Ex Parte Mujtaba et al

Patent Trial and Appeal Board

Jul 21, 2014

11572450 (P.T.A.B. Jul. 21, 2014)

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.
11/572,450 01/30/2007 Syed Aon Mujtaba Mujtaba 18-3 8574
47386 7590 07/21/2014
RYAN, MASON & LEWIS, LLP
1175 POST ROAD EAST
2ND FLOOR
WESTPORT, CT 06880
EXAMINER
MASUR, PAUL H
ART UNIT PAPER NUMBER
2464
MAIL DATE DELIVERY MODE
07/21/2014 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 SYED AON MUJTABA and XIAOWEN WANG
____________

Appeal 2012-000697
Application 11/572,450
Technology Center 2400
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME
Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a non-final rejection of
claims 1-11, 13, 14, 16-18, 20, 21, 23, 24, and 26. Claims 15, 19, and 25 were
cancelled. The Examiner indicates that claims 12 and 22 stand objected to as being
dependent upon a rejected base claim, but would be allowable if rewritten in
independent form. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm-in part.
STATEMENT OF THE CASE
Appellants’ claimed invention “relates generally to multiple antenna
wireless communication systems, and more particularly, to phase and frequency
offset estimation techniques for a multiple antenna communication system.”
(Spec. 1:10-12). Independent claim 1, reproduced below, is representative of the
subject matter on appeal:
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1. A method for transmitting data in a multiple antenna communication
system having N transmit antennas, said method comprising the step of:

generating a number of pilot tones for each of said N transmit
antennas, wherein said pilot tones for each of said N transmit antennas are
pseudo-orthogonal with each other in a frequency domain and in a space
domain; and

transmitting said data on each of said N transmit antennas.

(Contested limitations emphasized).

REJECTIONS
A. Claims 1, 2, 3, 6, 9, 10, 13, 14, 16, 17, 18, 20, 23, 24, and 26 stand
rejected under 35 U.S.C. § 102(e) as being anticipated by Walton (US
2004/0136349 A1 (published July 15, 2004)).

B. Claims 4, 5, 7, 8, 11, and 21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combined teachings and suggestions of Walton and
Howard (US 2010/0074301 A1 (published March 25, 2010)).

ANALYSIS
Anticipation Rejection A - § 102(e)
Independent Claim 1
We have reviewed the Examiner’s anticipation rejection in response to
Appellants’ contentions the Examiner erred. (See App. Br. 3-6). Regarding only
claim 1 and associated dependent claims, we concur with Appellants’ contention
the Examiner erred in finding Walton discloses “wherein said pilot tones for each
of said N transmit antennas are pseudo-orthogonal with each other in a frequency
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domain and in a space domain” (emphasis added), as recited in independent claim
1.
As an initial matter of claim construction regarding claim 1, we conclude the
generated “pilot tones” are not the same as the separately recited “data” that is
intended to be transmitted in the preamble and positively recited as actually being
transmitted in the body of the claim. We further look to Appellants’ Specification
for context: See Spec. 2, l. 11 “The pilots are a determined signal”; see also Spec.
5, l. 6 (“The encoded and interleaved bits are then mapped onto sub carriers (tones)
at stage 130 and form a frequency domain OFDM signal.”). Thus, regarding claim
1, we broadly but reasonably interpret the recited pilot tones as covering a plurality
of transmitted radio frequency signals or subcarriers.
We respect to the generated pilot tones (i.e., generated signals or subcarriers)
as recited in claim 1, we concur with the Appellants’ contentions at least regarding
claim 1:
Thus, Walton et. al do not disclose or suggest wherein said
pilot tones for each of said N transmit antennas are pseudo-
orthogonal with each other in a frequency domain and in a space
domain, as variously required by each independent claim, and do not
disclose or suggest generating a number of pilot tones for each of said
N transmit antennas that are also orthogonal in the time domain . . . .
(App. Br. 5; emphasis and underline added).

