Intel IP Corporation

Patent Trials and Appeals Board

Sep 15, 2020

2019002977 (P.T.A.B. Sep. 15, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/137,021 04/25/2016 Thorsten CLEVORN 9889-04502 7410
81310 7590 09/15/2020
Kowert Hood Munyon Rankin & Goetzel (Apple)
1120 S. Capital of Texas Hwy
Building 2, Suite 300
Austin, TX 78746
EXAMINER
AHN, SUNG S
ART UNIT PAPER NUMBER
2631
NOTIFICATION DATE DELIVERY MODE
09/15/2020 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):
patent_docketing@intprop.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte THORSTEN CLEVORN, PABLO HERRERO,
URI PERLMUTTER, and RONEN KRONFELD
____________________

Appeal 2019-002977
Application 15/137,0211
Technology Center 2600
____________________

Before JASON J. CHUNG, JAMES W. DEJMEK, and
MATTHEW J. McNEILL, Administrative Patent Judges.

DEJMEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant2 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 40–59. Appellant has canceled claims 1–39. Appeal Br. 4. We have
jurisdiction over the remaining pending claims under 35 U.S.C. § 6(b).
We affirm.

1 According to Appellant, this application is related to Application No.
14/062,982, which is currently on appeal (Appeal No. 2019-002933) before
the Board. Appeal Br. 3.
2 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2018). Appellant identifies Intel
IP Corporation as the real party in interest. Appeal Br. 2.
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STATEMENT OF THE CASE
Introduction
Appellant’s disclosed and claimed invention generally relates to
“communication devices and methods for performing radio
communication.” Spec. ¶ 2. More specifically, Appellant notes in the
Specification that mobile devices may support various radio access
technologies (“RATs”) such as WLAN (Wireless Local Area Network),
UMTS (Universal Mobile Telecommunication System), and LTE (Long
Term Evolution), and that the different RATs may require different or
multiple antennas. Spec. ¶ 3. In a disclosed embodiment, a communication
device is provided wherein “one or more antennas may be shared between
RATs (which each request multiple antennas) by switching it [(i.e., the
shared antenna(s))] between the RATs in a controlled manner.” Spec. ¶ 12.
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Figure 8 is illustrative and is reproduced below:

Figure 8 shows a communication arrangement of a communication
device (801) in a tethering scenario. Spec. ¶ 5; see also Spec. ¶¶ 100–109.
As shown, the communication device (801) comprises an LTE transceiver
(804) coupled to a first antenna (807) via circulator (810), a WiFi transceiver
(805) coupled to a second antenna (808) via circulator (810), and a control
unit (806) that can further couple the LTE transceiver (804) and WiFi
transceiver (805) to a third antenna (809) via circulator (810). Spec. ¶¶ 100–
109. The Specification describes the particular arrangement illustrated in
Figure 8 as “a high-speed tethering scenario” in which the communication
device (801) serves as an access point for a further device (803) to connect
to the Internet via base station (802). Spec. ¶ 103. The Specification further
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explains that the “antenna transmission and reception signals may be
separated by means of circulators 810.” Spec. ¶ 109.
Claims 40, 44, 49, 53, 58, and 59 are independent claims. Claim 40 is
representative of the subject matter on appeal (see Appeal Br. 14 n.2; see
also 37 C.F.R. § 41.37(c)(1)(iv)) and is reproduced below with the disputed
limitation emphasized in italics:
40. A communication device comprising:
at least one first antenna, at least one second antenna and
at least one third antenna;
a long term evolution (LTE) transceiver configured to
control the at least one first antenna for communication with one
or more other communication devices;
a wireless local area network (WLAN) transceiver
configured to control the at least one second antenna for
communication with the one or more other communication
devices;
a controller configured to determine a communication link
between the at least one third antenna and the LTE transceiver or
the WLAN transceiver based on a priority of the communication
of the LTE transceiver and a priority of the communication of
the WLAN transceiver;
wherein the controller is further configured to control the
LTE transceiver for communication with the one or more other
communication devices using the at least one first antenna and
the at least one third antenna when the controller determines the
communication link between the at least one third antenna and
the LTE transceiver; and
wherein the controller is further configured to control the
WLAN transceiver for communication with the one or more
other communication devices using the at least one second
antenna and the at least one third antenna when the controller
determines the communication link between the at least one third
antenna and the WLAN transceiver; and
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wherein the controller is further configured to determine
that the at least one third antenna is to be used by the LTE
transceiver as an LTE downlink connection receive antenna, and
wherein the controller is further configured to determine that the
at least one third antenna is to be concurrently used by the WLAN
transceiver as a WLAN connection transmit antenna.

