Ex Parte Khayrallah

Patent Trial and Appeal Board

Dec 23, 2013

11517533 (P.T.A.B. Dec. 23, 2013)

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.
11/517,533 09/07/2006 Ali S. Khayrallah 4015-5382 / P20297-US1 2412
24112 7590 12/23/2013
COATS & BENNETT, PLLC
1400 Crescent Green, Suite 300
Cary, NC 27518
EXAMINER
TSVEY, GENNADIY
ART UNIT PAPER NUMBER
2648
MAIL DATE DELIVERY MODE
12/23/2013 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 ALI S. KHAYRALLAH
____________________

Appeal 2011-005099
Application 11/517,533
Technology Center 2600
____________________

Before ST. JOHN COURTENAY III, THU A. DANG,
and CARL W. WHITEHEAD, JR., Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-005099
Application 11/517,533

2
I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-11, 16-30, and 35-39 (App. Br. 2). Claims 12-15 and 31-34 have
been canceled (id.). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
Appellant’s invention is directed to a variable bandwidth receiver
having multiple antennas that may be selectively configured based on
channel conditions to receive multiple sub-signals of a wideband signal on
separate antennas; wherein, the receiver selectively assigns each antenna to a
different sub-signal of the wideband signal based on signal quality estimates,
such as Signal-to-Noise Ratio (SNR) (Abstract; Spec. ¶¶ [0005] and [0006]).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A method for receiving a wideband signal including
multiple sub-signals, said method comprising:
receiving the wideband signal using two or more receive
antennas;
selectively assigning a first one of said receive antennas
to receive one or more signals of interest on a first sub-signal of
the wideband signal;
selectively assigning a second one of said receive
antennas to receive one or more signals of interest on a second
sub-signal of the wideband signal; and
wherein said first and second sub-signals have different
bandwidths and overlap in the frequency domain.
Appeal 2011-005099
Application 11/517,533

3

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kaminski US 6,574,459 B1 Jun. 3, 2003
Tehrani US 2005/0078649 A1 Apr. 14, 2005
Sadri US 2005/0141412 A1 Jun. 30, 2005
Pan US 2006/0111054 A1 May 25, 2006

Definition of “Bandwidth” at the Federal Standard 1037C, available
at http://www.its.bldrdoc.gov/fs-1037/dir-004/_0532.htm (last visited
May 29, 2010).

Definition of “Bandwidth” at Search.com,
http://www.search.com/reference/Bandwidth (last visited May 29,
2010).

Definition of “Subset” at Dictionary.com,
http://dictionary.reference.com/browse/subset (last visited Nov. 7,
2010).

Definition of prefix “sub-” at Dictionary.com,
http://dictionary.reference.com/browse/sub- (last visited Nov. 7,
2010).

Theodore S. Rappaport, Wireless Communications, Principles and
Practice, 169-170 (Prentice Hall, 1996).

Claim 1-3, 9-11, 17-22, 28-30, and 36-39 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Tehrani.
Claims 1-3, 9-11, 17-22, 28-30, and 36-39 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Tehrani.
Claims 4-6, 8, 23-25, and 27 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Tehrani in view of Sadri.
Appeal 2011-005099
Application 11/517,533

4
Claims 7 and 26 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tehrani in view of Sadri and Pan.
Claims 16 and 35 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tehrani in view of Sadri and Kaminski.

II. ISSUE
The dispositive issue before us is whether the Examiner has erred in
determining that the Tehrani teaches or would have suggested “selectively
assigning a first one of said receive antennas to receive one or more signals
of interest on a first sub-signal of the wideband signal” (claim 1, emphasis
added).

