Ex Parte Bateman

Board of Patent Appeals and Interferences

Feb 29, 2012

10776497 (B.P.A.I. Feb. 29, 2012)

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.
10/776,497 02/10/2004 Blaine R. Bateman 9062A-000091/US 3233
28997 7590 02/29/2012
HARNESS, DICKEY, & PIERCE, P.L.C
7700 Bonhomme, Suite 400
ST. LOUIS, MO 63105
EXAMINER
KARACSONY, ROBERT
ART UNIT PAPER NUMBER
2821
MAIL DATE DELIVERY MODE
02/29/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BLAINE R. BATEMAN
____________

Appeal 2009-014165
Application 10/776,497
Technology Center 2800
____________

Before ERIC S. FRAHM, KRISTEN L. DROESCH and
JEFFREY S. SMITH, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2009-014165
Application 10/776,497

2
STATEMENT OF THE CASE
Appellant seeks review under 35 U.S.C. § 134(a) of a final rejection
of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
BACKGROUND
The invention relates to an enhanced wireless access point that
comprises at least one omni directional antenna and at least one ground
plane arranged to cause the omni directional antenna to function as a
directional antenna. Abs.
Independent claim 1 is illustrative of the issue on appeal and is
reproduced below (disputed limitations in italics):
1. An enhanced wireless access point, comprising:
an access point;
at least one omni directional antenna coupled to the
access point; and
at least one ground plane mounted on at least one
substrate releasably coupled to the access point and radio
frequency coupled to at least one of the at least one omni
directional antenna, such that when the at least one ground
plane is coupled to the access point the at least one omni
directional antenna functions as a directional antenna to shape
a coverage area of the access point and such that when the at
least one ground plane is not coupled to the access point the at
least one omni direction antenna provides an omni directional
coverage area.
Claims 1-15 and 17-19 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Theobold (US 7,119,744 B2).
Claims 16 and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Theobold and Song (US 2004/0169612).
App
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14165
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Appeal 2009-014165
Application 10/776,497

5
response to the Answer1. We disagree with Appellant’s conclusions 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 set forth by
the Examiner in the Answer in response to the Appeal Brief. However, with
respect to the claims argued by Appellant, we highlight and address specific
findings and arguments for emphasis as follows.
102 Rejection of Claims 1-15 and 17-19
Appellant argues claims 1-15 and 17-19 together as a group. App. Br.
7-8. We select independent claim 1 as representative of the group. 37 C.F.R.
§ 41.37(c)(vii). Appellant argues that the disputed language of claim 1
relates to the structure and orientation of the claimed device such that the
omni directional antenna functions as a directional antenna which shapes the
coverage area of the access point and is more than “intended use language”.
App. Br. 6. Appellant argues that in contrast to the claimed invention,
Theobold’s passive antenna 20 does not cause the individual antennae 12, 14
to operate as directional antennae. App. Br. 7. Appellant further argues that
Theobold is devoid of any description that indicates that the positioning of
the metal reflectors 24 (of passive antenna structure 20) cause the metal
reflectors 24 to serve as ground planes that result in the antennae operating
as directional antennae. App. Br. 7.
We are unpersuaded by Appellant’s arguments focusing on the
function of ground plane. Appellant does not sufficiently address the
structure of the claimed ground plane. Apparatus claims must be
distinguished over the prior art in terms of the structure rather than function.
See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“[A] structure

1 The Answer refers to the third Examiner’s Answer mailed 29 April 2009.
Appeal 2009-014165
Application 10/776,497

6
[that] will be used to dispense popcorn does not have patentable weight if
the structure is already known, regardless of whether it has ever been used in
any way in connection with popcorn.”).
The Examiner finds that all of the claimed structural elements (i.e., an
access point, at least one omnidirectional antenna coupled to the access point
and at least one ground plane) are found in the Theobold reference. Ans. 3-4
(citing Theobold col. 3, ll. 28-32; col. 4, ll. 51-53, 48-50). We agree.
Furthermore, the structure of Appellant’s ground plane 312 is
disclosed in the Specification as rectangular in shape and composed of any
number of materials such as, for example, plastics, metals, foils, and the like
or combinations thereof (FFs 2-3). Similarly, Theobold describes the
structure of the passive antenna 20 (i.e., the ground plane) as rectangular in
shape and composed of absorbing foam 22 (i.e., a plastic) in combination
with metal reflectors 24 (FFs 5-6).
One with ordinary skill in the art would recognize that the structure of
Theobold’s passive antenna 20, which has a similar shape and composition
to the disclosed structure of Appellant’s ground plane, can cause the antenna
elements 12, 14 to function as a directional antenna and shape the coverage
area when the passive antenna 20 is coupled to the access point 30 (see Fig.
1A), yet allow the antenna elements 12, 14 to provide an omni directional
coverage area when the passive antenna 20 is not coupled to the access point
30 (see Fig. 3A). Appellant does not direct us to objective evidence to
demonstrate that Theobold’s rectangular passive antenna 20, composed of
absorbing foam 22 (i.e., a plastic) in combination with metal reflectors 24, is
incapable of causing the antenna elements 12, 14 to function as a directional
antenna and shape the coverage area when the passive antenna 20 is coupled
Appeal 2009-014165
Application 10/776,497

