Ex Parte Sengupta et al

Patent Trial and Appeal Board

Jun 6, 2013

10102503 (P.T.A.B. Jun. 6, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CHAITALI SENGUPTA and YUAN KANG LEE
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Appeal 2010-012136
Application 10/102,503
Technology Center 2400
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Before MAHSHID D. SAADAT, JOHN A. EVANS, 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 final
rejection of claims 1-7. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

STATEMENT OF THE CASE
Appellants’ invention generally relates to a method for performing, in
situations where a scrambling code or list of scrambling codes is known, a
faster cell search routine using a known slot synchronization step followed
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by a known searcher algorithm. See generally Abstract, Fig. 4, Spec. 5:6-7,
5:15-6:2, 6:12-18. Claim 1 is illustrative:
1. A method for cell searching in a wireless receiver
comprising the steps of:
(a) performing slot synchronization in order to collect a
group of hypotheses for frame timing;
(b) receiving a plurality of scrambling codes of
respective cells, from a remote wireless station; and
(c) processing through the group of hypotheses in step (a)
with the plurality of scrambling codes from step (b) in order to
establish frame timing.

THE REJECTIONS1
1. Claims 1 and 6 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement. Ans. 3.2
2. Claims 1 and 3-6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Rao (US 6,768,768 B2; filed Sep. 19, 2001; issued Jul. 27,
2004) and Liang (US 2003/0133424 A1; filed Jan. 17, 2002; published Jul.
17, 2003). Ans. 4-6.
3. Claims 2 and 7 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Rao, Liang, and Su (Su, Yu T., Weber, Charles L., “A
Class of Sequential Tests and Its Applications,” IEEE Trans. on Commc’ns,
Vol. 38, No. 2, February 1990).

1 The rejection of claims 1-5 under 35 U.S.C. § 101 is withdrawn. Ans. 3, 7.
2 Throughout this opinion, we refer to (1) the Appeal Brief filed Mar. 23,
2010 (“App. Br.”); (2) the Examiner’s Answer mailed Jun. 3, 2010 (“Ans.”);
and (3) the Reply Brief filed Aug. 2, 2010 (“Reply Br.”).
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THE § 112, FIRST PARAGRAPH, REJECTION
The Examiner finds that steps (b) and (c) of claim 1 and the “cell
searcher” limitation of claim 6 fail to comply with the enablement
requirement since the Specification does not disclose “receiving a plurality
of scrambling codes” or processing of the “plurality of scrambling codes.”
Ans. 3, 7-8.
Appellants argue that the steps are described in the Specification at
page 2, lines 20-22, page 5, lines 3-5, and page 7, lines 8-11. App. Br. 4-5.
Appellants add that (1) additional support can be found in the originally filed
claims; (2) receiving a plurality of scrambling codes would be obvious to a
person of ordinary skill in the art; and (3) processing the plurality of
scrambling codes would have been obvious to a person of ordinary skill in
the art who knew prior art methods of processing. Reply Br. 4-8.

ISSUE
Has the Examiner erred in rejecting claims 1 and 6 by finding that
“[receiving / in order to collect] a plurality of scrambling codes” and
“processing … the plurality of scrambling codes” fail to comply with
35 U.S.C. § 112, first paragraph?

PRINCIPLES OF LAW
A lack of enablement rejection under section 112, first paragraph, is
appropriate where the written description fails to teach those in the art to
make and use the invention as broadly as it is claimed without undue
experimentation. See In re Vaeck, 947 F.2d 488, 495-96, 10 USPQ2d 1438,
1444 (Fed. Cir. 1991).
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To satisfy the written description requirement, the disclosure must
reasonably convey to skilled artisans that Appellant possessed the claimed
invention as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Although the description
requirement under § 112 does not demand (1) any particular form of
disclosure, or (2) that the Specification recite the claimed invention
verbatim, a description that merely renders the invention obvious does not
satisfy the requirement. Id. at 1352 (citations omitted).

