Ex Parte Alcorn

Board of Patent Appeals and Interferences

Nov 9, 2009

11206695 (B.P.A.I. Nov. 9, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DONALD L. ALCORN
____________

Appeal 2009-002526
Application 11/206,695
Technology Center 2600
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Decided: November 9, 2009
____________

Before MAHSHID D. SAADAT, SCOTT R. BOALICK, and
JOHN A. JEFFERY, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

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STATEMENT OF THE CASE
Appellant invented a communication system and method for
providing a high-speed data communications with an in-flight aircraft.
Ground stations provide an IEEE 802.16 Air Interface Standard or WiMax
link with an in-flight receiver station to transfer data, provide Internet
access, and stream video. Several ground stations are located in an air
corridor within an overlapping communication range.1
Independent claim 1 is reproduced below with the key disputed
limitations emphasized:
1. A system of providing high speed data communications to an in-
flight aircraft, comprising:

a plurality of ground transmission stations that are located along
a predefined air corridor within overlapping communications range; and

a receiver station located on board the in-flight aircraft, where
the plurality of ground transmission stations provide a direct high speed
communications link with the receiver station according to IEEE 802.16
Air Interface Standard.
The Examiner relies upon the following as evidence in support of the
rejection:
Gresham US 2002/0160773 A1 Oct. 31, 2002
Rhoads US 2005/0256616 A1 Nov. 17, 2005
(filed May 6, 2005)

1 See generally Spec. ¶¶ 3, 4, 9, 10, 17, and 20; Fig. 1.
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(1) The Examiner rejected claims 1-17 under 35 U.S.C. § 112, first
paragraph as failing to provide adequate written description of the claimed
invention. Ans. 3-4.2
(2) The Examiner rejected claims 1-17 under 35 U.S.C. § 103(a) as
being unpatentable over Gresham and Rhoads. Ans. 4-8.

THE WRITTEN DESCRIPTION REJECTION
Regarding representative independent claim 1,3 the Examiner finds
that the claim limitation, “a direct high speed [data] communications link,”
(emphasis added) in claim 1 was not described or defined in the
Specification, and, thus, the Specification does not support the limitation.
Ans. 3-4. Appellant argues that written support for the claim’s term,
“direct,” can be found in paragraphs nine and twenty4 of the Specification.
App. Br. 10-12; Reply Br. 4-5.5 Appellant asserts that these passages

2 Throughout this opinion, we refer to: (1) Appeal Brief filed January 22,
2008; (2) the Examiner’s Answer mailed February 22, 2008; and (3) the
Reply Brief filed March 24, 2008.

3 Appellant argues independent claims 1, 13, and 14 together, and does not
separately argue dependent claims 2-12 and 15-17. App. Br. 10-12.
Accordingly, we select independent claim 1 as representative. 37 C.F.R.
§ 41.37(c)(1)(vii).

4 Appellant cites to paragraph twenty-one (App. Br. 11), but the quoted
language in found in paragraph twenty.

5 Although the pages of Appellant’s Briefs are not individually paginated,
we nevertheless refer to pages of the Briefs in the order in which they appear
in the record for clarity.
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support a “direct, uninterrupted, real time data communications link between
in-flight aircraft and ground stations.” App. Br. 11.
The issue before us, then, is as follows:

ISSUE
Does the originally-filed Specification reasonably convey to one of
ordinary skill in the art that Appellant had possession of the limitation of
claim 1 calling for plural ground transmission stations that provide a direct
high speed data communications link with the receiver station?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
Appellant’s Disclosure
1. The Specification does not use or define the recited phrase “a direct
high speed data communications link.” See generally Specification
and Abstract.
2. The original claims do not recite “a direct high speed data
communications link.” Spec. 8-10.
3. The Specification states “[t]he ground transmitters are located in a
pattern to provide overlapping coverage as an aircraft passes from one
transmitter to the other. This allows passengers on the aircraft to have
uninterrupted high speed data communications while in the air.” Spec.
¶ 9.