The Examiner’s Rejections
1. Claims 40–59 stand provisionally rejected under the doctrine of
obviousness-type double patenting over claims 22–30 and 40–42 of U.S.
Application No. 14/062,982 (filed October 25, 2013). Final Act. 4–6.
2. Claims 40–59 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Mantravadi et al. (US 2014/0273884 A1; Sept. 18, 2014)
(“Mantravadi”) and Gans et al. (US 5,854,611; Dec. 29, 1998) (“Gans”).
Final Act. 6–13.

ANALYSIS3
Provisional Obviousness-type Double Patenting Rejection
Appellant does not respond to the Examiner’s provisional rejection of
claims 40–59 under the doctrine of obviousness-type double patenting. See
Appeal Br. 12 (identifying the Examiner’s rejection of claims 40–59 under
35 U.S.C. § 103 as the only ground of rejection to be reviewed on appeal).
Subsequent to the Examiner’s Final Rejection, Appellant requested that the

3 Throughout this Decision, we have considered the Appeal Brief, filed
September 28, 2018 (“Appeal Br.”); the Reply Brief, filed March 4, 2019
(“Reply Br.”); the Examiner’s Answer, mailed January 24, 2019 (“Ans.”);
and the Final Office Action, mailed February 23, 2018 (“Final Act.”), from
which this Appeal is taken.
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Examiner “hold the provisional double patenting rejection in abeyance.”
Response After Final 11 (filed May 23, 2018).
Because the rejection is still maintained (i.e., the Examiner has not
withdrawn the rejection), it is still properly before the Board. Appellant has
not filed a Terminal Disclaimer.
To the extent Appellant has not advanced separate, substantive
arguments for particular claims or issues, such arguments are considered
waived. See 37 C.F.R. § 41.37(c)(1)(iv); see also Hyatt v. Dudas, 551 F.3d
1307, 1314 (Fed. Cir. 2008) (“When the appellant fails to contest a ground
of rejection to the Board, . . . the Board may treat any argument with respect
to that ground of rejection as waived.”). Additionally, “[i]f a ground of
rejection stated by the examiner is not addressed in the appellant’s brief,
appellant has waived any challenge to that ground of rejection and the Board
may summarily sustain it unless the examiner subsequently withdrew the
rejection in the examiner’s answer.” Manual of Patent Examining Procedure
(“MPEP”) § 1205.02 (9th ed., Rev. 10.2019, June 2020).
Accordingly, we summarily sustain the Examiner’s provisional
rejection of claims 40–59 under the doctrine of obviousness-type double
patenting.

