Ex Parte Bachu et al

Patent Trial and Appeal Board

Dec 22, 2014

11765909 (P.T.A.B. Dec. 22, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RAJA S. BACHU, MICHAEL E. BUCKLEY, and
KENNETH A. STEWART
____________________

Appeal 2012-006695
Application 11/765,9091
Technology Center 2600
____________________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1–9 and 12–20. The Examiner indicates claims 10 and
11 are drawn to allowable subject matter. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

1 According to Appellants, the real party in interest is Motorola Mobility,
Inc. App. Br. 2.
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STATEMENT OF THE CASE2
The Invention
Appellants' invention relates to a broadcast channel signal, and an
apparatus for managing the transmission and receipt of broadcast channel
information. Abstract.
Exemplary Claims
Claims 1 and 15, reproduced below, are representative of the subject
matter on appeal (emphases and paragraph formatting added):
1. A wireless communication device comprising:
an encoder for converting data intended to be transmitted
to a broadcast channel signal, said broadcast channel signal
including:
one or more transmission intervals, each transmission
interval including a plurality of transmissions, where one or
more of the plurality of transmissions are active frames that
include a jointly encoded set of data, wherein the data prior to
encoding includes a variant portion, which changes between
multiple active frame transmissions within a particular
transmission interval, and an invariant portion, which does not
change between multiple frame transmissions within the
particular transmission interval;
wherein known differences between the data associated
with a plurality of sequentially transmitted active frames within
a particular transmission interval prior to encoding will
produce a predictable difference between data associated with

2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Oct. 11. 2011); Reply Brief ("Reply Br.," filed Mar. 20, 2012); Examiner's
Answer ("Ans.," mailed Jan. 20, 2012); Final Office Action ("Final Act.,"
mailed Mar. 18, 2011); and the original Specification ("Spec.," filed
June 20, 2007).
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the plurality of successively transmitted active frames within a
particular transmission interval after encoding; and
a transmitter for communicating the broadcast channel
signal in the form of a wireless communication signal, where
the known differences are known at each of the transmitter and
a receiver intended to receive the signal.

15. A wireless communication device comprising:
a receiver for receiving a wireless communication signal
in the form of one or more transmission intervals, where each
transmission interval includes a plurality of transmissions,
where one or more of the plurality of transmissions are active
frames; and
a decoder for converting the received signal into the data
intended to be transmitted prior to an encoding for
transmission,
said decoder including a controller, wherein the
controller is adapted to attempt to decode each active frame as
it is received, and wherein the controller is adapted to combine
multiple active frames, when one or more of the received active
frames can not be separately decoded,
where prior to combining the multiple active frames, a
transformation is applied to at least one of the received active
frames prior to combining,
where the transformation is based upon a predictable
difference after encoding between the data associated with a
plurality of successively transmitted active frames within a
particular transmission interval determined from assumed
differences between the data associated with the plurality of
successively transmitted active frames within the particular
transmission interval prior to encoding.

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Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Seo et al.
("Seo")
US 2003/0039217 A1 Feb. 27, 2003
Classon et al.
("Classon")
US 2003/0118031 A1 June 26, 2003
Attar et al.
("Attar")
US 2004/0179469 Al Sept. 16, 2004
Kwong et al.
("Kwong")
US 2006/0256792 A1 Nov. 16, 2006
Ye et al.
("Ye")
US 2008/0181163 A1 July 31, 2008
Rejections on Appeal3
R1. Claims 1, 9, 12, and 13 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Kwong and Seo. Ans. 4.
R2. Claims 2–4, 6–8 and 14 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Kwong, Seo, and Classon.
Ans. 7.
R3. Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Kwong, Seo, Classon, and Ye. Ans. 8.
R4. Claims 15–18 and 20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Kwong and Classon. Ans. 9.

