Baker, Matthew P.J. et al.

Patent Trials and Appeals Board

Nov 21, 2019

12293289 - (R) (P.T.A.B. Nov. 21, 2019)

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.
12/293,289 09/17/2008 Matthew P.J. Baker 2006P00916WOUS 9360
24737 7590 11/21/2019
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
TRAN, PAUL P
ART UNIT PAPER NUMBER
2647
NOTIFICATION DATE DELIVERY MODE
11/21/2019 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):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MATTHEW P.J. BAKER and TIMOTHY J. MOULSLEY
____________________

Appeal 2018-000390
Application 12/293,289
Technology Center 2600
____________________

Before JOSEPH L. DIXON, JAMES W. DEJMEK, and
MATTHEW J. McNEILL, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge
JAMES W. DEJMEK.

Opinion Dissenting filed by Administrative Patent Judge
JOSEPH L. DIXON.

DEJMEK, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
On August 13, 2018, Appellant1 timely filed a Request for Rehearing
(“Req. Reh’g”) under 37 C.F.R. § 41.52 of our Decision, mailed June 11,
2018 (Decision), in which we affirmed the Examiner’s decision rejecting
claims 1–17 under pre-AIA 35 U.S.C. § 103(a). On September 5, 2018 we

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2017). Appellant identifies
Koninklijke Phillips N.V. as the real party in interest. Appeal Br. 3.
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issued our Decision on the Request for Rehearing (“Reh’g Dec.”) wherein
we considered Appellant’s arguments but declined to modify our original
Decision. Reh’g Dec. 9. Appellant appealed to the Court of Appeals for the
Federal Circuit and filed an Opening Brief on February 15, 2019. As set
forth, in the Opening Brief, Appellant identified errors in the Rehearing
Decision in which we inadvertently attributed certain teachings of Yoon to
Takano. See, e.g., Opening Br. 33–35 (citing Reh’g Dec. 4). Additionally,
Appellant sets forth new arguments disputing the proffered rationale to
combine the teachings of Takano and Yoon. See, e.g., Opening Br. 36, 45–
46.
On March 19, 2019, the Office of the Solicitor for the United States
Patent and Trademark Office (“Solicitor’s Office”) filed a Motion for
Remand to allow the Board to “vacate the current rehearing decision and . . .
promptly issue a revised rehearing decision that corrects the error and
reconsiders the obviousness of the claimed invention.” Mot. 2. Moreover,
in the Reply in support of the Motion for Remand, filed April 2, 2019, the
Solicitor’s Office indicated that once the Board has an opportunity to correct
its error, the Board will “reevaluate the obviousness of the claimed invention
in light of that correction.” Reply 3.
The Federal Circuit granted the Motion for Remand on April 24,
2019. The court indicated that “remand would best serve judicial economy.”
Order 2.
Consistent with the court’s Order, on June 5, 2019 we vacated our
previous Decision on Rehearing and authorized Appellant to file a new
Request for Rehearing within two months. On August 5, 2019, Appellant
timely filed a Second Request for Rehearing (Second Req. Reh’g).
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Consistent with the representations made to the court by the
Solicitor’s Office and the court’s Order, we have reconsidered our Decision
in light of Appellant’s Second Request for Rehearing. As set forth below,
we grant Appellant’s Second Rehearing Request.

