and, therefore, are unavailing for that reason alone.
Nevertheless, even if the recited condition had to occur (which it does
not for method claim 41), we are still unpersuaded of error in the Examiner’s
reliance on Dicker for anticipating the conditional limitation for reasons
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similar to those indicated with respect to claim 14. Nor do we see error in
the Examiner’s finding that Dicker classifies channels as claimed. RAN 66.
As such, we find no error in the Examiner’s reliance on Dicker not only with
respect to the method claims in this group, but also medium claim 93
reciting commensurate limitations, despite requiring structure for performing
the recited functions should the condition occur. See Schulhauser at 14–15.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 41, and claims 42, 93, and 96 not argued separately with
particularity.18

THE ANTICIPATION REJECTION OVER SCHMIDL (“ISSUE 5”)
Claims 2–4, 6–9, 11–13, 75, 77, 85–87, 89–92, 129–204, 206–224, 226–255,
257–275, 277–282, 372, 373, 376, 384, 385, 396, 397, 408, 420, 421, 432,
433, 444, 445, 456, 457, 468, 469, 480, 481, 492, 493, 498, 504, 505, 516,
517, 528, 529, 540, 541, 546, 552, 553, 564, 565, 576,
and 577

We sustain the Examiner’s rejection of independent claim 2 reciting,
in pertinent part, channel selection criteria specifying that a particular
channel (a) receives a specified number of affirmative votes to use the
channel from plural participants, and (b) does not receive a negative vote
from a participant to not use the channel. See RAN 180–81, 17–18.
As noted previously in connection with the anticipation rejection over
Gendel, under its broadest reasonable interpretation, the recited affirmative

18 Although Patent Owner argues that dependent claims 285, 287, 292, and
294 are not anticipated by Dicker (App. Br. 61), these claims were not so
rejected. See RAN 52.
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and negative votes express a preference to use or not use a particular
channel, respectively. With this construction, we see no error in the
Examiner’s reliance on Schmidl in this regard.
As Schmidl explains, a standard Bluetooth frequency hopping
sequence uses 79 RF channels. Schmidl, col. 1, ll. 20–33. Schmidl’s
system, however, reduces this number of channels to form a reduced
hopping sequence (RHS) based on various measurements performed by the
master unit on each channel to determine each channel’s quality based on,
among other things, received signal strength and packet error rate (PER).
Schmidl, col. 2, ll. 13–33; Fig. 3.
Based on these measurements, the master can decide individually
whether or not to use each of the 79 channels, and communicates this
decision to slave units via a packet with 79 bits, where each bit represents a
respective channel as shown in Figure 4. Schmidl, col. 3, ll. 25–31; col. 4,
ll. 1–10. A “1” in a particular bit informs the receiving radio that the
corresponding channel is in the RHS, but a “0” means that the channel is not
in the RHS. Id., col. 4, ll. 1–10. In the latter case, the receiving radio would
then know to use the channel preceding the excluded channel as shown, for
example, in the RHS in Figure 1. Id., col. 4, ll. 8–10.
Notably, these channel monitoring and message transmission
functions are not limited to the master: one or more slave units can perform
these tasks as well. Id., col. 4, ll. 24–28.
Based on this functionality, we see no error in the Examiner’s
equating these bits to “votes” (RAN 17), for their values effectively express
a preference to use or not use a particular channel based on its associated
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quality measurement. That one or more slave units can monitor the channels
and send these preference-based messages, as described in column 4, lines
24 to 28, means that a specified number of affirmative votes to use a channel
via these messages would be received from plural participants, including
slaves. To the extent that Patent Owner’s contends that Schmidl cannot
receive channel monitoring messages from plural participants (see App. Br.
40), we disagree given Schmidl’s express teaching of using plural slaves to
transmit those messages.
We also find unavailing Patent Owner’s contention that because
Schmidl’s RHS message is ostensibly sent after the RHS has already been
selected, the information in the message cannot be used to select the RHS.
App. Br. 40. Even assuming, without deciding, that the master device has
already selected the RHS before associated messages are sent by the master
(or the slaves in the alternative embodiment), nothing in the claim precludes
the slave device’s selecting a corresponding set of channels comporting with
the RHS.
Notably, the RHS reflected in the message merely informs the
recipient unit (e.g., the slave) which channels will and will not be used. The
recipient then uses this received information to set up a corresponding RHS
sequence. See Schmidl, col. 5, ll. 6–12 (reciting sending a message to one or
more communication units which allows them to set up a RHS). As noted
previously, when channels are indicated with a “0” in the received message,
the recipient then uses the channel preceding the excluded channel as shown,
for example, in the RHS in Figure 1. Id., col. 4, ll. 8–10.
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In this scenario, then, sets of channels would be selected by the slave
to set up a RHS comporting with the information in the received message.
Patent Owner’s arguments to the contrary (App. Br. 39–41) are unavailing
and not commensurate with the scope of the claim.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 2, and claims 3, 4, 6–9, 11–13, 75, 77, 85–87, 89–92, 129–204, 206–
224, 226–255, 257–275, 277–282, 372, 373, 376, 384, 385, 396, 397, 408,
420, 421, 432, 433, 444, 445, 456, 457, 468, 469, 480, 481, 492, 493, 498,
504, 505, 516, 517, 528, 529, 540, 541, 546, 552, 553, 564, 565, 576, and
577 not argued separately with particularity.19

