Ex Parte Fertl et al

Patent Trial and Appeal Board

Jun 18, 2018

13900202 (P.T.A.B. Jun. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/900,202 05/22/2013
23911 7590 06/20/2018
CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, DC 20044-4300
FIRST NAMED INVENTOR
PeterFERTL
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.
080437.65597US 8498
EXAMINER
RACHEDINE, MOHAMMED
ART UNIT PAPER NUMBER
2649
NOTIFICATION DATE DELIVERY MODE
06/20/2018 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):
edocket@crowell.com
tche@crowell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER FERTL and MICHAEL SCHRAUT
Appeal 2018-001085
Application 13/900,202 1
Technology Center 2600
Before ALLEN R. MacDONALD, JOSEPH P. LENTIVECH, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 15-28. 2 We have jurisdiction over this appeal under 35
U.S.C. § 6(b ).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION UNDER 37 C.F.R. § 41.50(b).
1 Appellants identify Bayerische Motoren W erke Aktiengesellschaft as the
real party in interest. See Appeal Br. 1.
2 Claims 1-14 are cancelled. See Appeal Br. 21.
Appeal 2018-001085
Application 13/900,202
STATEMENT OF THE CASE
Introduction
According to Appellants, the claimed "invention relates to an ultra-
small cell base station for a vehicle, a method and device for operating said
ultra-small cell base station and a communication system for the vehicle."
Abstract, Spec. ,r 1. 3
Exemplary Claims
Claims 15, 19, 24, and 25 are independent. Claims 15 and 19 are
exemplary of the claimed subject matter and are reproduced below with
limitations at issue emphasized:
15. An ultra-small cell base station for a vehicle comprising:
an ultra-small cell base station, wherein:
the ultra-small base station is:
(a) coupleable, for signal exchange, to a first antenna
assembly of the vehicle, which is configured and arranged to
receive radio signals of at least one cellular radio user device
which is situated in an interior space of the vehicle and to emit
radio signals such that said signals can be received by the at least
one cellular radio user device situated in the interior space of the
vehicle, wherein a transmitting and receiving energy of the first
antenna assembly is concentrated into the interior space of the
vehicle,
(b) coupleable, for signal exchange, to a second antenna
assembly of the vehicle, which is configured and arranged to
receive radio signals of at least one further cellular radio user
3 Throughout this Decision, we refer to: (1) Appellants' Specification filed
June 24, 2013 ("Spec."); (2) the Final Office Action ("Final Act."), mailed
December 6, 2016; (3) the Appeal Brief filed March 30, 2017 ("Appeal
Br."); ( 4) the Examiner's Answer ("Ans."), mailed June 16, 2017; and ( 5)
the Reply Brief filed August 14, 201 7 ("Reply Br.").
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Application 13/900,202
device which is situated in a predefined surrounding region
outside the vehicle and to emit radio signals such that said signals
can be received by the at least one further cellular radio user
device situated in the predefined surrounding region outside the
vehicle, wherein a transmitting and receiving energy of the
second antenna assembly is concentrated into the pre-defined
surrounding region outside the vehicle,
( c) coupleable, for signal exchange, to at least one
network-side antenna assembly of the vehicle, which is
configured and arranged to receive radio signals emitted by a pre-
defined static cellular radio base station and to emit radio signals
such that said signals can be received by the static cellular radio
base station,
and further wherein:
the ultra-small base station is:
(a) configured, using the first antenna assembly and the at
least one network-side antenna assembly, to operate a first ultra-
small cell, and
(b) configured, using the second antenna assembly and at
least one network-side antenna assembly to operate a second
ultra-small cell,
wherein the first ultra-small cell and the second ultra-small
cell are substantially spatially separate.
19. A method for operating an ultra-small cell base
station for a vehicle, the ultra-small base station being:
(a) coupleable, for signal exchange, to a first antenna
assembly of the vehicle, which is configured and arranged to
receive radio signals of at least one cellular radio user device
which is situated in an interior space of the vehicle and to emit
radio signals such that said signals can be received by the at least
one cellular radio user device situated in the interior space of the
vehicle, wherein a transmitting and receiving energy of the first
antenna assembly is concentrated into the interior space of the
vehicle,
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Application 13/900,202
(b) coupleable, for signal exchange, to a second antenna
assembly of the vehicle, which is configured and arranged to
receive radio signals of at least one further cellular radio user
device which is situated in a pre-defined surrounding region
outside the vehicle and to emit radio signals such that said signals
can be received by the at least one further cellular radio user
device situated in the predefined surrounding region outside the
vehicle, wherein a transmitting and receiving energy of the
second antenna assembly is concentrated into the predefined
surrounding region outside the vehicle,
( c) coupleable, for signal exchange, to at least one
network-side antenna assembly of the vehicle, which is
configured and arranged to receive radio signals emitted by a pre-
defined static cellular radio base station and to emit radio signals
such that said signals can be received by the static cellular radio
base station,
and further wherein:
the ultra-small base station is:
(a) configured, using the first antenna assembly and
the at least one network-side antenna assembly, to operate
a first ultra-small cell, and
(b) configured, using the second antenna assembly
and at least one network-side antenna assembly to operate
a second ultra-small cell, wherein the first ultra-small cell
and the second ultra-small cell are substantially spatially
separate;
the method comprising the acts of:
determining at least one pre-defined operating variable of
the vehicle and/ or at least one pre-defined network operating
variable of a pre-defined cellular radio network to which the
ultra-small cell base station is coupleable for signal exchange;
and
depending on the at least one operating variable of the
vehicle and/or the at least one network operating variable,
generating an activation signal and transmitting the activation
signal to the ultra-small cell base station.
