Ex Parte Choi

Patent Trial and Appeal Board

Feb 14, 2017

13312384 (P.T.A.B. Feb. 14, 2017)

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.
13/312,384 12/06/2011 Taek-Kyun Choi SP11054-US
(SAMS06-11054)
7397
23990 7590 02/16/2017
DOPKF.T n FR K
EXAMINER
P.O. DRAWER 800889
DAT!.AS, TX 75380
SHIUE, DONG-CHANG
ART UNIT PAPER NUMBER
2648
NOTIFICATION DATE DELIVERY MODE
02/16/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patents @ munckwilson. com
munckwilson @ gmail. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAEK-KYUN CHOI
Appeal 2016-004894
Application 13/312,384
Technology Center 2600
Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—8, 11—16 and 18—20. Claims 9, 10 and 17 have
been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
A. INVENTION
According to Appellant, the invention relates to “an antenna device
for a portable terminal. More particularly, the present invention relates to an
antenna device for operating a diversity antenna or a Multiple-Input
Appeal 2016-004894
Application 13/312,384
Multiple-Output (MIMO) antenna selectively by a small number of antennas
and an operation method thereof.” Spec. 12.
B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A mobile communication terminal, comprising:
a first antenna coupled to a first Radio Frequency (RF)
module unit;
a second antenna coupled to a second RF module unit;
a third antenna coupled to a switch, the switch configured
to connect the third antenna to one of the first RF module unit or
the second RF module unit selectively according to a
communication service that is supported in a base station
connected to the mobile communication terminal; and
a control unit configured to:
when the communication service is a first communication
service, allow a use of the first RF module among the first and
second RF modules, and cause the switch to connect the third
antenna to be used together with the first antenna dedicated to
the first RF module, to operate the first and third antennas as
diversity antennas; and
when the communication service is a second
communication service, allow a use of the second RF module
among the first and second RF modules, and cause the switch to
connect the third antenna to be used together with the second
antenna dedicated to the second RF module, to operate the
second and third antennas as Multiple-Input Multiple-Output
(MIMO) antennas.
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Application 13/312,384
C. REJECTIONS
The prior art relied upon as evidence in rejecting the claims on appeal:
Pan et al. (“Pan”) US 7,551,146 B2
Kakitsu et al. (“Kakitsu”) US 2010/0267415 Al
Imamura et al. (“Imamura”) US 2011/0081934 Al
Fauconnier et al. (“Fauconnier”) US 2012/0263045 Al
Reinhold et al. (“Reinhold”) US 8,326,293 B2
June 23, 2009
Oct. 21,2010
Apr. 7,2011
Oct. 18,2012
Dec. 4, 2012
Claims 1—4, 11, and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the teachings of Pan, Fauconnier, or Kakitsu.
Claims 5—7 and 13—15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the teachings of Pan, Fauconnier and Reinhold.
Claims 8 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the teachings of Pan, Fauconnier and Imamura.
Claims 18—20 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the teachings of Pan, Reinhold, Fauconnier or Kakitsu.
II. ISSUE
The principal issue before us is whether the Examiner erred in finding
the combination of Pan, Fauconnier, or Kakitsu teaches or would have
suggested
when the communication service is a first communication
service, allow a use of the first RF module among the first and
second RF modules, and cause the switch to connect the third
antenna to be used together with the first antenna dedicated to
the first RF module, to operate the first and third antennas as
diversity antennas; and
when the communication service is a second
communication service, allow a use of the second RF module
among the first and second RF modules, and cause the switch to
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Application 13/312,384
connect the third antenna to be used together with the second
antenna dedicated to the second RF module, to operate the
second and third antennas as Multiple-Input Multiple-Output
(MIMO) antennas, (claim 1)(emphasis added).
III. ANALYSIS
Appellant contends Pan does not disclose that the first and second
antennas are dedicated, or in any way dedicated to the first and second RF
module, respectively. (App. Br. 14). Appellant further argues the Examiner
relies on hindsight:
The Examiner also makes contradictory statements by stating
that the first and second antennas of Pan are somewhat dedicated
to the first and second RF module, respectively29, while
conceding that Pan does not teach "wherein the first antenna is
dedicated to the first RF module and the second antenna is
dedicated to the second RF module."30 The concession that Pan
does not disclose the "dedicated" elements along with a
supported and conclusory statement illustrates that hindsight was
relied upon to make the assertion that the antenna are
"somewhat" dedicated.
(App. Br. 15)
We have considered all of Appellant’s arguments and evidence
presented. However, we disagree with Appellant’s contentions regarding the
Examiner’s rejections of the claims. Instead, we agree with the Examiner’s
findings, and are not persuaded of error with the Examiner’s conclusion that
the claims would have been obvious over the combined teachings.
Although Appellant contends Pan does not disclose that the first and
second antennas are “dedicated” (App. Br. 14), we agree with the Examiner
that Appellant is arguing the references separately. (Ans. 2). In particular,
the Examiner does not find Pan alone teaches the disputed “dedicated”
limitations, but that the combination of Pan and Fauconnier, both in the
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Application 13/312,384
same field of art, does, (id.) Although the Examiner admits Pan only
implicitly teaches dedicated antennas (Ans. 3, Final Act. 3, “somewhat
dedicated”), he cites Fauconnier for teaching a dedicated set of antenna-to-
RF modules. (Ans. 3, Final Act. 3). The test for obviousness is what the
combined teachings would have suggested to one of ordinary skill in the art.
See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Regarding Appellant’s hindsight argument, we are cognizant that our
