Ex Parte Denk et al

Patent Trial and Appeal Board

Dec 9, 2015

10991559 (P.T.A.B. Dec. 9, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/991,559 11/18/2004
51092 7590 12/11/2015
ESCHWEILER & AS SOCIA TES LLC
629 EUCLID A VENUE, SUITE 1000
NATIONAL CITY BUILDING
CLEVELAND, OH 44114
FIRST NAMED INVENTOR
Robert Denk
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
LLP152US 8035
EXAMINER
CHEN, JUNPENG
ART UNIT PAPER NUMBER
2649
NOTIFICATION DATE DELIVERY MODE
12/11/2015 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
Docketing@eschweilerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT DENK, BERTRAM GUNZELMANN, and
XIAOFENGWU
Appeal2013-011043
Application 10/991,559
Technology Center 2600
Before JOHNNY A. KUMAR, CATHERINE SHIANG, and
MELISSA A. RAAP ALA, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 53---64. We have jurisdiction under 35 U.S.C. § 6(b ). We
reverse.
STATEMENT OF THE CASE
The present invention relates to telecommunications. See generally
Spec. 1. Claim 53 is exemplary:
53. A mobile station, comprising:
a baseband integrated circuit chip, comprising:
Appeal2013-011043
Application 10/991,559
a first baseband subsystem comprising:
a first digital signal processor configured to control a
protocol of the mobile station based on a reception or
transmission of data according to a first radio standard or a
second, different radio standard;
a system control unit configured to transmit and receive
control signals based on a dictated one of the first radio
standard and the second, different radio standard in response to
an instruction from the first digital signal processor;
a second baseband subsystem, comprising:
a second digital signal processor;
a coding unit configured to encode data supplied thereto
according to a first radio standard or a second, different
radio standard in response to an instruction from the
second digital signal processor; and
a decoding unit configured to decode data supplied
thereto according to the first radio standard or the second
radio standard in response to an instruction from the
second digital signal processor;
wherein the second digital signal processor is
configured to generate and provide instructions to the
coding unit and decoding unit, respectively, to dictate a
processing according to the first radio standard or the
second radio standard based on an instruction from the
system control unit;
a coprocessor integrated circuit chip operably associated with the
basesband integrated circuit chip, configured to receive and transmit data in
accordance with the second radio standard, wherein the coprocessor is
configured to transmit data for encoding or decoding to the second baseband
system in accordance with instructions from the system control unit.
Abrahamson
Rozenblit
References and Rejections
US 2004/0109431 Al
US 2004/0151140 Al
2
June 10, 2004
Aug. 5,2004
Appeal2013-011043
Application 10/991,559
Claims 53-58 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rozenblit and prior art admission by Applicant
("APAA").
Claims 59-63 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Rozenblit; or alternatively, under 35 U.S.C. § 103(a) as being
obvious over Rozenblit.
Claim 64 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Rozenblit and Abrahamson.
ANALYSIS
We have reviewed Appellants' arguments in the Briefs, the
Examiner's rejection, and the Examiner's response to Appellants'
arguments. We concur with Appellants' conclusion that the Examiner erred
in finding Rozenblit teaches "wherein the second digital signal processor is
configured to generate and provide instructions to the coding unit and
decoding unit, respectively, to dictate a processing according to the first
radio standard or the second radio standard based on an instruction from
the system control unit," as recited in independent claim 53 (emphases
added). 1
The Examiner cites Rozenblit's paragraph 29 and finds:
a person with ordinary skill in the art, when given the teachings
of Rozenblit et al., would agree that the ASIC 135, or any other
available processors above, is fully functional of generating
control signals to control the decoder and encoder of the
transceiver 100.
1 Appellants raise additional arguments. Because the identified issue is
dispositive of the appeal, we do not reach the additional arguments.
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Appeal2013-011043
Application 10/991,559
Ans. 15.
Although Rozenblit et al. does not explicitly describe the ASIC
135 as the processor out of the four available processors to
control the decoder and encoder, a person with ordinary skill in
the art would agree that the use of ASIC 135, or any of other
available processors, to control the decoder/encoder is only a
matter of design choice because par [0029] describes that
control signals are originated from any of DSP 126, the ASIC
135, the FPGA 133, or microprocessor 120.
Appellants argue:
Thus claim 53 requires three distinct features:
( 1) second digital processor generates instructions that dictate
processing according to first or second radio standards,
(2) second digital processor provides such instructions to the
coding unit and the decoding unit, and
(3) second digital processor generates such instructions based
on an instruction it receives from the system control unit.
Rozenblit et al. simply provide no affirmative teaching for the
limitations (1) and (3) highlighted above, and whether such
elements are capable of generating control signals is not
dispositive of \~1hether such signals are generated to perform the
functions highlighted in claim 5 3.
Reply Br. 2-3; see also App. Br. 6-9.
We agree with Appellants that the Examiner fails to provide adequate
support for the rejection, because the Examiner's finding that Rozenblit's
ASIC 135 "is fully functional of generating control signals to control the
decoder and encoder" (Ans. 15) is inadequate for showing Rozenblit teaches
the disputed claim limitation. See Reply Br. 2-3. The Examiner does not
explain, and we do not see, how such finding show Rozenblit teaches
"wherein the second digital signal processor is configured to ... dictate a
processing according to the first radio standard or the second radio standard
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Appeal2013-011043
Application 10/991,559
based on an instruction from the system control unit," as required by
independent claim 5 3.
Because the Examiner fails to provide sufficient support for the
rejection, we are constrained by the record to reverse the Examiner's
rejection of claim 53 and corresponding dependent claims.
For similar reasons, we also reverse the Examiner's rejection of
independent claims 59 and 64, which recite similar limitations, and
corresponding dependent claims.
We note the Examiner cites an additional reference Abrahamson for
the rejection of claim 64. The Examiner relies on Rozenblit in the same
manner discussed above in the context of claim 53, and does not rely on
Abrahamson in any manner that remedies the deficiencies of Rozenblit
discussed above. See Ans. 12-14.
DECISION
The Examiner's decision rejecting claims 53---64 is reversed.
REVERSED
lv
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