Ex Parte Jones et al

Patent Trial and Appeal Board

Feb 27, 2017

12861428 (P.T.A.B. Feb. 27, 2017)

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.
12/861,428 08/23/2010 Vincent Knowles Jones IV 093329 2002
23696 7590 03/01/2017
OTTAT mMM TNmRPORATFD
EXAMINER
5775 MOREHOUSE DR.
SAN DIEGO, CA 92121
LEVITAN, DMITRY
ART UNIT PAPER NUMBER
2461
NOTIFICATION DATE DELIVERY MODE
03/01/2017 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):
us-docketing@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VINCENT KNOWLES JONES IV, DIDIER JOHANNES
RICHARD VAN NEE, and HEMANTH S AMPATH
Appeal 2016-008207
Application 12/861,428
Technology Center 2400
Before ALLEN R. MacDONALD, IRVIN E. BRANCH, and
MICHAEL J. ENGLE, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-008207
Application 12/861,428
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 2, 4-9, 11-13, 15-28, 30-35, 37^12, 4AA6, 48-61, 63-68, 70-75,
77-79, 81-94, and 96-103. Final Act. 2. Claims 3, 10, 14, 29, 36, 43, 47,
62, 69, 76, 80, and 95 have been cancelled. App. Br. 4. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Exemplary Claim
Exemplary claim 1 under appeal reads as follows (emphasis added):
1. A method for wireless communications, comprising:
generating a frame structure for a packet that contains a
first portion decodable by a first group of wireless nodes and a
second portion decodable by a second group of wireless nodes
capable of simultaneous multi-user communication, wherein the
first portion of the packet comprises at least one field
comprising high throughput signal (HT-SIG) data and very high
throughput signal (VHT-SIG) data for simultaneous
transmission; and
transmitting the packet having the frame structure,
wherein the HT-SIG data and the VHT-SIG data of the at least
one field of the first portion of the packet are modulated using
different modulation schemes and are transmitted
simultaneously and wherein a predominant amount of energy
within the HT-SIG and VHT-SIG data of the at least one field
is aligned with a predetermined modulation value to permit the
first group of nodes to detect the HT-SIG data while the second
group of nodes detects the VHT-SIG data.
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Application 12/861,428
Rejections on Appeal
1. The Examiner rejected all pending claims under 35 U.S.C.
§112, first paragraph, as failing to comply with the enablement
requirement.1
2. The Examiner rejected all pending claims under 35 U.S.C.
§112, second paragraph, as being indefinite.2
Appellants ’ Contentions
1. Appellants contend the Examiner erred in rejecting claim 1
under 35 U.S.C. § 112, first paragraph, because:
The Office has not met its burden to establish lack of
enablement in part because it has not established that
implementing the disclosure would entail any undue
experimentation.
App. Br. 22.
The Examiner continues to ignore the requirements set forth in
In re Wands as to the many factors to be considered in
determining whether a disclosure requires undue
experimentation. Since The Examiner has not properly
addressed many of the factors listed in In re Wands — such as
the state of the prior art, the level of one of ordinary skill in the
art, and the level of predictability in the art — The Office has
not met its burden to establish a prima facie case of
unpatentability, as required by In re Oetiker.
1 Because separate patentability is not argued for the other claims, we select
claim 1 as representative. Except for our ultimate decision, the Examiner’s
§112, first paragraph, rejection of the remaining claims is not discussed
further herein.
2 Because separate patentability is not argued for the other claims, we select
claim 1 as representative. Except for our ultimate decision, the Examiner’s
§112, second paragraph, rejection of the remaining claims is not discussed
further herein.
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Appeal 2016-008207
Application 12/861,428
Reply Br. 3.
2. Appellants contend the Examiner erred in rejecting claim 1
under 35 U.S.C. § 112, second paragraph, because:
The Office has also erred by concluding that the meaning of
“aligning” is not understood (or cannot be understood) in the
context of the claims ....
App. Br. 27, emphasis added.
