14582310 - (D) (P.T.A.B. May. 13, 2020)

Alcatel Lucent USA, Inc.

Patent Trials and Appeals BoardMay 13, 2020

14582310 - (D) (P.T.A.B. May. 13, 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. 14/582,310 12/24/2014 Carmine PAGANO 29250-002760-US 1017 30594 7590 05/13/2020 HARNESS, DICKEY & PIERCE, P.L.C. P.O. BOX 8910 RESTON, VA 20195 EXAMINER OHRI, ROMANI ART UNIT PAPER NUMBER 2413 NOTIFICATION DATE DELIVERY MODE 05/13/2020 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): Nokia.IPR@nokia.com dcmailroom@hdp.com jhill@hdp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CARMINE PAGANO and JOHN RUCKI Appeal 2019-001497 Application 14/582,310 Technology Center 2400 Before MICHAEL J. STRAUSS, ADAM J. PYONIN, and RUSSELL E. CASS, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL1 1 We refer to the Specification, filed December 24, 2014 (“Spec.”); the Final Office Action, mailed January 17, 2018 (“Final Act.”); the Appeal Brief, filed August 30, 2018 (“Appeal Br.”); the Examiner’s Answer, mailed October 2, 2018 (“Ans.”); and the Reply Brief, filed December 3, 2018 (“Reply Br.”). Appeal 2019-001497 Application 14/582,310 2 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1–20. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION for all pending claims under 35 U.S.C. § 112(b) pursuant to our authority under 37 C.F.R. § 41.50(b). CLAIMED SUBJECT MATTER According to Appellant, “embodiments relate to a communication system including an antenna and a plurality of multi-band remote radio heads operationally coupled to the antenna.” Abstract. Claim 1, reproduced below with a disputed limitation emphasized in italics, is illustrative of the claimed subject matter: 1. A communication system, comprising: an antenna; and a plurality of multi-band remote radio heads coupled to the antenna; each of the plurality of multi-band remote radio heads being configured to support transmission and reception at two or more frequency bands; and the plurality of multi-band remote radio heads being in a housing. 2 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 Nokia of America Corporation. Appeal Br. 2. Appeal 2019-001497 Application 14/582,310 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Gabriel et al. US 2010/0271985 A1 Oct. 28, 2010 Lemson et al. US 2014/0072064 A1 Mar. 13, 2014 Solondz US 2014/0139395 A1 May 22, 2014 Mori US 2014/0171063 A1 June 19, 2014 REJECTIONS Claims 1–4, 9, and 13–16 stand rejected under pre–AIA 35 U.S.C. § 103(a) as being unpatentable over Lemson and Solondz. Final Act. 2–5. Claims 10–12 stand rejected under pre–AIA 35 U.S.C. § 103(a) as being unpatentable over Lemson, Solondz, and Mori. Final Act. 6–7. Claims 5–8 and 17–20 stand rejected under pre–AIA 35 U.S.C. § 103(a) as being unpatentable over Lemson, Solondz, and Gabriel. Final Act. 7–10. ANALYSIS For the reasons explained below, we determine that claims 1–20 are indefinite. Having so determined, we do not sustain the rejections of those claims under 35 U.S.C. § 103(a) because to do so would require speculation as to the meaning and scope of the claims. See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962) (holding that the Board erred in affirming a rejection of indefinite claims under 35 U.S.C. § 103(a)). Our decision does not reflect an evaluation of the merits of the prior art rejections of claims 1–20. DETERMINATIONS AND ARGUMENTS The Examiner finds that Lemson discloses all limitations of claim 1 except (1) a plurality of multiband remote radio heads (RRHs) coupled to an Appeal 2019-001497 Application 14/582,310 4 antenna and (2) the RRHs being in a housing. Final Act. 2–3. The Examiner applies Solondz for disclosing the noted deficiencies of Lemson. Id. Appellant contends Solondz discloses a distributed antenna including multi-sector antenna structures 700a and 700b that are separate and distinct from each other. Appeal Br. 6. Therefore, Appellant argues, the antennas and their respective RRHs would not be in a common housing. Id. Accordingly, Appellant argues, Solondz fails to teach or suggest the disputed limitation of the plurality of multi-band remote radio heads being in a housing. Id. The Examiner responds, finding Solondz’s multi-sector antenna having first and second multi-band multi-sector antenna structures 700a and 700b mounted to cellular boom 750 discloses the RRHs being in a housing. Ans. 5. According to Appellant, the disputed limitation is described in the Specification (Appeal Br. 3), as follows: Figure 3 is an illustration of a cellular site communication apparatus, according to at least one example embodiment. In Figure 3, the apparatus 300 includes a tower mounting pole 