Ex Parte Hayek et al

Patent Trial and Appeal Board

Jul 21, 2014

11354704 (P.T.A.B. Jul. 21, 2014)

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
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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
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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.
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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.
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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).

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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).
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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
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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.
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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).
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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).
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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