SMARTSKY NETWORKS LLC

Patent Trials and Appeals Board

Jul 8, 2020

15208738 - (D) (P.T.A.B. Jul. 8, 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.
15/208,738 07/13/2016 Douglas Hyslop 738233/09069 5592
148433 7590 07/08/2020
Burr Forman LLP
dba Burr Forman McNair
Bank of America Plaza
101 South Tryon Street, Suite 2610
Charlotte, NC 28280
EXAMINER
CHEN, ZHITONG
ART UNIT PAPER NUMBER
2649
NOTIFICATION DATE DELIVERY MODE
07/08/2020 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):
mcnairip@mcnair.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DOUGLAS HYSLOP,
GERARD JAMES HAYES,
and ELBERT STANFORD ESKRIDGE JR.
____________

Appeal 2019-001887
Application 15/208,738
Technology Center 2600
____________

Before KALYAN K. DESHPANDE, CHARLES J. BOUDREAU,
and SHARON FENICK, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–6, 8–16, and 18–22, which are all of
the pending claims. Claims 7 and 17 have been cancelled. Appeal Br. 15–
16 (Claims App.). We have jurisdiction under 35 U.S.C. § 6(b)(1).
We AFFIRM-IN-PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies SmartSky Networks, LLC as the real
party in interest. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
Appellant’s invention “generally relate[s] to air-to-ground (ATG)
wireless communications and, more particularly, relate[s] to employing
beamforming for antennas used for ATG communications.” Spec. ¶ 1.
Claims 1, 11, and 21 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal:
1. A base station within a network for providing air-to-ground
(ATG) wireless communication in various cells, the base station
comprising:
an antenna array defining a plurality of wedge shaped
ATG communication sectors having respective widths defined in
azimuth;
a beamforming control module configured to
communicate with the antenna array via a first RF chain to
perform beamforming defining traffic channel beams having a
first width, and a second RF chain to perform beamforming
defining control channel beams having a second width, the
second width being greater than the first width, and
a remote radio head disposed between the antenna array
and the beamforming control module,
wherein the remote radio head receives location
information to enable the remote radio head to employ the first
RF chain to provide the traffic channel beams to an aircraft while
tracking the aircraft.
Appeal Br. 14 (Claims App.).
REJECTIONS
The Examiner rejects claims 1–6, 8–16, and 18–22 under 35 U.S.C.
§ 112(a) or pre-AIA 35 U.S.C. § 112, first paragraph as failing to comply
with the written description requirement. Final Act. 3–4.
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The Examiner rejects claims 1–6, 8–16, and 18–20 under 35 U.S.C.
§ 103 as being unpatentable over Hyslop,2 Maltsev,3 Moffatt,4 Merkel,5 and
Jalali.6 Final Act. 4–12.7
The Examiner rejects claim 21 under 35 U.S.C. § 103 as being
unpatentable over Hyslop, Stirling-Gallacher,8 and Chen.9 Final Act. 13–14.
The Examiner rejects claim 22 under 35 U.S.C. § 103 as being
unpatentable over Hyslop, Maltsev, Moffatt, Merkel, Jalali, and Wang.10
Final Act. 12–13.
OPINION
Rejections Under 35 U.S.C. § 112(a)
Claims 1–6, 8–16, 18–20, and 22
The Examiner determines that claims 1–6, 8–10, and 22 lack written
description support for “a remote radio head disposed between the antenna
array and the beamforming control module,” as recited in independent claim

