Ex Parte Hottinen et al

Patent Trial and Appeal Board

Aug 20, 2014

11605382 (P.T.A.B. Aug. 20, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ARI HOTTINEN and RISTO WICHMAN
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Appeal 2012-002626
Application 11/605,382
Technology Center 2600
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Before JASON V. MORGAN, ERIC B. CHEN, and JOHNNY A. KUMAR,
Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-002626
Application 11/605,382

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This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1–19 and 22–27. Claims 20 and 21 have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Appellants’ invention relates to a mobile communications system
having transmission antenna diversity. The mobile communications system
transmits a broadcast signal through all transmission antenna routes of a
transmitting unit. With the aid of these signals, a choice is made in the
receiving unit of the optimum transmission antenna route. A message of the
choice is transmitted to the transmitting unit, which transmits user data
through the transmission antenna route connected for use. (Abstract.)
Claim 1 is exemplary, with disputed limitations in italics:
1. An apparatus, comprising:
a receiver configured to receive diversity signals on a
plurality of transmission routes from a transmitter;
a choosing unit configured to choose an optimum
transmission route from the plurality of transmission routes
based on received diversity signals;
a notifying unit configured to send to the transmitter a
notification of the chosen optimum transmission route; and
a verification unit configured to verify based on
transmission route identity information included in user data
received from the transmitter that the user data is received on
said chosen optimum transmission route.

Claims 1–19 and 22–27 stand rejected under 35 U.S.C. § 103(a) as
obvious over Ichihara (US 5,809,019; Sept. 15, 1998) and DeSantis
(US 5,628,052; May 6, 1997).
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ANALYSIS
We are unpersuaded by Appellants’ arguments (App. Br. 16–19; see
also Reply Br. 4–5) that the combination of Ichihara and DeSantis would not
have rendered obvious independent claim 1, which includes the limitation “a
verification unit configured to verify based on transmission route identity
information included in user data received from the transmitter that the user
data is received on said chosen optimum transmission route.”
The Examiner found that the base station 110 of DeSantis, in which
acceptance of the “best” antenna is in the form of a control message,
corresponds to the limitation “a verification unit configured to verify based
on transmission route identity information included in user data received
from the transmitter that the user data is received on said chosen optimum
transmission route.” (Ans. 5–6, 29–34.) We agree with the Examiner.
DeSantis relates to wireless communication systems, in particular,
“distributed antennas in a wireless communication system.” (Col. 1, ll. 7–
10.) Figure 1 of DeSantis illustrates a wireless communication system 102
(col. 4, ll. 59–61) that includes a base station 110 (col. 5, ll. 32–34), a mobile
unit 144 (col. 5, ll. 5–7), and a switch 112 connected to cell antenna units
(CAU) 118A-D (col. 5, ll. 41–42). Before the mobile unit 144
communicates with the base station 110 via one of the antennas 118A–D
(e.g., antenna 118A), the mobile unit 144 sends a command to the
switch 112 to select the antenna 118A. (Col. 6, ll. 42–49.) DeSantis
explains that “[i]f the base station 110 accepts the request for a new
telephone call, then the base station 110 will communicate that acceptance in
the downlink control slot 208 associated with the ‘best’ antenna.” (Col. 12,
ll. 39–42.) DeSantis further explains that this acceptance is “in the form of a
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control message containing information that identifies the mobile unit 144
that made the request, and that identifies the frequency, downlink data slot
210, uplink data slot 214, and antenna 118 assigned to the mobile unit 144.”
(Col. 12, ll. 44–47.) Because the mobile unit 110 communicates the
selection of the “best” antenna in the form a control message that “identifies
the frequency, downlink data slot 210, uplink data slot 214, and antenna 118
assigned to the mobile unit 144” (col. 12, ll. 46–47), DeSantis teaches the
limitation “a verification unit configured to verify based on transmission
route identity information included in user data received from the transmitter
that the user data is received on said chosen optimum transmission route.”
Appellants argue that “DeSantis merely refers to the use of a chosen
transmission route (i.e., the ‘best’ antenna of the previous frame) for an
acknowledgement/acceptance message” but “[o]ne would have understood
that the term ‘verification’ means there is a checking procedure performed,
which is not performed in Ichihara or DeSantis.” (App. Br. 17; see also
Reply Br. 4–5.) However, claim 1 is broad enough to encompass claim the
base station 110 of DeSantis, which communicates acceptance in the
downlink control slot 208 associated with the “best” antenna in the form a
control message.
Appellants also argue that “[n]o [transmission route] identification is
forwarded from the base station 110 of DeSantis” and “DeSantis is unable to
distinguish which transmission route has been used, and thus it would be
impossible for a receiving unit to perform a verification procedure.” (App.
Br. 18.) Similarly, Appellants argue that “DeSantis fails to disclose that user
data sent by the base station 110 includes transmission route identity
information for the purposes of verification.” (App. Br. 19.) Contrary to
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Appellants’ arguments, the control message of DeSantis “identifies the
frequency, downlink data slot 210, uplink data slot 214, and antenna 118
assigned to the mobile unit 144” (col. 12, ll. 46–47) and, accordingly,
DeSantis teaches the limitation “transmission route identity information” for
the purposes of verification.
We find untimely Appellants’ additional arguments in the Reply Brief
with respect to the combination of DeSantis and Ichihara (Reply Br. 5–6)
and the limitations of claims 4, 14, and 16 (Reply Br. 6). We note that these
new arguments were raised by Appellants for the first time in the Reply
Brief, and they are not in response to a new issue brought up by the
Examiner in the Answer. We therefore, find these new arguments
unavailing. Appellants are reminded that:
The purpose of a reply brief is to ensure the Appellant the
opportunity to have the last word on an issue raised by the
Examiner. The reply brief enables the Appellant to address any
new grounds of rejection the Examiner may have raised in the
answer, or to address changes or developments in the law that
may have occurred after the principal brief was filed. The reply
brief is not an opportunity to make arguments that could have
been made during prosecution, but were not. Nor is the reply
brief an opportunity to make arguments that could have been
made in the principal brief on appeal to rebut the Examiner’s
rejections, but were not.

