Ex Parte LI et al

Patent Trial and Appeal Board

Sep 24, 2013

11150779 (P.T.A.B. Sep. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte QINGHUA LI
and XINTIAN E. LIN
____________________

Appeal 2011-004516
Application 11/150,779
Technology Center 2600
____________________

Before CAROLYN D. THOMAS, JOHNNY A. KUMAR, and
JOHN A. EVANS, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-004516
Application 11/150,779

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-32. App. Br. 2. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.
Appellants’ Invention
Appellants’ invention relates to beam forming training symbols in
wireless multiple-input-multiple-output systems. Abstract.
Illustrative Claim
Independent claim 1 further illustrates the invention as follows:
1. A method comprising:
identifying a plurality of spatial channels;
determining a plurality of beamforming weights, each of
the plurality of beamforming weights being associated with one
of the plurality of spatial channels;
transmitting a plurality of data streams to two or more
subscriber stations simultaneously in one or more orthogonal
frequency division multiple access (OFDMA) frames; and
transmitting a training symbol associated with one of the
plurality of data streams in the one or more OFDMA frames
based on one of the plurality of beam forming weights.

Rejections on Appeal
The Examiner rejected claims 1-32 under 35 U.S.C. § 103(a) as being
unpatentable over Roh (Wonil Roh et al., Framework for Enabling Closed-
loop MIMO for OFDMA, IEEE 802.16e- 04/552r4 (Jan. 11, 2005)) and
Vook (Frederick W. Vook et al., Optional Dedicated Pilots in the TD-Zone
of OFDMA, IEEE C802.16e-04/416r2 (Nov. 18, 2004)). Ans. 4.
Appeal 2011-004516
Application 11/150,779

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The Examiner rejected claims 1-32 under 35 U.S.C. § 103(a) as being
unpatentable over Roh and Vook 2 (Frederick W. Vook et al., Optional
Dedicated Pilots in the TD-Zone of OFDMA, IEEE C802.16e-04/416 (Nov.
4, 2004)). Ans. 13.

ISSUE
Based on Appellants' contentions, as well as the findings and
conclusions of the Examiner, the pivotal issue before us is whether
Appellants' declaration under 37 C.F.R. § 1.132 is sufficient to remove Vook
and Vook 2 as prior art?

ANALYSIS
Appellants' Declaration under 37 C.F.R. § 1.132
Is Not Sufficient to Prove Prior Conception/Derivation
Appellants’ declaration states in paragraphs 3, 5, and 6 respectively:
3. We believe ourselves to be the original, first and only
inventors of the subject matter which is claimed and for which
the above-referenced patent is sought including the originally
filed claims and the amendments filed on 11/9/2006 and
4/13/2009.

5. We unequivocally conceived and jointly invented the
relevant subject matter of the Cited Reference (beamforming of
pilot symbols in OFDMA) that forms the basis of rejection.

6. The conception and invention of the subject matter in
statement 5 above and of the above-referenced patent
application occurred without inventive contribution by any
other individuals or entities.

(Declaration Under § 1.132 filed on April 27, 2009).
Appeal 2011-004516
Application 11/150,779

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The Examiner refused to accept Appellants’ § 1.132 declaration. Ans.
21. After reviewing Appellants' Declaration, as well as the relevant
precedent and authorities, we find that Appellants' Declaration is insufficient
to remove Vook and Vook 2 as prior art for at least the following reason:
While Appellants’ Declaration states that they “unequivocally
conceived and jointly invented the relevant subject matter” (Dec. 5), we find
that such a statement amounts essentially to mere pleading, unsupported by
proof or showing of facts. Facts, not conclusions, must be alleged in the
declaration. See In re Borkowski, 505 F2.d 713, 718 (CCPA 1974). Mere
statements, standing alone, about what was conceived do not constitute a
showing of facts. See In re Harry, 333 F.2d 920, 922 (CCPA
1964)(Discussing diligence, and finding that “[what the appellant submitted]
is not proof or ‘showing of facts’ but mere pleading.”) The declaration must
include objective evidence of conception . . . . See id. Here, Appellants
statements stand alone, as no objective proof or a showing of facts formed
part of the declaration, e.g., no exhibits, drawings, data books, emails,
records, correspondences, etc.
Here, Appellants bear the burden of establishing facts necessary to prove
earlier conception and the showing of facts must be such, in character and
weight, as to establish conception/derivation. In re Application of Facius,
408 F.2d 1396, 1404 (CCPA 1969). Furthermore, “derivation” is shown by
establishing a prior conception of the claimed subject matter and a
communication of that conception to the other alleged inventive entity that is
sufficient to enable the other entity to construct and successfully operate the
claimed invention. Brand v. Miller, 48 7 F.3d 862, 869 (Fed. Cir. 2007).
Appeal 2011-004516
Application 11/150,779

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No such facts showing conception and/or derivation were presented in this
case. Therefore, Appellants’ Declaration is insufficient to exclude the Vook
and Vook 2 references as a qualifying prior art reference under 35 U.S.C.
§ 103.
In addition, Appellants offer no arguments regarding the merits of the
prior art rejections of claims 1-32 based at least partially on Vook and
Vook 2 and instead rely solely on the Declaration for removing Vook and
Vook 2 from the rejections. See App. Br. 8-10; Reply Br. 4-6. Any
arguments not made in the Appeal Brief or in a Reply Brief are waived. See
37 C.F.R. § 41.37(c)(1)(vii).
As explained above, the Declaration is insufficient to remove
Vook/Vook 2 from the rejections. Because Appellants do not address
Vook/Vook 2 in the obviousness rejections, Appellants have waived any
argument of error and we summarily sustain the rejection of claims 1-32.

CONCLUSIONS
For the aforementioned reasons, Appellants have not disqualified the
Vook and Vook 2 references under 35 U.S.C. § 103. Additionally,
Appellants have not shown error in the Examiner’s initial showing of
obviousness.

DECISION
We affirm the Examiner’s rejections of claims 1-32 as set forth above.
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).
Appeal 2011-004516
Application 11/150,779

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AFFIRMED

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