Ex Parte Hoo et al

Patent Trial and Appeal Board

Jun 27, 2013

10810408 (P.T.A.B. Jun. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MIN CHUIN HOO and RAJENDRA TUSHAR
MOORTI
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Appeal 2011-000812
Application 10/810,408
Technology Center 2600
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Before DEBRA K. STEPHENS, PATRICK M. BOUCHER, and
STACEY G. WHITE, Administrative Patent Judges.

WHITE, Administrative Patent Judge.

DECISION ON APPEAL

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SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-23, 25-26, 28-29, and 31-46.1 We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM and ENTER A NEW GROUND OF REJECTION
PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b).
STATEMENT OF CASE
Appellants’ claims are directed to methods and systems for signal-
path selection with regard to a minimum threshold of a signal-quality metric.
(Spec. ¶ 04). Claim 1 is illustrative and is reproduced below (disputed
limitation is indicated in italics):
1. A method for processing signals in a communication system, the
method comprising:
determining a signal quality metric for a plurality of signal paths,
wherein one or more of said plurality of signal paths is selected
based on stored information related to preceding frames, the stored
information received via each of the plurality of signal paths;
assigning a threshold signal quality metric for the plurality of signal
paths; and

1 We note that Appellants briefing indicates that claims 1-46 are at issue,
however, in the September 9, 2009 Final Rejection, claims 24, 27, and 30
are not rejected, but instead are objected to as being dependent on rejected
base claims. Notwithstanding Appellants’ briefing, claims 24, 27, and 30
are not before us since we lack jurisdiction over petitionable matters. See,
e.g., MPEP § 706.01 (“[T]he Board will not hear or decide issues pertaining
to objections and formal matters which are not properly before the Board.”);
see also MPEP § 1201 (“The Board will not ordinarily hear a question that
should be decided by the Director on petition….”).
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discarding a signal path from the plurality of signal paths, if the
determined signal quality metric for the signal path does not satisfy
the threshold signal quality metric.
REJECTIONS
1. Claims 1, 3, 5-7, 15, 17, 19-22, 28, 31-32, 34, 36-40, 42, and 44-46 stand
rejected under 35 U.S.C. § 102(b) as anticipated by Wagner (U.S. Pat.
No. 6,456,675).2
2. Claims 2, 4, 16, 18, 33, 35, 39, 41, and 43 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Wagner and Tanaka (U.S. Pat. No. 7,245,678).
3. Claims 23 and 29 stand rejected under 35 U.S.C. § 103(a) as obvious
over Wagner and Mantha (U.S. Pub. No. 2005/0018634).
4. Claims 8, 10, 12-14, and 25 stand rejected under 35 U.S.C. § 103(a) as
obvious over Wagner and Koerner (U.S. Pat. No. 7,049,933).
5. Claims 9 and 11 stand rejected under 35 U .S.C. § 103(a) as obvious over
Wagner, Tanaka, and Koerner.
6. Claim 26 stands rejected under 35 U.S.C. § 1 03(a) as obvious over
Wagner, Mantha, and Koerner.
We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made but chose not
to make in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii).

