13107560 (P.T.A.B. Jul. 26, 2016)

Ex Parte Smith et al

Patent Trial and Appeal BoardJul 26, 2016

13107560 (P.T.A.B. Jul. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 13/107,560 124192 GOOGLE 7590 FILING DATE 05/13/2011 07/28/2016 C/O Faegre Baker Daniels LLP 311 S. Wacker Drive, Suite 4300 Chicago, IL 60606 FIRST NAMED INVENTOR Hugh K. Smith 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. GP-101710-00-US 7682 EXAMINER MIKELS, MATTHEW ART UNIT PAPER NUMBER 2876 NOTIFICATION DATE DELIVERY MODE 07/28/2016 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): googleusinternal@faegrebd.com inteas@faegrebd.com michelle.davis@faegrebd.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HUGH K. SMITH, ERIC L. KRENZ, KARAN J. JUMANI, and ANDREW A. EFANOV Appeal2015-000169 Application 13/107 ,560 Technology Center 2800 Before PETER F. KRATZ, ROMULO H. DELMENDO, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL The Applicants (hereinafter "Appellants") 1 appeal under 35 U.S.C. Â§ 134(a) from a final decision of the Primary Examiner to reject claims 1- 12.2 We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. 1 The Appellants state that the Real Party in Interest is "Motorola Mobility LLC," which is said to be "an indirect wholly-owned subsidiary of Google Inc." (Appeal Brief filed April 24, 2014, hereinafter "Appeal Br.," 2). 2 Appeal Br. 1, 3-7; Final Office Action delivered electronically on October 7, 2013, hereinafter "Final Act.," 2-5. Appeal2015-000169 Application 13/107,560 BACKGROlH~D The subject matter on appeal relates "generally to antenna systems, and more particularly to antenna systems with two antennas that are in close proximity to each other" (Specification, hereinafter "Spec.," i-f 1 ). Claim 1, the sole independent claim on appeal, is reproduced from page 8 of the Appeal Brief (Claims Appendix, hereinafter "Claims App.") with key limitations indicated in italicized text, as follows: 1. An electronic device comprising: a planar, rectangular ground plane with a first corner, a second corner diagonal from the first corner, a third corner adjacent to the first corner, and a fourth corner diagonal from the third corner; a first antenna having a first antenna element, with a first driving point, positioned near the first comer and a second antenna element, with a second driving point, positioned near the second comer; a second antenna having a third antenna element, with a third driving point, positioned near the third comer and a fourth antenna element; with a fourth driving point; positioned near the fourth comer; a first phase shifter for differentially driving the first antenna element out of phase relative to the second antenna element using the first driving point and the second driving point; and a second phase shifter for differentially driving the third antenna element out of phase relative to the fourth antenna element using the third driving point and the fourth driving point. THE REJECTIONS The Examiner rejected the claims under 35 U.S.C. Â§ 103(a) as follows: I. Claims 1-9 and 12 as being unpatentable over Ohira et 2 Appeal2015-000169 Application 13/107,560 1 /1 â€¢ ,.., (Â£'.f""\."1 â€¢ .,,,1,. . ,..,,.........1. ' 1 al. ~neremaner --umraÂ· rm view or unver et al. (hereinafter "Oliver")4 (Examiner's Answer delivered electronically on July 29, 2014, hereinafter "Ans.," 2-4; Final Act. 2-4 ); and II. Claims 10 and 11 as being unpatentable over Ohira in view of Oliver and further in view of Regenos et al. (hereinafter "Regenos")5 (Ans. 4-5; Final Act. 4-5). DISCUSSION The Examiner found that Ohira teaches all of the limitations of claim 1 with the exception that the reference is "silent as to each antenna element having an associated driving point, i.e. the first antenna having a first driving point, the second antenna element having a second driving point, etc." (Ans. 2-3; Final Act. 2-3). In order to resolve these differences, the Examiner relied upon Oliver and found that "Oliver teaches a plurality of antenna elements having a plurality of driving points" (Ans. 3, citing Oliver, i-fi-f 104- 105). Based on these findings, the Examiner concluded that "it would have been obvious to add a driving point to each antenna element [disclosed in Ohira] as in Oliver, because such an operation aids in coupling" (Ans. 3, citing Oliver i1 95), and "that increasing the number of driving points] from two to four only involves [the] mere duplication of parts" (Ans. 3). Additionally, the Examiner found that Ohira teaches two phase shifters for each of two excited elements 11 and 12 (id. at 5, citing Ohira Fig. 1 and 3 US 2010/0045553 Al, published February 25, 2010. 4 US 2008/0048867 Al, published February 28, 2008. 5 US 4,103,303, issued July 25, 1978. 