Ex Parte Hosur et al

Board of Patent Appeals and Interferences

May 12, 2011

11454181 (B.P.A.I. May. 12, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte SRINATH HOSUR and ANAND G. DABAK
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Appeal 2011-000716
Application 11/454,181
Technology Center 2400
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Before: ALLEN R. MACDONALD, ROBERT E. NAPPI, and
MARC S. HOFF, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appeal 2011-000716
Application 11/454,181

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INTRODUCTION
Appellants’ Request for Rehearing, filed March 29, 2011, contends
that we erred in our Decision on Appeal entered February 2, 2011, in which
we affirmed the rejection of claims 36-51 and reversed the rejection of
claims 52-54.
OPINION
We will maintain the rejection.

ANALYSIS
Appellants argue that (a) the Decision’s reliance on Dobrica to teach
power control limitations constitutes a new ground of rejection, in view of
the Examiner’s prior statements that both Dobrica and Greenstein refer to
power control teachings (Req. for Reh’g 3), and (b) the Board
misapprehended the Examiner’s proposed combination of Dobrica and
Greenstein, giving four reasons why the proposed combination is a product
of improper hindsight (Req. for Reh’g 5-7).
First, we are not persuaded that the rationale contained in the Decision
constitutes a new ground of rejection. Appellants cite to the rationale of In re
Oku (Req. for Reh’g 3) to support their argument that the Decision contains
a new ground of rejection: reliance for the first time on appeal on the
specification’s description of the prior art “constitutes a new basis for
refusing a patent and petitioner has not had an adequate opportunity to
respond to the precise basis upon which the rejection is based.” In re Oku,
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Application 11/454,181

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25 USPQ2d 1155, 1157 (Comm’r Pat. & Trademarks 1992).1 Appellants
here concede, however, that the Examiner cited both Dobrica and Greenstein
previously (Req. for Reh’g 3), and expressed previously that both Dobrica
and Greenstein “refer to power control teachings” (Advisory Action mailed
Nov. 10, 2008, at 3) and “disclose the use of power level to command the
remote terminal adjust its power and provide best diversity” (Ans. 10). The
Board’s reliance on Dobrica as teaching the power control limitations
(Decision 7), then, does not constitute a new basis for refusing a patent.
Moreover, because of the Examiner’s prior citation of Dobrica, Appellants
had more than adequate opportunity to respond to the precise basis upon
which the rejection is based. We therefore conclude that the Decision does
not contain any new ground of rejection.
Second, we are not persuaded by Appellants’ argument that the Board
misapprehended the Examiner’s proposed combination. Appellants’
arguments concerning (a) why CDMA transmissions are incompatible with
OFDM transmissions, (b) why there would be no reason for one Base
Station to communicate with another Base Station, (c) the lack of motivation
to combine Dobrica with Greenstein, and (d) the impracticality of the
combination to one of ordinary skill in the art (Req. for Reh’g 5-7), are not
entitled to consideration because they were not earlier presented and are not
responsive to a new ground of rejection.

1 Appellants’ reliance upon In re de Blauwe is likewise unavailing. The
Board’s finding that Dobrica teaches the power control limitations claimed
is not a position or rationale new to the proceedings. See In re de Blauwe,
736 F.2d 699, 706 n.9 (Fed. Cir. 1984).
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Application 11/454,181

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Therefore, Appellants have not shown any points which we
misapprehended or overlooked in our Decision.

CONCLUSION
In summary, we have granted Appellants’ request for rehearing to the
extent that we have reconsidered our decision rejecting claims 36-51 under
35 U.S.C. § 103(a), but we decline to modify the decision in any way.

REHEARING DENIED

ELD