Ex Parte Huo

Patent Trial and Appeal Board

Jan 30, 2015

11150634 (P.T.A.B. Jan. 30, 2015)

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.
11/150,634 06/10/2005 David Di Huo LUCW:0018/Huo 13 5044
48671 7590 01/30/2015
FLETCHER YODER (LUCENT)
P.O. BOX 692289
HOUSTON, TX 77069
EXAMINER
CHUNG, HOON J
ART UNIT PAPER NUMBER
2474
MAIL DATE DELIVERY MODE
01/30/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DAVID DI HUO
____________________

Appeal 2012-010509
Application 11/150,634
Technology Center 2400
____________________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF THE CASE

Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–3, 6–15, and 18–21. Claims 4, 5, 16, and 17 contain allowable
subject matter. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
A. INVENTION
According to Appellant, the invention relates to wireless
communications (Spec. 2, ll. 7–8).
B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A method comprising:
transmitting from a transmitter a first orthogonal frequency division
multiplexed signal with a first pilot symbol allocation;
receiving at the transmitter a metric indicative of quality of a
transmitted signal;
generating at the transmitter a second pilot symbol allocation, wherein
the second pilot symbol allocation comprises pilot symbols that vary in
number in correspondence with a value of the metric; and
transmitting from the transmitter a second orthogonal frequency
division multiplexed signal with the second pilot symbol allocation.
C. REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Abe US 2005/0094552 A1 May 5, 2005
Kleider US 6,487,252 B1 Nov. 26, 2002
Nishio WO2005/015797 Feb. 17, 2005
Jwa US 2005/0073948 A1 Apr. 7, 2005
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Sibecas US 2004/0128605 A1 Jul. 1, 2004

Claims 7–12 stand rejected under 35 U.S.C. § 112, 2nd paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which Appellant regards as the invention.
Claims 1–3, 6–8, and 11 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Abe.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Abe and Kleider.
Claims 13–15, 18, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Abe and Nishio.
Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Abe and Jwa.
Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Abe and Sibecas.
II. ISSUE
The principal issue before us is whether the Examiner erred in finding
that Abe teaches second “pilot symbol allocation” that “comprises pilot
symbols that vary in number in correspondence with a value of the metric,”
as recited in claim 1 (emphases added).
III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Abe
Abe discloses a frame generator having a pilot symbol number
determiner to change the number of the pilot symbols depending on the
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value of received signal quality ([0052]), wherein Figure 16 of Abe is
reproduced below:

Figure 16 discloses a corresponding table between the value of
received signal quality and number of pilot symbols, wherein a pilot symbol
number determiner determines the number of pilot symbols using the table
([0056]).
IV. ANALYSIS
35 U.S.C. § 112, 2nd
The Examiner rejects claims 7–12 under 35 U.S.C. § 112, second
paragraph, as “being indefinite” (Ans. 5). In particular, the Examiner finds
that “the term ‘hardware module’ is not defined in the specification as a
particular structure” and “is not known by one skilled in the art as denoting
the type of structural device” (Ans. 6). The Examiner states “[t]he
specification must explicitly disclose the algorithm for performing the
claimed function” (Ans. 7).
However, Appellant contends “[t]he essential inquiry pertaining to the
definiteness requirement is whether the claims set out and circumscribe a
particular subject matter with a reasonable degree of clarity and
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particularity” (App. Br. 6). According to Appellant, “a claim is not to be
presumed indefinite merely because the claim includes a broad claim” (App.
Br. 7). After reviewing the record on appeal, we agree with Appellant.
We disagree with the Examiner’s conclusion the claim is indefinite
based on the finding it supposedly was not known by one skilled in the art
that “hardware module” denotes “the type of structural device” (Ans. 6), or
that “[t]he specification must explicitly disclose the algorithm for
performing the claimed function” (Ans. 7). The test for definiteness under
35 U.S.C. § 112, second paragraph, is whether “those skilled in the art
would understand what is claimed.” Orthokinetics, Inc., v. Safety Travel
Chairs, 806 F.2d 1565, 1576 (Fed. Cir. 1986)(citations omitted).
Regarding the contested “hardware module,” we agree with Appellant
that claims 7–12 do reasonably apprise those skilled in the art of their scope.
Therefore, we are persuaded the Examiner erred in rejecting claims 7–12
under 35 U.S.C. § 112, second paragraph.1

1 In the event of further prosecution, we leave it to the Examiner to consider
whether the claims should instead be rejected under 35 U.S.C. § 35 U.S.C.
§112, first paragraph, for lack of enablement. In particular, we leave it to
the Examiner to determine whether the claimed “hardware module” is
described in the Specification merely in terms of the function it is intended
to perform, i.e., whether the supporting portions of the Specification pointed
to by Appellant disclose any specific algorithm that is implemented on a
general purpose computer (hardware module) to enable the recited functions.
Thus, the issue for future consideration by the Examiner is whether
Appellant’s claimed “hardware module” is a definite structure capable of
performing the recited functions, or whether it depends on software to
perform the recited functions. If the “hardware module” element is not a
structure capable of performing the recited functions, and if it is not a
“means” to which § 112, sixth paragraph is applicable, then it is simply an
element defined solely by the function(s) to be performed (i.e., a purely