Insofar as “aligning” is concerned, that particular term and
related terms such as “align” and “alignment” are well-known
and commonly used in the art of OFDM and one skilled in the
art would readily understand their meaning in the context of the
claims, particularly in view of the examples provided in the
specification. At least, The Office has not established
otherwise. Again, see Paras. 0073-0075, in conjunction with
FIGS. 8A - 8C, which show various examples where the
predominant energy is aligned with certain modulation values.
Its various conclusory statements notwithstanding, The
Office has offered no convincing reason or rationale why the
term “aligning” would be unclear to one skilled in the art in the
context of the claims and in light of the specification ....
App. Br. 28, emphasis added.
3. Appellants also contend the Examiner erred in rejecting claim 1
under 35 U.S.C. § 112, second paragraph, because:
The Office has also erred by concluding . . . that it is not
understood (or cannot be understood) which amount of energy
is considered “predominant'’ and which is not. In this regard,
The Office has merely made conclusory assertions that these
features of the claims are “not understood.”
App. Br. 27, emphasis added.
Insofar as “a predominant amount of energy within
HT-SIG and VHT-SIG data of the at least one field” in Claim 1
is concerned, first please note that the indefinite article “a” is
used to avoid any issues with lack of antecedent basis. The use
of the indefinite article “a” does not imply that there are
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Appeal 2016-008207
Application 12/861,428
multiple “predominant” amounts of energy. The Office’s
concern that “it is not understood which amount of energy is
considered ‘predominant’ and which is not” appears to be based
on an unwarranted misreading of the claim.
Second, note that, as explained in Para. 0071 of the
application . . . . , for various reasons, energy may be spread or
subdivided in various manners with more energy aligned with
some modulation values rather than others. The “predominant”
amount of energy may be the largest or greatest amount of that
energy (in accordance with commonly accepted definitions of
“predominant”). As such, one skilled in the art would readily
understand the meaning of the claim term: “a predominant
amount of energy within HT-SIG and VHT-SIG data of the at
least one field” and would not find that term unclear or
indefinite. At least, The Office has not established otherwise.
App. Br. 28, emphasis added.
Its various conclusory statements notwithstanding, The
Office has offered no convincing reason or rationale . . . why
one skilled in the art would find the claim language pertaining
to “apredominant amount of energy” to be unclear.
App. Br. 28, emphasis added.
4. Appellants also contend the Examiner erred in rejecting claim 1
under 35 U.S.C. § 112, second paragraph, because:
The Examiner asserts that “Claim 1 limitations, directed to ‘a
predominant amount of energy’ are unclear, because it is not
understood if a field with a larger energy than the other field is
considered ‘predominant’ or not, as the claims limitations
comprise no criteria for ‘predominance’.” However, the claim
limitations need not comprise a “criteria for predominance.”
Claim language is interpreted in light of the particular
application disclosure as it would be interpreted by one
possessing the ordinary level of skill in the pertinent art. As
noted above, the disclosure describes and discusses the term
“predominant” in connection with various examples within
Paras. 0073-0074 and explains, e.g., how a predominant energy
in a V/HT-SIG field would be aligned with 7i/2-BPSK.
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The claim terms are therefore not indefinite (when
properly interpreted in light of the teachings of the prior art and
the present disclosure as it would be interpreted by one
possessing the ordinary level of skill in the pertinent art).
The Examiner nevertheless asserts that “The disclosure
provides no definition or explanation on which element of a
fields group is considered ‘predominant’ as it is unclear if a
field with a larger or higher energy than other fields of the
group by, for example, 1% is considered to be ‘predominant’ or
not.” Those skilled in the art will readily understand, based on
the teachings of the Application, that predominant is used in
the sense of the word as having greater influence or power.
Therefore, those skilled in the art would recognize that, in at
least some particular processing examples, an amount of
preponderance exceeding a 1% threshold would indeed qualify
as “predominant.” Moreover, the fact that claim language,
including terms of degree, may not be precise, does not
automatically render the claim indefinite. Seattle Box Co., v.
