Ex Parte Kamuf

Patent Trial and Appeal Board

Aug 31, 2016

12990246 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/990,246 12/13/2010 Matthias Kamuf
24112 7590 09/01/2016
COATS & BENNETT, PLLC
1400 Crescent Green, Suite 300
Cary, NC 27518
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.
4015-7195 I P25599-US2 7183
EXAMINER
TORRES, JOSEPH D
ART UNIT PAPER NUMBER
2112
MAILDATE DELIVERY MODE
09/01/2016 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 MATTHIAS KAMUF
Appeal2015-002645
Application 12/990,246
Technology Center 2100
Before JOHN A. JEFFERY, ST. JOHN COURTENAY III, and
KAMRAN JIVANI, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 20-38. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm-in-part.
STATEMENT OF THE CASE
Appellant's invention decodes signals encoded with "tail-biting"
codes, namely those that force a convolutional encoder to start and end at the
same state, by evaluating several hypotheses. In one aspect, a first decoding
attempt is performed based on, among other things, a hypothesis regarding
an encoding parameter. If that attempt fails, another decoding attempt is
performed based on a different hypothesis. See generally Abstract; Spec. 1-
4. Claim 20 is illustrative:
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Application 12/990,246
20. A method in a communication device for decoding a
signal that has been encoded by a tail-biting code based on at
least one encoding parameter, the method comprising:
receiving the signal;
performing a first decoding attempt of the signal based
on a first set of starting state metrics and a first hypothesis
regarding the at least one encoding parameter, the first decoding
attempt resulting in a first set of ending state metrics, wherein
the first set of starting state metrics is different than the first
hypothesis; and
performing, if the first decoding attempt fails, a second
decoding attempt of the signal based on a second set of starting
state metrics and a second hypothesis regarding the at least one
encoding parameter; wherein the second set of starting state
metrics is based on the first set of ending state metrics, the
second hypothesis is different from the first hypothesis, the
second set of starting state metrics is different from the second
hypothesis, and the at least one encoding parameter comprises
one or more of a trellis size, a quantity of aggregated encoding
elements, and a code rate.
THE REJECTIONS
The Examiner rejected claims 20, 23, 24, 26, 28, and 30-37 1 under 35
U.S.C. § 103(a) as unpatentable over Iwata (US 5,887,007, issued Mar. 23,
1 Although the Examiner omits claims 30 and 35 from the statement of the
ground of rejection on page 2 of the Answer, the Examiner nevertheless
rejects these claims on pages 3 and 4 of the Final Rejection, and, notably,
responds to Appellant's arguments regarding these claims on pages 7 to 9 of
the Answer. We, therefore, presume that the Examiner intends to maintain
the obviousness rejection of claims 30 and 35 over Iwata and Chennakeshu,
and treat the Examiner's error in this regard as harmless. Moreover, our
presumption is consistent with the Examiner's statement on page 2 of the
Answer that every ground of rejection from the Final Rejection is maintained
except for those listed under the subheading "WITHDRAWN
REJECTIONS"-a subheading that does not appear in the Answer.
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Application 12/990,246
1999) and Chennakeshu (US 5,349,589, issued Sept. 20, 1994). Final Act.
3---6.2
The Examiner rejected claims 21 and 29 under 35 U.S.C. § 103(a) as
unpatentable over Iwata, Chennakeshu, and Wei (US 6,266,795 B, issued
July 24, 2001 ). Final Act. 6-7.
The Examiner rejected claim 22 under 35 U.S.C. § 103(a) as
unpatentable over Iwata, Chennakeshu, and Pollara-Bozzola (US 4,730,322,
issued Mar. 8, 1988). Final Act. 8-9.
The Examiner rejected claims 25, 27, and 38 under 35 U.S.C. § 103(a)
as unpatentable over Iwata, Chennakeshu, and Yu (US 7,782,749 B2, issued
Aug. 24, 2010). Final Act. 9.
