Ex Parte Honcharenko

Board of Patent Appeals and Interferences

Mar 6, 2012

10424693 (B.P.A.I. Mar. 6, 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.
10/424,693 04/29/2003 Walter Honcharenko 29250-000767/US 2374
7590 03/06/2012
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. Box 8910
Reston, VA 20195
EXAMINER
LEE, JUSTIN YE
ART UNIT PAPER NUMBER
2617
MAIL DATE DELIVERY MODE
03/06/2012 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 WALTER HONCHARENKO
____________________

Appeal 2010-000216
Application 10/424,693
Technology Center 2600
____________________

Before: JOSEPH L. DIXON, HOWARD B. BLANKENSHIP, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/424,693

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
1-23. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to phase-combined transmitter module and
modular transmitter system. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A phase-combined transmitter module comprising:

a discrete-coefficients phase-combiner, inputs of the
discrete-coefficients phase-combiner representing the inputs to
the transmitter module;

an up-conversion and amplification (UCA) unit to
receive digital signals from the discrete-coefficients phase-
combiner, up-convert and amplify the received signals and
output amplified analog signals; and

an analog-coefficients phase-combiner to receive the
amplified analog signals from the UCA unit, outputs of the
analog-coefficients phase-combiner unit representing outputs of
the transmitter module;

coefficients of the discrete-coefficients phase-combiner
being collectively adjusted according to at least one of the UCA
unit and the analog-coefficients phase-combiner.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
McKeown
Andersson
US 5,063,612
US 6,339,399 B1
Nov. 5, 1991
Jan. 15, 2002
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Application 10/424,693

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Miller
Ruuska
Charas
Dent
Dent

Cohen
US 6,510,172 B1
US 6,584,330 B1
US 5,548,813
US 5,568,088
US 5,933,766

US 2004/0082354 A1

Jan. 21, 2003
Jun. 24, 2003
Aug. 20, 1996
Oct. 22, 1996
Aug. 3, 1999

Apr. 29, 2004
Sarca US 2005/0123066 A1 Jun. 9, 2005

REJECTIONS
Claims 1, 8, 18, and 22 stand rejected under 35 U.S.C §112 first
paragraph as failing to comply with the written description requirement.
Claims 1, 2, and 4-6 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Dent (766) and Andersson.
Claim 3 stands rejected under 35 U.S.C §103(a) as being unpatentable
over Andersson, Dent (766), and Sarca.
Claim 7 stands rejected under 35 U.S.C §103(a) as being unpatentable
over Dent (766), Andersson, Miller, and Ruuska.
Claim 8 stands rejected under 35 U.S.C §103(a) as being unpatentable
over Dent (766) and Andersson.
Claims 8, 9, and 11-13 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Dent (766), Cohen, and Andersson.
Claim 10 stands rejected under 35 U.S.C §103(a) as being
unpatentable over Dent (766), Cohen, Andersson, and Sarca.
Claims 14-17 stands rejected under 35 U.S.C §103(a) as being
unpatentable over Dent (766), Cohen, Andersson, Miller, and Charas.
Claims 18 and 20 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Cohen, McKeown, and Andersson.
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Claims 19 and 21 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Cohen, McKeown, Andersson, and Dent (088).
Claims 22 and 23 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Dent (766), Cohen, Andersson, and McKeown.

OPINION
PRINCIPLES OF LAW
35 U.S.C §112, First Paragraph
"[C]ompliance with the 'written description' requirement of § 112 is a
question of fact. . . ." Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed.
Cir. 1991) (citing In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989); Utter
v. Hiraga, 845 F.2d 993, 998 (Fed. Cir. 1988)). A written "description must
'clearly allow persons of ordinary skill in the art to recognize that [the
inventor] invented what is claimed.'" Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (quoting Vas-Cath, 935 F.2d
at 1563). In other words, "the test for sufficiency is whether the disclosure
of the application relied upon reasonably conveys to those skilled in the art
that the inventor had possession of the claimed subject matter as of the filing
date." Id. (citing Vas-Cath, 935 F.2d at 1563).