Industrial Crating & Packing, Inc., 731 F.2d 818, 221 USPQ
568 (Fed. Cir. 1984). Acceptability of the claim language
depends on whether one of ordinary skill in the art would
understand what is claimed in light of the specification. The
Examiner has again erred in not analyzing the claim language in
light of the specification as it would be interpreted by one
possessing the ordinary level of skill in the pertinent art.
Reply Br. 7—8, emphasis added.
Issues on Appeal
Did the Examiner err in rejecting claim 1 under 35U.S.C. § 112, first
paragraph?
Did the Examiner err in rejecting claim 1 under 35U.S.C. § 112,
second paragraph?
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Application 12/861,428
DICTIONARY DEFINITIONS
“Predominant” is “having ascendancy, power, authority, or influence
over others; preeminent” or “preponderant; prominent.” The Random
House Dictionary of the English Language 1523 n. 1 (2nd Ed.
Unabridged 1987).
“Predominant” is “having superiority in power, influence, etc., over
others” or “prevailing; prominent.” Collins English Dictionary -
Complete & Unabridged 2012 Digital Edition © (William Collins Sons
& Co. Ltd. 1979, 1986 © HarperCollins Publishers 1998—2012).
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred.
Enablement
As to Appellants’ above contention 1, we agree with Appellants. An
analysis supporting a rejection under 35 U.S.C. § 112, first paragraph, for
lack of enablement should be based on an undue experimentation analysis
using the Wands factors.
Whether undue experimentation is needed is not a single,
simple factual determination, but rather is a conclusion reached
by weighing many factual considerations.
In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
The Wands factors include:
(1) the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state
of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth
of the claims.
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Wands, 858 F.2d at 737. We have reviewed the Examiner’s rejection, and
do not find any analysis based on the Wands factors. For these reasons, the
Examiner has not shown that claim 1 fails to comply with the enablement
requirement of 35 U.S.C. § 112, first paragraph.
Indefiniteness of “is aligned”
As to Appellants’ above contention 2, we agree with Appellants.
[W]hen the USPTO has initially issued a well-grounded
rejection that identifies ways in which language in a claim is
ambiguous, vague, incoherent, opaque, or otherwise unclear in
describing and defining the claimed invention, and thereafter
the applicant fails to provide a satisfactory response, the
USPTO can properly reject the claim as failing to meet the
statutory requirements of § 112(b).
In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014). Indefmiteness is
determined from the perspective of one possessing the ordinary level of skill
in the pertinent art at the time the invention was made in view of the entire
written description and the teachings of the prior art of record. Packard, 751
F.3d at 1312. The Examiner’s indefmiteness analysis as to the “is aligned”
claim limitation states the
limitations[ of claim 1] directed to aligning predominant energy
with a predetermined modulation value[] are unclear, because
[the] meaning of “aligning” ... is not understood in the context
of the claims.
Final Act. 3, emphasis added.
Claim l[’s] limitations^ directed to “at least one field is
aligned with a predetermined modulation value” are unclear,
because the operation of the field alignment is not understood.
It is unclear[] which portion or field of the frame, shown on
page 5 of the Brief, is aligned, as the frame comprises plural
V/HT-SIG1, V/HT-SIG2 and V/HT-SIG3 fields, and it is
unclear what value of modulation is used for the alignment.
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Ans. 9, emphasis added. Our review of the record finds no other Examiner
analysis directed to the indefmiteness of the claimed “is aligned” limitation.
We conclude that as to the “is aligned” limitation, the Examiner’s
analysis is conclusory and does not sufficiently identify ways in which the
term is ambiguous, vague, incoherent, opaque, or otherwise unclear in
describing and defining the claimed invention as required by Packard.
Indefiniteness of “predominant ”
As to Appellants’ above contentions 3 and 4, we disagree. At page 27
of the Appeal Brief, Appellants initially assert that “[t]he Office has merely
made conclusory assertions that [the ‘predominant’ limitation is] ‘not
understood.’” We disagree. For example, the Examiner cites to paragraphs
59 and 72—75 of Appellants’ Specification and points out “the disclosure
provides no information on determining a predominant amount of energy
within HT-SIG and VHT-SIG data.” Final Act. 2.3 Also, at the first
paragraph of page 9 of the Answer, the Examiner provides an example to
demonstrate the lack of clarity due to the use of the “predominant”
limitation.
