Ex Parte Leinonen et al

Patent Trial and Appeal Board

Nov 18, 2014

11231308 (P.T.A.B. Nov. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARKO LEINONEN, NIKO KIUKKONEN, JARI JUNELL,
PERTTI KANGAS, HEIKKI MATTILA, ANTTI KANGAS, and
JUKKA KANSANAHO
____________

Appeal 2012-006570
Application 11/231,308
Technology Center 2600
____________

Before JOHN A. JEFFERY, STEVEN D.A. McCARTHY, and JENNIFER
L. McKEOWN, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–5 and 7–41. We have jurisdiction under 35
U.S.C. § 6(b). We affirm-in-part.

STATEMENT OF THE CASE
Appellants’ invention operates a receiver configured to access
multiple wireless services in a non-interfering manner by (1) enabling
operation of a transceiver if measured signal strength is above a reference
value, and (2) limiting operation during reception if the measured signal
strength is below that value. See generally Abstract. Claim 1 is illustrative:
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1. In a device comprising a coupling to a first antenna and a second
antenna, a method for operating a receiver comprising a coupling to the first
antenna in combination with a transmitter comprising a coupling to the
second antenna, the method comprising:
receiving information in bursts with the receiver on a first band of
radio frequencies,
measuring signal strength of the information received with the
receiver,
comparing the measured signal strength to a reference value, and
if the measured signal strength is above the reference value,
enabling operation of the transmitter, and
if the measured signal strength is below the reference value,
limiting operation of the transmitter during reception of the bursts.

THE REJECTIONS
The Examiner rejected claims 1, 4, 10, 29, 31, 34, and 38–41 under 35
U.S.C. § 102(b) as anticipated by Kim (US 2004/0063412 A1; Apr. 1,
2004). Ans. 5–6.1
The Examiner rejected claims 2, 3, 11, and 30 under 35 U.S.C.
§ 103(a) as unpatentable over Kim and Lee (US 6,385,435 B1; May 7,
2002). Ans. 7–8.
The Examiner rejected claims 5, 7–9, 23, and 33 under 35 U.S.C.
§ 103(a) as unpatentable over Kim, Lee, and Maalismaa (US 2003/0228892
A1; Dec. 11, 2003). Ans. 8–10.
The Examiner rejected claims 12 and 32 under 35 U.S.C. § 103(a) as
unpatentable over Kim and van Rooyen (US 7,242,960 B2; July 10, 2007).
Ans. 10–11.

1 Throughout this opinion, we refer to (1) the Appeal Brief filed October 3,
2011 (“App. Br.”); (2) the Examiner’s Answer mailed December 8, 2011
(“Ans.”); and (3) the Reply Brief filed February 8, 2012 (“Reply Br.”).
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The Examiner rejected claim 13 under 35 U.S.C. § 103(a) as
unpatentable over Kim, van Rooyen, and Surazski (US 6,873,604 B1; Mar.
29, 2005). Ans. 11–12.
The Examiner rejected claims 14–19 under 35 U.S.C. § 103(a) as
unpatentable over Kim, van Rooyen, and Magnusson (US 7,310,499 B2;
Dec. 18, 2007). Ans. 12–13.
The Examiner rejected claim 20 under 35 U.S.C. § 103(a) as
unpatentable over Kim and Kuzminskiy (US 6,895,039 B2; May 17, 2005).
Ans. 13–14.
The Examiner rejected claims 21 and 22 under 35 U.S.C. § 103(a) as
unpatentable over Kim, Kuzminskiy, and Usui (US 2006/0166622 A1; July
27, 2006). Ans. 14–15.
The Examiner rejected claims 24, 26, 36, and 37 under 35 U.S.C.
§ 103(a) as unpatentable over Kim and Choi (US 2002/0022495 A1; Feb.
21, 2002). Ans. 15–16.
The Examiner rejected claim 25 under 35 U.S.C. § 103(a) as
unpatentable over Kim, Choi, and Maalismaa. Ans. 16–17.
The Examiner rejected claim 27 under 35 U.S.C. § 103(a) as
unpatentable over Kim, Maalismaa, Han (US 7,313,413 B2; Dec. 25, 2007),
and Lee. Ans. 17–19.
The Examiner rejected claims 28 and 35 under 35 U.S.C. § 103(a) as
unpatentable over Kim and Maalismaa. Ans. 20–21.