Claim 10
We sustain the Examiner’s rejection of claim 10 reciting (1)
communicating, prior to the second time, over the first set of two or more
communications channels, according to the frequency hopping protocol, and
(2) communicating, after a third time that is not earlier than the second time,
over the second of two or more channels, according to the protocol. See
RAN 183–84.
Appellant’s contention that Schmidl does not communicate over two
reduced hopping sequences at different times (App. Br. 44; Reb. Br. 6) is not
commensurate with the scope of the claim that merely requires
communicating over two sets of channels according to the frequency
hopping protocol at different times. Nothing in the claim precludes first

19 Although Patent Owner argues that claim 18 is not anticipated by Schmidl
(App. Br. 59; Reb. Br. 10), this claim was not so rejected. See RAN 180.
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communicating according to the standard hopping sequence, and then
communicating using a RHS. See Schmidl, col. 2, ll. 18 to 45; col. 3, ll. 51–
67; Fig. 2. Both sequences are part of a frequency hopping protocol at least
to the extent that they use common frequencies in the standard 79 channel
set for a Bluetooth system as shown in Schmidl’s Figure 1, and comply with
applicable regulations. See Schmidl, col. 2, l. 46 – col. 3, l. 24. To the
extent that Patent Owner contends that the recited frequency hopping
protocol requires the same sequence (see App. Br. 44; Reb. Br. 6), such a
contention is not commensurate with the scope of the claim.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 10.

Claims 14, 94, 283, 288, 290, and 295
We sustain the Examiner’s rejection of claim 14 reciting, in pertinent
part, if the number of communications channels from the first set of two or
more channels satisfying the channel selection criteria at a second time is
less than a specified number, then selecting a second set of channels based
on the channels’ performance at a third time later than the second time and
the channel selection criteria. See RAN 185–86.
Our emphasis on the word “if” underscores that claim 14’s last clause
is a conditional limitation that need not be satisfied to meet the claim under
its broadest reasonable interpretation. See Schulhauser, at 9–10. Therefore,
Patent Owner’s contentions regarding Schmidl’s alleged shortcomings in
this regard (App. Br. 52; Reb. Br. 6) are not commensurate with the scope of
the claim and, therefore, are unavailing for that reason alone.
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Nevertheless, even if the recited condition had to occur (which it does
not), we are still unpersuaded of error in the Examiner’s reliance on Schmidl
for anticipating the conditional limitation. As noted previously, nothing in
the claim precludes the slave device’s selecting a corresponding set of
channels to set up a RHS comporting with information in the message
received from the master. See Schmidl, col. 5, ll. 6–12. This slave-based
selection of a second, reduced set of channels, then, occurs after the master
device determines a number of channels satisfying the channel selection
criteria, namely those in the RHS based on their quality measurements. See
id., col. 2, ll. 13–42; col. 3, ll. 25–31; Fig. 1. Notably, the master makes this
determination after selecting channels in the normal hopping sequence. See
id.
Patent Owner’s contention that Schmidl does not re-select a RHS
based on re-determined performance of the RHS (App. Br. 52) is unavailing,
for it is not commensurate with the scope of the claim which does not
preclude Schmidl’s initially selecting a normal hopping sequence, and the
slave’s later selecting a second set of channels to set up a RHS consistent
with information in the message received from the master. As such, we find
no error in the Examiner’s reliance on Schmidl not only with respect to the
method claims in this group, but also medium claim 94 reciting
commensurate limitations, despite requiring structure for performing the
recited functions should the condition occur. See Schulhauser at 14–15.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 14, and claims 94, 283, 288, 290, and 295 not argued separately with
particularity.
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Claims 5, 15–17, 21–42, 76, 78, 83, 84, 88, 93, 95–106, 108–110, 114–119,
205, 225, 256, 276, 284–287, 289, 291–294, 296, 304–306, 310–317,
321–325, and 588

