Ex Parte Ashikhmin et al

Patent Trial and Appeal Board

Dec 16, 2014

10835085 (P.T.A.B. Dec. 16, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/835,085 04/29/2004 Alexei Ashikhmin 7-27 6751
46303 7590 12/17/2014
RYAN, MASON & LEWIS, LLP
1175 Post Road, 2nd Floor
Westport, CT 06880
EXAMINER
KIM, KEVIN
ART UNIT PAPER NUMBER
2631
MAIL DATE DELIVERY MODE
12/17/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALEXEI ASHIKHMIN and JUNG-TAO LIU
____________

Appeal 2014-006761
Application 10/835,085
Technology Center 2600
____________

Before THU A. DANG, JAMES R. HUGHES, and
ERIC S. FRAHM, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1, 11, 18, 25, and 29–32. (App.
Br. 2.)1, 2 We have jurisdiction under 35 U.S.C. § 6(b).

1 We refer to Appellants’ Specification (“Spec.”) filed April 4, 2004; Appeal
Brief (“App. Br.”) filed December 13, 2013; and Reply Brief (“Reply Br.”)
filed May 23, 2014. We also refer to the Examiner’s Answer (“Ans.”)
mailed March 26, 2014, and Final Office Action (Final Rejection) (“Final
Act.”) mailed July 19, 2013.
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We affirm-in-part.
Appellants’ Invention
The invention at issue on appeal concerns a transmitter, CDMA (code
division multiple access) system, and method for generating a plurality of
codes (codebook) for use in a CDMA communication system where the
codes comprise a plurality of vectors and the method comprises selecting
amplitude and polarity values for each vector. (Spec. 1:7–9; 1:32–2:21;
Abstract.)
Representative Claim
Independent claim 1, reproduced below with the key disputed
limitations emphasized, further illustrates the invention:
1. A method for generating a code book for use in a CDMA
system, said code book comprised of a plurality of vectors, said
method comprising:
selecting an amplitude and polarity value for each vector
of said code book to provide a reduced peak-to-average power
ratio for transmissions that include data transmissions

2 Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final
decision rejecting claims 1–6, 8, 9, 11–16, 18–23, 25–27, and 29–32, which
are all the claims remaining in the application. Claims 7, 10, 17, 24, and 28
have been indicated as including allowable subject matter by the Examiner
(Final Act. 1, 8). Appellants, however, only appeal claims 1, 11, 18, 25, and
29–32, and do not appeal claims 2–6, 8, 9, 12–16, 19–23, 26, and 27 —
although they note that these claims are pending. (App. Br. 2.) The Patent
Appeal and Trial Board has no jurisdiction as to non-appealed claims and we
deem claims 2–6, 8, 9, 12–16, 19–23, 26, and 27 to be canceled and not
before us for review. The Examiner has the authority to cancel non-
appealed claims 2–6, 8, 9, 12–16, 19–23, 26, and 27. See Ex parte Ghuman,
88 USPQ2d 1478, 1480 (BPAI 2008) (precedential) (per curiam). We have
jurisdiction of claims 1, 11, 18, 25, and 29–32 under 35 U.S.C. § 6(b).
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comprising one or more data symbols, wherein each vector in
said code book depends on transmitted user data.
Rejection on Appeal
The Examiner rejects claims 1, 11, 18, 25, and 29–32 under 35 U.S.C.
§ 103(a) as being unpatentable over Appellants’ admitted prior art
(“AAPA”) and Wright (US 7,453,954 B2, issued Nov. 18, 2008 (filed Apr.
26, 2006, claiming benefit of US 09/910,477, filed July 20, 2001)).3

ISSUES
Based upon our review of the administrative record, Appellants’
contentions, and the Examiner’s findings and conclusions, the pivotal issues
before us follow:
1. Does the Examiner err in finding that the combination of
AAPA and Wright collectively would have taught or suggested “selecting an
amplitude and polarity value for each vector of said code book to provide a
reduced peak-to-average power ratio for transmissions that include data
transmissions comprising one or more data symbols, wherein each vector in
said code book depends on transmitted user data” within the meaning of
Appellants’ claim 1 and the commensurate limitations of claims 11, 18, and
25?
2. Does the Examiner err in finding that the combination of
AAPA and Wright collectively would have taught or suggested “wherein

3 The Examiner actually rejects claims 1–6, 8, 9, 11–16, 18–23, 25–27, and
29–32 (Ans. 2), but claims 2–6, 8, 9, 12–16, 19–23, 26, and 27 are not
before us (see footnote 2). Therefore, for consistency and clarity we amend
the ground of rejection to reflect the actual claims on appeal.
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each vector in said code book depends on transmitted user data by
generating a vector v by multiplying said transmitted user data by a
generator matrix and using said vector v in the formation of each of said
vectors in said code book” as recited in Appellants’ claims 29–32?

FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer, the Final Office
Action mailed July 19, 2013, and the Advisory Action mailed October 9,
2013, as our own, except as to those findings that we expressly overturn or
set aside in the Analysis that follows.

ANALYSIS
Based on Appellants’ arguments (App. Br. 3–6), we find Appellants
argue claims 1, 11, 18, and 25 as a group and do not separately argue with
particularity the patentability of independent claims 11, 18, and 25.
Appellants also present arguments with respect to dependent claims 29–32.
Accordingly, we select (i) independent claim 1 as representative of
Appellants’ arguments and grouping with respect to claims 1, 11, 18, and 25;
and (ii) dependent claim 29 as representative of Appellants’ arguments and
grouping with respect to claims 29–32. 37 C.F.R. § 41.37(c)(1)(iv) (2012).
We adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken (Ans. 2), and (2) the
reasons set forth by the Examiner in the Examiner’s Answer (id. at 7–9) in
response to Appellants’ Appeal Brief, with the exceptions discussed (infra).
We concur with the findings and conclusions reached by the Examiner, with
the exceptions discussed (infra), and we provide the following for emphasis.
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The § 103 Rejection of Claims 1, 11, 18, and 25
Appellants contend that AAPA and Wright do not teach the disputed
features of claim 1. (App. Br. 3–6; Reply Br. 2–6.) Specifically, Appellants
contend that “Applicants did not suggest or admit that the prior art shown in
FIG. 1 employs a codebook. Rather, as noted above, no code book is used
in FIG. 1” (App. Br. 5), and “Applicants have never stated or admitted that
it was previously known to use the codebook of FIG. 2 in the conventional
CDMA system of FIG. 1” (Reply Br. 2). Appellants concede that “Wright
teaches changing amplitudes” (App. Br. 5), but further contend that “Wright
is not selecting an amplitude and polarity value for each vector of said code
book” (App. Br. 6).
We disagree with Appellants’ contention that figure 2 (FIG. 2) is not
admitted prior art. Appellants expressly label FIG. 2 of their Specification
as “Prior Art” and state that “FIG. 2 illustrates an exemplary code book that
can be employed by the DSCDMA system of FIG. l” (Spec. 2:28–29) and
“FIG. 2 illustrates an exemplary code book A 200 that can be employed by
the DS-CDMA system 100 of FIG. 1” (Spec. 3:26–27). It follows that the
codebook described in FIG. 2 is indeed admitted prior art and we agree with
the Examiner that the codebook describes a plurality of vectors. (Ans. 7–8.)
We note that the references cited by the Examiner must be read, not in
isolation, but for what each fairly teaches in combination with the prior art
as a whole. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(one cannot show non-obviousness by attacking references individually
where the rejections are based on combinations of references) (citation
omitted). Here, the Examiner cited the combination of AAPA and Wright as
teaching selecting an amplitude for each vector in a codebook. (Ans. 2, 8.)
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The Examiner also cited the AAPA as teaching selecting a polarity for each
vector. (Ans. 8.) Appellants fail to appreciate the collective teachings of
AAPA and Wright as a whole.
We broadly but reasonably construe Appellants’ claim 1 to recite
selecting an amplitude and polarity value (data) for each vector of a code
book (plurality of vectors) where each vector depends on “transmitted user
data.” In other words, the claim requires selecting data values for vectors
that are dependent on transmitted data. Appellants do not define “user
transmitted data” either in their Specification or the claim. Thus, any user
transmitted data, for example a voice communication, satisfies the
limitation. The recited functionality, selecting data values for vectors,
remains the same regardless of what the transmitted data constitutes, how
the transmitted data may be named (labeled), or the relationship among the
transmitted data and the resultant vector. Thus, the limitation “wherein each
vector in said code book depends on transmitted user data” does not further
limit the claimed invention either functionally or structurally. The
informational content of the transmitted data conveyed represents non-
functional descriptive material, which “does not lend patentability to an
otherwise unpatentable computer-implemented product or process.” Ex
parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008) (precedential). See Ex
parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (informative) (“wellness-
related” data in databases and communicated on distributed network did not
functionally change either the data storage system or the communication
