Ex Parte 75701614 et al

Patent Trial and Appeal Board

Feb 16, 2018

95002111 (P.T.A.B. Feb. 16, 2018)

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.
95/000,647 10/07/2011 757064 52637-0025 6409
29989 7590 02/20/2018
HICKMAN PALERMO BECKER BINGHAM LLP
1 ALMADEN BOULEVARD
FLOOR 12
SAN JOSE, CA 95113
EXAMINER
WOOD, WILLIAM H
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
02/20/2018 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
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.
95/002,111 08/30/2012 75701614 846487 9870
29989 7590 02/20/2018
HICKMAN PALERMO BECKER BINGHAM LLP
1 ALMADEN BOULEVARD
FLOOR 12
SAN JOSE, CA 95113
EXAMINER
WOOD, WILLIAM H
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
02/20/2018 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
____________

CSR TECHNOLOGY INC. & MOTOROLA MOBILITY, LLC
Requesters and Respondents

v.

BANDSPEED, INC.
Patent Owner and Appellant
____________

Appeal 2018-001061
Inter partes Reexamination Control 95/000,647 & 95/002,1111
United States Patent 7,570,614 B2
Technology Center 3900
____________

Before JAMES T. MOORE, JOHN A. JEFFERY, and PATRICK M.
BOUCHER, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL

1 These two reexamination proceedings were merged on July 18, 2013.
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Patent Owner appeals under 35 U.S.C. §§ 134 and 315 the Examiner’s
decision to reject claims 1, 3–6, 8–15, 19–28, 30–41, 43–47, 49–53, 55–58,
60–67, 71–80, and 82–97. App. Br. 1.2 Claims 2, 7, 16–18, 42, 48, 54, 59,
and 68–70 were cancelled, and claims 29, 81, and 98–516 are indicated as
patentable. RAN 1. We have jurisdiction under 35 U.S.C. §§ 134 and 315.
We affirm-in-part.

STATEMENT OF THE CASE
This proceeding arose from a first request for inter partes
reexamination filed on behalf of Requester, CSR Technology, Inc., on
October 7, 2011, of United States Patent 7,570,614 (“the ’614 patent”),
issued to Treister et al. on August 4, 2009. This proceeding was assigned
Control No. 95/000,647 (“’647 Request”).
A second request for inter partes reexamination was filed on behalf of
another Requester, Motorola Mobility LLC, on August 30, 2012, and was
assigned Control No. 95/002,111 (“(“’111 Request”). These two
proceedings were merged on July 18, 2013.
The ’614 patent describes selecting communication channels and
participants with which to communicate based on channel performance.

2 Throughout this opinion, we refer to (1) the Right of Appeal Notice mailed
October 23, 2015 (“RAN”); (2) Patent Owner’s “Compliant” Appeal Brief
filed October 3, 2016 (“App. Br.”) that was entered via a Petition Decision
mailed May 9, 2017; (3) the Examiner’s Answer mailed September 1, 2017
(“Ans.”); and (5) Patent Owner’s Rebuttal Brief filed October 2, 2017
(“Reb. Br.”). Requesters did not file briefs in this appeal.
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Based on a selected channel, channel identification data is provided to
another participant to determine on which channel to respond. The
communication sent in response may include a performance measurement of
the channel used to provide the channel identification data. See generally
’614 patent, Abstract; col. 1, ll. 25–28. Claims 1, 8, 13, 30, and 33 are
illustrative of the invention and reproduced below:

1. (Amended) A method performed by a particular participant
communications device for selecting communications channels for a
communications system, the method comprising the computer-implemented
steps of:
[a communications device] selecting, based upon performance of a
plurality of communications channels and at least one performance criterion,
a first communications channel from the plurality of communications
channels;
generating channel identification data that identifies the first
communications channel;
providing the channel identification data to a first participant;
receiving a first communication from the first participant over a
second communications channel from the plurality of communications
channels;
wherein the plurality of communications channels correspond to a set
of frequencies and the first communication received from the first
participant is based on a hopping sequence among at least two
communications channels of the plurality of communications channels,
according to a frequency hopping protocol; [and]
wherein the channel identification data specifies that the first
communications channel is not to be used by the first participant for the first
communication;
sending a second communication to the first participant over a third
communications channel;
receiving a third communication from the first participant that
includes first performance quality data for the third communications
channel, wherein the first performance quality data specifies the
performance quality of the third communications channel between the
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particular participant and the first participant, and is generated by the first
participant based on information contained in the second communication;
and
updating a set of channel data maintained by the particular participant
using the first performance quality data.

8. (Amended) [The method of claim l,] A method for selecting
communications channels for a communications system, the method
comprising the computer-implemented steps of:
a communications device selecting, based upon performance of a
plurality of communications channels and at least one performance criterion,
a first communications channel from the plurality of communications
channels;
generating channel identification data that identifies the first
communications channel;
providing the channel identification data to a first participant;
wherein the step of providing the channel identification data to the
first participant comprises the computer-implemented step of:
providing the channel identification data to the first participant over a third
communications channel of the plurality of communications channels,
wherein the third communications channel is not the first
communications
channel; and
receiving a first communication from the first participant over a
second communications channel from the plurality of communications
channels,
wherein the first communication from the first participant includes
data that indicates the performance of the third communications channel;
wherein the plurality of communications channels correspond to a set of
frequencies and the first communication received from the first participant is
based on a hopping sequence among at least two communications channels
of the plurality of communications channels, according to a frequency
hopping protocol; and
wherein the channel identification data specifies that the first
communications channel is not to be used by the first participant for the first
communication.

13. (Amended) [The] A method for selecting communications channels for a
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communications system, the method comprising the computer-implemented
steps of [Claim 10,];
a communications device selecting, based upon performance of a
plurality of
communications channels and at least one performance criterion, a first
communications channel from the plurality of communications channels;
wherein the step of selecting the first communications channel from
the plurality of communications channels comprises the computer-
implemented steps of:
classifying one or more communications channels of the plurality of
communications channels based upon whether the performance of the one
or more communications channels satisfies at least one performance
criterion; and
selecting the first communications channel from the one or more
communications channels that are classified as satisfying the at least one
performance criterion;
generating channel identification data that identifies the first
communications channel;
providing the channel identification data to a first participant;
receiving a first communication from the first participant over a second
communications channel from the plurality of communications channels:
wherein the plurality of communications channels correspond to a set
of frequencies and the first communication received from the first
participant is based on a hopping sequence among at least two
communications channels of the plurality of communications channels,
according to a frequency hopping protocol; and
wherein the channel identification data specifies that the first
communications channel is not to be used by the first participant for the first
communication;
determining a number of communications channels of the plurality of
communications channels that satisfy the at least one performance criterion;
and
if the number of communications channels that satisfy the at least one
performance criterion is less than a specified number, reclassifying one or
more communications channels of the plurality of communications channels;
wherein the step of reclassifying the one or more communications channels
comprises the computer-implemented step of:
reclassifying one or more communications channels of the plurality of
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communications channels based upon the performance of the one or more
communications channels and at least one revised performance criterion;
and
wherein the at least one revised performance criterion is selected such
that the number of communications channels that satisfy the at least one
revised performance criterion is not less than the specified number.

30. (Original) A method for managing performance data for communications
channels between participants in a communications system, the method
comprising the computer-implemented steps of:
a communications device determining the performance of a plurality
of communications channels;
creating and maintaining, at a first participant of a plurality of
participants, first performance data that indicates the performance of at least
one communications channel of the plurality of communications channels
between the first participant and at least a second participant of the plurality
of participants;
requesting and receiving second performance data from a third
participant, wherein the second performance data indicates the performance
of at least one communications channel of the plurality of communications
channels between the third participant and at least a fourth participant of the
plurality of participants; and
creating and maintaining revised first performance data based on the
first performance data and the second performance data.

33. (Twice Amended) [The method of Claim 30,] A method for managing
performance data for communications channels between participants in a
communications system, the method comprising the computer-implemented
steps of:
a communications device determining the performance of a plurality
of communications channels;
creating and maintaining, at a first participant of a plurality of
participants, first performance data that indicates the performance of at least
one communications channel of the plurality of communications channels
between the first participant and at least a second participant of the plurality
of participants;
requesting and receiving second performance data and third
performance data from a third participant, wherein the second performance
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data indicates the performance of at least one communications channel of the
plurality of communications channels between the third participant and at
least a fourth participant of the plurality of participants, and the third
performance data indicates the performance of at least one communications
channel of the plurality of communication channels between the third
participant and at least a sixth participant of the plurality of participants;
creating and maintaining revised first performance data based on the
first performance data and the second performance data;
wherein the third participant is the second participant and wherein the
fourth participant is the first participant.