We observe Walton expressly describes generating orthogonal tones instead
of “pilot tones for each of said N transmit antennas are pseudo-orthogonal with
each other in a frequency domain and in a space domain,” as required by claim 1:
e.g., “OFDM effectively partitions the overall system bandwidth into multiple (NF)
orthogonal subbands, which are also commonly referred to as tones, bins, carriers,
and frequency channels.” (Walton ¶26).
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Thus, the Examiner erred by failing to show how each of Walton’s “(NF)
orthogonal subbands” (id.) are pseudo-orthogonal with each other in a frequency
domain and in a space domain as required by independent claim 1. (See Ans. 11).
Accordingly, we will not sustain the Examiner’s § 102 rejection of
independent claim 1, and the rejection of the associated dependent claims 2, 3, 6, 9,
and 10, also rejected under § 102, which stand therewith.

Independent Claim 13
13. A transmitter in a multiple antenna communication system, comprising:

N transmit antennas for transmitting data, wherein each of said
antennas employ a number of pilot tones that are pseudo-orthogonal in a
frequency domain and in a space domain relative to other.

(Contested limitations emphasized).

As an initial matter of claim interpretation, we conclude apparatus claim 13
recites a statement of intended use for the recited N transmit antennas: “N transmit
antennas for transmitting data, wherein . . . .” (Emphasis added).
Our reviewing court guides: “[a]n intended use or purpose usually will not
limit the scope of the claim because such statements usually do no more than
define a context in which the invention operates.” Boehringer Ingelheim
Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003).
Although ''[s]uch statements often . . . appear in the claim's preamble . . . ,'' In re
Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a statement of intended use or purpose
can appear elsewhere in a claim. Id. Following this guidance, we conclude the
statement of intended use recited in claim 13 (“for transmitting data wherein . . . .”)
does not limit the scope of the claim.
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We additionally give no patentable weight to the informational content of
the recited “data” that is intended to be transmitted because the “data” is not
positively recited as actually being used to change or affect any machine or
computer function. Such data is non-functional descriptive material. See Ex parte
Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential).
Moreover, the patentability of an apparatus claim “depends on the claimed
structure, not on the use or purpose of that structure.” Catalina Marketing Int’l.,
Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). “It is well
settled that the recitation of a new intended use for an old product does not make a
claim to that old product patentable.” In re Schreiber, 128 F.3d 1473, 1477 (Fed.
Cir. 1997) (citations omitted). See also Superior Industries, Inc. v. Masaba, Inc.,
553 Fed.Appx 986, 991 (Fed. Cir. 2014) (Rader, J., concurring) (stating: “[A]
system claim generally covers what the system is, not what the system does.”
Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir.
1990); see also Roberts v. Ryer, 91 U.S. 150, 157 [] (1875) (‘The inventor of a
machine is entitled to the benefit of all the uses to which it can be put, no matter
whether he had conceived the idea of the use or not.’). Thus, it is usually improper
to construe non-functional claim terms in system claims in a way that makes
infringement or validity turn on their function. Paragon Solutions, LLC v. Timex
Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009).”).
Here, we find the “wherein” clause of claim 13 is directed to a functional
limitation that does not further limit the structure of the claimed “transmitter” or
“N transmit antennas.” 1

1 See MPEP §2111.04 regarding “wherein” clauses:
Claim scope is not limited by claim language that suggests or makes optional but
does not require steps to be performed, or by claim language that does not limit a
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We find Walton fully discloses the structure of the claimed apparatus (“A
transmitter in a multiple antenna communication system, comprising: N transmit
antennas . . . .”). See Walton’s MIMO transmitter and antenna components
depicted in Figs. 4-5. See also Walton ¶¶ 26-27. Therefore, we are not persuaded
of error regarding the Examiner’s finding the claimed structure is anticipated by
Walton’s corresponding structure. Accordingly, we sustain the Examiner’s §102
rejection of independent claim 13, and also associated dependent claims 14 and 16
(also rejected under §102) which fall therewith.

