Ex Parte Moulsley et al

Patent Trial and Appeal Board

Mar 13, 2013

10128636 (P.T.A.B. Mar. 13, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TIMOTHY J. MOULSLEY, MATTHEW P.J. BAKER,
and BERNARD HUNT1
____________

Appeal 2010-009034
Application 10/128,636
Technology Center 2400
____________

Before JOSIAH C. COCKS, JENNIFER S. BISK, and JAMES B. ARPIN,
Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-14. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

1 Koninklijke Philips Electronics N.V. and Sharp Corporation are the real
parties in interest.
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INVENTION
Appellants’ invention relates to radio communication systems and
further relates to primary and secondary stations for use in such systems and
to methods of operating such systems. See generally Spec. 1:5-10. Claim 1
is illustrative and is reproduced below with disputed limitations emphasized:
1. A radio communication system having a communication channel
comprising:
a primary station having a plurality of antennas;
a secondary station having at least one antenna; and
a plurality of paths between the primary station and the
secondary station,
the primary station further comprising means for transmitting
substantially simultaneously a plurality of data packets to the
secondary station, each packet being transmitted via a different
subset of the plurality of paths, and
the secondary station further comprising means for receiving
the plurality of data packets, for determining whether each packet
is received correctly, for signaling this determination to the
primary station for each of the plurality of packets, and for
signaling to the primary station the number of simultaneous data
streams that the secondary station is capable of receiving or
processing independent of the transmission medium.

The Examiner relies on the following as evidence of unpatentability:
Tiedemann
Wallace
Wallace 146
Kogiantis
US 2002/0154610 A1
US 6,473,467 B1
US 2002/0193146 A1
US 6,751,480 B2
Oct. 24, 2002
Oct. 29, 2002
Dec. 19, 2002
June 15, 2004
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THE REJECTIONS
1. The Examiner rejected claims 1-7, 9, and 11-14 under 35 U.S.C.
§ 103(a) as unpatentable over Wallace, Kogiantis, and Wallace 146.
Ans. 3-7.2
2. The Examiner rejected claims 8 and 10 under 35 U.S.C. § 103(a) as
unpatentable over Wallace, Kogiantis, Wallace 146, and Tiedemann.
Id. at 8-9.

OBVIOUSNESS REJECTION OVER WALLACE,
KOGIANTIS, AND WALLACE 146
Regarding representative claim 1, the Examiner finds that Wallace
discloses all of the limitations of claim 1, except for means (1) “for
determining whether each packet is received correctly,” (2) “for signaling
this determination to the primary station for each of the plurality of packets,”
and (3) “for signaling to the primary station the number of simultaneous data
streams that the secondary station is capable of receiving or processing
independent of the transmission medium.” Ans. 3-4. Nevertheless, the
Examiner finds that the first and second missing limitations are disclosed by
Kogiantis (id. at 5)3 and that the third missing limitation is disclosed by
Wallace 146 (id. at 4-5). Moreover, the Examiner concludes that a person of
ordinary skill in the relevant art would have reason to combine the teachings

2 Throughout this opinion, we refer to (1) the Appeal Brief (App. Br.) filed
January 28, 2010; (2) the Examiner’s Answer (Ans.) mailed March 29,
2010; and (3) the Reply Brief (Reply Br.) filed June 1, 2010.
3 Appellants argue that Wallace 146 does not disclose or suggest that a
mobile user comprises means for receiving the plurality of data packets or
for determining and signaling whether each packet is correctly received.
Reply Br. 4. We note that the Examiner relies on Wallace and Kogiantis,
not Wallace 146, to disclose these limitations. Ans. 3-4.
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of these references to achieve the communications system, as recited in
claim 1. Id. at 5.
Appellants argue that Wallace 146 fails to disclose means “for
signaling to the primary station the number of simultaneous data streams that
the secondary station is capable of receiving or processing independent of
the transmission medium.” App. Br. 8-9. Further, Appellants contend that
Examiner fails to identify a reason for a person of ordinary skill in the
relevant art to combine the teachings of Wallace, Kogiantis, and Wallace
146. Id. at 10.
ISSUES
(1) Under § 103, has the Examiner erred in rejecting claim 1 by
finding that Wallace, Kogiantis, and Wallace 146, collectively, teach or
suggest that “the secondary station further comprising means . . . for
signaling to the primary station the number of simultaneous data streams that
the secondary station is capable of receiving or processing independent of
the transmission medium”?
(2) Is the Examiner’s reason to combine the teachings of these
references supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion?
ANALYSIS
Based on the record before us, we discern no error in the Examiner’s
rejection of representative claim 1 which calls for, in pertinent part, that “the
secondary station further comprising means . . . for signaling to the primary
station the number of simultaneous data streams that the secondary station is
capable of receiving or processing independent of the transmission
medium.” The Examiner finds that “Wallace 146 discloses determining an
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appropriate transmission scenario based upon the antenna diversity station of
the base station and mobile station, signaling the number of respective
receive antennas (corresponding to the number of streams capable of being
received or processed at the same time) at each station.” Ans. 5 (citing
Wallace 146, ¶ [0125]) (emphasis added); Final Rej. 3-4. Moreover, the
Examiner finds that Wallace 146 discloses that the secondary station signals
the number of simultaneous data streams that the secondary station is
capable of receiving or processing. Ans. 5; Final Rej. 4.
Referring to Figures 13 and 14, Wallace 146 describes that base
station 900 performs various methods to determine an appropriate
transmission scenario. Wallace 146, ¶ [0125]. In particular, Wallace 146
states that
according to one embodiment, the method extracts antenna
diversity status information from the other participant[, e.g., a
mobile user,] to a communication. . . . For a given mobile user,
the antenna diversity status may include the number of transmit
antennas, the number of receive antennas, the reception
diversity configuration, as well as other parameters of the
mobile user.
Id. (emphases added); see also Wallace 146, ¶¶ [0046]-[0047] (describing
the use of multiple antennas at the receiver and the transmitter). In light of
the above-noted teachings of Wallace 146, the Examiner concludes that the
mobile user “signals” to the base station the number of antennas that the
mobile user possesses, “the reception diversity configuration,4 as well as
other parameters,” in response to an extracting query. Advisory Action 2
(citing Wallace 146, ¶ [0125]) (footnote added); see also Ans. 10-11.

