Ex Parte Kent et al

Board of Patent Appeals and Interferences

Jun 27, 2012

11173689 (B.P.A.I. Jun. 27, 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.
11/173,689 06/30/2005 Mark Kent 3875.0520001 9100
26111 7590 06/28/2012
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
KIM, WESLEY LEO
ART UNIT PAPER NUMBER
2617
MAIL DATE DELIVERY MODE
06/28/2012 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 MARK KENT, VINKO ERCEG, URI LANDAU, and PIETER
VAN ROOYEN
____________

Appeal 2010-001848
Application 11/173,689
Technology Center 2600
____________

Before LANCE L. BARRY, JOHN A. JEFFERY, and
THU A. DANG, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Patent Examiner rejected claims 1-30. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).

Appeal 2010-001848
Application 11/173,689
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INVENTION
The following claim illustrates the invention on appeal.
1. A method for processing signals in a receiver, the
method comprising:
generating at least one control signal that is utilized to
control at least a first of a plurality of received signals; and
adjusting a phase of said first of said plurality of received
signals via said generated at least one control signal so that said
phase of said first of said plurality of received signals is
equivalent to a phase of at least a second of said plurality of
received signals, wherein said phase of said first signal is
adjusted within a processing path used to process said first of
said plurality of received signals,
and wherein said at least one control signal is generated
based on one or both of at least one channel function estimate
and/or signal timing information associated with a digitized
baseband signal corresponding to said first and said second of
said plurality of received signals.

REJECTIONS
Claims 11-20 stand rejected under 35 U .S.C. § 112, ¶ 1, for failing to
comply with the written description requirement.
Claims 1-30 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by U.S. Patent No. US 7, 203, 470 B2 ("Seo").

DISCUSSION
Based on the dependencies of the claims, we will decide the appeal of
the written description rejection of claims 11-20 collectively.
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Based on the Appellants' arguments, we will decide the appeal of the
anticipation rejection of claims 1, 5-9, 11, 15-19, 21, and 25-29 on the basis
of claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
Based on the Appellants' arguments, we will decide the appeal of the
anticipation rejection of claims 4, 14, and 24 on the basis of claim 4. Id.
We will decide the appeal of the anticipation rejection of claims 2, 12,
and 22 collectively; claims 3, 13, and 23 collectively; and claims 10, 20, and
30 collectively.

WRITTEN DESCRIPTION REJECTION OF CLAIMS 11-20
The issue before us follows: Did the Examiner err in finding that the
amendment to independent claim 11, requiring "[a] computer-readable
media having stored thereon, a computer program," and similar amendments
to dependent claims 12-20 lack an original, adequate written description?
The Examiner makes the following findings and conclusions.
The citations of paragraphs 69, 72, and 73 teaches a machine-
readable storage and computer systems which can be realized as
hardware, software, or a combination of both. The
Claim recites "A computer-readable medium" which is not
supported by the specification.
(Ans. 7-8.)
"The disclosure as originally filed does not . . . have to provide in
haec verba support for the claimed subject matter at issue." Cordis Corp. v.
Medtronic AVE, Inc., 339 F.3d 1352, 1364 (Fed. Cir. 2003) (citation
omitted).
Here, we agree with the Appellants' argument "that the computer-
readable medium claims (claims 11-20) are supported by, for example,
Appeal 2010-001848
Application 11/173,689
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paragraphs 0069, 0072 and 0073 of the present specification." (App. Br. 8.)
More specifically, we find that the Specification's paragraph [0069] teaching
that "a machine readable storage, having stored thereon, a computer
program" supports claim 11's limitation of "[a] computer-readable medium
having stored thereon, a computer program."
Therefore, we conclude that the Examiner did err in finding that the
amendment to independent claim 11, requiring a "[a] computer-readable
medium having stored thereon, a computer program" and similar
amendments to dependent claims 12-20, lacks an original, adequate written
description.

