QUALCOMM Incorporated

Patent Trials and Appeals Board

Jul 21, 2021

2020001534 (P.T.A.B. Jul. 21, 2021)

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.
15/867,530 01/10/2018 Amichai SANDEROVICH 171263US 9484
15055 7590 07/21/2021
Patterson + Sheridan, L.L.P.
Qualcomm
24 Greenway Plaza, Suite 1600
Houston, TX 77046
EXAMINER
HAIDER, SYED
ART UNIT PAPER NUMBER
2633
NOTIFICATION DATE DELIVERY MODE
07/21/2021 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):
PAIR_eOfficeAction@pattersonsheridan.com
ocpat_uspto@qualcomm.com
qualcomm@pattersonsheridan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMICHAI SANDEROVICH,
ASSAF YAAKOV KASHER, and
ALECSANDER PETRU EITAN
Appeal 2020-001534
Application 15/867,530
Technology Center 2600
Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
LARRY J. HUME, Administrative Patent Judges.
DIXON, 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 1–4, 6, 7, 9–11, 13, 14, 46, and 50. See
Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42 (2018). Appellant identifies the real party in interest as
QUALCOMM Incorporated. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claims are directed to an efficient beamforming technique. Claim
1, reproduced below, is illustrative of the claimed subject matter:
1. An apparatus for wireless communications, comprising:
a processing system configured to generate a first frame
having a plurality of beamforming training fields to be output for
transmission to at least one wireless device using a directional
transmit antenna mode and an indication whether the at least one
wireless device is to be in an Omni-directional receive antenna
mode to receive the plurality of beamforming training fields; and
a first interface configured to output the first frame for
transmission.
REFERENCES
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Maltsev, Jr. US 2017/0079031 A1 Mar. 16, 2017
Genossar US 2018/0063299 A1 Mar. 1, 2018
Irie US 2018/0219597 A1 Aug. 2, 2018
REJECTION2
Claims 1–4, 9–11, 46, and 50 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Irie and further in view of Genossar. Final Act. 3.
Claims 6, 7, 13, and 14 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Irie, Genossar, and Maltsev. Final Act. 7.

2 Claims 5, 8, 12, and 15 stand objected to as being dependent upon a
rejected base claim, but would be allowable if rewritten in independent form
including all of the limitations of the base claim and any intervening claims.
Final Act. 10. The Examiner has withdrawn the obviousness rejection of
claims 1, 9, and 46 based upon the combination of Liu (US 9,178,593 B1,
Nov. 3, 2015) and Jia (US 2014/0055302 A1, Feb. 27, 2014). Final Act. 9;
Ans. 15.
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OPINION
PRINCIPLES OF LAW
“[W]hen the prior art teaches away from combining certain known
elements, discovery of a successful means of combining them is more likely
to be nonobvious.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
“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.” In re Kahn, 441 F.3d 977, 990
(Fed. Cir. 2006).
“[T]he ‘mere disclosure of alternative designs does not teach away’”
and “just because better alternatives exist in the prior art does not mean that
an inferior combination is inapt for obviousness purposes.” In re Mouttet,
686 F.3d 1322, 1334 (Fed. Cir. 2012).
Although a reference that teaches away is a significant factor to
be considered in determining unobviousness, the nature of the
teaching is highly relevant, and must be weighed in substance.
A known or obvious composition does not become patentable
simply because it has been described as somewhat inferior to
some other product for the same use.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Where “the problem is known, the possible approaches to solving the
problem are known and finite, and the solution is predictable through use of
a known option,” a solution that is obvious to try may indeed be obvious.
Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1351 (Fed. Cir. 2008) (citing
KSR, 550 U.S. at 421). Moreover, a finding of obviousness under the
“obvious to try” standard “does not require absolute predictability of success
. . . all that is required is a reasonable expectation of success.” In re Kubin,
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561 F.3d 1351, 1360 (Fed. Cir. 2009) (emphasis, internal quotation, and
bracketed alteration omitted) (quoting In re O’Farrell, 853 F.2d 894, 903–04
(Fed. Cir. 1988)).

Independent Claims 1, 9, and 46
Appellant does not advance separate arguments in support of the
patentability of any particular claim or claim grouping. Accordingly, we
exercise our authority under 37 C.F.R. § 41.37(c)(1)(iv) and group
independent claims 9 and 46 with representative claim 1.3 Arguments which
Appellant could have made but did not make in the Brief are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(iv).
With respect to representative independent claim 1, Appellant argues
that independent claim 1 is directed to claim 1 is directed to: "a first frame
having a plurality of beamforming training fields to be output for
transmission to at least one wireless device using a directional transmit
antenna mode” , and further argues that paragraph 136 of the Irie reference
describes a base station that generates a first training frame that includes a
field indicating that the first training frame is transmitted from the base
station without narrowing down the beam (i.e., the first training frame is
transmitted in omnidirectional mode, not directional). Appeal Br. 7.
Appellant also argues that paragraphs 59 and 71 of the Irie reference
describe a base station having a beam control block that performs beam