We do not sustain the Examiner’s rejection of claim 88 reciting
transmitting first and second channel identification data to one or more
participants over one communications channel based on the hopping
sequence according to the frequency hopping protocol. See RAN 201
(referring to the rejection of claim 5 on RAN 182–83).
Although Schmidl’s master transmits packetized channel
identification information regarding the RHS to slave units (see col. 3, ll.
28–31, 55–64), Schmidl does not specify how this packetized transmission
occurs, let alone that it occurs on a channel based on a hopping sequence
according to a frequency hopping protocol. Although communication using
standard and reduced hopping sequences occurs over a channel according to
a Bluetooth frequency hopping protocol, we cannot say—nor has the
Examiner shown—that the preceding transmission of 79-bit packets
necessarily occurs over such a channel. As Patent Owner indicates, these
packets could be transmitted over non-Bluetooth channels. App. Br. 77.
So even if it is probable that the 79-bit packets are sent over a channel
according to a Bluetooth frequency hopping protocol in Schmidl, that is still
insufficient for anticipation. See In re Robertson, 169 F.3d 743, 745 (Fed.
Cir. 1999) (“Inherency . . . may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.”) (citations omitted). To the extent that
the Examiner finds that the 79-bit packets are necessarily transmitted over a
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channel according to a Bluetooth frequency hopping protocol, there is
insufficient evidence to support such a finding given Schmidl’s limited
disclosure in this regard.
Therefore, we are persuaded that the Examiner erred in rejecting
claim 88, and claims 5, 15–17, 21–42, 76, 78, 83, 84, 93, 95–106, 108–110,
114–119, 205, 225, 256, 276, 284–287, 289, 291–294, 296, 304–306, 310–
317, 321–325, and 588 that recite commensurate channel identification data
transmission limitations. Because this issue is dispositive regarding our
reversing the Examiner’s rejection of these claims, we need not address
Patent Owner’s other associated arguments.

THE ANTICIPATION REJECTION OVER HAARTSEN (“ISSUE 18”)
Claims 43–49, 297, 299, 301, and 303
We sustain the Examiner’s rejection of independent claim 43 reciting,
in pertinent part, a processor that can determine whether channel
identification information output by a hop selection mechanism identifies a
channel that is not in the first set of channels, and if so, select a channel from
the first set of channels to use for frequency hopping communications in
place of the channel identified by the channel identification information.
See RAN 228–31.
Despite Patent Owner’s arguments to the contrary (App. Br. 67–69;
Reb. Br. 12), we see no error in the Examiner’ reliance on Haartsen’s hop
selection functionality for teaching the recited channel selection. In
Haartsen, if a selected hop channel is an allowable hop channel, then it is
used; otherwise, “forbidden” channels, namely those to be avoided, are
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transformed into allowable channels. Haartsen, Abstract; col. 8, ll. 5–8; col.
11, ll. 4–37.
By determining that a channel is forbidden, Haartsen effectively
determines that it is not to be used and, therefore, not in the first set of
channels to be used. See Haartsen, Abstract. Notably, Haartsen’s
transforming forbidden hops to allowable hops effectively selects a channel
from the first set to use in place of the forbidden channel. See Haartsen, col.
11, ll. 19–25; Abstract (“If the selected hop channel is a forbidden hop
channel, then a time-varying parameter is used to select a substitute hop
channel from the set of allowable hop channels.”).
Patent Owner’s arguments regarding Haartsen’s determining channels
to be avoided versus the claimed invention’s determining channels to be
used (App. Br. 68–69) are unavailing in light of Haartsen’s above-noted
functionality that fully meets the recited determination and selection.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 43, and claims 44–49, 297, 299, 301, and 303 not argued separately
with particularity.