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Obviousness under §103
"What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103." KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 419 (2007). To be nonobvious, an improvement must be
"more than the predictable use of prior art elements according to their
established functions." Id. at 417.
Invention or discovery is the requirement which constitutes the
foundation of the right to obtain a patent . . . unless more
ingenuity and skill were required in making or applying the said
improvement than are possessed by an ordinary mechanic
acquainted with the business, there is an absence of that degree
of skill and ingenuity which constitute the essential elements of
every invention.

Dunbar v. Myers, 94 U.S. 187, 197 (1876) (citing Hotchkiss v. Greenwood,
52 U.S. 248, 267 (1850)) (Hotchkiss v. Greenwood was cited with approval
by the Supreme Court in KSR, 550 U.S. at 406, 415, 427).

ANALYSIS
35 U.S.C §112, First Paragraph
The Examiner contends that the claim terminology "coefficients of the
discrete-coefficients phase-combiner being collectively adjusted…" fails to
comply with the written description requirement where the claimed subject
matter was not described in the Specification in such a way to reasonably
convey to one skilled in the art that the inventor, at the time of the
application filing, had possession of the claimed invention. (Ans. 4).
Appellant contends that:
detailed mathematical explanation providing a basis for use of
the claim term "collectively," used in the independent claims
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and inherently portrayed in the written disclosure, is in included
below.
The claim term "collectively," in the context of the
adjustment of coefficients HBB (used in Equations 7 and 8, and
shown in FIG. 8 as coefficients h11 , h21 , h31 , etc.), implies that
the system of linear equations used to determine the unknown
coefficients HBB must inherently be solved simultaneously."

(App. Br. 15). We disagree with Appellant's contention that "The claim
term 'collectively,' in the context of the adjustment of coefficients HBB (used
in Equations 7 and 8, and shown in FIG. 8 as coefficients h11 , h21 , h31 , etc.),
implies that the system of linear equations used to determine the unknown
coefficients HBB must inherently be solved simultaneously." The Examiner
maintains that

The definition of "collectively" from The American Heritage
College Dictionary 4th Edition defines the term as 1. assembled
or accumulated into a whole. 2. of, related to, or made by a
number of people acting as a group: a collective decision. So
the limitation "coefficients ... being collectively adjusted ... "
should be read as "coefficients ... being adjusted as a whole ...".
Adjusting "as a whole" does not mean the coefficients has[sic;
have] to be adjusted at the same time or simultaneously. As
long as a reference has a teaching of "there is a need to adjust
all of the coefficients" then the reference should read on this
particular limitation.

(Ans. 30). With respect to the proffered mathematical support for the
inherency of "simultaneously", the Examiner further maintains that
"these two matrix equations are not disclosed anywhere in the
specification or drawings and it is not an [sic] inherently disclosed in
the specifications or drawings." (Ans. 31). We agree with the
Examiner and find no express definition identified by Appellant and
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no clear support for their inherency argument with respect to equation
8 which does not necessarily require normalization. Therefore,
Appellant has not shown error in the Examiner's finding of a lack of
written description support for the claimed invention.

35 U.S.C. §103
With respect to independent claim 1, Appellant contends:
[t]he calibration controller comprises computation means for
generating correction factors 01- 06 for each transmitting
antenna section in dependence of the signal received from the
calibration receiver 601" (emphasis added). Appellant interprets
this statement of Andersson to mean that each individual
correction factor is dependent on the respective one signal
(singular), and not signals (plural).

(App. Br. 18). The Examiner maintains that:
Andersson discloses signals y(t1)-y(t6) are sent to a calibration
receiver 601 then the calibration receiver 601 sends the
received signals y(t1)-y(t6) to a calibration controller 603. The
signals y(t1 )-y(t6) are collected after the transmitting device
TX which is the claimed UCA unit and transmitting device TX
is known to have up-conversion and amplification units). The
calibration controller 603 then produce [sic; produces]
correction factors (the claimed coefficients). Andersson further
teach all the correction factors are produced as a "whole" (i.e.
collectively) because all of the correction factors must be
produced and updated repeatedly (col. 9, lines 33-50, Fig. 6 and
claim 14, where claim 14 teach[es] this method is repeated so
that the previous correction factors are adjusted to new
correction factors).