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THE ANTICIPATION REJECTION
The Examiner finds that Kim discloses every recited element of claim
1 including enabling operation of a transmitter if a measured received signal
strength is above a reference value. Ans. 5–6, 21–22. According to the
Examiner, Kim enables operation of the transmitter by placing
transmit/receive switch module 73 in a transmit mode when receiving radio
frequency (RF) signals. Ans. 6, 22.
Appellants argue that Kim does not enable transmitter operation
because Kim switches to transmit mode while receiving signals to attenuate
those signals, and there is no suggestion that Kim’s transmitter can operate
in that state. App. Br. 5–6; Reply Br. 4–5.

ISSUE
Under § 102, has the Examiner erred in rejecting claim 1 by finding
that Kim enables operation of a transmitter if a measured received signal
strength is above a reference value?

ANALYSIS
It is undisputed that Kim places transmit/receive module 73 in a
transmit mode if a measured received signal strength is above a reference
value. See App. Br. 13 (citing Kim ¶¶ 35–36); Ans. 22 (same); see also Kim
¶ 39; Fig. 6 (step 116). As Kim explains, this switch to the transmit mode
attenuates the received signal by about 20 dB due to inherent attenuation
introduced between the antenna and the receiver node. Kim Abstract; ¶ 37.
But because this switch to the transmit mode attenuates received signals, it
occurs during signal reception—not necessarily transmission.
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The question, then, is whether Kim’s switching to the transmit mode
during reception nonetheless enables operation of the transmitter as claimed.
Although Appellants attempt to equate the term “enabling” with
“initiating,”2 the term is not so limited under its broadest reasonable
interpretation. Notably, Appellants do not identify any definition of the term
“enabling” in the Specification to so limit its interpretation. Although the
Specification provides a non-limiting example of this enablement by sending
a signal between controllers (Spec. 8:4–5), this example, while informing
our construction, does not limit our construction to that particular
description.
We, therefore, construe the term “enabling” with its plain meaning,
namely “to make possible or effective.” See Webster’s New World
Dictionary of American English 446 (3d College ed. 1993). Based on this
construction, we see no error in the Examiner’s position. Even assuming,
without deciding, that Kim’s switching to the transmit mode during
reception does not enable (i.e., make possible) immediate transmitter
operation, it nonetheless effectively enables future transmitter operation,
especially since activating the transmit mode is essential for transmission.
See Kim ¶ 35 (noting that the transmit/receive switch module 73 is placed in
the transmit mode in normal operation when the radio is transmitting).
Accord Ans. 22 (noting this fact). That the preamble of claim 1 recites the
open-ended term “comprising” only underscores the fact that the claim
encompasses enabling either immediate or future transmitter operation. See

2 See App. Br. 14 (“There is no teaching or suggest[ion] that Kim’s switch
module 73 enables (or initiates) operation of the transmitter.”) (emphasis
added).
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Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997)
(“‘Comprising’ is a term of art used in claim language which means that the
named elements are essential, but other elements may be added and still
form a construct within the scope of the claim.”) (citation omitted).
As the Examiner indicates, claim 1 does not recite that the transmitter
transmits signals. Ans. 22. Nor does the claim recite operating the
transmitter if the measured signal strength is above the reference value.
Rather, the claim merely requires enabling operation of the transmitter
under that condition: a step fully met by Kim’s selecting the transmit mode
during reception that enables future transmitter operation in that mode.
Therefore, we are not persuaded that the Examiner erred in rejecting
representative claim 1, and claims 4, 10, 29, 31, 34, and 38–41 not argued
separately with particularity.

THE OBVIOUSNESS REJECTION OVER KIM AND LEE
The Examiner finds that although Kim does not use determined
antenna isolation between the first and second antennas when selecting the
reference value, the Examiner cites Lee for teaching this feature in
concluding that the claim would have been obvious. Ans. 7–8, 22–24.
Appellants argue that Kim’s reference value is based on receiver
saturation levels, and there is no reason to modify Kim’s receiver to account
for antenna isolation to prevent oscillation in Lee’s repeater as the Examiner
asserts. App. Br. 15; Reply Br. 5–6.

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ISSUES
(1) Under § 103, has the Examiner erred in rejecting claim 2 by
finding that Kim and Lee collectively would have taught or suggested using
determined antenna isolation between first and second antennas when
selecting the reference value?
(2) Is the Examiner’s combining the teachings of these references
supported by articulated reasoning with some rational underpinning to
justify the Examiner’s obviousness conclusion?