RELATED PROCEEDINGS
This appeal is said to be related to various pending proceedings. First,
Patent Owner informs us of six cases in the U.S. District for the Western
District of Texas involving the ’614 patent and various related patents,
including U.S. Patents 7,477,624, 7,903,608, 8,542,643, and 8,873,500.
App. Br. 2–3; Reb. Br. 1–3. Five of those cases have concluded. Id.
Patent Owner also informs us of ten inter partes reviews involving the
related patents, namely (1) IPR2015-00237; (2) IPR2015-00314; (3)
IPR2015-00315; (4) IPR2015-00316; (5) IPR2015-00531; (6) IPR2015-
01577; (7) IPR2015-01580; (8) IPR2015-01581; (9) IPR2015-01582; and
(10) IPR2016-00620. App. Br. 2–3; Reb. Br. 2–3.
Lastly, this appeal is related to other merged inter partes
reexamination proceedings involving the same parties, namely Control
Numbers 95/000,648 and 95/002,108. In an appeal involving those merged
proceedings, we affirmed-in-part the Examiner’s decision to reject claims 2–
18, 20–24, 28–78, 83–106, 108–110, 114–122, 125–434, 436–591, and 593–
598 that were at issue in that appeal. See CSR Tech. Inc. & Motorola
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Mobility, LLC v. Bandspeed, Inc., No. 2017-010093 (PTAB Sept. 11, 2017),
reh’g denied Jan. 19, 2018 (“Bandspeed I”).

THE APPEALED REJECTIONS
Patent Owner appeals the Examiner rejecting the claims as follows:
Claims 1, 4, 5, 8–14, 25, 26, 36–38, 41, 43–47, 49, 51, 53, 55–58, 60–
66, 77, 78, 88–90, and 93–95 under 35 U.S.C. § 102(a) as anticipated by
Sivakumar (WO 01/47308 A1; June 28, 2001). RAN 6, 13, 17–24, 28, 30,
33–35, 38–46, 48–52, 55, 56, 59–61, 63–65.
Claims 1, 4, 6, 8, 9, 25, 27, 36, 37, 41, 44, 46, 47, 49, 53, 56, 58, 60,
61, 77, 79, 88, 89, 93, and 94 under 35 U.S.C. § 102(b) as anticipated by
JP10-107693 A; Apr. 24, 1998 (“Imamura”). RAN 8–9, 14–15, 17, 19, 21,
28–29, 31, 33–34, 37, 38, 40–41, 43, 43–48, 56–57, 59, 61, 63–64.
Claims 1, 3, 8–14, 25–28, 30, 33, 34, 36–41, 43–47, 49–53, 55–58,
60–66, 77–80, 85, 86, and 88–97 under 35 U.S.C. § 102(a)3 as anticipated by
Gendel (US 6,115,407; Sept. 5, 2000). RAN 6–7, 15–24, 29–31, 33–46, 48–
52, 56–58, 60–63, 65–66.
Claims 13 and 65 under 35 U.S.C. § 102(e) as anticipated by Dicker
(US 6,272,353 B1; Aug. 7, 2001). RAN 7–8, 23, 52.
Claims 15, 19–21, and 71–73 under 35 U.S.C. § 102(e) as anticipated
by Gerten (US 6,760,319 B1; July 6, 2004). RAN 24–26, 53–54.

3 Although Gendel qualifies as prior art under § 102(e), we treat any error
associated with this omission as harmless as it does not affect our
assessment of the merits of the anticipation rejection.
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Claims 30–32, 35, 82–84, and 87 under 35 U.S.C. § 102(e) as
anticipated by Sonetaka (US 6,487,392 B1; Nov. 26, 2002). RAN 9, 32–33,
58–59.
Claims 30, 33, 34, 82, 85, and 86 under 35 U.S.C. § 102(b) as
anticipated by Haartsen (US 6,009,332; Dec. 28, 1999). RAN 9–10.
Claims 30, 33, 34, 82, 85, and 86 under 35 U.S.C. § 102(b) as
anticipated by Bergström (US 4,716,573; Dec. 29, 1987). RAN 10.
Claims 8, 11, 13, 37, 60, 63, 65, 89, and 94 under 35 U.S.C. § 103(a)
as obvious over Sivakumar and Kim (US 7,050,479 B1; May 23, 2006).
RAN 10–11, 20, 34–35, 47, 49–51, 60, 64.
Claims 8, 37, 38, 63, 89, 94, and 95 under 35 U.S.C. § 103(a) as
obvious over Sivakumar and Koivu (US 5,737,359; Apr. 7, 1998). RAN 11,
20, 35–36, 50, 60–62, 64–65.
Claims 15, 19–24, 67, and 71–76 under 35 U.S.C. § 103(a) as obvious
over Schmidl (US 6,965,590 B1; Nov. 15, 2005) and Dicker. RAN 25–27,
53–55.

THE ANTICIPATION REJECTION OVER SIVAKUMAR
The Examiner finds that Sivakumar discloses every recited element of
independent claim 1 including a “particular participant” communications
device providing channel identification data, namely information indicating
“black-listed” channels, to a first participant (i.e., a “slave” node). See RAN
13–14 (incorporating pages 83 to 89 of the ’647 Request by reference).
According to the Examiner, the particular participant (1) receives a first
communication from the first participant over a second non-blacklisted
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channel; (2) sends a second communication to the first participant over a
third channel; and (3) receives a third communication from the first
participant, where this communication includes first performance quality
data, namely interference indices, for the third channel. Id. This quality
data is said to be generated by the first slave node participant based on
information contained in the second communication, namely by generating
transmittable interference indices from stored indices responsive to a master
node’s command. Ans. 2–4.
Patent Owner argues, among other things, that Sivakumar’s
performance quality data, namely the interference indices, are not generated
based on information in the second communication as claimed, but rather
this data is generated long before the command to transmit that information
is sent. App. Br. 23–25; Reb. Br. 4–5. According to Patent Owner, because
previously-stored performance quality data is transmitted responsive to this
command, this data remains unchanged and, therefore, is not generated
based on this received command. Reb. Br. 5. Patent Owner argues various
other recited limitations summarized below.

ISSUES
Under § 102, has the Examiner erred by finding that Sivakumar
discloses:
(1) a particular participant communications device receiving a third
communication from a first participant, the communication including first
performance quality data for the third channel, where the data (a) specifies
the performance quality for the third channel between the particular
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participant and first participant, and (b) is generated by the first participant
based on information contained in the second communication as recited in
claim 1?
(2) providing channel identification data to the first participant over a
third communications channel, where the third channel is not the first
communications channel, and the channel identification data specifies that
the first channel is not to be used by the first participant for the first
communication as recited in claim 8?
(3) determining a number of communication channels that satisfy at
least one performance criterion, and if the number of channels that satisfy
that criterion is less than a specified number, reclassifying one or more
channels, where reclassifying is based on (a) the channel performance, and
(b) at least one revised performance criterion, the revised criterion selected
such that the number of channels satisfying the revised criterion is not less
than the specified number as recited in claim 13?
(4) providing (a) first channel identification data to a first participant
over a second channel that is not the first channel, and (2) second channel
identification data to a second participant over a fifth channel that is not the
fourth channel as recited in claim 36?
(5) selecting the first and fourth channels from channels classified as
bad as recited in claim 37?

