Ex Parte Jacobsen

Board of Patent Appeals and Interferences

Mar 11, 2005

09855132 (B.P.A.I. Mar. 11, 2005)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________ _____
Ex parte ERIC A. JACOBSEN
_____________
Appeal No. 2005-0305
Application No. 09/855,132
______________
ON BRIEF
_______________
Before THOMAS, GROSS, and BARRY, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant has appealed to the Board from the examiner’s
final rejection of claims 1 through 30.
Representative claim 1 is reproduced below:
1. A method comprising:
basing a discrete frequency transformation on the
number of subcarriers in a predetermined set of subcarriers,
one or more subcarriers of the set assigned to modulate data
and the remaining subcarriers of the set not assigned to
modulate the data;
Appeal No. 2005-0305
Application No. 09/855,132
1The bottom of page 2 of the answer indicates the examiner
has withdrawn the rejection of claims 9, 19 and 29 under
35 U.S.C. § 102(e).
2
performing the discrete frequency transformation on the
data to modulate the data; and
excluding from the transformation mathematical
operations associated with the subcarriers not assigned to
modulate the data.
The following references are relied on by the examiner:
van Nee 6,175,550 Jan. 16, 2001
Böhnke 6,535,501 Mar. 18, 2003
(filed Nov. 5, 1998)
Claims 1 through 30 stand rejected under the second
paragraph of 35 U.S.C. § 112. The basis of this rejection is the
examiner’s view that the limitation “discrete frequency
transformation” is unclear because it is not described in the
specification or well known in the art.
Claims 1 through 8, 10 through 18, 20 through 28 and 30
stand rejected over prior art. As to claims 1 through 7, 10
through 17, 20 through 27 and 30, the examiner has rejected these
claims under 35 U.S.C. § 102(e) as being anticipated by van Nee.1
A separately stated rejection of dependent claims 8, 18 and 28
under 35 U.S.C. § 103 relies upon van Nee in view of Böhnke.
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Rather than repeat the positions of the appellant and the
examiner, reference is made to the brief and reply brief for
appellant’s positions, and to the answer for the examiner’s
positions.
OPINION
Turning first to the rejection of claims 1 through 30 under
the second paragraph of 35 U.S.C. § 112, we do not agree with the
examiner’s assertions that the feature of a “discrete frequency
transformation” in the claims on appeal is indefinite or
otherwise unclear since we do not agree with the examiner’s basic
view that the quoted term is not described in the specification
as filed.
The initial portion of page 1 of the specification as filed
recognizes that Orthogonal Frequency Division Multiplexing (OFDM)
signals utilize prior art Fast Fourier Transforms (FFT) and an
Inverse FFT (IFFT). Specification page 3 notes at lines 21 and
22 that the “encoder 12 [in figure 1] provides the encoded
data (via communication lines 13) to an Inverse Discrete
Fourier Transform (IDFT) engine 14 of the transmitter 10.”
Specification, page 4, line 17 through specification, page 5,
line 17, teaches that the present IDFT engine 14 differs from the
prior art IFFT in that the IDFT only performs mathematical
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operations that are associated with the assigned subcarriers and
does not perform such mathematical operations that are associated
with unassigned subcarriers. Moreover, appellant’s argued
teachings at specification, page 9, lines 19 through 25,
essentially define DFT and IDFT as respectively Discrete
Frequency Transformations and Inverse Discrete Frequency
Transformations consistent with the above noted teachings which
modify well known FFT and IFFT transforms of the prior art.
It is thus apparent to us that the disclosure as filed
clearly is not indefinite as argued by the examiner and is clear
to the artisan since it builds upon what is known in the prior
art. That a “discrete frequency transformation” may refer either
to a DFT or an IDFT does not render the claims indefinite for
reciting Discrete Frequency Transformations in a general sense
by the mere use of the alternative since the artisan clearly can
reasonably determine the metes and bounds (the limit being two
choices) of the nature of the claimed subject matter based upon
the disclosure and the artisan’s own understanding of the prior
art. Therefore, the decision of the examiner rejecting claims
1 through 30 under 35 U.S.C. § 112, second paragraph, is
reversed.
