Ex Parte Wallen

Patent Trial and Appeal Board

May 24, 2013

10991878 (P.T.A.B. May. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ANDERS WALLEN
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Appeal 2010-0105551
Application 10/991,878
Technology Center 2600
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Before JEAN R. HOMERE, JOHNNY A. KUMAR, and TREVOR M.
JEFFERSON, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
In papers filed May 10, 2013, Appellant requests a rehearing under 37
C.F.R. § 41.52 from the Decision on Appeal (“Decision”) of the Patent Trial
and Appeal Board (“Board”), dated March 11, 2013. In the Decision, we
affirmed the Examiner’s rejection of claims 1-35. (Dec. 7.)

1 The real party in interest is Telefonaktiebolaget LM Ericsson. (App. Br.
2.)
Appeal 2010-010555
Application 10/991,878

2
ANALYSIS
In the Request for Rehearing (“Request”), Appellant alleges that the
Board erred by declining to discuss the merits Appellant’s separate
arguments regarding the patentability of claims 6 and 29, but instead chose
to adopt the Examiner’s findings to summarily affirm the rejection of those
claims. In particular, Appellant argues that because they persuasively
rebutted the Examiner’s rejection of the cited claims by showing that the
Examiner ignored the recited limitation of “generating an initial noise
correlation matrix…based on propagation channel estimates,” the Examiner
did not establish by a preponderance of the evidence that the claims are
unpatentable over Russell. (Req. Reh’g 2-6.)
We have carefully reviewed the Decision in light of Appellant’s
allegation of error. However, we find without merit Appellant’s allegation
that by not addressing the cited group of claims discussed by Appellant as a
separate group with a separate heading, we did not consider Appellant’s
arguments. Appellant is reminded that merely placing an argument in a
separate location with a separate heading from another argument does not
necessarily make it a separate argument for patentability. It is the
“substance” of such arguments that determines a separate argument for
patentability. See 37 C.F.R. 41.37(c)(1)(vii). See also In re Young, 927 F.2d
588, 590 (Fed. Cir. 1991). During our deliberation, we thoroughly reviewed
each of Appellant’s arguments and weighed their merits against the findings
proffered by Examiner in the Answer. After careful consideration of each
group of claims argued in the Briefs, we found that the weight of the
evidence favors the Examiner’s rejection by a preponderance standard, and
thereby decided to adopt the Examiner’s findings.
Appeal 2010-010555
Application 10/991,878

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For instance, regarding Appellant’s allegation that the Examiner
ignored the cited limitations of claims 6 and 29, the Examiner found that the
Russell’s disclosure of correlating “incoming pseudo binary code words with
similar locally generated reference pseudo random binary code words”
teaches the disputed limitations. (Ans. 5, 6.) Further, the Examiner found
that because a matrix is a correlation of data items, a plurality of data values
is a correlation matrix. (Id. at 19-20.) In our view, the cited findings by the
Examiner address Appellant’s contention that Russell does not teach a
correlation matrix. (App. Br. 17-18.) Further, regarding Appellant’s
argument that Russell does not teach propagation channel estimates, we note
the Examiner’s unrebutted finding that Russell discloses a correlation matrix
to generate noise estimates (Ans. 19, 20) can be equally applied to any
transmission or reception media for the purpose of reducing noise therein.
Therefore, it suffices that the disclosed correlation matrix be capable of
performing the task of reducing noise in a channel or any other media in
order for it to teach the disputed statement of intended use. Because we are
satisfied that the Examiner has adequately established a prima facie case of
obviousness against claims 6 and 29, which Appellant’s arguments have not
persuasively rebutted, we maintain our initial position to affirm the
Examiner’s rejection of claims 1-35 as set forth in the Decision.

DECISION
Accordingly, we have granted Appellant’s Request to the extent that
we have reconsidered the original Decision but have DENIED it with respect
to making any changes to the Decision.
Appeal 2010-010555
Application 10/991,878

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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).

REHEARING DENIED

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