Rejection under 35 U.S.C. § 103
Appellant disputes the Examiner’s finding that the prior art, alone or
in combination, teaches the controller is configured to determine that “the at
least one third antenna is to be used by the LTE transceiver as an LTE
downlink connection receive antenna, and wherein the controller is further
configured to determine that the at least one third antenna is to be used
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concurrently by the WLAN transceiver as a WLAN connection transmit
antenna.” Appeal Br. 16–22; Reply Br. 2–5. In particular, Appellant argues
that Gans does not teach a system with concurrent transmission and
reception, but instead teaches a system comprising a shared antenna that
supports “simultaneous transmission or reception.” Appeal Br. 17–18
(quoting Gans, col. 6, ll. 58–61); Reply Br. 2–3. Appellant argues that one
of ordinary skill in the art would not understand Gans’s disclosure of
conventional diplexers or circulators connected to shared antennas (see
Gans, Fig. 7 (260)) to facilitate concurrent (i.e., simultaneous) transmission
and reception on the shared antenna. Appeal Br. 18.
We do not find Appellant’s arguments persuasive of Examiner error.
Gans describes the antenna system illustrated in Figure 7 as having both a
transmitting portion and a receiving portion. Gans, col. 6, ll. 48–52. Gans
further describes the use of “conventional diplexers and/or circulators . . . to
facilitate simultaneous transmission or reception of two signals utilizing a
common broadbeam antenna element.” Gans, col. 6, ll. 55–61.
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Figure 7 of Gans is illustrative and is reproduced below:

Figure 7 of Gans “is a block diagram of the antenna system of the
present invention employing a plurality of circulators to couple the antenna
systems of FIGS. 5 and 6 to one another.” Gans, col. 3, ll. 3–5. Gans
describes the antenna system of Figure 5 is for transmitting and the antenna
system of Figure 6 is for receiving. Gans, col. 2, l. 66–col. 3, l. 2. Thus, the
incorporation of the circulators allows the antennas (216) to be shared by the
transmit path (220-210-200-214) and the receive path (258-250-210-254).
See Gans, col. 6, ll. 48–61. As shown, a common broadbeam antenna (216)
is coupled to circulator (260) that is coupled to both the transmit path (via
linear amplifier (214)) and the receive path (via pre-amplifier (258)). See
Gans, col. 6, ll. 10, 30, Fig. 7. We do not understand Gans’s description of
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using conventional circulators “to facilitate simultaneous transmission or
reception of two signals utilizing a common broadbeam antenna element” to
preclude simultaneously (or concurrently) transmitting the signal from linear
amplifier (214) and receiving the signal to be sent to pre-amplifier (258).
Instead, as shown (and as would be understood by one of ordinary skill in
the art) the use of conventional circulators allows the shared antenna to
simultaneously (i.e., concurrently) transmit a signal from the transmit path
and receive a signal to be sent to the receive path. Further, consistent with
the broad claim language of claim 40, Figure 7 of Gans illustrates the
antenna (216) is to be used as a downlink receive antenna and is also “to be
concurrently used” as a transmit antenna. See claim 40 (emphasis added).
Moreover, we note (as does the Examiner) that to overcome a written
description rejection in the pending case as well as in the companion case
(i.e., Application No. 14/062,982) during prosecution, Appellant indicated
that the claim language regarding the third antenna is “to be used” as a
downlink connection and a transmit antenna includes “active
reception/transmission and idle reception/transmission as long as the antenna
is ‘earmarked’ as having an LTE downlink and a WLAN transmit
connection.” Response After Final 10 (filed May 10, 2017). Appellant
further stated, “the claim language is not limited to the specific scenario
where the LTE antenna is actively using the downlink connection and the
WLAN is actively transmitted.” Response After Final 10. Similarly during
prosecution of the companion application, Appellant, referring to the
discussion in the 15/137,021 application, indicated “[t]he same is true for
the present Application.” 14/062,982 Response After Final 10 (filed
August 11, 2017). See also Ans. 3–4 (the Examiner explaining that during
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an Applicant-initiated interview to discuss the written description rejection,
counsel for Appellant identified the circulator (810) of Appellant’s Figure 8
as providing written description support for simultaneous transmission and
reception even though, as the Examiner notes, “the entire specification is
absent on simultaneous transmission and reception”).
Still further, the Examiner identified evidential reference Cox et al.
(US 2005/0014472 A1; Jan. 20, 2005) (“Cox”) to demonstrate it was well-
known in the art to use circulators (as in Gans) to allow for simultaneous
transmit and receive operation from a common antenna. See Final Act. 9
(citing Cox ¶ 22, Fig. 1B); Ans. 4; see also Cox ¶ 22 (“The circulator 120
permits full-duplex operation where transmission and reception can occur
simultaneously in time. A circulator is a three port non-reciprocal electronic
device that is well-known in the art.”).
Thus, we agree with the Examiner’s findings that Gans (in
combination with Mantravadi) teaches or reasonably suggests
simultaneously/concurrently using the claimed third antenna for LTE
downlink reception and WLAN transmission. See Final Act. 8–9.
Appellant also argues Mantravadi does not teach simultaneously
transmitting on a first network and receiving from a second network using
the same shared antenna. Appeal Br. 19. Instead, Appellant asserts
Mantravadi teaches using a switch as an improvement over a diplexer to
alternatively connect the antenna to an LTE transceiver and a WLAN
transceiver. Appeal Br. 19 (citing Mantravadi ¶¶ 27–32, Fig. 5). Further,
Appellant argues Mantravadi’s description of using its antenna for either the
LTE network or the WLAN network teaches away from a simultaneous
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transmission and reception. Appeal Br. 19–20 (citing Mantravadi ¶ 45);
Reply Br. 3.
As an initial matter, we note that Figure 5 of Mantravadi illustrates a
configuration wherein an antenna (532) is coupled to a diplexer and/or
switch (530) and is configured (earmarked) to be used as a downlink to the
LTE transceiver (423) and an uplink for the WLAN transceiver (421). See
Mantravadi, Fig. 5.
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” Ricoh Co., Ltd. v. Quanta
Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (citations omitted).
“[T]he ‘mere disclosure of more than one alternative’ does not amount to
teaching away from one of the alternatives where the reference does not
‘criticize, discredit, or otherwise discourage the solution claimed.’”
SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307, 1320 (Fed. Cir. 2015)
(quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)); see also
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327
(Fed. Cir. 2009) (“A reference does not teach away . . . if it merely expresses
a general preference for an alternative invention.”).
Here, we disagree with Appellant that Mantravadi teaches away from
an “antenna to be used by an LTE transceiver as an LTE downlink
connection receive antenna while simultaneously . . . [being] used by the
WLAN transceiver as a WLAN connection transmit antenna,” as recited in
claim 40. Contrary to Appellant’s assertions, Mantravadi does not criticize,
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discredit, or otherwise discourage one from using a circulator, as taught by
Gans, in place of the diplexer or switch of Figure 5.
Appellant also argues that the Examiner’s proposed combination of
Mantravadi and Gans—i.e., replacing Mantravadi’s diplexer/switch with
Gans’s circulator—would not teach simultaneously transmitting on one
network (e.g., a WLAN network) while receiving on a different network
(e.g., a LTE network). Appeal Br. 20–21.4 Appellant argues that Gans does
not teach transmitting or receiving from two networks, but rather
“simultaneously receiving and transmitting to/from a single network.”
Appeal Br. 20. Appellant asserts the “incorporation of the
diplexer/circulator 260 of Gans incorporated into Mantravadi would merely
implement the same transmission/reception to/from the same network (either
LTE or WLAN; not both).” Appeal Br. 21.
Non-obviousness cannot be established by attacking references
individually where, as here, the ground of unpatentability is based upon the
teachings of a combination of references. In re Keller, 642 F.2d 413, 426
(CCPA 1981). Rather, the test for obviousness is whether the combination
of references, taken as a whole, would have suggested the patentee’s
invention to a person having ordinary skill in the art. In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986).
The Examiner relies on Mantravadi to teach, inter alia, an LTE
transceiver having a dedicated antenna, a WLAN transceiver having its own
dedicated antenna, and third antenna that may be used by either the LTE