370, on which two substantially identical multi-band remote radio heads 360 are mounted. According to at least one example embodiment, the remote radio heads 360 are coupled to the antenna 310 via a blind-mate RF interface 330, which provides RF connectivity between the remote radio heads 360 and the antenna 310. According to at least one example embodiment, because the wiring network is simplified, the multi-band remote radio heads 360 can be directly mounted on the antenna 310 using the blind-mate style RF connectors 330. Accordingly, the reliability of the system 300 is improved by eliminating or reducing the need for RF cable jumpers between the remote radio heads 360 and the antenna 310. Appeal 2019-001497 Application 14/582,310 5 Spec. ¶ 36 (emphasis added). The referenced Figure 3, with element labels added, appears below. As depicted in Figure 3 and described in paragraph 36, two multi-band RRH’s are mounted to (i) tower mounting pole 370 and (ii) the back of antenna 310. Although not described, it appears from the figure that each of the RRHs is in a separate enclosure. No structure is identified as the claimed housing, either in the drawings, Specification, or otherwise. Although Appellant’s Specification states “Figure 3 is an illustration of cellular site communication apparatus in a housing,” the Specification provides no indication of any element comprising said housing. Spec. ¶ 17. In rejecting claim 1, the Examiner considers RRHs to be in the same housing based on “a single enclosure covering both the first antenna and the second antenna” as depicted in Figures 6 and 7 of Solondz. Ans. 5. The subject disputed limitation recites “the plurality of multi-band [RRHs] being in a housing.” For purposes of this appeal, it is unclear whether this limitation requires both multi-band RRHs to be in a common housing. In the absence of a definition of certain claim terms in the Specification, it is helpful to consult a dictionary.3 Accordingly, a common 3 “Dictionaries or comparable sources are often useful to assist in understanding the commonly understood meaning of words,” and judges Appellant's Figure 3 depicting a cellular site communication apparatus Appeal 2019-001497 Application 14/582,310 6 definition of the word in is “located inside or within.” MERRIAM- WEBSTER’S COLLEGIATE DICTIONARY, 10TH EDITION, p. 585 (Merriam- Webster) (1997). A definition of inside includes “an interior or internal part of place” (id. at 605) and a definition of within includes “in or into the interior” (id. at 1359). A common definition of a housing is “something that covers or protects: as a: a case or enclosure.” Id. at 563. Thus, one reasonable interpretation of the disputed limitation is that the RRHs are located in the interior of a single, common, case or enclosure. Another alternative, however, is that the term “a” in “a housing” means “one or more.” See 01 Communique Lab., Inc. v. LogMeIn, Inc., 687 F.3d 1292, 1297 (Fed. Cir. 2012) (“As a general rule, the words ‘a’ or ‘an’ in a patent claim carry the meaning of ‘one or more.’”). Under this interpretation, the claim limitation at issue could be met by multiple RRHs, each in a separate enclosure. Indeed, Appellant’s Specification appears to disclose only that the RRHs are attached to a common support structure (i.e., a mounting pole) and to a common antenna or antenna enclosure, but not that the RRHs are located in a common housing. Spec. ¶ 36. Rather than a common housing as argued, the RRHs appear to be in separate enclosures. See Fig. 3. “may also rely on dictionary definitions when construing claim terms, so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents.” See Phillips v. AWH Corp., 415 F.3d 1303, 1322-23 (Fed. Cir. 2005)(citations omitted); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 n.6 (Fed. Cir. 1996) (“[T]echnical treatises and dictionaries . . . are worthy of special note. Judges are free to consult such resources at any time . . . and may also rely on dictionary definitions when construing claim terms . . . .”). Appeal 2019-001497 Application 14/582,310 7 Because it is unclear what which of the two possible claim constructions discussed above is correct, and it is unclear what criteria is intended to determine whether the RRHs are in a housing, claim 1 and the other claims on appeal violate the definiteness requirement of 35 U.S.C. § 112(b). See In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014) (per curiam); see also Ex Parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential) (“[I]f a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.”).4 Furthermore, it is unclear what constitutes the claimed antenna