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4. The Specification describes “[t]he system may be accessed directly by
an individual aboard an aircraft. In an alternative embodiment, the
system may be accessed by the aircraft that it [sic] turn provides
individual access via an onboard network such as a LAN.” Spec. ¶
20.

PRINCIPLES OF LAW
The test for satisfying the written description requirement is “whether
the disclosure of the application relied upon ‘reasonably conveys to the
artisan that the inventor had possession at that time of the later claimed
subject matter’” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir.
1991) (quoting Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570,
1575 (Fed. Cir. 1985)). “One shows that one is ‘in possession’ of the
invention by describing the invention, with all its claimed limitations, not
that which makes it obvious . . . One does that by such descriptive means as
words, structures, figures, diagrams, formulas, etc., that fully set forth the
claimed invention.” Lockwood v. Am. Airlines Inc., 107 F.3d 1565, 1572
(Fed. Cir. 1997) (citation and parenthetical quotation omitted) (emphasis in
original).

ANALYSIS
At the outset, we note the similarities in scope between claim 1 of the
present appeal and claim 1 in Appeal No. 2008-4701 (Appl’n Ser. No.
11/249,620). For example, the preamble of claim 1 in this appeal recites
“[a] system of providing high speed data communications to an in-flight
aircraft[,]” whereas claim 1 in Appeal No. 2008-4701 recites “[a]
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communication system that provides high speed security communications
for in-flight aircraft[.]” Claim 1 of this appeal also recites a “plurality of
ground transmission stations,” and claim 1 of Appeal No. 2008-4701 recites
a “plurality of ground stations.” Finally, claim 1 of this appeal recites “a
receiver station located on board the in-flight aircraft, where the plurality of
ground transmission stations provide a direct high speed data
communications link with the receiver station according to IEEE 802.16 Air
Interface Standard,” while claim 1 of Appeal No. 2008-4701 recites “a direct
high speed communications link according to IEEE 802.16 Air Interface
Standard that connects the ground station with the aircraft based station.”
Based on these similarities, our analysis for the present appeal is therefore
similar to our analysis in Appeal No. 2008-4701.
The original Specification, including the claims, fails to recite or
define the phrase “a direct high speed data communications link.” FF 1-2.
Paragraph 9 of the Specification states “[t]he ground transmitters are located
in a pattern to provide overlapping coverage as an aircraft passes from one
transmitter to the other. This allows passengers on the aircraft to have
uninterrupted high speed data communications while in the air.” FF 3.
Taken in context, this passage does not state that the link between the
ground transmission station and the aircraft receiver station is direct or
without deviation or interruption. Rather, this section describes
uninterrupted data communications during the transition or handoff from one
ground transmission station to another in an overlapping coverage region.
The Specification also states that “[t]he system may be accessed
directly by an individual aboard an aircraft. In an alternative embodiment,
the system may be accessed by the aircraft that it [sic] turn provides
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individual access via an onboard network such as a LAN.” FF 4. This
portion of the disclosure also fails to describe a direct high speed data
communications link. This passage distinguishes between individually-
accessed and network systems. There is, however, no discussion of the
specific link between the ground transmission station and a receiver station
located on board the in-flight aircraft or whether any intervening structure
between the ground transmission stations and the receiver station of an
individually-accessed system exists.
Additionally, the Specification does not support any specific
definition of a direct high speed data communications link,6 including “a
communication link between the ground and the end user on-board an
in-flight aircraft that contains no interruptions or intervening apparatus,” as
Appellant contends. App. Br. 11. Thus, the original disclosure, including its
claims, structure, and drawings, does not fully set forth nor reasonably
convey to the ordinary artisan that Appellant had possession at the time of
filing of plural ground transmission stations that provide a direct high speed
data communications link with the receiver station recited in claim 1.
For the foregoing reasons, we agree with the Examiner that the
disclosure lacks written description support for claims 1-17.

