Meyer, Michael et al.

Patent Trials and Appeals Board

Oct 26, 2020

14370182 - (D) (P.T.A.B. Oct. 26, 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.
14/370,182 07/01/2014 Michael Meyer 9900-35342US1TS 8083
146825 7590 10/26/2020
Sage Patent Group/Telefonaktiebolaget LM Ericsson
PO BOX 30789
RALEIGH, NC 27622-0789
EXAMINER
TACDIRAN, ANDRE GEE
ART UNIT PAPER NUMBER
2415
NOTIFICATION DATE DELIVERY MODE
10/26/2020 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):
instructions@sagepat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte MICHAEL MEYER, JOACHIM SACHS, and
ANDERS FURUSKÄR1
_____________

Appeal 2019-004052
Application 14/370,182
Technology Center 2400
______________

Before JOHN A. JEFFERY, ST. JOHN COURTENAY, III, and
JOHN A. EVANS, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of Claims 1, 2, 5–11, 13, 14, and 16–21. Appeal
Br. 5. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicants” as defined in
37 C.F.R. § 1.42(a). The Appeal Brief identifies Telefonaktiebolaget LM
Ericsson (publ), of SE-164 83, Stockholm, Sweden, as the real party in
interest. Appeal Br. 3.
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INVENTION
The claims relate to a method of adapting the output power of a radio
transmitting entity. See WO 2013/083198 A1 (PCT/EP201l/072283),
Abstract. Claims 1, 11, and 17 are independent. Illustrative Claim 1 is
reproduced below.
1. A method of controlling the output power of a radio
transmitting entity of a mobile communication network within a
cage having at least one aperture, wherein the radio transmitting
entity comprises an antenna, a processor, and a memory, said
method comprising:
receiving, by the processor, information associated with a
condition of the at least one aperture of the cage from a sensor
wherein the information associated with the condition of the at
least one aperture comprises information indicating a position
of the at least one aperture, the position being in a range
between a first location where the at least one aperture is at a
fully opened opening of the at least one aperture and a second
location where the at least one aperture is fully closed; and
controlling, by the processor, an output power of a radio
signal transmitted by the antenna of the radio transmitting entity
responsive to the information associated with the condition of
the at least one aperture of the cage,
wherein the controlling the output power comprises
adjusting the output power as a defined function of the position
of the at least one aperture between the first location and the
second location.

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PRIOR ART
Name2 Reference Date
Matsubara US 2005/0164728 A1 July 28, 2005
Sato US 2009/0128329 A1 May 21, 2009
Rokusek US 2009/0191922 A1 July 30, 2009
Ngai US 2012/0270592 A1 Oct. 25, 20123
Kwon US 2012/0106477 A1 May 3, 20124
Chang US 2012/0302277 A1 Nov. 29, 20125

2 All citations herein to the reference are by reference to the first named
inventor/author only.
3 Priority US Provisional 61/480,191, filed April 28, 2011.
4 Filed November 1, 2011.
5 Priority. Continuation-in-part of US 12/607,836, filed October 28, 2009,
now US 8,264,540.
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REJECTIONS6 AT ISSUE7
1. Claims 1, 2, 5–11, 13, 14, and 16–21 stand rejected under 35 U.S.C.
§ 112, first paragraph,8 as failing to comply with the written
description requirement. Final Act. 2–3.
2. Claims 17–21 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite. Final Act. 4.
3. Claims 1, 2, 6, 11, and 17 stand rejected under 35 U.S.C. §103(a) as
obvious over Rokusek and Sato. Final Act. 5–10.
4. Claims 5 and 14 stand rejected under 35 U.S.C. §103(a) as obvious
over Rokusek, Sato, and Matsubara. Final Act. 10–12.
5. Claims 7 and 8 stand rejected under 35 U.S.C. §103(a) as obvious
over Rokusek, Sato, and Ngai. Final Act. 12–14.
6. Claims 9 and 20 stand rejected under 35 U.S.C. §103(a) as obvious
over Rokusek, Sato, and Kwon. Final Act. 14–15.