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ANALYSIS
Claims 1, 4, 5, 9–12, 14, 25, 26, 41, 43–45, 47, 49, 51, 53, 55–58, 61–64, 66,
77, and 78

We begin by noting that the method of claim 1 is performed by a
“particular participant” communications device that is distinct from the “first
participant” with which the particular participant device communicates.
Although the Examiner does not precisely map the “particular participant”
device to a corresponding element in Sivakumar, Sivakumar’s master node
10 apparently corresponds to this “particular participant” device, particularly
in view of the Examiner’s finding that the master’s command to transmit
interference indices is contained in the second communication sent by the
particular participant to the first participant. See Ans. 3. Accord id.
(referring to master-to-node communication 100b in Sivakumar’s Figure 1 in
connection with the recited second communication). This mapping also
comports with the definition of “participant,” namely “any device or
mechanism that exchanges data with other devices or mechanisms over a
communications medium.” See ’614 patent, 1:34–36.
As noted above, claim 1 recites two key aspects of the first
performance quality data included in the third communication—data that the
Examiner maps to Sivakumar’s interference indices. See RAN 14 (finding
that Sivakumar’s interference indices are a form of performance quality
data). Under the terms of claim 1, the performance quality data (1) specifies
the performance quality for the third channel between the particular
participant and first participant, and (2) is generated by the first participant
based on information contained in the second communication.
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Our emphasis underscores the key aspect of this dispute. Although
the Examiner apparently acknowledges that Sivakumar’s interference
indices are stored (and therefore were generated) before the second
communication, namely before the master commands their transmission
from the slave nodes in step 132 of Sivakumar’s Figure 4, the Examiner
nevertheless finds that transmittable interference indices are generated from
stored indices responsive to the master’s command. Ans. 2–4. In other
words, Sivakumar is said to generate transmittable performance quality data
based on information in the second communication, despite that data being
previously generated and stored. See id.
These findings are problematic on this record. As shown in
Sivakumar’s Figure 4, during an evaluation phase, each slave node
calculates and stores interference indices IFi based on the number of
successful transmissions on each frequency band in steps 122 to 129.
Sivakumar 7:20–8:30. Then, during a configuration phase, the master node
sends a command addressed to a selected node to transmit its interference
indices to the master node in step 132, and, in response, the slave node sends
its indices to the master in step 136. Id. 9:1–6. The master then uses the
received interference indices to calculate system-aggregate performance of
each frequency band in the channel using equation 2, and uses this
information to create and transmit a “black list” of the two worst-performing
frequencies in steps 144 to 148. Id. 9:12–27.
The clear import of this functionality is that Sivakumar’s interference
indices are not generated based on the master’s command to transmit these
indices in step 132 even assuming, without deciding, that this command is
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included in a second communication over a third channel as the Examiner
indicates. See RAN 14; Ans. 3. Rather, as Patent Owner explains, the
performance quality data itself remains unchanged from that which was
stored. Reb. Br. 5.
Therefore, to say that Sivakumar’s previously generated and stored
performance quality data is somehow generated because it is transmitted
responsive to a command as the Examiner suggests is unreasonable on this
record. See RAN 14 (finding that Sivakumar’s interference indices are
generated into a form to be sent based on the master’s request); Ans. 3
(finding that Sivakumar’s transmitted data bits are generated from the stored
interference indices data bits); Ans. 3–4 (finding that transmittable
performance quality data is generated from the stored data regardless of
when the stored information is generated).
To the extent that the Examiner finds that Sivakumar’s transmittable
interference indices involves packetizing this data or otherwise reformatting
the data for transmission to the master is unsubstantiated on this record.
Although a control packet is sent from the master indicating the black-listed
frequencies in step 148 (Sivakumar 9:24–26), Sivakumar says nothing about
the particular data structures or format of the interference indices that are
transmitted to the master in step 136 of Figure 4, let alone that these
structures or format differ from those that were stored previously in the
evaluation phase. Therefore, to say that these indices are necessarily
packetized or reformatted for transmission as the Examiner apparently
suggests is unsubstantiated given Sivakumar’s silence in this regard; nor will
we speculate in that regard here in the first instance on appeal. Even if it is
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probable that Sivakumar’s interference indices are packetized or reformatted
for transmission to the master, that still does not mean that this is necessarily
the case—a crucial requirement for inherent anticipation. See In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (“Inherency . . . may not be
established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient.”)
(citations omitted). Rather, Sivakumar, at best, suggests that the interference
indices are the same data that was previously stored as Patent Owner
indicates. See Reb. Br. 5 (noting that Sivakumar’s performance quality data
that is transmitted to the master remains unchanged from that which was
stored).
Therefore, we are persuaded that the Examiner erred in rejecting (1)
independent claim 1; (2) independent claims 25, 41, 53, and 77 that recite
commensurate limitations; and (3) dependent claims 4, 5, 26, 43–45, 47, 49,
51, 55–58, 61–64, 66, and 78 for similar reasons. Because this issue is
dispositive regarding our reversing the Examiner’s rejection of these claims,
we need not address Patent Owner’s other associated arguments.

Claims 8, 46, and 60
On the other hand, we sustain the Examiner’s rejection of claim 8
reciting, in pertinent part, providing channel identification data to the first
participant over a third communications channel, where the third channel is
not the first communications channel, and the channel identification data
specifies that the first channel is not to be used by the first participant for the
first communication. See RAN 6 (incorporating pages 56 and 57 of the ’111
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Request by reference); RAN 19 (incorporating pages 211 and 212 of the
’647 Request by reference). Our emphasis underscores that the claim
merely specifies that (1) the third channel is not the first channel, and (2) the
first channel is not to be used by the first participant for the first
communication.
Claim 8, however, does not specify that the first channel is not to be
used to provide the channel identification data: rather, the claim merely
specifies that the third channel on which this data is provided is not the first
channel. That is, the claim merely distinguishes the third and first channels,
but does not prohibit providing channel identification data over the first
channel so long as this data is also provided over the third channel—a
channel that is not the first channel. The Examiner’s point in this regard is
well taken. See Ans. 8 (noting claim 8 does not indicate that a first channel
cannot be used for channel identification so long as at least a third channel is
also used to communicate the channel identification data); see also id.
(noting that claim 8 does not require not using the first channel to provide
the channel identification data to the first participant/device). That claim 8’s
preamble includes the term “comprising” which does not preclude additional
unrecited steps,4 and the fact that the claim does not explicitly prohibit using
the first channel to provide the channel identification data—unlike the
explicit prohibition for using that channel for the first communication by the

4 “‘Comprising’ is a term of art used in claim language which means that the
named elements are essential, but other elements may be added and still
form a construct within the scope of the claim.” Genentech, Inc. v. Chiron
Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (citation omitted).
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first participant—only further bolsters the reasonableness of the Examiner’s
construction.
Patent Owner contends that Sivakumar’s broadcasting an indication of
the two black-listed frequencies on the remaining “D” slots5 in the
configuration interval in step 148 of Figure 4 and page 9, lines 24 to 27, uses
black-listed frequencies for that broadcast. App. Br. 33. Even assuming,
without deciding, that Patent Owner is correct, Sivakumar nevertheless
contemplates at least one scenario where this broadcast also occurs over
other non-blacklisted channels, particularly in view of the four “D” slots in
Sivakumar’s Figure 1 as the Examiner indicates. See Ans. 9 (noting that
Sivakumar’s Figure 1 shows at least four “D” transmission slots/channels
which means that at least two of these channels are not black-listed
channels). Patent Owner’s arguments to the contrary (App. Br. 32–35) are
unavailing and not commensurate with the scope of the claim.
We reach this conclusion even assuming, without deciding, that black-
listed channels are not avoided until after the black list is transmitted in step
148 such that these channels are avoided only until the evaluation phase of
the next epoch as Patent Owner contends. See App. Br. 35–36 (citing
Sivakumar 9:29–10:3). Leaving aside the fact that nothing in the claim
precludes providing channel identification data over the first channel so long
as this data is also provided over the third channel as noted previously, the

5 The Examiner’s finding that the “D” slots in Sivakumar’s Figure 1 (e.g.,
100b) indicate communication from master to node, and “U” slots (e.g.,
100a) indicate communication from node to master (Ans. 3) is undisputed.
Nor do we see error in this finding given the associated description on
Sivakumar’s page 7, lines 24 to 29.
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third channel used to provide this data would also differ from the first
channel used by the first participant for the first communication in the
subsequent epoch (i.e., after the system reenters the evaluation phase
following the previous epoch) because the black-listed channels are omitted
in that subsequent epoch. See Sivakumar 9:29–10:3. To the extent that
Patent Owner contends otherwise (see App. Br. 35–36), such arguments are
unavailing and not commensurate with the scope of the claim.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 8, and claims 46 and 60 not argued separately with particularity.