III. FINDINGS OF FACTS
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. According to Appellant, each of the antennas 102 receive a
wideband signal comprising a plurality of sub-signals that occupy different
portions of the frequency spectrum of the wideband signal and cover the
frequency band of the whole signal; wherein, the sub-signals may be spaced
apart in the frequency domain, or may overlap in frequency (Fig. 1; Spec.
¶ [0017]).
2. In another embodiment, four receive antennas 102 are assigned
to receive separate sub-signals denoted by letters A - D representing discrete
frequency components of the wideband signal (Fig. 2A; Spec.¶ [0023]).
Appeal 2011-005099
Application 11/517,533

5
Tehrani
3. Tehrani discloses a communication system that uses receive
diversity in combination with an Orthogonal Frequency-Division
Multiplexing (OFDM) multiple-access scheme, where M antennas each
receive one of the M high data rate wide-band packetized wireless
communication signals, each signal having N frequency bins (Abstract).
The multiple antenna receiver combines the M high data rate wideband
packetized wireless communication signals to form one combined output
signal (Abstract; ¶¶ [0044] and [0048]).
IV. ANALYSIS
Claims 1-3, 9-11, 17-22, 28-30, and 36-39
Appellant contends that “Tehrani does not disclose a system for
receiving sub-signals of varying but overlapping bandwidth on different
antennas” (App. Br. 7) because “Tehrani discloses a receive diversity system
in which each antenna receives the entire wideband signal, not different
portions of the wideband signal” (App. Br. 8, emphasis added). Appellant
asserts that “[i]t is clear from the [S]pecification and claims that the term
sub-signal . . . refers to signals transmitted in different frequency bands, not
to different copies of the same signal that have passed through different
propagation channels” as found by the Examiner (id., emphasis added). As
to the sub-signals having different frequency bandwidths, Appellant argues
that Tehrani discloses that the “signals received on each antenna are
wideband signals with a plurality of subcarriers” where “all the subcarriers
have the same bandwidth and none overlap in the frequency domain” (App.
Br. 7-8, emphasis added) and that “[t]he [E]xaminer’s reliance on the
doctrine of inherency is misplaced” since “[t]he mere fact that something
Appeal 2011-005099
Application 11/517,533

6
[(an accidental null occurring at one edge of one of the signals)] may result
from a given set of circumstances is not sufficient to establish inherency”
(App. Br. 9). Finally, Appellant contends that “[t]here is no such purposeful
assignment of antennas in Tehrani” where “one antenna . . . receive[s] a
particular sub-signal and a second antenna to receive a different particular
sub-signal” (App. Br. 10).
However, the Examiner finds that “Tehrani teaches a method for
combining of M high data rate wideband packetized OFDM wireless
communication signals to form a combined output signal, wherein M receive
antennas each receive one of the M signals” (Ans. 29). The Examiner notes
that “it appears that the term ‘sub-signal’ as used in the [A]ppellant’s
disclosure is a very broad term comprising various combinations . . . of
individual signals received on different antennas that are used to build (or
recreate) a wideband signal using combining in baseband” (Ans. 28-29).
The Examiner finds further that the “feature of being able to receive the sub-
signals with different bandwidths in normal operation is inherent for the
Tehrani’s system and method” (Ans. 8, emphasis omitted) since “space
diversity” dictates that it is common for “multipath fading and nulls [to]
occur[] at the edges” (Ans. 31-32). The Examiner finds further that “[i]t is
well known in the art that in antenna diversity . . . the signals received by
different antennas at least overlap in frequency domain since they are
different versions . . . of the same broadband signal” (Ans. 32).
We give the claim its broadest reasonable interpretation consistent
with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997). However, we will not read limitations from the Specification into the
claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Claim 1
Appeal 2011-005099
Application 11/517,533

7
does not define “sub-signals” other than it is included within a wideband
signal. The Specification discloses that the sub-signals occupy different
portions of the frequency spectrum of the wideband signal which may
overlap (FF 1) and that they represent discrete frequency components of the
wideband signal (FF 2).
We also note that claim 1 recites “selectively assigning” an antenna
“to receive” one or more signals “on a sub-signal” (claim 1). We conclude
such “to receive” language to merely represents a statement of intended use
of the antenna, which does not limit the claim. Particularly, an intended use
will not limit the scope of the claim because it merely defines a context in
which the invention operates. Boehringer Ingelheim Vetmedica, Inc. v.
Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003).
Additionally, we note further that the claim positively recites a “receiving”
step where two or more receive antennas receive the entire wideband signal
including all of the multiple sub-signals prior to a first one of the receive
antennas being selectively assigned to receive a sub-signal (claim 1). Thus,
we give “selectively assigning a first one of said receive antennas to receive
one or more signals of interest on a first sub-signal of the wideband signal”
its broadest reasonable interpretation as merely assigning a first antenna that
is capable of receiving a signal at a first discrete frequency component of the
wideband signal.
We note further that the “wherein” clause indicating that the first and
second sub-signals have different bandwidths and overlap in the frequency
domain does not limit the scope of the claim because it merely defines an
environment for “selectively assigning” an antenna (claim 1). We broadly
interpret such “selective” assignment to be assigning a first and second
Appeal 2011-005099
Application 11/517,533