3 We have selected independent claim 1 because Appellant has argued this
claim, but we note that independent claim 9 is slightly broader because it
does not expressly recite “directional transmit antenna mode,” as argued by
Appellant.
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control for a transmitter and a receiver of the base station, and the Irie
reference states that the term “beam control” relates to controlling the beams
of the transmitter and receiver to a directional beam, or an omni or quasi-
omni beam. Appeal Br. 8.
Appellant also contends the only other mention of directional
communication in the Irie reference is with respect to directional reception,
wherein the base station sets a receiver beam to a directional beam when it
receives a response to the first training frame. Appeal Br. 8.
Appellant further contends paragraph 138 of the Irie reference merely
describes the first training frame as including an indication of how the frame
was transmitted rather than claim 1’s recitation of “a first frame having . . .
an indication whether the at least one wireless device is to be in an
Omni-directional receive antenna mode to receive.” Appeal Br. 9; see also
Reply Br. 4–5.
Appellant also contends the Examiner provided no evidence that ties
the “directional beam” of the Irie reference with transmission of a
beamforming training frame where the Irie reference describes beam control
and directional beams, their context is limited to receive beams, not transmit
beams, and although the Irie reference also describes a beamforming training
frame, its context is limited to transmission over an omni-directional beam,
not a directional transmit antenna mode. Reply Br. 5.
Appellant argues that paragraphs 59 and 71 of the Irie reference
merely describe a beam control block that controls the beams of a radio
transmitter and radio receiver to directional, omni, or quasi-omni beams, and
the beams of the radio transmitter and radio receiver of the Irie reference are
controlled by a network setting and a functional hardware element where the
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beam controls in the Irie reference are not based on an indication of the
frame, as claimed in independent claim 1. Appeal Br. 9.
Appellant further argues that the Examiner’s proposal to combine the
Irie and Genossar references does not make technical sense, and can only be
the result of improper hindsight because it is unclear how the combination of
the Irie and Genossar references would function without taking into account
knowledge gleaned only from Appellant’s disclosure. Appeal Br. 10; see
also Reply Br. 6–7. Appellant argues the Irie reference is completely silent
as to how adding beamforming training fields to a frame could or would be
handled in the system of Irie, and nowhere does either Genossar or Irie
disclose that for a frame that includes multiple beamforming training fields,
the frame also includes an indication of how to receive the multiple
beamforming training fields, and that a receiving device should, based on
that indication, receive the multiple beamforming training fields. Appeal
Br. 10; see also Reply Br. 6–7.
In the Examiner’s Answer, the Examiner further explains the
interpretation of the Irie reference as teaching or suggesting the use of
directional antenna mode and/or omni-directional antenna mode for both
transmission and reception. Ans. 9–10.
The Examiner also finds the Irie reference discloses in paragraphs 59,
71, and 138, that the generated frame includes an indication not only how
the frame is transmitted, but also how the frame will be received at the
receiving terminal 102 which is further shown in Figure 6:102:105:106, and
the Examiner finds that Appellant admitted that “the base station of Irie
describes a beam control mechanism that can control transmitter and
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receiver beams of Irie to be directional or omni-directional.” Ans. 9
(emphasis omitted).
We agree with the Examiner that paragraph 59 of the Irie reference
discloses a beam control mechanism that not only controls transmitter and
receiver beams but also controls a frame generator as well and the beam
control block 105 not only instructs the frame generator to generate a frame
but also instructs the receiver 102 to receive the generated frame through
added indication field in the frame either using directional antenna mode
and/or omni-directional antenna mode. Ans. 10. Additionally, we agree
with the Examiner that paragraph 138 of the Irie reference discloses “the
field added to the frame for beamforming training transmitted by the AP
may be a field indicating that for example, transmission is performed with
quasi-omni or a field indicating the wireless capability of the AP.” Ans. 10
(emphasis omitted).
As a result, we further agree with the Examiner that a frame generated
by the frame generator 106 includes the “indication field” based on wireless
capability of AP (Access Point) as being shown in Figure 6 which includes
transmitter 101 and receiver 102 under the instructions received from the
beam control block 105 and from paragraph 59 it is also clear that “the term
‘beam control’ refers to controlling the beams of the radio transmitter 101
and the radio receiver 102 to a ‘directional’ beam or ‘omni’ and ‘quasi-
omni’ beams.” Ans. 9–10.
The Examiner reasons that the purpose of adding an indication field in
the frame is to provide information to the receiver of not only how the frame
is transmitted, but also how to receive the frame transmitted from the
transmitter, as supported by paragraph 138 of the Irie reference. Ans. 10.
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The Examiner further explains that transmitter 101 and receiver 102
both need to know each other’s capability to communicate with each other,
which is being done in this case through the “indication filed” of the frame
generated by frame generator 105. Ans. 10.
The Examiner finds that transmission is disclosed by quasi-omni