ANALYSIS
“receiving a plurality of scrambling codes”
We sustain the Examiner’s §112, first paragraph, rejection of claim 1
with respect to the claimed feature “receiving a plurality of scrambling
codes.” Ans. 3, 7-8. Even though the Examiner characterizes the rejection
as relating to enablement, we understand the Examiner’s analysis as finding
a failure to comply with the written description requirement. For example,
the Examiner states:
The specification is silent with respect to "receiving a plurality
of scrambling codes" and further silent with respect to
processing of the "plurality of scrambling codes".
(Ans. 3).
We agree. As found by the Examiner (id.), the Specification and the
Drawings are silent as to how the “plurality of scrambling codes” are
received. In the Background, the Specification describes what may happen
“[i]f the mobile unit has received a priority list with information about the
set of scrambling codes to search for,” but does not explain how the mobile
unit could or would receive such a list. Spec. p.3, ll. 1-2. The Specification
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describes a second prior art approach that can be taken “[i]f the scrambling
code or a set of possible scrambling codes is known,” but does not describe
how the scrambling code, or set of possible scrambling codes, becomes
known. Spec. p. 3, ll. 13-14. In the Detailed Description of the Preferred
Embodiment, the Specification describes “a new cell whose primary
scrambling code is provided to the user equipment (UE) (e.g., mobile
telephone (handset), etc.) by a base station.” Spec. p.5, ll. 3-5. However,
the Specification does not describe how the primary scrambling code is
“provided to the user equipment … by a base station.” As the Specification
describes steps 402 and 404 of Figure 4, knowledge of the primary
scrambling code is simply assumed. Spec. p.5, l. 5 – p.6, l. 7. Figure 4,
which depicts the preferred embodiment, confirms that step 404 simply
“[a]ssumes scrambling code is known.” Fig. 4.
Appellants’ argument that the step is described in the Specification is
unpersuasive. App. Br. 4-5. At page 7, lines 8-11, the Specification refers
to “the most commonly occurring case when the priority list of scrambling
codes [is] known,” but does not describe how such a list becomes known.
At page 5, lines 3-5, as we discussed above, the Specification does not
describe how the primary scrambling code is “provided to the user
equipment … by a base station.”
Finally, Appellants’ argument that a person of ordinary skill in the art
would find the step obvious is also unpersuasive. Reply Br. 5, 6. Even
assuming, without deciding, that receiving a plurality of scrambling codes
would have been obvious, that is not sufficient to show that Appellants
possessed the invention. It is well settled that while the Specification need
not recite the claimed invention verbatim, a description that merely renders
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the invention obvious does not satisfy the written description requirement
under § 112. Ariad, 598 F.3d at 1352.
We are therefore not persuaded that the Examiner erred in rejecting
independent claim 1 and independent claim 6, which recites a commensurate
limitation, under § 112, first paragraph.

“processing … the plurality of scrambling codes”
We also sustain the Examiner’s §112, first paragraph, rejection of
claim 1 with respect to “processing … the plurality of scrambling codes.”
Ans. 3, 7-8. Here, unlike the “receiving” step, the Specification refers to
prior art searcher algorithms that can be used to “efficiently and quickly
reject wrong hypotheses in step 404.” Spec. p.5, l. 15 – p.6, l. 7. However,
other than identifying one by name—a “sequential dwell searcher”—the
Specification includes no explanation of how such an algorithm would work.
Specifically, the Specification includes no description of how such an
algorithm would use “the plurality of scrambling codes” to establish frame
timing. The entire algorithm is represented by a single box. Fig. 4. To the
extent the recited “processing” corresponds to the searcher algorithms
described in connection with step 404, the specifics of that “processing” are
not clear.
In addition, Appellants’ argument that a person of ordinary skill in the
art would find the step obvious is also unpersuasive. Reply Br. 8. At page
7, lines 8-11, the Specification refers to “a need to tailor a cell search
scheme to the most commonly occurring case when the priority list of
scrambling codes [is] known,” but does not adequately describe how a cell
search scheme is tailored to use a known priority list of scrambling codes.
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And while Appellants argue that a person of ordinary skill in the art who
knew how to process 38,400 comparisons would also know how to process
1500 comparisons (Reply Br. 8), page 7, lines 8-11 of the Specification does
not describe using the priority list of scrambling codes to reduce the number
of comparisons from 38,400 to 1500. As a result, we are not persuaded that
the description identified by Appellants satisfies the written description
requirement. Ans. 7-8, 8-9.
We are therefore not persuaded that the Examiner erred in rejecting
independent claim 1 and independent claim 6, which recites a commensurate
limitation, under § 112, first paragraph.