reviewing courts have not established a bright-line test for hindsight. In KSR
Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007), the U.S. Supreme Court
guides that “[a] factfinder should be aware, of course, of the distortion
caused by hindsight bias and must be cautious of argument reliant upon ex
post reasoning.” KSR, 550 U.S. at 421 (citing Graham v. John Deere Co. of
Kansas City, 383 U.S. 1, 36 (1966)). Nevertheless, the Supreme Court
qualified the issue of hindsight by stating, “[rjigid preventative rules that
deny factfinders recourse to common sense, however, are neither necessary
under our case law nor consistent with it.” Id.
Here, we see the post-KSR hindsight question before us as a balancing
test'. We decide whether the Examiner's proffered combination of references
is merely: (1) “the predictable use of prior art elements according to their
established functions” (KSR, 550 U.S. at 417), consistent with common
sense; or, (2) would an artisan reasonably have combined the cited
references in the manner proffered by the Examiner but for having the
benefit of Appellant's claims and Specification to use as a guide?1
1 See In re Cree, Inc., 818 F.3d 694, 702, n.3 (Fed. Cir. 2016)(where the
Court discounted Appellant's hindsight arguments) (“Cree argues that the
Board's rejection was based on ‘impermissible hindsight.’ That argument,
however, is essentially a repackaging of the argument that there was
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After reviewing the respective teachings and suggestions of the
references (as cited by the Examiner, Final Act. 2—11), we find the weight of
the evidence more strongly supports the first prong of the balancing test. In
reviewing the record, we find the Examiner provided sufficient articulated
reasoning with some rational underpinning to establish why an artisan would
have been motivated to combine the secondary Fauconnier or Kakitsu
references with the primary Pan reference. (Final Act. 8, “Doing so would
have also allowed simultaneous use of 3G and MIMO by connecting the
third antenna of Pan to the second RF module to provide the MIMO
capability.”)
Accordingly, we disagree with Appellant’s contention that hindsight
was relied upon. (App. Br. 15). We are further guided by the Supreme
Court's holding that the “combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results” (KSR, 550 U.S. at 416) and “modification of prior art
teachings by a practitioner in the art: an improved product in the art is
obvious if that “product [is] not [one] of innovation but of ordinary skill and
common sense” (id at 421). The skilled artisan is “[a] person of ordinary
creativity, not an automaton” (id. ).
We find this reasoning applicable here. We find modifying Pan’s
system of a first second and third antennas connected to RF modules via
insufficient evidence of a moti vation to combine the references. It is fully
answered by the Board's observation that ‘the weight of the evidence shows
that the proffered combination is merely a predictable use of prior art
elements according to their established functions.’”). See also Ex Parte
Cree, Inc. Patent Owner & Appellant, APPEAF 2014-007890, 2014 WF
6664878, at *17 (PTAB, Nov. 21, 2014).
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Application 13/312,384
coupled switches (Fig. 3) with the teachings in Fauconnier (par. 52) of a
dedicated antenna and module set would have merely been a “predictable
use of prior art elements according to their established functions” {id.
at 417).
We agree with the Examiner that it would have been obvious to one of
ordinary skill in the art at the time the invention was made to incorporate the
teaching of dedicated antenna in Pan’s system (Ans. 3), as Appellant has not
provided any evidence that such modification would have been “uniquely
challenging or difficult for one of ordinary skill in the art” {Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)), or
would have yielded unexpected results.
Accordingly, we agree with the Examiner that Appellant’s invention
is simply a modification of familiar prior art teachings (as taught or
suggested by the cited references).
Therefore, on this record, and by the preponderance of evidence, we
are not persuaded of error regarding the Examiner’s underlying factual
findings and ultimate legal conclusion of obviousness regarding independent
claim 1, and we sustain the Examiner’s rejection of claim 1. For the same
reasons, we sustain the Examiner’s rejection of claims 2, 3, 4, 11, and 12,
not argued separately. Arguments not made are waived.
Appellant also argues the additional three separate rejections of
claims 5—7, 13—15; claims 8 and 16; and 18—20, respectively. (App.
Br. 22-24).
Regarding the Examiner’s obviousness rejection of claims 5—7, 13—15
over the combination of Pan, Fauconnier and Reinhold, Appellant contends
“Reinhold fails to provide a disclosure that remedies the above-described
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deficiencies of Pan.” (App. Br. 23). Regarding the Examiner’s obviousness
rejection of claims 8 and 16 over the combination of Pan, Fauconnier and
Imamura, Appellant contends “Imamura fails to provide a disclosure that
remedies the above-described deficiencies of Pan.” (App. Br. 24).
As discussed above, we do not find any deficiencies with Pan that
would persuade us to reverse these two rejections. Regarding the
Examiner’s rejection of claims 18—20, Appellant does not provide
substantive arguments, but merely contends these claims are allowable for
the same reasons as the claims from which they depend. Arguments not
made are waived.
Therefore, based on the record before us, we find no error in the
Examiner’s rejection of claims 1—8, 11—16 and 18—20.
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 2—13) not in response to a shift in the Examiner's position
in the Answer, we note that arguments raised in a reply brief that were not
raised in the appeal brief or are not responsive to arguments raised in the
Examiner’s Answer will not be considered except for good cause, which
Appellant has not shown. See 37 C.F.R. § 41.41(b)(2).
IV. CONCLUSION AND DECISION
We affirm the Examiner’s rejections of claims 1—8, 11—16, and 18—20
under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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