As to Appellants’ first specific point that “[t]he use of the indefinite
article ‘a’ does not imply that there are multiple ‘predominant’ amounts of
energy” (App. Br. 28), we find no relevance to this point as no such issue
was raised by the Examiner in the rejection before us.
As to Appellants’ second specific point that “[t]he ‘predominant’
amount of energy may be the largest or greatest amount of that energy (in
3 This analysis is within the rejection under 35 U.S.C. § 112, first paragraph,
which precedes the rejection under § 112, second paragraph. Regardless, the
Examiner explicitly gave notice to Appellants that the Specification does not
provide information on determining a predominant amount.
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accordance with commonly accepted definitions of ‘predominant’)” and
“one skilled in the art would readily understand the meaning of the claim
term” (App. Br. 28), we disagree. Appellants do correctly point out:
[T]he fact that claim language, including terms of degree, may
not be precise, does not automatically render the claim
indefinite. Seattle Box Co., v. Industrial Crating & Packing,
Inc., 731 F.2d 818, 221 USPQ 568 (Fed. Cir. 1984).
Acceptability of the claim language depends on whether one of
ordinary skill in the art would understand what is claimed in
light of the specification.
Reply Br. 8. However, contrary to Appellants’ assertion, the term
“predominant” is not described and discussed in the disclosure at paragraphs
73—74. Reply Br. 7. Rather, these paragraphs merely use the term without
providing the clarification asserted by Appellants. Further, contrary to
Appellants’ assertion that the “largest” or “greatest” are commonly accepted
definitions of “predominant,” our review of such common definitions
(reproduced supra) does not find either term. Nor do we find alternative
terms which have the same specificity that is provided by Appellants’
suggested definitional terms “largest” and “greatest.”
Additionally, when the Examiner asserted that it is unclear whether a
difference of “1% is considered to be ‘predominant’ or not” (Ans. 9),
Appellants respond that “those skilled in the art would recognize that, in at
least some particular processing examples, an amount of preponderance
exceeding a 1% threshold would indeed quality as ‘predominant.’” Reply
Br. 8, emphasis added. By essentially stating that exceeding 1% may be or
may not be covered by the claim, Appellants’ response amplifies the
concerns raised by the Examiner rather than rebutting those concerns.
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We conclude that the Examiner has correctly concluded that the
“predominant” limitation is unclear in describing and defining the claimed
invention.
CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1, 2, 4-9, 11-13, 15-28, 30-35, 37^12, 4A46, 48-61, 63-68, 70-75,
77—79, 81—94, and 96—103 as failing to comply with the enablement
requirement of 35 U.S.C. § 112, first paragraph.
(2) The Examiner has not erred in rejecting claims 1, 2, 4—9, 11—13,
15-28, 30-35, 37-42, 4A46, 48-61, 63-68, 70-75, 77-79, 81-94, and 96-
103 under 35 U.S.C. § 112, second paragraph, as being indefinite.
(3) Claims 1, 2, 4-9, 11-13, 15-28, 30-35, 37-42, 4A46, 48-61, 63-
68, 70-75, 77—79, 81—94, and 96—103 are not patentable.
DECISION
The Examiner’s rejection of claims 1, 2, 4—9, 11—13, 15—28, 30—35,
37-42, 44-46, 48-61, 63-68, 70-75, 77-79, 81-94, and 96-103, as failing
to comply with the enablement requirement of 35 U.S.C. § 112, first
paragraph, is reversed.
The Examiner’s rejection of claims 1, 2, 4—9, 11—13, 15—28, 30—35,
37-42, 44-46, 48-61, 63-68, 70-75, 77-79, 81-94, and 96-103, as being
indefinite under 35 U.S.C. § 112, second paragraph, is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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