11419260 (P.T.A.B. Dec. 11, 2013)

Ex Parte Karabinis

Patent Trial and Appeal BoardDec 11, 2013

11419260 (P.T.A.B. Dec. 11, 2013)

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. 11/419,260 05/19/2006 Peter D. Karabinis 9301-79DV 9034 20792 7590 12/12/2013 MYERS BIGEL SIBLEY & SAJOVEC PO BOX 37428 RALEIGH, NC 27627 EXAMINER TRAN, PAUL P ART UNIT PAPER NUMBER 2647 MAIL DATE DELIVERY MODE 12/12/2013 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 PETER D. KARABINIS ____________________ Appeal 2011-007903 Application 11/419,260 Technology Center 2600 ____________________ Before RICHARD E. SCHAFER, JOHN G. NEW, and HUNG H. BUI, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge HUNG H. BUI. Concurrence Opinion filed by Administrative Patent Judge RICHARD E. SCHAFER. BUI, Administrative Patent Judge. DECISION ON APPEAL Appellant1 seeks our review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 1-7, 9-12, 14-19, 21-23, 25, 28, and 31- 50. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.2 1 The real party in interest is ATC Technologies, LLC. Appeal 2011-007903 Application 11/419,260 2 STATEMENT OF THE CASE Appellant’s Invention Appellant’s invention relates to utilizing an additional satellite frequency band for terrestrially receiving terrestrial communications from wireless terminals of a terrestrial wireless communication. See Spec. 3:14- 16. According to Appellant, wireless terminals are configured to transmit communications to a space-based component such as a satellite via a satellite frequency band. Base stations can be equipped with satellite frequency band receivers that can receive communications from the wireless terminals over the satellite frequency band. As a result, additional capacity and/or quality of service may be provided for terrestrial and/or satellite wireless communications systems. Id. at 3:18-26; FIG. 1 and Abstract. Claims on Appeal Claims 1, 10, 14, and 22 are the independent claims on appeal. Claim 1 is illustrative of Appellant’s invention, and is reproduced with disputed limitations emphasized below: 1. A base station for a wireless cellular communications system; the base station comprising: a transmitter that is configured to transmit communications directly to a given wireless terminal over a terrestrial cellular frequency band; and a receiver that is configured to receive communications directly from the given wireless terminal over a satellite cellular frequency band, to provide a direct bidirectional 2 Our decision refers to Appellant’s Appeal Brief filed October 5, 2010 (“App. Br.”); Reply Brief filed February 22, 2011 (“Reply Br.”); Examiner’s Answer mailed December 21, 2010 (“Ans.”); Final Office Action mailed May 24, 2010 (“Final Rej.”); and the original Specification filed May 19, 2006 (“Spec.”). Appeal 2011-007903 Application 11/419,260 3 communications link between the base station and the given wireless terminal using the terrestrial cellular frequency band as a downlink to the given wireless terminal and the satellite cellular frequency band as an uplink from the given wireless terminal, wherein the terrestrial cellular frequency band that is used as a downlink is lower in frequency than the satellite cellular frequency band that is used as an uplink. Evidence Considered Wiedeman et al. (Wiedeman) US 5,448,623 Sept. 5, 1995 Toya US 2002/0022452 A1 Feb. 21, 2002 Nybeck et al. (Nybeck) US 2002/0030629 A1 Mar. 14, 2002 Nascimbene US 2002/0173290 A1 Nov. 21, 2002 Robinett WO 02/091631 A1 Nov. 14, 2002 Examiner’s Rejections (1) Claims 1-7, 9-12, 14-19, 21-23, 25, 28, 31-32, 38-39, 41-42, and 48-49 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Nascimbene, Toya, and Nybeck. Ans. 3-11. (2) Claims 33, 40, 43, and 50 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Nascimbene, Toya, Nybeck, and Robinett. Ans. 11-12. (3) Claims 34-37 and 44-47 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Nascimbene, Toya, Nybeck, Robinett, and Wiedeman. Ans. 12-13. Issue on Appeal Based on Appellant’s arguments, the dispositive issue on appeal is whether the Examiner erred in rejecting claims 1-7, 9-12, 14-19, 21-23, 25, Appeal 2011-007903 Application 11/419,260 4 28, 31-32, 38-39, 41-42, and 48-49 under 35 U.S.C. § 103(a) as being unpatentable over Nascimbene, Toya, and Nybeck. In particular, the issue turns on whether the combination of Nascimbene, Toya, and Nybeck discloses or suggests: “a direct bidirectional communications link between the base station and the given wireless terminal using the terrestrial cellular frequency band as a downlink to the given wireless terminal and the satellite cellular frequency band as an uplink from the given wireless terminal [to the base station],” as recited in independent claims 1 and 14. App. Br. 5-15; Reply Br. 4-7 (emphasis in