Ex Parte HoultDownload PDFPatent Trial and Appeal BoardJul 14, 201712559874 (P.T.A.B. Jul. 14, 2017) Copy Citation United States Patent and Trademark Office 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. 12/559,874 09/15/2009 NIGEL SHERIDEN HOULT ETF0095USD 9236 23413 7590 07/18/2017 TANTOR TOT RTTRN T T P EXAMINER 20 Church Street MUSTAFA, IMRAN K 22nd Floor Hartford, CT 06103 ART UNIT PAPER NUMBER 3663 NOTIFICATION DATE DELIVERY MODE 07/18/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): usptopatentmail@cantorcolbum.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NIGEL SHERIDEN HOULT Appeal 2016-004731 Application 12/559,8741 Technology Center 3600 Before BRUCE R. WINSOR, KARA L. SZPONDOWSKI, and DAVID J. CUTITTAII, Administrative Patent Judges. WINSOR, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of claims 1—3, 8—10, 15—18, 21, and 22, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). Claims 4— 7, 11—14, 19, and 20 are cancelled. App. Br. (Claims App’x) 10-13 We affirm. 1 The real party in interest identified by Appellant is the European Union, Represented by The European Commission. App. Br. 1. Appeal 2016-004731 Application 12/559,874 RELATED PROCEEDINGS Appellant identifies co-pending application 11/738,006 as the parent of the present application. App. Br. 2. Application 11/738,006 is the subject of Appeal 2106-004800, decided concurrently herewith. STATEMENT OF THE CASE Appellant’s disclosed invention relates to “signal modulation, in particular with regard to satellite navigation systems” (Spec. 12), and more specifically to “producing a spread-spectrum signal and . . . receiving such a spread-spectrum signal, in particular with regard to satellite navigation systems” (id.) Claim 1, which is illustrative, reads as follows: 1. A spread-spectrum signal generator: providing a carrier wave and a modulation waveform, wherein said modulation waveform includes a pilot signal and a data signal, wherein said pilot signal comprises an anti-phase linear combination of a BOC(l,l) waveform and a BOC(6,l) waveform, wherein said data signal comprises data in binary form and an in-phase linear combination of a BOC(l,l) waveform and a BOC(6,l) waveform, said data in binary form being modulated with said in-phase linear combination, said anti-phase linear combination being expressible as a-BOC(l,l)-p-BOC(6,l) and said in-phase linear combination being expressible as a-BOC(l,l)+ p-BOC(6,l), wherein a and P are non-zero coefficients indicating the relative power split between said BOC(l,l) waveform and said BOC(6,l) waveform, wherein a and P are of same sign, so that in said anti phase linear combination of said BOC(l,l) waveform 2 Appeal 2016-004731 Application 12/559,874 and said BOC(6,l) waveform, said BOC(l,l) waveform and said BOC( 6, 1) waveform are of opposite polarity at the beginning of every chip, so that in said in-phase linear combination of said BOC(l,l) waveform and said BOC(6,l) waveform, said BOC(l,l) waveform and said BOC(6,l) waveform are of same polarity at the beginning of every chip and so that said anti-phase linear combination exhibits a broader spectral peak at 6 MHz from a centre frequency of said carrier wave than said in- phase linear combination; and modulating said carrier wave with said modulation waveform. Claims 1—3, 8—10, 15—18, 21, and 22 stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. See Final Act. 2—3. Claims 1—3, 8—10, 15—18, 21, and 22 stand rejected under 35 U.S.C. § 103(a)2 as being unpatentable over Lionel et al. (US 2008/0137714 Al; June 12, 2008; hereinafter “Lionel”). See Final Act. 3—12. Rather than repeat the arguments here, we refer to the Briefs (“App. Br.” filed Aug. 24, 2015; “Reply Br.” filed Apr. 1, 2016) and the Specification (“Spec.” filed Sept. 15, 2009) for the positions of Appellant and the Final Office Action (“Final Act.” mailed Feb. 20, 2015) and Answer (“Ans.” mailed Feb. 3, 2016) for the reasoning, findings, and conclusions of the Examiner. Only those arguments actually made by Appellant have been considered in this decision. Arguments that Appellant did not make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2014). 2 All prior art rejections are under the provisions of 35 U.S.C. in effect prior to the effective date of the Leahy-Smith America Invents Act of 2011. Final Act 2. 