Ex Parte Modonesi et al

Patent Trial and Appeal Board

Sep 9, 2013

10991935 (P.T.A.B. Sep. 9, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/991,935 11/18/2004 Isabella Modonesi Modonesi 2-8-4
(AGRE/1252
8167
46900 7590 09/09/2013
MENDELSOHN, DRUCKER, & DUNLEAVY, P.C.
1500 JOHN F. KENNEDY BLVD., SUITE 312
PHILADELPHIA, PA 19102
EXAMINER
TRAN, PAUL P
ART UNIT PAPER NUMBER
2647
MAIL DATE DELIVERY MODE
09/09/2013 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 ISABELLA MODONESI, TIM SCHENK, and XIA-JIAO TAO
____________

Appeal 2011-003992
Application 10/991,935
Technology Center 2600
____________

Before DENISE M. POTHIER, LYNNE E. PETTIGREW, and
MATTHEW R. CLEMENTS, Administrative Patent Judges.

CLEMENTS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s non-
final rejection of claims 22-34 and 41-48. Claims 1-21 and 35-40 are
cancelled. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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Application 10/991,935

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STATEMENT OF THE CASE
Appellants’ invention generally relates to a wireless antenna
arrangement for a MIMO (Multiple input, multiple output) wireless network
in which two or more dual polarization antennas are coupled together
through a controller that selects a prescribed combination of antenna outputs
in response to determining the existence of a particular channel condition.
See generally Abstract. Claim 22 is illustrative (disputed limitations in
italics):
22. An apparatus comprising a wireless antenna arrangement,
the wireless antenna arrangement comprising:
a first antenna having a first antenna element and a second
antenna element orthogonal to the first antenna element;
a second antenna having a third antenna element and a fourth
antenna element orthogonal to the third antenna element;
a first set of two or more switches, each switch responsive to a
first set of one or more control signals to selectively connect at least
one of the antenna elements to a first port of the wireless antenna
arrangement; and
a second set of two or more switches, each switch responsive to
a second set of one or more control signals to selectively connect at
least one of the antenna elements to a second port of the wireless
antenna arrangement.

THE REJECTIONS
1. Claims 22, 27-34, and 41-44 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Kuffner (US 5,486,836; issued Jan. 23, 1996)
and Yamaura (US 5,809,405; issued Sept. 15, 1998). Ans. 3-9.
2. Claims 23-26 and 45-48 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kuffner, Yamaura, and Hidaka (US 6,653,697 B2; issued
Nov. 25, 2003). Ans. 9-13.
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THE OBVIOUSNESS REJECTION OVER KUFFNER AND YAMAURA
The Examiner finds that Kuffner teaches every recited element of
claim 22 except for “a first set of two or more switches, each switch
responsive to a first set of one or more control signals to selectively connect
at least one of the antenna elements to a first port of the wireless antenna
arrangement” and “a second set of two or more switches, each switch
responsive to a second set of one or more control signals to selectively
connect at least one of the antenna elements to a second port of the wireless
antenna arrangement,” but cites Yamaura as teaching this feature in
concluding that the claim would have been obvious. Ans. 3-5.
Appellants argue that (1) Yamaura’s switches [221 and 223] / [222
and 224] are not the recited “[first]/[second] set of two or more switches”
because they connect the antenna element to different ports, not to the
recited “a [first] / [second] port;” (2) combining Kuffner and Yamaura
would have rendered two of Kuffner’s antenna elements inoperable because
switches [221 and 223] / [222 and 224] connect to one (i.e., the same)
antenna, not to distinct antenna elements, and therefore two of Kuffner’s
antenna elements would not be connected; and (3) a person of ordinary skill
in the art would not have had a reason to combine a reference with
polarization diversity (i.e., Kuffner) with a reference that was silent as to
polarization diversity (i.e., Yamaura). App. Br. 7-9; Reply Br. 3-5.

ISSUES
(1) Under § 103, has the Examiner erred in rejecting claim 22 by
finding that Kuffner and Yamaura collectively would have taught or
suggested the recited first and second sets of switches?
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(2) Would combining Kuffner and Yamaura render two of Kuffner’s
antenna elements inoperable?
(3) Is the Examiner’s proposed combination supported by a reason
with a rational underpinning?

