Ex Parte Kim et al

Board of Patent Appeals and Interferences

Jan 7, 2010

10079107 (B.P.A.I. Jan. 7, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YOUNGLOK KIM and ARIELA ZEIRA
____________

Appeal 2009-006704
Application 10/079,107
Technology Center 2400
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Decided: January 7, 2010
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Before JOSEPH F. RUGGIERO, KARL D. EASTHOM, and ELENI
MANTIS MERCADER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-006704
Application 10/079,107

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-8 and 13-16, which are all of the pending claims. An oral
hearing was conducted on this appeal on November 3, 2009.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Rather than reiterate the arguments of Appellants and the Examiner,
reference is made to the Brief (filed February 19, 2008) and the Answer
(dated June 19, 2008) for the respective details. Only those arguments
actually made by Appellants have been considered in this decision.
Arguments which Appellants could have made but chose not to make in the
Brief have not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).

Appellants’ Invention
Appellants’ invention relates to a system and method for use in a code
division multiple access (CDMA) communication system wherein the base
station has a transmitter which includes a first and second antenna for
transmitting a data field of symbols. A first spreading device spreads the
first data field using a first channelization code and a second spreading
device spreads the second data field using a second channelization code,

1 During the same hearing session on November 3, 2009, oral hearings were
conducted on related Appeal Nos. 2009-006389 (S.N. 10/071,917), 2009-
0006410 (S.N. 10/077,076), 2009-006660 (S.N. 10/077,565), 2009-006837
(S.N. 09/999,287), 2009-006365 (S.N.10/071,903), and 2009-007629 (S.N.
10/107,465).
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each channelization code being uniquely associated with one of the first and
second antennas. See Spec. ¶ [0013].
Claims 5 and 15 are illustrative of the invention and read as follows:

5. A transmitter for transmitting a data field of symbols comprising:
a first and second antenna for transmitting said data field of symbols,
wherein said data field includes a first data field;
an encoder for encoding said data field producing a second data field
having complex conjugates of the symbols of said data field; and
a first channelization device for receiving the data field including the
first data field and spreading said first data field, wherein said first
channelization device spreads said first data field using a first channelization
code that is uniquely associated with the first antenna; and
a second channelization device for receiving the second data field
from the encoder and spreading said second data field using a second
channelization code, the second channelization code being uniquely
associated with the second antenna.

15. A transmitter for transmitting a data field of symbols comprising:
a first and second antenna for transmitting said data field of symbols;
and
a first channelization device for spreading said data field, wherein said
first channelization device spreads said data field using a first channelization
code that is uniquely associated with the first antenna, producing a first
spread data field; and
a second channelization device for spreading said data field using a
second channelization code that is uniquely associated with the second
antenna, producing a second spread data field.

The Examiner’s Rejections

The Examiner’s Answer cites the following prior art references:
Dabak (Dabak ‘473) US 6,594,473 B1 Jul. 15, 2003
(filed May 24, 2000)

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Akiba US 6,721,300 B1 Apr. 13, 2004
(filed Aug. 28, 2000)

Dabak (Dabak ‘260) US 6,775,260 B1 Aug. 10, 2004
(filed Feb. 25, 2000)

Ylitalo US 6,788,661 B1 Sep. 7, 2004
(filed Nov. 12, 1999)