Independent Claim 17
17. A method for receiving data on at least one receive antenna
transmitted by a transmitter having N transmit antennas in a multiple
antenna communication system, said method comprising the step of:

receiving said data on each of said N transmit antennas, wherein said data
includes a number of pilot tones for each of said N transmit antennas,
wherein said pilot tones for each of said N transmit antennas are pseudo-
orthogonal with each other in a frequency domain and in a space domain.
(Contested limitations emphasized).

claim to a particular structure. However, examples of claim language, although not
exhaustive, that may raise a question as to the limiting effect of the language in a
claim are:
(A) “adapted to” or “adapted for” clauses;
(B) “wherein” clauses; and
(C) “whereby” clauses.
(MPEP §2111.04 Eighth Edition, Rev. 9, Aug. 2012).

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Regarding claim 17, we give no patentable weight to the informational
content of the received “data” that “includes a number of pilot tones . . . .” See
Nehls, 88 USPQ2d at 1887-90 (BPAI 2008) (precedential). Such data is non-
functional descriptive material.
In particular, the plain language of claim 17 specifically indicates the “pilot
tones” are included in the informational content of the received data. We find
nothing in claim 17 that positively recites the informational content (i.e., pilot
tones) of the received “data” changes or affects the manner in which the single step
of “receiving” is performed. Because we find Walton discloses in Figures 4-6 “A
method for receiving data on at least one receive antenna transmitted by a
transmitter having N transmit antennas in a multiple antenna communication
system” and because we accord no patentable weight to the informational content
of the received “data” which is recited as including pilot tones, on this record, we
are not persuaded the Examiner erred. See also Walton ¶¶ 26-27.
Therefore, we sustain the Examiner’s §102 rejection of independent claim
17, and also associated dependent claims 18 and 20 (also rejected under §102)
which fall therewith.
Independent Claim 23
Similar to claim 13 (directed to a transmitter apparatus), claim 23 is directed
to a receiver apparatus:
23. A receiver for receiving data in a multiple antenna communication
system having at least one transmitter having N transmit antennas,
comprising:

at least one receive antenna for receiving said data on each of said N
transmit antennas, wherein said data includes a number of pilot tones for
each of said N transmit antennas, wherein said pilot tones for each of said N
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transmit antennas are pseudo-orthogonal with each other in a frequency
domain and in a space domain.
(Contested limitations emphasized).

We essentially restate our analysis above regarding the apparatus of claim 13
and apply it to the receiver and multiple antenna communication system apparatus
of claim 23. We find Walton discloses in Figures 4-6 all the recited structural
elements of the claim 23 (i.e., receiver, transmitter, antennas). See also Walton ¶¶
26-27.
Following the guidance of our reviewing court, we give no patentable
weight to the recited statements of intended use, i.e., “A receiver for receiving data
. . . [and] at least one receive antenna for receiving said data . . . .” (Claim 23,
emphasis added). See Boehringer Ingelheim Vetmedica, 320 F.3d at 1345 (Fed.
Cir. 2003); Stencel, 828 F.2d at 754 (Fed. Cir. 1987).
Further regarding claim 23, we accord no patentable weight to the
informational content of the recited “data” that is intended to be received because
the “data [that] includes a number of pilot tones” is not positively recited as
actually being used to change or affect any machine or computer function. See
Nehls, 88 USPQ2d at 1887-90 (BPAI 2008) (precedential).
Moreover, the nested “wherein” clause limitations of claim 23, which are
directed to the “pilot tones” (i.e., a type of data as claimed), do not further limit the
structure of the receiver apparatus and are not given patentable weight. See n.1
supra.
As previously discussed, the patentability of an apparatus claim “depends on
the claimed structure, not on the use or purpose of that structure.” Catalina
Marketing Int’l., Inc., 289 F.3d at 809 (Fed. Cir. 2002). For these reasons, we are
not persuaded the Examiner erred. Therefore, we sustain the Examiner’s §102
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rejection of independent claim 23, and the rejection of the associated dependent
claims 24, and 26 (also rejected under § 102), which fall therewith.

