Ex Parte Ahmed

Board of Patent Appeals and Interferences

Jun 7, 2012

10126699 (B.P.A.I. Jun. 7, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/126,699 04/22/2002 Walid Ahmed 29250-000562/US 5380
30594 7590 06/07/2012
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 8910
RESTON, VA 20195
EXAMINER
SCHEIBEL, ROBERT C
ART UNIT PAPER NUMBER
2467
MAIL DATE DELIVERY MODE
06/07/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WALID AHMED
____________

Appeal 2009-012011
Application 10/126,699
Technology Center 2400
____________

Before THOMAS S. HAHN, ELENI MANTIS MERCADER
and CARL W. WHITEHEAD, JR. Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

.

DECISION ON APPEAL
Appeal 2009-012011
Application 10/126,699

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1, 3, 5, 9-12, 14, 15, 19, and 20. Appeal Brief 5. We have
jurisdiction under 35 U.S.C. § 6(b) (2002). We reverse.

Introduction
The invention is directed to a method and apparatus for estimating a
number of information symbols in a received transmission. See Appeal Brief
5-11.

Exemplary Claim
Exemplary independent claim 1 under appeal reads as follows:
1. A method for estimating a number of information symbols in a
received data transmission, the method comprising:

determining a transition indicator for at least one symbol based on the
data transmission, the data transmission including a sequence of
information symbols followed by zero or more non-information
symbols; and

estimating a number of information symbols based on the transition
indicator, the transition indicator, indicating a likelihood that the
corresponding symbol is a last information symbol in the sequence of
information symbols of the data transmission.

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Rejections on Appeal
Claims 1 and 3-8 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Answer 11.
Claims 1, 5, 9-11, 15, 19, and 20 stand rejected under 35 U.S.C.
§102(e) as being anticipated by Sato (U.S. Patent Number 6,934,321 B2;
issued August 23, 2005). Answer 3-8.
Claims 1 and 3 stand rejected under 35 U.S.C. §102(e) as being
anticipated by Kim (U.S. Patent Number 6,792,041 B1; September 14,
2004). Answer 8-9.
Claims 3, 12, and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sato and Kim. Answer 9-11.

Issues on Appeal
Are claims 1 and 3-8 directed to non-statutory subject matter?
Does either Sato or Kim, alone or in combination, disclose a transition
indicator wherein estimation of a number of information symbols depends?

PRINCIPLE OF LAW
“Although abstract principles are not eligible for patent protection, an
application of an abstract idea may well be deserving of patent protection.
See Diamond v. Diehr, 450 U.S. 175, 187, 101 S.Ct. 1048 (1981) (“an
application of a law of nature or mathematical formula to a known structure
or process may well be deserving of patent protection”); Parker v. Flook,
437 U.S. 584, 591, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978) (“While a
scientific truth, or the mathematical expression of it, is not a patentable
invention, a novel and useful structure created with the aid of knowledge of
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scientific truth may be.”). The application of an abstract idea to a “new and
useful end” is the type of invention that the Supreme Court has described as
deserving of patent protection. Gottschalk v. Benson, 409 U.S. 63, 67, 93
S.Ct. 253, 34 L.Ed.2d 273 (1972). After all, unlike the Copyright Act which
divides idea from expression, the Patent Act covers and protects any new
and useful technical advance, including applied ideas.” Ultramercial v.
Hulu, 657 F.3d 1323, 1327 (Fed. Cir. 2011).

ANALYSIS
Non-statutory subject matter rejection
The application was remanded by the Board back to the Examiner
(mailed January 30, 2009) because, “Claims 1 and 3-8 of the instant
application are set forth as method claims that may not fall with[in] one of
the four statutory categories of invention recited in 35 U.S.C. §
101.” Remand 2.
The Examiner finds:
The instant claims are neither positively tied to a particular
machine that accomplishes the claimed method steps nor
transform underlying subject matter, and therefore do not
qualify as a statutory process. For example, in claim 1, the
language [sic] “The method for estimating a number of
information symbols in a received data transmission, the
method comprising . . .” is broad enough that the claim could be
completely performed mentally, verbally or without a machine.
Further, no transformation is apparent.