ANTICIPATION REJECTION OF CLAIM 1
The issue before us follows: Did the Examiner err in finding that Seo
teaches "at least one control signal is generated based on . . . at least one
channel function estimate," as required by representative claim 1?
"[T]he PTO gives claims their 'broadest reasonable interpretation.'" In
re Bigio, 381 F.3d 1320, 1324, (Fed. Cir. 2004) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)). "Moreover, limitations are not to be read
into the claims from the specification." In re Van Geuns, 988 F.2d 1181,
1184, (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321(Fed. Cir.
1989)).
Here, we agree with the Examiner's following findings and
conclusions.
Seo's teachings can broadly read on the limitation from
Figure 3, element S6, which says that power (i.e. channel
estimate) of the first and second signals are measured based on
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Application 11/173,689
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the baseband signal to control the signals as specified in
Figure 3 S1 and S2. S1 and S2 generate the control signals.
(Ans. 9.)
The Appellants argue that a "channel estimation of a received signal is
not equivalent to determining signal power. A 'channel estimate' of a signal
is a term of art, which is different from signal 'power'. Therefore, the
Examiner has incorrectly equated measuring signal power with determining
a channel estimate of a signal." (Reply Br. 5.)
The Appellants' arguments are unpersuasive. The Appellants fail to
provide any evidence of the meaning of "channel function estimate."
Attorney "argument . . . cannot take the place of evidence." In re Pearson,
494 F.2d 1399, 1405 (CCPA 1974). See, e.g., In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997) (attorney arguments or conclusory statements are
insufficient to rebut a prima facie case).
Therefore, we conclude that the Examiner did not err in finding that
Seo teaches "at least one control signal is generated based on . . . at least
one channel function estimate," as required by representative claim 1.

ANTICIPATION REJECTION OF CLAIMS 2, 12, AND 22
The issue before us follows: Did the Examiner err in finding that Seo
teaches "adjusting an amplitude of said first of said plurality of received
signals via said generated at least one control signal so that said amplitude of
said first of said plurality of received signals is equivalent to an amplitude of
at least a second of said plurality of received signals," as required by claim 2
and similarly required by claims 12 and 22?
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The Examiner finds that Seo's phase control signals 316 and 317 teach
"said generated at least one control signal" as required by claim 1 from
which claim 2 depends. (Ans. 5.)
"It is axiomatic that anticipation of a claim under § 102 can be found
only if the prior art reference discloses every element of the claim, and that
anticipation is a fact question . . . ." In re King, 801 F.2d 1324, 1326 (Fed.
Cir. 1986) (citing Lindemann Maschinenfabrik GMBH v. Am. Hoist &
Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984)).
We agree, however, with the Appellants' argument that "signals 316-
317 are . . . deficient since Seo does not disclose that any of the signals 316-
317 are used for purposes of adjusting the amplitude of a first received
signal so it equals the amplitude of a second received signal." (Reply Br. 7.)
Therefore, we conclude that the Examiner did err in finding that Seo
teaches "adjusting an amplitude of said first of said plurality of received
signals via said generated at least one control signal so that said amplitude of
said first of said plurality of received signals is equivalent to an amplitude of
at least a second of said plurality of received signal," as required by claim 2
and similarly required by claims 12 and 22.

ANTICIPATION REJECTION OF CLAIMS 3, 13, AND 23
The issue before us follows: Did the Examiner err in finding that Seo
teaches that "said generated at least one control signal comprises a single
weight signal," as required by claim 3 and similarly required by claims 13
and 23?
The Examiner concludes that "the phase control signals 316-317 are
the signal weight signals since they only change phase." (Ans. 11.)
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We agree, however, with the Appellants' argument that "a 'weight'
signal is used for purposes of signal weighing. . . . [N]o weighing
functionality is disclosed with regard to signals 316-317." (Reply Br. 7.)
Therefore, we conclude that the Examiner did err in finding that Seo
teaches that "said generated at least one control signal comprises a single
weight signal," as required by claim 3 and similarly required by claims 13
and 23.