Claims 13 and 65
We also sustain the Examiner’s rejection of claim 13 reciting, in
pertinent part, determining a number of communication channels that satisfy
at least one performance criterion, and if the number of channels that satisfy
the at least one performance criterion is less than a specified number,
reclassifying one or more channels, where reclassifying is based on (1) the
channel performance, and (2) at least one revised performance criterion, the
revised criterion selected such that the number of channels satisfying the
revised criterion is not less than the specified number. See RAN 6
(incorporating pages 61 and 62 of the ’111 Request by reference); RAN 23
(incorporating pages 282 to 285 of the ’647 Request by reference).
Our emphasis on the word “if” underscores that this is a conditional
limitation that need not be satisfied to meet the claim under its broadest
reasonable interpretation. See Ex parte Schulhauser, No. 2013-007847, slip
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op. at 9–10 (PTAB Apr. 28, 2016) (precedential).6 Therefore, Patent
Owner’s contentions regarding Sivakumar’s alleged shortcomings in this
regard (App. Br. 53–59) are not commensurate with the scope of the claim
and, therefore, are unavailing for that reason alone.
Nevertheless, even if the recited condition had to occur (which it does
not), we are still unpersuaded of error in the Examiner’s reliance on
Sivakumar for anticipating claim 8, including its conditional limitations.
First, despite Patent Owner’s arguments to the contrary (App. Br. 52–53;
Reb. Br. 8–9), Sivakumar effectively determines a number of channels that
satisfy at least one performance criterion as the Examiner indicates. Ans.
17–20 (citing Sivakumar 4:4–15). By creating a black list of the two worst-
performing frequencies, Sivakumar effectively determines a number of
channels that satisfy at least one performance criterion, namely the number
of channels that are black-listed. Accord ’647 Request 243. Patent Owner’s
contention that Sivakumar never determines the number of worst-performing
frequency bands (App. Br. 53) is unavailing given Sivakumar’s explicit
determination of two such bands. See Sivakumar 9:21–23; 10:2–3.
Notably, after the channels are so classified in the current epoch, the
channels are effectively reclassified in a subsequent epoch (i.e., after the
system reenters the evaluation phase following the previous epoch). See
Sivakumar 9:29–10:3. Notably, this reclassification occurs in a variety of
scenarios, including when the channels that satisfy the black-list criteria in a

6 This decision is available at the Board’s web site at
https://www.uspto.gov/patents-application-process/appealing-patent-
decisions/decisions-and-opinions/precedential.
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subsequent epoch is less than a specified number of black-listed channels in
a previous epoch, such as when black-listed channels are removed from the
black list due to a small value of β or to comply with governmental
regulations. See Sivakumar 12:6–8 (noting that if β is small, the black-listed
channels have a greater chance of being taken off the black list); see also id.
12:15–18 (noting that although two frequency bands are placed onto the
black list in the described embodiment, this number may be dictated or at
least constrained by governmental regulations). Accord ’647 Request 243
(“If there are not enough good channels that have a good enough
performance [in Sivakumar], the channels classified as black listed are
reclassified as being not blacklisted.”); Ans. 20 (quoting this passage).
Notably, this reclassification is based not only on channel
performance, but is also based on least one revised performance criterion,
including the modified probability determination in Sivakumar’s equation 3
that, unlike equation 2, reflects the channel performance not only over the
evaluation interval, but also historic performance over previous intervals.
See Sivakumar 10:5–15 (equation 3). Compare id. 9:12–19 (equation 2). In
addition to this probability-based revised performance criterion involving
equation 3, Sivakumar contemplates other revisions to performance criteria
as well, including varying black list creation frequency depending on
environmental conditions, such as noise or interference. See Ans. 19–20;
see also ’647 Request 283 (citing Sivakumar 4:4–15). Appellants’
arguments to the contrary (App. Br. 53–59; Reb. Br. 9–11) are unavailing
and not commensurate with the scope of the claim.
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Therefore, we are not persuaded that the Examiner erred in rejecting
claim 13, and claim 65 not argued separately with particularity.7

Claims 36, 38, 88, 90, 93, and 95
We also sustain the Examiner’s rejection of claim 36 reciting, in
pertinent part, providing (1) first channel identification data to a first
participant over a second channel that is not the first channel, and (2) second
channel identification data to a second participant over a fifth channel that is
not the fourth channel. See RAN 33 (incorporating pages 514 to 524 of the
’647 Request by reference).
Despite Patent Owner’s arguments to the contrary (App. Br. 97–100),
nothing in the claim precludes providing first channel identification data,
namely information indicating black-listed channels, to a first slave-node
participant over a second non-blacklisted channel that is not the first channel
for the reasons indicated previously and by the Examiner. See ’647 Request
519–20; Ans. 40–42. Nor does the claim preclude providing second channel
identification data to a second slave-node participant over a fifth non-
blacklisted channel that is not a fourth black-listed channel in a subsequent
epoch. See ’647 Request 522–24 (citing Sivakumar 11:3–16).
We find unavailing Patent Owner’s contention that because
Sivakumar’s master allegedly sends the same black list to all slave nodes,

7 Although Patent Owner also argues that claim 52 is also not anticipated by
Sivakumar (App. Br. 52), the claim was not so rejected. See RAN 6, 13, 17–
24, 28, 30, 33–35, 38–46, 48–52, 55, 56, 59–61, 63–65.
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Sivakumar does not provide different channel identification data to different
participants over different channels. App. Br. 97–99.
First, nothing in the claim precludes providing channel identification
data over the first and fourth channels so long as this data is also provided
over the second and fifth channels. That the channel identification data
specifies that first and fourth channels are not to be used does not necessarily
mean that they are avoided for all communications, including providing the
channel identification data that specifies their future intended non-use.
Accord Ans. 41 (“[W]hether Sivakumar broadcasts on the black-listed
channels is irrelevant so long as it also broadcasts on a second channel that
is not the first channel and on a fifth channel that is not [t]he fourth
channel.”) (emphasis added); see also id. (noting that the claims do not
recite that the first channel is avoided or not used for every communication).
Nevertheless, as noted previously, channels used to provide this data would
also differ from channels used for communication in subsequent epochs (i.e.,
after the system reenters the evaluation phase following the previous epoch)
because the black-listed channels are omitted in that subsequent epoch. See
Sivakumar 9:29–10:3.
Nor does the claim preclude providing the recited channel
identification data to multiple participants, so long as (1) the first channel
identification data is also provided to a first participant over a second
channel that is not the first channel, and (2) the second channel identification
data is also provided to a second participant over a fifth channel that is not
fourth channel. Accord Ans. 41 (“[W]hether Sivakumar broadcasts on the
same channel to two participants is irrelevant so long as it also broadcasts on
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another frequency to another participant.”). So even assuming, without
deciding, that Sivakumar’s master sends the same black list to all slave
nodes in one epoch as Patent Owner contends, the same cannot be said for
subsequent epochs given the revised evaluations in those later epochs,
including omitting previously black-listed channels. See Sivakumar 9:29–
12:18. Nor does the claim preclude multiple recipients receiving channel
identification data as noted previously. Patent Owner’s arguments to the
contrary are unavailing and not commensurate with the scope of the claim.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 36, and claims 38, 88, 90, 93, and 95 not argued separately with
particularity.