ANALYSIS
We sustain the Examiner’s rejection of claim 2. As noted above, the
Examiner cites Lee’s preventing oscillation by ensuring that isolation
between antennas is higher than repeater gain, and that it would have been
obvious for skilled artisans to have considered this factor when selecting a
reference value to which measured signal strength is compared, as in Kim.
See Ans. 23–24 (citing Lee, col. 1, ll. 47–65). We see no error in this
reasoning, for the claim does not specify how the determined antenna
isolation is used when selecting the reference value, but merely that it is
used when selecting the value. In short, accounting for antenna isolation
during Kim’s reference value selection as the Examiner proposes merely
applies “a known technique to a piece of prior art ready for the
improvement” to yield a predictable result. See KSR Int’l Co. v. Teleflex,
Inc., 550 U.S. 398, 417 (2007). Although Lee’s isolation determination
involves repeaters, its fundamental teachings involving determining antenna
isolation to prevent oscillation are nonetheless applicable to Kim’s wireless
system that likewise involves transmitters, receivers, and associated
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antennas. We, therefore, find that the Examiner’s combining the teachings
of Kim and Lee is supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion.
Accordingly, we are not persuaded that the Examiner erred in
rejecting claim 2, and claims 3, 11, and 30 not argued separately with
particularity.

THE REJECTION OVER KIM, LEE, AND MAALISMAA
Claim 23
We do not, however, sustain the Examiner’s rejection of claim 23
reciting notifying a user of the device before a large amount of data is about
to be transmitted or received. As Appellants indicate, the Examiner does not
identify specifically what “user” is so notified in Maalismaa. Reply Br. 6.
Nevertheless, the recited user notification is said to be taught by the internal
notification achieved by Maalismaa’s DVB_RX_ON signal. Ans. 10, 24–25
(citing Maalismaa ¶¶ 31–32; Fig. 4B).
To the extent that the Examiner equates the recited “user” to internal
components in Maalismaa that receive the DVB_RX_ON signal, such as the
digital signal processor (DSP) 26, such a position is problematic, for it is
inconsistent with the Specification’s repeated references to a human using
the disclosed device as Appellants indicate. See App. Br. 16; Reply Br. 6–7
(citing Spec. 2:11–13; 9:3–4; 12:19; 19:26–20:2; Figs. 10A–C). That the
plain meaning of “user” contemplates human users, namely “[a]nyone who
requires the services of a computing system,”3 only bolsters Appellants’

3 Gilbert Held, Dictionary of Communications Technology 569 (3d ed. 1998)
(emphasis added).
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position that the recited term “user” is limited to human users when
interpreted in light of the Specification and the term’s established meaning
in the art.
Therefore, we are persuaded that the Examiner erred in rejecting
claim 23.

Claims 5, 7–9, and 33
We do sustain the Examiner’s rejection of dependent claims 5, 7–9,
and 33 over Kim, Lee, and Maalismaa, however. Ans. 8–10. Despite
nominally arguing these claims separately, Appellants reiterate similar
arguments made in connection with independent claims 1 and 29, and allege
that Lee and Maalismaa fail to cure Kim’s purported deficiencies regarding
those claims. App. Br. 16. We are not persuaded by these arguments,
however, for the reasons previously discussed.

THE REJECTION OVER KIM AND KUZMINSKIY
We will not sustain the Examiner’s rejection of claim 20 reciting, in
pertinent part, interrupting transmission when the receiver is receiving
bursts. Apart from summarily asserting that this interruption is taught in
Kuzminskiy’s column 1, lines 29 to 35 (see Ans. 13–14, 27), the Examiner
does not explain why this is so, nor will we speculate in that regard here in
the first instance on appeal. Although the cited passage refers to
transmitting a short message in a single radio burst, we agree with
Appellants that nothing in this passage when considered in light of Kim
reasonably suggests interrupting transmission when bursts are received as
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claimed. App. Br. 18; Reply Br. 7 (noting this deficiency). Therefore, we
are persuaded that the Examiner erred in rejecting claim 20.