2 Hyslop et al., US 2014/0274075 A1 (pub. Sept. 18, 2014).
3 Maltsev et al., US 2014/0235287 A1 (pub. Aug. 21, 2014).
4 Moffatt et al., US 2016/0099769 A1 (pub. Apr. 7, 2016).
5 Merkel et al., US 2017/0324454 A1 (pub. Nov. 9, 2017).
6 Jalali et al., US 2012/0200458 A1 (pub. Aug. 9, 2012).
7 Although the Examiner lists claims 1–6, 9–16, and 18–20 as the rejected
claims (Final Act. 4), page 10 of the Final Office Action shows that claim 8
is also rejected.
8 Stirling-Gallacher et al., US 2014/0050280 A1 (pub. Feb. 20, 2014).
9 Chen et al., US 2016/0099761 A1 (pub. Apr. 7, 2016).
10 Wang et al., US 2015/0358791 A1 (pub. Dec. 10, 2015).
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1. Final Act. 3. The Examiner also determines that claims 11–16 and 18–20
lack written description support for “a remote radio head disposed between
the beamforming control module and the first and second antenna arrays,” as
recited in independent claim 11. Id.
Appellant argues that the Examiner has erred because “FIG. 3 clearly
shows the remote radio head (element 260) between the beamforming
control module (element 300) and the antenna array (element 250).” Appeal
Br. 5 (emphasis omitted).
We agree with Appellant that Figure 3 shows remote radio head 260
connected between antenna array 250 and beamforming control module 300
and provides written description support for the claim limitations of the
remote radio head being “disposed between” the antenna array and the
beamforming control module. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d
1555, 1565 (Fed. Cir. 1991) (“drawings alone may provide a ‘written
description’ of an invention as required by § 112”); see also Spec. ¶ 28
(identifying, with reference to Figure 3, “the beamforming control module
300” which “may interact with the antenna array 250 via the RRH 260”).
While the Examiner finds that Figure 3 “is a circuit diagram” that
“does not imply nor give the meaning of a specific physical arrangement”
(Ans. 2 (citing Spec. ¶¶ 12, 20, 27, 51)), we agree with Appellant that the
claim language “disposed between” does not require, and the Specification
need not support, that the remote radio head is physically arranged or
positioned between the antenna array and the beamforming control module
(see Reply Br. 2–3).
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Accordingly, we do not sustain the Examiner’s rejection of claims 1–
6, 8–16, 18–20, and 22 under 35 U.S.C. § 112(a) as failing to comply with
the written description requirement.
Claim 21
The Examiner determines that independent claim 21 lacks written
description support for “a first RF chain to perform beamforming defining
only traffic channel beams having a first width, and a second RF chain to
perform beamforming defining only control channel beams having a second
width.” Final Act. 4 (emphases added).
Appellant argues that the Specification implies the first RF chain is
used only for defining traffic channel beams because it “does not describe
the first RF chain being used for defining any other channel beams,” and
implies the second RF chain is used only for defining control channel beams
because it “does not describe the second RF chain being used for any other
channel beams.” Appeal Br. 5–6 (citing Spec. ¶ 29); Reply Br. 3.
According to Appellant, “the fact that the specification only describes the
use of each channel in a particular way is sufficient support for claiming
such an exclusive use of each channel even if the specification does not
explicitly state that the channel can ‘only’ be used in that way.” Reply Br. 4.
The portion of the Specification cited by Appellant provides that “[a]
first RF chain 325 may be provided to the antenna array 250 to direct
formation of traffic channel beams 340” and “a second RF chain 335 may be
provided to the antenna array 250 to direct formation of control channel
beams 350.” Spec. ¶ 29. We are not persuaded by Appellant’s argument
that one of ordinary skill in the art would understand this disclosure to
preclude using the first RF chain to define any beams other than traffic
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channel beams, or preclude using the second RF chain to define any beams
other than control channel beams, as claim 21 does. See Reply Br. 4; Appeal
Br. 6.
Accordingly, we sustain the Examiner’s rejection of claim 21 under
35 U.S.C. § 112(a) as failing to comply with the written description
requirement.
Rejections Under 35 U.S.C. § 103
Claims 1–6, 8–16, 18–20, and 22
The Examiner determines that claims 1–6, 8–16, and 18–20 would
have been obvious over a combination of Hyslop, Maltsev, Moffatt,
Merkel,11 and Jalali. Final Act. 4–12. The Examiner further determines that
claim 22, which depends from independent claim 1, would have been
obvious over those references combined with Wang. Final Act. 12–13.
Appellant argues that the Examiner fails to provide a motivation to
combine Jalali with the other cited references. Appeal Br. 8.
We agree with Appellant that the Examiner fails to establish a prima
facie case of obviousness. “[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418
(2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). “In
practice, this requires . . . ‘explain[ing] the reasons one of ordinary skill in

