Ex Parte VAANANEN

Patent Trials and Appeals Board

Apr 30, 2019

14137004 - (D) (P.T.A.B. Apr. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/137,004 12/20/2013
129597 7590 05/02/2019
Mikko Kalervo Vaananen
PO Box 346
Street address: Unioninkatu 20-22, Suite B351
Helsinki, 00131
FINLAND
FIRST NAMED INVENTOR
Mikko V AANANEN
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.
P202221US-CONT 8639
EXAMINER
DOBSON, DANIEL G
ART UNIT PAPER NUMBER
2636
NOTIFICATION DATE DELIVERY MODE
05/02/2019 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):
patents@suinno.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIKKO V AANANEN
Appeal 2017-008119
Application 14/137,004
Technology Center 2600
Before JOSEPH L. DIXON, JAMES W. DEJMEK, and
STEPHEN E. BELISLE, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b). A video oral
hearing was held on April 18, 2019.
We affirm.
1 Appellant does not indicate the real party in interest, but the
application is prosecuted pro se by the inventor, Mikko Vaananen. See
37 C.F.R. § 41.37(c)(l)(i). We refer to the Appeal Brief filed November 1,
2016.
Appeal 2017-008119
Application 14/137,004
The claims are directed to a communication base station. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A base station (200), arranged to provide radio and/or
microwave communication network access to at least one
subscriber terminal (250, 251) via at least one radio and/or
microwave transmitter and/or receiver, characterised in that,
-said base station comprises at least one laser data
communication transmitter and/or receiver (220, 221) arranged
to transmit and/or receive photons through free space,
-said base station comprises at least one tandem solar cell
(240).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Trompower et al. US 6,128,512
Vaananen US 2005/0158059 Al
(hereinafter Vaananen)
Vaananen US 2010/0313934 Al
(hereinafter Vaananen II)
REJECTION
The Examiner made the following rejection:
Oct. 3, 2000
July 21, 2005
Dec. 16, 2010
Claims 1-16 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Trompower in view of Vaananen and Vaananen II.
ANALYSIS
With respect to independent claims 1 and 9, Appellant does not set
forth separate arguments for patentability. (App. Br. 6). Therefore, we
select independent claim 1 as the representative claim for the group and
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Application 14/137,004
will address Appellant's arguments thereto. 37 C.F.R. § 41.37(c)(l)(iv)
(2016). Arguments which Appellant could have made but did not make in
the Briefs are waived. See 37 C.F.R. § 41.37(c)(l)(iv).
At the oral hearing, Mr. Vaananen presented detailed arguments to the
claimed invention as directed to a "fully photonic" wireless broadband base
station and "the synergy between the parts" working together as disclosed in
the Specification. (Spec. 7:29; 17:18-19 ("synergistic advantages")).
Appellant's argument fails because it is not commensurate with the
scope of the claim. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
("[ A Jppellant' s arguments fail from the outset because ... they are not based
on limitations appearing in the claims."); In re Hiniker Co., 150 F.3d 1362,
1369 (Fed. Cir. 1998) ("[The] proffered facts ... are not commensurate with
the claim scope and are therefore unpersuasive.").
In the Appeal Brief, Appellant generally contends that "there is no
teaching[,] suggestion[, or] motivation in the art that would lead to the actual
invention. Rather, there is a hidden hindsight suggestion/motivation in the
rejection for every individual missing element. (App. Br. 6) ( emphasis
omitted). Appellant further contends that "[b Jased on Trompower[,] the
person skilled in the art would not make any such substitution, and even if
he did, Trompower could improve power production efficiency to [the] base
station in many other ways also." Id. Appellant also argues "the rejection
does show that it was possible for a person of ordinary skill to stumble on
the invention by accident with very low probability, but this is not proof of
obviousness." Id. Finally, Appellant argues "[t]he rejection does not show
that the person skilled in the art would choose anything over any other
alternatives. Especially[, if] it does not show that the person of ordinary skill
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Application 14/137,004
WOULD have arrived at the invention ... no end result similar to the
current invention is anywhere visible in the three publications. The rejection
runs 100% on hindsight." Id.
We disagree with Appellant's arguments, and agree with and adopt
the Examiner's findings and conclusions in (i) the action from which this
appeal is taken and (ii) the Answer to the extent they are consistent with our
analysis below. (See Ans. 2-5).
The Examiner further responds to Appellant's arguments in the
response to arguments section of the Answer. (Ans. 3). The Examiner
maintains:
The first is that the suggestion/motivation from
Trompower indicates to a person of ordinary skill that the LEDs
of Trompower are not the only solution for an IR transmitter.
The suggestion/motivation also shows that the person of ordinary
skill would evaluate the known options for designing an IR
transmitter. The suggestion/motivation further shows that the
substitution of the known options were within ordinary skill and
would yield predictable results.
Furthermore, Applicant's argument ignores the other
rationales given in the rejection for combining Trompower and
Vaananen. Vaananen (,-J 43) states IR transmitters are typically
lasers, but may also be generated by LEDs. Thus the prior art
clearly recognizes LEDs and lasers as equivalents when selecting
an IR transmitter. The rejection also states that the proposed
modification to Trompower is the simple substitution of one
element for another known element that performs the same
function.
(Ans. 3).
With respect to the motivation for the combination of the Trompower
and Vaananen references, Appellant argues "Trompower ( any conventional
transmitter may be used) de facto motivates nothing, because if all options
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Application 14/137,004
are equally on the table, with no reason to choose anything, there is no
motivation to tum to any option more than the other. This is the case here."
(Reply Br. 2-3).
Appellant provides no specific response to the teachings and
suggestions identified by the Examiner in the grounds of rejection or the
response to arguments section. Appellant merely provides unsupported
argument.
The Examiner provides a reasoned statement of the explanation for
the additional combination of Trompower, Vaananen, and Vaananen II
references, and the Examiner provides a line of reasoning with a rational
underpinning explaining how the combination meets the claimed limitation.
(Final Act. 4-6; Ans. 2-5). We agree with the Examiner's line of reasoning
as it relates to the broad claim language of representative independent
claim 1, and we find Appellant has not provided any specific arguments in
the Briefs to further respond to the Examiner's clarifications. As a result,
Appellant has not shown error in the Examiner's factual findings or
conclusion of obviousness of representative independent claim 1 and
independent claim 9 and dependent claims 2-8 and 10-16, not separately
argued.
Moreover, Appellant has not set forth substantive arguments with
regard to this combination, and Appellant's general arguments are
unsupported attorney/inventor arguments given little patentable weight.
Merely alleging that the references fail to support an obviousness rejection is
insufficient to persuade us of Examiner error. Attorney/inventor arguments
and conclusory statements that are unsupported by factual evidence are
entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed.
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Application 14/137,004
Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); Ex
parte Belinne, Appeal No. 2009-004693, slip op. at 7-8 (BP AI Aug. 10,
2009) (informative) (available at
http://www.uspto.gov/web/offices/dcom/bpai/its/fd09004693.pdf).
Here, the Examiner has at least proffered a discussion of the
references and specific citations, but Appellant merely provides a general
argument for patentability. Therefore, Appellant has not shown error in the
Examiner's factual findings or legal conclusion of obviousness based
thereon as they relate to the claimed invention recited in independent
claim 1.
CONCLUSION
The Examiner did not err in rejecting representative independent
claim 1 based upon obviousness under pre-AIA 35 U.S.C. § 103(a).
DECISION
For the above reasons, we affirm the Examiner's obviousness
rejection of claims 1-16 based upon obviousness under pre-AIA 35 U.S.C.
§ 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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