1. The Examiner rejected claims 1-4, 13, and 14 on the ground of
non-statutory obviousness type double patenting over claims 1-18 of both
copending US Application Serial Nos. 10/071,903 and 10/071,917.
2. The Examiner rejected claims 5-8 and 15-16 on the ground of
non-statutory obviousness type double patenting over claims 1-12 of
copending US Application Serial No. 10/077,076.
3. The Examiner rejected claims 5-8 and 15-16 on the ground of
non-statutory obviousness type double patenting over claims 1-12 of
copending US Application Serial No. 10/077,565.
4. The Examiner rejected claims 5-8 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
5. The Examiner rejected claims 13 and 15 under 35 U.S.C.
§ 102(e) as being anticipated by Dabak ‘473.
6. The Examiner rejected claims 14 and 16 under 35 U.S.C.
§ 103(a) as being unpatentable over Dabak ‘473 in view of Akiba.
7. The Examiner rejected claims 1 and 5 under 35 U.S.C. § 103(a)
as being unpatentable over Dabak ‘260 in view of Ylitalo.
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8. The Examiner rejected claims 2-4 and 6-8 under 35 U.S.C.
§ 103(a) as being unpatentable over Dabak ‘260 in view of Ylitalo and
further in view of Akiba.
At the outset, we note that as Appellants have presented no arguments
against this rejection in their Brief, we sustain pro forma the Examiner’s
obviousness-type double patenting rejection of claims 1-8 and 13-16 over
copending application Serial Nos. 10/071,903, 10/071,917, 10/077,076, and
10/077,565. At page 7 of the Brief, Appellants have expressed on the record
their willingness to file a terminal disclaimer to overcome the obviousness-
type double patenting rejections.2

ISSUES
The pivotal issues before us are whether Appellants have
demonstrated that the Examiner erred in determining:
I. that claims 5-8 are indefinite;
II. that claims 13 and 15 are anticipated by Dabak ‘473;
III. that claims 14 and 16 are obvious over Dabak ‘473 in view of
Akiba;
IV. that claims 1 and 5 are obvious over Dabak ‘260 in view of
Ylitalo.

2 We note that Appellants list only claims 1-4 and 13-16 as the rejected
claims under the judicially created doctrine of obviousness double patenting
instead of claims 1-8 and 13-16. We consider the omission of claims 5-8 as
an inadvertent error with the intent to include all of the rejected claims under
the doctrine in the absence of any other arguments with respect to these
claims.
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V. that claims 2-4 and 6-8 are obvious over Dabak ‘260 in view of
Ylitalo and Akiba.

FINDINGS OF FACT
The record supports the following relevant findings of fact (FF) by a
preponderance of the evidence:
1.
1. Dabak ‘473’s Figure 4 is depicted below:

Dabak ‘473’s Figure 4 depicts four antennas with a group of two
antennas sharing the same code, wherein W1 is associated with antenna AT1
and antenna AT2 and W2 is associated with antenna AT3 and antenna AT4.
Furthermore, Figure 4 constitutes an improvement over the dual-antenna
prior art CDMA spreading scheme described infra in Dabak ‘473’s Figure 1.
(Col. 7, l. 65 to col. 8, l. 8; see also col. 6, ll. 54-57).
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2. Dabak ‘473’s Figure 1 is depicted below:

Dabak ‘473’s Figure 1 represents a prior art CDMA system showing
two antennas transmitting spread signals W1S1 and W2S1 (col. 3, l. 24 to col.
4, l. 11).
3. Akiba teaches that “[c]ode multipliers 114 and 116 multiply
transmission data by various spreading codes such as a channelizing
code and scrambling code. Signals are transmitted from two antennas
118 and 120 with [sic] same power, for example” (col. 4, ll. 11-14).
4. Ylitalo discloses a beam coding system in which different spread
spectrum channelization codes are applied to first and second symbol
data fields through multipliers 12 and 14. Figs. 4 and 5, col. 4, ll. 56-
58 and col. 5, ll. 37-41.
5. Ylitalo further discloses transmitting, from antenna 16, the beam with
a first channelization code that has been applied to a symbol data field
through multiplier 12, and transmitting, from antenna 18, the beam
with a second different channelization code that has been applied to a
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second symbol data field through multiplier 14. Col. 4, ll. 51-59 and
col. 5, ll. 27-57.