THE REJECTION OVER KIM, KUZMINSKIY, AND USUI
Claim 21
We also will not sustain the Examiner’s rejection of claim 21 reciting,
in pertinent part, (1) configuring the transmitter to send data using General
Packet Radio Service (GPRS), and (2) timing the transmission to time
instants at which the receiver is not receiving bursts. Ans. 14–15, 28.
Appellants do not dispute that Kuzminskiy sends data using GPRS, but
rather contend that modifying such a system with Usui’s teachings that are
not operable with GPRS as the Examiner proposes would impermissibly
change Kuzminskiy’s principle of operation. App. Br. 18–19; Reply Br. 8.
On this record, we find the Examiner’s position is problematic. As
noted above, the claim requires that the transmission is timed to time
instants at which the receiver is not receiving bursts. To the extent that the
Examiner relies on Usui’s inter-frame spaces as teaching these instants, we
disagree, for no data is wirelessly communicated (i.e., transmitted or
received) in these time intervals, regardless of whether the data in the form
of bursts or otherwise. See Ans. 28 (citing Usui ¶¶ 24–27, 29–30).
Although the receiver does not receive data during these inter-frame spaces,
there is likewise no transmission in these intervals.
So even if the references were combinable as the Examiner proposes,
they still do not collectively teach or suggest timing the transmission to time
instants at which the receiver is not receiving bursts as claimed. Therefore,
we are persuaded that the Examiner erred in rejecting claim 21.
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Claim 22
For the reasons similar to those indicated above regarding claim 21,
we will also not sustain the Examiner’s rejection of claim 22 reciting
delaying signaling of the transmitter to a time instant at which a burst is not
being received. Here again, the Examiner’s reliance on Usui as teaching this
feature (Ans. 15) is problematic for the reasons noted above in connection
with claim 21.

THE REJECTION OVER KIM AND CHOI
We also sustain the Examiner’s rejection of claim 24 reciting, in
pertinent part, (1) generating a notification of the receiver’s reception, the
notification comprising information about the measured signal strength, and
(2) controlling the transmitter based on the notification. Despite Appellants’
contentions to the contrary (App. Br. 19–20; Reply Br. 9–10), we see no
error in the Examiner’s reliance on Choi for teaching the disputed
limitations. Ans. 16, 29 (citing Choi ¶¶ 17, 48). As shown in Choi’s Figure
2, after a data packet is received from a slave,4 the reception power is
measured and corresponding reception link quality is determined based on
the measured power and associated reception status parameter. Choi ¶¶ 17,
58–59; Fig. 2 (steps S1–S3). Depending on the difference between reception
link quality and a corresponding reference, a transmission power increase or
decrease requesting message is sent to the slave. Choi ¶¶ 17, 60–69; Fig. 2
(steps S4–S6).
Appellants’ contention that Choi’s reception status parameter and data
packet cannot correspond to the recited notification because it is generated

4 The slave sends the data packet. Choi ¶¶ 17, 61.
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after measuring received signal strength (Reply Br. 9) is unavailing. First,
Choi’s power increase and decrease messages sent to the slave effectively
include information about the measured signal strength, for they are based
on—and indeed reflect—that signal strength. That is, a power increase
requesting message indicates that the measured signal strength is too low—a
condition that is intended to be remedied by the slave’s increasing power
responsive to receiving the message. See Choi ¶¶ 62-69. Similarly, the
power decrease requesting message indicates that measured signal strength
is too high. See id. In either case, information about the measured strength
(i.e., whether it is too high or too low) is sent to the slave to control the
transmitter based on this notification. But even if we were to accept
Appellants’ contention (Reply Br. 9) that that Choi’s notification somehow
could be considered to not include information about the measured signal
strength (which it does), Choi also teaches sending the measurement result
to the slave for comparison and power adjustment in lieu of the master
performing the comparison. See Choi ¶ 71. This alternative, therefore,
likewise teaches that the generated notification comprises information about
the measured signal strength as claimed.
Appellants’ contention that Choi controls a transmitter of a slave
device and not a transmitter of the same device that received the data packet
(App. Br. 19; Reply Br. 9) is also unavailing, for the Examiner’s rejection is
not based solely on Choi, but rather the collective teachings of Choi and
Kim. Such individual attacks do not show nonobviousness where, as here,
the rejection is based on the references’ collective teachings. See In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). In any event, we
find the Examiner’s proposed enhancement to Kim predictably uses prior art
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elements according to their established functions—an obvious improvement.
See KSR, 550 U.S. at 417.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 24, and claims 26, 36, and 37 not argued separately with particularity.