DISCUSSION
The gravamen of Appellant’s rehearing request is that the Board erred
in adopting the Examiner’s rationale for the proposed combination of
Takano and Yoon. Second Req. Reh’g 4–5, 7–11. As set forth in the Final
Rejection, the Examiner determined the ordinarily skilled artisan would have
been motivated to combine the teachings of Yoon and Takano to “improve
the reliability of uplink transmission [and] to improve channel quality
measurement by reducing transmission delay for the communication
system.” Final Act. 6 (citing Yoon ¶ 19).
On appeal to the Board, the totality of Appellant’s argument regarding
the motivation to combine Takano and Yoon is set forth on pages 12 through
14. See Appeal Br. 12–14. Specifically, within a section entitled “No
Motivation to Combine Takano and Yoon,” Appellant argues that Yoon
(alone, not in combination with Takano) requires a specific request for a
channel quality indication (CQI) report for every CQI transmission—the
problem allegedly addressed by Appellant’s claim 1. Appeal Br. 12–13.
Thus, Appellant argues “Yoon teaches away” from the claimed invention
and “the combination lacks a rational basis given that one of ordinary skill in
the art would not look to Yoon to solve the problem recognized by
Appellant[].” Appeal Br 13. Appellant further asserts neither reference
recognizes the problem addressed by Appellant. Appeal Br. 13. Appellant
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alleges Takano “does not deal with channel quality at all” and that the
Examiner’s proposed modifications “are not at all suggested or contemplated
by either reference and are only based on improper hindsight
reconstruction.” Appeal Br. 13–14.
In the Reply Brief, Appellant argues there is no rationale to combine
Takano and Yoon because “Takano is completely silent and unconcerned
with CINR [(carrier to interference noise ratio)] and CQI values” and Yoon
uses a Request-Response mechanism to transmit CINR values to the base
station. Reply Br. 8–9. Also, Appellant raises—for the first time—that the
Examiner’s proposed combination of Takano and Yoon frustrates the
purpose of Yoon. Reply Br. 9–10. In particular, Appellant argues “Yoon’s
purpose is to avoid the waste of resources” and adding the RTS/CTS
procedure of Takano to Yoon would waste the very resources Yoon
proposes to save. Reply Br. 9–10.
Only after we issued the Decision, in the First Request for Rehearing,
Appellant asserts for the first time that the Examiner’s reasoning to combine
the teachings of Takano and Yoon to improve reliability of the uplink by
reducing transmission delay “has not been adequately substantiated by any
explanation as to how and why one of ordinary skill in the art would modify
Takano by including a CQI report from the teachings of Yoon.” Req.
Reh’g 4. Moreover, Appellant questions “how including a CQI report, as
generally described by Yoon, would improve reliability and reduce the delay
in the combined system of Takano and Yoon as contemplated by the
rejection.” Req. Reh’g 5.
In the Second Request for Rehearing, Appellant continues to allege
error with the rationale for the proposed combination because “the delay that
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Yoon purports to reduce is not present in Takano.” Second Req. Reh’g 4.
Rather, Appellant argues “Yoon discloses that known methods of reporting
CQI can introduce delay and proposes a modification to method steps other
than sending the CQI report to reduce this delay.” Second Req. Reh’g 5. In
other words, Appellant asserts Yoon teaches the process of CQI reporting
may introduce delay, and subsequently sets forth a solution to reduce the
delay. Second Req. Reh’g 8–9. Appellant argues that because Takano does
not report CQI, the introduction of such reports, as proposed by the
combination of Yoon with Takano, would not provide an improvement of
reduced delay. Second Req. Reh’g 8–9.
As an initial matter, contrary to Appellant’s assertions (see Reply
Br. 10), the argument that the proposed combination would frustrate the
purpose of Yoon was not argued in the Appeal Brief. Rather, the cited
portion of the Appeal Brief was directed to Appellant’s “teaching away” and