THE REJECTION OVER IWATA AND CHENNAKESHU
The Examiner finds that Iwata performs a first signal decoding
attempt in steps 101 to 106 of Figure 8, where this attempt is based on (1) a
first set of starting state metrics, namely state "Ss" which is said to be used
as a starting state to trace a path in step 104, and (2) a "first hypothesis" that
is said to correspond to determining whether the path length equals block
length "n" in step 102. Final Act. 4; Ans. 3. According to the Examiner,
this first decoding attempt results in a first set of ending state metrics,
namely state "Sr" in step 105. Final Act. 4; Ans. 3. Iwata's "first
hypothesis" is also said to regard at least one encoding parameter, namely
2 Throughout this opinion, we refer to (1) the Final Rejection mailed June
20, 2014 ("Final Act."); (2) the Appeal Brief filed October 8, 2014 ("App.
Br."); (3) the Examiner's Answer mailed October 24, 2014 ("Ans."); and (4)
the Reply Brief filed December 17, 2014 ("Reply Br.").
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Application 12/990,246
trellis size in step 102 and a quantity of aggregated encoding elements
corresponding to cyclic redundancy check (CRC) bits used to check errors.
Final Act. 4--5; Ans. 4.
The Examiner also finds that if this first decoding attempt fails, Iwata
performs a second decoding attempt in steps 108 to 110 based on ( 1) a
second set of starting state metrics, namely state Sr, and (2) a "second
hypothesis" which is said to correspond to an "Error Present" function in the
rejection (Final Act. 4--5) and an "Error Check" function in step 110 on page
5 of the Answer. Although the Examiner acknowledges that Iwata does not
teach using tail-biting explicitly, the Examiner cites Chennakeshu as
teaching this feature in concluding that the claim would have been obvious.
Final Act. 5.
Appellant argues that the Examiner's defining Iwata's Ss as a starting
state metric used as a basis for a first decoding attempt is flawed because
this variable represents the state at which the most likely path terminates.
App. Br. 7-8; Reply Br. 4--5. Appellant adds that the "path length= n"
question in Iwata' s step 102 and the "error present" question in step 107 do
not correspond to the recited first and second hypothesis, respectively, where
these hypotheses regard at least one of the recited encoding parameters.
App. Br. 8-9; Reply Br. 2-3. Lastly, Appellant contends that Iwata does not
perform decoding attempts with different hypotheses as claimed. App. Br.
9-10; Reply Br. 2. Appellant argues other recited limitations summarized
below.
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ISSUES
Under Section 103, has the Examiner erred by finding that Iwata and
Chennakeshu collectively would have taught or suggested:
( 1) performing the recited first decoding attempt, and if that attempt
fails, performing the recited second decoding attempt as recited in claim 1?
(2) at least one encoding parameter comprises one or more of an
initial encoding element and a size of information carried by the signal as
recited in claim 26?
(3) both hypotheses presume an equal initial encoding element as
recited in claim 28?
( 4) the trellis sizes, quantities of aggregated encoding elements, and
initial encoding elements presumed by the recited hypotheses recited in
claim 30?
ANALYSIS
Claims 20, 23, 24, and 31
We begin by noting that the Examiner's reliance on the secondary
reference to Chennakeshu is undisputed for the limited purpose for which it
was cited, namely explicitly disclosing tail-biting, nor is the cited references'
combinability contested. See Final Act. 5; see also App. Br. 10. Rather, as
noted above, this dispute turns on the Examiner's reliance on Iwata for
teaching the particular recited elements associated with the two decoding
attempts in claim 1. Therefore, we confine our discussion to Iwata.
Turning to claim 1, although the claim requires performing the first
signal decoding attempt, it does not require performing the second such
attempt. Rather, this second decoding attempt is performed if the first
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decoding attempt fails-a conditional limitation that need not occur to
satisfy claim 1 and is, therefore, optional. See Cybersettle, Inc. v. Nat 'l
Arbitration Forum, Inc., 243 F. App'x 603, 607 (Fed. Cir. 2007)
(unpublished) ("It is of course true that method steps may be contingent. If
the condition for performing a contingent step is not satisfied, the
performance recited by the step need not be carried out in order for the
claimed method to be performed."); see also Applera Corp. v. Illumina, Inc.,
375 F. App'x 12, 21 (Fed. Cir. 2010) (unpublished) (affirming a district
court's interpretation of a method claim as including a step that need not be
practiced if the condition for practicing the step is not met). Therefore,
Appellant's arguments regarding Iwata's alleged failure to disclose the
recited aspects of the second decoding attempt, including the second
hypothesis associated with that attempt (App. Br. 8-1 O; Reply Br. 2-3), are
not commensurate with the scope of the claim, for the preceding first
decoding attempt failure condition need not be satisfied to perform the
method of claim 1. We reach a similar conclusion regarding the computer
program product of independent claim 31 whose instructions, when
executed, perform a similar method.