7
to the access point 30 and allow the antenna elements 12, 14 to provide an
omni directional coverage area when the passive antenna 20 is not coupled
to the access point 30.
We are also unpersuaded by Appellant’s assertions that: (1) the
orientation of the crossed reflectors 24 causes uneven distances between the
individual antennae and the surfaces of the reflectors; and (2) one with
ordinary skill in the art would appreciate that Theobold’s structure cannot
teach or otherwise disclose the transition of an omni directional antenna to a
directional antenna. App. Br. 7. Appellant does not direct us to objective
evidence to support these assertions. Argument of counsel cannot take the
place of evidence lacking in the record. Meitzner v. Mindick, 549 F.2d 775,
782 (CCPA 1977); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974).
Appellant also argues that Theobold teaches selectively varying signal
isolation between a sectorized antenna configuration and an antenna array
configuration in contrast to Applicant’s claimed system that employs
independent antennas which are neither an array nor a sector. App. Br. 7-8;
see also Reply Br. 5. Appellant’s argument is unpersuasive as it is not
commensurate in scope with the limitations of claim 1. Claim 1 does not
recite independent or separate antennas, nor does claim 1 preclude a
sectorized antenna configuration or an antenna array configuration. For
similar reasons we are unpersuaded by Appellant’s argument that the present
claims are directed to antennas in which a ground plane “converts separate
omni-directional antennas to directional antennas.” Reply Br. 5 (emphasis
added).
Appeal 2009-014165
Application 10/776,497

8
We are also unpersuaded by Appellant’s related assertions that: (1) the
claimed “directional antenna” (provided when the ground plane is coupled to
the omni directional antenna) which directs an antenna’s signals is not the
same as the use of an isolation structure that isolates antenna signals to
restrict an omni-directional antenna’s coverage; (2) a skilled artisan would
consider a directional antenna, which has a higher gain of antenna radiation
in a given direction, to be different from omni-directional antennas that are
isolated to restrict their coverage area; and (3) the use of the isolation
structure 20 that “results in a ‘sectorized’ antenna system in which each
antenna ... covers a hemispherical area” is not the same in meaning as a
directional antenna having a higher gain of radiation in a given direction.
Reply Br. 5. Appellant does not direct us to objective evidence to support
these assertions. Argument of counsel cannot take the place of evidence
lacking in the record. Meitzner, 549 F.2d at 782; see also Pearson, 494 F.2d
at 1405.
Appellant presents arguments for the first time in the Reply Brief
directed to the interpretation of “ground plane”. Reply Br. 2-4 (citing Ans.
3). Appellant’s arguments are not presented in Response to the Examiner’s
Answer and could have been raised in the Appeal Brief. Compare Ans. 3
with FOA 2. Since the arguments in the Reply Brief directed to the meaning
of “ground plane” could have been presented in the Appeal Brief to rebut the
rejections made in the Final Office Action, Appellant’s arguments are
waived and are not considered. Ex parte Borden, 93 USPQ2d 1473, 1474
(BPAI 2010) (informative decision) (“[T]he reply brief [is not] an
opportunity to make arguments that could have been made in the principal
brief on appeal to rebut the Examiner's rejections, but were not.”).
Appeal 2009-014165
Application 10/776,497

9
For these reasons, we sustain the Examiner’s rejection of claims 1-15
and 17-19 as anticipated by Theobold.
103 Rejection of Claims 16 and 20
Claims 16 and 20 depend from claims 13 and 17 respectively.
Although Appellant presents arguments directed to claims 16 and 20 under a
separate heading in the Appeal Brief, Appellant does not substantively
address the limitations of claim 16 and 20. App. Br. 9. Instead, Appellant
argues that Song does not remedy the deficiencies of Theobold. App. Br. 9.
Subsequently, Appellant presents arguments for the first time in the
Reply Brief arguing the limitations of claims 16 and 20 and addressing the
modification of Theobold in view of Song. Reply Br. 6-8. Appellant’s
arguments are not presented in Response to the Examiner’s Answer and
could have been raised in the Appeal Brief. Compare Ans. 7 with FOA 6-7.
The arguments in the Reply Brief addressing the limitations of claims 16 and
20 could have been presented in the Appeal Brief to rebut the rejections
made in the Final Office Action, but were not. Accordingly, Appellant’s
arguments are waived and are not considered. Borden, 93 USPQ2d at 1474.
For the same reasons as claims 1-15 and 17-19, we sustain the
rejection of claims 16 and 20 as obvious over Song and Theobold.
DECISION
We AFFIRM the rejection of claims 1-15 and 17-19 under
35 U.S.C. § 102(e) as anticipated by Theobold.
We AFFIRM the rejection of claims 16 and 20 under
35 U.S.C. § 103(a) as unpatentable over Theobold and Song.
Appeal 2009-014165
Application 10/776,497

10
TIME PERIOD
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).
AFFIRMED

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