Claims 50–54, 56–61, 68–70, 72–74, 298, 300, 302, 326–330, and 589
We also sustain the Examiner’s rejection of independent claim 50.
See RAN 234 (referring to the rejection of claim 43). First, Patent Owner’s
arguments regarding Haartsen’s determining channels to be avoided versus
the claimed invention’s determining channels to be used (App. Br. 71–73)
are unavailing in light of Haartsen’s functionality that fully meets the recited
determination and selection as noted previously.
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Second, although the Examiner’s rejection refers to the rejection of
claim 43 despite reciting additional limitations as Patent Owner indicates
(App. Br. 73), Patent Owner nevertheless does not squarely address—let
alone persuasively rebut—the Examiner’s additional findings in connection
with claim 50 including Haartsen’s transmitting first identification data,
namely data indicating allowed channels associated with the original
sequence, to a slave device over a channel based on the hopping sequence
according to the frequency hopping protocol. See RAN 40–42; see also
Reb. Br. 12 (referring to the Appeal Brief in connection with this rejection).
Therefore, to the extent that the Examiner erred by referring to the
rejection of claim 43 in rejecting claim 50, we nevertheless treat such an
error as harmless given the Examiner’s articulated findings elsewhere in the
RAN in connection with claim 50’s additional disputed limitations that are
not persuasively rebutted.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 50, and claims 51–54, 56–61, 68–70, 72–74, 298, 300, 302, 326–330,
and 589 not argued separately with particularity.

THE OBVIOUSNESS REJECTION OVER DICKER AND CUFFARO
(“ISSUE 7”)

We do not sustain the Examiner’s obviousness rejection of
independent claim 2 reciting, in pertinent part, channel selection criteria
specifying that a particular channel (a) receives a specified number of
affirmative votes to use the channel from plural participants, and (b) does
not receive a negative vote from a participant to not use the channel. In the
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rejection, the Examiner cites Cuffaro for teaching this limitation. See RAN
245–48.
To be sure, Cuffaro uses a voting procedure to compare measured
quality metrics for unassigned and assigned frequencies. Cuffaro, Abstract;
col. 12, ll. 54–60 (reciting voting in favor of an unassigned frequency if that
frequency’s measured quality metric indicates a higher signal quality than
the assigned frequency’s metric); col. 9, ll. 39–45 (indicating “+1” vote for
unassigned frequency f43 in Figure 5A if the adjusted interference
measurement is below that for assigned frequencies). According to the
Examiner, Cuffaro’s system selects frequency f43 in this example because it
received an affirmative “+1” vote and no negative votes. RAN 18–19.
Although a vote in Cuffaro may express a preference to use one
frequency over another, it merely determines the maximum number of
positive votes that can vary—not a specified number of affirmative votes as
Patent Owner indicates. App. Br. 41–43; Reb. Br. 5–6. As Patent Owner
explains, it would make no sense for Cuffaro’s frequency selection to be
conditioned on a specified number of votes because the number of assigned
frequencies cannot vary and must be equal to the number of transceivers
within a base station. Reb. Br. 6 (citing Cuffaro, col. 1, ll. 62–64; col. 7, ll.
14–18).
Notably, these points were emphasized by another panel of this Board
in three related inter partes review proceedings in finding similar arguments
persuasive. See Qualcomm I, at 27–28 (“The maximum number of positive
votes [in Cuffaro] may vary and is not a ‘specified number.’”); see also id. at
29 (crediting expert testimony that “[i]t would make no sense for [Cuffaro’s
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votes] to be a specified number, since in Cuffaro’s cellular systems there is
no option for the number of assigned frequencies used to vary, since they
must be equal to the number of transceivers within the basestation.”).
Accord Qualcomm II, at 27–29 (same); Qualcomm III, at 26–28 (same). But
see Marvell Semiconductor, at 18 (finding that Cuffaro’s maximum number
satisfied the recited specified number limitation in a different Board panel’s
decision to institute inter partes review).20
Given the Board’s findings and conclusions in three related
Qualcomm inter partes review proceedings that Cuffaro does not teach or
suggest a similar voting limitation, we likewise agree with Patent Owner that
Cuffaro falls short in this regard here.21
Therefore, we are persuaded that the Examiner erred in rejecting (1)
independent claim 2; (2) independent claims 9, 75, 85, 192, 212, 243, and
263 which recite commensurate limitations; and (3) dependent claims 3–8,
11, 12, 76, 77, and 86–90 for similar reasons. Because this issue is
dispositive regarding our reversing the Examiner’s rejection of these claims,
we need not address Patent Owner’s other associated arguments.