Nevertheless, the Examiner finds that Iwata discloses every recited
step in the body of claim 1, including the optional second decoding attempt,
relying principally on Iwata's Figure 8. See Final Act. 4--5; Ans. 3---6. On
this record, we are unpersuaded of error in those findings.
First, we see no error in the Examiner's equating Iwata's state Ss to
the recited first set of starting state metrics, for as the Examiner explains
(Ans. 3), it is used as a starting state metric to trace a pathfrom Ss in step
104 in Figure 8. That Ss represents the state at which the most likely path
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terminates in column 3, lines 33 to 37 as Appellant contends (App. Br. 7-8;
Reply Br. 4--5) does not obviate the fact that a path is traced from Ss,
therefore suggesting a starting state at least in that sense. Because step 104
occurs in the portion of Iwata's Figure 8 that is mapped to the recited first
decoding attempt, namely steps 101 to 106 (Final Act. 4), this attempt is at
least based on this first set of starting state metrics. Appellant's arguments
to the contrary are unavailing and not commensurate with the claim's scope.
Nor do we find error in the Examiner's mapping the recited first
hypothesis to Iwata's step 102 that determines whether the path length
equals the block length (n). Final Act. 4; Ans. 4. As the Examiner explains,
this step is a tested hypothesis that is used to verify that the path length
meets decoding requirements. Ans. 4. We see no error in this finding,
particularly in light of the breadth of the limitation which merely recites a
first hypothesis regarding the at least one encoding parameter. Our
emphasis underscores that the first hypothesis need only regard this
parameter-a parameter specified in connection with the optional second
decoding attempt step as one or more of (1) a trellis size; (2) a quantity of
aggregated encoding elements; and (3) a code rate.
Although these particulars of the encoding parameter are merely
optional because they are part of the optional second decoding attempt as
noted above, we still see no error in the Examiner's findings even if they
were required to further limit the encoding parameter of the first decoding
attempt. In the rejection, the Examiner finds that Iwata's "path length= n"
determination in step 102 regards code rate and trellis size. See Final Act. 4
(noting Iwata's "first Path Length = n hypothesis regarding at least one code
rate encoding Trellis Path Length = n parameter") (emphasis added). These
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findings have not been persuasively rebutted. We reach the same conclusion
regarding the Examiner's reliance on the other encoding parameter
alternative, namely a quantity of aggregated encoding elements which the
Examiner equates to Iwata's CRC bits. Ans. 4.
Because ( 1) Iwata' s decoding circuit is used in connection with a fast
associated control channel (F ACCH) whose data includes CRC bits for error
checking, and (2) the number (n) is the block length of F ACCH data and the
path length as noted in column 5, lines 1 to 12, Iwata's first hypothesis in
step 102 at least regards a quantity of aggregated encoding elements,
namely the associated CRC bits. Appellant's arguments to the contrary
(App. Br. 8-9; Reply Br. 3) are unavailing and not commensurate with the
scope of the claim. To the extent Appellant contends that the Examiner
equates only the value "n" to the first hypothesis, 3 such a contention is
inapposite to the Examiner's finding that equates the path length
determination in step 102 to the recited first hypothesis. See Final Act. 4;
Ans. 4.
Nor are we persuaded of error in the Examiner's equating Iwata's
Error Check determination in step 110 to the recited second hypothesis on
which the second decoding attempt is based, even if that attempt was
required by the claim-which it is not. As noted above, the Examiner finds
that if Iwata's first decoding attempt in steps 101 to 106 fails because an
error is present in step 107, Iwata performs a second decoding attempt in
3 See App. Br. 8 ("[N]othing in Iwata discloses or even suggests that the
path length n represents a hypothesis regarding an encoding parameter.")