6 The present application was examined under the pre-AIA first to invent
provisions. Final Act. 2.
7 Throughout this Decision, we refer to the Appeal Brief (“Appeal Br.”) filed
January 25, 2019, the Reply Brief (“Reply Br.”) (filed April 22, 2019), the
Final Office Action (“Final Act.”) mailed August 23, 2018, the Examiner’s
Answer mailed February 26, 2019, and the Specification (“Spec.”) filed
December 18, 2015.
8 The Examiner’s rejection recites “35 U.S.C. § 112(a).” However, because
the application is examined under the pre-AIA statute (see Final Act. 2), we
presume § 112, first paragraph is meant, and hold the recitation to be
harmless error.
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7. Claim 10 stands rejected under 35 U.S.C. §103(a) as obvious over
Rokusek, Sato, and Chang. Final Act. 15–15.

ANALYSIS
We have reviewed the rejections of Claims 1, 2, 5–11, 13, 14, and 16–
21 in light of Appellant’s arguments that the Examiner erred. We have
considered in this decision only those arguments Appellant actually raised in
the Briefs. Any other arguments which Appellant could have made but
chose not to make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(iv). We provide the following explanation to highlight and
address specific arguments and findings primarily for emphasis.

CLAIMS 1, 2, 5–11, 13, 14, AND 16–21: WRITTEN DESCRIPTION.
Independent Claim 1 recites, inter alia, “receiving, by the processor,
information associated with a condition of the at least one aperture of the
cage from a sensor wherein the information associated with the condition of
the at least one aperture comprises information indicating a position
of the at least one aperture.” Independent Claims 11 and 17 recite
commensurate limitations.
The Examiner finds:
The Specification does not adequately describe (i) the sensor,
(ii) how the sensor provides information associated with a
condition of at least one aperture within a range of fully opened
and fully closed, and (iii) how such a claimed sensor is adapted
to communicate with a radio transmitting entity of a mobile
communication network, in such a way that conveys that the
inventor(s) had possession of the claimed invention.
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Final Act. 2.
Appellant contends that inventor’s affidavits show that aperture
position sensors were readily available at the time the application was filed.
Appeal Br. 9 (citing the prior-filed inventor’s Declarations submitted in
Appendix B). Appellant argues the claim recitations of information
indicating a position of the at least one aperture, the position being in a range
between a first location where the at least one aperture is at a fully opened
opening of the at least one aperture and a second location where the at least
one aperture is fully closed is supported by the specification disclosure:
If e.g. a moveable window 7 has been opened fully, the sensor 5
sends back the information that the moveable window 7 has
been opened or has an open-position of 100%. If the window 7
has been half-opened, as depicted in FIG. 1, the sensor 5 sends
information to the transceiver 2 which indicates an open-
position of 50%. It is possible that many more open-positions
or opening-status of a moveable window 7 can be reported in a
more fine grained way by the sensor 5 to the transceiver 2.
Appeal Br. 9–10 (quoting Spec. ¶ 25). Appellant argues that this “clearly
conveys to one of skill in the art of computer programming more than
sufficient details for how to make and use the invention since the
claims are not claiming the actual sensor – instead the claims recite
receiving information indicating the position.” Appeal Br. 10.
The Examiner finds:
The Examiner agrees sensors previously existed prior to the
time the application was filed, however, the Specification is
inadequate with regards to USC 112(a) Written Description due
to the lack of detailed disclosure in describing how existing
elements (which are typically not adapted to interface with each
other - a sensor and a radio transmitting entity) are configured
to implement the claimed subject matter and therefore does not
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convey that the inventor(s) had possession of the claimed
invention.
Ans. 3. The Examiner further finds (i) “[t]he Specification fails to disclose
at least one exemplary sensor,” (Ans. 3) and (ii) “[t]he Specification is
inadequate in describing how the general sensor is adapted to communicate
with a radio transmitting entity” (Ans. 4).
Appellant contends: “Appellant is not claiming a sensor. Receiving
information from a sensor such as position information does not require
detailed information of the sensor.” Reply Br. 2. Appellant argues “the
written description requirement does not necessarily require examples (see
Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed.
Cir. 2010)), does not necessarily require actual reduction to practice (see
Ariad 598 F.3d at 1352), [and] does not require any recitation of known
structure (see Falko-Gunter Falkner v. Inglis, 448 F.3d 1357, 1367 (Fed.
Cir. 2006)).” Id.
The Examiner “agrees sensors previously existed prior to the time the
application was filed.” Ans. 3. For example, inventor Furuskär discloses
“page 9 of BMW E70 Power Windows9 describes that the ‘power window
motors are equipped with Hall sensors that generate signals during motor
operation.’” Declaration of inventor Anders Furuskär, 3 (Appendix B). Dr.
Furuskär further declares:
[P]ower windows became so common in most automobiles, that
the U.S. government passed safety regulations starting with the
2008 model year that required automakers to install power