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As to the remaining rejections of substantially all of the
claims on appeal under 35 U.S.C. § 102 and 35 U.S.C. § 103, we
sustain the rejections essentially for the reasons set forth by
the examiner in the answer as embellished upon here. In
accordance with appellant’s characterization of the issues at the
bottom of page 12 of the principal brief on appeal and the
grouping of the claims at page 13 of this brief, the nature of
the arguments actually made with respect to these art rejections
beginning at the bottom of page 15 of the principal brief on
appeal presents arguments only as to the subject matter of
independent claims 1, 11 and 21 on appeal rejected under
35 U.S.C. § 102. In so doing, appellant has presented no
arguments with respect to the rejection under 35 U.S.C. § 103 of
dependent claims 8, 18, and 28, preferring that patentability
issues regarding these claims be determined on the basis of our
findings with respect to the rejection of their respective
independent claims 1, 11 and 21 on appeal.
As noted at the bottom of page 7 of the answer, the examiner
correctly characterizes that appellant presents similar arguments
with respect to each independent claim 1, 11 and 21 on appeal at
respective pages 16, 19 and 20 of the brief by arguing “van Nee
fails to teach the exclusion of mathematical operations that are
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associated with subcarriers that are not assigned to modulate
data.” We do not agree with appellant’s arguments from this
quoted portion of the brief nor do we agree with appellant’s
additional urging at the bottom of page 16 of the brief that the
exclusion and mathematical operation is not implicit from the
language that states that an X-point IFFT is being performed
rather than N-point FFT according to the teachings of van Nee.
The scalablity of the OFDM system in van Nee is emphasized
in the abstract, summary of the invention, throughout the
disclosure as well as summarized again at the last column of this
patent. Included within the scalability teachings is the ability
of the control circuitry 15 in representative figure 1 for the
transmitter of van Nee’s device to scale the number of carriers.
The examiner’s arguments beginning at page 7 of the answer
characterize these scalability teachings as the ability to “scale
down” the number of carriers and thereby exclude carriers to
reduce implementation of the complexity of the system.
The summary of the invention contains two key indicators of
the substance of the subsequent detailed disclosure. The first
teaching in the paragraph bridging columns 1 and 2 of this
reference teaches that “a coded OFDM modulation system can be
designed with an upper limit on the number of carriers and a
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variable system duration. The control circuitry can dynamically
scale the number of carriers below the upper limit on the number
of carriers.” Column 1, lines 63 through 67. The second portion
of the summary at column 2, lines 14 through 17, teaches “the
mobile units can have lower data rates than the base stations by
allocating only a fraction of the total number of carriers to
each mobile, while the base stations transmit at all carriers
simultaneously.” This latter teaching is with respect to the
operability of the system in figure 5.
The key features of representative independent claim 1 on
appeal is that the discrete frequency transformation is only
applied to the number of subcarriers of a predetermined set of
carriers, where the discrete frequency transformation only occurs
for those subcarriers that are to modulate the actual data, with
the additional requirement that any remaining subcarriers not
assigned to modulate the data are excluded from the mathematical
transformation operations.
These features are implicit within the teachings beginning
at column 1 of van Nee. It is clear that OFDM operations occur
with respect to N orthogonal carriers as known in the prior art
as discussed at column 1, lines 14 through 16. The initial lines
of column 3 of van Nee also indicate that for purposes of the
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ensuing discussion throughout the patent, the number of carriers
considered to be a maximum is also the same number (N). The
detailed discussion of how the control circuitry 15 in figure 1
scales the number of carriers begins at column 5, line 58. The
discussion at lines 60 through 62 teaches the control circuitry
15 scales the number of carriers by transmitting a subset of the
maximum number of carriers designed for the particular OFDM
system, the emphasis being upon the use of the words
transmitting and subset. This is also discussed at column 6,
lines 10 through 18. The example given at lines 12 through 17 is
significant when it states that “the N-points IFFT 16 can be
dynamically reduced to a X-points IFFT 16 where X < N. In this
particular example, the IFFT 16 is designed to handle the end
carriers as the maximum number of carriers and dynamically scaled
to less than N carriers by performing an X-point IFFT 16.”