original); and “a base station . . . comprising a receiver that is configured to receive communications directly from a given wireless terminal over a satellite cellular frequency band at frequencies less than about 2.5 GHz” as recited in independent claim 10, and similarly recited in independent claim 22. App. Br. 15-20 (emphasis added). ANALYSIS §103 Rejection of Claims 1-7, 9-12, 14-19, 21-23, 25, 28, 31-32, 38-39, 41- 42, and 48-49 over Nascimbene, Toya, and Nybeck Independent claims 1 and 14 The Examiner finds Nascimbene discloses a wireless cellular communications system, shown in FIG. 1, including a base station (RBS) and a remote wireless terminal (RAT) for communications, via a terrestrial cellular frequency band. Ans. 3-4 (citing Nascimbene ¶ [0016], FIG. 1 and FIG. 2). Appeal 2011-007903 Application 11/419,260 5 FIG. 1 of Nascimbene is reproduced below. FIG. 1 shows a base station (RBS) 1 arranged for direct bi- communications (uplink and downlink) with a remote wireless terminal (RAT) 2, via a terrestrial cellular frequency band. As shown in FIG. 1, the base station (RBS) 1 of Nascimbene is configured to transmit as “downlink” to the remote wireless terminal (RAT) 2, via high terrestrial frequency bands (for example, above 20GHz), and to receive as “uplink” from the remote wireless terminal (RAT) 2, via low terrestrial frequency bands (for example, below 11 GHz). Ans. 4; also see Nascimbene ¶ [0011] and FIG. 2. The Examiner acknowledges that Nascimbene does not disclose communications, via satellite frequency bands. Id. The Examiner then finds Toya discloses an alternate base station configured to communicate with a remote wireless terminal, via satellite frequency bands (within the range of 1GHz – 10GHz). Id. (Citing Toya ¶¶ [0029]-[0030]; FIG. 1, repeater M; Appeal 2011-007903 Application 11/419,260 6 FIG. 3, items 24, 26.) The Examiner further finds Nybeck discloses the use of an integrated antenna assembly to support communications, via both terrestrial cellular and satellite frequency bands respectively. Id. at 5 (citing Nybeck ¶¶ [0005], [0017], [0018] and [0021]. Based on these disclosures, the Examiner concludes that “it would have been obvious . . . to combine Toya’s satellite receiver to Nascimbene’s hybrid frequency band to improve accessibility . . . to the subscribers of land mobile-satellite communication system.” Id. at 5. Appellant does not dispute the Examiner’s factual findings regarding Nascimbene, Toya, and Nybeck. Instead, Appellant contends that the combination of Nascimbene, Toya, and Nybeck does not disclose or suggest “a direct bidirectional communications link between the base station and the given wireless terminal using the terrestrial cellular frequency band as a downlink to the given wireless terminal and the satellite cellular frequency band as an uplink from the given wireless terminal,” as recited in independent claims 1 and 14. App. Br. 5-20; Reply Br. 4-7 (emphasis in original). In particular, Appellant argues there is no reason to modify Nascimbene: (1) to provide a mixing of terrestrial cellular and satellite cellular frequencies in a bidirectional link (App. Br. 8-9); (2) to operate in totally different frequency bands since modifying Nascimbene to operate in a wireless cellular communications system using terrestrial cellular frequencies and satellite cellular frequencies would render Nascimbene’s system unsatisfactory for its intended purpose of providing inexpensive wireless broadband access systems for “low market segments, like small offices and home offices (SOHO) and residential markets” (id. at 9); (3) to Appeal 2011-007903 Application 11/419,260 7 operate in a manner opposite that taught by Nascimbene (id. at 10-11); and (4) to solve a totally different problem (id. at 11). In addition, Appellant also argues that neither Toya nor Nybeck discloses the missing features of Nascimbene, i.e., “a direct bidirectional communications link between mobile repeater station M and the portable communication terminal P using a terrestrial cellular frequency band as a downlink to the portable communication terminal P and a satellite cellular frequency band as an uplink from the portable communication terminal P” (App. Br. 11-15). Appellant further argues that the Examiner has not articulated reasons with a rational underpinning to support the legal conclusion of obviousness (id. at 18-19). We find none of Appellant’s arguments persuasive. First, as correctly noted by the Examiner, all the cited references are directed to wireless cellular communications systems designed to support multi-band operation in different frequency ranges. Ans. 15. For example, a base station is a well-known component equipped with a transmitter and a receiver (i.e., transceiver) operable in different frequencies within a