3 The Examiner indicates claims 10 and 11 would be allowable if rewritten
in independent form. Ans. 11–12.
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R5. Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Kwong, Classon, and Attar. Ans. 11.
GROUPING OF CLAIMS
Based on Appellants' arguments (App. Br. 5–9), we decide the appeal
of Rejection R1 of claims 1, 9, 12, and 13 on the basis of representative
claim 1; and we decide Rejection R4 of claims 15–18 and 20 on the basis of
representative claim 15.
We address remaining claims 2–8, 14, and 19 in rejections R2, R3,
and R5, not argued separately, infra.
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments
which Appellants could have made but chose not to make in the Briefs so
that any such arguments are deemed to be waived. 37 C.F.R.
§ 41.37(c)(1)(vii).
We disagree with Appellants' arguments with respect to the rejections
of claims 1–9 and 12–20, and we incorporate herein and adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons and rebuttals set forth in the
Examiner's Answer in response to Appellants' arguments. We incorporate
such findings, reasons, and rebuttals herein by reference unless otherwise
noted. However, we highlight and address specific findings and arguments
regarding representative claims 1 and 15 for emphasis as follows.
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1. Rejection R1 of Claims 1, 9, 12, and 13
Issue 1
Appellants argue (App. Br. 5–7; Reply Br. 1–5) the Examiner's
rejection of claims 1, 9, 12, and 13 under 35 U.S.C. § 103(a) as being
obvious over the combination of Kwong and Seo is in error. These
contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a device that includes, inter alia:
an encoder for converting data intended to be transmitted to a
broadcast channel signal . . . wherein the data prior to encoding
includes a variant portion, which changes between multiple
active frame transmissions within a particular transmission
interval, and an invariant portion . . . wherein known
differences between the data associated with a plurality of
sequentially transmitted active frames within a particular
transmission interval prior to encoding will produce a
predictable difference between data associated with the
plurality of successively transmitted active frames within a
particular transmission interval after encoding,
as recited in claim 1?
Analysis
Appellants contend Kwong and Seo "minimally fail to make known or
obvious . . . the data prior to encoding includes a variant portion . . . and an
invariant portion . . . such that the known differences . . . will produce a
predictable difference (claim 1)." App. Br. 5. Appellants further contend
the Examiner erred by equating packet number as a variant portion, and
power level as an invariant portion because "nowhere in the teachings of Seo
. . . is there a teaching or suggestion that power level is invariant. In fact,
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power level as taught or suggested by Seo . . . is expressly variable . . . ." Id.
In addition,
the Examiner has failed to show where the data includes both
variant and invariant portion prior to encoding, where the
variant portion represent known differences. There is no
indication that any relationship is known between data
associated with a plurality of sequentially transmitted active
frames . . . prior to encoding.
App. Br. 6. Appellants also argue "Kwong . . . fails to make known or
obvious differences between the data" and, as such, Kwong does not teach or
suggest each limitation of claim 1. Id.
We first point out the general form of device claim 1, at its most basic
level is: A wireless communication device comprising: (1) an encoder for
converting data; and (2) a transmitter. As the Examiner points out,4 the bulk
of claim 1, as well as Appellants' arguments cited above, are dedicated to
describing the broadcast channel signal, i.e., "said broadcast channel signal
including . . . ." Claim 1. We find arguing such a difference in the encoded
signal format in the broadcast channel does not distinguish the structure of
device claim 1 over the apparatus taught or suggested by the cited
combination of references.
As an initial matter of claim interpretation, we conclude device
claim 1 recites multiple statements of intended use of the recited wireless
communication device: "an encoder for converting data intended to be
transmitted," and "a transmitter for communicating . . . ." An intended use