4 See Wallace 146, ¶¶ [0074]-[0076] (describing methods of reception
diversity).
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Referring to their Figure 4, Appellants describe transmitting a
plurality of data packets from a primary station to a secondary station and
determining and signaling whether those packets were correctly received, as
recited in claim 1. Spec. 8:12-22. The described system is characterized as
a “Multi-Input Multi-Output” or “MIMO” system. Id. at 1:30-2:2.
Appellants state that
A simple embodiment of a MIMO packet data
transmission scheme operating in accordance with the present
invention is shown in Figure 4. In this embodiment each data
sub-stream is allocated a separate [Automatic Repeat request
(ARQ)] channel, and the BS 100 and MS 110 each have two
antennas 108,118. In the example shown, the BS 100 transmits
two packets 302, P1 and P2, as part of respective downlink data
sub-streams DL1 and DL2 transmitted from respective antennas
108. The packets 302 are transmitted substantially
simultaneously.
Id. at 8:3-9 (emphasis added). Further, Appellants explain that
Using MIMO, in a scenario such as that shown in Figure
1 or 6, each MS 110 receiving any data with a given
channelisation [sic] code must, in general, have sufficient
antennas 118 or other means to separate each of the different
data sub-streams, perhaps discarding any unwanted ones. In
known MIMO systems this requires at least M antennas, where
M is the number of independent data sub-streams being
transmitted with that channelisation [sic] code.
Id. at 10:7-12 (emphases added); see also App. Br. 4 (citing Spec. 10:18-21
(“It is also important that the number of antennas, or ability to process
multiple data streams, at each MS 110 is known to the BS 100.” (emphasis
added))). Thus, the Examiner concludes that signalling the number of
antennas at the secondary station, e.g., a mobile user, teaches “signaling . . .
the number of simultaneous data streams that the secondary station is
capable of receiving.” Advisory Action 2; Ans. 11. We agree.
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Appellants argue that Wallace 146 discloses a method for
“negotiating” a transmission scenario between the base station and a mobile
user. App. Br. 8; see also Reply Br. 6. In particular, Appellants argue that,
in Wallace 146, the base station “queries” the mobile user for the mobile
user’s antenna diversity status. App. Br. 8. Because Wallace 146 discloses
“querying” the mobile user to “extract” antenna diversity (see Wallace 146,
¶ [0125]), Appellants argue that their claim language is different from the
disclosure of Wallace 146 and that Wallace 146 does not disclose
“signaling,” as recited in claim 1. App. Br. 9. We disagree.
Wallace 146 clearly teaches that the mobile user may inform the base
station of the number of receive antennas. Wallace 146, ¶ [0125]. The
Examiner acknowledges that Wallace 146 teaches “querying” the mobile
user to “extract” the antenna diversity status information. Advisory Action
2. Nevertheless, we do not construe Appellants’ claim 1 as proscribing such
querying. In particular, we note that the preamble to claim 1 includes the
transitional term “comprising.” App. Br. 15. “‘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.” Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir.
1997). Thus, the language of claim 1 is broad enough to encompass the type
of querying disclosed in Wallace 146.
Appellants further argue that “the number of simultaneous data
streams that a station can receive or process, as recited in claim 1, is not
dependent upon the number of receive antennas.” App. Br. 9. In particular,
Appellants argue that other software or hardware may be adapted to process
diversity signals over fewer than all of the receive antennas and that “the
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number of receive antennas does not necessarily indicate that all the receive
antennas are available for receiving data streams.” Id. (emphasis added);
Reply Br. 4-5. It is well settled that “[d]uring patent examination the
pending claims must be interpreted as broadly as their terms reasonably
allow.” In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). Thus, in construing
a limitation, we apply the broadest reasonable meaning of the words in their
ordinary usage, as those words would be understood by one of ordinary skill
in the art, taking into account any definitions supplied by Appellants’
Specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Referring to the portions of the Specification quoted above, we find that the
number of receive antennas is one measure of the number of simultaneous
data streams that a secondary station is capable of receiving. See Spec. 8:3-
9; 10:7-12. Moreover, we construe the language of claim 1 broadly enough
to encompass this measure. If Appellants intended to proscribe this
measure, they did not so limit the language of claim 1. “It is the
[Appellants’] burden to precisely define the invention, not the [U.S. Patent
and Trademark Office’s].” Morris, 127 F.3d at 1056.
In addition, to the extent that the number of antennas alone is not
sufficient to describe the secondary stations capability to receive
simultaneous data streams, the Examiner finds that Wallace 146 describes
providing “reception diversity information, as well as other parameters of
the mobile user,” which sufficiently discloses other hardware and software
adaptations. Ans. 10-11 (quoting Wallace 146, ¶ [0125]). Therefore, we are
not persuaded that Wallace 146 does not disclose the disputed limitation of
claim 1.
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Finally, the Examiner concludes that “[a]ccounting for both the state
of the communication channels as well as the capabilities of the stations
would enable optimal configuration of the communication system.” Ans. 5;
Final Rej. 4. In response, Appellants argue that the Examiner fails to
provide a reason for combining Wallace, Kogiantis, and Wallace 146 to
achieve Appellants’ invention, as recited in claim 1, or that the Wallace 146
teaches away from Appellants’ claimed invention. In particular, Appellants
argue that a “universal” goal of wireless transmission is to minimize and
reduce the amount of information transmitted and that the addition of
extraneous information, such as “querying” information, to the signal
transmission in Wallace 146 is contrary to this goal. App. Br. 10; Reply Br.
6. The Examiner contends that this additional information is transmitted in
response to the query from the mobile user to the base station and that this
information may improve wireless communication efficiency in other ways.
Ans. 11-12. Regardless whether this is correct, it is not relevant to the claim
at issue in this rejection. The general goals described by Appellants are not
recited in claim 1, and, thus, Appellants’ arguments are not commensurate
with the scope of the claim language. See In re Tiffin, 448 F.2d 291 (CCPA
1971) (per curiam) (Objective evidence of non-obviousness must be
commensurate with the scope of the claims.). Therefore, we are not
persuaded by these arguments that the Examiner’s reason to combine the
teachings of these references lacks some rational underpinning to justify the
obviousness conclusion.
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of: independent claim 1; independent claims 2, 9, and 14,
with respect to which Appellants raise substantially the same arguments
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raised with respect to claim 1; and dependent claims 3-7 and 11-13, which
are not argued separately with particularity. Therefore, we sustain the
rejection of claim 1-7, 9, and 11-14.