2 We note that both the Appellants and Examiner list claim 23 as rejected
under both §§ 102(b) and 103(a), however, this appears to be a
typographical error. Neither the Final Rejection, Appeal Brief, Examiner’s
Answer, or Reply Brief contain any discussion of claim 23 as being rejected
under § 102(b). All discussion of claim 23 is in regards to § 103(a). We
consider this to be harmless error and we will review the rejection of claim
23 under § 103(a).
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ISSUES
Appellants’ response to the Examiner’s rejections presents us with the
following issues:
(1) Did the Examiner err in finding Wagner discloses “determining a signal
quality metric for a plurality of signal paths, wherein one or more of said
plurality of signal paths is selected based on stored information related to
preceding frames, the stored information received via each of the
plurality of signal paths” as recited by claim 1?
(2) Did the Examiner err in finding Wagner discloses “assigning a fixed
threshold signal quality metric for each of the plurality of signal
paths” as recited by claim 3?
(3) Did the Examiner err in finding that the cited art teaches or suggests
“assigning a different threshold signal quality metric for each of the
plurality of signal paths” as recited by claim 2?
(4) Did the Examiner err in finding that the cited art teaches or suggests
“dynamically changing the threshold signal quality metric for each of
the plurality of signal paths” as recited by claim 4?
(5) Did the Examiner err in finding that the cited art teaches or suggests
“selecting one or more of said plurality of signal paths based on a
history of previously selected signal paths” as recited by claim 23?
ANALYSIS
Independent claims 1 recites “determining a signal quality metric for a
plurality of signal paths, wherein one or more of said plurality of signal
paths is selected based on stored information related to preceding frames, the
stored information received via each of the plurality of signal paths.”
Appellants assert that the Examiner erred in finding that Wagner discloses
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this limitation. (App. Br. 8-12). In particular, Appellants argue Wagner
does not utilize any stored information related to preceding frames in
determining its quality metrics. (Id. at 9-10). The Examiner points out that
Wagner evaluates a plurality of signal paths using test data that provides a
plurality of quality metrics. (Ans. 12 (citing Wagner 18:6-8)). In addition,
Wagner “select[s] the payload signal source based at least upon a previous
quality metric corresponding to a previous payload signal source.” (Id.
at 13 (quoting Wagner 18:17-19 (“claim 19”))). Appellants argue that this
quote is taken out of context and allege that Wagner’s claim 19 is actually
directed to “selecting a new payload source signal when the current
(previous) payload signal compares unfavorably with a threshold.” (Reply
Br. 4). Appellants then go on to quote a portion of Wagner that selects a
new antenna “based on all of the current quality metrics.” (Id. (citing
Wagner 6:51-7:6).
However, we find Wagner states that the “[quality metric] Q(P), is
updated based on the now-updated value of the sCRC parameter, and the
previous values of the CQ, RQ, aCRC and Sync parameters. As before, the
test antenna quality metric is preferably calculated as the sum of the CQ,
RQ, aCRC, sCRC, and Sync parameters (all represented as running sums).”
(Wagner 15:56-64; see also 7:39-40; 10:39-43; 10:47-56)(emphasis added).
Thus, we find Wagner discloses a quality metric that is based on stored
information and accordingly, are not persuaded of error in the Examiner’s
finding that Wagner discloses the disputed limitation.
For the foregoing reasons, we sustain the Examiner’s rejection of
independent claim 1 under 35 U.S.C. § 102(b). The rejections of claims 22
and 28 are sustained for similar reasons along with independent claims 8, 15,
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31, and 39, which contain commensurate limitations, and dependent claims
5-7, 10, 12-14, 17, 19-21, 25, 32, 34, 36-38, 40, 42, 44-46, which were not
separately argued.
As to claim 3, Appellants contend that the Examiner erred in finding
Wagner discloses “assigning a fixed threshold signal quality metric for each
of the plurality of signal paths” as recited by claim 3. According to the
Appellants, Wagner discloses the use of a single quality metric and not the
assignment of a quality metric to each of the signal paths. (App. Br. 13
(noting that Wagner’s claim 19 discloses using “a threshold”)) As an initial
matter, we note that “an indefinite article ‘a’ … carries the meaning of ‘one
or more’ in open-ended claims containing the transitional phrase
‘comprising.’” KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356
(Fed. Cir. 2000). Thus, Wagner’s usage of “a threshold” in claim 19 is not
limiting. The Examiner points out that Wagner sets a fixed threshold value
and selects an antenna by “comparing the quality metrics for each of the
received antennas.” (Ans. 15 (citing Wagner 14:58-59, 14:65-15:1)). In
Wagner, the fixed threshold value is applied to each of the signal paths. As
such, we agree with the Examiner’s finding that Wagner discloses the
disputed limitation and we sustain the Examiner’s rejection of claim 3 under
35 U.S.C. § 102(b).
As to claim 2, Appellants argue that the Examiner erred in finding that
the cited art teaches or suggests “assigning a different threshold signal
quality metric for each of the plurality of signal paths.” According to
Appellants,Tanaka selects one of two antennas when a guard bit is received
and antenna selection is not based on stored information. (App. Br. 17
(citing Tanka 2:55-56, 5:16-20, 7:55-65)). Finally, Appellants aver that
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Tanaka does not disclose assigning a quality metric for a plurality of signal
paths because either antenna 2a or 2b will be selected. (Id. at 17-18).
We are not persuaded. The Examiner relies on a combination of
Wagner and Tanaka to teach the limitations of claim 2. (Ans. 8). “Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Specifically, Wagner
is relied upon to teach or suggest selection of a signal path based on stored
information (Ans. 4) while Tanaka is relied upon to teach or suggest
assigning a “different threshold to each of the signal paths.” (Id. at 8).
Further, Tanaka discloses a first and second threshold value, each of which
is variable. (Tanaka Fig. 3, 5:30-50). The Examiner reasoned that it would
have been obvious to one of ordinary skill in the art to incorporate Tanaka’s
multiple variable thresholds into Wagner in order to have a guaranteed
quality for the received and reproduced signal. (Ans. 8, 18). The Appellants
have not identified evidence or proffered arguments sufficient to persuade us
of error in the Examiner’s reasoning. For the foregoing reason, we sustain
the Examiner’s rejection of claim 2 under 35 U.S.C. § 103(a) and claims 9,
16, 26, 33, and 41, which contain commensurate limitations.
As to claim 4, Appellants argue that the Examiner erred in finding that
the cited art teaches or suggests “dynamically changing the threshold signal
quality metric for each of the plurality of signal paths.” According to
Appellants, Tanaka does not dynamically change the metric for a plurality of
signal paths. (App. Br. 18-19). As we noted above, Tanaka’s two threshold
values are variable. (Tanaka Fig. 3, 5:30-50). We agree with the
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Examiner’s finding that Tanaka’s variable threshold values teach or suggest
the claimed dynamically changing threshold signal quality metrics. For the
foregoing reason, we sustain the Examiner’s rejection of claim 4 under 35
U.S.C. § 103(a) and claims 11, 18, 35, and 43, which contain commensurate
limitations.
As to claim 23, Appellants also aver that the Examiner erred in
finding that the cited art teaches or suggests “selecting one or more of said
plurality of signal paths based on a history of previously selected signal
paths.” Appellants point out that Mantha discloses selecting an antenna
based on a history of reception qualities. (App. Br. 20).
The Examiner cites claim 30 of Mantha for this limitation, which
recites selection based on “a history of reception qualities achieved from
each of said plurality of possible antenna configurations.” (Ans. 19 (citing
Mantha 7:8-12)). We find in Mantha, each antenna has one of four possible
configurations. (Mantha 0045, Fig. 2). Further, Mantha discloses that each
of the antenna’s configurations is assigned a reception quality value and that
information is maintained in a table. (Id. ¶¶ 0056, 0079). Mantha also
specifically states that its disclosures are not limited to embodiments with a
single antenna. (Id. ¶ 0076, Fig. 7). Thus, we determine that Mantha
teaches or suggests to one of skill in the art signal-path selection based on
historical data from previous configurations of one or more signal paths.
The Examiner finds that one of skill in the art would have been
motivated to combine Mantha’s selection of signal path based on history
with the disclosures of Wagner in order to accurately detect a signal. (Ans.
5). We find the Examiner’s findings and conclusions to be reasonable and
with a rational underpinning and as such, we sustain the Examiner’s
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rejection of claim 23 and claims 26 and 29, which contain commensurate
limitations.
Therefore, for all of the foregoing reasons, we sustain the Examiner’s
rejection of claims 1-23, 25-26, 28-29, and 31-46.
NEW GROUND OF REJECTION
We make the following new grounds of rejection using our authority
under 37 C.F.R. § 41.50(b): claims 8-14 and 25-26 under 35 U.S.C. § 101.
Claim 8 recites “A machine-readable storage having stored thereon, a
computer program…” No definition is provided for a machine-readable
storage, and thus, one of ordinary skill in the art would reasonably
understand Appellants’ claim 8 and dependent claims 9-14 and 25-26 to
encompass transitory propagating signals.
Signals are unpatentable under § 101. In re Nuijten, 500 F.3d 1346,
1355 (Fed. Cir. 2007). According to U.S. Patent & Trademark Office
(USPTO) guidelines:
A claim that covers both statutory and non-statutory
embodiments . . . embraces subject matter that is not eligible for
patent protection and therefore is directed to non-statutory
subject matter. . . . For example, a claim to a computer readable
medium that can be a compact disc or a carrier wave covers a
non-statutory embodiment and therefore should be rejected
under § 101 as being directed to non-statutory subject matter.