20 Unlike the three Qualcomm inter partes review proceedings, this
proceeding terminated without a final written decision. See Decision
Granting Joint Motion to Terminate entered Aug. 12, 2015.
21 Although the expert testimony in the three Qualcomm inter partes review
proceedings is not at issue here, it nonetheless informs our understanding of
Cuffaro’s voting functionality in assessing the propriety of the Examiner’s
findings and conclusions in this regard.
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THE OBVIOUSNESS REJECTION OVER GENDEL AND HAARTSEN
(“ISSUE 20”)

Claims 43–49
We sustain the Examiner’s obviousness rejection of independent
claim 43 over Gendel and Haartsen. RAN 268–69. Despite Patent Owner’s
arguments to the contrary (App. Br. 69; Reb. Br. 12), we are unpersuaded of
error in the Examiner’s reliance on Haartsen for the recited hop selection
mechanism features for the reasons noted previously and by the Examiner.
RAN 268–69 (incorporating pages 59 to 71 of Requester’s comments filed
July 13, 2012 in the ’648 reexamination proceeding by reference).
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 43, and claims 44–49 not argued separately with particularity.

Claims 50–74
We also sustain the Examiner’s obviousness rejection of claim 50
over Gendel and Haartsen. RAN 269 (incorporating by reference (1) pages
92–136 of the previous Office action filed January 12, 2012 in the ’648
reexamination proceeding (“Jan. 2012 ’648 Office Action”), and (2) pages
59 to 71 of Requester’s comments filed July 13, 2012 in the ’648
proceeding); RAN 40–44.
First, we are unpersuaded of error in the Examiner’s reliance on
Haartsen for the recited hop selection mechanism features for the reasons
noted previously and by the Examiner. Second, despite Patent Owner’s
contention that Gendel’s request to modify the frequency hopping pattern is
not sent over one communications channel based on the frequency hopping
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sequence according to the frequency hopping protocol (App. Br. 75–76),
Patent Owner does not persuasively rebut the Examiner’s finding that
identification data, namely the frequency of the unused segment in Gendel, is
transmitted to another device over one channel as claimed. See RAN 43–44
(citing Gendel, col. 7, ll. 62–67; col. 12, ll. 7–42; col. 4, ll. 4–26); see also
Jan. 2012 ’648 Office Action 105 (citing Gendel, col. 12, ll. 7–10, 36–48;
col. 4, ll. 4–26).
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 50, and claims 51–74 not argued separately with particularity.

THE UNCONTESTED OBVIOUSNESS REJECTIONS

We also sustain the Examiner’s obviousness rejections of (1) claims
28, 29, 83, 84, 114, and 115 over Dicker and Larsson (“Issue 11”); (2)
claims 30, 31, 116, and 117 over Dicker and Gendel (“Issue 13”); and (3)
claim 126 over Gerten and Gillis (“Issue 17”). RAN 259–67. These
rejections are not argued separately with particularity, and we are not
persuaded of error in these rejections for the reasons previously discussed.