Claims 37, 89, and 94
We also sustain the Examiner’s rejection of claim 37 reciting, in
pertinent part, selecting the first and fourth channels from channels classified
as bad. See RAN 34 (incorporating pages 549 to 553 of the ’647 Request by
reference); Ans. 43–44.
Despite Patent Owner’s arguments to the contrary (App. Br. 108–11;
Reb. Br. 16–17), we see no error in the Examiner’s incorporated finding that
Sivakumar’s blacklisted channels are (1) classified as bad, and (2) selected
to be identified to a slave. ’647 Request 551–52 (citing Sivakumar 9:21–
27). As noted in the cited passage, Sivakumar’s master node (1) identifies
the worst-performing frequency bands, and (2) creates a black list of the two
worst-performing frequencies in step 146. Then, in step 148, the master
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node transmits a control packet indicating the black-listed frequencies to the
slave nodes. Sivakumar 9:24–27.
Given this functionality, we find Sivakumar anticipates claim 37 even
assuming, without deciding, that the recited classifying, selecting,
generating, and providing steps must be performed in that order as Patent
Owner contends (App. Br. 108). First, identifying the worst-performing
channels in step 146 effectively classifies those channels as bad. These
blacklisted channels are then selected for inclusion in a packet to be
transmitted to the slaves for identification. See Sivakumar 9:24–27.
Channel identification data, including packetized information indicating the
blacklisted channels, is then generated and subsequently provided to the
slaves by transmitting this data in step 148.
Given this sequential process, Patent Owner’s contention that
transmitting and selecting the black list in Sivakumar occur simultaneously
(App. Br. 109) is unavailing. As noted above, Sivakumar’s black-listed
channels in Sivakumar are selected for inclusion in a packet before that
packet is generated and transmitted. Without this preliminary selection, the
packet would not indicate the particular black-listed channels that were so
classified as bad. See Sivakumar 9:21–27.
Lastly, Patent Owner’s contention that Sivakumar allegedly does not
select a different channel from channels classified as bad for different
participants (App. Br. 110–11) is likewise unavailing for the reasons noted
previously. Even assuming, without deciding, that Sivakumar’s master
sends the same black list to all slave nodes in one epoch as Patent Owner
contends, the same cannot be said for subsequent epochs given the revised
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evaluations in those later epochs, including omitting previously black-listed
channels. See Sivakumar 9:29–12:18. Nor does the claim preclude multiple
recipients receiving channel identification data as noted previously. Patent
Owner’s arguments to the contrary are unavailing and not commensurate
with the scope of the claim.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 37, and claims 89 and 94 not argued separately with particularity.

THE ANTICIPATION REJECTION OVER IMAMURA
Claims 1, 4–6, 9–12, 14, 25, 27, 41, 44, 47, 49, 53, 56, 58, 61, 77, and 79
We also sustain the Examiner’s anticipation rejection of claim 1
reciting, in pertinent part, the channel identification data specifies that the
first channel is not to be used by the first participant for the first
communication. See RAN 8 (incorporating pages 140 to 149 of the ’111
Request and the ’111 Requester’s Comments filed Dec. 5, 2013 by
reference); RAN 14–15 (incorporating pages 89 to 92 of the ’647 Request by
reference); Ans. 43–44.
Despite Patent Owner’s arguments to the contrary (App. Br. 25–28;
Reb. Br. 5–6), we see no error in the Examiner’s reliance on Imamura’s
functionality in paragraph 27 for anticipating the recited channel
identification data. As Imamura explains, data is classified into subgroups
with high and low communication quality, where high-quality frequencies
are hopped for “significant” data, and low-quality frequencies are hopped for
“insignificant” data. Imamura ¶ 27. For either case, a message is sent that
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the transmission side uses those particular frequencies, and frequencies are
hopped accordingly. See id.
In the incorporated Requests, the Examiner equates the recited
channel identification data to the message sent indicating that the
transmission side uses low-quality frequencies for frequency hopping
insignificant data. See ’111 Request 144; see also ’647 Request 91. We see
no error in these adopted findings. To be sure, this message-based data
indicates what frequencies to use, and does not indicate explicitly what
frequencies not to use as Patent Owner indicates. App. Br. 27. But because
significant data is only communicated via high-quality frequencies,
specifying using low-quality frequencies for insignificant data effectively
specifies not to use high-quality frequencies for insignificant data. Accord
’111 Request 144; ’647 Request 92; Ans. 4 (citing Imamura ¶¶ 22, 27).
Moreover, this data is provided by at least a particular participant to at least
a first participant as claimed. To the extent Patent Owner contends
otherwise (see App. Br. 28–29), such arguments are unavailing and not
commensurate with the scope of the claim.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 4, 6, 9, 25, 27, 41, 44, 47, 49, 53, 56, 58, 61, 77, and 79
not argued separately with particularity.8

8 Although Patent Owner nominally argues claims 25, 27, 77, and 79
separately (App. Br. 77–78), Patent Owner principally reiterates arguments
made for claim 1. We, therefore, group these claims accordingly. We treat
other nominally-argued claims similarly, and group those claims
accordingly.
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Claims 8, 36, 37, 46, 60, 88, 89, 93 and 94
We will not sustain the Examiner’s rejection of claim 8 reciting, in
pertinent part, providing channel identification data to the first participant
over a third communications channel, where the third channel is not the first
communications channel, and the channel identification data specifies that
the first channel is not to be used by the first participant for the first
communication. See RAN 8–9 (incorporating page 145 of the ’111 Request
by reference); RAN 19 (incorporating pages 212 to 214 of the ’647 Request
by reference). Our emphasis underscores that the claim merely specifies that
(1) the third channel is not the first channel, and (2) the first channel is not to
be used by the first participant for the first communication.
Claim 8, however, does not specify that the first channel is not to be
used to provide the channel identification data: rather, the claim merely
specifies that the third channel on which this data is provided is not the first
channel. That is, the claim merely distinguishes the third and first channels,
but does not prohibit providing channel identification data over the first
channel so long as this data is also provided over the third channel—a
channel that is not the first channel.
Nevertheless, we find the Examiner’s anticipation rejection
problematic on this record. First, although the messages transmitted in the
first and second message transmission steps in Imamura’s paragraph 27
indicate whether high-quality or low-quality frequencies are used for
frequency hopping, Imamura does not indicate the frequency on which these
messages are transmitted as Patent Owner indicates. App. Br. 38.
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Nor does Imamura indicate the frequency on which the table of Figure
3 is transmitted to stations, despite this table indicating 100 system
frequencies—40 of which are used for frequency hopping, and 60
frequencies are unused. See Imamura ¶¶ 42, 47; Fig. 3. Although the
Examiner finds that these 40 channels are used to communicate about not
using 60 channels (Ans. 10), Imamura is silent regarding such a
communication via these channels. Although these 40 channels are used for
frequency hopping, Imamura says nothing about using these particular
channels to also (1) transmit associated messages in the first and second
message transmission steps, or (2) transmit the table in Figure 3 and its
associated quality information to stations in paragraph 47. Accord App. Br.
38–39 (noting this deficiency). Therefore, we cannot say that Imamura
necessarily provides channel identification data to a first participant over a
third channel that is not the first channel as claimed.
Accordingly, we are persuaded that the Examiner erred in rejecting
(1) independent claim 8; (2) independent claims 36, 46, 60, 88, and 93 that
recite commensurate limitations; and (3) dependent claims 37, 89, and 94 for
similar reasons. Because this issue is dispositive regarding our reversing the
Examiner’s rejection of these claims, we need not address Patent Owner’s
other associated arguments.

THE ANTICIPATION REJECTION OVER GENDEL
Claims 1, 3, 9, 25–28, 41, 43–45, 47, 49, 50, 53, 55–58, 61, 66, and 77–80

We sustain the Examiner’s anticipation rejection of claim 1 reciting,
in pertinent part, receiving a third communication from a first participant
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over a third channel, the communication including first performance quality
data for the third channel, where the data specifies the performance quality
for the third channel between the particular participant and first participant.
See RAN 6–7 (incorporating pages 67 to 82 of the ’111 Request and the
’111 Requester’s Comments filed Dec. 5, 2013 by reference); RAN 15–16
(incorporating pages 93 to 97 of the ’647 Request by reference); Ans. 6–7.
Despite Patent Owner’s arguments to the contrary (App. Br. 29–32;
Reb. Br. 6–7), we see no error in the Examiner’s equating the data
exchanged between participants regarding which channel to use reasonably
constitutes “performance quality data” because this usage is tied to channel
quality, namely whether the channel satisfies a particular error value. See
Ans. 6–7; see also Gendel 7:20–35 (noting that when the error value of a
particular used segment reaches or exceeds a predetermined threshold,
subsystems 122, 124, 132, and 134 (1) replace the erred segment and all its
hopping frequencies with an unused segment, and (2) notify the other
communicating party of the replacement in the hopping pattern); Id. 12:36–
42. This replacement notification effectively communicates this
“performance quality data” because the replacement is due to the channel’s
poor performance—performance that is based on the channel’s quality.
So even assuming, without deciding, that there could possibly be other
potential reasons to remove a channel as Patent Owner contends (App. Br.
30; Reb. Br. 7)—a contention that is unsubstantiated—the reason to remove
a channel in the context of Gendel’s disclosure is based on the channel’s
performance quality, namely whether a particular error value is satisfied.
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Patent Owner’s arguments to the contrary (App. Br. 29–32; Reb. Br. 6–7)
are unavailing and not commensurate with the scope of the claim.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 3, 9, 25–28, 41, 43–45, 47, 49, 50, 53, 55–58, 61, 66,
and 77–80 not argued separately with particularity.9

