Ex Parte Hudson

Board of Patent Appeals and Interferences

Jan 15, 2008

09688557 (B.P.A.I. Jan. 15, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN E. HUDSON
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Appeal 2006-2498
Application 09/688,557
Technology Center 2600
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Decided: January 15, 2008
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Before LANCE LEONARD BARRY, JEAN R. HOMERE, and JOHN A.
JEFFERY, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE
A Patent Examiner rejected claims 1-48. The Appellant appeals
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).

Appeal 2006-2498
Application 09/688,557

A. INVENTION
According to the Appellant, the bandwidth available for a
communications link between a communication terminal and a single base
station has limited the capacity of radio links of in-building cellular
communication systems. The Appellant's invention attempts to mitigate this
limitation by permitting the terminal to establish plural communications
links with plural base stations. The communications links distribute non-
identical content data in parallel. (Spec. 32.)

B. ILLUSTRATIVE CLAIMS
Claims 1 and 15, which further illustrate the invention, follow.
1. A wireless communications system comprising a terminal
capable of communicating with a plurality of base stations
using a respective plurality of simultaneous communications
links, a number of the plurality of simultaneous
communications links bearing content data, wherein the content
data borne by each of the number of the plurality of
simultaneous communications links are non-identical.

15. A communications terminal comprising a plurality of
modems coupled to an antenna arrangement, the antenna
arrangement supporting a plurality of simultaneous
communications links, a number of the plurality of
simultaneous communications links bearing content data,
wherein the content data born by each of the number of the
plurality of simultaneous communications links are non-
identical.1

1 "Where a claim sets forth a plurality of elements or steps, each element or
step of the claim should be separated by a line indentation." 37 C.F.R.
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C. REJECTIONS
Claims 1, 5-14, 17, 19-25, 27-33, 35-41, and 43-48 stand rejected
under 35 U.S.C. § 103(a) as obvious over U.S. Patent No. 5,793,744
("Kanerva ") and U.S. Patent No. 6,078,817 ("Rahman"). Claims 2 and 3
stand rejected under § 103(a) as obvious over Kanerva; Rahman; and U.S.
Patent Application Pub. No 200210036999 ("Bi"). Claims 4, 18, 26, 34, and
42 stand rejected under § 103(a) as obvious over Kanerva; Rahman; and
U.S. Patent No. 6,009,124 ("Smith"). Claim 15 stands rejected under
§ 103(a) as obvious over Kanerva and U.S. Patent No. 6,449,290
("Willars"). Claim 16 stands rejected under § 103(a) as obvious over
Kanerva; Willars; and Smith.

II. CLAIMS 15 AND 16
"Rather than reiterate the positions of parties in toto, we focus on the
issue therebetween." Ex parte Filatov, No. 2006-1160, 2007 WL 1317144,
at *2 (BPAI 2007). The Examiner makes the following findings.
Kanerva et al teaches a communications terminal coupled to an
antenna arrangement (Figure 6), the antenna arrangement
supporting a plurality of simultaneous communications links
(Column 3, Lines 5-8, 61-62; Column 5 Lines 18-24,
Column 6, Lines 10-12 and Figure 6), a number of the plurality
of simultaneous communications links bearing content data
(Column 3, Lines 46-47), wherein the content data born by each
§ 1.75(i)(2007). Here, although claims 1 and 15 set forth plural elements,
these elements are not separated by line indentation. (Br. 10-11.) Being
"basically a board of review," Ex parte Gambogi, 62 USPQ2d 1209, 1211
(BPAI 2001), however, we leave the pro forma issue to the Examiner.

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of the number of the plurality of simultaneous communications
links are non-identical (Column 3, Lines 5-8) . . . .
(Ans. 7-8.) Further finding that "Willars et al teaches a plurality of
modems (Figure 1; base station)," (id. 8), he concludes that "it would
have been obvious to a person of ordinary skill in the art to combine
the art of Kanerva et al with the teaching of Willars et al of using a
plurality of modems to facilitate communication (Column 2, Lines 6-
7)." (Id.) The Appellant argues, "Willars teaches the provision of a
plurality of modems in a base station, not a terminal as in the present
invention." (Amended Supp. App. Br. 2 8.) Therefore, the issue is
whether the combined teachings of the references would have
suggested a communications terminal that supports parallel
communications links bearing non-identical data, wherein the terminal
includes plural modems.

"Both anticipation under § 102 and obviousness under § 103 are two-
step inquiries. The first step in both analyses is a proper construction of the
claims . . . . The second step in the analyses requires a comparison of the
properly construed claim to the prior art." Medichem, S.A. v. Rolabo, S.L.,
353 F.3d 928, 933, (Fed.Cir. 2003) (internal citations omitted).

2 We rely on and refer to the Amended Supplemental Brief on Appeal, in
lieu of the original Supplemental Brief on Appeal and the original Brief on
Appeal, because the original Supplemental Brief on Appeal was defective,
and the Brief on Appeal was filed before the Examiner reopened
prosecution. We will not consider the latter two Briefs in deciding this
appeal.