Rejection B under § 103
Each of dependent claims 4, 5, 7, 8, and 11 stand rejected under §103 and
depend directly or indirectly from claim 1. We have reversed the §102 rejection of
claim 1 above. Regarding the § 103 rejection B of dependent claims 4, 5, 7, 8, and
11, the Examiner has not shown the secondary Howard reference overcomes the
deficiencies of Walton, as discussed above regarding claim 1. Therefore, we also
reverse the Examiner’s §103 rejection of dependent claims 4, 5, 7, 8, and 11.

Dependent claim 21 rejected under § 103
To the extent our reviewing court may give patentable weight to the recited
“data [that] includes a number of pilot tones” (base claim 17 from which claim 21
indirectly depends), we consider the contested limitation of claim 21:
Claim 21 recites: “The method of claim 20, wherein said orthogonal pilot
tones have a polarization that is alternated.”
In the statement of rejection for claim 21(Ans. 22), the Examiner finds:
[Howard, paragraph 0055, "The weights shown in equation (11)
correspond to a progressive phase shift across the NF subbands of each
transmit antenna, with the phase shift changing at different rates for
the NT transmit antennas", Equation 11 pertains to the weights of a
steering matrix, where these weights influence a progressive phase
shift (or alternating polarization) for each row of the steering matrix
(see paragraph 0054). Each row of the steering matrix is associated
with a transmit antenna. Therefore, the polarization of the
transmission NF subbands is alternated.].
(Ans. 22).

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Appellants contend: Howard teaches a progressive phase shift across the NF
subbands of each transmit antenna, with the phase shift changing at different rates
for the NT transmit antennas; Howard does not teach orthogonal pilot tones that
have a polarization that is alternated.” (App. Br. 6).
In the “Response to Arguments” section of the Answer, the Examiner
broadly reads the claimed “polarization that is alternated” on Howard’s teaching of
alternating the phase of a transmission signal. (Ans. 26; see also Howard, ¶55).
In the Reply Brief (8), Appellants refer to their Specification (8-9) and then
assert: “Thus, Scherzer et al., Wallace et al., and Kingston et al., alone or in any
combination, do not disclose or suggest wherein said orthogonal pilot tones have a
polarization that is alternated . . . .” (Reply Br. 9).
We note the Scherzer, Wallace, and Kingston references were not relied on
by the Examiner in the rejection of claim 21, which is over the combination of
Walton and Howard. (Ans. 22). We also decline Appellants’ invitation to read
limitations from the Specification into the claim. (Reply Br. 8).
On this record, we are not persuaded the Examiner’s interpretation of the
contested “polarization that is alternated” (claim 21) is overly broad, or
unreasonable. Therefore, by the preponderance of the evidence, we are not
persuaded the Examiner erred in finding that Howard, in combination with Walton,
would have at least suggested the contested limitation of orthogonal pilot tones that
have “a polarization that is alternated.” (Claim 21). Accordingly, we sustain the
Examiner’s rejection of dependent claim 21 under §103 over the combined
teachings and suggestions of Walton and Howard. (See Ans. 12, 26).

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DECISION
We reverse the Examiner’s decision rejecting claims 1, 2, 3, 6, 9, and 10
under 35 U.S.C. § 102(e).
We affirm the Examiner’s decision rejecting claims 13, 14, 16, 17, 18, 20,
23, 24, and 26 under 35 U.S.C. § 102(e).
We reverse the Examiner’s decision rejecting claims 4, 5, 7, 8, and 11 under
35 U.S.C. § 103(a).
We affirm the Examiner’s decision rejecting claim 21 under
35 U.S.C. § 103(a).
No time for taking any action connected with this appeal may be extended
under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f).

AFFIRMED-IN-PART

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