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Application 13/900,202
Appeal Br. 21-22, 23-24.
REFERENCES AND REJECTIONS
Claims 25-27 stand rejected under 35 U.S.C. § I02(b) as being
anticipated by Shabtay et al., (U.S. 2010/0234071 Al; Sept. 16, 2010)
("Shabtay"). Final Act. 3-7.
Claims 15, 16, and 19-24 stand rejected under 35 U.S.C. § I03(a)4 as
being unpatentable over the combination of Shabtay and Choi et al., (U.S.
2012/0242510 Al; Sept. 27, 2012) ("Choi"). Final Act. 7-19.
Claims 17 and 18 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Shabtay, Choi, and Halfmann et al., (U.S. 2013/0315134
Al; Nov. 28, 2013) ("Halfmann"). Final Act. 20-21.
Claim 28 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Shabtay and Halfmann. Final Act. 22.
Our review in this appeal is limited only to the above rejections and
the issues raised by Appellants. Arguments not made are waived. See
Manual of Patent Examining Procedure ("MPEP") § 1205.02; 37 C.F.R.
§§ 4I.37(c)(l)(iv), 4I.39(a)(l).
4 The Examiner erroneously indicates at page 8 of the Final Action that
claims 15, 16, and 19-24 are rejected under 102(b) over the combination of
Shabtay and Choi. However, both the Examiner and Appellants treat the
rejection as an obviousness rejection and so we consider the indication of
anticipation instead of obviousness at page 8 to be a drafting error.
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ANALYSIS
Rejections Under 35 U.S.C. § 103(a)
Rejection of Claims 15-24 Under 35 USC§ 103(a)
Issue 1: Does the Examiner err in finding Shabtay teaches or suggests
"wherein a transmitting and receiving energy of the first antenna assembly is
concentrated into the interior space of the vehicle," as recited in exemplary
claim 15, and similarly recited in claims 19 and 24?
The Examiner finds Shabtay teaches or suggests the disputed
limitation, as recited in claim 15. Final Act. 9 ( citing Shabtay Fig. 7).
Shabtay' s Figure 7 illustrates "example placement of antennas and
infotainment system terminals in a vehicle."
,1?4---
FIG?
Shabtay's Figure 7 illustrates infotainment terminals 182 wirelessly
communicating with User Equipment (UE) 184 and 186.
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Specifically, the Examiner finds Shabtay' s infotainment terminals 182
communicate with UEs 184 and 186 via a Bluetooth link and thus use an
Bluetooth antenna separate from antennas 172 and 174. Ans. 4--5 (citing
Shabtay Figs. 7 and 39B and ,r 59). The Examiner further finds in Shabtay,
"the communication will mostly be confined to the inside of the vehicle
because of the short range ofbluetooth devices." Ans. 5.
Appellants dispute the Examiner's factual findings. First, Appellants
argue Shabtay fails to teach the disputed limitation because "Shabtay's VCS
[Vehicle Communications System] provides a cell that extends to both
vehicle passengers, as well as those in the vicinity of the vehicle, and
therefore cannot be considered to be 'concentrated into the interior space of
the vehicle'." Appeal Br. 11 ( citing Shabtay ,r 102 ).
We are unpersuaded because Appellants' argument is not responsive
to the Examiner's findings. That is, the Examiner relies on Bluetooth
communications between Shabtay's infotainment terminals 182 and UEs
184 and 186, rather than on communications via Shabtay's VCS module 176
using antennas 172 and 174. See Ans. 4--5. As indicated in paragraph 102,
cited by Appellants, Shabtay' s infotainment terminals 182 are
communication systems, connected to, but independent of VCS module 176.
See Shabtay ,r,r 102, 7 4 ("Several infrastructure applications are described
that are built on top of the core cellular communications system. Examples
of the applications include: ... an infotainment system.").