ANALYSIS
“first set of two or more switches” and
“second set of two or more switches”
We are not persuaded by Appellants’ argument that Yamaura does not
teach the recited “first set of two or more switches” and “second set of two
or more switches.” App. Br. 8; Reply Br. 3. The Examiner finds this
limitation taught by Yamaura’s switch matrix 220. Ans. 4-5 (citing
Yamaura Fig. 5, 9:32-10:47). Specifically, the Examiner maps Yamaura’s
switches 221 and 223 to the recited “first set” and switches 222 and 224 to
the recited “second set.” Appellants argue that Yamaura’s switches 221 and
223 do not selectively connect antenna 210 to “a first port” because each
switch connects antenna 210 to a different port—i.e., switch 221 connects
antenna 210 to duplexer 130 via a first port while switch 223 connects
antenna 210 to duplexer 135 via a different port. App. Br. 8. Appellants
make the same argument with respect to the recited “second set” and
switches 222 and 224. Id.
We acknowledge that the mapping recited by the Examiner is
problematic for the reason identified by Appellants. However, the rejection
is based upon Yamaura’s switch matrix 220 which, as a whole, teaches the
recited limitations. Ans. 4-5. Specifically, switches 221 and 222 teach the
“first set of two or more switches” and switches 223 and 224 teach the
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“second set of two or more switches.” Grouped in this way, the “first set”
selectively connect to “a first port” and the “second set” selectively connect
to “a second port.” For example, switch 221 selectively connects at least
one of the antenna elements (i.e., of antenna 210) to a first port (i.e., to
duplexer 130) while switch 222 selectively connects at least one of the
antenna elements (i.e., of antenna 215) to the same port (i.e., to duplexer
130). Yamaura Fig. 5, col. 9:32-10:47. Likewise, switches 223 and 224
each selectively connect an antenna element to the same port (i.e., to
duplexer 135). Id. Thus, looking at Yamaura as a whole, we are
unpersuaded that the Examiner incorrectly determined that Yamaura and
Kuffner collectively teach the first and second sets of switches as recited.

Operability of the combination
Nor are we persuaded by Appellants’ argument that the combination
of Yamaura with Kuffner would have rendered two of Kuffner’s antenna
elements inoperable. App. Br. 9; Reply Br. 4. The Examiner relies on
Kuffner, not Yamaura, for teaching the recited “antenna element[s].” Ans.
3-4. The Examiner relies on Yamaura only for the first set and second sets
of switches. Ans. 4-5. The Examiner finds that it would have been obvious
to a person of ordinary skill in the art to combine Yamaura’s switches with
Kuffner’s dual patch antennas. Ans. 5. In particular, the Examiner finds
that a person of ordinary skill in the art would have replaced Kuffner’s
switches with Yamaura’s switches “to control the four diversity antenna
elements of Kuffner’s antenna.” Ans. 15 (emphasis added). In other words,
the rejection is based upon using Yamaura’s four switches to selectively
connect Kuffner’s four antenna elements, not Yamaura’s two antennas.
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Therefore, the proposed combination would not, as Appellants contend,
leave two of Kuffner’s antenna elements unusable. Moreover, Appellants
cite nothing in Yamaura that teaches away from connecting switches 221,
222, 223, and 224 to antenna elements, rather than antennas. See In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (If a prior art reference
discloses a different solution to a similar problem, it does not teach away
from the claimed subject matter unless the prior art reference also criticizes,
discredits or otherwise discourages the solution claimed).