Claims 8, 36–40, 46, 60, and 88–97
We do not sustain the Examiner’s rejection of claim 8 reciting, in
pertinent part, providing channel identification data to the first participant
over a third communications channel, where the third channel is not the first
communications channel, and the channel identification data specifies that
the first channel is not to be used by the first participant for the first
communication. See RAN 6–7 (incorporating page 74 of the ’111 Request
by reference); RAN 19 (incorporating pages 214 to 215 of the ’647 Request
by reference). Our emphasis underscores that the claim merely specifies that
(1) the third channel is not the first channel, and (2) the first channel is not to
be used by the first participant for the first communication.
Claim 8, however, does not specify that the first channel is not to be
used to provide the channel identification data: rather, the claim merely
specifies that the third channel on which this data is provided is not the first

9 Although Patent Owner nominally argues claims 25, 27, 77, and 79
separately (App. Br. 77–79), Patent Owner again principally reiterates
arguments made for claim 1. We, therefore, group these claims accordingly.
We treat other nominally-argued claims similarly, and group those claims
accordingly.

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channel. That is, the claim merely distinguishes the third and first channels,
but does not prohibit providing channel identification data over the first
channel so long as this data is also provided over the third channel—a
channel that is not the first channel.
Nevertheless, we find the Examiner’s anticipation rejection
problematic on this record. Although Gendel’s system transmits
replacement requests and request signals as noted above, Gendel does not
indicate the frequency on which these messages are transmitted as Patent
Owner indicates. App. Br. 41–43. Despite the Examiner’s indicating that
Gendel uses any of the segments/frequencies for transmission, reception, or
removal from the hopping sequence (Ans. 11), Gendel is silent regarding the
particular frequency on which the requests are transmitted, let alone whether
this channel is not the first channel as claimed. See Gendel 12:18–57. Nor
will we speculate in that regard here in the first instance on appeal.
Therefore, we are persuaded that the Examiner erred in rejecting (1)
independent claim 8; (2) independent claims 36, 46, 60, 88, and 93 that
recite commensurate limitations; and (3) dependent claims 37–40, 89–92,
and 94–97 for similar reasons. Because this issue is dispositive regarding
our reversing the Examiner’s rejection of these claims, we need not address
Patent Owner’s other associated arguments.

Claims 10–13, 51, 52, and 62–65
We sustain the Examiner’s rejection of claim 13 reciting, in pertinent
part, determining a number of communication channels that satisfy at least
one performance criterion, and if the number of channels that satisfy the at
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least one performance criterion is less than a specified number, reclassifying
one or more channels, where reclassifying is based on (1) the channel
performance, and (2) at least one revised performance criterion, the revised
criterion selected such that the number of channels satisfying the revised
criterion is not less than the specified number. See RAN 6–7 (incorporating
pages 77 and 78 of the ’111 Request by reference); RAN 23 (incorporating
pages 285 and 286 of the ’647 Request by reference).
Our emphasis on the word “if” underscores that this is a conditional
limitation that need not be satisfied to meet the claim under its broadest
reasonable interpretation. See Schulhauser, at 9–10. Therefore, Patent
Owner’s contentions regarding Gendel’s alleged shortcomings in this regard
(App. Br. 61–65) are not commensurate with the scope of the claim and,
therefore, are unavailing for that reason alone.
Nevertheless, even if the recited condition had to occur (which it does
not), we are still unpersuaded of error in the Examiner’s reliance on Gendel
for anticipating claim 13, including its conditional limitations. First, despite
Patent Owner’s arguments to the contrary (App. Br. 59–61; Reb. Br. 11–12),
Gendel effectively determines a number of channels that satisfy at least one
performance criterion. As noted above, when the error value of a particular
used segment reaches or exceeds a predetermined threshold, the erred
segment (and all its hopping frequencies) is replaced with an unused
segment. Gendel 6:30–56; 7:20–35. Notably, this segment-based evaluation
effectively determines a number of channels that satisfy the performance
criterion, namely zero, because this segment (and its associated hopping
frequencies) is erroneous and, therefore, does not satisfy the performance
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criterion. Accord Ans. 20–21 (construing the term “a number” to include
one or zero, and finding that Gendel determines if one or none of each
segment as its own group satisfies the performance criterion). Patent
Owner’s contention that “a number” as claimed must have at least three
different values, and that Gendel does not determine the total number of
used segments (App. Br. 60) is unavailing and not commensurate with the
scope of the claim.
Notably, Gendel’s system replaces an erred segment (and all its
hopping frequencies) with an unused segment when the number of channels
satisfying the performance criterion, namely zero, is less than a specified
number, namely one. In this scenario, the erred segment (and all its hopping
frequencies) is effectively reclassified as not to be used as noted in the
Examiner’s incorporated findings. See ’647 Request 285–86 (citing Gendel,
col. 6, ll. 46–56; Fig. 2B); see also ’111 Request 77–78. Patent Owner’s
arguments to the contrary (App. Br. 64–65) are unavailing and not
commensurate with the scope of the claim.
Nor are we persuaded of error in the Examiner’s reliance on Gendel’s
operating parameter adjustment functionality in column 10, lines 53 to 59
for disclosing the recited revised performance criterion (Ans. 22), even if the
recited reclassification condition had to occur to satisfy claim 13—which it
does not. See Schulhauser, at 9–10. In the relied-upon passage, Gendel
notes that values for operating parameters (e.g., penalty value, increment and
decrement values, threshold value) may be adjusted to optimize error
detection and link quality control for a particular frequency hopping system.
Gendel, col 10, ll. 53–59.
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Patent Owner, however, contends that it is ostensibly unnecessary to
revise Gendel’s predetermined threshold to ensure the number of used
segments satisfying that threshold is not less than a specified number since
an erred segment is always immediately replaced with an unused segment.
App. Br. 63–64. This argument is unavailing. First, Patent Owner’s
arguments in this regard are limited solely to the threshold operating
parameter in Gendel’s column 10, lines 53 to 59, and ignore the other
exemplary operating parameters that are revised, including penalty values,
increment values, and decrement values. That the Examiner refers to these
adjusted exemplary operating parameters in a non-limiting sense, namely as
including a threshold value (Ans. 22), is telling in this regard.
Nevertheless, despite Patent Owner’s arguments to the contrary (App.
Br. 63–64), Gendel adjusts threshold values to optimize error detection and
link quality for a particular frequency hopping system. Gendel, col 10, ll.
53–59. Therefore, Gendel fully meets reclassifying based on a revised
performance criterion, where this criterion is selected such that the number
of channels satisfying the criterion is not less than the specified number (i.e.,
one), namely in situations where segments are not replaced.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 13, and claims 10–12, 51, 52, and 62–65 not argued separately with
particularity.10