3 Appeal2015-000169 Application 13/107,560 ilil 69, 90). The Appellants disagree with the Examiner's findings and argue that "Ohira ... proposes driving two excited elements 11 and 12 out of phase from each other and nowhere suggests driving ... elements 13 and 14" (Appeal Br. 4). The Appellants also argue, inter alia, that one of ordinary skill in the art would not have been "motivated to alter Ohira's antenna to drive the parasitic elements per Oliver as the combination changes the basic principle of operation for Ohira" (Appeal Br. 5, section 1.3 heading) (underlining removed). Specifically, the Appellants point out that the purpose of Ohira's parasitic elements 13 and 14 is to modify the radiation pattern of the radio waves emitted by the excited elements such that they function as directors or reflectors and the fact that Oliver discloses multiple driving points for each antenna element in a completely different type of antenna-i.e., a discontinuous loop antenna-would not have prompted a person of ordinary skill in the art to combine the references in the manner claimed (id. at 5-6, citing Ohira i-fi-f 11, 12, 85, 86, 90, 111, 112). Thus, a dispositive issue in this appeal is whether the Examiner articulated a sufficient reason with some rational underpinning to support a conclusion that a person having ordinary skill in the art would have combined Ohira and Oliver in the manner claimed by the Appellants-i.e., whether a person having ordinary skill in the art would have been prompted to modify Ohira's low-profile antenna in view of Oliver's RFID antenna having a discontinuous loop configuration to arrive at an electronic device including the disputed limitations highlighted above. For the reasons discussed in more detail below, we hold that the Examiner failed to articulate a sufficient reason with some rational underpinning to support the 4 Appeal2015-000169 Application 13/107,560 obviousness conclusion. In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006), cited with approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Supreme Court of the United States stated that "a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art." KSR, 550 U.S. at 418. According to the Supreme Court, "it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does." Id. In analyzing obviousness, "it will be necessary ... to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed .... " Id. Applying KSR, we find that Ohira teaches a specific configuration of excited elements and parasitic elements "to provide a low-profile antenna structure that benefits from a size advantage gained with the use of a high frequency band, and that can control its directivity with great flexibility" (Ohira i-fi-12, 9). According to Ohira, "the antenna structure ... has characteristics of both a phased array antenna and a Yagi-Uda antenna, controlling its directivity with great flexibility" (id. i-f 12). Ohira teaches that "it is possible to cause the antenna structure ... [to] function the same as a Yagi-Uda antenna by changing the electrical lengths of the parasitic elements 13 and 14 toward the opposite lengths, the parasitic elements 13 and 14 being arranged opposite to each other in the positive and negative 5 Appeal2015-000169 Application 13/107,560 directions of the x-axis respectively" and that "[t]his causes the parasitic elements 13 and 14 to respectively function as the director and the reflector, or vi[ c ]e versa" (id. i-f 86). Although the Examiner stated that Oliver teaches adding driving points to aid in coupling (Ans. 5), the Examiner failed to direct us to sufficient evidence or technical reasoning establishing that modifying Ohira' s parasitic elements 13 and 14 to be driven in the manner disclosed in Oliver for a completely different type of antenna-i.e., a discontinuous loop antenna (Fig. 7 A; i-fi-193-94}-would result in an antenna that conforms to the operational requirements disclosed for Ohira's low-profile antenna. In this regard, the Examiner failed to provide any meaningful discussion on whether a person of ordinary skill in the art would have had a reasonable expectation of success in making the proposed modification by converting Ohira's parasitic elements to excited driven elements. KSR, 550 U.S. at 417 ("a [ factfinder] must ask whether the improvement is more than the predictable use of prior art elements according to their established functions."). Finally, we find no merit in the Examiner's conclusory statement that adding a driving point to each antenna element in Ohira involves only a mere duplication of parts. Again, the Examiner's mere conclusory statement fails to explain how the duplication of parts would result in an antenna that satisfies every limitation of claim 1, yet retain the operational or functional requirements of Ohira's antenna. For these reasons, we cannot affirm the rejection of claim 1. Because all other claims on appeal depend from claim 1, our reasoning for reversal 6 Appeal2015-000169 Application 13/107,560 applies to both rejections affecting all claims. In re Fine, 837 F.2d 1071, 1075, 1076 (Fed. Cir. 1988). SUMMARY Rejections I and II are reversed. Therefore, the Examiner's decision to reject claims 1-12 is reversed. REVERSED 7