Ex Parte Carloni et al

Board of Patent Appeals and Interferences

Apr 28, 2004

08404406 (B.P.A.I. Apr. 28, 2004)

The opinion in support of the decision being entered today
was not written for publication and is not binding
precedent of the Board.
Paper No. 35
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MANUEL J. CARLONI, MICHAEL J. GANS,
REINALDO VALENZUELA, and JACK H. WINTERS
____________
Appeal No. 2001-1601
Application No. 08/404,406
____________
ON BRIEF
____________
Before THOMAS, KRASS, and GROSS, Administrative Patent Judges.
GROSS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 12, 16, 17, and 19 through 29.
Claims 13 through 15 have been canceled, and on page 2 of the
Brief, appellants canceled claim 18 from further prosecution.
Appellants' invention relates to a wireless communication
system with multiple antenna elements at both the transmitter and
the receiver, wherein the antenna elements at both locations
point in plural azimuthal and plural elevational directions.
Appeal No. 2001-1601
Application No. 08/404,406
2
Claim 1 is illustrative of the claimed invention, and it reads as
follows:
1. A wireless communications device for indoor
communications comprising:
a plurality of first antenna elements for receiving a
plurality of outbound signals on multiple receive antenna beams
pointing in both plural respective azimuthal and plural
respective elevational directions wherein each said outbound
signal is transmitted from a second plurality of antenna elements
on a different one of a plurality of outbound antenna beams, said
second antenna elements pointing in different azimuthal and
elevational directions to facilitate said indoor communications
in a multipath indoor environment; and
a first processor operatively connected to the first antenna
elements and responsive to said received outbound signals for
determining a suitable indoor communications path between at
least one of the first antenna elements and at least one of the
second antenna elements with respect to predetermined
communications conditions.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Graziano 4,128,740 Dec. 05, 1978
Vasile 5,089,823 Feb. 18, 1992
Freeburg 5,095,535 Mar. 10, 1992
Borras et al. (Borras) 5,303,240 Apr. 12, 1994
Harbin et al. (Harbin) 5,701,583 Dec. 23, 1997
Claims 1 through 5, 7, 8, 12, 16, 17, 19, 21, 22, and 29
stand rejected under 35 U.S.C. § 103 as being unpatentable over
Freeburg in view of Harbin.
Claims 6 and 20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Freeburg in view of Harbin and Borras.
Appeal No. 2001-1601
Application No. 08/404,406
3
Claims 9, 23, 25, and 28 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Freeburg in view of Vasile.
Claim 27 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Freeburg in view of Vasile and Graziano.
Claims 10, 11, 24, and 26 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Freeburg in view of Vasile and
Harbin.
Reference is made to the Examiner's Answer (Paper No. 33,
mailed July 14, 2000) for the examiner's complete reasoning in
support of the rejections, and to appellants' Brief (Paper
No. 32, filed April 17, 2000) for appellants' arguments
thereagainst.
OPINION
We have carefully considered the claims, the applied prior
art references, and the respective positions articulated by
appellants and the examiner. As a consequence of our review, we
will reverse the obviousness rejection of claims 1 through 12,
16, 17, and 19 through 29 and affirm the obviousness rejection of
claims 23, 25, 27 and 28.
Each of independent claims 1, 9, 12, and 16 recites, in
pertinent part, multiple coverage in both azimuthal and
elevational directions. The examiner (Answer, page 4) indicates
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Application No. 08/404,406
4
that Freeburg discloses antenna elements pointing in different
azimuthal directions, and (Answer, page 5) asserts that "[t]he
antenna array elements A-F of Freeburg inherently includes an
omnidirectional elevation direction coordinated with the
plurality of azimuthal directions, which is inherent in the
antenna technology." The examiner, however, fails to provide any
evidence of inherency, despite appellants' argument (Brief, page
8) that Freeburg's antenna beams do not point in both plural
azimuthal and plural elevational directions. In In re Lee, 277
F.2d 1338, 1342-43, 61 USPQ2d 1430, 1433 (Fed. Cir. 2002), the
court held that a factual inquiry whether to modify a reference
must be based on objective evidence of record, not merely
conclusionary statements of the examiner. The same applies to
inherency. Conclusionary statements of the examiner as to
inherency are insufficient; factual evidence of inherency is
required, and such evidence is lacking in the present case.
The examiner asserts (Answer, page 5) that "Freeburg fails
to teach that the array of antenna elements A-F can focus the
beams by narrowing the beam widths in the elevation plane
(pointing in a plurality of elevation directions)." The examiner
relies upon Harbin's teaching that an array of antennas can
achieve more gain by focusing the beam widths in the elevation
Appeal No. 2001-1601
Application No. 08/404,406
5
plane. However, we do not see how a teaching to narrow the beam