10 Although Patent Owner nominally argues claims 10, 51, and 62 separately
(App. Br. 108), Patent Owner again principally reiterates arguments made
for claim 13. We, therefore, group these claims accordingly.
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Claims 30, 34, 82, and 86
We also sustain the Examiner’s rejection of claim 30 reciting, in
pertinent part, (1) creating and maintaining, at a first participant, first
performance data indicating the performance of at least one channel between
the first and second participants; (2) requesting and receiving second
performance data from a third participant, where the second performance
data indicates the performance of a channel between the third participant and
at least a fourth participant; and (3) creating and maintaining revised first
performance data based on the first and second performance data.
We first note that the Examiner’s mapping the recited (1) third
participant to the second participant, and (2) fourth participant to the first
participant (Ans. 31) is undisputed. Indeed, this mapping is consistent with
a similar correspondence recited in claim 33. Accord Ans. 31 (noting this
correspondence); ’647 Request 480 (same).
We also see no error in the Examiner’s reliance on the functionality
associated with Gendel’s error segment replacement as detailed, for
example, in Figures 5 and 6 for anticipating the recited limitations. See Ans.
31 (citing Gendel, col. 12, ll. 18–32). First, because Gendel’s subsystems
store error values for associated segments, Gendel discloses that a first
participant creates and maintains first performance data as claimed. Accord
’647 Request 479; ’111 Request 84.
As shown in Gendel’s Figure 5, if (1) an error occurs in a received
packet for a current hopping frequency in a currently-used segment in step
604, and (2) the associated error value is greater than a threshold in step 618,
the segment is marked as a candidate for replacement in step 616, and the
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replacement process with the other party commences in step 614. Gendel,
col. 11, ll. 24–54. This process then repeats for the next frequency in the
next used segment until all frequencies in all segments have been visited at
least once, thus completing one cycle. See Gendel Fig. 5 (“NO” prong in
step 620); col. 11, ll. 54–65. After completing this cycle, the error values of
segments with no reception errors are modified in step 622, and the process
returns to step 604 to repeat the process. Gendel, col. 11, ll. 57–65; col. 12,
ll. 10–17.
Gendel details the segment replacement process in Figure 6. In step
654, Gendel’s system transmits a signal, such as a replacement request, to
another party requesting that a particular erroneous segment is to be replaced
with an unused segment. Gendel, col. 12, ll. 36–39. Then, in step 656, the
system checks whether a reply was received from the other party
acknowledging receipt of the request to modify the hopping pattern and, if
so, the segment hopping table is updated accordingly in step 662. Id. col.
12, ll. 42–48.
Given this functionality, Gendel discloses requesting and receiving
second performance data, namely either a reply acknowledging receipt of a
request to modify the hopping pattern and/or a request to modify the
hopping pattern from third participant (i.e., the second participant) in steps
656 and 658 of Figure 6. Accord ’111 Request 85. Moreover, despite Patent
Owner’s arguments to the contrary (App. Br. 84–85), Gendel also discloses
creating and maintaining revised first performance data based at least partly
on the first and second performance data. Accord ’647 Request 481 (noting
that notifications sent from one device to another in Gendel include details
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of erred segments and replacement segments). ’111 Request 85 (“The
requests to update segments sent from one party to another party requesting
replacement of segments contain performance data in the form of
identification of a segment to be replaced, SERROR, and the identification of a
replacement segment, SUNUSED.”) (emphasis added).
Appellants’ contention that Gendel allegedly does not create and
maintain revised first performance data based on the first and second
performance data (App. Br. 85) is unavailing and not commensurate with the
scope of the claim. Although Gendel’s segment hopping table is updated
based on at least the second performance data as Patent Owner
acknowledges (id.), revised first performance data is nonetheless also
created and maintained in connection with this process.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 30, and claims 34, 82, and 86 not argued separately with
particularity.11

Claims 33 and 85
We also sustain the Examiner’s rejection of claim 33 reciting, in
pertinent part, requesting and receiving second performance data and third
performance data from a third participant, where the third performance data
indicates performance of at least one channel between the third participant

11 Although Patent Owner nominally argues claims 34 and 86 separately
(App. Br. 96–97), Patent Owner again principally reiterates arguments made
for claim 30. We, therefore, group these claims accordingly.
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and at least a sixth participant. RAN 6–7 (incorporating page 86 of the ’111
Request 86 by reference).
In rejecting the claim, the Examiner equates (1) the third participant to
the second participant; (2) the sixth participant to the first participant; and
(3) third performance data to the second performance data. RAN 7. We see
no error in this mapping. First, the claim itself specifies the first mapping
explicitly. Nor do we see error in the Examiner’s second and third mappings
despite Patent Owner’s arguments to the contrary (App. Br. 88–89).
To be sure, using the terms “first” and “second” in claim language is a
common patent-law convention to distinguish between repeated instances of
an element or limitation. 3M Innovative Properties Co. v. Avery Dennison
Corp., 350 F.3d 1365, 1371 (Fed. Cir. 2003). Therefore, the terms “first,”
“second,” and “third” used in the claim distinguish repeated instances of the
recited performance data, and the terms “first,” “second,” “third,” “fourth,”
“fifth,” and “sixth” distinguish repeated instances of the recited participants.
But nothing in the claims nor the Specification requires these elements
to be different; indeed, the claims themselves suggest otherwise. That claim
33 recites that (1) the third participant is the second participant, and (2) the
fourth participant is the first participant is telling in this regard. Merely
because the claim does not also recite explicitly that (1) the sixth participant
is the first participant; and (2) the third performance data is the second
performance data does not mean that this equivalence cannot exist or is
otherwise prohibited. We reach this conclusion noting that claim 34’s
preamble includes the term “comprising” which does not preclude additional
unrecited steps. See Genentech, 112 F.3d at 501. That claim 34 does not
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prohibit the above mapping explicitly—unlike other explicit prohibitions in
the claims12—only further bolsters the reasonableness of the Examiner’s
construction. See Ans. 35–36.
Patent Owner’s contention, then, that the sixth participant is not the
same as any other participant recited in claim 33 (App. Br. 88) is unavailing
and not commensurate with the scope of the claim. And to the extent that
Patent Owner contends that the third performance data is not the second
performance data (see App. Br. 88–89), such a contention is likewise
unavailing for similar reasons.
To be sure, claim 33 recites that the third performance data indicates
performance of at least one channel between the third participant and at least
a sixth participant as Patent Owner indicates. App. Br. 89.13 But given the
Examiner’s mapping (1) the sixth participant to the first participant, and (2)
the third performance data to the second performance data (RAN 7), we see
no error in the Examiner’s reliance on Gendel’s segment-replacement
functionality for anticipating the recited limitations for the reasons
previously discussed.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 33, and claim 85 not argued separately with particularity.

12 See, e.g., claim 8 (reciting that the third channel is not the first channel);
see also claims 36 and 88 (reciting that the second channel is not the first
channel, and the fifth channel is not the fourth channel).
13 But see App. Br. 88 (arguing that the third performance data is
performance data of at least one channel between the third participant and at
least a fourth participant).
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THE ANTICIPATION REJECTION OVER SONETAKA
We sustain the Examiner’s rejection of independent claim 30 reciting,
in pertinent part, (1) creating and maintaining, at a first participant, first
performance data indicating the performance of at least one channel between
the first and second participants; (2) requesting and receiving second
performance data from a third participant, where the second performance
data indicates the performance of a channel between the third participant and
at least a fourth participant; and (3) creating and maintaining revised first
performance data based on the first and second performance data. RAN 9
(incorporating pages 150 to 152 of the ’111 Request by reference); RAN 32
(incorporating pages 471 to 474 of the ’647 Request by reference); Ans. 28–
30.
In the incorporated findings, the Examiner finds that first performance
data in the form of “CH (channel)14 information” is created and maintained
at a first participant, namely Sonetaka’s base station “B” in Figures 4 and 5.
See ’647 Request 472; ’111 Request 151. This first performance data is said
to indicate the performance of at least one channel between the first
participant (base station “B”) and at least a second participant, namely its
respective subscriber terminal, because channels are later assigned between
these participants based on this data to minimize interference. ’647 Request
472.
Similarly, the Examiner finds that second performance data in the
form of “CH information” is received from a third participant, namely base

14 Sonetaka abbreviates the term “channel” as “CH.” See Sonetaka, col. 6, l.
35.
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station “C.” See ’647 Request 472; ’111 Request 151–52. This second
performance data is said to indicate the performance of at least one channel
between the third participant (base station “C”) and at least a fourth
participant, namely its respective subscriber terminal, because channels are
later assigned between these participants based on this data to minimize
interference. ’647 Request 473.
We see no error in these findings. Because Sonetaka’s CH
information (1) indicates a channel’s performance with respect to, among
other things, interference, and (2) channels are later assigned for
communications between base stations “B” and “C” and their respective
subscriber terminals based on this performance data to, among other things,
minimize interference, the performance data at least indicates the channels’
performance between the recited participants, at least with respect to
interference. See Sonetaka col. 4, ll. 46–58; Figs 4–5. Patent Owner’s
arguments to the contrary (App. Br. 79–82) are unavailing and not
commensurate with the scope of the claim.
Nor do we see error in the Examiner’s finding that Sonetaka’s system
creates and maintains revised first performance data, namely “CH
assignment information,” based on the first and second performance data as
claimed. See ’111 Request 152 (citing Sonetaka col. 4, ll. 48–57); ’647
Request 473–74 (same). As shown in Sonetaka’s Figure 5, after master base
station “A” selects appropriate channels based on the CH information
received from slave base stations “B” and “C,” the master then sends “CH
assignment information to base stations “B” and “C” for optimum channel
assignment. Sonetaka, col. 4, ll. 48–58. Despite Patent Owner’s arguments
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to the contrary (App. Br. 82–84), we see no reason why Sonetaka’s CH
assignment information cannot constitute revised first performance data,
particularly since it is based at least partly on performance data, namely the
CH information.
Patent Owner’s contention that Sonetaka’s CH assignment
information is not performance data because it differs from CH information
(App. Br. 83–84) is unavailing. First, this contention unsubstantiated by any
persuasive evidence on this record apart from attorney argument that has
little probative value. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997). Second, both CH information and CH assignment information are
data that at least relate to channel performance. Therefore, we see no error
in the Examiner’s mapping Sonetaka’s CH assignment information to the
recited revised first performance data given the scope and breadth of the
limitation.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 30, and claims 31, 32, 35, 82–84, and 87 not argued separately with
particularity.