6 Appellant cites to the definition of “direct” (App. Br. 11) provided by
Merriam-Webster's Online Dictionary, 11th ed., available at
http://www.merriam-webster.com/dictionary/direct[2] (last visited
November 2, 2009).
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THE OBVIOUSNESS REJECTION
The Examiner finds that Gresham and Rhoads collectively teach the
limitations of representative independent claim 1,7 including an IEEE 802.16
standard, direct high speed data communications link between the ground
transmission stations and the aircraft receiver station. Ans. 4-5. Appellant
argues that Gresham teaches a communications link that is not between a
ground station and an aircraft receiver station. App. Br. 12-14; Reply Br. 5-
7. Specifically, Appellant contends that Gresham only has the appearance of
a direct connection from the ground station to the user. App. Br. 12-14. In
Appellant’s view, the actual link is between the user on the aircraft and a
server 20 located on the aircraft. Id. Appellant further disputes that Rhoads
teaches using an IEEE 802.16 standard link for an in-flight aircraft. App.
Br. 15-17; Reply Br. 8-9.
The issues before us, then, are as follows:

ISSUES
(1) Has Appellant shown that the Examiner erred in rejecting claim 1
by finding that Gresham teaches that the ground transmission stations
provide a direct high speed data communications link with the receiver
station?

7 Appellant groups claims 1, 13, and 14. App. Br. 12-17. Additionally,
Appellant does not separately argue dependent claims 2-12 and 15-17. App.
Br. 17. Accordingly, we select independent claim 1 as representative. 37
C.F.R. § 41.37(c)(1)(vii).
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(2) Has Appellant shown that the Examiner erred in rejecting claim 1
by finding that Rhoads teaches or suggests using an IEEE 802.16 Air
Interface Standard to connect a ground transmission station with Gresham’s
receiver station located on board the in-flight aircraft?

ADDITIONAL FINDINGS OF FACT
The record supports the following additional findings of fact (FF) by a
preponderance of the evidence.
Gresham
5. Gresham discloses base stations 90 and 120, communications service
providers 80 and 81, and an aircraft based station (radio 60). ¶¶ 41
and 47; Fig. 1.
6. Gresham establishes a communication link between ground station 90
and the aircraft’s station (radio 60) when the aircraft enters a
transition area and on a periodic basis through the communications
service provider network 80 or 81. ¶¶ 47 and 178-181; Fig. 17.
7. Gresham does not discuss the wireless communication link type or
standard. See generally Gresham.

Rhoads
8. Rhoads discloses a wireless communication network or link 295
between a control system 200 and an aircraft 300. ¶¶ 23, 31, 35, 36;
Figs. 1, 2B, and 3.
9. The link 295 can be WiMax Wireless Broadband in accordance with
IEEE Standard 802.16. ¶ 36.
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10. Rhoads also teaches the WiMax standard can be used in wireless
metropolitan-area networks (MANs). ¶ 36.
11. Rhoads teaches the disclosed arrangement provides affordable and
effective solution over large areas. ¶¶ 4, 5, and 16.

PRINCIPLES OF LAW
Discussing the question of obviousness of a patent that claims a
combination of known elements, KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398 (2007), explains:
if a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.
Sakraida [v. AG Pro, Inc., 425 U.S. 273 (1976)] and
Anderson's-Black Rock[, Inc. v. Pavement Salvage Co.,
396 U.S. 57 (1969)] are illustrative—a court must ask whether
the improvement is more than the predictable use of prior art
elements according to their established functions.
KSR, 550 U.S. at 417.

If the Examiner’s burden is met, the burden then shifts to the
Appellant to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).
Nonobviousness cannot be shown by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).