Referring again to Shabtay's Figure 7, Appellants next argue, "the fact
that a double-sided arrows are extending from the UEs 184, 186 does not
further suggest that those UEs 184, 186 are communicating with a separate
antenna assembly than antennas 172, 174." Appeal Br. 11. "Rather, the
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double-sided arrows appear to be terminating into the connection line
between the VCS and the antennas 172,174." Id.
We are unpersuaded. We agree with the Examiner's finding that "the
relay system and its antenna are different from the infotainment [system] and
its antenna." Ans. 5. That is, we agree that Shabtay teaches, or at least
suggests, that infotainment terminals 182 are independent communication
devices capable of communicating using antennas 172,174, but also capable
of communicating with UEs 184, 186 using Bluetooth or other short-range
communication protocols. See Shabtay ,r 59. ("Devices are "capable of
maintaining communications with more than one wireless communications
system at the same time and may comprise any desired RAT" ("Radio
Access Technology") including Bluetooth.). Furthermore, we find
unpersuasive Appellants argument that Shabtay' s double-sided arrows
denote communication between UEs 184, 186 and "the connection line
between the VCS and the antennas 172,174" rather than communication
between UEs 184, 186 and infotainment terminals 182 because Appellants
fail to explain how or why the devices would transmit wireless data directly
to a transmission line.
Appellants argue Shabtay does not teach the disputed limitation
because concentrated, as recited in claim 15, means "to gather into one body,
mass or force." Appeal Br. 12. (citing MERRIAM-WEBSTER.COM
https://www.merriam-webster.com/dictionary/concentrate (last visited June
8, 2018) ("concentrate")).
The Examiner disagrees with Appellants' interpretation by noting
"[t]he term 'concentrated' cannot mean that all electromagnetic energy
generated within the vehicle remains inside the vehicle, and none of it
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propagates outside, as the appellant seems to indicate" because "[ t ]he only
way for all energy to remain inside the vehicle if it is completely sealed as a
metal box." Ans. 5---6. Because Shabtay's vehicle is not a completely sealed
metal box, the Examiner finds "[t]he infotainment device disclosed by
Shabtay et al. radiates most of the energy within the vehicle while some
might escape outside. Consequently, the electromagnetic energy generated
by the infotainment is being interpreted as 'concentrated' within the vehicle"
(Ans. 7) because "the communication will mostly be confined to the inside
of the vehicle because of the short range of Bluetooth devices" (Ans. 5).
During examination, "the PTO must give claims their broadest
reasonable construction consistent with the specification . . . . Therefore, we
look to the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation." In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007). Appellants, in essence, argue the
Examiner's interpretation of concentrated is unreasonably broad and urge
that we instead use Appellants' proffered interpretation of the dictionary
definition. Appellants, however, fail to establish the Examiner's
interpretation is not the broadest reasonable interpretation, consistent with
Appellants' Specification. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004). Under a broadest reasonable interpretation, the
words of the claim must be given their ordinary and customary meaning
unless the meaning is inconsistent with the specification. Id. at 13 65. The
presumption that a term is given its ordinary and customary meaning may be
rebutted by Appellants clearly setting forth a different definition of the term
in the specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
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Here, Appellants do not argue that "concentrated" is explicitly defined
by the Specification, but instead submit the Merriam-Webster.com definition
to support Appellants' proffered meaning. Appeal Br. 12-13; Reply Br. 3-
4. We are unpersuaded because "[a]bsent an express definition in their
specification, the fact that [Appellants] can point to definitions or usages that
conform to their interpretation does not make the PTO' s definition
unreasonable when the PTO can point to other sources that support its
interpretation." Morris, 127 F.3d at 1056.
Accordingly, because no express definition is provided from the
Specification, and because Appellants fail to establish the Examiner's
interpretation of "concentrated" is inconsistent with the Specification (Am.
Acad. Sci., 367 F.3d at 1363---64), we find unpersuasive Appellants'
argument that the Examiner's definition is unreasonably broad.
In view of the Examiner's interpretation of concentrated, we agree
with the Examiner's finding that Shabtay's Bluetooth communication link
between UEs 184, 186 and infotainment terminals 182 teaches or suggests
"energy of the first antenna assembly is concentrated into the interior space
of the vehicle," as recited in claim 15.
Issue 2: Does the Examiner err in finding the combination of Shabtay
and Choi teaches or suggests "wherein the first ultra-small cell and the
second ultra-small cell are substantially spatially separate," as recited in
exemplary claim 15, and similarly recited in claims 19 and 24?
Appellants argue Choi fails to teach or suggest the disputed limitation
because "[ w ]hile Choi does show different access points AP 1, AP2 and AP3
being arranged in a vehicle, these access points do not form spatially
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Application 13/900,202
separate cells. In fact, Choi's invention requires that the access points create
overlapping cells." Appeal Br. 14
The Examiner responds by noting the rejection relies on the
combination of Shabtay and Choi to teach or suggest the disputed limitation.
