Ex Parte Desai et al

Patent Trial and Appeal Board

Feb 21, 2014

11143378 (P.T.A.B. Feb. 21, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PRASANNA DESAI and BRIMA IBRAHIM
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Appeal 2011-005544
Application 11/143,378
Technology Center 2600
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Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and
JEREMY J. CURCURI, Administrative Patent Judges.

CURCURI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-4, 6-15, and 17-26. App. Br. 2. Claims 5 and 16 are
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
Claims 1-4, 6-10, 12-15, 17-21, and 23-26 are rejected under
35 U.S.C. § 103(a) as obvious over Godfrey (US 6,842,607 B2; issued
Jan. 11, 2005) and Takagi (US 2002/0049075 A1; published Apr. 25, 2002).
Ans. 4-6.
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Claims 11 and 22 are rejected under 35 U.S.C. § 103(a) as obvious
over Godfrey, Takagi, and Arase (US 2006/0056332 A1; published Mar. 16,
2006; filed Sep. 18, 2003). Ans. 6-7.
We affirm.

STATEMENT OF THE CASE
Appellants’ invention relates to “a method and system for sharing a
single antenna on platforms with collocated Bluetooth and IEEE 802.11 b/g
devices.” Spec. ¶ 6. Claim 1 is illustrative and reproduced below:
1. A method for providing wireless communication, the method
comprising:
in a station that handles at least a Bluetooth (BT) communication
protocol and a Wireless Local Area Network (WLAN) communication
protocol:
asserting a BT priority signal;
configuring said station to provide BT communication via a
single antenna based on said BT priority signal, wherein a first antenna
switch and a second antenna switch are configured for using said single
antenna for BT and WLAN communication; and
communicating BT data via said single antenna while said BT
priority signal is asserted.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
We disagree with Appellants’ conclusions as to all rejections. We
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 Examiner’s Answer in response to Appellants’ Appeal
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Brief. We concur with the conclusions reached by the Examiner.
Accordingly, we sustain the rejection of claims 1-4, 6-10, 12-15, 17-21, and
23-26 over Godfrey and Takagi. We also sustain the rejection of claims 11
and 22 over Godfrey, Takagi, and Arase. We highlight the following for
emphasis.

