Kyocera Corporation

Patent Trials and Appeals Board

Mar 30, 2022

2021000943 (P.T.A.B. Mar. 30, 2022)

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. 16/079,275 08/23/2018 Amit KALHAN TUTL 00277 US 1135 32968 7590 03/30/2022 KYOCERA INTERNATIONAL INC. INTELLECTUAL PROPERTY DEPARTMENT 8611 Balboa Ave SAN DIEGO, CA 92123 EXAMINER COSME, NATASHA W ART UNIT PAPER NUMBER 2465 NOTIFICATION DATE DELIVERY MODE 03/30/2022 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): KII-USPatents@kyocera.com Kathleen.Connell@kyocera.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte AMIT KALHAN and HENRY CHANG Appeal 2021-000943 Application 16/079,275 Technology Center 2400 Before MICHAEL R. ZECHER, JUSTIN BUSCH, and MICHAEL T. CYGAN, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge CYGAN. Opinion Dissenting filed by Administrative Patent Judge BUSCH. CYGAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-3, 6-9, 11-13, and 16-19. Appeal Br. 7. Claims 4, 5, 10, 14, 15, and 20 have been objected to as being dependent upon a rejected base claim, but otherwise would be allowable if rewritten in independent form, including all the limitations of the base claim 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Kyocera Corporation. Appeal Br. 3. Appeal 2021-000943 Application 16/079,275 2 and any intervening claims. Final Act. 1, 6. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER The claimed subject matter generally relates to a signal forwarding device, such as a relay, to facilitate transfer of information between an origination device such as a base station, and a destination device such as a handset. Spec. ¶¶ 7, 10. The signal forwarding device receives user data and two control signals from the origination device. Id. ¶ 4. The first control signal provides instructions for the forwarding device, and the second control signal provides instructions for the destination device. Id. Independent claim 1 is illustrative: 1. A method comprising: receiving, at a signal forwarding device, at least one received data signal comprising a first set of data; receiving, at the signal forwarding device and at a destination device, at least one received control signal comprising a first set of control information and a second set of control information, the first set of control information associated with the first set of data and comprising instructions pertaining to the signal forwarding device processing the first set of data, the second set of control information associated with the first set of data and comprising instructions pertaining to the destination device processing the first set of data; and transmitting, from the signal forwarding device, a forwarded signal to the destination device, the forwarded signal comprising forwarded data, based at least partially on the first set of data. Appeal 2021-000943 Application 16/079,275 3 Appeal Br. 12 (Claims App.). Claim 11 recites a system having similar limitations; dependent claims 2, 3, 6-9, 12, 13, and 16-19 incorporate the limitations of either claim 1 or claim 11. Id. at 12-15. REFERENCE Name Reference Date Nakagawa US 2011/0212685 A1 Sept. 1, 2011 REJECTION Claims 1-3, 6-9, 11-13, and 16-19 are rejected under 35 U.S.C. § 102(a)(2) as anticipated by Nakagawa. OPINION “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). As described in detail below, we do not agree with the Examiner’s finding that every element of claims 1, 11, and their dependent claims is found in Nakagawa. We begin with claim 1. The Examiner finds each limitation of claim 1 to be described by Nakagawa (citing ¶¶ 13, 48-52, 71, 88-90, and Fig. 9). Final Act. 4-5. With respect to the claimed step of receiving, at both the signal forwarding device and at a destination device, at least one received control signal comprising first and second sets of control information, the Examiner points to paragraph 13 of Nakagawa. Id. at 2-3; Ans. 3-9. Appellant argues that Nakagawa does not disclose both sets of control information being received at a signal forwarding device, as claimed. Appeal Br. 7. Appellant argues that the plain language of the claim requires Appeal 2021-000943 Application 16/079,275 4 that the signal forwarding device receive a control signal that comprises both sets of control information. Id. at 8. Appellant argues that Nakagawa, instead, describes the signal forwarding device receiving one set of control instructions, and then adding a second set of control instructions. Id. Appellant argues that Nakagawa lacks any description of the signal forwarding device receiving the second set of control instructions; i.e., control instructions for the destination device. Id.; Reply Br. 3. Accordingly, Appellant argues that Nakagawa does not fairly disclose each and every element of claim 1. We are persuaded of error in the Examiner’s anticipation rejection of claim 1. With respect to the first and second sets of control information being received by a signal forwarding device, the Examiner finds Nakagawa to describe, at a relay device, receiving first data from the base station, the first data including first control information that represents a first communication mode which is a mode of communication from the base station to the relay device, adding second control information to the received first data, the second control information representing a second communication mode which is a mode of communication from the relay device to the terminal device. Final Act. 3 (emphasis omitted); Ans. 3-9. Thus, the Examiner finds that Nakagawa’s relay device adds second control information to the data being received at the relay device. Ans. 3-4. However, claim 1 requires that the signal forwarding device (e.g., Nakagawa’s relay device) receive the first and second sets of control information. Appeal Br. 12. Because the Examiner finds that Nakagawa’s second control information is added to the data, and not received by, the relay device, the Examiner has not shown that every limitation of claim 1 is described by Nakagawa. Accordingly, the