beams, but transmission can be performed based on a field indicating the
wireless capability of the AP and, from paragraph 59 of Irie, the transmitter
and receiver are both capable of performing transmission and reception
based on a “directional” beam or “omni” and “quasi-omni” beams under the
control of beam control block which instructs frame generator 106 to
generate a frame with added indication of transmitter and receiver (AP
capability). Ans. 10. We agree with the Examiner that the Irie reference
teaches or suggests that either the transmission or reception can be by any of
the three types of beams disclosed.
The Examiner also explains the prior art rejection with regards to the
combination of the Irie and Genossar references. Ans. 12–14. In response
to Appellant’s arguments regarding one or more beam forming training
fields, the Examiner finds that the cited combination is reasonable and
proper because the Irie reference discloses a frame having a beamforming
training field and further discloses how the frame will be used, and the
Examiner relied on the Genossar reference to teach and suggest the frame
having a plurality of beamforming training fields because paragraph 123
discloses that “frame comprises [. . .] one or more beamforming training
fields.” Ans. 12.
In response to Appellant’s argument that the Examiner relies on
improper hindsight reconstruction, the Examiner clarifies the findings relied
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upon for the teachings of the claimed invention and provides rational
underpinnings for the combination of the teachings from the two prior art
references. Ans. 13–14.
Appellant generally argues that the Examiner’s proposal to combine
the teachings of the Irie and Genossar references does not make technical
sense and can only be the result of improper hindsight. Reply Br. 6–7.
In reviewing the record here, we are not persuaded that the
Examiner’s rejection is based on improper hindsight because Appellant does
not point to any evidence of record that shows combining the teachings of
the cited references in the manner suggested by the Examiner would have
been “uniquely challenging or difficult for one of ordinary skill in the art” or
would have “represented an unobvious step over the prior art.” Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
(citing KSR, 550 U.S. at 418).
In addition, Appellant has not identified any knowledge gleaned only
from the present application that was not within the level of ordinary skill at
the time the claimed invention was made. See McLaughlin, 443 F.2d at
1395. Moreover, Appellant has not provided any objective evidence of
secondary considerations (e.g., long-felt but unmet need, commercial
success, or unexpected results), which our reviewing court guides “operates
as a beneficial check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese &
Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
Appellant relies upon their Specification at paragraph 50 where “a
single frame containing multiple training fields can be transmitted such that
each training field is sent in a different direction (e.g., via directional
beams).” Reply Br. 7. Appellant further contends that the Examiner has not
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indicated any benefit from the combination. Reply Br. 7. We find
Appellant’s argument unavailing, because Appellant does not address the
proffered rationale provided by the Examiner, and merely addresses the
limited example disclosed in the Irie reference. Moreover, Appellant’s
argument is unpersuasive because the claims do not recite “a single frame
containing multiple training fields can be transmitted such that each training
field is sent in a different direction.” Reply Br. 7.
Appellant argues the Examiner provided no evidence that ties the
“directional beam” of Irie with transmission of a beamforming training
frame, and although Irie describes beam control and directional beams, their
context is limited to receive beams, not transmit beams. Reply Br. 5. We
find Appellant’s argument to be unpersuasive because it does not address the
rejection as set forth by the Examiner with regards to the breadth of the
disclosure of the Irie reference, which teaches or suggests the use of
directional, quasi-omni, and omni-directional beams with both transmit and
receive functionality. However, Appellant merely argues the single example
discussed in the Irie reference, whereas the Examiner relies upon the broader
teachings and suggestions of the Irie reference in combination with the
Genossar reference.
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). We agree with the Examiner and find
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Appellant’s arguments do not show error in the Examiner’s factual findings
or conclusion of obviousness of representative independent claim 1.
Appellant argues the Examiner provides no evidence that ties the
“directional beam” of Irie with transmission of a frame that contains a
beamforming field. Reply Br. 6. We find the Examiner relied upon the
combination of the Irie and Genossar references to teach or suggest the
claimed limitation, and Appellant’s argument does not address the rejection
as proffered by the Examiner.
Because Appellant has not shown error in the Examiner’s factual
findings or legal conclusion of obviousness of representative independent
claim 1, we sustain the obviousness rejection of claim 1 and its dependent
claims, not separately argued, and independent claims 9 and 46, not
separately argued, and their respective dependent claims.
CONCLUSION
We affirm the Examiner’s obviousness rejections of claims 1–4, 6, 7,
9–11, 13, 14, 46, and 50.

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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 9–11,
46, 50
103 Irie, Genossar 1–4, 9–11,
46, 50

6, 7, 13, 14 103 Irie, Genossar,
Maltsev
6, 7, 13, 14
Overall
Outcome
1–4, 6, 7, 9–
11, 13, 14,
46, 50

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