THE OBVIOUSNESS REJECTION OF CLAIMS 1-4, 6-10, 12-15, 17-
21, AND 23-26 OVER GODFREY AND TAKAGI
Claims 1, 12, and 23
Regarding claim 1, the Examiner finds Godfrey teaches all limitations
except for the recited second antenna switch, for which the Examiner relies
on Takagi. Ans. 4-5 (citing Takagi ¶¶ 57-59). The Examiner reasons
it would have been obvious to one of ordinary skills in the art at
the time of invention to modify the antenna switch 503 of
Godfrey et al. to be substituted with the antenna switches as
disclosed by Takagi. One is [sic: would have been] motivated
as such in order to reduce the complexity of the antenna switch.
Ans. 5.
The Examiner further explains “[i]n this case, [a] single pole double
throw (SPDT) switch being less complicated than [a] multi-position switch
is in the knowledge generally available to one of ordinary skill in the art.”
Ans. 8; see also Fin. Rej. 7 (“[O]ne of ordinary skill in the art would
recognize that not only a two port switch is less complicate[d] than a four
port switch but also recognize other advantages such as smaller size and
easier troubleshooting.”).
Appellants present the following principal arguments:
(i) Godfrey teaches away from the proposed combination. App. Br.
8-9 (citing Godfrey, col. 6, ll. 6-22).
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(ii) Neither Godfrey nor Takagi discloses, teaches, or suggests there
is a motivation to reduce complexity of the antenna switch. App. Br. 9.
(iii)
Appellant submits that the switches 512 and 514 in the
switch configuration disclosed in Takagi are used to support
multiple non-competing (i.e., non-interfering) communication
protocols, while the antenna switch 503 in Godfrey is used to
support multiple competing (i.e., interfering) communication
protocols. Therefore, Appellant submits that a person of
ordinary skill in the art would not be motivated to use the
switch configuration used in Takagi to modify the antenna
switch 503 used in Godfrey.
App. Br. 10; see also Reply Br. 5.
(iv) “[I]t appears that this rejection may be based on personal
knowledge or Official Notice. To the extent the rejection is based on either
of these principals [sic], the rejection is improper and should be withdrawn.”
Reply Br. 2.
Regarding Appellants’ argument (i), “[a] reference does not teach
away, however, if it merely expresses a general preference for an alternative
invention but does not ‘criticize, discredit, or otherwise discourage’
investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (citation
omitted).
Godfrey (col. 6, ll. 18-22) describes
It will be clear to those skilled in the art how to make and use
antenna switch 503 and antenna unit 504. It will also be clear to
those skilled in the art how to make and use a wireless terminal
(e.g., wireless terminal 500, etc.,) without antenna switch 503.
Thus, Godfrey does not criticize, discredit, or otherwise discourage
investigation into the invention claimed, but only suggests that a wireless
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terminal may be made with or without antenna switch 503. Such an
expression of a general preference does not rise to the level of a teaching
away from using more than one switch.
Regarding Appellants’ arguments (ii) and (iii), Godfrey and Takagi
both relate to wireless telecommunications terminals. See Godfrey, Abstract;
Takagi, Abstract. Godfrey (Fig. 5) describes using an antenna switch 503.
Assuming Takagi’s two-port switches are, in fact, less complex than
Godfrey’s multi-position switch (see the discussion of argument (iv), infra),
we fail to see why Godfrey would not have benefitted from the advantages
of substituting Takagi’s (Fig. 1) switch arrangement for Godfrey’s antenna
switch 503, such as reduced complexity of the switches. See Takagi, ¶¶ 57-
59. Rather, modifying Godfrey to substitute in Takagi’s switches to reduce
complexity of the switches would have been a predictable use of prior art
elements according to their established functions — an obvious
improvement. As the U.S. Supreme Court has explained,
[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. Sakraida [v. Ag
Pro, Inc., 425 U.S. 273 (1976)] and Anderson’s-Black Rock[,
Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)] are
illustrative — a court must ask whether the improvement is
more than the predictable use of prior art elements according to
their established functions.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
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We likewise find Appellants’ argument (iv), regarding the inadequacy
of the Examiner’s taking of Official Notice, to be unpersuasive. In the Final
Rejection, the Examiner relied upon Official Notice (see Manual of Patent
Examining Procedure (MPEP) § 2144.03) to find that two port switches are
less complicated than four port switches. Fin. Rej. 7. In the Examiner’s
Answer, the Examiner more specifically explained a single pole double
throw (SPDT) switch is less complicated than a multi-position switch. Ans.
8. These findings provide an adequate rational underpinning to establish a
prima facie conclusion of obviousness.
“To adequately traverse such a finding, an applicant must specifically
point out the supposed errors in the examiner’s actions, which would include
stating why the noticed fact is not considered to be common knowledge or
well-known in the art.” MPEP 2144.03(C) (citing 37 CFR 1.111(b); In re
Chevenard, 139 F.2d 711, 713 (CCPA 1943) (“[I]n the absence of any
demand by appellant for the examiner to produce authority for his statement,
we will not consider this contention.”).
In the present case, though, Appellants merely argues “that the subject
matter of Official Notice is not well-known in the art as evidenced by the
searched and cited prior art.” Reply Br. 3. Appellants more specifically
argue that, in order to perform a proper examination, the Examiner is
required to perform a thorough and detailed search of the prior art. Reply Br.
3. Appellants add that “[i]f the Examiner had found any teaching of relevant
subject matter, the Examiner would have been obligated to” make a rejection
based upon the references containing these teachings. Reply Br. 4. That this
search was said to not uncover the fact being noticed allegedly indicates that
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the fact was not “capable of instant and unquestionable demonstration as
being well-known.” Reply Br. 3. -
This argument does not constitute an adequate explanation of a
supposed error in the examiner’s action, as required by MPEP § 2144.03(C).
To hold otherwise would be to effectively eviscerate an Examiner’s ability
to ever take Official Notice of a well-known fact, as well as absolve all
appellants from their duty to explain with specificity either why the
Examiner’s position is incorrect, or what technical problems exist with the
Examiner’s position.
For reasons explained above, Appellants have not rebutted the
Examiner’s conclusion that modifying Godfrey to substitute in Takagi’s
switches to reduce complexity of the switches would have been a predictable
use of prior art elements according to their established functions.