9 (http://www.hmwmotorsports.org/pdf/e70/05a2
E70%20Powet%20Windows.pdf, hereinafter “BMW E70 Power
Windows”). See Declaration of Joachim Sachs (Appendix B).
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window controls that are less likely to be accidentally activated
by children, thereby injuring children. As such, I believe that
power window technology including sensors to determine the
condition of the window was generally known at the time of the
’182 application.
Id. at 5.
We find power windows for automobiles were well-known by the
time of filing of the present application, and that a person of ordinary skill in
the art, given the disclosure of the Specification, would have known how to
select and integrate the appropriate sensor. “The specification need not
disclose what is well-known to those skilled in the art and preferably omits
that which is well-known to those skilled and already available to the
public.” In re Buchner, 929 F.2d 660, 661 (Fed. Cir. 1991). We further find
originally-filed Claim 1 recited, inter alia, “providing at least one sensor (6,
5) operable to sense the condition of the at least one aperture (7, 8),
providing a controller (21) operable to adjust the output power of the radio
transmitting entity (2) in accordance with the sensed condition of the at least
one aperture (7, 8)” which we find evidences that Appellant possessed the
invention at the time of filing. Abstract ’198. Our finding regarding
original claim 1 is further supported in accordance with requirements of 37
C.F.R. § 1.75(d)(1) by the detailed supporting description of the operation of
sensors 5 and 6, which are connected to transceiver 2, as described on page 6
of the originally-filed Specification, at the second and third (unnumbered)
paragraphs.10

10 “Although many original claims will satisfy the written description
requirement,” Ariad, 598 F.3d at 1349, the Patent Rules require:
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In view of the foregoing, we decline to sustain the rejection of Claims
1, 2, 5–11, 13, 14, and 16–21 under 35 U.S.C. § 112 as lacking written
description.

CLAIMS 17–21: INDEFINITENESS.
The preamble of independent Claim 17 recites, inter alia, “[a] radio
transmitting entity comprising an antenna, adapted to transmit a radio
signal.” The body of the claim recites, inter alia, “controlling . . . the output
power of a radio signal transmitted by the antenna.”
Claim 17 thus contains two recitations of “a radio signal” a first
recitation in the preamble, and a second recitation in the body.
The Examiner concludes the recitation “a radio signal” in the body of
the claim is indefinite because it is unclear whether, in view of the indefinite
article “a,” the recitation introduces a second radio signal, or whether the
recitation refers back to the first radio signal introduced in the preamble.
Final Act. 4.
“Appellant disagrees that the language is unclear and respectfully
requests that this rejection be reversed.” Appeal Br. 12. Appellant argues
“[t]he Examiner appears to be breathing life into the pre-amble by requiring
the recitation of ‘the output power of a radio signal transmitted by the

[t]he claim or claims must conform to the invention as set forth
in the remainder of the specification and the terms and phrases
used in the claims must find clear support or antecedent basis in
the description so that the meaning of the terms in the claims may
be ascertainable by reference to the description.
37 C.F.R. § 1.75(d)(1) (emphasis added).

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antenna’ to be changed to ‘the output power of the radio signal transmitted
by the antenna’ due to the language in the pre-amble.” Id. Appellant argues
a person of ordinary skill in the art would understand the recitation. Reply
Br. 5.
A general convention in patent drafting is that a new element or step
is introduced with an indefinite article, i.e., “a” or “an,” and subsequently,
when a previously identified element or step is repeated, it is introduced by a
definite article, i.e., “the” or “said.” See Andrew Chin, The Ontological
Function of the Patent Document, 74 Univ. Pitt. Law Review (Winter 2012)
(citing FABER ON MECHANICS OF PATENT CLAIM DRAFTING § 2:2,
at 2-2 (6th ed. 2009)). We agree with the Examiner that, during prosecution,
it is a best practice to require Applicant/Appellant to remove sources of
ambiguity.
In view of the foregoing, we sustain the rejection of Claims 17–21
under 35 U.S.C. § 112, second paragraph.

