Ex Parte 6,493,377 B2 et al

Patent Trial and Appeal Board

Sep 21, 2016

90013418 (P.T.A.B. Sep. 21, 2016)

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.
31AE-202659 1043
EXAMINER
YIGDALL, MICHAEL J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
90/013,418 12/12/2014
36139 7590
EPSTEIN & GERKEN
14006 Glen Mill Road
ROCKVILLE, MD 20850
6,493,377 B2
01/27/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LINEX TECHNOLOGIES, INC.
Patent Owner and Appellant
Appeal 2016-007605
Reexamination Control No. 90/013,418
United States Patent 6,493,377 B2
Technology Center 3900
Before JAMES T. MOORE, JOHN A. JEFFERY, and
JENNIFER L. McKEOWN, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
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Patent Owner requests rehearing of our decision dated September 21,
2016 (“Dec.”), where we affirmed the Examiner’s decision to reject claims
1—15, 22—29, and 32—37 in the above-identified ex parte reexamination.
Request for Rehearing filed November 21, 2016 (“Req. Reh’g”). For the
reasons noted below, we deny the request to modify our decision.
SUBSTANTIAL NEW QUESTION OF PATENTABILITY (SNQ)
In the Request, Patent Owner first contends that we misapprehended
or overlooked the lack of an SNQ in this proceeding because, among other
things, the claims, references, and evidence used by the Examiner are the
same as those in the three previous reexaminations.1 2Req. Reh’g 1—13.
But as we noted in our decision, Appellant’s SNQ arguments were
raised for the first time in the Reply Brief and are, therefore, deemed to be
waived as untimely. Dec. 5—6. Under 37 C.F.R. § 41.41(b)(2), we do not
consider any argument raised in the Reply Brief which (1) was not raised in
the Appeal Brief, or (2) is not responsive to an argument raised in the
Examiner’s Answer, unless good cause is shown—an exception that is
inapplicable here. Therefore, Appellant’s SNQ arguments are improper for
that reason alone.
To the extent that Appellant contends that the particular challenges to
the Examiner’s SNQ determination raised in the Reply Brief and the
Rehearing Request were also raised in the Appeal Brief to seasonably and
particularly identify those issues as a basis for appeal to this Board, we
disagree. As we noted on page 6 of our decision, the Appeal Brief does not
1 These proceedings are cited on page 4 of our earlier decision.
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contain a challenge to the Examiner’s SNQ determination to raise timely that
issue on appeal and, consequently, such a challenge raised in the Reply Brief
is waived as untimely. See 37 C.F.R. § 41.41(b)(2). To the extent that
Appellant contends that the citations to pages 15 and 37 of the Appeal Brief
(Req. Reh’g 5—6) somehow raise the SNQ issue with particularity to
specifically identify that issue as an independent basis for appeal, we
disagree.
Nor has Appellant demonstrated compliance with MPEP § 2274(VI)
which requires that Appellant request reconsideration of the SNQ issue
before the Examiner before we can review that issue as noted on pages 6 and
7 of our decision. As we indicated, MPEP § 2274(VI) requires that a patent
owner first request consideration before the Examiner, and then seek review
of the Examiner’s SNQ determination before the Board. To this end, MPEP
§ 2274(VI) requires a patent owner identify in its Appeal Brief the
communication in which the owner first requested reconsideration of the
SNQ before the Examiner. But that prerequisite was not met. Therefore,
because Appellant fails to comply with the requirements of MPEP
§ 2274(VI), the SNQ issue is not before us for that additional reason—a
point that we noted on pages 6 and 7 of our decision.
Nor would we be persuaded of error in the Examiner’s SNQ
determination for the reasons indicated on pages 7 and 8 of our decision
even if the SNQ issue was before us—which it is not. Therefore, we are not
persuaded that we misapprehended or overlooked the points raised by
Appellant regarding the Examiner’s SNQ determination.
