Ex Parte Piipponen et al

Patent Trial and Appeal Board

Mar 2, 2016

11892378 (P.T.A.B. Mar. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111892,378 08/22/2007
11051 7590 03/04/2016
Squire Patton Boggs (US) LLP
Nokia Technologies Oy
8000 Towers Crescent Drive, 14th Floor
Vienna, VA 22182
FIRST NAMED INVENTOR
Antti Piipponen
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.
059864.01848 8938
EXAMINER
HSIEH, PING Y
ART UNIT PAPER NUMBER
2647
NOTIFICATION DATE DELIVERY MODE
03/04/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
sonia.whitney@squirepb.com
ipgeneraltyc@squirepb.com
nokia.ipr@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte ANTTI PIIPPONEN, AARNO PARSSINEN, KONSTA
SIEV ANEN, TOMMI ZETTERMAN, and KALLE RAISKILA
Appeal2014-000002
Application 11/892,378
Technology Center 2600
Before KAL YANK. DESHPANDE, DAVID M. KOHUT, and
JUSTIN T. ARBES, Administrative Patent Judges.
DESHPANDE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-000002
Application 11/892,378
STATEMENT OF CASE1
Appellants seek review under 35 U.S.C. § 134(a) of the Examiner's
Final Rejection of claims 1--4, 13-28, and 30-32.2 We have jurisdiction
over the appeal pursuant to 35 U.S.C. § 6(b).
We REVERSE and ENTER A NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R. § 41.50(b).
Appellants invented apparatuses, methods, and a computer program
for a portable communication device that can be used for accessing various
services and applications via a wireless or radio interface, which may have
one or more radio channels open at the same time and may have
communication connections with more than one other party. Spec. ,-r 16.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below:
1. A radio frequency apparatus, comprising:
a baseband source comprising a first timer;
an interface configured to receive a command from a radio
protocol stack and timing information from said baseband source;
a command generator configured to generate a plurality of
commands from said received command;
configurable hardware, said configurable hardware comprising
a second timer and a configuration which is controlled in dependence
on said generated commands and configured to at least one of transmit
and receive a radio frequency signal, wherein said second timer is
1 Our decision makes reference to Appellants' Appeal Brief ("App. Br.,"
filed May 29, 2013) and Reply Brief ("Reply Br.," filed Sept. 11, 2013), and
the Examiner's Answer ("Ans.," mailed July 25, 2013) and Final Office
Action ("Final Act.," mailed Nov. 29, 2012).
2 Claims 6-12 have been withdrawn, and claims 5, 29, and 33 were
cancelled previously. See Amendment filed February 28, 2013.
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Application 11/892,378
synchronized with the first timer to have a consistent time reference;
and
a timing circuitry configured to provide timing information in
accordance with said received timing information using said
consistent time reference,
wherein the configurable hardware is configured to at least one
of transmit and receive the radio frequency signal at a time defined by
said timing circuitry, and
wherein the first timer and the second timer are implemented at
least partially in hardware.
REFERENCES
The Examiner relies on the following prior art:
Vaidyanathan US 7,016,668 B2 Mar. 21, 2006
Dolwin US 2005/0152322 Al July 14, 2005
Karam US 2004/0123295 Al June 24, 2004
REJECTION
Claims 1--4, 13-28, and 30-32 stand rejected under 35 U.S.C. 103(a)
as being unpatentable over Vaidyanathan, Dolwin, and Karam. Final Act.
2-13.
ISSUE
The issue of whether the Examiner erred in rejecting claims 1--4, 13-
28, and 30-32 as being unpatentable over the cited prior art turns on whether
Karam describes "said second timer is synchronized with the first timer to
have a consistent time reference," as recited in independent claim 1, and
similarly recited in independent claims 4, 22, 27, 28, 30, 31, and 32.
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Application 11/892,378
ANALYSIS
Claims 1--4, 13-28, and 30--32 rejected under 35 U.S.C. 103(a) as being
unpatentable over Vaidyanathan in view of Dolwin and Karam
Appellants contends that Karam fails to describe that a "second timer
is synchronized with the first timer to have a consistent time reference," as
recited in independent claim 1 and similarly recited in independent claims 4,
22, 27, 28, 30, 31, and 32. 3 App. Br. 19; Reply Br. 3. Appellants
specifically argue that, although Karam teaches one timer, Karam fails to
teach a second timer, where the first and second timers are synchronized to
share a consistent time reference. Id. We agree with Appellants.
Karam is directed to a programmable scheduler for a digital signal
processor. Karam ,-r 25. In particular, Karam discloses, in Figure 2,
scheduler hardware module 40, which employs event timer 41, MUX 42,
and event controller 43. Event timer 41 receives DSP clock signal DCLK
and X number of input clock signals ICLK. Karam ,-r 28. In response to
clock signals ICLK, event timer 41 generates a number of synchronous
3 Appellants also cite the claim 1 limitations of "a timing circuitry configured
to provide timing information in accordance with said received timing
information using said consistent time reference" and "wherein the first
timer and the second timer are implemented at least partially in hardware,"
but do not argue the limitations apart from the "consistent time reference"
limitation. See App. Br. 18-20; Reply Br. 3-6. Accordingly, we do not
consider Appellants' recitation of the claim language to be an argument.
See 3 7 C.F .R. § 41.3 7 ( c )(1 )(vii) ("A statement which merely points out what
a claim recites will not be considered an argument for separate patentability
of the claim."); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e
hold that the Board reasonably interpreted 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.").
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Application 11/892,378
based event signals SBE indicative of hardware based events that are