OBVIOUSNESS REJECTION OVER WALLACE,
KOGIANTIS, WALLACE 146, AND TIEDEMANN
As noted above, the Examiner finds that Wallace, Kogiantis, and
Wallace 146 disclose all of the limitations of independent claims 1 and 2,
from which claims 8 and 10 depend, respectively. Ans. 3-6. Nevertheless,
the Examiner acknowledges that these references do not disclose the
limitations added by dependent claims 8 and 10. Id. at 8-9. The Examiner
finds, however, that Tiedemann discloses the additional limitations of claims
8 and 10. Id.
Although Appellants’ arguments regarding independent claim 1 are
relatively well-developed, Appellants’ arguments for these dependent claims
are not. Initially, Appellants adopted the unpersuasive arguments from
independent claim 1. With respect to the additional elements of the
dependent claims, Appellants simply state that the additional limitations are
not present in Tiedemann and assert non-obviousness over the combined
teachings of the prior art. App. Br. 13. We interpret “Rule 41.37 to require
more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art.” In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011). Nevertheless, in view of Tiedemann’s disclosure (Final Rej. 7-8
(citing Tiedemann, ¶ [0040]; Figs. 5A-B)) and to the extent that Appellants
present arguments alleging deficiencies in Tiedemann’s disclosure with
respect to claims 8 and 10, we are not persuaded by Appellants’ arguments.
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Therefore, for the foregoing reasons, we sustain the rejection of claims 8
and 10.

CONCLUSION
The Examiner did not err in rejecting claims 1-14 under § 103(a).

DECISION
The Examiner’s decision rejecting claims 1-14 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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