“hindsight” arguments. See Appeal Br. 12–14. This argument was not made
in the Appeal Brief, but could have been, and is not responsive to any new
evidence or finding set forth by the Examiner in the Answer.
Any argument raised in the reply brief which was not raised in
the appeal brief, or is not responsive to an argument raised in the
[E]xaminer’s answer, including any designated new ground of
rejection, will not be considered by the Board for purposes of the
present appeal, unless good cause is shown.
37 C.F.R. § 41.41(b)(2); see also Ex parte Nakashima, 93 USPQ2d 1834,
1837 (BPAI 2010) (informative) (explaining that arguments and evidence
not presented timely in the principal brief, will not be considered when filed
in a Reply Brief, absent a showing of good cause explaining why the
argument could not have been presented in the principal brief); Ex parte
Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he reply
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brief [is not] an opportunity to make arguments that could have been made
in the principal brief on appeal to rebut the Examiner’s rejections, but were
not.”).
A request for rehearing is not an opportunity to merely express
disagreement with a decision. See 37 C.F.R. § 41.52(a)(1). A request for
rehearing must state with particularity the points believed to have been
misapprehended or overlooked by the Board. Moreover, “[a]rguments not
raised, and Evidence not previously relied upon, pursuant to §§ 41.37, 41.41,
or 41.47 are not permitted in the request for rehearing except as permitted by
paragraphs (a)(2) through (a)(4) of this section.” 37 C.F.R. § 41.52(a)(1)
(emphasis added). New arguments in a request for rehearing are only
permitted for situations (i) based upon a recent relevant decision of either the
Board or a Federal Circuit; (ii) responding to a new ground of rejection; and
(iii) asserting that the Board’s decision contains an undesignated new ground
of rejection. 37 C.F.R § 41.52(a)(2)–(a)(4). To the extent Appellant has
advanced new arguments in the Request for Rehearing, we note that
Appellant has not relied upon a recent relevant decision of either the Board
or a Federal Circuit nor alleged that the Decision contains an undesignated
new ground of rejection.
Rather than setting forth new arguments in a Reply Brief or Request
for Rehearing, the more correct course of action for Appellant would have
been to file a Request for Continuing Examination wherein Appellant would
be permitted to advance new arguments of patentability. See 37 C.F.R.
§ 1.114(c).
Nonetheless, although we are mindful of our Rules proscribing
consideration of untimely arguments, in this specific circumstance,
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constrained by the representations made by the Solicitor’s Office to the court
that the Board would “reconsider[] the obviousness of the claimed
invention” (Mot. 2), and that the Board will “genuinely reconsider its
obviousness conclusion” (Reply 3) as well as the court’s understanding (that
the Board would “reconsider its position”) and order (that the Board would
“act expeditiously in conducting any necessary further proceedings”), we
consider the merits of Appellant’s arguments. See 37 C.F.R § 1.183
(allowing for the suspension of rules in “an extraordinary situation”).2
Yoon generally relates to “[a] method for requesting and reporting
channel quality information (CQI) in a wireless portable Internet system.”
Yoon, Abstract. According to Yoon:
Reported information on the radio channel quality of a link to a
subscriber station on the move is very important since the
information is used to determine an appropriate adaptive
modulation and channel coding (AMC) level for the
corresponding link to the subscriber station in the system for
supporting high-speed mobility.
Yoon ¶ 6. Yoon describes a system wherein a base station transmits a CQI
report message to a plurality of subscriber stations and each subscriber
station must request bandwidth from the base station in order to report the
CQI. Yoon ¶ 8. Yoon describes an issue that because the base station does
not allocate in advance an uplink resource to be used for the reported CQI