ANTICIPATION REJECTION OF CLAIM 4
The issue before us follows: Did the Examiner err in finding that Seo
would have taught that the "phase of said first of said plurality of received
signals is adjusted continuously," "so that said phase of said first of said
plurality of received signals is equivalent to a phase of at least a second of
said plurality of received signals" as required by claim 4 which depends
from claim 11?
The Appellants argue that "Seo . . . does not disclose a continuous
adjustment of the signal phase." (App. Br. 15.)
"Both anticipation under § 102 and obviousness under § 103 are two-
step inquiries. The first step in both analyses is a proper construction of the
claims. . . . The second step in the analyses requires a comparison of the
properly construed claim to the prior art." Medichem, S.A. v. Rolabo, S.L.,
353 F.3d 928, 933 (Fed. Cir. 2003) (internal citations omitted).

1 "Claims in dependent form shall be construed to include all the limitations
of the claim incorporated by reference into the dependent claim." 37 C.F.R.
§ 1.75(c).

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Application 11/173,689
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Here, we conclude that the claimed limitations at issue require a phase
adjustment only when the phases of received signals are nonequivalent, but
no adjustment when the phases are equivalent. In other words, the phases
are adjusted until they are equivalent.
We agree with the Examiner's finding that "Seo teaches said phase of
said first of said plurality of received signals is adjusted continuously
(Col. 6: lines 16-21 . . . )." (Ans. 11.) More specifically, we find that Seo
performs a phase adjustment when its first and second signals are
nonequivalent, i.e., the difference between the signals is outside a threshold
range.
Therefore, we conclude that the Examiner did not err in finding that
Seo would have taught that the "phase of said first of said plurality of
received signals is adjusted continuously," "so that said phase of said first of
said plurality of received signals is equivalent to a phase of at least a second
of said plurality of received signals" as required by claim 4 which depends
from claim 1.

ANTICIPATION REJECTION OF CLAIMS 10, 20, AND 30
The issue before us follows: Did the Examiner err in finding that Seo
teaches "generating said at least one control signal utilizing at least one
optimization algorithm comprising one or more of a maximum signal-to-
noise ratio (SNR) algorithm," as required by claim 10 and similarly required
by claims 20 and 30.
The Examiner finds that "Seo teaches . . . a maximum signal-to-noise
ratio (SNR) algorithm . . . (Col. 1:lines 30-32, maximal ratio[] combining is
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Application 11/173,689
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an algorithm for providing maximum signal to noise ratio)." (Ans. 13-14;
(emphasis removed).)
[U]nless a reference discloses within the four corners of the
document not only all of the limitations claimed but also all of
the limitations arranged or combined in the same way as recited
in the claim, it cannot be said to prove prior invention of the
thing claimed and, thus, cannot anticipate under 35 U.S.C.
§ 102.
Net MoneyIn, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
Here, we agree with the Appellants' following argument.
[E]ven though Seo discloses, at the above citations, that
"diversity techniques include a selection or switching
technique, an in-phase combining or equal-gain combining
technique, and a maximal ratio combining technique," Seo
clearly does not disclose or suggest that the control signals 316-
317 are generated utilizing at least one optimization algorithm
comprising one or more of a maximum signal-to-noise ratio
(SNR) algorithm . . . .
(App. Br. 20.)

Therefore, we conclude that the Examiner erred in finding that Seo
teaches "generating said at least one control signal utilizing at least one
optimization algorithm comprising one or more of a maximum signal-to-
noise ratio (SNR) algorithm," as required by claim 10, and similarly
required by claims 20 and 30.

DECISION
We reverse the written description rejection of claim 11 and that of
claims 12-20, which depend therefrom.
We affirm the anticipation rejection of claim 1 and of claims 5-9, 11,
15-19, 21, and 25-29, which fall therewith.
Appeal 2010-001848
Application 11/173,689
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We reverse the anticipation rejection of claims 2, 12, and 22.
We reverse the anticipation rejection of claims 3, 13, and 23.
We affirm the anticipation rejection of claim 4 and that of claims 14
and 24 that fall therewith.
We reverse the anticipation rejection of claims 10, 20, and 30.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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