Namely, the Examiner finds in Shabtay, "[t]he infotainment and the relay
represent two different systems which cover different areas," while the
"Choi reference was added to show that the possibility of including multiple
access points (i.e. ultra-small cells) within a vehicle. The access points
disclosed by Choi are physically separated although their range might
overlap." Ans. 8.
We are unpersuaded because Appellants argue Choi alone while the
Examiner relies on the combination of Choi and Shabtay. Accordingly,
Appellants' argument is not responsive to the Examiner's findings.
Rejection of Claims 19--24 Under 35 USC§ 103(a)
Issue: Does the Examiner err in finding Shabtay teaches or suggests
"generating an activation signal and transmitting the activation signal to the
ultra-small cell base station," as recited in exemplary claim 19, and similarly
recited in claim 24?
The Examiner finds Shabtay teaches or suggests the disputed
limitation because, in Shabtay, "the mobile access point (inverse femtocell)
may experience handovers by changing the serving BS from BS 1 to BS2."
Final Act. 6 (rejecting claim 26).
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Appellants argue "Shabtay is silent on any particular mechanism for
activating any ultra-small base station" (Appeal Br. 15) and that "one of
ordinary skill in the art would not equate the recited 'activation signal' with
a 'handover signal"' in view of the plain meaning of activation (id. at 16).
We are unpersuaded that the Examiner's interpretation is
unreasonably broad because Appellants provide no express definition of
activation from the Specification, and because Appellants fail to establish
the Examiner's interpretation of "activation" is inconsistent with the
Specification (Am. Acad. Sci., 367 F.3d at 1363---64). Accordingly, we agree
with the Examiner that "'any step used by the femtocell to initiate
communication' [ may be] considered as 'activating the femtocell'." Ans. 9.
In view of the Examiner's reasonably broad interpretation of
activated, we agree with the Examiner's finding that Shabtay's "[h]andover
is a way of activating the femtocell, since it initiates communication with a
different base station" (id.) and thus Shabtay teaches or suggests "generating
an activation signal," as in claims 19 and 24.
For the reasons discussed, Appellants have not shown error in the
Examiner's factual findings in the 35 U.S.C. § 103(a) rejections.
Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection of
independent claims 15, 19, and 24, as well as the rejections of dependent
claims 16-18 and 20-23, which are not argued separately. See Appeal
Br. 18.
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Rejection Under 35 U.S.C. § 102
Rejection of Claims 25-27 Under 35 USC§ 102(b)
Issue: Does the Examiner err in finding Shabtay discloses "wherein a
transmitting and receiving energy of the first antenna assembly is
concentrated into the interior space of the vehicle," as recited in independent
claim 25?
The Examiner finds Shabtay discloses "transmitting and receiving
energy of the first antenna assembly is concentrated into the interior space of
the vehicle," as in claim 25. See Final Act. 4 (citing Shabtay Fig. 7).
Appellants argue Shabtay fails to discloses the disputed limitation "for
the reasons set forth ... with respect to independent claims 15, 19 and 24."
Appeal Br. 18.
"Anticipation requires that all of the claim elements and their
limitations are shown in a single prior art reference." In re Skvorecz, 580
F.3d 1262, 1266 (Fed. Cir. 2009). Every element of the claimed invention
must be literally present, arranged as in the claim. Perkin- Elmer Corp. v.
Computervision Corp., 732 F.2d 888, 894 (Fed. Cir.), cert. denied, 469 U.S.
857 (1984)
We find Appellants arguments persuasive. Here, the Examiner fails to
demonstrate that Shabtay discloses the disputed limitation, arranged as in the
claim. We are, therefore, constrained by the record to find the Examiner errs
in rejecting independent claim 25 and dependent claims 26 and 27 for
similar reasons.
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NEW GROUND OF REJECTION
We reject independent claim 25 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Shabtay and Choi for the same reasons
provided by the Examiner for the rejection under 35 U.S.C. § 103(a) of
claim 15. See Final Act. 3---6. Dependent claims 26 and 27 are rejected
under 35 U.S.C. § 103(a) for the for the additional reasons provided by the
Examiner in the§ 102 rejection. See Final Act. 6-7.
DECISION
We affirm the Examiner's decision rejecting claims 15-24 under
35 U.S.C. § 103(a).
We affirm the Examiner's decision rejecting claim 28 under 35 U.S.C.
§ 103(a).
We reverse the Examiner's decision rejecting claims 25-27 under 35
U.S.C. § 102(b ).
In a new ground of rejection, we reject claims 25-27 under 35 U.S.C.
§ 103(a).
TIME TO RESPOND
This decision contains a new ground of rejection pursuant to 37 C.F.R.
§ 4I.50(b). Section 4I.50(b) provides that "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
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of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to the
examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be found in
the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
37 C.F.R. § 4I.50(b)
15