3 Appeal 2016-004731 Application 12/559,874 ISSUES The issues presented by Appellant’s arguments are as follows: Whether the Examiner errs in concluding claims 1—3, 8—10, 15—18, 21, and 22 are directed to non-statutory subject matter. Whether the Examiner errs in concluding claims 1—3, 8—10, 15—18, 21, and 22 are obvious over the teachings and suggestions of Lionel. ANALYSIS Rejection under 35 U.S.C. § 101 The Examiner concludes claims 1—3, 8—10, 15—18, 21, and 22 are directed to a transitory propagating signal and do not, therefore, fall within any statutory class of patentable subject matter. Final Act 2. The Examiner further concludes claims 1—3, 8—10, 15—18, 21, and 22 are directed to an abstract idea, i.e., a mathematical formula or algorithm, and “do not include limitations that are ‘significantly more’ than the abstract idea because the claims do not include an improvement to another technology or technical field ... or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.” Final Act. 3. Appellant contends “the claims are directed to a spread-spectrum signal generator, which is undeniably patent eligible subject matter.” App. Br. 4 ; see also Reply Br. 1—2. Patent eligibility is a question of law that is reviewable de novo. Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). To be statutorily patentable, the subject matter of an invention must be a “new and useful process, machine, manufacture, or composition of matter, or [a] new 4 Appeal 2016-004731 Application 12/559,874 and useful improvement thereof.” 35 U.S.C. § 101. The Supreme Court has held that there are implicit exceptions to the categories of patentable subject matter identified in § 101, including (1) laws of nature, (2) natural phenomena, and (3) abstract ideas. Alice Corp. Pty. Ltd. v. CLS BankInt 7, 134 S. Ct. 2347, 2355 (2014). Further, the Court has “set forth a framework for distinguishing patents that claim [1] laws of nature, [2] natural phenomena, and [3] abstract ideas from those that claim patent-eligible applications of those concepts.” Id., citing Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012). The evaluation follows the two-part analysis set forth in Mayo: (1) determine whether the claim is directed to a patent-ineligible concept, e.g., an abstract idea; and (2) if an abstract idea is present in the claim, determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. See Alice, 134 S. Ct. at 2355. Statutory Class We first look to see whether the claims fall within one of the four statutory classes of patentable subject matter. In this case, each of the claims is directed to “[a] spread-spectrum signal generator” (claims 1, 8, 15, 18, 21, 22), “[a] satellite comprising a spread-spectrum signal generator . . . and a transmitter” (claims 2, 9, 16), or “[a] pseudolite[3] comprising a spread- 3 “Pseudolite is a contraction of the term ‘pseudo-satellite,’ used to refer to something that is not a satellite which performs a function commonly in the domain of satellites. Pseudolites are most often small transceivers that are used to create a local, ground-based Global Positioning System (GPS) alternative.” Wikipedia, https://en.wikipedia.org/wiki/Pseudolite (edited Aug. 3, 2016, accessed July 10, 2017). 5 Appeal 2016-004731 Application 12/559,874 spectrum signal generator . . . and a transmitter” (claims 3, 10, 17). App. Br. (Claims App’x) 10—13. Although each of the claims describes, in functional terms, the signal generated or transmitted, each claim is directed to the machine that generates the signal and not to the signal itself. Accordingly, we conclude that each of claims 1—3, 8—10, 15—18, 21, and 22 is directed to a machine, which is one of the four statutory classes of patent eligible subject matter, and not to the signal generated by the machine. Cf. In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007). We turn next to examine whether the claims are directed to a judicial exception to the four classes of eligible subject matter. Alice, 134 S. Ct. at 2355 (2014). Abstract Idea The Examiner explains as follows: Claim 1 recites a spread-spectrum signal generator however there is nothing in the body of the claim that has the components of the spread-spectrum signal generator (i.e. only the preamble contains [the] signal generator, not the body of the claim). The body of the claim recites just the mathematical steps of modulating a carrier wave. The applicant is making it appear that a satellite and [pseudolite] is being claimed, however the bulk of the claim deals with the abstract idea of calculating a modulation waveform. There are no structural components in the body of the claim of the spread-spectrum signal generator and the body of the claim contains the abstract idea of calculating a modulation waveform. Ans. 3. Each of these claims is directed to specific pieces of hardware, a spread-spectrum signal generator standing alone or incorporated, together with a transmitter, into a satellite or pseudolite. See supra. This hardware is useful in satellite navigation technology, such as GPS. Spec. ^fl[ 3—5. Thus, 6 Appeal 2016-004731 Application 12/559,874 although the signal to be produced by the signal generator is described by use of a mathematical formula, the claim is to hardware configured to produce a signal having the characteristics described by the formula. This is analogous to the situation in Diamond v. Diehr, 450 U.S. 175 (1981), in which a rubber molding apparatus was configured to open a mold in accordance with a mathematical formula. The Examiner