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A. CLAIM CONSTRUCTION
"[T]he PTO gives claims their 'broadest reasonable interpretation.'"
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt,
211 F.3d 1367, 1372 (Fed. Cir. 2000)). "Moreover, limitations are not to be
read into the claims from the specification." In re Van Geuns, 988 F.2d
1181, 1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989)).

Here, claim 15 recites in pertinent part the following limitations:
"[a] communications terminal comprising a plurality of modems coupled to
an antenna arrangement, the antenna arrangement supporting a plurality of
simultaneous communications links . . . wherein the content data born by
each of the number of the plurality of simultaneous communications links
are non-identical." Giving the claim the broadest, reasonable construction,
the limitations require a communications terminal that supports parallel
communications links bearing non-identical data, wherein the terminal
includes plural modems.

B. OBVIOUSNESS ANALYSIS
"The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results."
KSR Int'l v. Teleflex Inc., 127 S.Ct. 1727, 1739 (2007).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. 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
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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.
Id. at 1740. "[I]t can be important to identify a reason that would have
prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does." Id. at 1741. A reason
to combine teachings from the prior art "may be found in explicit or implicit
teachings within the references themselves, from the ordinary knowledge of
those skilled in the art, or from the nature of the problem to be solved."
WMS Gaming Inc. v. Int'l Game Tech., 184 F.3d 1339, 1357 (Fed. Cir. 1999)
(citing In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998)). "The test for an
implicit showing is what the combined teachings, knowledge of one of
ordinary skill in the art, and the nature of the problem to be solved as a
whole would have suggested to those of ordinary skill in the art." In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (citing In re Kotzab, 217 F.3d
1365, 1370 (Fed. Cir 2000)).

Here, Kanerva "allocate[s] parallel traffic channels to a single user so
as to provide a high-speed data connection." (Col. 10, ll. 41-43.) "High-
speed data service[s] thus obtained are referred to as HSCSD (High Speed
Circuit Switched Data) services." (Col. 3, ll. 15-16.) More specifically, the
aforementioned "parallel traffic channels (subchannels) are used on the radio
path for one high-speed data connection. [A] high-speed data signal is
distributed to the parallel subchannels at the transmitting end for the
transmission over the radio path, and then combined at the receiving end."
(Id. ll. 5-8.) It is uncontested that the reference's parallel traffic channels/
subchannels bear non-identical data. "In this manner, it is possible to
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provide data transfer services which, depending on the number of allocated
traffic channels, have a transfer rate up to 8 times the conventional data
rate." (Id. ll. 8-11.)

Kanerva's Figure 6 shows that such parallel traffic channels/
subchannels (Ch1-Chn) are located between a mobile station (MS) and a
base station (BTS). We find that the claimed "communications terminal"
reads on the reference's base station. Kanerva also explains that its
"invention is universally applicable on various kinds of multiple access
methods and traffic channels" (col. 10, ll. 34-36) such as code division
multiple access (CDMA) systems. (Col. 10, l. 36 – col. 11, l. 61.)

Willars also "relates to . . . a CDMA-system . . . ." (Col. 1, ll. 5-8.)
More specifically, the secondary reference explains that "[i]n a CDMA
cellular communications system, each cell has several modulator-
demodulator units or spread spectrum modems." (Col. 2, ll. 1-3.) The
Appellant admits, "Willars teaches the provision of a plurality of modems in
a base station . . . ." (Amended Supp. App. Br. 8.) Willars also explains that
"[e]ach [such] modem at the base station BS can be assigned to a mobile
station as needed to facilitate communications with the assigned mobile
station MS." (Col. 2, ll. 5-8.)

Because Kanerva teaches a base station that supports parallel
communications links bearing non-identical data and is applicable to a
CDMA system, and Willars teaches that base stations in CDMA systems
include plural modems to facilitate communications with assigned mobile
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stations, we are persuaded that the combined teachings of the references
would have suggested a communications terminal that supports parallel
communications links bearing non-identical data, wherein the terminal
includes plural modems. Therefore, we affirm the rejections of claim 15.

Rather than arguing the rejection of claim 16, the Appellant relies on
the aforementioned argument. (Amended Supp. App. Br. 9.) Unpersuaded
by this argument, we also affirm the rejections of the latter claim.

