Ex Parte Betts

Patent Trial and Appeal Board

Apr 16, 2014

12144108 (P.T.A.B. Apr. 16, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte WILLIAM L. BETTS
___________

Appeal 2011-013310
Application 12/144,108
Technology Center 2600
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Before JOHNNY A. KUMAR, MICHAEL J. STRAUSS, and
DANIEL N. FISHMAN, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
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Application 12/144,108

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STATEMENT OF THE CASE
Appellant is appealing the final rejection of claims 1-22. We have
jurisdiction under 35 U.S.C. § 6(b) (2012).
We affirm.

Exemplary Claim
1. A receiver, comprising:
a convolutional decoder configured to receive a stream of
trellis symbols assigned to a plurality of tones, the
convolutional decoder further configured to decode a plurality
of interleaved data bits from the stream of trellis symbols; and
a bit orderer configured to receive the plurality of
interleaved data bits, the bit orderer further configured to assign
the plurality of interleaved data bits to at least a first plurality of
ordered data bits and a second plurality of ordered data bits.

Rejections on Appeal
The Examiner rejected claim 1 under 35 U.S.C. § 103(a) as being
unpatentable over Foley (US 2002/0110118 Al, Aug. 15, 2002) and Kao
(US 6,292,515 B1, Sep. 18, 2001). Ans. 4.
The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as being
unpatentable over Foley, Kao, and Grube (US 5,495,483, Feb. 27, 1996). Ans.
4-5.
The Examiner rejected claims 1, 8, 9, 13, 16, and 17 on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claim 10 of U.S. Patent No. 7,088,781 (“’781 patent”), in view of Kao. Ans.
5-6.
The Examiner rejected claim 14 on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claim 10 of
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Application 12/144,108

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the ’781 patent in view of Kao and Gross (WO 99/20027, Apr. 22, 1999).
Ans. 6.
The Examiner rejected claims 18 and 19 on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claim 10 of the ’781 patent in view of Bruckert (US 6,198,748 B1, Mar. 6,
2001). Ans. 6-7.
The Examiner rejected claims 1-18 and 20-22 on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1-4, 6, 7, and 17 of U.S. Patent No. 7,418,048 (“’048 patent”). Ans.
7-8.
The Examiner rejected claim 19 on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claim 1 of the
’048 patent in view of Bruckert. Ans. 8.

ISSUE
The issue of whether the Examiner erred in rejecting exemplary
claim 1 under 35 U.S.C. § 103(a) as unpatentable over Foley and Kao turns
on whether the combination teaches or suggests “the bit orderer further
configured to assign the plurality of interleaved data bits to at least a first
plurality of ordered data bits and a second plurality of ordered data bits,” as
required by independent claim 1.1

1 The Examiner has withdrawn the § 103 rejections of claims 9, 13, 14, and
16-21. Ans. 3.
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Application 12/144,108

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ANALYSIS2
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We see no error in the Examiner’s
finding that the combination of Foley and Kao has every recited element of
representative claim 1. In particular, we agree with and adopt the
Examiner’s findings in the Answer on pages 8-10 as our own. We also note
our review of, and finding that, Appellant’s Reply Brief does not
persuasively rebut the Examiner’s explanation on pages 8-10 of the Answer.
We are, therefore, not persuaded that the Examiner erred in rejecting
representative claim 1, and dependent claim 8 not separately argued by
Appellant.
We also note in passing that claim 1 recites “configured to” which is
nonfunctional claim language that is not entitled to any patentable weight.
See Superior Indus., Inc. v. Masaba, Inc., 2014 WL 163046 at *5 (Fed. Cir.
Jan. 16, 2014) (Rader, J., concurring) (“[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).”).

2 We pro forma affirm the double patenting rejections of claims 1-22 which
were not contested by Appellant.
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At best, the claim language “configured to” is a statement of intended
use that merely indicates the capability or intent to perform the action of
receiving the acknowledgment. Our reviewing court has held that a
statement of intended use in an apparatus claim cannot distinguish over a
prior art apparatus that discloses all the recited structural limitations and is
capable of performing the recited function. See In re Schreiber, 128 F.3d
1473, 1477 (Fed. Cir. 1997). We also note that “[a]n intended use 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,” a statement of intended use or purpose can appear
elsewhere in a claim. In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987).
Consequently, we conclude there is no reversible error in the
Examiner’s rejections of claims 1 and 8.

DECISION
The Examiner’s obviousness rejection of claims 1 and 8 is affirmed.
We pro forma affirm the Examiner’s rejections of claims on the
grounds of nonstatutory obviousness-type double patenting as being
unpatentable as follows:
Claims 1, 8, 9, 13, 16, and 17 over claim 10 of the’781 patent in view
of Kao;
Claim 14 over claim 10 of the ’781 patent in view of Kao and Gross;
Claims 18 and 19 over claim 10 of the ’781 patent in view of
Bruckert;
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Claims 1-18 and 20-22 over claims 1-4, 6, 7, and 17 of the
’048 patent; and
Claim 19 over claim 1 of the ’048 patent in view of Bruckert.

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). See
37 C.F.R. § 41.50(f).

AFFIRMED

msc