widths in the elevation plane suggests pointing in a plurality of
elevation directions (as in claim 1) or providing multiple
coverage in the azimuthal and elevational directions (as in
claims 9, 12, and 16). Likewise, we find no suggestion in Harbin
that multiple elevational directions with the plurality of
azimuthal directions is inherent in Freeburg. Accordingly, we
cannot sustain the obviousness rejection of claims 1 through 5,
7, 8, 12, 16, 17, 19, 21, 22, and 29 over Freeburg and Harbin.
Regarding claims 6 and 20, the examiner adds Borras to the
combination of Freeburg and Harbin. We find no teaching or
suggestion in Borras to cure the deficiency of Freeburg and
Harbin. Therefore, we cannot sustain the obviousness rejection
of claims 6 and 20.
The examiner rejected claim 9 over Freeburg in view of
Vasile. Freeburg, as explained supra, fails to teach anything
about the elevational direction of the antenna beams. The
examiner again asserts (Answer, page 10) that Freeburg
"inherently includes an omnidirectional elevation directions with
the plurality of azimuthal directions, which is inherent in the
antenna technology," without supplying any evidence of inherency.
The examiner (Answer, page 12) relies upon Vasile for
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Application No. 08/404,406
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substituting an electrically steerable antenna array for the
multiple directional antennas of Freeburg. We find no teaching
or suggestion in Vasile, and the examiner points to none, that
supports the examiner's assertion of inherency. Thus, we cannot
sustain the obviousness rejection of claim 9.
Claims 10 and 11, via their dependence from claim 9, as well
as claims 24 and 26, recite multiple azimuthal and multiple
elevational beams. The examiner combines Freeburg with Vasile
and Harbin to reject claims 10, 11, 24, and 26. As discussed
supra, none of the three references teaches or suggests this
claim limitation. Consequently, the combination fails to teach
or suggest the limitation, and we cannot sustain the rejection of
claims 10, 11, 24, and 26.
Claim 23 and claims 25, 27 and 28, which depend therefrom,
do not recite multiple azimuthal and multiple elevational beams.
Thus, we first view claims 23, 25, and 28, which have been
rejected over Freeburg in view of Vasile. The examiner states
(Answer, page 11) that "Freeburg differs from the present claim
in that the antenna array is provided by multiple directional
antennas, instead of electronically steerable array antenna."
However, the examiner (Answer, page 11) notes that Freeburg
indicates (column 3, lines 39-42) that "a single electrically or
Appeal No. 2001-1601
Application No. 08/404,406
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mechanical steerable antenna is the equivalent of the multiple
directional antennas and can be substituted therefor." The
examiner (Answer, page 12) turns to Vasile for the particular
elements of such an electronically steerable antenna, such as the
claimed mixers, weight generator, and adder.
Appellants do not argue the combination of Freeburg and
Vasile. Appellants' sole argument regarding claims 23, 25, and
28 is (Brief, page 15) that Vasile fails to disclose the claimed
second processor for receiving the received signal from the adder
and providing a profile for each of the second antenna elements
for determining a suitable communication path between the base
station and the respective remote. However, the purpose of
Freeburg is to select the best communication path established
between two terminals (see the Abstract). Such a selection is
accomplished by a processor which compares and ranks the various
signal strengths. The substitution of a steerable antenna with
mixers, a weight generator, and an adder, for the multiple
directional antennas of Freeburg does not change Freeburg's goal
of selecting the best communication path. Therefore, the
combination would still include a processor for determining the
best path. However, as the skilled artisan would recognize, the
processor would have to be modified to compare the signals from
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Application No. 08/404,406
8
the adder. The level of the skilled artisan should not be
underestimated. See In re Sovish, 769 F.2d 738, 743, 226 USPQ
771, 774 (Fed. Cir. 1985). Accordingly, we will sustain the
obviousness rejection of claims 23, 25, and 28 over Freeburg and
Vasile.
For claim 27, the examiner added Graziano to the combination
of Freeburg and Vasile. As appellants did not provide any
arguments as to Graziano, we will sustain the rejection of claim
27 for the same reasons as claims 23, 25, and 28, supra.
CONCLUSION
The decision of the examiner rejecting claims 1 through 12,
16, 17, and 19 through 29 under 35 U.S.C. § 103 is reversed as to
claims 1 through 12, 16, 17, 19 through 22, 24, 26, and 29 and
affirmed as to claims 23, 25, 27 and 28. Thus, the examiner's
decision is affirmed-in-part.
Appeal No. 2001-1601
Application No. 08/404,406
9
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 C.F.R.
§ 1.136(a).
AFFIRMED-IN-PART
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
APG/vsh
Appeal No. 2001-1601
Application No. 08/404,406
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