8
antenna that are capable of receiving a first and second sub-signal which
have different bandwidths and overlap in the frequency domain.
Tehrani discloses a communication system that uses receive diversity
in combination with an Orthogonal Frequency-Division Multiplexing
(OFDM) multiple-access scheme, where M antennas each receive one of the
M high data rate wide-band packetized wireless communication signals;
each signal having N frequency bins (FF 3). We find that each antenna is
capable of receiving a signal at a discrete frequency component of the
wideband signal since each antenna receives the high data rate wideband
packetized wireless communication signal that are “divided into a plurality
of subcarriers” as Appellant admits (App. Br. 7, emphasis added). We also
adopt the Examiner’s finding that it is common for “multipath fading and
nulls [to] occur[] at the edges” (Ans. 32) and that “[i]t is well known in the
art that in antenna diversity . . . the signals received by different antennas at
least overlap in frequency domain since they are different versions . . . of the
same broadband signal” (Ans. 32). Thus, each antenna is capable of
receiving signals having different bandwidths and overlap in the frequency
domain.
In view of our claim construction above, we find that Tehrani
discloses all of the disputed claim limitations of claim 1.
Accordingly, we find no error in the Examiner’s rejection of claim 1
under 35 U.S.C. § 102(b) over Tehrani. Independent claim 20 having
similar claim language and claims 2, 3, 9-11, 17-19, 21, 22, 28-30, and 36-
39 (depending from claims 1 and 20) which have not been argued separately,
fall with claim 1.
Appeal 2011-005099
Application 11/517,533

9
Further, the question of obviousness is "based on underlying factual
determinations including . . . what th[e] prior art teaches explicitly and
inherently . . . ." In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001) (citing
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); In re Dembiczak, 175
F.3d 994, 998 (Fed. Cir. 1999); In re Napier, 55 F.3d 610, 613 (Fed. Cir.
1995)). Our reviewing court guides that a disclosure that anticipates under
35 U.S.C. § 102 also renders the claim unpatentable under 35 U.S.C. § 103,
for “anticipation is the epitome of obviousness.” Jones v. Hardy, 727 F.2d
1524, 1529 (Fed. Cir. 1984).
Thus, in view of our affirmance of the Examiner’s anticipation
rejection of claims 1-3, 9-11, 17-22, 28-30, and 36-39 over Tehrani, we also
affirm the Examiner’s obviousness rejection of claims 1-3, 9-11, 17-22, 28-
30, and 36-39 under 35 U.S.C. § 103(a) over Tehrani
Claims 4-8, 16, 23-27, and 35
As for claims 4-8, 16, 23-27, and 35Appellant contends that none of
Sadri, Pan, and Kaminski “show receiving sub-signals of varying but
overlapping bandwidth on different antennas” (App. Br. 12-14).
As noted supra, we found that Tehrani discloses this claim limitation.
Accordingly we affirm the Examiner’s rejection of claims 4-6, 8, 23-25, and
27 under 35 U.S.C. § 103(a) as being unpatentable over Tehrani in view of
Sadri; of claims 7 and 26 under 35 U.S.C. § 103(a) as being unpatentable
over Tehrani in view of Sadri and Pan; and of claims 16 and 35 under
35 U.S.C. § 103(a) as being unpatentable over Tehrani in view of Sadri and
Kaminski.

Appeal 2011-005099
Application 11/517,533

10
V. CONCLUSION AND DECISION
The Examiner’s rejection of claims 1-3, 9-11, 17-22, 28-30, and 36-39
under 35 U.S.C. § 102(b) and of claims 1-11, 16-30, and 35-39 under
35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

msc