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THE OBVIOUSNESS REJECTION
We are likewise unpersuaded that we misapprehended or overlooked
the points raised by Appellant in connection with the Examiner’s
obviousness rejection of claim 1 over Ricochet, Young, Kahn, and
Pursley 22 for the reasons indicated on pages 9 to 14 of our decision. As we
noted in our issue statement on page 9 of the decision, our determination of
whether the Examiner erred in rejecting claim 1 as obvious over the cited
references turned on two issues, namely, whether (1) the cited prior art
would have taught or suggested that each fixed node includes plural spread-
spectrum transceivers (“the plural transceiver limitation”), and (2) the
references were properly combinable.
We find unavailing Appellant’s contention that we allegedly
overlooked limitations other than the plural transceiver limitation, namely,
the limitations labeled as “Limitations 2 and 3” on pages 38 to 41 of
Appellant’s Request. Although Appellant contends that we ostensibly
overlooked the material pertaining to accessing and selecting a first fixed
node on page 29 of “Appellant’s Brief’ (Req. Reh’g 38) no such material is
found on page 29 of the Appeal Brief. Nevertheless, to the extent that
Appellant intends to refer to page 29 of the Reply Brief in connection with
this allegedly-overlooked material in “Appellant’s Brief,” such an argument
raised for the first time on appeal in the Reply Brief is waived as untimely as
we noted on pages 9 and 10 of our decision. We reach the same conclusion
regarding the various references to pages 29 to 33 of “Appellant’s Brief’ on
2 These references are cited in full on pages 4 and 5 of our decision and are
omitted here for brevity.
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pages 42 and 43 of the Rehearing Request, for here again, the cited material
does not appear in the Appeal Brief, but rather the Reply Brief.
Appellant’s additional citations to various documents submitted
during prosecution and reference to the Reply Brief in connection with the
allegedly-overlooked “Limitations 2 and 3” (Req. Reh’g 41—52, 54—56) are
likewise unavailing, for these particular arguments were not made in the
Appeal Brief to raise those arguments on appeal to this Board in a timely
fashion. Although Appellant also refers to page 44 of the Appeal Brief in
this regard (Req. Reh’g 52—54), Appellant nevertheless fails to show that
arguments based on the allegedly-overlooked “Limitations 2 and 3” were
timely raised in the Appeal Brief.
Appellant’s arguments regarding the alleged non-enablement of the
cited references (Req. Reh’g 13—17, 22—23) are likewise unavailing. As we
noted on page 11 of our decision, even assuming, without deciding, that
Young does not enable any disclosed embodiment using multiple
transmitters as Appellant contends (Req. Reh’g 22; Reply Br. 17—19), that
alone is not dispositive, for it is well settled that published subject matter is
prior art for all that it teaches in obviousness determinations—even if the
reference itself is not enabling. See In re Antor Media Corp., 689 F.3d 1282,
1292 (Fed. Cir. 2012) (citing Symbol Techs. Inc. v. Opticon Inc., 935 F.2d
1569, 1578 (Fed. Cir. 1991)).
We emphasize obviousness determinations here, for although non-
enabled references cannot anticipate a claimed invention, they nevertheless
may be considered in obviousness determinations, as is the case here. See
Symbol Techs., 935 F.2d at 1578 (“While a reference must enable someone
to practice the invention in order to anticipate under § 102(b), a non-
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enabling reference may quality as prior art for the purpose of determining
obviousness under § 103.”). Therefore, Appellant’s arguments regarding the
cited references’ alleged non-enablement (Req. Reh’g 13—17, 22—23) are
more germane to anticipation—not obviousness. See, e.g., Req. Reh’g 15
(arguing that “the anticipation exercise must assess the enabling nature of a
prior art reference in light of the proposed claims” (emphasis added)); see
also id. at 17 (same for the Examiner’s anticipation analysis).
