Ex Parte Hayek et alDownload PDFPatent Trial and Appeal BoardJul 21, 201411354704 (P.T.A.B. Jul. 21, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/354,704 02/14/2006 Claude Hayek 3875.1120000 8697 26111 7590 07/22/2014 STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 NEW YORK AVENUE, N.W. WASHINGTON, DC 20005 EXAMINER VO, NGUYEN THANH ART UNIT PAPER NUMBER 2649 MAIL DATE DELIVERY MODE 07/22/2014 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CLAUDE HAYEK, LAWRENCE J. MADAR III, NELSON SOLLENBERGER, FREDERIC C. HAYEM, and VAFA RAKSHANI ____________ Appeal 2012-000712 Application 11/354,704 Technology Center 2600 ____________ Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Examiner finally rejected claims 1-30. Appellants appeal from the final rejection under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2012-000712 Application 11/354,704 2 INVENTION This invention relates to "a processor that handles a plurality of wireless access communication protocols." (Title). Claim 1, reproduced below, is representative of the claimed subject matter: 1. A method for handling communication signals, the method comprising: [a] processing, [a1] within a single chip, [a2] any one of a plurality of wireless access communication protocols by any one of a plurality of on-chip baseband processors, [b] wherein each of said plurality of on-chip baseband processors is not dedicated to process a particular one of said plurality of wireless access communication protocols. (Disputed limitations emphasized, steps lettered; paragraph returns added). REJECTIONS R1. Claims 1, 3, 4, 11, 13, 14, 21, 23, and 24 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over U.S. Patent Publication No. 2005/0020299 A1 published Jan. 27, 2005 ("Malone '299") and U.S. Patent Publication No. 2006/0084469 A1 published Apr. 20, 2006 ("Malone '469"). (Ans. 6). R2. Claims 2, 12, and 22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Malone '299, Malone '469, and U.S. Patent Publication No. 2006/0105812 A1 published May 18, 2006 ("Shin"). (Ans. 8).1 1 We observe the Examiner added the Shin reference for the first time in the Answer, as evidence to support the reliance on Official Notice. (Ans. 3, 8, 12, and 13). Appellants did not file a petition asserting a new ground of rejection, nor did Appellants address the newly cited Shin reference in the Appeal 2012-000712 Application 11/354,704 3 R3. Claims 5, 7, 8, 15, 17, 18, 25, 27, and 28 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Malone'299, Malone'469, and U.S. Patent No. 5,722,040 issued Feb. 24, 1998 ("Bjerede"). (Ans. 8). R4. Claims 6, 16, and 26 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Malone'299, Malone'469, Bjerede and U.S. Patent No. 5,297,142 issued Mar. 22, 1994 ("Paggeot"). (Ans. 9).2 R5. Claims 9, 10, 19, 20, 29, and 30 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Malone'299, Malone'469, and U.S. Patent No. 6,885,861 issued Apr. 26, 2005 ("Koskelainen"). (Ans. 10). GROUPING OF CLAIMS Based on Appellants' arguments, we decide the appeal of: Rejection R1 of claims: on the basis of representative claim: 1, 11, and 21 1 3, 13, and 23 3 4, 14, and 24 4 Rejection R2 of claims: on the basis of representative claim: 2, 12, and 22 2 Reply Brief. Arguments not made are considered waived. See 37 C.F.R. § 41.37(c)(1)(vii)(2004). See also n.3. 2 We observe the Examiner added the Paggeot reference for the first time in the Answer, as evidence to support the reliance on Official Notice. (Ans. 5, 9, 16, and 17 ). Appellants did not file a petition asserting a new ground of rejection, nor did Appellants address the newly cited Paggeot reference in the Reply Brief. Arguments not made are considered waived. See 37 C.F.R. § 41.37(c)(1)(vii)(2004). See also n.3. Appeal 2012-000712 Application 11/354,704 4 Rejection R3 of claims: on the basis of representative claim: 5, 15, and 25 5 7, 17, and 27 7 8, 18, and 28 8 Rejection R4 of claims: on the basis of representative claim: 6, 16, and 26 6 Rejection R5 of claims: on the basis of representative claim: 9, 19, and 29 9 10, 20, and 30 10 See 37 C.F.R. § 41.37(c)(1)(vii)(2004).3 ANALYSIS We disagree with Appellants' contentions regarding the Examiner's § 103 rejections of the claims (R1-R5). 