4 Appellant makes a similar argument regarding Cox. See Appeal Br. 21–22.
Because the Examiner’s rejection is based on the combined teachings of
Mantravadi and Gans (Cox is used as an evidential reference), we do not
address this argument.
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transceiver or the WLAN transceiver. Final Act. 6–8; Ans. 5–6. Thus,
Mantravadi teaches communication with two different networks. The
Examiner relies on Gans’s teaching of a circulator, instead of Mantravadi’s
diplexer/switch, to teach a configuration that allows for the shared antenna
in Mantravadi to be used for reception on the LTE network
simultaneously/concurrently with the antennas to be used for transmission
on the WLAN network. Final Act. 8–9; Ans. 6. As such, Appellant’s
arguments do not apprise us of error as they relate to the individual teachings
of Mantravadi and Gans rather than the combined teachings of the
references, as articulated by the Examiner.
For the first time in the Reply Brief, Appellant belatedly asserts that
an ordinarily skilled artisan would not have been motivated to modify
Mantravadi’s system with the circulator of Gans but for hindsight reasoning
on the part of the Examiner. Reply Br. 4–5. Appellant argues that one of
ordinary skill in the art would not refer to Gans because Gans fails to teach
multiple radio access technologies and simultaneous uplink and downlink on
a shared antenna. Reply Br. 4.
These arguments were not made in the Appeal Brief, but could have
been, and are not responsive to any new evidence or finding set forth by the
Examiner in the Answer. In the absence of a showing of good cause by
Appellant, this argument is untimely and deemed waived.
Any argument raised in the reply brief which was not raised in
the appeal brief, or is not responsive to an argument raised in the
[E]xaminer’s answer, including any designated new ground of
rejection, will not be considered by the Board for purposes of the
present appeal, unless good cause is shown.
37 C.F.R. § 41.41(b)(2); see also Ex parte Nakashima, 93 USPQ2d 1834,
1837 (BPAI 2010) (informative) (explaining that arguments and evidence
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not presented timely in the principal brief, will not be considered when filed
in a Reply Brief, absent a showing of good cause explaining why the
argument could not have been presented in the principal brief); Ex parte
Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he reply
brief [is not] an opportunity to make arguments that could have been made
in the principal brief on appeal to rebut the Examiner’s rejections, but were
not.”).
Moreover, even if we were to consider Appellant’s untimely
arguments, we do not find them persuasive of Examiner error. The
Examiner finds that one of ordinary skill in the art would have been
motivated to modify Mantravadi’s teaching of supporting multiple radio
access technologies in a mobile device having a limited number of antennas
with Gans’s teaching of a circulator to facilitate a shared antenna
configuration “to enhance the communication efficiency and cost of the
mobile device.” Final Act. 9 (citing Gans, col. 1, ll. 46–67). This is also
consistent with Mantravadi’s express statement that “it is desirable to
support all radio technologies on the wireless device with a limited number
of antennas such that desired performance may be achieved.” Mantravadi
¶ 40. Thus, we find the Examiner has set for the requisite “articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with
approval in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)).
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of independent
claim 40. For similar reasons, we also sustain the Examiner’s rejection of
independent claims 44, 49, 53, 58, and 59, which recite commensurate
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limitations and were not argued separately. See Appeal Br. 14 n.2; see also
37 C.F.R. § 41.37(c)(1)(iv). Additionally, we sustain the Examiner’s
rejection of claims 41–43, 45–48, 50–52, and 54–57, which depend directly
or indirectly therefrom and were not argued separately. See 37 C.F.R.
§ 41.37(c)(1)(iv).

CONCLUSION
We summarily affirm the Examiner’s provisional obviousness-type
double patenting rejection of claims 40–59.
We affirm the Examiner’s decision rejecting claims 40–59 under
35 U.S.C. § 103.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
40–59 Provisional
Obviousness-type
Double Patenting
40–59
40–59 103 Mantravadi, Gans 40–59
Overall
Outcome
40–59

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TIME PERIOD FOR RESPONSE
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). See
37 C.F.R. § 41.50(f).

AFFIRMED