(Appellant's emphasis omitted; our emphasis added); see also Reply Br. 3
("Nothing in Iwata supports the Examiner's apparent belief that n is some
kind of parameter hypothesis.") (emphasis added).
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steps 108 to 110 based on ( 1) a second set of starting state metrics, namely
state Sr, and (2) a "second hypothesis" which is said to correspond to an
"Error Present" function in the rejection (Final Act. 4--5) and an "Error
Check" function in step 110 on page 5 of the Answer.
To be sure, the Examiner's findings regarding the second hypothesis
in the rejection are somewhat inartful, for the term "Error Present" is the
label used for step 107 in Figure 8-not step 110. Moreover, Appellant
interprets the Examiner's position as equating the "Error Present" step 107
to the second hypothesis-not step 110. See App. Br. 8; see also Reply Br.
2. Nevertheless, the Examiner clarifies on page 5 of the Answer that the
second hypothesis corresponds to step 110--not step 107-namely verifying
CRC aggregated Error Check encoding elements or bits.
This articulation is clear and unambiguous: the Examiner maps the
recited second hypothesis to Iwata's Error Check step 110-a mapping
consistent with the Examiner's equating steps 108 to 110 with the second
decoding attempt. Therefore, despite Appellant's characterizing the
Examiner's position as equating Iwata "Error Present" question in step 107
to the recited second hypothesis (App. Br. 8; Reply Br. 2), we nonetheless
interpret the Examiner's position differently, namely that Iwata's step 110--
not step 107----corresponds to the recited second hypothesis.
Given this mapping, we see no error in the Examiner's position that
Iwata' s second decoding attempt is at least based on a second set of starting
state metrics, namely state Sr in step 109 and the second hypothesis, namely
the Error Check determination in step 110. As the Examiner explains, this
hypothesis regards at least one of the recited encoding parameters, namely
CRC aggregated error check encoding elements or bits. Ans. 5. And as the
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Examiner indicates, lwata's second hypothesis, the Error Check
determination in step 110, differs from the first hypothesis, namely the path
length determination in step 102. Id. Appellant's arguments to the contrary,
including those regarding Iwata's system using the same encoding rate
parameter of 1/2 (App. Br. 9-10; Reply Br. 2), are unavailing and not
commensurate with the scope of the claim.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 20, and claims 23, 24, and 31 not argued separately with particularity.
Claims 32-34, 36, and 37
We reach a similar conclusion for independent claims 32 and 36
which recite, in pertinent part, a decoder adapted to perform steps similar to
those recited in claim 1.
The broadest reasonable interpretation of an apparatus claim with
structure that performs a function, which only needs to occur if a condition
precedent is met, still requires structure for performing the function should
the condition occur. Therefore, our interpretation of apparatus claims 32 and
36 differs from method claim 1 because the structure, namely the decoder
adapted to perform the recited functions, is present in the system regardless
of whether the condition is met and the function is actually performed. 4
Unlike claim 1, which is written in a manner that does not require the
second decoding attempt if the first decoding attempt fails as noted
4 Regarding apparatus claims generally, our reviewing court guides the
patentability of an apparatus claim "depends on the claimed structure, not on
the use or purpose of that structure." Catalina Marketing Int 'l., Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002).
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previously, claims 32 and 36 are limited to structure configured to perform
all recited functions-including those associated with the second decoding
attempt-and are, therefore, narrower than claim 1 in that sense.
Nevertheless, for the reasons noted previously and by the Examiner
(Final Act. 4--5; Ans. 2---6), we see no error in the Examiner's reliance on
Iwata for at least suggesting these limitations. Accordingly, we sustain the
Examiner's rejection of claims 32-34, 36, and 37.