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 Answer in response to arguments made in Appellants' Appeal Brief. (Ans. 10-19). We highlight and address specific findings and arguments below, but may not address all claims and arguments. For essentially the same reasons set 3 Appellants filed a Notice of Appeal on Nov. 30, 2010. The date of filing the Notice of Appeal determines which set of rules applies to an Ex Parte appeal. If a Notice of Appeal is filed prior to January 23, 2012, then the 2004 version of the Board Rules last published in the 2011 edition of Title 37 of the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to the appeal. See also Manual of Patent Examining Procedure (MPEP) 8th ed., Rev. 8, July 2010. Appeal 2012-000712 Application 11/354,704 5 forth by the Examiner in the Answer, and for the reasons discussed below, we sustain all the Examiner's rejections (R1-R5) of all rejected claims 1-30. (Id. at 1-19). R1. CLAIM 1 A. Regarding the claim 1 limitation: [a] "processing . . . [a2] any one of a plurality of wireless access communication protocols by any one of a plurality of on-chip baseband processors," Appellants contend: "the combination of Malone '299 and Malone '469 discloses a multiple standard baseband processor that can be configured to receive time-multiplexed or frequency multiplexed signals and one or more baseband processors can be on one or more integrated circuits, but does not disclose the limitation [at issue]." (App. Br. 12 (emphasis added)). Appellants' contentions are unpersuasive because Appellants fail to address and rebut the Examiner's specific findings based on the cited sections of the references. (Id.). The Examiner finds, and we agree, limitation [a] is taught or suggested by the combined teachings and suggestions of references, as follows: “[a] processing . . . any one of a plurality of wireless access communication protocols" (processing GMS, WAN, and Bluetooth wireless protocols (Malone '299 ¶ 42; GSM, GPRS, EDGE, AMPS, CDMA and WCDMA; Malone '469 ¶ 6) "by any one of a plurality of on-chip baseband processors" (configurable baseband processors 280a-280n; Malone '469 ¶¶ 46-48). (Ans. 6-7, 11, 13). Appeal 2012-000712 Application 11/354,704 6 B. Regarding the claim 1 limitation [b] "each of said plurality of on-chip baseband processors is not dedicated to process a particular one of said plurality of wireless access communication protocols," (emphasis added) Appellants contend: “[t]he combination of Malone '299 and Malone '469 discloses that each baseband processor may be configured or dedicated (as opposed to not dedicated) to process signals corresponding to one or more communication systems." (App. Br. 12). We find Appellants' contentions are not commensurate with the scope of the claim and are also inconsistent with the teachings of the references. Specifically, each of Malone '469's baseband processors [b] "is not dedicated to process a particular one of said plurality of wireless access communication protocols," because each processor can process any one of the wireless access communication protocols by configuring for any one of the protocols. (Ans. 12; Malone '469 ¶¶ 46-48). C. Regarding the combination of references relied on by the Examiner as teaching or suggesting limitation [a1] "within a single chip," Appellants contend: the Examiner merely provides cursory statements in an attempt to support the claim rejections. See, e.g., Office Action at page 3 (alleging obviousness to combine the references "to reduce the manufacture cost and provide miniaturization of the multiple standard baseband processor.") Other than this broad generalization, the Examiner provides no explanation regarding the alleged motivation for combining these references. (App. Br. 10). Appeal 2012-000712 Application 11/354,704 7 Appellants' contentions are unpersuasive because Appellants do not provide any evidence or argument beyond conclusory statements to explain why the Examiner's articulated reasoning does not provide some rational underpinning to support the legal conclusion of obviousness. (Id.). The Examiner finds, and we agree, one of ordinary skill in the art at the time of the invention would have been motivated to provide the Malone '469 baseband processors within a single chip as taught by Malone '299, "in order to reduce the manufactur[ing] cost and provide miniaturization of the multiple standard baseband processor 250 in Malone '299." 4 (Ans. 7). We also conclude that applying the notoriously well-known technique of placing communication systems, processors, and circuits on a single chip (as taught by Malone '469), to the communication system of Malone '299, would have been an obvious application of a familiar technique to a similar device that would have yielded a predictable result. 5 4 “[A]nalysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.†KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). 