PRINCIPLES OF LAW

Indefiniteness
Under § 112, second paragraph, claims must be “sufficiently definite
such that those skilled in the art would understand what is being claimed
when the claim is read in light of the Specification.” Ex parte Miyazaki, 89
USPQ2d 1207, 1213 (BPAI 2008) (precedential).
It is evident to us from the above summary of the description,
definitions and examples appearing in appellant’s specification, that
the claims on appeal are inherently inconsistent. . . . The result is an
inexplicable inconsistency within each claim requiring that the
rejection under 35 U.S.C. 112 on grounds of indefiniteness be
sustained.
In re Cohn, 438 F.2d 989, 993 (CCPA 1971).

Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).

Obviousness
The Examiner bears the initial burden of presenting a prima facie case
of obviousness, and Appellant has the burden of presenting a rebuttal to the
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prima facie case. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Appellants have the burden on appeal to the Board to demonstrate error in
the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006).

ANALYSIS
I. The 35 U.S.C. § 112, second paragraph, rejection of claims 5-
8. 3

The Examiner asserted (Fin. Rej. 4) that claim 5 is unclear because the
phrase “a first and second antenna for transmitting said data field of symbols
wherein said data field includes a first data field” requires transmission by
both antennas. The Examiner maintains (id.) that “said data field” refers to
all the transmitted data, i.e., the data D1, D2, and the complex conjugates of
that data, D1* and D2*4 - respectively disclosed as transmitted by the first
and second antennas 15 and 16 in Figure 2 of Appellants’ disclosure.
As such, according to the Examiner, the claim 5 phrase, “an encoder
for encoding said data field producing a second data field having complex
conjugates” is unclear, because if “said data field” refers to all the data, then
the encoder limitation requires the encoder to produce complex conjugates
of all the data, D1, D2, D1*, and D2*. The Examiner (id.) correctly implies

3 While Appellants and the Examiner refer to claims 1-4 (Br. 8, Ans. 12), we
consider this an inadvertent error as the rejected claims are claims 5-8.
4 Appellants actually disclose transmission of the negative of the complex
conjugated data D2* (i.e., -D2*), but reference here is simply to D2* (Fig. 2).
(The complex conjugate involves a phase transformation of the particular
data element D1 or D2. Appellants’ encoder also re-arranges the data order
from (D1, D2) to (- D2 *, D1*) – see Fig. 2).
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that such a construction would contradict the disclosure because the
disclosed encoder 11 (Fig.2) only produces the complex conjugates D1* and
D2*.
Appellants (Br. 8) respond by stating that the “encoder is shown in
Figure 2 as receiving the data field that is recited in the preamble of the
claim.” As discussed supra, Appellants’ encoder in Figure 2 only receives
data D1, D2 (to create the complex conjugates D2*, D1*). Thus, if the
preamble phrase “a data field,” and subsequent references to it in claim 5,
i.e., “said data field,” refer only to data D1, D2, then the claim comports with
the disclosure.
Appellants also respond (Br. 8) that “[e]ither antenna shown in Figure
2 may be considered to be the first or second antenna.” In other words,
either antenna of the claim can transmit “said data field” D1 and D2 –
implying that the other antenna can transmit D1* and D2* – even if the open
ended preamble only requires transmission of “a data field” comprising D1
and D2.
The Examiner does not address this line of reasoning in the Answer
(Ans. 12), but rather, relies on the reasoning proposed in the Final Rejection
and discussed supra. Appellants have described how the claim comports
with the disclosure in response to the Examiner’s proposed construction
showing how the claim does not. In other words, in light of the disclosure,
the record shows that the claim is amenable to Appellants’ construction, but
not the Examiner’s. Therefore, claim 5 is “sufficiently definite such that
those skilled in the art would understand what is being claimed when the
claim is read in light of the Specification.” Miyazaki, 89 USPQ2d at 1213.
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Based on the discussion above, Appellants have demonstrated the Examiner
erred in the indefiniteness rejection of claims 5-8.