Subsequent Answer 11.

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Appellant argues:

As the Examiner cited, independent claim 1 recites a "received
data transmission," which Appellants submit clearly, if
implicitly, ties the claimed method to an apparatus, e.g., a
receiver, not a person. For example, if what the Examiner
alleges were true, e.g., that the method could be performed
entirely by a person (mentally or verbally), this person would
have to receive the data transmission as claimed. Appellants
submit that this interpretation of the claim is unreasonable.
Appellants submit that the format of the received data (e.g.,
including sequences of information symbols, zeros, and non-
information symbols), the means of transmission of the data
(e.g., carrier waves over the air and/or wire), and the utility of
the claimed method (e.g., to determine the block size for
multiple phase shift keying (MPSK) used in wireless
communication), all clearly indicate that an apparatus and not a
person is performing the claimed steps.

Reply Brief 5-6 (footnotes omitted).
We find Appellant’s argument to be persuasive. We agree with the
Examiner that claim 1 recites ideas such as “estimating a number of
information symbols” however when paired in conjunction with receiving
the information symbols in a “data transmission,” the application of such a
pairing deserves patent protection. See Ultramercial at 1327. Therefore we
do not sustain the Examiner’s 35 U.S.C. § 101 rejection.

Anticipation Rejection
Appellant argues the Examiner’s finding that Sato discloses a
transition indicator as recited in claim 1 because Sato’s correlations strength
indicates “the likely bit length of a particular transmission” and “the bit
length indicates the transition from information bits to non-information bits”
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are not substantiated by Sato. Appeal Brief 18. Appellant concedes that Sato
teaches that a “maximum likelihood transport format combination (TFC)
may be determined by calculating the correlation strengths between the bit
strings received for the respective transport combinations and the normal
encoded bit string.” Id. However, Appellant argues that the TFC does not
determine a bit length but in fact the bit length may be estimated by
determining a transmission rate. Id. Appellant concludes that Sato’s
correlation strengths determine the TFC and the TFC determines the
transport channel therefore Sato fails to teach that the correlation strengths is
a transition indicator indicating a transition from information bits to non-
information bits as recited in claim 1. Id.
We find the Appellantʼs arguments persuasive. The Examiner points
to Sato’s abstract as well as several portions of Sato’s Specification;
however, we agree with Appellant, Sato is not found to disclose a transition
indicator as recited in claim 1 for the reason stated above. See Subsequent
Answer 12-15; Reply Brief 8-9. Therefore we do not sustain the Examiner’s
anticipation rejection based upon Sato of claim 1 and its dependent claims.
Appellant argues that Kim also fails to anticipate claim 1 because Kim
estimates the data rate when the energy differentiation is equal to or greater
than half the transmission power level of the received signal and fails to
teach that the energy differentiation is a transition indicator as claimed.
Reply Brief 9-10. The Examiner finds that Kim does teach the employment
of a transition indicator as claimed and refers to several passages of Kim as
well as Kim’s Figure 3. Subsequent Answer 8 and 15-16. However, we find
Appellantʼs arguments to be persuasive because it is not apparent for the
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reasons stated by Appellant, that Kim discloses a transition indicator. See
Appeal Brief 9-10. Therefore we will not sustain the Examiner’s
anticipation rejection based upon Kim of claim 1 and its dependent claims.

Obviousness rejection
Claims 3, 12, and 14 have been rejected under 35 U.S.C. § 103 over
Sato and Kim; however, neither Sato nor Kim alone or in combination
address the deficiencies noted above. Therefore we do not sustain the
Examiner obviousness rejection.

DECISION
The rejections of claims 1, 3, 5, 9-12, 14, 15, 19, and 20 under the
various 35 U.S.C. §§ 101, 102 and 103 are reversed.

REVERSED

pgc