Nevertheless, as we noted in our decision, a prior art reference’s
teachings are not considered in a vacuum, but rather considered together
with the knowledge of ordinarily skilled artisans. See In re Paulsen, 30 F.3d
1475, 1480-81 (Fed. Cir. 1994). Cited references, then, do not have to
explain every detail to render a claimed invention obvious since the
reference speaks to those skilled in the art. Id. at 1480.
Therefore, as we explained in our decision, we found no error in the
Examiner’s reliance on Young for the limited purpose for which it was cited,
namely, that radios containing multiple transceivers were known in the art,
and that providing multiple transceivers in lieu of a single transceiver in
each of Ricochet’s fixed nodes would have been obvious to, among other
things, increase the number of channels—a predictable result. Dec. 12
(citing Ans. 4—5).
Although Appellant contends that doubling the number of transceivers
at each node would correspondingly decrease channel bandwidth and, thus,
reduce each transceiver’s data rate by one-half (see Req. Reh’g 24—37),
Appellant provides no persuasive evidence on this record to substantiate this
theory apart from attorney argument which has little probative value. See In
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Nevertheless, even
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assuming, without deciding, that providing multiple transceivers at a node as
the Examiner proposes would reduce the bandwidth for each transceiver and
its associated data rate as Appellant contends (Req. Reh’g 37), the
disadvantages of such a data-rate reduction may well be offset by the
advantages realized with multiple node-based transceivers including, among
other things, transceiver diversity and potential backup capabilities. Such
considerations amount to engineering trade-offs well within the level of
ordinarily skilled artisans.
In any event, as we noted in our decision, the Examiner does not
propose to physically combine Ricochet’s nodes with those of Young, but
rather merely relies on Young for a limited purpose, namely, to show that
radios containing multiple transceivers were known in the art, and that
providing known multi-transceiver radios in Ricochet’s spread-spectrum
system would have been obvious. Dec. 13 (citing Ans. 4—5).
It is well settled that “a determination of obviousness based on
teachings from multiple references does not require an actual, physical
substitution of elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir.
2012) (citations omitted). Nor is the test for obviousness whether a
secondary reference’s features can be bodily incorporated into the structure
of the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Rather, the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art. Id. And here, as we indicated
on page 13 of our decision, the Examiner’s proposed combination
predictably uses prior art elements according to their established functions to
yield a predictable result. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
417 (2007).
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Lastly, despite Appellant’s arguments to the contrary (Req. Reh’g 30—
35), and as we indicated on pages 13 and 14 of our decision, we see no error
in the Examiner’s findings that the cited references constitute analogous art.
Prior art is analogous if it is (1) from the same field of endeavor as that of
Appellant’s invention regardless of the problem addressed, or (2) reasonably
pertinent to the particular problem with which the inventor is involved. In re
Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
As we noted in our decision, the Examiner finds that the cited
references are in the same field of endeavor, because each cited reference
relates to (1) wireless communication in a distributed network of nodes, and
(2) transmission of packets over the network. Dec. 13—14 (citing Ans. 5—7).
The Examiner also finds that the cited references are reasonably pertinent to
Appellant’s problems pertaining to (1) reducing power levels; (2) increasing
network capacity; and (3) creating a flexible and dynamically adaptable
network. Dec. 14 (citing Ans. 7—10). For the reasons indicated in our
decision and by the Examiner (Ans. 5—10), we are unpersuaded of error in
these findings and conclusions. Accordingly, we are not persuaded that we
misapprehended or overlooked those points in rendering our decision.
CONCLUSION
For the foregoing reasons, we have granted Appellant’s request to the
extent that we have reconsidered our decision of September 21, 2016, but we
deny the request with respect to making any changes therein.
DENIED
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Patent Owner:
Epstein & Gerken
14006 Glen Mill Road
Rockville, MD 20850
Third Party Requester:
Sheppard, Mullin, Richter & Hampton LLP
379 Lytton Avenue
Palo Alto, CA 94301
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