CLAIMS 1, 2, 6, 11, AND 17: OBVIOUSNESS OVER ROKUSEK AND SATO.
i. Aperture range.
Independent Claim 1 recites, inter alia:
[W]herein the information associated with the condition of the
at least one aperture comprises information indicating a
position of the at least one aperture, the position being in a
range between a first location where the at least one aperture is
at a fully opened opening of the at least one aperture and a
second location where the at least one aperture is fully closed.
Claim 1 also recites: “wherein controlling the output power comprises
adjusting the output power as a defined function of the position of the at
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least one aperture between the first location and the second location.”
Independent Claims 11 and 17 contain commensurate recitations.
The Examiner finds Rokusek essentially teaches the claims including
teaching “information associated with a condition of the at least one
aperture of the cage from a sensor.” Final Act. 5 (citing Rokusek, ¶ 22)
(“Wireless signal strength information would be associated with a condition
of the vehicle door open/closed status since the opening/close condition of
the door would be affect the wireless signal strength.”). The Examiner
further finds teaches a sensor that determines a fully closed position of a
door, i.e., an endpoint within a range between fully open and fully closed.
Final Act. 7. (citing Rokusek, ¶ 22) (“a vibration or sound corresponding to
that cause by a vehicle door closing may be detected.”).
Appellant contends an endpoint of a range is not within the claimed
range: “[a] door at a fully closed position is not in a range between a first
location where the at least one aperture is at a fully opened opening of the at
least one aperture and a second location where the at least one aperture is
fully closed.” Appeal Br. 14. Appellant argues the cited passage of
Rokusek fails to teach a door in a position intermediate between fully
opened and fully closed. Id.
As an issue of claim construction, the Examiner concludes “a broadest
reasonable interpretation of ‘between a first location and a second location’
is inclusive to the first and second locations.” Ans. 5. In view thereof, the
Examiner finds Appellant’s arguments are not commensurate with the
claims and declines to withdraw the rejections. Id.
Appellant states:
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Claim 1 in May 2017 recited, inter alia, “receiving . . . wherein
the information associated with the condition of the at least one
aperture comprises information indicating a position of the at
least one aperture with regard to an opening of the at least one
aperture and a closing of the at least one aperture”
Appellant admits this recitation includes the fully-opened and fully-closed
positions. Reply Br. 5. Appellant further states:
In November 2017, Claim 1 was further amended to recite, inter
alia, “receiving . . . wherein the information associated with the
condition of the at least one aperture comprises information
indicating a position of the at least one aperture at a first
location between a fully opened opening of the at least one
aperture and a second location where the at least one aperture is
fully closed.”
Appellant argues the November 2017 recitation includes the fully closed
position but not the fully opened position. Reply Br. 6. Appellant further
states:
In January 2018, Claim 1 was further amended to recite
“receiving . . . wherein the information associated with the
condition of the at least one aperture comprises information
indicating a position of the at least one aperture, the position
being in a range between a first location where the at least one
aperture is at a fully opened opening of the at least one aperture
and a second location where the at least one aperture is fully
closed.”
Id. Appellant maintains the “January 2018 recitations . . . are the pending
recitations of Claim 1. . . removed the fully closed position.” Id.
Appellant argues both the fully-opened and the fully-closed positions
of the aperture having been disclaimed by amendment, they may not be
included in a broadest reasonable interpretation of the claims. Reply Br. 6.
Appellant argues Rokusek’s disclosure of the sound made when a door
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closes is unreasonable to teach a position of a door intermediate between a
fully-open and a fully-closed position. Id.
We find Appellant’s Amendment filed January 10, 2018 disclaimed
both the fully-opened and fully-closed positions:
Claims 1 and 11 have been amended to include recitations that
the information associated with the condition of the at least one
aperture further comprises information indicating the position
of the at least one aperture, the position being in a range
between a first location where the at least one aperture is at a
fully opened opening of the at least one aperture and a second
location where the at least one aperture is fully closed. Claim
17 has been added to recite a radio transmitting entity receiving
a position of a window and/or door of a vehicle from at least
one sensor, the position of the window and/door of the vehicle
being in a range between a first location where the window
and/door of the vehicle is at a fully opened opening of the
window and/or door and a second location where the window
and/or door of the vehicle is fully closed and controlling the
output power of a radio signal transmitted by the antenna
responsive to the position of the window and/or door of the
vehicle from the at least one sensor that is received by adjusting
the output power as a defined function of the position of the
window and/or door of the vehicle between the first location
and the second location.
Amendment filed January 19, 2018 (“January Amendment”), 7. Based on
the amended recitations, Appellant disclaimed the endpoints of the range:
[T]he information associated with the condition of the at least
one aperture comprises information indicating a position of the
at least one aperture, the position being in a range between a
first location where the at least one aperture is at a fully opened
opening of the at least one aperture and a second location where
the at least one aperture is fully closed. This indicates the range
does not include the first and second locations.
January Amendment, 12 (present emphasis).
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In response to the January Amendment, the Examiner entered a Non-
Final Action mailed April 10, 2018 (“April Non-Final Act.”). The April
Non-Final continued to find Rokusek teaches whether the vehicle door is
opened or closed and “[b]oth the open and closed position are within the
range of fully opened and fully closed.” April Non-Final Act. 8. And the
Answer maintains that position: “[h]owever a broadest reasonable
interpretation of ‘between a first location and a second location’ is inclusive
to the first and second locations. That is, the claim does not necessarily
exclude the end point of the range.” Ans. 5. Because the Examiner’s
findings are based on disclaimed subject matter, we cannot find them to be
reasonable.
The Examiner also finds Sato also teaches this limitation. Final Act.
5–6. The Examiner finds Sato teaches a control section determines whether
or not a door is closed and when closed, the control section sends a wireless
signal. Id. (citing Sato ¶¶ 37–41). But, as discussed above, the closed
position of the door has been disclaimed. Where a patentee “unequivocally
and unambiguously disavows a certain meaning to obtain a patent, the
doctrine of prosecution history disclaimer narrows the meaning of the claim
consistent with the scope of the claim surrendered.” Biogen Idec, Inc. v.
GlaxoSmithKline LLC, 713 F.3d 1090, 1095 (Fed. Cir. 2013) (citing Omega
Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323, 1326 (Fed. Cir. 2003)).