II. The 35 U.S.C. § 102(e) rejection of independent claims 13 and
15 as being anticipated by Dabak ‘473.

Appellants argue that Dabak’s Figure 4 indicates that Walsh code one
(W1) is used to spread the data transmitted “on both antenna one and
antenna two” (Br. 10) (emphasis in original). Appellants further argue that
Walsh code two (W2) is used to spread the data transmitted “on both antenna
three and antenna four” (Br. 10) (emphasis in original). Appellants assert
that there is no disclosure, teaching, or suggestion that any different
channelization code is used on the symbols which is uniquely associated
with a particular antenna (Br. 10).
Dabak ‘473’s Figure 4 discloses four antennas (FF 1) and a group of
two antennas each share the same code, wherein W1 is associated with
antenna AT1 and antenna AT2 and W2 is associated with antenna AT3 and
antenna AT4.
However, we are not persuaded by Appellants’ argument because
Figure 4 satisfies claims 13 and 15 of the terms “uniquely associated” as
recited in the claims. While we agree with Appellants that W1 is associated
with antenna AT1 and antenna AT2, and W2 is associated with antenna AT3
and antenna AT4, nonetheless, each association is unique because it
involves a unique combination of code, antenna, and transmission line. It
follows that W1 is uniquely associated with AT1 and W2 is uniquely
associated with AT3.
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In addition, the open transitional term of “comprising” does not
preclude comparisons between channelization codes that are “uniquely
associated” with some antennas (i.e., W1 being uniquely associated with
AT1 and W2 being uniquely associated with AT3 as compared between the
AT1 and AT3 antennas only) as well as comparisons between channelization
codes that are not uniquely associated with some antennas (i.e., W1 not being
uniquely associated with AT1 and AT2 as compared between the AT1 and
AT2 antennas only). Thus, the characterization of the “channelization code”
as “uniquely associated” depends on the comparison of that association
between a set of antennas. The transitional term “comprising” is inclusive or
open-ended and does not exclude additional, unrecited elements (i.e., W1 not
being uniquely associated with AT1 and AT2 as compared between the AT1
and AT2 antennas only). See Genentech, Inc. v. Chiron Corp., 112 F.3d
495, 501 (Fed. Cir. 1997).
Furthermore, Figure 4 (FF 1) represents Dabak ‘473’s improvement
over prior art Figure 1 (FF 2). Figure 1 discloses only two antennas with W1
uniquely associated with first antenna AT121 and W2 uniquely associated
with second antenna AT122 (FF 2). Therefore, based on the arguments
presented, Figure 1 also satisfies the disputed limitations of claims 13 and
15.
For the reasons articulated supra, we will sustain the Examiner’s
rejection of claims 13 and 15.

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III. The 35 U.S.C. § 103(a) rejection of claims 14 and 16 under
35 U.S.C. § 103(a) as being unpatentable over Dabak ‘473 in
view of Akiba.

Appellants (Br. 10) rely on Dabak ‘473’s alleged deficiencies with
respect to independent claims 13 and 15. Appellants (id.) also repeat the
limitations of claims 14 and 16 and deny that the combined references
satisfy the claims.
We agree with the Examiner’s finding (Ans. 11-12) that Akiba (col. 4,
ll. 11-14) teaches scramblers 114 and 116 in Figure 1, thereby suggesting
combining “a first and second scrambling device” with Dabak ‘473’s
transmitter to protect data transmission.
Accordingly, we are not persuaded by Appellants’ reliance on the
arguments made with respect to claims 13 and 15, for the reasons explained
above. Furthermore, mere reiteration of claims’ 14 and 16 limitations
without any substantive analysis or explanation as to how or why these
limitations are not obvious over Dabak ‘473 and Akiba do not amount to
arguments of patentability. Simply pointing out what a claim requires with
no attempt to point out how or why the claims patentably distinguish over
the prior art does not amount to a separate argument for patentability. 37
C.F.R. § 41.37(c)(1)(vii) (2004). See also In re Nielson, 816 F.2d 1567,
1572 (Fed. Cir. 1987).
Thus, we will also sustain the Examiner’s rejection of claims 15 and
16.