THE WRITTEN DESCRIPTION REJECTION (“ISSUE 23”)
We do not sustain the Examiner’s written description rejection of
independent claim 43 reciting, in pertinent part, a hop selection mechanism
configured to, among other things, (1) output channel identification
information identifying a channel, and (2) determine whether the outputted
channel identification information identifies a channel that is not in the first
set of channels.
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At the outset, we note that the written description requirement under
§ 112, first paragraph requires that Appellant’s original disclosure
reasonably conveys possession of the claimed invention. See Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc). This original disclosure, however, is not necessarily reflected in an
issued patent whose content is subject to change during prosecution of its
corresponding application. Therefore, Patent Owner’s reliance on the ’418
patent’s disclosure to show written description support for the disputed
limitations (App. Br. 66–67, 70–71), while relevant, is nevertheless not
dispositive because these citations do not necessarily reflect the ’418
patent’s original disclosure, namely that of its underlying application, Serial
No. 09/948,488 filed September 6, 2001 (“the ’488 application”). We,
therefore, refer to the ’488 application in connection with the written
description rejection unless otherwise indicated.
Turning to the rejection, we find error in the Examiner’s written
description rejection of independent claim 43. To be sure, the ’488
application does not use the term “hop selection mechanism” explicitly as
the Examiner indicates. RAN 50–51. But the written description
requirement under § 112 does not demand any particular form of disclosure
or require a verbatim recitation. Ariad Pharms., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1352 (Fed. Cir. 2010) (en banc) (citations omitted).
Nevertheless, a description that merely renders the invention obvious does
not satisfy the requirement. Id.
The latter obviousness exception, however, is inapplicable here. The
’488 application specification explains that adaptive frequency hopping is
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implemented using a selection kernel that addresses a register. ’488
application 34:17–21. These adaptive frequency hopping techniques do not
require modifying the selection kernel, but rather use addresses outputted by
the selection kernel. See id. at 34:23 – 37:8; Fig. 5A (showing selection
kernel loading a set of channels into a register), Fig. 5B (showing selection
kernel replacing bad channels with good channels in a default set of
channels in a channel register).
Based on this selection kernel functionality detailed in the ’488
application, we agree with Patent Owner that the disclosed selection kernel
reasonably corresponds to the recited hop selection mechanism. App. Br.
67. Accordingly, the original disclosure reasonably conveys possession of
the recited hop selection mechanism configured to (1) output channel
identification information identifying a channel, and (2) determine whether
the outputted channel identification information identifies a channel that is
not in the first set of channels.
Therefore, we are persuaded that the Examiner erred in rejecting (1)
independent claim 43; (2) independent claim 50 which recite commensurate
limitations; and (3) dependent claims 44–49, 51–74, and 297–303 for similar
reasons. Because this issue is dispositive regarding our reversing the
Examiner’s rejection of these claims, we need not address Appellants’ other
associated arguments.

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THE § 112 REJECTIONS OF CLAIMS 360 AND 370
Because Patent Owner does not contest the Examiner’s § 112
rejections of claims 360 and 370 (see RAN 9, 51–52), we summarily sustain
these rejections. See MPEP § 1205.02.

THE REMAINING REJECTIONS
Because our decision is dispositive regarding patentability of all
appealed claims based on the foregoing prior art references, we need not
reach the merits of the Examiner’s decision to also reject (1) Claims 14–17,
21, 24, 32, 33, 36, 37, 40–42, 78, 93–98, 101, 102, 104, 105, 108, 110, and
118 under 35 U.S.C. § 102(e) as anticipated by Kostic (“Issue 3”); (2) Claim
120 under 35 U.S.C. § 102(e) as anticipated by Imamura (“Issue 6”); (3)
claims 43–45, 47–54, 56–61, 68–70, and 72–74 under 35 U.S.C. § 103(a) as
obvious over over Gerten and Haartsen (“Issue 19”); and (4) claims 43, 45,
46, 48, 50–52, 54, 56, 59, 60, 64, 66, 69, 72, and 73 under 35 U.S.C. §
103(a) as obvious over Imamura and Haartsen (“Issue 21”). See Beloit
Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (approving ITC’s
determination based on a single dispositive issue, and not reaching other
issues not decided by the lower tribunal).