THE OBVIOUSNESS REJECTION OVER RAO AND LIANG
The Examiner finds that Rao discloses every recited element of
representative claim 1 except for “receiving a plurality of scrambling codes
of respective cells” and “processing … with the plurality of scrambling
codes from step (b),” but cites Liang as teaching this feature in concluding
that the claim would have been obvious. Ans. 4-6.
Appellants argue that (1) the Examiner erred in paraphrasing what
Rao failed to explicitly disclose; (2) Liang is not concerned with cell
searching because the cell is already identified; and (3) Liang does not
disclose the “receiving” step of claim 1 or “the cell searcher” of claim 6.
App. Br. 5-7. Appellants add that (1) the Examiner failed to relate Liang to
claim limitations and to state what part of paragraphs 0012 and 0019 are
being relied upon; (2) Liang’s scrambling codes are not related to a search
for other cells; and (3) Liang’s despreader uses spreading codes, but does not
produce them. Reply Br. 8-11.
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ISSUES
Under § 103, has the Examiner erred by finding that Rao and Liang
collectively would have taught or suggested:
(1) “receiving a plurality of scrambling codes of respective cells from
a remote wireless station,” as recited in claim 1?
(2) “processing … with the plurality of scrambling codes from step
(b),” as recited in claim 1?

ANALYSIS
On this record, we find no error in the Examiner’s obviousness
rejection of representative claim 1.
Appellants’ argument that the Examiner improperly paraphrased what
Rao fails to explicitly disclose is unpersuasive. App. Br. 5-6; Reply Br. 8-9.
Despite paraphrasing what is not disclosed by Rao, the Final Rejection
nevertheless provided Appellants with sufficient notice of which aspects of
Rao and Liang are relied upon by the Examiner. Ans. 4-6.
Appellants’ argument that Liang does not disclose “receiving a
plurality of scrambling codes of respective cells from a remote wireless
station,” is also unpersuasive. App. Br. 6-7. Specifically, Appellants’
argument that Liang is not concerned with cell searching is not
commensurate in scope with the language of the disputed limitation, which
does not recite “cell searching.” App. Br. 6. Similarly, Appellants’
argument that Liang’s scrambling codes are not related to a search for other
cells is also not commensurate with the scope of claim 1, which does not
require that the plurality of scrambling codes be “related in any way to a
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search for other cells” or “subsequently used in a cell search.” Reply Br. 11.
Also, Appellants’ argument that Liang’s despreader uses spreading codes,
but does not produce them fails to address the rejection. Reply Br. 11. The
Examiner mentions despreader units 110A and 310A while describing
Liang, but does not map the despreader units to the recited “receiving” or
“processing” steps. Ans. 4. The Examiner relies instead upon Liang’s cell
searcher 402, which “retrieves therefrom long scrambling codes.” Ans. 4-5.
Appellants’ assertion that the Examiner admits that Rao fails to
explicitly disclose “receiving a plurality of scrambling codes” is also
unpersuasive. To the contrary, the Examiner cites Rao as disclosing
receiving a plurality of CDMA codes from respective cells. Ans. 4. The
Examiner further finds that the disclosure of CDMA by Rao implies the use
of scrambling codes. Ans. 4. Appellants do not dispute these findings.
Similarly, Appellants do not dispute the Examiner’s finding and
conclusion that it would be obvious to one of ordinary skill in the art that a
mobile receiver would receive scrambling codes from a plurality of cells
when near a handoff region. Ans. 5.
We therefore sustain the Examiner’s rejection of (1) independent
claim 1; (2) independent claim 6 which recites commensurate limitations;
and (3) dependent claims 3-5 not separately argued with particularity.

THE OBVIOUSNESS REJECTION OVER RAO, LIANG, AND SU
We also sustain the Examiner’s obviousness rejections of claims 2 and
7. Ans. 6-7. Appellants refer to the arguments made in connection with
claims 1 and 6. App. Br. 7; Reply Br. 12. We are not persuaded by these
arguments, however, for the reasons previously discussed.
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CONCLUSIONS
The Examiner (1) did not err in rejecting claims 1 and 6 under
35 U.S.C. § 112, first paragraph; and (2) did not err in rejecting claims 1-7
under 35 U.S.C. § 103.

DECISION
The Examiner’s decision rejecting claims 1-7 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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