is correct that the bulk of the claim describes the algorithm, rather than the hardware implementing the algorithm to generate the spread-spectrum signal. See Ans. 3. However, here the recitation of the “spread-spectrum signal generator” gives “life and meaning” to the remaining limitations, which describe the functionality of the “spread-spectrum signal generator.” “[TJhere is nothing intrinsically wrong with the use of. . . [functional language] in drafting patent claims.” In re Swinehart, 439 F.2d 210, 212 (CCPA 1971). Therefore, the limitations “[a] spread spectrum signal generator” (claims 1, 8, 15, 18, 21, 22), “[a] satellite comprising a spread- spectrum signal generator . . . and a transmitter” (claims 2, 9, 16), and “[a] pseudolite comprising a spread-spectrum signal generator . . . and a transmitter” (claims 3, 10, 17) (App. Br. (Claims App’x) 10-13), may not be disregarded. See Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997) (noting that when the claim preamble recites structural limitations of the claimed invention, the USPTO must give effect to that usage). Further, we are aware of no rule that would permit us to balance the proportion of the claim language directed to structural limitations against the proportion of the claim language directed to functional limitations. We conclude claim 1 and, for similar reasons, claims 2, 3, 8—10, 15— 18, 21, and 22, like the claims at issue in Diehr, are directed to significantly 7 Appeal 2016-004731 Application 12/559,874 more than the mathematical operations that make up the algorithm recited in the claims. Accordingly, we do not sustain the rejection of claims 1—3, 8— 10, 15-18, 21, and 22 under 35 U.S.C. § 101. Rejection under 35 U.S.C. § 103(a) Appellant contends “[i]n Lionel, while a carrier wave is modulated with a first spreading waveform and a quadrature component of the carrier is modulated with a second reading waveform, the reference is otherwise silent as to the claimed modulation waveform including a pilot signal and a data signal.” App. Br. 4. We are not persuaded of error. “The test for obviousness is not. . . that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the . . . teachings of the reference [] would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). As pointed out by the Examiner, Lionel teaches a spread spectrum signal comprising an in-phase signal Si(t) in which a second binary wave form b-W2(t) is added to a first binary waveform a- wi(t) and quadrature signal S2(t) in which the second binary waveform b-W2(t) is subtracted from the first binary waveform a-wi(t). Lionel || 19-20; see also Lionel || 69- 70. Lionel further teaches that a carrier may comprise a pilot signal and one or more signals carrying messages i.e., “data signal[s]” (claim 1). Lionel 174. We conclude that these teachings of Lionel would have suggested to a person of ordinary skill in the art generating a spread spectrum signal in which the pilot signal is the sum of two binary wave forms and the data signal is the difference between the two binary wave forms. 8 Appeal 2016-004731 Application 12/559,874 Appellant contends Lionel does not teach or suggest distinct non-zero coefficients that indicate the relative power split between the two binary waveforms to be added and subtracted. App. Br. 5—6. We are not persuaded of error. First of all, one of ordinary skill in the art would understand the coefficients a, a, P, and b in the formulae in Lionel’s paragraphs 13, 19—20, 57, and 69 to represent the relative influence of the binary waveforms wi(t) and W2(t) on the resulting signals si(t) and S2(t), i.e., the relative power split between the two binary waveforms to be added and subtracted. For emphasis we note that Lionel’s Figure 3 illustrates coefficients a and b being implemented by amplifiers in combination stage 330. See Lionel 1 85. Appellant concedes that Lionel teaches non-zero coefficients. App. Br. 5. One of ordinary skill in the art would recognize that the use of different symbols for the coefficients indicate that they are distinct. See, e.g., App. Br. 6 (discussing Lionel 166). Even if Lionel teaches embodiments in which the coefficients used in generating the in-phase component and the anti-phase component are different {id.), it remains that Lionel also teaches embodiments in which the same coefficients are used for generating the in- phase and anti-phase components. See, e.g., Lionel 19—20. Further, although Lionel may teach embodiments comprising three signals (App. Br. 6 (discussing Lionel 69-73)), the claims, which are open-ended (note the use of the transitional term “comprising”), do not preclude generating a third signal. Appellant contends Lionel does not disclose the use of m=6 or that m could or should be an even number. App. Br. 8. We disagree. Accepting, arguendo and without deciding, Appellant’s contention that LioneFs preferred embodiments having “BOC (1,1) signals (as a first