Appeal 2021-000943 Application 16/079,275 5 Examiner has not shown Nakagawa to anticipate the invention of claim 1. Claims 2, 3, and 6-9 depend from claim 1, and we determine the Examiner’s anticipation rejection of those claims to be erroneous for the reasons expressed for claim 1. We note that the issue of non-functional descriptive matter, addressed by our colleague in the dissent, was not raised in the briefing.2 However, our determination on anticipation is founded on a claim construction that requires receiving, both at the signal forwarding device and at the destination device, a control signal comprising two sets of control information, which is not non-functional descriptive matter. We are instructed by the U.S. Court of Appeals for the Federal Circuit’s reasoning in Distefano, in which the court held that, although informational content of data may be denied patentable weight, non-informational content may not. Distefano, 808 F.3d at 851. Distefano characterizes the “common thread” in nonfunctional descriptive matter (“printed matter”) cases as “printed matter must be matter claimed for what it communicates.” Id. at 850. In addressing the limitation “selecting a first element from a database including web assets authored by third party authors and web assets provided to the user interface or outside the user interface by the user,” the Distefano court determined that “where the information came from” was not part of the 2 We additionally note that, in In re Distefano, the Board had newly raised a printed matter issue in affirming a rejection in its original decision, and the Federal Circuit determined that the Board’s printed matter analysis was not properly designated as a new ground of rejection. In re Distefano, 808 F.3d 845, 847 (Fed. Cir. 2015). Appeal 2021-000943 Application 16/079,275 6 informational content of the database, and that the separate origins of the two sets of web assets data must be given patentable weight. Id. at 847, 851. Here, we do not rely on the content of the claimed information; i.e., the nature of the “instructions” pertaining to signal forwarding device and destination device. Rather, we assign patentable weight to the requirement that there be two sets of information, contained in the same signal received at both forwarding and destination devices.3 Requiring two sets of information does not assign weight to what the information communicates, and thus, does not cause the limitation of two sets of information to be printed matter. Because the existence of two data sets in the signal is not printed matter, we need not take the further step of determining whether these sets of information are functionally or structurally related. See Distefano, 808 F.3d at 851. Claim 11 recites a “transmitter of the origination device further configured to transmit, to the signal forwarding device and to the destination device, at least one received control signal comprising a first set of control information and a second set of control information.” Appeal Br. 14 (Claims App.). The Examiner rejects claim 11, and its dependent claims, “under the same reasoning as claims 1-3[] and 6-9.” Final Act. 6. As discussed above for claim 1, the Examiner does not point to a description in Nakagawa of an originating device that sends both sets of control 3 We note that our colleague in dissent does not dispute that the existence of separate signals is given patentable weight, because the dissent’s construction, showing only features given patentable weight, requires the signal forwarding device to receive both a “data” signal and a “control” signal. Infra at 9. Appeal 2021-000943 Application 16/079,275 7 information, but instead, points to an origination signal comprising one set of control information, to which the signal forwarding device adds a second set of control information. Final Act. 3; Ans. 3-9. Accordingly, the Examiner has not fairly shown that Nakagawa anticipates the claimed originating device that is configured to transmit both sets of control information as claimed. Consequently, we determine the Examiner’s anticipation rejection of claim 11, and its dependent claims 12, 13, and 16- 19, to be in error. CONCLUSION For the above-described reasons, we reverse the Examiner’s anticipation rejection of claims 1-3, 6-9, 11-13, and 16-19. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-3, 6-9, 11-13, 16-19 102(a)(2) Nakagawa 1-3, 6-9, 11-13, 16-19 REVERSED Appeal 2021-000943 Application 16/079,275 8 BUSCH, Administrative Patent Judge, dissenting. I respectfully dissent from my colleagues’ decision reversing the rejection of the pending claims as anticipated by Nakagawa. I write separately because, as discussed further below, I believe the proper construction of the claims is one in which the disputed limitation is non- functional descriptive material, which does not patentably distinguish over the cited prior art. Claim construction is an important step in a patentability determination. A legal determination that a claim is anticipated or obvious involves a two-step inquiry wherein first, the claims are properly construed, and second, the properly construed claims are compared to the prior art. See Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003); In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004). “Claim limitations directed to printed matter are not entitled to patentable weight unless the printed matter is functionally related to the substrate on which the printed matter is applied.” Praxair Distribution, Inc. v. Mallinckrodt Hosp. Prods. IP Ltd., 890 F.3d 1024, 1031 (Fed. Cir. 2018) (emphasis added). Our reviewing court has also explained that this printed matter doctrine is not strictly limited to “printed” materials. Praxair, 890 F.3d at 1032. More specifically, “a claim limitation is directed to printed matter ‘if it claims the content of information.’” Praxair, 890 F.3d at 1032 (quoting In re Distefano, 808 F.3d 845, 848 (Fed. Cir. 2015)). “Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability.” In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (footnote omitted). As a general proposition, we need not give patentable Appeal 2021-000943 Application 16/079,275 9 weight to non-functional descriptive material absent a new and nonobvious structural or functional relationship between the descriptive material and the substrate. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see also King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010); and Manual of Patent Examining Procedure § 2111.05 (9th ed. Rev. 10.2019 (June 2020)). In Ex parte Nehls, 88 USPQ2d 1883, 1888 (BPAI 2008) (precedential), the Board held that the nature of the information being manipulated by the computer should not be given patentable weight absent evidence that the information is functionally related to the process “by changing the efficiency or accuracy or any other characteristic” of the steps. See also Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (informative) (holding “wellness-related” data stored in a database and communicated over a network was non-functional descriptive material as claimed because the data “does not functionally change” the system). Here, I would find the content of the “at least one received control signal” does not change the recited structures or actions of at least independent claims 1 and 11. Although the recited control signal includes two sets of control information, taken together, these two sets of control information are the information contained in the control signal that are communicated to the forwarding and destination devices. The content of the control signal is not functionally related to the transmission of the control signal that is received at the signal forwarding device and destination device or the transmission medium in which the control signal is sent or stored. Further, the recited content of the control signal is not used in the claim-it is merely data received by the signal Appeal 2021-000943 Application 16/079,275 10 forwarding device and the destination device in claim 1 or transmitted from the origination device in claim 11. The content of the control signal in claims 1 and 11 is neither used nor functionally tied to the substrate or functionally related to the process as claimed-i.e., regardless of whether the control signal were to contain one set of control information, the recited two sets of control information, or just a person’s name and phone number, the control signal’s content does not change any of claim 1’s functional steps or claim 11’s structure. Accordingly, the content of the control signal is merely non-functional descriptive material. Having determined that independent claim 1 recites non-functional descriptive material, I evaluate the claim as a whole. See Gulack, 703 F.2d at 1385 (“[T]he board cannot dissect a claim, excise the printed matter from it, and declare the remaining portion of the mutilated claim to be unpatentable. The claim must be read as a whole.”) (footnote omitted). Based on the foregoing discussion, I interpret claim 1 as: 1. A method comprising: receiving, at a signal forwarding device, at least one received data signal comprising a first set of data; receiving, at the signal forwarding device and at a destination device, at least one received control signal comprising [non-functional descriptive material]; and transmitting, from the signal forwarding device, a forwarded signal to the destination device, the forwarded signal comprising forwarded data, based at least partially on the first set of data. I would not find Appellant’s arguments persuasive of Examiner error because the arguments attempt to distinguish claim 1 from the Nakagawa because the received control signal includes specific content (i.e., “a second set of control information” that comprises “instructions pertaining to the Appeal 2021-000943 Application 16/079,275 11 destination device processing the first set of data”), which I would determine to be non-functional descriptive material. Although the claims could use or execute the first set of control information to generate the forwarded data from the first set of data, claim 1 does not recite using the first set of control information. Even more notably, nothing recited in claim 1 even implicitly would use the second set of control information, which is the information Appellant argues the signal forwarding device does not receive. Following Appellant’s logic, a subsequent claim reciting receiving any other data (e.g., the name of the programmer’s dog) that is not used in the method would be patentably distinct from Appellant’s claim 1. Appellant does not contest that Nakagawa discloses “receiving, at the signal forwarding device and at a destination device, at least one received control signal,” as recited in claim 1. Appeal Br. 7-9 (arguing that Nakagawa does not disclose both the signal forwarding device and the destination device receiving both first and second sets of control information and, more specifically, that Nakagawa discloses its relay node adding the second set of control information rather than receiving it). Thus, Appellant challenges only whether Nakagawa discloses the “signal forwarding device” receiving the “second set of control information.” Accordingly, having properly construed claim 1, I would find Nakagawa discloses the subject matter recited in claim 1, and I would sustain the Examiner’s rejection for that reason. For similar reasons, I also would sustain the Examiner’s rejection of independent claim 11, which recites commensurate limitations and for which Appellant relies on similar arguments. See Appeal Br. 9-10. In addition, I would sustain the Examiner’s rejection of the dependent Appeal 2021-000943 Application 16/079,275 12 claims, which depend therefrom and were not argued separately with particularity. See 37 C.F.R. § 41.37(c)(1)(iv) (2019). For the reasons above, I respectfully dissent from the majority’s decision reversing the rejection of claims 1-3, 6-9, 11-13, and 16-19 under 35 U.S.C. § 102(a)(2) as anticipated by Nakagawa.