system used in the claimed method), aff’d, No. 06-1003 (Fed. Cir. June 12,
2006) (Rule 36). See also In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004);
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Nehls, 88 USPQ2d at 1887–90 (discussing non-functional descriptive
material).
Similarly, the limitation “to provide a reduced peak-to-average power
ratio for transmissions that include data transmissions comprising one or
more data symbols” does not further limit the recited functionality of
selecting data values for vectors. Appellants’ claim does not recite the
algorithm or code for selecting the data values, nor does the claim recite the
process (method steps) for determining the values to be selected. Instead,
Appellants’ claim recites the intended use or purpose of selecting the data
values for the vectors, which “usually will not limit the scope of the claim
because such statements usually do no more than define a context in which
the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-
Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003).
Here, Appellants attempt to distinguish the claim by the content of
transmitted data and the purpose of the recited “selecting” step. However,
the content of the transmitted data and the reason for selecting the amplitude
and polarity values does not change the functionality of selecting the values
(amplitude and polarity).
Even if we were to give some patentable weight to these limitations,
as explained by the Examiner, the combination of the AAPA and Wright
would have at least suggested selecting amplitude and polarity values for
each of a plurality of vectors (each vector in a codebook) to provide a
reduced peak-to-average power ratio for data transmissions, as taught by
Wright, wherein each vector in said code book depends on transmitted user
data. (Ans. 7–8.) We find Appellants contrary arguments (App. Br. 3–6;
Reply Br. 2–6) unpersuasive of Examiner error as follows.
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Appellants argue features not recited in claim 1. Specifically,
contrary to Appellants’ arguments (App. Br. 5; Reply Br. 5), nothing in the
claim limits the transmitted user data (data transmissions), and the vector u,
which is not recited, is not relevant to claim 1. Rather, as explained by
Appellants, conventional CDMA systems could carry user transmitted data
(data transmissions) including voice traffic and determining the peak-to-
average power ratio was known. (Spec. 1:12–30.)
To the extent Appellants contend the user transmitted data and/or
intended purpose of the data value selection (to provide a reduced peak-to-
average power ratio for transmissions) somehow distinguish the recited
limitations from the conventional CDMA system described in Appellants’
Specification, Appellants have not sufficiently explained such a distinction.
Thus, for all the reasons supra, Appellants do not persuade us of error in the
Examiner’s obviousness rejection of representative independent claim 1.
For these same reasons, Appellants also do not persuade us of error in the
Examiner’s obviousness rejection of independent claims 11, 18, and 25, not
separately argued by Appellants (supra).
The § 103 Rejection of Claims 29–32
Appellants contend that the combination of AAPA and Wright does
not teach the disputed features of claim 29. (App. Br. 7; Reply Br. 6–8.)
Specifically, Appellants contend that
the admitted prior art and Wright, alone or in combination, do
not disclose or suggest “each vector in said code book
depend(ing) on transmitted user data by generating a vector v
by multiplying said transmitted user data by a generator matrix
and using said vector v in the formation of each of said vectors
in said code book” . . . .
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(Reply Br. 7.) We agree.
Although AAPA describes vectors in a codebook and that such
vectors “depend on” (user) transmitted data (supra), nothing in either AAPA
or Wright describes generating a vector v using such a vector in the
formation of the codebook vectors. Consequently, we are constrained by the
record before us to find that the Examiner erred in finding that the
combination of AAPA and Wright teaches the recited features of
Appellants’ claim 29. Claims 30–32 include this same limitation.

CONCLUSION
Appellants have not shown that the Examiner erred in rejecting claims
1, 11, 18, and 25 under 35 U.S.C. § 103(a).
Appellants have shown that the Examiner erred in rejecting claims
29–32 under 35 U.S.C. § 103(a).
Claims 2–6, 8, 9, 12–16, 19–23, 26, and 27 are not before us.

DECISION
We affirm the Examiner’s rejections of claims 1, 11, 18, and 25. We
reverse the Examiner’s rejections of claims 29–32.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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