Reason to combine
We also are not persuaded by Appellants’ argument that a person of
ordinary skill in the art would not have had a reason to combine a reference
with polarization diversity (i.e., Kuffner) with a reference that was silent as
to polarization diversity (i.e., Yamaura). App. Br. 8-9; Reply Br. 3-4. It is
not enough for Appellants to show that there are differences between two
references. See In re Beattie, 974 F.2d 1309, 1312-13 (Fed. Cir. 1992).
While Appellants may be correct that Yamaura does not teach polarization
diversity, that difference is immaterial to the rejection. The claims do not
require, and the Examiner does not rely upon, Kuffner’s teaching of
polarization diversity. Ans. 3-5. The Examiner relies upon Kuffner for the
recited “first antenna” and “second antenna.” Id. Moreover, the Examiner
finds that a person of ordinary skill in the art would have combined Kuffner
and Yamaura “to improve the sensitivity and power consumption of the
transmitter and receiver despite the reduction in size.” Ans. 5. Thus, the
Examiner has provided “some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” KSR Int’l v.
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Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006)).
To the extent that Appellants are arguing that Kuffner and Yamaura
are non-analogous art, we are not persuaded that Kuffner or Yamaura is not
within the field of the inventor’s endeavor.
Two separate tests define the scope of analogous prior art: (1) whether
the art is from the same field of endeavor, regardless of the problem
addressed and, (2) if the reference is not within the field of the
inventor’s endeavor, whether the reference still is reasonably pertinent
to the particular problem with which the inventor is involved.

In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). Appellants endeavor to
“improve reception of line-of-sight signals in a wireless network.” Spec.
¶ 0001. Kuffner and Yamaura likewise endeavor to improve reception of
wireless signals. See, e.g., Kuffner 2:31-34 (“Generally, the present
invention provides a method, dual rectangular patch antenna system, and
radio for providing isolation and diversity…”); 1:17-19 (“Diversity provides
multiple opportunities to access the microwave signal and improve the
probability of reliable communication.”); see also Yamaura 3:47-52 (“It is
therefore an object of the present invention to provide a transmitter/receiver
apparatus in which radio transmission and reception may be achieved …
without deteriorating the reception sensitivity despite reduction in size and
power consumption.”).
To the extent that Appellants are arguing that Kuffner teaches away
from Yamaura, we also are not persuaded. The fact that the antenna
arrangement in Kuffner may be used to achieve polarization diversity does
not preclude its combination with references that do not teach polarization
diversity, such as Yamaura. Appellants cite nothing in either reference that
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explicitly teaches away from the Examiner’s proposed combination. That is,
nothing in Kuffner teaches against use of its antenna arrangement with a
switching matrix, and nothing in Yamaura teaches against the use of its
switching matrix and duplexers with an antenna arrangement that may be
used to obtain polarization diversity.
We therefore sustain the Examiner’s rejection of (1) independent
claim 22; (2) independent claim 31 which recites commensurate limitations;
and (3) dependent claims 27-30, 32-34, and 41-44, not separately argued
with particularity.

THE OBVIOUSNESS REJECTION OVER
KUFFNER, YAMAURA, AND HIDAKA
Regarding claim 23, the Examiner finds that Kuffner and Yamaura
disclose every recited element of claim 23 except for “a third switch
selectively connectable to the third antenna element” and “a fourth switch
selectively connectable to the fourth antenna element,” but cites Hidaka as
teaching this feature in concluding the claim would have been obvious. Ans.
9-10.
Regarding claim 25, the Examiner finds that Kuffner and Yamaura
disclose every recited element of claim 25 except for “a second switch
selectively connectable to the third antenna element” and “a fourth switch
selectively connectable to the fourth antenna element,” but cites Hidaka as
teaching these features in concluding the claim would have been obvious.
Ans. 11-12.
Appellants argue, with respect to both claim 23 and claim 25, that it
would not have been obvious to combine Hidaka with Kuffner and Yamaura
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because (1) such a combination would render one of the antenna elements of
Kuffner inoperable during normal operation; and (2) a person of ordinary
skill in the art would not have had a reason to combine a reference with
polarization diversity (i.e., Kuffner) with a reference that does not teach
polarization diversity (i.e., Hidaka). App. Br. 10-12; Reply Br. 5-6. With
respect to claim 25, Appellants add that it would not have been obvious to
combine Hidaka’s switches S3, S4, S5, and S6 with Yamaura’s switches
221, 222, 223, and 224 because Hidaka merely teaches the very same
switches taught in Yamaura. App. Br. 13.

ISSUES
(1) Would combining Kuffner and Yamaura render two of Kuffner’s
antenna elements inoperable?
(2) Is the Examiner’s proposed combination supported by a reason
with a rational underpinning?

