LANTIQ DEUTSCHLAND GMBH

Patent Trials and Appeals Board

Sep 30, 2020

14762476 - (D) (P.T.A.B. Sep. 30, 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.
14/762,476 07/22/2015 Matthias KINDLER KRAUP232WOUS 2141
148528 7590 09/30/2020
2SPL
Patent Attorneys
Landaubogen 3
Munich, 81373
GERMANY
EXAMINER
DANIEL JR, WILLIE J
ART UNIT PAPER NUMBER
2462
NOTIFICATION DATE DELIVERY MODE
09/30/2020 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):
Inteldocs_docketing@cpaglobal.com
mail@2spl.de
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHIAS KINDLER and
HARIBALARAMAN RAMASUBRAMANIAN
Appeal 2019-004241
Application 14/762,476
Technology Center 2400
Before ROBERT E. NAPPI, NORMAN H. BEAMER, SCOTT E. BAIN,
Administrative Patent Judges.

BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–11, 14, 15, 18, 20, 21, and 25. Claims 12, 13, 16,
17, 19, and 22–24 have been canceled. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Lantiq
Deutschland GmbH. Appeal Br. 1.
Appeal 2019-004241
Application 14/762,476

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BACKGROUND
The Claimed Invention
The invention relates to “systems using two different links to a
provider network,” and specifically, “to an extender usable to provide an
additional link to a provider network.” Spec. 1. Claims 1, 21, and 25 are
independent. Claim 1 is illustrative of the invention and the subject matter
in dispute, and is reproduced below:
1. A mobile extender apparatus configured to couple
to a base unit, wherein the base unit is configured to
communicate directly via a first uplink to a communications
network using a first protocol, the apparatus comprising:
a first transceiver that receives a first mobile signal from
the communications network and transmits a second mobile
signal to the communications network via a second, different
uplink to the communications network using a second protocol
that is different than the first protocol,
wherein the mobile extender apparatus forms, with the
base unit, a dual uplink to the communications network, wherein
each uplink employs a different protocol,
a translator that translates the first mobile signal from the
second protocol into third protocol that is different from the
second protocol,
a second transceiver that modulates and transmits the
translated first mobile signal to the base unit according to the
third protocol,
wherein the mobile extender apparatus is physically
separate from the base unit.
Appeal Br. 11 (Claims App.) (emphases added).

References
The references relied upon by the Examiner are:
Appeal 2019-004241
Application 14/762,476

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Name Reference Date
Akatsu et al.
(“Akatsu”)
US 6,505,255 B1 Jan. 7, 2003
Rakib et al.
(“Rakib”)
US 2004/0172658 A1 Sept. 2, 2004
Zas Couce et al.
(“Zas Couce”)
EP 2365663 A1 Sept. 14, 2011

The Rejections on Appeal
Claims 1–11, 14, 15, 20, 21, and 25 stand rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Rakib and Akatsu. Final Act. 2–7.
Claims 18 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Rakib, Akatsu, and Zas Couce. Final Act. 7–8.
DISCUSSION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments presented in this appeal. On the record before us, we cannot
sustain the Examiner’s rejections.
Appellant argues that the Examiner erred in failing to accord any
patentable weight to the “base unit” as recited in the preamble of claim 1,
and erred in finding the prior art teaches or suggests a “mobile extender” and
further limitations to the “base unit” recited in the claim. Appeal Br. 6;
Reply Br. 2. Appellant also argues that the Examiner’s mapping of the
claim elements is “not clear” and that the cited references do not teach or
suggest using the “separate” uplinks as recited in claim 1. Appeal Br. 6–7.
For the following reasons, Appellant’s arguments persuade us of error.
We begin with the preamble of claim 1. The preamble recites a
“mobile extender apparatus” configured to couple to a base unit, “wherein
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Application 14/762,476

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the base unit is configured to communicate directly via a first uplink to a
communications network using a first protocol.” Appeal Br. 11 (Claims
App.). The Examiner determines that this clause in the preamble merely
recites “purpose” or “intended use” of a base unit, and the body of the claim
does not depend on the preamble for completeness. Ans. 11–12.
Both the language of the preamble and the remainder of claim 1,
however, contradict the Examiner’s determination regarding the preamble.
The body of claim 1 recites a “second protocol that is different than the first
protocol [communicated by the base unit]” and that “the mobile extender
apparatus forms, with the base unit, a dual uplink to the communications
network, wherein each uplink employs a different protocol.” Appeal Br. 11
(emphases added). Accordingly, the preamble’s requirement that the base
unit is “configured to” communicate using a first protocol is directly and
critically related to elements within the body of the claim. Moreover, the
body of the claim further limits the base unit by reciting “a second
transceiver that modulates and transmits the translated first mobile signal to
the base unit according to the third protocol, wherein the mobile extender
apparatus is physically separate from the base unit.” Appeal Br. 11
(emphases added).
The language of the preamble itself also contradicts the Examiner’s
interpretation. Claim 1 is an apparatus claim, and the “base unit” is one of
the physical elements within the apparatus. “Configuring” the base unit in a
particular, claimed manner imparts required characteristics of the apparatus,
not merely intended uses. The preamble does not recite a “base unit to”
communicate or a “base unit which may communicate,” but rather, a “base
unit . . . configured to communicate” (i) “directly via a first uplink to a
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communications network” and (ii) “using a first protocol.” Appeal Br. 11
(emphasis added). The word “configured,” in this instance, requires that the
base unit has the recited characteristics.
The absence of patentable weight given to the preamble is fatal to the
Examiner’s rejection of claim 1 on this record, but even if we had agreed
with the Examiner’s position regarding the preamble, we are persuaded of
error for a second, independent reason.
Specifically, in rejecting the claim in the Final Action, the Examiner
cites extensively to Rakib (both the text and figures in the disclosure) but, as
Appellant argues, the Examiner does not sufficiently explain how the
“gateway” and other elements in Rakib teach or suggest the “mobile
extender apparatus” and “base unit” (terms not appearing in Rakib) in
claim 1. Appeal Br. 6. On this record, we cannot discern from the
Examiner’s broad citations (Final Act. 2–4) what specific elements from the
prior art the Examiner is mapping to corresponding elements in claim 1. See
Appeal Br. 6–7. In response to this argument in Appellant’s opening brief,
the Examiner, in essence, merely copies into the Answer the same citations
used in the Final Action. Ans. 11–12. Accordingly, we determine the
Examiner has not established a prima facie case of unpatentability, on this
record. See, e.g., Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007)
(holding that the Office carries the initial burden of establishing a prima
facie case of unpatentability “by adequately explain[ing] the shortcomings it
perceives so that the applicant is properly notified and able to respond”).
Accordingly, we are persuaded the Examiner erred in rejecting claim
1. For the same reasons, we are persuaded of error regarding the same
rejection of independent claims 21 and 25, argued as a group with claim 1,
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as well as the remaining claims (all of which depend from claims 1, 21, or
25). We, therefore, do not sustain the obviousness rejections of claims 1–11,
14, 15, 18, 20, 21, and 25.
CONCLUSION
We reverse the Examiner’s decision rejecting claims 1–11, 14, 15, 18,
20, 21, and 25.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–11, 14,
15, 20, 21,
25
103(a) Rakib, Akatsu 1–11, 14,
15, 20, 21,
25
18 103(a) Rakib, Akatsu, Zas
Couce
18
Overall
Outcome
1–11, 14,
15, 18, 20,
21, 25

REVERSED