2 We note that 37 C.F.R. § 1.183 provides that the rules may be suspended or
waived “by the Director or the Director’s designee, sua sponte.” Under the
specific circumstances of this case, we understand the Solicitor’s Office to
be acting as the Director’s designee. See Mot. 1 (“Appellee, Director of the
United States Patent and Trademark Office (“USPTO”), respectfully
requests leave . . . to move to remand this case to the USPTO to permit
further proceedings before the agency.”).
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from the subscriber stations, a delay may occur. Yoon ¶ 11. More
particularly, Yoon describes the time delay as comprising a subscriber
station bandwidth request message and the base station allocating a resource
for a bandwidth request before the subscriber station transmits the channel
report information to the base station. Yoon ¶ 15. According to Yoon, “a
time delay is generated and it is difficult to guarantee the QoS [(Quality of
Service)] because of the undesired delay.” Yoon ¶ 15. Yoon’s disclosed
and claimed invention is directed to receiving CQI information quickly
without an additional bandwidth request from a subscriber station to the base
station and to “efficiently transmit downlink data by allocating a CQI
channel to the subscriber station by a base station.” Yoon ¶ 30.
Thus, the alleged benefit (i.e., reduced transmission delay) of Yoon is
realized not by merely sending a channel quality indication report, but rather
by the method in which the CQI is requested and reported. See, e.g., Yoon
¶¶ 24–29. We agree with Appellant (see Second Req. Reh’g 4–5, 9) that the
Examiner has not provided sufficient technical evidence or reasoning that
adding CQI information to the messaging of Takano would result in reduced
transmission delay.
Moreover, although one of ordinary skill in the art may understand
that two references could be combined as reasoned by the Examiner, this
does not imply a motivation to combine the references. Personal Web
Techs., LLC v. Apple, Inc., 848 F.3d 987 993–94 (Fed. Cir. 2017); see also
Belden Inc. v. Berk–Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015)
(“[O]bviousness concerns whether a skilled artisan not only could have
made but would have been motivated to make the combinations or
modifications of prior art to arrive at the claimed invention.”); InTouch
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Techs., Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir.
2014).
Here, although, arguably, one of ordinary skill in the art could have
modified Takano’s messaging (i.e., the reference signal) to include the CQI
report taught by Yoon, because merely adding the CQI report would not
result in a decreased (i.e., improved) transmission delay, as discussed above,
there is insufficient support that one of ordinary skill in the art would have
been motivated to modify Takano as proposed by the Examiner.
Because we find it dispositive that the Examiner has not provided the
requisite “articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness” (see In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (cited with approval in KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 418 (2007)), we do not address other issues raised by Appellant’s
arguments related to these claims. See Beloit Corp. v. Valmet Oy, 742 F.2d
1421, 1423 (Fed. Cir. 1984) (finding an administrative agency is at liberty to
reach a decision based on “a single dispositive issue”).
For the reasons discussed supra, we find Appellant’s arguments
persuasive of error related to the stated rationale to combine Takano and
Yoon. Accordingly, we do not sustain the Examiner’s rejection of
independent claim 1. For similar reasons, we do not sustain the Examiner’s
rejection of independent claims 6, 7, and 12, which recite similar limitations.
Further, we do not sustain the Examiner’s rejection of claims 2, 3, 8, 9, and
13–15, which depend directly or indirectly therefrom.
In addition, the Examiner does not rely on Vannithamby to remedy
the above-described deficiency related to the rejection of the independent
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claims. Thus, for similar reasons, we do not sustain the Examiner’s rejection
of claims 4, 5, 10, 11, 16, and 17.
CONCLUSION
Outcome of Decision on Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Denied Granted
1–3, 6–9,
12–15
103(a) Takano, Yoon 1–3, 6–9,
12–15
4, 5, 10, 11,
16, 17
103(a) Takano, Yoon,
Vannithamby
4, 5, 10,
11, 16, 17
Overall
Outcome
1–17

