Ex Parte Olexa et al

Patent Trial and Appeal Board

Aug 10, 2016

13273672 (P.T.A.B. Aug. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/273,672 10/14/2011 George Ronald Olexa
20792 7590 08/10/2016
MYERS BIGEL & SIBLEY, PA
PO BOX 37428
RALEIGH, NC 27627
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
9466-SCT 3479
EXAMINER
NGUYEN, HAI V
ART UNIT PAPER NUMBER
2649
MAILDATE DELIVERY MODE
08/10/2016 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 GEORGE RONALD OLEXA and
RAJENDRA SINGH1
Appeal2015-003522
Application 13/273,672
Technology Center 2600
Before ALLEN R. MacDONALD, JUSTIN BUSCH, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-9. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Technology
The application relates to determining which frequency band to use in
wireless communications. Abstract. Claim 1 is representative and
reproduced below with the key limitation emphasized:
1. A method of operating a base station of a wireless
communications system, the method comprising:
1 According to Appellants, the real party in interest is Telecom Ventures,
LLC. App. Br. 2.
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Appeal2015-003522
Application 13/273,672
determining propagation conditions between the base
station and terminals; and
selectively receiving uplink communications from the
terminals using first and second separately allocated frequency
bands of a government spectrum allocation based on the
determined propagation conditions between the base station and
the terminals.
Rejections
Claims 1-9 stand rejected under 35 U.S.C. § 112, first paragraph for
lack of enablement. Final Act. 4--5.
Claims 1-9 stand rejected under 35 U.S.C. § 102(e) as anticipated by,
or in the alternative under 35 U.S.C. § 103(a) as obvious over, Murakami et
al. (US 7,420,915 B2; Sept. 2, 2008). Final Act. 11.2
ISSUES
1. Did the Examiner err in finding "selectively receiving uplink
communications from the terminals using first and second separately
allocated frequency bands of a government spectrum allocation based on the
determined propagation conditions between the base station and the
terminals," as recited in claim 1 and commensurately recited in claims 2--4,
lacked enablement?
2. Did the Examiner err in finding Murakami either (A) discloses
or (B) teaches or suggests "selectively receiving uplink communications
from the terminals using first and second separately allocated frequency
bands of a government spectrum allocation based on the determined
2 Claims 1-3 also were rejected for double patenting over U.S. Patent
No. 8,040,844 (Final Act. 7), but a terminal disclaimer was filed on June 4,
2014, and the rejection was subsequently withdrawn on June 13, 2014.
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Application 13/273,672
propagation conditions between the base station and the terminals," as
recited in claim 1 and commensurately recited in claims 2--4?
ANALYSIS
Enablement: Claims 1-9
The Examiner concludes the specification "DOES NOT reasonably
provide enablement for 'selectively receiving uplink communications tram
the terminals using first and second separately allocated frequency bands of
a government spectrum allocation based on the determined propagation
conditions between the base station and the terminals,'" as recited in claim 1
and commensurately recited in claims 2--4. Ans. 2--4.
Appellants contend the Specification provides "criteria for selecting
which frequencies to use" (App. Br. 5), such as "signal strength, bit error
rate (BER), noise floor, or other measure of propagation conditions," and
explains the system can "determine, based on these factors and the type of
communication desired, which frequencies to use." Spec. i-f 28. Appellants
further point to an example of how "the 900 MHz frequencies may generally
provide a superior return path (terminal to BS) over a significant portion of
the coverage area, due to the fact that, other factors being equal, the
propagation characteristics of 900 MHz generally are superior to those of 2
GHz by about 6 dB," but how those same frequencies, "when used for [base
station] to terminal communications, may generally fall short on coverage
range due to limited maximum operating power." Spec. i-f 25; App. Br. 6.
MPEP § 2164.01 provides the following "Test for Enablement":
Any analysis of whether a particular claim is supported by the
disclosure in an application requires a determination of whether
that disclosure, when filed, contained sufficient information
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regarding the subject matter of the claims as to enable one skilled
in the pertinent art to make and use the claimed invention. The
standard for determining whether the specification meets the
enablement requirement was cast in the Supreme Court decision
of Minerals Separation Ltd. v. Hyde, 242 U.S. 261, 270 (1916)