ANALYSIS
Operability of the combination
We are not persuaded by Appellants’ argument that the combination
of Hidaka with Kuffner would have rendered one of Kuffner’s antenna
elements inoperable. App. Br. 11, 13; Reply Br. 5, 6-7. The Examiner relies
on Kuffner, not Yamaura, for teaching the recited “antenna element[s].”
Ans. 3-4. The Examiner relies on Hidaka only for the “third switch” and
“fourth switch” recited in claim 23, and for the “second switch” and “fourth
switch” recited in claim 25. Ans. 10-12. The Examiner finds that it would
have been obvious to a person of ordinary skill in the art to combine
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Hidaka’s switches with Yamaura’s switches and Kuffner’s dual patch
antennas. Ans. 10, 12. In particular, the Examiner finds that a person of
ordinary skill in the art would have replaced Kuffner’s switches with
Yamaura’s switches “to control the four diversity antenna elements of
Kuffner’s antenna.” Ans. 16 (emphasis added). In other words, the
rejection is based upon using Hidaka’s switches to selectively connect
Kuffner’s four antenna elements, not Hidaka’s test antenna. Therefore, the
proposed combination would not, as Appellants contend, leave one of
Kuffner’s antenna elements unusable. Moreover, Appellants cite nothing in
Hidaka that teaches away from connecting its switches to antenna elements,
rather than antennas. See Fulton, 391 F.3d at 1201 (If a prior art reference
discloses a different solution to a similar problem, it does not teach away
from the claimed subject matter unless the prior art reference also criticizes,
discredits or otherwise discourages the solution claimed).

Reason to combine
We also are not persuaded by Appellants’ argument that a person of
ordinary skill in the art would not have had a reason to combine a reference
with polarization diversity (i.e., Kuffner) with a reference that was silent as
to polarization diversity (i.e., Hidaka). App. Br. 11, 13; Reply Br. 6, 7. It is
not enough for Appellants to show that there are differences between two
references. See Beattie, 974 F.2d at1312-13. While Appellants may be
correct that Hidaka does not teach polarization diversity, that difference is
immaterial to the rejection. The rejection was not based upon a person of
ordinary skill in the art wanting “to increase the number of different antenna
configurations for polarization diversity in Kuffner,” as Appellants contend.
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Reply Br. 6. Instead, the Examiner finds that a person of ordinary skill in
the art would have combined Kuffner, Yamaura, and Hidaka “antenna to
improve the frequency dependence of insertion loss for frequency switching
circuit.” Ans. 12. Moreover, even though Kuffner fails to discuss frequency
dependence of insertion loss, this does not demonstrate that Kuffner cannot
be improved upon by including such a feature as taught by Hidaka. App. Br.
11. Thus, the Examiner has provided “some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” KSR,
550 U.S. at 418 (quoting Kahn, 441 F.3d at 988).
To the extent Appellants are arguing that Kuffner and Hidaka are non-
analogous art, we are not persuaded that Kuffner or Hidaka is not within the
field of the inventor’s endeavor. As stated above, Kuffner is from the same
field of endeavor as Appellants’ (i.e., improving reception of wireless
signals).” Hidaka likewise endeavors to improve reception of wireless
signals. Hidaka 2:4-15, 5:56-59; 5:60-64 (“[T]he high frequency switch
circuit of the present invention, which is used as a high frequency switch
circuit in a portable telephone terminal, ….”)(emphasis added).
To the extent Appellants are arguing that Kuffner teaches away from
Hidaka, we also are not persuaded. The fact that the antenna arrangement in
Kuffner may be used to achieve polarization diversity does not preclude its
combination with references that do not teach polarization diversity, such as
Hidaka. Appellants cite nothing in either reference that explicitly teaches
away from the Examiner’s proposed combination. That is, nothing in
Kuffner teaches against the use of its antenna arrangement with a switch
designed to improve frequency dependence of insertion loss and nothing in
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Hidaka teaches against the use of its switch with an antenna arrangement
that may be used to obtain polarization diversity.
We therefore sustain the rejection of dependent claims 23 and 25, and
of dependent claims 24, 26, and 45-48 not separately argued with
particularity.

CONCLUSION
The Examiner did not err in rejecting claims 22-34 and 41-48 under
§ 103.

DECISION
The Examiner’s decision rejecting claims 22-34 and 41-48 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
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