synchronized with DSP clock DCLK. Karam i-f 29.
As found by the Examiner, Karam discloses that the DSP has a first
timer in scheduler hardware module 30. Ans. 15. The Examiner determines
that one with ordinary skill in the art would interpret DSP core 20 to be a
second timer in order to execute scheduled events. Id. Further, the
Examiner maintains that the first and second timer are synchronized when
"scheduler hardware module 30 communicates a highest priority runnable
event signal HPRE to DSP core 20." Final Act. 4--5. Although Karam
teaches that an event timer is used to synchronize events based on the DCLK
and ICLK clock signals, we disagree with the Examiner that DSP core 20
contains a second timer, facilitating multi-radio communication through
various channels. The Examiner has not provided any further rationale to
illustrate why a person with ordinary skill in the art would understand DSP
core 20 to be a second timer. Accordingly, we cannot sustain the
Examiner's rejection because Karam fails to disclose a "second timer [that]
is synchronized with the first timer to have a consistent time reference," and
need not address Appellants' remaining arguments. Therefore, we reverse
the Examiner's rejection of independent claims 1, 4, 22, 27, 28, 30, 31, and
32 and dependent claims 2, 3, 13-21, and 23-26.
NEW GROUND OF REJECTION
The following new ground of rejection is entered pursuant to
37 C.F.R. § 41.50(b). Independent claims 1, 4, 22, 27, 28, 30, 31, and 32 are
rejected under 35 U.S.C. 103(a) as being unpatentable over Vaidyanathan in
view of Dolwin.
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Application 11/892,378
As discussed above, Karam fails to disclose a "second timer [that] is
synchronized with the first timer to have a consistent time reference" and
Karam was not concerned with multi-radio communication. However,
Dolwin discloses the use of multiple radio communication channels within a
single terminal or base station. Dolwin i-f 121. Dolwin specifically discloses
that "if two systems are supported (i.e. a GSM and CDMA multi-mode
terminal) it may be advantageous to use more than one set of process
timetables. Each timetable would then be driven of a separate timebase."
Id. A timebase is the same as a timer. Dolwin additionally teaches that a
resource's timebase, or timer, produces a time stamp for the resource, in
order to synchronize execution of commands between multiple resources,
giving a dual mode phone running GSM and UMTS as an example. Dolwin
i-f 125. Accordingly, we find that Dolwin discloses a "second timer [that] is
synchronized with the first timer to have a consistent time reference."
The Examiner found that it would have been obvious to a person with
ordinary skill in the art to combine Dolwin's known techniques for the
timing of transmitting and receiving radio frequency signals with the
teachings of V aidyanathan, and that such a combination would yield nothing
more than predictable results. Final Act. 3. Similarly, we also find it would
have been obvious to a person of ordinary skill in the art to combine
Dolwin's known element of a terminal or base station capable of multiple
radio communication channels with Vaidyanathan, and that such a
combination would yield nothing more than predictable results because all
of the elements are known and their functions would remain the same upon
combination. Additionally, it would have been obvious to one of ordinary
skill in the art at the time of the invention to have modified Vaidyanathan,
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which describes using software radio concepts to reconfigure channels based
on their characteristics, to include the functionality whereby communication
may occur between resources operating at different frequency levels, each
which use timetables, or timers, to ensure that they are synched, as disclosed
by Dolwin. Such a modification would have facilitated communication in
multi-radio systems using their own timers. See Dolwin i-fi-f 121, 125.
Accordingly, we conclude that a person with ordinary skill in the art would
have found it obvious to modify Vaidyanathan with Dolwin and the results
of such a modification would have facilitated communication in multi-radio
systems using their own timers.
Because this rationale was not presented by the Examiner, we
designate this rejection as a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b). Accordingly, claims 1, 4, 22, 27, 28, 30, 31, and 32 are rejected
under 35 U.S.C. 103(a) as being unpatentable over Vaidyanathan in view of
Dolwin. Claims 2, 3, 13-21, and 23-26 depend from independent claims 1,
4, 22, 27, 28, 30, 31, and 32. We leave it to the Examiner to determine
whether dependent claims 2, 3, 13-21, and 23-26 should be rejected under
35 U.S.C. § 103(a) as unpatentable over Vaidyanathan and Dolwin based on
the rationale discussed above.
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CONCLUSION
The Examiner erred in rejecting claims 1--4, 13-28, and 30-32.
However, a new ground of rejection is entered under 37 C.F.R.
§ 41.50(b ). We newly reject claims 1, 4, 22, 27, 28, 30, 31, and 32 under 35
U.S.C. § 103(a) as being unpatentable over Vaidyanathan and Dolwin, as
designated above.
DECISION
To summarize, our decision is as follows:
• The Examiner's rejection of claims 1--4, 13-28, and 30-32 is
reversed.
• A new ground of rejection is entered 37 C.F.R. § 41.50(b). We newly
reject claims 1, 4, 22, 27, 28, 30, 31, and 32 under 35 U.S.C. § 103(a)
as being unpatentable over Vaidyanathan and Dolwin, as designated
above.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50 (b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both, and have the matter reconsidered
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Application 11/892,378
by the examiner, in which event the proceeding will be remanded
to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same record ....
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv) (2010).
REVERSED
37 C.F.R. § 41.50(b)
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