waveform) and 9 Appeal 2016-004731 Application 12/559,874 BOC (5, 1) and BOC (15, 1) signals (as a second waveform)” (id.), we do not agree that “Lionel actually teaches the use of an odd number for m and thus teaches away from m=6 as an embodiment” (id. ). Lionel teaches a range of m for the second waveform that is 2 to 24 times the m for the first waveform (i.e., 1). See Lionel 124. The end points of the range are even numbers, so Lionel does not teach away from using an even number for m. Furthermore, 6 clearly falls within the range of 2 to 24 taught by Lionel. Therefore, we agree with the Examiner that Lionel teaches an even number m for the second waveform and further teaches m=6. See Final Act. 9—10. Appellant contends Lionel does not teach that “said BOC(l,l) waveform and said BOC(6,l) waveform of said anti-phase linear combination are of opposite polarity at a beginning of each chip, [and] . . . said BOC(l,l) waveform and said BOC(6, 1) waveform of said in-phase linear combination are of same polarity at a beginning of each chip,” as recited in claim 1. App. Br. 8. The Examiner explains, and we agree, Lionel teaches that the two wave forms BOC(l,l) and BOC(m,l) have the same polarity at the beginning of each chip for the first signal Si(t) (see Lionel 119, Figs. 1 (items 18, 19), 3 (item 330)). Ans. 11—13. In other words, the first signal is expressible as a-BOC(l,l)+b-BOC(m, 1). Cf. Claim 1 (“said in-phase linear combination being expressible as a-BOC(l,l)+p-BOC(6,l)”). The Examiner further explains, and we agree, that substitution of the minus sign for a plus sign reverses the polarity of the second waveform, but not the first waveform so that the two wave forms BOC(l,l) and BOC (m,l) are of opposite polarity at the beginning of each chip for the second signal S2(t) (see Lionel 119, Figs. 1 (items 18, 19), 3 (item 330)). Ans. 11—13. In other words, the second signal is expressible as a-BOC(l,l)-b-BOC(m, 1). Cf 10 Appeal 2016-004731 Application 12/559,874 Claim 1 (“said anti-phase linear combination being expressible as a-BOC(l,l)-p-BOC(6,l)). Thus, contrary to Appellant’s contentions, we find the plus and minus signs taught by Lionel teach the relative polarities of the waveforms that make up the in-phase and anti-phase signals. See Reply Br. 3. Appellant contends as follows: Lionel does not suggest how to construct a system in which a broader spectral peak is or would be offset from a center frequency, as claimed, and does not provide any guidance as to which parameters must be varied or at what values they must be set in order to achieve this feature. App. Br. 7. We are not persuaded of error. The Examiner explains that although Lionel does not include a plot of the combination waveform, because Lionel teaches all of the recited algorithm for generating the waveform, one of ordinary skill in the art would understand that Lionel teaches producing a waveform substantially the same as that produced by the claimed invention. Final Act. 6. Appellant does not point to evidence to contradict this finding, nor does Appellant otherwise explain why this finding is factually wrong. Therefore, Appellant’s contention is little more than lawyer argument, unsupported by evidence from the record. Mere lawyer’s arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.”); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Finally, Appellant contends as follows: 11 Appeal 2016-004731 Application 12/559,874 Lionel includes a number of disclosures relating to particular embodiments that are discrete from one another and thus cannot be properly used in combination. For example, certain background techniques are disclosed in paragraphs [0004] and [0005] of Lionel while a number of quite distinct embodiments are set out in paragraphs [0011]—[0049] with discrete features that may not necessarily be used in combination with those of paragraphs [0004] and [0005]. App. Br. 7—8 (brackets in original). However, Appellant does not identify any particular impediments to combining the features of the various embodiments described in Lionel. Therefore this contention is also unsupported lawyer argument and speculation and is, for this reason, unpersuasive of error. Geisler, 116 F.3d at 1470; De Blauwe, 736 F.2d at 705. Appellant has not persuaded us of error in the rejection of claim 1 over Lionel under § 103(a). Accordingly, we sustain the rejection of claim 1 and claims 2, 3, 8—10, 15—18, 21, and 22, which are not separately argued with particularity. DECISION The rejection of each of the appealed claims is sustained on at least one of the grounds specified in the rejection appealed from. Therefore, the decision of the Examiner to reject claims 1—3, 8—10, 15—18, 21, and 22 is affirmed. 12 Appeal 2016-004731 Application 12/559,874 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). See 37 C.F.R. §§ 41.50(f), 41.52(b) (2014). AFFIRMED 13 Copy with citationCopy as parenthetical citation