4 "The examiner would like to first note that the argued features do not
concern a wireless communication device's hardware but are instead directed
to the broadcast channel signals transmitted and received by wireless
communication devices." Ans. 13.
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or purpose usually will not limit the scope of the claim because such
statements usually do no more than define a context in which the invention
operates." Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp.,
320 F.3d 1339, 1345 (Fed. Cir. 2003). Although ''[s]uch statements often
. . . appear in the claim's preamble . . . ,'' In re Stencel, 828 F.2d 751, 754
(Fed. Cir. 1987), a statement of intended use or purpose can appear
elsewhere in a claim. Id.
This reasoning is applicable to the contested functional limitations of:
"an encoder for converting data intended to be transmitted," and "a
transmitter for communicating" (claim 1, emphasis added) does not further
limit the structure of the claimed computer system apparatus.5
Therefore, a question arises as to how much patentable weight, if any,
should be given to the contested functional limitations. Even assuming,
arguendo, that our reviewing court may give the contested functional
limitations full patentable weight, we note the test for obviousness is what

5 The patentability of an apparatus claim "depends on the claimed structure,
not on the use or purpose of that structure." Catalina Marketing Int'l., Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). "It is well
settled that the recitation of a new intended use for an old product does not
make a claim to that old product patentable." In re Schreiber, 128 F.3d
1473, 1477 (Fed. Cir. 1997) (citations omitted). See also Superior
Industries, Inc. v. Masaba, Inc., 553 Fed.Appx 986, 991 (Fed. Cir. 2014)
(Rader, J., concurring) (stating: "[A] system claim generally covers what the
system is, not what the system does." Hewlett-Packard Co. v. Bausch &
Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990); see also Roberts v. Ryer,
91 U.S. 150, 157 [] (1875) ('The inventor of a machine is entitled to the
benefit of all the uses to which it can be put, no matter whether he had
conceived the idea of the use or not.'). Thus, it is usually improper to
construe non-functional claim terms in system claims in a way that makes
infringement or validity turn on their function. Paragon Solutions, LLC v.
Timex Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009)").
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the combined teachings of the references would have suggested to one of
ordinary skill in the art. See In re Kahn, 441 F.3d 977, 987-88 (Fed. Cir.
2006); In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991); and In re Keller,
642 F.2d 413, 425 (CCPA 1981) (emphasis added).
The Examiner finds, and we agree, Kwong teaches or at least suggests
all the structural limitations of claim 1, i.e., an encoder and a transmitter, and
also teaches or at least suggests all the structural limitations of claim 15, i.e.,
a receiver and a decoder. The Examiner also cites Seo as teaching or at least
suggesting the recited data arrangement, i.e., a variant portion and an
invariant portion along with other claimed features of the broadcast channel
signal, as recited in claim 1. Therefore, in agreement with the Examiner, we
find the limitations of the invention claimed in claim 1 are taught by the
combination of the prior art as set forth by the Examiner.
We do not find Appellants' arguments in the Reply to be persuasive,
i.e.,
Of course, the claims incorporate further details, which serve to
distinguish the particular wireless communication devices with
those that might be described in the prior art. For example, to
the extent that independent claim 1 speaks to features of a
broadcast channel signal, the corresponding claim language
speaks to features which describe the manner in which the data
is encoded, which in tum speak to features of the manner of
encoding provided by the encoder itself.
Reply Br. 3. While this statement may represent Appellants' intent, we find
claim 1 is nonetheless broadly drafted in such a way that does not impart any
structural difference to the encoder.
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Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner's reading of
the contested limitations on the cited prior art, or in the resulting legal
conclusion of obviousness. Therefore, we sustain the Examiner's
obviousness rejection of independent claim 1, and claims 9, 12, and 13,
which fall therewith. See Claim Grouping, supra.
§ 103(a) Rejections R2 and R3 of Claims 2–8 and 14
In view of the lack of any substantive or separate arguments directed
to the obviousness Rejection R2 of claims 2–4, 6–8, and 14 under § 103 (see
App. Br. 7) or to the obviousness Rejection R3 of claim 5 under § 103 (see
id.), we sustain the Examiner's rejections of these claims, as they fall with
their respective independent claim 1. Arguments not made are considered
waived. See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir 2008) ("When
the appellant fails to contest a ground of rejection to the Board, section
1.192(c)(7) [(now section 41.37(c)(1)(vii))] imposes no burden on the Board
to consider the merits of that ground of rejection . . . [T]he Board may treat
any argument with respect to that ground of rejection as waived."). Further,
when Appellants do not separately argue the patentability of dependent
claims, the claims stand or fall with the claims from which they depend. In
re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986); In re Sernaker, 702 F.2d
989, 991 (Fed. Cir. 1983). Accordingly, we sustain the rejection of
claims 2–8 and 14.
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2. Rejection R4 of Claims 15–18 and 20
Issue 2
Appellants argue (App. Br. 8–9; Reply Br. 5) the Examiner's rejection
of claims 15–18 and 20 under 35 U.S.C. § 103(a) as being obvious over the
combination of Kwong and Classon is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests all the limitation of independent 15?
Analysis
Similar to Rejection R1 of claim 1, Appellants contend "[t]he
teachings of Kwong . . . as noted above [with respect to claim 1], fail to
make known or obvious each and every feature which the Examiner relies
upon Kwong . . . as supporting." App. Br. 8. In addition, Appellants
contend Classon also does not teach or suggest the disputed limitation of
claim 15.6 In particular, Appellants contend:
[T]he alleged combining discussed in para. [0048] for purposes
of joint decoding, occurs upon the retransmission of data
packets (where in a retransmission there are no differences),
thereby enabling a first transmission of a packet to be combined
with the retransmission of the same or an equivalent packet.
Correspondingly, there are no known differences from which a
suitable transformation could be determined and applied, let
alone a predicable difference after encoding based upon a
known difference prior to encoding, as there are no differences
in the plurality of successively transmitted active frames being