11 Merkel has a filing date of March 14, 2017, which is after the July 13,
2016 filing date of the instant application. On its face, it appears that Merkel
does not qualify as prior art to the claimed invention.
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the art would have been motivated to select the references and to combine
them to render the claimed invention obvious.’” Kahn, 441 F.3d at 986
(quoting In re Rouffet, 149 F.3d 1350, 1359 (Fed. Cir. 1998)). In combining
Jalali with the other cited references, the Examiner states:
Jalali teaches:
wherein the remote radio head receives location
information to enable the remote radio head to employ the first
RF chain to provide the traffic channel beams to an aircraft while
tracking the aircraft (Jalali: [0056], an aircraft sends its position
info to the ATG station periodically and the ground beam may
be adjusted using these info to communicate with the aircraft).
Final Act. 7 (emphasis omitted). The Examiner finds that “[a]ll of cited
references are in multi-beam antenna array system for wireless
communication to improve communication quality” and concludes that it
would have been obvious to one of ordinary skill to combine the teachings
of the references. Ans. 6. A finding that all of the cited references are in the
same technological field is, by itself, insufficient to support the conclusion
of obviousness. The Examiner fails to provide any reason that would have
prompted a person of ordinary skill in the art to combine the teachings of
Jalali with Hyslop, Maltsev, Moffatt, and Merkel.
Accordingly, we do not sustain the Examiner’s § 103 rejection of
claims 1–6, 8–16, and 18–20 as being unpatentable over Hyslop, Maltsev,
Moffatt, Merkel, and Jalali, or of claim 22 as being unpatentable over
Hyslop, Maltsev, Moffatt, Merkel, Jalali, and Wang.
Claim 21
The Examiner cites Stirling-Gallacher for “a beamforming control
module configured to communicate with the antenna array via a first RF
chain to perform beamforming defining only traffic channel beams having a
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first width, and a second RF chain to perform beamforming defining only
control channel beams having a second width,” as recited in independent
claim 21. Final Act. 13 (citing Stirling-Gallacher Figs. 1–4, ¶¶ 41–54).
Specifically, the Examiner finds that Stirling-Gallacher teaches a “multi-
beam array antenna system for wireless communication with multiple RF
chains” (Ans. 8 (citing Stirling-Gallacher Figs. 1–5)), and that “whether a
RF chain is designated as traffic only channel or control only channel is a
design choice as each RF chain can be used as control, data and shared
control/data channel/beam” (Final Act. 13–14 (emphasis omitted)).
Appellant argues that Stirling-Gallacher “merely shows a plurality of
RF chains” and “fails to teach or suggest . . . one RF chain for traffic channel
beams and one RF chain for control channel beams.” Appeal Br. 11.
Appellant further argues that the Examiner “fails to provide evidence that
the specification of different RF chains for respective different purposes
(i.e., one for control channel beams and one for traffic channel beams) in the
manner claimed is a known alternative to designs in the prior art,” and “fails
to provide any convincing line of reasoning as to why claim 21 involves
only obvious design choice.” Appeal Br. 12.
We agree with Appellant. Design choice may be an acceptable
rationale for an obviousness rejection when a claimed product merely
arranges known elements in a configuration recognized as functionally
equivalent to a known configuration. See In re Kuhle, 526 F.2d 553, 555
(CCPA 1975) (finding that the particular placement of an electrical contact
was an obvious matter of design choice). While the Examiner finds that
“Stirling-Gallacher’s RF chains enable both traffic and control data” and that
“one or combination of one or more RF chains can be configured to be
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traffic channel only, control channel only or time multiplexed traffic channel
and control channel per applications” (Ans. 8) (emphasis added), the
Examiner has not provided persuasive evidence, and we have no basis to
discern, that designating the first RF chain for only traffic channel beams
and the second RF chain for only control channel beams was a
rearrangement recognized in the art as functionally equivalent to the
disclosure of Stirling-Gallacher or other known RF chain configurations.
Accordingly, we do not sustain the Examiner’s § 103 rejection of
claim 21 as being unpatentable over Hyslop, Stirling-Gallacher, and Chen.
CONCLUSION
The Examiner’s rejection of claims 1–6, 8–16, 18–20, and 22 under
35 U.S.C. § 112(a) is reversed.
The Examiner’s rejection of claim 21 under 35 U.S.C. § 112(a) is
affirmed.
The Examiner’s rejections of claims 1–6, 8–16, and 18–22 under
35 U.S.C. § 103 are reversed.

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DECISION SUMMARY
In summary:

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).

AFFIRMED-IN-PART

Claims
Rejected 35 U.S.C. §
References/
Basis Affirmed Reversed
1–6, 8–16,
18–20, 22
112(a) Written
Description
1–6, 8–16,
18–20, 22
21 112(a) Written
Description
21
1–6, 8–16,
18–20
103 Hyslop, Maltsev,
Moffatt, Merkel,
Jalali
1–6, 8–16,
18–20
21 103 Hyslop, Stirling-
Gallacher, Chen
21
22 103 Hyslop, Maltsev,
Moffatt, Merkel,
Jalali, Wang
22
Overall
Outcome
21 1–6, 8–16,
18–20, 22