Claim 26
We also sustain the Examiner's rejection of claim 26 reciting that the
at least one encoding parameter comprises one or more of an initial encoding
element and a size of information carried by the signal. Despite Appellant's
arguments to the contrary (App. Br. 11 ), Appellant does not persuasively
rebut the Examiner's equating the recited ( 1) initial encoding element to the
rate of 1/2 of Iwata's coder in Figure 1 as noted in column 2, lines 58 and
59, and (2) size of information carried by signal R to the block length "n" in
step 102 in Figure 8. Final Act. 6. Accordingly, the weight of the evidence
on this record favors the Examiner's position.
Claim 28
We also sustain the Examiner's rejection of claim 28 reciting that both
hypotheses presume an equal initial encoding element. Despite Appellant's
arguments to the contrary (App. Br. 11-12), Appellant does not persuasively
rebut the Examiner's finding that Iwata at least suggests that the identified
first and second hypotheses presume an equal initial encoding element,
namely the rate of 1/2. Final Act. 6; Ans. 6-7. First, Appellant's position is
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not germane to the Examiner's reliance on the Error Check step 110--not
the error present determination in step 107-as corresponding to the second
hypothesis as noted previously. Second, Iwata at least suggests that the
decoding process in Figure 8-and its constituent hypotheses-at least
presume fundamental aspects of the corresponding encoding process,
including the rate. See Iwata, col. 2, lines 58-59; col. 5, 11. 7-36; Figs. 1-2,
8. Given the relationship between encoding and decoding in Iwata, the
Examiner's position has at least a rational basis on this record that has not
been persuasively rebutted. Therefore, we are not persuaded that the
Examiner erred in rejecting claim 28.
Claims 30 and 35
We do not, however, sustain the Examiner's rejection of claims 30
and 35. Claim 30 depends from independent claim 20 and recites, in
pertinent part, that the first hypothesis presumes (1) a first trellis size; (2) a
first quantity of aggregated encoding elements; and (3) a first initial
encoding element. The claim further recites that the second hypothesis
presumes (1) a second trellis size; (2) a second quantity of aggregated
encoding elements; and (3) a second initial encoding element. Claim 30 also
recites three key aspects of these elements, namely ( 1) the first and second
trellis sizes are equal; (2) the first and second aggregated encoding elements
are equal; and (3) the first and second initial encoding elements are not
equal.
Claim 35 depends indirectly from independent claim 32 which recites
a decoder adapted to perform functions similar to those in claim 20 at least
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with respect to, among other things, equating the recited trellis sizes and
initial encoding elements.
In the rejection, the Examiner does not distinguish the limitations of
dependent claims 30 and 35 from those of independent claims 20 and 32.
See Final Act. 4--5; see also App. Br. 12 (noting this point). As noted
previously, the Examiner maps "first hypothesis" to the determination of
whether path length equals block length "n" in step 102, and (2) states "Ss"
and "Sr" to the first and second set of starting state metrics, respectively.
Final Act. 4. But in the Answer, the Examiner also maps the states "Ss" and
"Sr" to the first and second initial encoding elements, respectively. Not only
is this mapping of the initial encoding elements inconsistent with the
mapping of these elements in claim 28 noted previously, but the Examiner's
mapping for claim 30 effectively maps the same features in Iwata to
different recited elements, namely the starting state metrics and the initial
encoding elements. The Examiner's rejection is, therefore, erroneous. See
Lantech, Inc. v. Keip Mach. Co., 32 F.3d 542, 547 (Fed. Cir. 1994); see also
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (claims requiring three
separate means not anticipated by structure containing only two means using
one element twice).
Therefore, we are persuaded that the Examiner erred in rejecting (1)
claim 30, and (2) claim 35 for similar reasons.
THE OTHER OBVIOUSNESS REJECTIONS
We will, however, sustain the Examiner's obviousness rejections of
claims 21, 22, 25, 27, 29, and 38. Final Act. 6-9. Appellant reiterates
similar arguments made in connection with the independent claims, and
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alleges that the additional cited references fail to cure those purported
deficiencies. App. Br. 10-11. We are not persuaded by these arguments for
the reasons previously discussed.
CONCLUSION
Under Section 103, the Examiner did not err in rejecting claims 20-
29, 31-34, and 36-38, but erred in rejecting claims 30 and 35.
DECISION
The Examiner's decision rejecting claims 20-38 is affirmed-in-part.
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-IN-PART
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