Manual of Patent Examining Procedures (“MPEP”) § 2106(I).

The USPTO also provides the following guidance:
The broadest reasonable interpretation of a claim drawn to a
computer readable medium . . . typically covers forms of non-
transitory tangible media and transitory propagating signals per
se in view of the ordinary and customary meaning of computer
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readable media. . . . When the broadest reasonable
interpretation of a claim covers a signal per se, the claim must
be rejected under 35 U.S.C. § 101 as covering non-statutory
subject matter.

David J. Kappos, Subject Matter Eligibility of Computer Readable Media,
1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010).

In view of the foregoing, claim 8 and claims 9-14 and 25-27
depending therefrom, encompass both statutory and non-statutory subject
matter, and are therefore ineligible under § 101.

DECISION
We affirm the rejection of claims 1, 3, 5-7, 15, 17, 19-22, 28, 31-32,
34, 36-40, 42, and 44-46 under 35 U.S.C. § 102(b) as anticipated by
Wagner. We affirm the rejection of claims 2, 4, 8-14, 16, 18, 23, 25, 26, 29,
33, 35, 39, 41, and 43 under 35 U.S.C. § 103 over the cited art. We enter a
new ground of rejection whereby we reject claims 8-14 and 25-26 under 35
U.S.C. § 101.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION:
must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal
as to the rejected claims:

(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
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reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

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)(iv).

AFFIRMED
37 C.F.R. § 41.50(b)

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