III. CLAIMS 1-14 AND 17-48
"Rather than reiterate the positions of parties in toto, we focus on an
issue therebetween." Ex parte Kuruoglu, No. 2007-0666, 2007 WL
2745820, at *2 (BPAI 2007). The Examiner admits, "Kanerva . . . does not
teach communicating with a plurality of base stations." (Ans. 3.) Finding
that "Rahman teaches communicating with a plurality of base stations
(Column 4, Lines 61-64 and Figure 3)," (id.), however, he concludes that "it
would have been obvious to a person of ordinary skill in the art to combine
the art of Kanerva et al with the teaching of Rahman of communicating with
a plurality of base stations to provide increased capacity (Column 3,
Lines 14-15)." (Id. 4.) The Appellant argues that "a person of ordinary skill
who did combine the teachings of Kanerva and Rahman would arrive at a
system which does not correspond to that described in claim 1 of the present
application." (Amended Supp. App. Br. 8.) Therefore, the issue is whether
combined teachings of the references would have suggested parallel
communication links between a terminal and plural base stations, wherein
the links bear non-identical data.
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A. CLAIM CONSTRUCTION
"The Patent and Trademark Office (PTO) must consider all claim
limitations when determining patentability of an invention over the prior
art." In re Lowry, 32 F.3d 1579, 1582 (Fed. Cir. 1994) (citing In re Gulack,
703 F.2d 1381, 1385 (Fed. Cir. 1983)). Here, independent claim 1 recites in
pertinent part the following limitations:
a terminal capable of communicating with a plurality of base
stations using a respective plurality of simultaneous
communications links, a number of the plurality of
simultaneous communications links bearing content data,
wherein the content data borne by each of the number of the
plurality of simultaneous communications links are non-
identical.
Independent claims 17, 25, 33, and 41 include similar limitations.
Considering all the limitations, the independent claims require parallel
communication links between a terminal and plural base stations, wherein
the links bear non-identical data.

B. OBVIOUSNESS ANALYSIS
"In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness." In re
Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993) (citing In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992)). "'A prima facie case of obviousness is
established when the teachings from the prior art itself would appear to have
suggested the claimed subject matter to a person of ordinary skill in the art.'"
In re Bell, 991 F.2d 781, 783 (Fed. Cir. 1993) (quoting In re Rinehart, 531
F.2d 1048, 1051 (CCPA 1976)).
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Here, as aforementioned, the Examiner admits, "Kanerva . . . does not
teach communicating with a plurality of base stations." (Ans. 3.) To the
contrary, Figure 6 of the reference shows that the parallel traffic
channels/subchannels (Ch1-Chn) are located between the single mobile
station (MS) and the single base station (BTS). In contrast to claim 15,
because claims 1, 17, 25, 33, and 41 recite both "base stations" and "a
terminal," we cannot read the latter limitation on Kanerva 's base station for
these claims. Instead, we read one of the claims' "base stations" on
Kanerva's base station and the claims' "terminal" on the reference's single
mobile station.

For its part, Rahman explains that "[i]n addition to serving an
increased number of users, the CDMA system uses a technique known as
'macro-diversity' to improve the quality of the radio reception in the radio
telecommunications network." (Col. 1, ll. 40-43.) "The macro-diversity
mode involves the use of two or more simultaneous links from two or more
cells or base stations to a single mobile station in order to improve the
quality or performance of the reception of the radio signal." (Id. ll. 43-47.)
We find that the desirability of improving quality or performance would
have prompted a person of ordinary skill in the relevant field to combine
teachings of the references, resulting in parallel communication links
between a terminal and plural base stations.

We are unpersuaded, however, that the links of such a combination
would have borne non-identical data. To the contrary, we agree with the
Appellant that "the macro diversity mode described in Rahman involves the
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same content data being sent over each of the links in order that the sum of
the received signals can be combined to improve the reliability of the
demodulation process (Rahman, column 1 lines 40-55)." (Amended Supp.
App. Br. 8.) Furthermore, the secondary reference explains that it "utilizes
[the] macro-diversity technique to provide duplicate or triplicate channel
elements to each operating mobile station." (Col. 3, ll. 19-21.)

Because Rahman's macro-diversity mode employs duplicate or
triplicate channels, we find that the combined teachings of that reference and
Kanerva would have suggested to those of ordinary skill in the art parallel
communication links between a terminal and plural base stations, wherein
the links bear identical data. Therefore, we reverse the rejection of claims 1,
17, 25, 33, and 41 and of claims 5-14, 19-24, 27-32, 35-40, and 43-48,
which depend therefrom.

The Examiner does not allege, let alone show, that the addition of Bi
or Smith cures the aforementioned deficiency of Kanerva and Rahman.
Absent a teaching or suggestion of parallel communication links between
a terminal and plural base stations, wherein the links bear non-identical data,
we are unpersuaded of a prima facie case of obviousness. Therefore, we
also reverse the rejection of claims 2-4, 18, 26, 34, and 42.

IV. ORDER
In summary, the rejections of claims 1-14 and 17-18 under § 103(a)
are reversed. The rejections of claims 15 and 16 under § 103(a) are
affirmed.
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"Any arguments or authorities not included in the brief or a reply brief
filed pursuant to [37 C.F.R.] § 41.41 will be refused consideration by the
Board, unless good cause is shown." 37 C.F.R. § 41.37(c)(1)(vii).
Accordingly, our affirmance is based only on the arguments made in the
brief(s). Any arguments or authorities omitted therefrom are neither before
us nor at issue but are considered waived. Cf. In re Watts, 354 F.3d 1362,
1367 (Fed. Cir. 2004) ("[I]t is important that the applicant challenging a
decision not be permitted to raise arguments on appeal that were not
presented to the Board.")

No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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