CONCLUSION
We affirm the Examiner’s rejections as follows:
(1) claims 14–17, 20–22, 24, 28–42, 78, 83, 84, 93–106, 108–110,
114–119, 283–296, and 593–598 under § 102(e) as anticipated by Gendel
(“Issue 4”);
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(2) claims 14, 41, 42, 93, 94, 96, 120–122, 125, 127, 128, 304, 305,
310–312, 314–316, 321–323, 325–371, and 588–591 under § 102(e) as
anticipated by Gerten (“Issue 2”);
(3) claims 14–17, 21–24, 32–42, 78, 94, 95–106, 108–110, 118, 119,
304–309, 313, 315–320, 324, 588, and 593–598 under § 102(e) as
anticipated by Dicker (“Issue 1”);
(4) claims 2–4, 6–14, 75, 77, 85–87, 89–92, 94, 129–204, 206–224,
226–255, 257–275, 277–283, 288, 290, 295, 372, 373, 376, 384, 385, 396,
397, 408, 420, 421, 432, 433, 444, 445, 456, 457, 468, 469, 480, 481, 492,
493, 498, 504, 505, 516, 517, 528, 529, 540, 541, 546, 552, 553, 564, 565,
576, and 577 under § 102(e) as anticipated by Schmidl (“Issue 5”);
(5) claims 43–54, 56–61, 68–70, 72–74, and 297–303 under § 102(e)
as anticipated by Haartsen (“Issue 18”);
(6) claims 43–74 as obvious over Gendel and Haartsen (“Issue 20”);
(7) claims 28, 29, 83, 84, 114, and 115 as obvious over Dicker and
Larsson (“Issue 11”);
(8) claims 30, 31, 116, and 117 over Dicker and Gendel (“Issue 13”);
and
(9) claim 126 over Gerten and Gillis (“Issue 17”);
(10) claims 360 and 370 under § 112, second paragraph; and
(11) claims 360 and 370 under § 112, fourth paragraph.

We reverse the Examiner’s rejections as follows:
(1) claims 2–13, 18, 75–77, 85–92, 120–122, 129–282, 372–434, and
436–587 as anticipated by Gendel (“Issue 4”);
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(2) claim 18 under § 102(e) as anticipated by Dicker (“Issue 1”);
(3) claims 5, 15–17, 21–42, 76, 78, 83, 84, 88, 93, 95–106, 108–110,
114–119, 205, 225, 256, 276, 284–287, 289, 291–294, 296, 304–306, 310–
317, 321–325, and 588 under § 102(e) as anticipated by Schmidl (“Issue 5”);
(4) claims 2–9, 11, 12, 75–77, 85–90, 192, 212, 243, 263 under § 103
as obvious over Dicker and Cuffaro (“Issue 7”); and
(5) claims 43–74 and 297–303 under § 112, first paragraph as failing
to comply with the written description requirement (“Issue 23”).

We do not reach the following rejections:
(1) Claims 14–17, 21, 24, 32, 33, 36, 37, 40–42, 78, 93–98, 101, 102,
104, 105, 108, 110, and 118 under 35 U.S.C. § 102(e) as anticipated by
Kostic (“Issue 3”);
(2) Claim 120 under 35 U.S.C. § 102(e) as anticipated by Imamura
(“Issue 6”);
(3) claims 43–45, 47–54, 56–61, 68–70, and 72–74 under 35 U.S.C. §
103(a) as obvious over over Gerten and Haartsen (“Issue 19”); and
(4) claims 43, 45, 46, 48, 50–52, 54, 56, 59, 60, 64, 66, 69, 72, and 73
under 35 U.S.C. § 103(a) as obvious over Imamura and Haartsen (“Issue
21”).

DECISION
The Examiner’s decision to reject claims 2–18, 20–24, 28–78, 83–
106, 108–110, 114–122, 125–434, 436–591, and 593–598 is affirmed-in-
part.
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Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED-IN-PART

lb

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PATENT OWNER:

HICKMAN PALEMERMO BECKER BINGHAM LLP
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John S. Pratt, Esq.
KILPATRICK TOWNSEND & STOCKTON LLP
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