It is thus clear to the artisan and to us that of the
maximum number of N usable subcarriers in the “set of
subcarriers” as set forth in claim 1 on appeal, the subset of
X subcarriers is actually utilized for performing X-point Inverse
Fast Fourier Transform mathematical operations in the same manner
as set forth in claim 1 on appeal. It is thus clear as well from
the showing in figure 2 and the statement at column 6, lines 55
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through 57, that “[d]ecreasing the number of carriers N will
similarly lead to decreasing the width of the transmitted OFDM
power spectrum.” The discussion of figure 5, column 8, lines 19
through 27, makes it clear as well that selectively different
remote stations 74 may “send data on respectively different
numbers of carriers at the same time.” The discussion beginning
at line 41 of column 8 also indicates that transmitting
operations of the subsets of carriers may be asymmetric, with the
emphasis again on the transmittability indicating only that
certain ones of the subcarriers are actually used for the
transformation operations. Again, the discussion in the
paragraph at the beginning of column 9, line 24, indicates that
only a certain variable number of carriers is actually “used” for
transmitting operations.
We therefore do not agree with appellant’s arguments
presented in the brief that van Nee does not teach the exclusion
of mathematical operations that are associated with subcarriers
that are not assigned to modulate data. We also don’t agree with
the related argument that the exclusion of mathematical
operations is not implicit from the language of the above-noted
teachings in van Nee. It is unfortunate that the examiner has
chosen to characterize the exclusion feature of the claims on
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appeal as being inherent in van Nee’s system since it is clear to
us from the fact that the reference plainly teaches that only
certain subcarriers X of the maximum number available in the set
N are actually used for the transmitting operations in the
mathematical transformation operations. The teaching of the
exclusion is clearly properly to be inferred by the reader-
artisan within van Nee’s teachings rather than an inherent
part of van Nee’s systems. On the other hand, we recognize
appellant’s argument at page 16 of the brief that van Nee does
not teach explicitly the mathematical exclusion of the type set
forth at the end of representative independent claim 1 on appeal.
The examiner’s remarks in the paragraph bridging pages
7 and 8 of the answer clearly implicitly recognize the teaching
value of van Nee where the examiner states in the examiner’s own
words that “[s]caling down the number of carriers clearly means
selecting only a certain number of carriers to use in the
modulation process; and scaling down unambiguously means that
non-selected carriers are not going to be included in the
modulation process.”
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We are equally unpersuaded by appellant’s arguments
presented in the reply brief at pages 2 and 3. The above noted
teachings clearly traverse appellant’s arguments here because it
is clear to the reader-artisan that the X-point IFFT operations
in van Nee are based on N subcarriers as the maximum number of
the set available from which a subset of X is chosen. As
emphasized in our earlier remarks, the claimed “set of
subcarriers” is not limited to X, but is in fact plainly taught
to be N from which a subset X is dynamically scalably used.
In view of the foregoing, we have reversed the examiner’s
rejection of claims 1 through 30 under the second paragraph of
35 U.S.C. § 112. On the other hand, we have sustained the
selective rejections of claims 1 through 8, 10 through 18, 20
through 28 and 30 under 35 U.S.C. § 102 and 35 U.S.C. § 103.
Therefore, the decision of the examiner is affirmed-in-part.
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART

JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ANITA PELLMAN GROSS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
JDT:hh
Appeal No. 2005-0305
Application No. 09/855,132
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TIMOTHY N. TROP
TROP, PRUNER & HU, P.C.
STE. 100
8554 KATY FWY.
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