Ex Parte LI et al

Board of Patent Appeals and Interferences

Jun 22, 2009

10321024 (B.P.A.I. Jun. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte QINGHUA LI and LESLIE A. RUSCH
____________

Appeal 2009-001605
Application 10/321,024
Technology Center 2600
____________

Decided:1 June 22, 2009
____________

Before ROBERT E. NAPPI, JOHN A. JEFFERY, and
CARLA M. KRIVAK, Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-001605
Application 10/321,024

2
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-36. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

STATEMENT OF CASE
Appellants’ claimed invention is an adaptive receiver architecture.
The apparatus and technique pertain to a wireless communication receiver
architecture (Spec. 2:3-5).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. An apparatus comprising:
a front end utilizing an adaptive filter to suppress, at least in
part, interference in a received Ultra-Wide Band (UWB) signal
and produce at least one symbol signal; and
a phase shift key (PSK) symbol detector to extract information
from the symbol signal.

REFERENCES
Subramanian US 2002/0015401 A1 Feb. 7, 2002
McCorkle US 2002/0064245 A1 May 30, 2002
(filed Oct. 10, 2001)
McCorkle US 2003/0054764 A1 Mar. 20, 2003
(filed Oct. 11, 2002)
Miller US 2003/0067963 A1 Apr. 10, 2003
(filed Aug. 8, 2002)
Arslan US 2004/0022335 A1 Feb. 5, 2004
(filed Aug. 1, 2002)
Ho US 2004/0042561 A1 Mar. 4, 2004
(filed Aug. 30, 2002)
Appeal 2009-001605
Application 10/321,024

3
The Examiner rejected claims 1, 5, 7, 12, 16, 21, and 26 under 35
U.S.C. § 103(a) based upon the teachings of McCorkle US 2003/0054764
A1 (hereinafter McCorkle ’764) and Arslan.
The Examiner rejected claims 2, 3, 6, 11, 17, 18, 20, 25, 28, 29, 31,
32, 34, and 35 under 35 U.S.C. § 103(a) based upon the teachings of
McCorkle ’764, Arslan, and Ho.
The Examiner rejected claims 4 and 19 under 35 U.S.C. § 103(a)
based upon the teachings of McCorkle ’764, Arslan, and Subramanian.
The Examiner rejected claims 8-10 and 22-24 under 35 U.S.C.
§ 103(a) based upon the teachings of McCorkle ’764, Arslan, and Miller.
The Examiner rejected claims 13 and 27 under 35 U.S.C. § 103(a)
based upon the teachings of McCorkle ’764, Arslan, and McCorkle US
2002/0064245 A1 (hereinafter McCorkle ’245).
The Examiner rejected claim 30 under 35 U.S.C. § 103(a) based upon
the teachings of McCorkle ’764, Arslan, Ho, and Subramanian.
The Examiner rejected claims 14, 15, and 36 under 35 U.S.C.
§ 103(a) based upon the teachings of McCorkle ’764, Arslan, Ho, and
McCorkle ’245.
The Examiner rejected claim 33 under 35 U.S.C. § 103(a) based upon
the teachings of McCorkle ’764, Arslan, Ho, and Miller.
Appellants contend that Arslan is not prior art because the conception
date of Appellants’ invention of at least March 3, 2002, is prior to the filing
date of Arslan (App. Br. 11).2

2 The Supplemental Appeal Brief filed July 25, 2007, is referred to
throughout this opinion.
Appeal 2009-001605
Application 10/321,024

4
ISSUE
Have Appellants established that Arslan is disqualified as prior art?

FINDINGS OF FACT
1. Appellants claim conception of Appellants’ invention by at
least March 3, 2002.
2. The Declaration under 37 C.F.R. § 1.131 of Qinghua Li (the “Li
Declaration”) avers that the claimed subject matter of the present application
was conceived and reduced to practice in the United States (Ev. App’x B-2).
3. Attached to the Li Declaration is an Intel Invention Disclosure
having Disclosure No. 25544 for an invention titled “Adaptive Receivers for
PSK Ultra-Wide Band Signal” (Ev. App’x B-3).
4. The Intel Invention Disclosure shows a date of March 3, 2002,
a date stamp of April 15, 2002, and a “Received” date stamp from the Patent
Database Group/Intel Legal Team of April 18, 2002 (Ev. App’x B-3). Thus,
the date of Appellants’ invention is earlier than the effective date of Arslan,
Miller, and Ho.
5. The Intel Invention Disclosure also identifies that a paper was
submitted for conference committee review that would occur on March 15,
2002, and if accepted, would be published on August 12, 2002.
6. An in-depth, detailed description of Appellants’ invention was
provided as part of the Intel Invention Disclosure.
7. The inventor Leslie Rusch is not a party to the Li Declaration
under 37 C.F.R. § 1.131.
8. The Declaration under 37 C.F.R. § 1.131 of Justin B. Scout (the
“Scout Declaration”) avers that the Intel Invention Disclosure establishes a
Appeal 2009-001605
Application 10/321,024