and, therefore, what is required by the limitation of “a plurality of multi-band remote radio heads coupled to the antenna.” In connection with this limitation, Appellant contends “combining the distributed antenna system of Lemson with the multiple sector cell-site antenna that includes the first and second antenna structures of Solondz . . . would result in having RRH’s coupled to a plurality of antennas.” Appeal Br. 5–6. According to Appellant, “because the applied references teach RRH’s coupled to a plurality of antennas, the Examiner failed to show that the applied references teach that the RRH's are coupled to ‘the antenna’ and “a plurality of multi-band remote radio heads coupled to the [same] antenna’” as required by the claims. Id. at 6. 4 Because the language of 35 U.S.C. § 112(b) is substantially the same as its predecessor, 35 U.S.C. § 112, second paragraph, the same test for definiteness applies here. Appeal 2019-001497 Application 14/582,310 8 The Examiner responds, directing attention to Solondz Figure 7 depicting first and second multi-band multi-sector antenna structures 700a and 700b, respectively. Ans. 4. Each multi-band multi-sector antenna structure has a high band RRH connected to respective first and second high band antennas and a low band RRH connected to a low band antenna. Id. The Examiner notes this configuration is similar to Appellant’s disclosure of an antenna including a plurality of dual polarized antennas each coupled to a plurality of multi band RRHs. Id. (citing Spec. 12). The Examiner further points to Appellant’s claim 5, which “also recites that the antenna comprises a plurality of dual polarized antennas.” Id. (citing claim 5). Appellant replies, arguing that the “portions of [Appellant’s] disclosure cited by the Examiner describe an embodiment of a single antenna element, such as antenna 210 shown in Figure 2, that may include a plurality of dual-polarized antennas.” Reply Br. 3. Appellant further argues that these antennas are different from the “separate and distinct” antennas disclosed by Solondz. Id. Appellant’s claims fail to recite with sufficiently clarity the meaning of the term “antenna,” and specifically the difference between one “antenna” and “multiple antennas.” When an antenna structure is made up of multiple antennas, it is unclear what criteria determines when component antennas constitute an overall, single antenna or whether they are instead multiple antennas. That is, in attempting to construe Appellant’s claims, we find insufficient disclosure concerning how to determine whether two antennas are separate, as Appellant argues is disclosed by Solondz, or constitute a single antenna, as Appellant argues is required by the claims. Accordingly, it is unclear what is meant by a plurality of multi-band remote radio heads Appeal 2019-001497 Application 14/582,310 9 coupled to “the antenna” in claim 1. Therefore, for this additional reason, claim 1 is rendered indefinite. Before a proper review of the rejection under § 103(a) can be conducted, the subject matter encompassed by the claim must be reasonably understood without resort to speculation. See In re Steele, 305 F.2d at 862 (A prior art rejection cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning the meaning of claim language); see also In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“If no reasonably definite meaning can be ascribed to certain terms in the claim, the subject matter does not become obvious — the claim becomes indefinite”). Therefore, we do not assess the merits of the rejections of claims 1–20 under 35 U.S.C. § 103(a); rather, pursuant to our authority under 37 C.F.R. § 41.50(b), we reverse, pro forma, the claim rejections under 35 U.S.C. § 103(a) and enter a new ground of rejection of the claims as being indefinite under 35 U.S.C. § 112(b). This determination does not reflect on the merits of the underlying rejection based upon 35 U.S.C. § 103(a). DECISION We REVERSE the Examiner’s decision rejecting claims 1–20 under 35 U.S.C. § 103(a). We ENTER A NEW GROUND OF REJECTION for claims 1–20 under 35 U.S.C. § 112(b). Appeal 2019-001497 Application 14/582,310 10 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1-4, 9, 13– 16 103 Lemson, Solondz 1–4, 9, 13–16 10–12 103 Lemson, Solondz, Moru 10–12 5–8, 17–20 103 Lemson, Solondz, Gabriel 5–8, 17– 20 1–20 112(b) Indefiniteness 1–20 Overall Outcome 1–20 1–20 This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been Appeal 2019-001497 Application 14/582,310 11 misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in MPEP § 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). REVERSED; 37 C.F.R. § 41.50(b)