6 While Appellants state "[claim 15] does not directly reference features of a
broadcast channel signal" (Reply Br. 3), we still note the argued limitations
are still directed to functional limitations in a device claim, and not method
steps in a process claim.
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jointly considered. Consequently, there is no tranformation [sic]
being applied based on any differences.
Reply Br. 8–9.
In the Answer, the Examiner finds Kwong teaches or suggests a
predictable difference produced after encoding based upon known
differences prior to encoding (Ans. 15), and also finds Classon teaches or at
least suggests "transforming (converting) a received data packet prior to
storing and combining it with a previously received packet using a
difference (precision values of the received data packets) known after
encoding." Ans. 15–16 (citing Classon ¶¶ 44–47).
The Examiner makes further detailed findings of fact with which we
agree, and which we incorporate herein by reference. Ans. 16–20.
Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner's reading of
the contested limitations on the cited prior art, or in the resulting legal
conclusion of obviousness. Therefore, we sustain the Examiner's
obviousness rejection of independent claim 15, and claims 16–18 and 20
which fall therewith. See Claim Grouping, supra.
§ 103(a) Rejection R5 of Claim 19
In view of the lack of any substantive or separate arguments directed
to the obviousness Rejection R5 of claim 19 under § 103 (see App. Br. 9),
we sustain the Examiner's rejections of this claim, as it falls with its
independent claim 15.
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REPLY BRIEF
To the extent Appellants advance new arguments in the Reply Brief
(Reply Br. 1–5) not in response to a shift in the Examiner's position in the
Answer, we note that "[a]ny bases for asserting error, whether factual or
legal, that are not raised in the principal brief are waived." Ex parte Borden,
93 USPQ2d 1473, 1474 (BPAI 2010) (informative). Cf. with 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.").
CONCLUSION
(1) The Examiner did not err with respect to the obviousness
rejections of claims 1–9 and 12–20 under 35 U.S.C. § 103(a) over the cited
prior art combinations of record, and we sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1–9 and 12–20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011).
AFFIRMED

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