5 Discussing the question of obviousness of a patent that claims a combination of known elements, KSR explains: 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 Appeal 2012-000712 Application 11/354,704 8 For these reasons, on this record, we are not persuaded the Examiner erred. Accordingly, we sustain the rejection of representative claim 1 and the grouped claims which fall therewith. (See Grouping of Claims, supra). R1. CLAIMS 3 AND 4 Appellants contend the combination of references does not teach or suggest the limitations of claims 3 and 4. (App. Br. 19-21). However, Appellants' contentions are unpersuasive because the contentions do not address the Examiner’s specific findings based on the particular cited sections of the references. (Ans. 13-14). Therefore, on this record, we are not persuaded the Examiner erred. Accordingly, we sustain the rejection of representative claims 3 and 4, and the grouped claims which fall therewith. (See Grouping of Claims, supra). R2. R2. CLAIM 2 Appellants traverse the Examiner's taking of Official Notice. (App. Br. 14-18). The Examiner supports the taking of Official Notice by citing Shin. (Ans. 12-13). Appellants fail to rebut the Examiner's findings regarding Shin. (Reply Br. 7). Arguments not made are considered waived. See 37 C.F.R. § 41.37(c)(1)(vii)(2004). See also n.1 supra. 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, 550 U.S. at 417. Appeal 2012-000712 Application 11/354,704 9 For these reasons, on this record, we are not persuaded the Examiner erred. Accordingly, we sustain the rejection of representative claim 2 and the grouped claims which fall therewith. (See Grouping of Claims, supra). R3. R3. CLAIM 5 AND 8 Appellants contend the combination of references does not teach or suggest the limitations of claims 5 and 8. (App. Br. 21-26). Appellants' contentions are unpersuasive because the contentions do not address and rebut the Examiner's specific findings based on the cited sections of the references. (Ans. 14-18). For these reasons, on this record, we are not persuaded the Examiner erred. Accordingly, we sustain the rejection of representative claims 5 and 8, and the grouped claims which fall therewith. (See Grouping of Claims, supra). R3. CLAIM 7 Regarding the claim 7 limitation: "said accessing occurs via at least a peripheral bus communicatively coupled to said any one of said plurality of onchip baseband processors," Appellants contend the combination of references "discloses a baseband processor [ . . . ] that interfaces with peripheral devices with a central bus (as opposed to at least a peripheral bus)." (App. Br. 32-33 (emphasis added) (original emphasis omitted)). Appellants' contentions are unpersuasive because Appellants fail to provide any evidence or substantive argument to rebut the Examiner’s finding that Bjerede's bus 80 would have taught or at least suggested the broadest reasonable interpretation of "peripheral bus." (Ans. 17). Appeal 2012-000712 Application 11/354,704 10 Moreover, we agree with the Examiner that Bjerede's central bus 80 would have taught or suggested the recited "peripheral bus communicatively coupled to said any one of said plurality of onchip baseband processors" (claim 7), because Bjerede's bus 80 connects the processor and the peripheral devices. (Id.). For these reasons, on this record, we are not persuaded the Examiner erred. Accordingly, we sustain the rejection of representative claim 7 and the grouped claims that fall therewith. (See Grouping of Claims, supra). R4. CLAIM 6 Appellants traverse the Examiner's taking of Official Notice. (App. Br. 28-30). The Examiner supported the taking of Official Notice by citing Paggeot. (Ans. 9, 16-17). However, Appellants fail to rebut the Examiner's findings regarding Paggeot. (Reply Br. 12). ). Arguments not made are considered waived. See 37 C.F.R. § 41.37(c)(1)(vii)(2004). Therefore, on this record, we are not persuaded the Examiner erred. Accordingly, we sustain the rejection of representative claim 6 and the grouped claims which fall therewith. See Grouping of Claims, supra. See also n.2 supra. R5. CLAIMS 9 AND 10 Regarding the claim 9 limitation "comprising processing multimedia data within said single chip" (emphasis added), and claim 10, Appellants contend "Koskelainen discloses that EDGE boosts data speeds and allows video and mobile multimedia applications." (App. Br. 36). Appeal 2012-000712 Application 11/354,704 11 Appellants' contentions are unpersuasive because Appellants attack the references in isolation and do not address the combined teachings and suggestions of the references, as relied on by the Examiner. (Ans. 18-19). We agree with the Examiner the combination of Malone '299 and Malone '469 would have taught or suggested processing data within a single chip. (Id.). Moreover, we find the combination of Malone '299, Malone '469, and Koskelainen would have taught or suggested the contested limitations, because Koskelainen teaches or suggests processing and receiving multimedia data. (Id.). For these reasons, on this record, we are not persuaded the Examiner erred. Accordingly, we sustain the rejection of representative claims 9 and 10, and the grouped claims which fall therewith. (See Grouping of Claims, supra). DECISION We affirm the Examiner's rejections R1-R5 of claims 1-30 under § 103. No time for taking any action connected with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f). AFFIRMED bar Copy with citationCopy as parenthetical citation