5
date of conception no later than March 3, 2002, which is earlier than the
effective dates of Arslan, Miller, and Ho (Ev. App’x B-1).
9. The Scout Declaration also states that the application was
assigned to him for drafting on June 30, 2002.
10. An initial draft based on the Intel Invention Disclosure was
completed early December 2002, and a final revision was completed
December 16, 2002 (Ev. App’x B-1).
11. The law firm of Blakeley, Sokoloff, Taylor, & Zafman LLP
was given the final revision to file on December 16, 2002, as was the policy
of Intel at the time. Appellants’ application was filed on December 16, 2002
(Ev. App’x B-1).
12. Arslan has an effective date of August 1, 2002.

PRINCIPLES OF LAW
“Conception is defined as formation in the mind of the inventor, of a
definite and permanent idea of the complete and operative invention, as it is
hereafter to be applied in practice.” Brand v. Miller, 487 F.3d 862, 869 n.4
(Fed. Cir. 2007) (citations omitted) (internal quotation marks omitted).
Reasonable diligence can be shown by establishing that “the attorney
worked reasonably hard on the particular application in question during the
continuous critical period.” Bey v. Kollonitsch, 806 F.2d 1024, 1027 (Fed.
Cir. 1986).
“The filing of a patent application is a constructive reduction to
practice of the invention disclosed therein.” Frazer v. Schlegel, 498 F.3d
1283, 1288 (Fed. Cir. 2007).

Appeal 2009-001605
Application 10/321,024

6
ANALYSIS
The Examiner finds that the Li Declaration is not proper under 37
C.F.R. § 1.131 because there is only one inventor who signed the declaration
(Ans. 19). The Examiner also finds that the Scout Declaration is not proper
under 37 C.F.R. § 1.131 because Scout is not the attorney of record (Ans.
19).
With respect to the Li Declaration, MPEP 715.04 requires that all
inventors must sign a Declaration under 37 C.F.R. § 1.131. Since there are
two inventors of Appellants’ invention and both are listed on the Intel
Invention Disclosure form and mentioned in the Li Declaration (Ev. App’x
B-2), both are required to sign under MPEP 715.04 as the Examiner
indicates (Ans. 20). Because the second inventor has not signed (FF 7), it is
not clear which claims pertain to each inventor (Ans. 20). Thus, the
statements made in the Li Declaration cannot be used to establish proof of
conception prior to Aslan’s filing date (FF 12).
With respect to the Scout Declaration, MPEP 715.04 does not require
the signature of the attorney of record. The Examiner’s reference to 37
C.F.R. 1.47 is ill-founded and does not pertain to Appellants’ situation.
Further, Scout is the authoring attorney of Appellants’ application. The
attorneys of record in this application merely filed and prosecuted
Appellants’ invention (see Ev. App’x B-1). Therefore, the Scout
Declaration does qualify as a valid declaration under 37 C.F.R. 1.131, 1.47,
contrary to the Examiner’s assertion (Ans. 19).
The Scout Declaration sets forth the series of events from receipt of
the Intel Invention Disclosure, dated March 3, 2002, on June 30, 2002, to
providing a final revision for filing on December 16, 2002 (FF 8-10). These
Appeal 2009-001605
Application 10/321,024

7
events provide evidence sufficient to establish that Scout exercised
reasonable diligence in preparing Appellants’ application. See Bey, 806 F.2d
at 1027. Although the Intel Invention Disclosure was attached to the Li
Declaration, the Scout Declaration also references the Intel Invention
Disclosure (FF 8) and it was submitted as a separate Evidence Appendix (FF
3). Thus, while the disclosure document is associated with the Li
Declaration, the Scout Declaration also refers to the Intel Invention
Disclosure document. Therefore, to the extent the Intel Invention
Disclosure’s presentation in the record as associated with the Li Declaration
is erroneous, we treat such error as harmless. Therefore, Appellants have
established proof of conception based on the Scout Declaration and Intel
Invention Disclosure.
Because Appellants have established that Arslan is not prior art, the
combination of McCorkle ’764 in combination with Arslan, and the other
references, does not render obvious claims 1-36.

CONCLUSION
Appellants have shown that Arslan is not prior art and thus, the
Examiner erred in rejecting claims 1-36 under 35 U.S.C. § 103.

DECISION
The Examiner’s decision rejecting claims 1-36 is reversed.
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).

REVERSED
Appeal 2009-001605
Application 10/321,024

8

babc

INTEL/BSTZ
BLAKELY SOKOLOFF TAYLOR & ZAFMAN LLP
1279 OAKMEAD PARKWAY
SUNNYVALE CA 94085-4040