which postured the question: is the experimentation needed to
practice the invention undue or unreasonable? That standard is
still the one to be applied. In re Wands, 858 F.2d 731, 737, 8
USPQ2d 1400, 1404 (Fed. Cir. 1988). Accordingly, even though
the statute does not use the term "undue experimentation," it has
been interpreted to require that the claimed invention be enabled
so that any person skilled in the art can make and use the
invention without undue experimentation. In re Wands, 858 F.2d
at 737, 8 USPQ2d at 1404 (Fed. Cir. 1988).
We find no such "undue experimentation" analysis in the Examiner's
§ 112 rejection. The Examiner has not provided sufficient findings to
conclude that either undue experimentation or anything more than ordinary
skill would be required to take measurements of two frequencies such as
"signal strength" or "bit error rate" and to pick a frequency based on those
measurements, such as the strongest signal or the lowest error rate.
Accordingly, we do not sustain the Examiner's rejection of claims 1-9
for lack of enablement.
Anticipation: Claims 1-9
Appellants contend Murakami fails to disclose "selectively receiving
uplink communications from the terminals using first and second separately
allocated frequency bands of a government spectrum allocation based on the
determined propagation conditions between the base station and the
terminals," as recited in claim 1 and commensurately recited in claims 2--4,
because "Murakami describes downlink frequency determination but is
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Application 13/273,672
wholly silent regarding determination of the frequency of transmission
uplink from the base station to the terminal." App. Br. 8 (emphasis added).
We agree that Murakami does not anticipate the independent claims.
As Murakami states, its system "determines in which frequency band base
station 100 should send a transmission signal to terminal 2 00." Murakami
20: 1-7. While we agree with the Examiner that "Murakami describes two-
way communications" (Ans. 14), Murakami does not expressly disclose
frequency determination for transmission from a terminal to the base station.
Accordingly, we do not sustain the Examiner's rejection of claims 1--4
for anticipation. Claims 5-9 stand with their respective independent claims.
Obviousness: Claims 1-9
Appellants contend "there is not an indication in Murakami that
uplink frequency transmission would operate in the same way as the
downlink described by Murakami." App. Br. 9. Lack of an express
disclosure is relevant to anticipation for the reasons above, but this argument
does not sufficiently address obviousness. Given the portions of Murakami
cited by the Examiner (Ans. 5), including that there is uplink communication
from the terminal to the base station (e.g., Murakami 11 :36-39, 20: 1-7,
22:46-59), that frequency determination for downlink communication can
be based upon the uplink propagation conditions (id. at 20:1-7), and that the
same teachings of downlink frequency determination apply regardless of
whether the propagation conditions are from downlink communications or
uplink communications (id. at 20:7-12), Appellants have not sufficiently
persuaded us it would not be obvious that uplink frequency determination
would operate in the same way as the downlink frequency determination
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(e.g., based upon uplink propagation conditions).
Appellants further contend "the Office Action has not provided a
motivation to modify Murakami." App. Br. 9. However, the Supreme Court
has rejected the teaching, suggestion, or motivation (TSM) test as
"incompatible with our precedents." KSR Int 'l Co. v. Teleflex Inc., 550 U.S.
398, 419 (2007). "The obviousness analysis cannot be confined by a
formalistic conception of the words teaching, suggestion, and motivation, or
by overemphasis on the importance of published articles and the explicit
content of issued patents." Id. The frequency band for transmissions from
the terminal to the base station in Murakami must be determined somehow,
and as discussed above, Appellants have not persuaded us against the
obviousness of that determination being identical to the downlink frequency
determination, particularly given that the downlink frequency determination
can be based on uplink propagation conditions.
Accordingly, we sustain the Examiner's rejection of claim 1 for
obviousness, and claims 2-9, which Appellants argue are patentable for
similar reasons. See App. Br. 10; 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 1-9 under 35 U.S.C. § 103. We reverse the Examiner's rejections of
claims 1-9 under 35 U.S.C. §§ 102 and 112.
No time for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R. § 41.50(f).
AFFIRMED
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