Final outcome of Appeal after Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 6–9,
12–15
103(a) Takano, Yoon 1–3, 6–9,
12–15
4, 5, 10, 11,
16, 17
103(a) Takano, Yoon,
Vannithamby
4, 5, 10,
11, 16, 17
Overall
Outcome
1–17

GRANTED

DIXON, Administrative Patent Judge.

DISSENTING OPINION

I respectfully dissent from the majority’s course of action to grant the
rehearing and the decision to reverse the Examiner’s conclusion of
obviousness. Rather, I would REMAND the application to the Examiner.
The majority sets forth all the relevant rules and procedures for
prosecution and rehearing:
A request for rehearing is not an opportunity to merely express
disagreement with a decision. See 37 C.F.R. § 41.52(a)(1). A
request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked by the
Board . . .

the more correct course of action for Appellant would have
been to file a Request for Continuing Examination wherein
Appellant would be permitted to advance new arguments of
patentability. See 37 C.F.R. § 1.114(c).

(Decision on Second Req. Reh’g 6.) I agree with the majority that the more
appropriate course of action would be for Appellant to file a Request for
Continuing Examination to consider the new arguments.
I find the prosecution and Briefs by Appellant to be unpersuasive to
show error in the Examiner’s factual findings or conclusion of obviousness
during the prosecution on the merits of this application before the Examiner
and before this Board. Moreover, I find Appellant’s late presentation of
detailed arguments and technical reasoning to be inappropriate for compact
prosecution on the merits and refinement of the issues for appeal.
I find that Appellant’s late presentation of arguments to the Solicitor
and court to have waived these arguments, which are inappropriate for
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consideration before this panel or by the court of review. Furthermore, the
majority sets forth the prosecution history and the factual timeline that
overwhelmingly persuade me that the Board did not err based upon the
prosecution before the Board at the time of the original Decision nor in the
original Request for Rehearing.
Additionally, I would agree the majority’s action to be appropriate, if
Appellant had set forth a showing of good cause for the late presentation of
the new arguments. (See 37 C.F.R. § 41.41(b)(2) “Any argument raised in
the reply brief which was not raised in the appeal brief, or is not responsive
to an argument raised in the examiner’s answer, including any designated
new ground of rejection, will not be considered by the Board for purposes of
the present appeal, unless good cause is shown.”)
Unfortunately, Appellant has not proffered any showing of good cause
for the late presentation of the new arguments before the agency. If
Appellant showed any kind of “good cause,” I would agree that the Board
could accept the late presentation of new and refined arguments, but
Appellant has not proffered any showing of good cause. Without a showing
of good cause on the record, I find that the majority over extends its
discretion. I find the REMAND of this application to the Examiner to fully
meet the proffered intent and goal of the court to “permit further proceedings
before the agency.”
Therefore, I would not consider these new arguments, and I would
rather REMAND the application to the Examiner to further consider the
totality of the new arguments which the Solicitor has proffered that “the
board will use the remand as an opportunity to correct the error [the reversal
of the names of the two references in the original Decision on Rehearing,
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which was vacated] and genuinely reconsider its obviousness
determination.” (Reply In Support Of Motion for Remand 3.) Because the
Board “review[s] adverse decisions” of the Examiner, the Board has not
made a conclusion of obviousness in this appeal. (35 U.S.C. § 6.)
Rather, the Board found Appellant’s arguments were unpersuasive of
error in the Examiner’s factual findings or conclusion of obviousness.
Therefore, I would REMAND this application back to the Examiner to
“genuinely reconsider [the Examiner’s] obviousness conclusion” based upon
the new arguments. I find this course of action would be appropriate in light
of the remand and the Solicitor’s motion “to permit further proceedings
before the agency.” See Mot. 1 (“Appellee, Director of the United States
Patent and Trademark Office (“USPTO”), respectfully requests leave . . . to
move to remand this case to the USPTO to permit further proceedings before
the agency.”). (See Decision on Second Req. Reh’g 7 n.2.)
Additionally, I cannot agree that the Administrative Patent Judges
have authority to waive the rules without a delegation of authority from the
Director. Additionally, I find nothing in the record by the Solicitor which
specifically addresses a waiver of the Rules under any authority that the
Solicitor may be delegated.
Moreover, the majority decides the appeal based upon a single issue
rather than addressing the complete merits argued by Appellant. In light of
the remand from the court for further “proceedings before the agency,” I find
the more appropriate course of action is to REMAND the application to the
Examiner to address the totality of all of Appellant’s new and refined
arguments by the same individual who is more skilled in the relevant art and
would be the more appropriate factfinder and evaluator of conclusions of
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obviousness in the first instance based upon the new and refined arguments
and to consider the totality of the prior art.
Therefore, I do not find the majority’s consideration of these new
arguments to be appropriate because the rules for controlling appeals of the
Examiner’s adverse decision on patentability require that the arguments
“will not be considered by the Board for purposes of the present appeal,
unless good cause is shown.”
I find that during the original prosecution and the Briefs, Appellant
provided general arguments with little substantive analysis, which amount to
Attorney arguments and conclusory statements that are unsupported by
factual evidence are entitled to little probative value. In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984). “Argument in the brief does not take the place of evidence
in the record.” In re Schulze, 346 F.2d 600, 602 (CCPA 1965) (citing In re
Cole, 326 F.2d 769, 773 (CCPA 1964)).
As a result, Appellant has not identified any points misapprehended or
overlooked by the Board in its decision on the merits at the time of the
decision based upon the administrative record at that time as required by a
Request for Rehearing under 37 C.F.R. § 41.52. Therefore, I would DENY
Appellant’s Request for Rehearing, and I would not modify the Decision.
But, in light of the representations by the Solicitor, I would REMAND
the application back to the Examiner to further consideration of the
arguments that Appellant now makes because the Solicitor has specifically
represented that the Remand will “permit further proceedings before the
agency.” As stated above, the most appropriate course of action would be a
Request for Continued Examination and the Solicitor’s representation of
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further “proceedings before the agency” effectively provides Appellant with
a no cost Request for Continued Examination. Furthermore, prosecution
before the Examiner on the merits of all of Appellant’s new arguments
fulfills this representation to our reviewing court.