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ANALYSIS
Regarding representative independent claim 1, the claim recites “the
plurality of ground transmission stations provide a direct high speed data
communications link with the receiver station.” The direct link need not be
between the user and the ground station, as Appellant indicates (App. Br.
14), in order for Gresham to meet the limitations of claim 1. Moreover,
while Gresham takes on the appearance of a direct connection from the
ground to the user (App. Br. 12-14), claim 1 requires the ground
transmission stations provide a direct high speed data communications link
with the receiver station located on the in-flight aircraft.
Gresham establishes a direct communication link between a ground
transmission station or communications service provider networks 80 or 81
and an aircraft receiver station (radio 60) when the aircraft enters a transition
area. FF 5-6. Appellant contends this link is interrupted or indirect because
Gresham discloses the link between the aircraft and a ground station is
established on a periodic basis. Reply Br. 6-7. This argument was not
timely raised in the Appeal Brief, but rather was brought up for the first time
in the Reply Brief. As such, this argument is waived.8 In any event,
Gresham discloses a link between a ground station and the aircraft base
station on a periodic basis. FF 6. However, giving the recitation, “a direct
high speed data communications link,” its broadest reasonable construction,
the phrase does not require the service to be continual or uninterrupted in
time. When the link is established between the ground transmission station

8 See Optivus Tech., Inc. v. Ion Beam Appl’ns. S.A., 469 F.3d 978, 989 (Fed.
Cir. 2006) (“[A]n issue not raised by an appellant in its opening brief … is
waived.”) (citations and quotation marks omitted).
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80 and receiver station 60, there is no intervening agent or structure.
Additionally, while the link exists, service is continual. Gresham, therefore,
discloses and teaches a direct high speed communications link that connects
a ground transmission station 80 or 81 with the aircraft receiver station 60.
Moreover, Gresham does not teach away from the claimed direct link, as
Appellant alleges (App. Br. 15), since the wireless communication link
connects the ground transmission station directly with a receiver station
located in the in-flight aircraft.
Appellant also argues that Rhoads does not teach the ground
transmission stations provide a direct high speed data communications link
with the receiver station according to IEEE 802.16 Air Interface Standard.
App. Br. 15-17; Reply Br. 8-9. Nonobviousness cannot be shown by
attacking references individually where the rejections are based on
combinations of references. Merck, 800 F.2d at 1097. As explained above,
Gresham discloses the direct high speed data communications link that
connects the ground transmission station with the on-board, aircraft receiver
station.
On the other hand, Gresham fails to discuss the type or protocol of the
wireless communication link. FF 7. Rhoads has been relied on to teach a
known standard for wireless communications covering vast regions. Ans. 5.
Specifically, Rhoads discloses a wireless communication link 295 between a
control system 200 and an aircraft 300. FF 8. Link 295 can use WiMax
Wireless Broadband in accordance with IEEE Standard 802.16. Id. Rhoads
also teaches the WiMax standard can be used in wireless metropolitan-area
networks (MANs) or a vast geographical area. FF 10. A metropolis covers
a large area and includes geographical space in numerous directions,
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including both horizontal and vertical elevations. Because the WiMax
standard works with a system that covers a significant area, Rhoads also
suggests that the WiMax standard can be applied to a wireless connection
over the distance between a ground transmission station and an in-flight
aircraft receiver station, such as Gresham’s device 60. Such a combination
would improve the Gresham device and yield a predictable result of
providing an affordable and effective solution to a wireless connection over
a large area. FF 11; see also KSR, 550 U.S. at 418. Thus, while Rhoads
relates to networks that cover a ground-based geographic area (App. Br. 15-
17), one skilled in the art would have understood Rhoads’ teaching to
suggest that the WiMax system has the ability to encompass systems that
cover vast areas. See FF 11. Based on the record before us, we see no
reason why these coverage areas could not include areas between a ground
transmission station and an in-flight aircraft receiver station. Moreover,
Appellant has provided no evidence that the IEEE 802.16 standard disclosed
by Rhoads could not be used with Gresham’s system or would somehow
render the Gresham system unsatisfactory for its intended purpose.
Since Appellant has not persuaded us of error in the Examiner's
rejection of claim 1, we therefore sustain the rejection of that claim and
claims 2-17 which fall with claim 1.

CONCLUSIONS
Appellant has not shown that the Examiner erred in rejecting claims
1-17 under (1) § 112, first paragraph, and (2) § 103 based on Gresham and
Rhoads.

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ORDER
The Examiner’s decision rejecting claims 1-17 is affirmed.
No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

pgc

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