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35 U.S.C. § 102
As for representative claim 1, Appellant contends “the number of pilot
symbols generated in Abe in response to a received signal quality value of 1,
2, or 3 is a constant number,” and thus “Abe cannot be read as generating
pilot symbols that vary in number in correspondence with the value of the
metric” (App. Br. 10). Although Appellant concedes, “Abe may arguably
disclose ‘changing the number pilot symbols . . . based on the value of
received signal quality’,” according to Appellant, claim 1 requires “the
number of pilot symbols generated must vary in correspondence with the
value of the metric” (App. Br. 11).
However, the Examiner finds Abe discloses “transmitter 10 changing
the number of pilot symbols (i.e., second pilot symbol allocation) based on
the value of received signal quality (i.e., value of the metric)” wherein “the
number of pilot symbols has a direct relationship to the value of recited
signal quality (Ans. 23). The Examiner points out “Appellant seems to be
arguing that each value of received signal quality should result in different
number of pilot symbols,” but such argued features “are not received in the
rejected claims(s)” (Ans. 24).
We agree with the Examiner’s initial factual findings, and find no
error with the Examiner’s finding of anticipation.
We give the claims their broadest reasonable interpretation consistent
with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997). However, while we interpret claims broadly but reasonably in light

functional element unlimited by any particular structure). As such, the claim
would be unpatentable under 35 U.S.C. § 112, first paragraph, for lack of an
enabling disclosure commensurate with the scope of the claim.
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of the Specification, we nonetheless must not import limitations from the
Specification into the claims. See Phillips v. AWH Corp., 415 F.3d 1303,
1316, 1323 (Fed. Cir. 2005) (en banc) (citations omitted).
Claim 1 merely requires that the pilot symbols “vary in number in
correspondence with a value of the metric.” Giving the claim its broadest
reasonable interpretation, we find the claim merely requires that the pilot
symbols vary in some way with the metric value. As the Examiner points
out, although “Appellant seems to be arguing that each value of received
signal quality should result in different number of pilot symbols,” but such
argument is not commensurate with the recited language of the claim,
wherein the claim does not require that “each” value should result in a
different pilot symbol (Ans. 24).
Abe discloses changing the number of the pilot symbols depending on
the value of received signal quality, wherein the number of pilot symbols is
determined using the table corresponding the value of received signal quality
with the number of pilot symbols (FF). As the Examiner finds, Abe
discloses “changing the number of pilot symbols (i.e., second pilot symbol
allocation) based on the value of received signal quality (i.e., value of the
metric)” wherein “the number of pilot symbols has a direct relationship to
the value of received signal quality (Ans. 23). That is, Abe discloses pilot
symbols that vary in number in correspondence with a value of the signal
quality (FF). Thus, we find no error with the Examiner’s finding Abe
discloses “pilot symbols that vary in number in correspondence with a value
of the metric” as recited in claim 1.
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Accordingly, we find no error in the Examiner’s rejection of
independent claim 1, claim 7 falling therewith (App. Br. 10), and claims 2,
3, 6, 8, and 11 depending respectively therefrom, over Abe.
35 U.S.C. § 103
As for claim 13, Appellant contends “there is no teaching in the
cited portions of Nishio of selecting a second pilot symbol allocation based
on a metric indicative of transmission errors,” wherein “the second pilot
symbol allocation comprises a symbol pattern selected from a set of more
than two symbol patterns,” while “Abe appear to already teach a system that
selects from two pilot symbol patterns” (App. Br. 13). However, the
Examiner rejects the claims as being obvious over the Abe in view of Nishio,
and the test for obviousness is not what each reference teaches, but what the
references would have suggested to one of ordinary skill in the art. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). That is, Appellant
cannot show nonobviousness by arguing what Nishio or Abe appear to
individually “teach.”
We agree with the Examiner’s ultimate conclusion that the claims
would have been obvious over the combined teachings. In particular, as
Appellant concedes, Abe discloses “a system that selects from two pilot
symbol patterns” (App. Br. 13). As the Examiner finds, although Abe “does
not explicitly disclose more than two symbol patterns,” Nishio discloses a
symbol pattern “selected from a stored set of more than two symbol
patterns” (Ans. 26).
Further, we agree with the Examiner’s conclusion that it would have
been obvious to one of ordinary skill in the art at the time the invention was
made to modify Abe as taught by Nishio to provide “determination of a pilot
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symbol arrangement best/optimal for changing channel environment”
(Ans. 26–27). That is, we find the Examiner has provided sufficient
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness (id.).
Appellant has presented no evidence that applying symbol patterns
selected from a stored set of symbol patterns as taught by Nishio instead of,
or in addition to Abe’s pilot symbol patterns was “uniquely challenging or
difficult for one of ordinary skill in the art.” Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007), nor has
Appellant’s presented evidence that this incorporation yielded more than
expected results. Instead, we find the skilled artisan would have found it
obvious to select pilot symbol patterns from a set of stored symbol patterns,
since the skilled artisan is “a person of ordinary creativity, not an
automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). The
skilled artisan would “be able to fit the teachings of multiple patents together
like pieces of a puzzle.” Id. at 421
Accordingly, we find no error in the Examiner’s rejection of claim 13
and claims 14, 15, 18, and 20 falling therewith (App. Br. 12) over Abe in
view of Nishio.
As for claims 12, 19, and 21, Appellant merely contends Kleider, Jwa
and Sibecas “appear to fail to overcome the deficiencies of Abe” (App. Br.
12 and 14). However, as discussed above, we find no deficiencies with
respect to Abe. Thus, we also affirm the rejections of claim 12 over Abe in
further view of Kleider, of claim 19 over Abe in further view of Jwa, and of
claim 21 over Abe in further view of Sibecas.
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V. CONCLUSION AND DECISION
We affirm the Examiner’s rejections of claims 1–3, 6–8, and 11 under
35 U.S.C. § 102(b) and of claims 9, 10, 12–15, and 18–21 under 35 U.S.C.
§103(a). However, we reverse the Examiner’s rejection of claims 7–12
under 112, 2nd paragraph.
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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