In view of the foregoing, we decline to sustain the rejection of Claims
1, 2, 6, 11, and 17.

CLAIMS 5 AND 14: OBVIOUSNESS OVER ROKUSEK, SATO, AND MATSUBARA.
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Appellant contends the combination of Rokusek and Sato do not
disclose or suggest all of the recitations of Claim 1, that independent Claims
11 and 17 recite analogous recitations to the recitations of Claim 1, and
therefore, all claims should be allowable. Appeal Br. 18.
The Answer does not make separate findings for the remaining
claims. See Ans. 6–7.
In view of the foregoing, we decline to sustain the rejection of Claims
5 and 14.
CLAIMS 7 AND 8: OBVIOUSNESS OVER ROKUSEK, SATO, AND NGAI.
Appellant contends the combination of Rokusek and Sato do not
disclose or suggest all of the recitations of Claim 1, that independent Claims
11 and 17 recite analogous recitations to the recitations of Claim 1, and
therefore, all claims should be allowable. Appeal Br. 18.
The Answer does not make separate findings for the remaining
claims. See Ans. 6–7.
In view of the foregoing, we decline to sustain the rejection of Claims
7 and 8.
CLAIMS 9 AND 20: OBVIOUS OVER ROKUSEK, SATO, AND KWON.
Appellant contends the combination of Rokusek and Sato do not
disclose or suggest all of the recitations of Claim 1, that independent Claims
11 and 17 recite analogous recitations to the recitations of Claim 1, and
therefore, all claims should be allowable. Appeal Br. 18.
The Answer does not make separate findings for the remaining
claims. See Ans. 6–7.
In view of the foregoing, we decline to sustain the rejection of Claims
9 and 20.
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CLAIM 10: OBVIOUSNESS OVER ROKUSEK, SATO, AND CHANG.
Appellant contends the combination of Rokusek and Sato do not
disclose or suggest all of the recitations of Claim 1, that independent Claims
11 and 17 recite analogous recitations to the recitations of Claim 1, and
therefore, all claims should be allowable. Appeal Br. 18.
The Answer does not make separate findings for the remaining
claims. See Ans. 6–7.
In view of the foregoing, we decline to sustain the rejection of Claim
10.

CONCLUSION

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 5–11,
13, 14,
16–21
112 (1st ¶) Written
Description
1, 2, 5–11,
13, 14,
16–21
17–21 112 (2d ¶) Indefiniteness 17–21
1, 2, 6, 11,
17
103(a) Rokusek, Sato 1, 2, 6, 11,
17
5, 14 103(a) Rokusek, Sato,
Matsubara
5, 14
7, 8 103(a) Rokusek, Sato,
Ngai
7,8
9,20 103(a) Rokusek, Sato,
Kwon
9, 20
10 103(a) Rokusek, Sato,
Chang
10
Overall
Outcome

17–21 1, 2, 5–11,
13, 14, 16

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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).

AFFIRMED IN PART