THE REJECTION OVER KIM, MAALISMAA, HAN, AND LEE
We will not sustain the Examiner’s rejection of claim 27, however.
Claim 27 recites, in pertinent part, (1) measuring signal strength of
information received with a receiver; (2) measuring output signal strength of
a transmitter; (3) determining a difference in measured signal strengths; and
(4) controlling the transmitter based on the determination. The Examiner
cites Kim for teaching limitation (1); Lee for teaching limitation (2); and
Han for teaching limitations (3) and (4) in concluding that the claim would
have been obvious. Ans. 17–19, 30–31.
On this record, we find the Examiner’s position problematic
essentially for the reasons indicated by Appellants. App. Br. 20–21; Reply
Br. 10. Even if Lee’s amplitude and phase adjustment circuit 605 measures
output signal strength as the Examiner contends (Ans. 19, 30)—a point that
Appellants dispute—we still fail to see how the cited prior art teaches or
suggests determining a difference in measured signal strengths of received
information and a transmitter output, let alone controlling the transmitter
based on this determination as claimed. First, Han is limited to comparing
detected power strengths of received—not transmitted—signals to a
reference as Appellants indicate. App. Br. 21. Second, the Examiner has
not shown—nor can we find—anything in the cited prior art that would
reasonably suggest combining Kim’s measuring signal strength of received
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information with Lee’s amplitude and phase adjustment circuit (assuming
that it measures output signal strength as the Examiner asserts), and Han’s
determining a difference in received signal strengths to conclude that
controlling a transmitter based on the specific recited comparison between
measured transmitter output and received signal strengths would have been
obvious. There is simply no reasonable basis on this record to support the
Examiner’s conclusion apart from impermissible hindsight using Appellants’
own disclosure as a blueprint. See In re Fritch, 972 F.2d 1260, 1266 (Fed.
Cir. 1992).
Therefore, we are persuaded that the Examiner erred in rejecting
claim 27.

THE REJECTION OVER KIM AND MAALISMAA
We will sustain the Examiner’s rejection of claim 28 reciting, in
pertinent part, a method for operating a Digital Video Broadcasting –
Handheld (DVB-H) receiver by (1) comparing measured received
information signal strength with a reference, and (2) enabling or limiting
operation of a cellular transmitter based on that comparison. Notably, the
Examiner’s particular findings from Kim and Maalismaa on pages 20 and 21
of the Answer are undisputed apart from the Examiner’s reliance on
Maalismaa’s Digital Video Broadcasting – Terrestrial (DVB-T) receiver.
App. Br. 21–22; Reply Br. 10–11.
Appellants do not persuasively rebut the Examiner’s position despite
noting that DVB-T receivers are used for digital terrestrial television, and
DVB-H receivers provide broadcast services to mobile handsets (id.). The
Examiner’s position is correct at least to the extent that adapting the
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teachings to DVB-H receivers in lieu of DVB-T receivers would have been
an obvious variation within the level of ordinarily skilled artisans. It is well
settled that if a technique has been used to improve one device (DVB-T
receivers), and an ordinarily skilled artisan would recognize that it would
improve similar DVB-H devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill. See KSR, 550
U.S. at 417. That Maalismaa discloses a portable device with DVB-T
capabilities in paragraph 23 as the Examiner indicates (Ans. 31) only further
bolsters the Examiner’s position that adapting the Kim/Maalismaa system to
DVB-H receivers would have been obvious. Nor have Appellants provided
any persuasive evidence on this record to the contrary.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 28, and claim 35 not argued separately with particularity.

THE OTHER REJECTIONS
We also sustain the Examiner’s obviousness rejections of (1) claims
12 and 32 over Kim and van Rooyen; (2) claim 13 over Kim, van Rooyen,
and Surazski; (3) claims 14–19 over Kim, van Rooyen, and Magnusson; and
(4) claim 25 over Kim, Choi, and Maalismaa. Ans. 10–13, 16–17. Despite
nominally arguing these claims separately, Appellants reiterate similar
arguments made in connection with their respective base claims, and allege
that the additional cited references fail to cure the purported deficiencies.
App. Br. 16–18, 20. We are not persuaded by these arguments, however, for
the reasons previously discussed.

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CONCLUSION
Under § 102, the Examiner did not err in rejecting claims 1, 4, 10, 29,
31, 34, and 38–41. Under § 103, the Examiner did not err in rejecting claims
2, 3, 5, 7–9, 11–19, 24–26, 28, 30, 32, 33, 35–37, but erred in rejecting
claims 20–23 and 27.

DECISION
The Examiner’s decision rejecting claims 1–5 and 7–41 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)(1)(iv).

AFFIRMED-IN-PART

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