terrestrial cellular frequency band as disclosed by Nascimbene and/or a satellite frequency band as disclosed by Toya. Id. at 14. Thus, when the base station of Nascimbene is modified to further operate in a satellite frequency band as disclosed by Toya, the base station would be able to communicate, via the terrestrial cellular frequency band as a downlink to a given wireless terminal and the satellite cellular frequency band as an uplink from the given wireless terminal, as the Examiner found. Id. at 15 and 21 (emphasis added.) One skilled in the art is presumed to know how to make routine adaptations or Appeal 2011-007903 Application 11/419,260 8 modifications to employ a solution from one context to a related problem in another context. In re Etter, 756 F.2d 852, 859-60 (Fed. Cir. 1985) (en banc). As such, one skilled in the art, looking at Toya, would draw a reasonable inference that the base station could be configured to operate in both terrestrial cellular frequency bands and satellite frequency bands. In re Preda, 401 F.2d 825, 826 (CCPA 1968). Consequently, we find that one skilled in the art would have had the skill and knowledge to combine the terrestrial cellular and satellite cellular frequency bands, including a bidirectional communication link, via the terrestrial cellular frequency band as a downlink to a given wireless terminal and the satellite cellular frequency band as an uplink from the given wireless terminal, and to operate the base station for communications in different frequency bands. Second, economic reasons are rarely, if ever, indicia of non- obviousness. [T]he fact that the two disclosed apparatus would not be combined by businessmen for economic reasons is not the same as saying that it could not be done because skilled persons in the art felt that there was some technological incompatability that prevented this combination. Only the latter fact is telling on the issue of nonobviousness. Orthopedic Equipment Co., v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983). Moreover, the intended purpose of Nascimbene is not to provide an inexpensive wireless broadband access system for “low market segments, like small offices and home offices (SOHO) and residential markets,” as characterized by Appellant. App. Br. 9 (citing Nascimbene ¶ [0010]). Rather, the intended purpose of Nascimbene is to provide a terrestrial Appeal 2011-007903 Application 11/419,260 9 wireless broadband access system. See Nascimbene ¶¶ [0001] and [0010]. Consequently, modifying Nascimbene to operate, via both terrestrial cellular frequency bands and satellite frequency bands, would not render Nascimbene’s base station unsatisfactory for its intended purpose, as alleged by Appellant, but would rather enhance the intended purpose of Nascimbene, i.e., support greater accessibility of subscribers and wireless broadband access applications. As such, we also find Examiner’s reasons for the combination sufficient to support the legal conclusion of obviousness. Ans. 5. For the reasons set forth above, we sustain the Examiner’s obviousness rejection of Appellant’s independent claims 1 and 14. With respect to claims 2-7, 9, 15-19, 21, 25, 28, 31-36, and 41-46, Appellant presents no separate patentability arguments apart those presented for claims 1 and 14. For the same reasons discussed, we also sustain the Examiner’s obviousness rejections of claims 2-7, 9, 15-19, 21, 25, 28, 31-36, and 41-46. Independent claims 10 and 22 In contrast to independent claims 1 and 14, claims 10 and 22 are very broad. Claim 10, for example, simply recite a base station comprising: a receiver that is configured to receive communications directly from a given wireless terminal over a satellite cellular frequency band at frequencies less than about 2.5 GHz, the base station being free of a transmitter that is configured to transmit communications directly to the given wireless terminal over a satellite cellular frequency band at frequencies less than about 2.5 GHz. Claim 10 (emphasis added.) Appeal 2011-007903 Application 11/419,260 10 Appellant contends the cited references do not disclose or suggest: (1) a base station comprising a “receiver that is configured to receive communications directly from a given wireless terminal over a satellite cellular frequency band at frequencies less than about 2.5 GHz” (App. Br. 16) (emphasis added), and (2) a base station being free of a transmitter that is configured to transmit communications directly to the given wireless terminal over a satellite cellular frequency band at frequencies less than about 2.5 GHz (App. Br. 16-17; Reply Br. 6-7). We disagree. At the outset, we note that Appellant’s independent claims 10 and 22 do not exclude any “transmitter” that is configured to transmit communications over a satellite cellular