THE OBVIOUSNESS REJECTION OVER SCHMIDL AND DICKER
We sustain the Examiner’s rejection of independent claim 15 reciting,
in pertinent part, selecting the particular participant based on (1) the
performance of the first channel between the specified participant and the
other participants and (2) at least one selection criterion. Despite Patent
Owner’s arguments to the contrary (App. Br. 75–76; Reb. Br. 13–14), we
see no error in the Examiner’s reliance on Schmidl for at least suggesting
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selecting a particular participant based on the recited channel performance
and selection criterion. RAN 25 (incorporating pages 332 to 342 of the ’647
Request by reference); Ans. 26–27.
In column four, lines 39 to 51, Schmidl describes an example where a
master device transmits data packets to two slave devices. If the frequency
specified by the normal frequency hopping pattern for the master’s next
transmission to the first slave is in a deep fade for the channel to the first
slave, but the channel to the second slave device is good, then the frequency
for transmission to the second slave is chosen because transmitting a packet
to the second slave on that frequency is more likely to be successful than
transmitting a packet to the first slave on that frequency. Schmidl, col. 4, ll.
41–51.
Our emphasis underscores that although Schmidl’s system selects a
frequency as Patent Owner indicates (App. Br. 75–76), Schmidl also
effectively selects particular participants at least with respect to their
associated frequencies. Accord Ans. 26 (noting that Schmidl’s column 4,
lines 39 to 51 indicates that a particular participant is selected as well as a
frequency); ’647 Request 335–36. That Schmidl’s system also chooses to
transmit to the second slave on a frequency specified by the frequency
hopping pattern for transmission to the first slave due to lower attenuation
(Schmidl, col. 4, l. 52–col. 5, l. 3) only further bolsters the Examiner’s
finding that Schmidl at least suggests selecting a particular participant at
least with respect to their associated frequencies. Patent Owner’s arguments
to the contrary (App. Br. 75–76; Reb. Br. 13–14) are unavailing and not
commensurate with the scope of the claim.
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Therefore, we are not persuaded that the Examiner erred in rejecting
claim 15, and claims 19–24, 67, and 71–76 not argued separately with
particularity.

THE REMAINING REJECTIONS
Because our decision is dispositive regarding patentability of all
appealed claims based on the foregoing prior art references, we need not
reach the merits of the Examiner’s decision to also reject (1) claims 13 and
65 under 35 U.S.C. § 102(e) as anticipated by Dicker15; (2) claims 15, 19–
21, and 71–73 under 35 U.S.C. § 102(e) as anticipated by Gerten16; (3)
claims 30, 33, 34, 82, 85, and 86 under 35 U.S.C. § 102(b) as anticipated by
Haartsen; (4) claims 30, 33, 34, 82, 85, and 86 under 35 U.S.C. § 102(b) as
anticipated by Bergström; (5) claims 8, 11, 13, 37, 60, 63, 65, 89, and 94
under 35 U.S.C. § 103(a) as obvious over Sivakumar and Kim17; and (6)
claims 8, 37, 38, 63, 89, 94, and 95 under 35 U.S.C. § 103(a) as obvious
over Sivakumar and Koivu. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421,
1423 (Fed. Cir. 1984) (approving ITC’s determination based on a single
dispositive issue, and not reaching other issues not decided by the lower
tribunal).

15 Although Patent Owner also argues that claim 52 is also not anticipated by
Dicker (App. Br. 65–69; Reb. Br. 12–13), the claim was not so rejected. See
RAN 7–8, 23.
16 Although Patent Owner also argues that claim 67 is also not anticipated by
Gerten (App. Br. 74–75), the claim was not so rejected. See RAN 24–25.
17 Although Patent Owner also argues that claims 46 and 52 are also not
obvious over Sivakumar and Kim (App. Br. 44, 69), the claims were not so
rejected. See RAN 10–11, 20, 34–35, 47, 49–51, 60, 64.
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CONCLUSION
We affirm the Examiner’s rejections as follows:
(1) claims 8, 13, 36–38, 46, 60, 65, 88–90, and 93–95 under 35 U.S.C.
§ 102(a) as anticipated by Sivakumar;
(2) claims 1, 4, 6, 9, 25, 27, 41, 44, 47, 49, 53, 56, 58, 61, 77, and 79
under 35 U.S.C. § 102(b) as anticipated by Imamura;
(3) claims 1, 3, 9–14, 25–28, 30, 33, 34, 41, 43–45, 47, 49–53, 55–58,
61–66, 77–80, 85, and 86 under 35 U.S.C. § 102(a) as anticipated by
Gendel;
(4) claims 30–32, 35, 82–84, and 87 under 35 U.S.C. § 102(e) as
anticipated by Sonetaka; and
(5) claims 15, 19–24, 67, and 71–76 under 35 U.S.C. § 103(a) as
obvious over Schmidl and Dicker.

We reverse the Examiner’s rejections as follows:
(1) claims 1, 4, 5, 9–12, 14, 25, 26, 41, 43–45, 47, 49, 51, 53, 55–58,
61–64, 66, 77, and 78 under 35 U.S.C. § 102(a) as anticipated by Sivakumar;
(2) claims 8, 36, 37, 46, 60, 88, 89, 93 and 94 under 35 U.S.C.
§ 102(b) as anticipated by Imamura; and
(3) claims 8, 36–40, 46, 60, and 88–97 under 35 U.S.C. § 102(a) as
anticipated by Gendel.

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We do not reach the following rejections:
(1) claims 13 and 65 under 35 U.S.C. § 102(e) as anticipated by
Dicker;
(2) claims 15, 19–21, and 71–73 under 35 U.S.C. § 102(e) as
anticipated by Gerten;
(3) claims 30, 33, 34, 82, 85, and 86 under 35 U.S.C. § 102(b) as
anticipated by Haartsen;
(4) claims 30, 33, 34, 82, 85, and 86 under 35 U.S.C. § 102(b) as
anticipated by Bergström;
(5) claims 8, 11, 13, 37, 60, 63, 65, 89, and 94 under 35 U.S.C.
§ 103(a) as obvious over Sivakumar and Kim; and
(6) claims 8, 37, 38, 63, 89, 94, and 95 under 35 U.S.C. § 103(a) as
obvious over Sivakumar and Koivu.

DECISION
The Examiner’s decision to reject claims 1, 3–6, 8–15, 19–28, 30–41,
43–47, 49–53, 55–58, 60–67, 71–80, and 82–97 is affirmed-in-part.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

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AFFIRMED-IN-PART

PATENT OWNER:

HICKMAN PALERMO BECKER BINGHAM LLP
1 ALMADEN BLVD.
FLOOR 12
SAN JOSE, CA 95113

THIRD PARTY REQUESTER:

RATNER PRESTIA (’647)
2200 RENAISSANCE BLVD.
SUITE 350
KING OF PRUSSIA, PA 1946

JOHN S. PRATT, ESQ. (’111)
KILPATRICK TOWNSEND & STOCKTON LLP
1100 PEACHTREE STREET, SUITE 2800
ATLANTA, GA 30309