Claims 2, 13, and 24
Appellants argue Godfrey does not disclose the recited deasserting the
BT priority signal. App. Br. 11.
In response, the Examiner explains Godfrey discloses setting and
resetting a transmit inhibit signal. Ans. 9 (citing Godfrey, col. 11, ll. 8-18).
We agree with the Examiner that Godfrey discloses the recited deasserting
the BT priority signal.

Claims 3, 14, and 25
Appellants argue Godfrey does not disclose the recited reconfiguring
the station to provide WLAN communication via the single antenna when
the BT priority signal is deasserted. App. Br. 13.
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In response, the Examiner explains Godfrey discloses setting and
resetting a transmit inhibit signal, and radio 502-1 is in accordance with
802.11 (WLAN). Ans. 10 (citing Godfrey, col. 11, ll. 8-18; col. 8, l. 60; col.
5, ll. 24-26). We agree with the Examiner.

Claims 4, 15, and 26
Appellants argue Godfrey does not disclose the recited defaulting to a
configuration that provides WLAN communication. App. Br. 14.
In response, the Examiner explains Godfrey describes a default
configuration to provide WLAN communication. Ans. 10 (citing Godfrey,
col. 8, ll. 35-67). We agree with the Examiner.

Claims 6 and 17
Appellants argue Godfrey does not disclose the recited generating at
least one signal that configures the first antenna switch and at least one
signal that configures the second antenna switch. App. Br. 15.
In response, the Examiner explains Godfrey teaches the recited
limitations, when combined with Takagi. Ans. 11. We agree with the
Examiner.

Claims 7 and 18
Appellants argue Godfrey does not disclose the recited configuring
the first antenna switch and the second antenna switch for BT
communication when the BT priority signal is asserted. App. Br. 17.
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In response, the Examiner explains Godfrey teaches the recited
limitations, when combined with Takagi. Ans. 11-12. We agree with the
Examiner.

Claims 8 and 19
Appellants argue Godfrey does not disclose the recited configuring
the first antenna switch and the second antenna switch for WLAN
communication when the BT priority signal is deasserted. App. Br. 18.
In response, the Examiner explains Godfrey teaches the recited
limitations, when combined with Takagi. Ans. 12-13. We agree with the
Examiner.

Claims 9 and 20
Appellants argue Godfrey does not disclose the recited third antenna
switch. App. Br. 20, 23.
In response, the Examiner explains Godfrey teaches the recited
limitations, when combined with Takagi. Ans. 13-14. We agree with the
Examiner.

Claims 10 and 21
Appellants argue Godfrey does not disclose the recited generating at
least one signal that configures the third antenna switch. App. Br. 21.
In response, the Examiner explains “[t]he switch control signal via
path 511-1 for controlling switch 503 between 502-1 and 502-2 is generated
(see fig. 5, fig. 7, col. 6 lines 4-16, and col. 7 lines 18-22).” Ans. 14. We
agree with the Examiner.
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Application 11/143,378

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THE OBVIOUSNESS REJECTION OF CLAIMS 11 AND
22 OVER GODFREY, TAKAGI, AND ARASE
The Examiner finds Godfrey and Takagi teach all limitations of
claims 11 and 22 except for the recited BT HV3 packet traffic, for which the
Examiner relies on Arase. Ans. 7 (citing Arase, ¶ 16). The Examiner reasons
“it would have been obvious to one of ordinary skill in the art to modify the
time critical information as disclosed by Godfrey et al. and Takagi to be in
HV3 packets form. One is motivated as such in order to increase the
synchronous communication links.” Id.
Appellants argue Arase does not overcome the deficiencies of
Godfrey and Takagi. App. Br. 23.
Claim 11 depends from claim 1. Claim 22 depends from claim 12. We
need not address whether Arase overcomes the purported deficiencies of
Godfrey and Takagi for reasons discussed above when addressing claims 1
and 12.

ORDER
The Examiner’s decision rejecting claims 1-4, 6-15, and 17-26 is
affirmed.
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).

AFFIRMED

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