(Ans. 32-33). We agree with the Examiner that Andersson teaches adjusting
the calibration coefficients collectively. We further note that the language of
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independent claim 1 merely states that coefficients are "adjusted according
to at least one of the UCA unit and the analog-coefficients phase-combiner."
Therefore, we find no support for Appellant's argument concerning "plural
signals."
Appellant further contends that Andersson teaches calibration of
sections one at a time or at different times which would not teach or suggest
coefficients being "collectively adjusted." (App. Br. 18-19). Again,
Appellant's argument is grounded in a differentiation based on unclaimed
subject matter concerning "simultaneously." We find Appellant's argument
unpersuasive since it is based upon unclaimed subject matter.
With respect to claims 3 and 7-17, Appellant relies upon the
arguments advanced with respect to independent claim 1. (App. Br. 19-23).
Since we found Appellant's argument unpersuasive of error in the
Examiner's conclusion of obviousness of independent claim 1, we similarly
find Appellant's argument unpersuasive. Appellant indicates that claims "1-
7 rise and fall together." (App. Br. 14). Similarly, Appellant indicates that
claims 8-17 rise and fall together, claims 18-21 rise and fall together, and
claims 22-23 rise and fall together. (App. Br. 14).
With respect to claims 18 and 20, Appellant reiterates the arguments
set forth with respect to the Andersson reference with respect to independent
claim 1, but concerning the language of claim 18 regarding "collectively
calibrating." (App. Br. 24-25). We find Appellant's corresponding
argument unpersuasive of error in the Examiner's conclusion of obviousness
of independent claim 18 similarly unpersuasive in the Examiner's showing
of obviousness. Appellant contends that "it is clear that McKeown is limited
to optical power only. McKeown does not teach or suggest adjusting
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coefficients describing the gain and phase of signal paths." (App. Br. 26).
The Examiner maintains that:

McKeown teaches the invention does not have to limit [sic, be
limited] to optical network (col. 4, lines 7-9 of McKeown).
Second, "adjusting coefficients describing the gain and phase
of signal paths" is not disclosed in claim 18, therefore, it is not
a part of the claim limitation. McKeown teaches when a new
transceiver connected to a network, the transceiver is calibrated
so that the output of the transceiver is the same as the existing
transceiver (col. 2, lines 28-29, col. 3, lines 64-66, col. 6, lines
49-52 and claim 10). The transceiver also contains digital
components (Fig. 2) so the digital components are to be
calibrated. Since the applicant do[es] not further limit what the
"coefficients" are in claim 18, the Examiner is associating the
coefficients to be anything needs to be calibrated in McKeown's
digital components. Therefore, McKeown reads on the claimed
limitations.

(Ans. 33-34). We agree with the Examiner's findings.
With respect to claims 19 and 21, Appellant relies upon the arguments
advanced with respect to independent claim 1. (App. Br. 27-28). Since we
found Appellant's argument unpersuasive of error in the Examiner's finding
of obviousness of independent claim 18, we similarly find Appellant's
argument unpersuasive.
With respect to claims 22 and 23, Appellant reiterates the arguments
set forth with respect to the McKeown reference with respect to independent
claim 18 and the arguments advanced with respect to Andersson, but
concerning the language of claim 22 regarding "collectively tuned." (App.
Br. 28-29). We find Appellant's corresponding argument unpersuasive of
error in the Examiner's finding of obviousness of independent claim 22.
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CONCLUSIONS OF LAW
Appellant has not identified an error in the Examiner's showing of
obviousness of independent claim 1 or the Examiner's showing of a lack of
written description support for independent claim 1.

DECISION
For the above reasons, we affirm the written description rejection of
claims 1, 8, 18, and 22 (we note the dependent claims contain the same
deficient written description subject matter, but the Examiner did not include
them in the statement of the rejection's); and we affirm the obviousness
rejections of claims 1-23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

AFFIRMED

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