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IV. The 35 U.S.C. § 103(a) rejection of claims 1 and 5 under
35 U.S.C. § 103(a) as being unpatentable over Dabak ‘260 in
view of Ylitalo.

Appellants argue (Br. 9) that there is no disclosure, teaching, or
suggestion in the Ylitalo reference that a first channelization code that
spreads a data field is uniquely associated with a first antenna and a second
channelization code that spreads a data field is uniquely associated with a
second antenna, as is recited in the claims 1 and 5. Appellants further argue
(Br. 9) that Dabak does not cure the cited deficiencies.
We do not find Appellants’ arguments to be persuasive of any error in
the Examiner’s stated position. We agree with the Examiner (Ans. 13) that
Ylitalo provides a specific disclosure (FF 4-5) of transmitting, from antenna
16, a beam with a first channelization code that has been applied to a symbol
data field through multiplier 12, and transmitting, from antenna 18, a beam
with a second different channelization code that has been applied to a second
symbol data field through multiplier 14. In other words, Ylitalo discloses
that a first channelization code (i.e., in Fig. 4, OC 12) that spreads a data
field “is uniquely associated with a first antenna” (i.e., in Fig. 4, antenna 16)
and a second channelization code (i.e., in Fig. 4, OC 14) that spreads a data
field “is uniquely associated with a second transmission antenna” (i.e., in
Fig. 4, antenna 18). There are no convincing arguments presented from
Appellants, why the respective first and second channelization codes in
Ylitalo would not be considered to be uniquely associated with the
respective first and second beam transmitting antennas 16 and 18 as claimed.
Accordingly, we will sustain the Examiner’s rejection of claims 1 and
5.
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V. The 35 U.S.C. § 103(a) rejection of claims 2-4 and 6-8 under
35 U.S.C. § 103(a) as being unpatentable over Dabak ‘260 in view of
Ylitalo and further in view of Akiba.

Appellants assert that Akiba does not cure the deficiencies of the
Ylitalo and Dabak combination (Br. 9). We are not persuaded by
Appellants’ argument for the same reasons as articulated supra.
Furthermore, Appellants nominally argue claims 2-4 and 6-8
separately (Br. 9-10) by essentially reiterating claim limitations and do not
provide any substantive analysis or explanation as to how or why these
limitations are not anticipated by Ylitalo. Simply pointing out what a claim
requires with no attempt to point out how or why the claims patentably
distinguish over the prior art does not amount to a separate argument for
patentability. 37 C.F.R. § 41.37(c)(1)(vii) (2004). See also In re Nielson,
816 F.2d 1567, 1572 (Fed. Cir. 1987).
Accordingly, we also sustain the Examiner’s rejection of claims 2-4
and 6-8.

CONCLUSIONS OF LAW
Appellants have demonstrated that the Examiner erred in determining
that claims 5-8 are indefinite. Appellants have not demonstrated that the
Examiner erred in determining that claims 13 and 15 are anticipated by
Dabak ‘473; that claims 14 and 16 are obvious over Dabak ‘473 in view of
Akiba; that claims 1 and 5 are obvious over Dabak ‘260 in view of Ylitalo;
and that claims 2-4 and 6-8 are obvious over Dabak ‘260 in view of Ylitalo
and Akiba.
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DECISION
The Examiner’s decision rejection of claims 1-8 and 13-16, all of the
appealed claims, is affirmed.
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).

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AFFIRMED

ELD

VOLPE AND KOENIG, P.C.
DEPT. ICC
UNITED PLAZA, SUITE 1600
30 SOUTH 17TH STREET
PHILADELPHIA, PA 19103
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