frequency band at different frequencies that are not less than about 2.5 GHz, i.e., equal to or greater than 2.5 GHz. As correctly found by the Examiner, Toya discloses a base station equipped with a transceiver (i.e., transmitter and receiver) to communicate with a remote wireless terminal, via satellite frequency bands (within the range of 1GHz – 10GHz). Ans. 9 (citing Toya ¶¶ [0029]-[0030]; FIG. 1, repeater M; FIG. 3, items 24, 26). Toya’s disclosure of a transceiver operable, via satellite frequency bands within the range of 1GHz – 10GHz is inclusive of Appellant’s claimed “base station being free of a transmitter that is configured to transmit communications directly to the given wireless terminal over a satellite cellular frequency band at frequencies less than about 2.5 GHz.,” as recited in independent claims 10 and 22. Ans. 23. With respect to the “receiver” limitation of Appellant’s independent claims 10 and 22, we also concur with the Examiner’s finding regarding Toya. Contrary to Appellant’s contention, Toya’s disclosure of satellite Appeal 2011-007903 Application 11/419,260 11 frequency bands within the range of 1GHz – 10GHz is inclusive of Appellant’s claimed “frequencies less than about 2.5 GHz.” Because anticipation is the epitome of obviousness, a disclosure that anticipates under 35 U.S.C. § 102 also renders the claim unpatentable under 35 U.S.C. § 103. See In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974); In re Meyer, 599 F.2d 1026, 1031 (CCPA 1979); In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982). Therefore, for the reasons set forth above, we find that independent claims 10 and 22 are rendered obvious over the Examiner’s cited references including Toya. As such, we sustain the Examiner’s obviousness rejection of independent claims 10 and 22.3 With respect to dependent claims 11-12, 23, 37-40, and 47-50, Appellant presents no separate patentability arguments. For the same 3 We also note that negative limitations “free of a transmitter” and “refraining” are recited in Appellant’s original claims 10 and 22. These negative claim limitations are accorded patentable weight only if there is support in Appellant’s Specification, i.e., when Appellant’s Specification describes “a reason to exclude the relevant limitation.” See Santarus, Inc., v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012) (“Negative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation. Such written description support need not rise to the level of disclaimer. In fact, it is possible for the patentee to support both the inclusion and exclusion of the same material”). Here, we find Appellant’s Figure 2 and corresponding text provided by Appellant’s Specification as support for the disputed negative limitations at issue (App. Br. 17) only illustrate using a receiver to receive communications from a given wireless terminal, via a satellite frequency band. The cited section of Appellant’s Specification does not identify any “reason to exclude the relevant limitation.” Accordingly, there is no basis in the cited section of Appellant’s Specification for adding the negative limitations and, as such, no patentable weight should have been given to the negative limitations at issue. Appeal 2011-007903 Application 11/419,260 12 reasons discussed, we also sustain the Examiner’s obviousness rejection of claims 11-12, 23, 37-40, and 47-50. CONCLUSION On the record before us, we conclude that the Examiner has not erred in rejecting claims 1-7, 9-12, 14-19, 21-23, 25, 28, and 31-50 under 35 U.S.C. §103(a). DECISION As such, we AFFIRM the Examiner’s final rejection of claims 1-7, 9- 12, 14-19, 21-23, 25, 28, and 31-50. 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 cdc Appeal 2011-007903 Application 11/419,260 13 SCHAFER, Administrative Patent Judge, Concurrence. While I join in the majority opinion, in my view this case is much simpler than Appellant and the Examiner have made it. Nascimbene teaches the claimed base station except for the use of the generally specified uplink and downlink frequencies and the relationship between the two (the downlink or return link being a lower frequency than the uplink or forward link). Nascimbene also teaches a base station using different uplink and downlink frequencies --a lower terrestrial frequency for uplink and a higher terrestrial frequency for the down link. In my view, one having ordinary skill in the art, such as a communications engineer, would have recognized that any two known communication frequencies having adequate band separation could be used in Nascimbene's system. In the absence of a showing of criticality, unexpected results or some other secondary indicia, merely modifying Nascimbene's system to operate on other known communication frequencies would have been obvious.