Giving cognizance to belated arguments in a reply would
vitiate the force of the requirement in Board Rule 37(c)(1)(vii)
that “[a]ny arguments or authorities not included in the brief . . .
will be refused consideration by the Board, unless good cause is
shown.” The reference in that section to the “reply brief filed
pursuant to § 41.41” does not create a right for the Appellant to
raise an argument in the reply brief that could have been raised
in the principal brief but was not. Rather, that reference merely
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puts Appellants on notice that arguments that could be made in
the reply brief, but are not, are waived.
Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative
opinion).
Thus, we agree with the Examiner that the combination of Ichihara
and DeSantis would have rendered obvious independent claim 1, which
includes the limitation “a verification unit configured to verify based on
transmission route identity information included in user data received from
the transmitter that the user data is received on said chosen optimum
transmission route.”
Accordingly, we sustain the rejection of independent claim 1 under
35 U.S.C. § 103(a). Claims 2–6 depend from claim 1, and Appellants have
not presented any substantive arguments with respect to these claims.
Therefore, we sustain the rejection of claims 2–6 under 35 U.S.C. § 103(a),
for the same reasons discussed with respect to independent claim 1.
Independent claims 7, 10, 14, 19, and 22–271 recite limitations similar
to those discussed with respect to independent claim 1, and Appellants have
not presented any substantive arguments with respect to these claims. See In
re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal

1 In the event of further prosecution, the Examiner should consider whether
the recitation of “[a] computer readable medium” in independent claims 26
and 27 complies with 35 U.S.C. § 101. See In re Nuijten, 500 F.3d 1346,
1356–57 (Fed. Cir. 2007) (“A transitory, propagating signal like Nuitjen’s is
not a ‘process, machine, manufacture, or composition of matter.’ . . . [T]hus,
such a signal cannot be patentable subject matter.”); see also MPEP
§ 2106(I) (“Non-limiting examples of claims that are not directed to one of
the statutory categories . . . [include] transitory forms of signal transmission
(for example, a propagating electrical or electromagnetic signal per se.”)).
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brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”). We sustain
the rejection of claims 7, 10, 14, 19, and 22–27, as well as dependent
claims 8, 9, 11–13, and 15–18, for the same reasons discussed with respect
to claim 1.

DECISION
The Examiner’s decision rejecting claims 1–19 and 22–27 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)(iv).

AFFIRMED

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