Ex Parte Kong et al

Patent Trial and Appeal Board

May 6, 2014

10703138 (P.T.A.B. May. 6, 2014)

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.
10/703,138 11/05/2003 Ning Kong 3875.0360001 8901
26111 7590 05/07/2014
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
AGHDAM, FRESHTEH N
ART UNIT PAPER NUMBER
2632
MAIL DATE DELIVERY MODE
05/07/2014 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 NING KONG, IAN RAPHAGEN, and MICHIEL LOTTER

Appeal 2011-0134751
Application 10/703,138
Technology Center 2600
____________________

Before JEAN R. HOMERE, CARLA M. KRIVAK, and
JOHNNY A. KUMAR, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The Real Party in Interest is Broadcom Corp. (App. Br. 2.)
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Application 10/703,138

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 20-23, 26-29, and 32-54. Claims 1-19 have been
canceled. Claims 24, 25, 30, and 31 have been objected to as being
dependent upon a rejected base claim, but would otherwise be allowable.
(App. Br. 2.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants invented a method and apparatus for reducing the effects
of multipath interference in a RAKE receiver employed in a Code-Division
Multiple Access (CDMA) wireless communication system. Spec. 1:9-11,
Spec. 2:29-31. In particular, the receiver (400) includes a weight generator
(409) for generating weighting factors by computing gain characteristics of a
plurality of multipath channels (214), which are combined (218) to
maximize a signal to interference plus noise ratio (SINR) of estimate
information recovered from a spread spectrum signal. Spec. 3:3-13, Fig. 4.
Representative Claim
Independent claim 20 is representative and reads as follows:
20. An apparatus for recovering information from a spread
spectrum information signal included within a composite signal
received from a signal propagation medium, the apparatus
comprising:
a correlation arrangement operative to correlate time-
offset versions of the composite signal with a spreading
sequence in order to produce a plurality of correlation signals;
a weight generator operative to generate weighting
factors so as to maximize a signal to interference plus noise
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ratio (SINR) of an estimate of the information, wherein said
weighting factors are generated based on normalized gain
values of corresponding multipath components of the composite
signal, and wherein each of said normalized gain values is
normalized by a gain of a multipath component that is a
maximum gain;
a plurality of weighting arrangements disposed to
generate a plurality of weighted symbol streams by processing
the plurality of correlation signals in accordance with the
weighting factors; and
a combiner coupled to the plurality of weighting
arrangements, wherein the estimate of the information is
produced by the combiner,
wherein each of said plurality of weighting arrangements
splits a corresponding one of said correlation signals into first
and second signals, each of said first signals being scaled by
one of said weighting factors so as to generate a plurality of
scaled signals.

Prior Art Relied Upon
Asanuma US 6,192,066 B1 Feb. 20, 2001
Fukumoto US 6,507,605 B1 Jan. 14, 2003
Bevan US 6,661,345 B1 Dec. 9, 2003
Koike US 6,661,923 B1 Dec. 9, 2003

Rejection on Appeal
The Examiner rejects claims 20-23, 26-29, and 32-54 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Asanuma and
Official notice.

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Application 10/703,138

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ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the Appeal Brief, pages 12-23, and the Reply Brief, pages 2-7.2

Dispositive Issue: Under 35 U.S.C. § 103, did the Examiner err in finding
the combination of Asanuma and Official Notice teaches or suggests
generating weighting factors based on normalized gain values of
corresponding multipath components of a composite signal, as recited in
claim 20?

Appellants argue the combination of Asanuma and Official Notice
does not teach or suggest the disputed limitations emphasized above. Id. In
particular, Appellants argue because the Examiner has failed to establish on
this record the disputed limitation is well-known in the art, the asserted
official notice does not satisfy the legal standard set forth in the MPEP
§ 2144. 03(A), whereby facts stated therein are capable of instant and
unquestionable demonstration as to defy dispute. App. Br. 15.
Consequently, Appellants submit the Examiner’ taking of official notice
does not cure the admitted deficiencies of Asanuma. Id. Further, Appellants

2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed June 14, 2010), the Reply Brief (filed
November 22, 2010), and the Answer (mailed September 21, 2010) for the
respective details. We have considered in this decision only those
arguments Appellants actually raised in the Briefs. Any other arguments
which Appellants could have made but chose not to make in the Briefs are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
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argue the Examiner’s proposed rationale to modify Asanuma would not
support the finding of obviousness. Id. at 16-19, Reply Br. 3-4.
In response, the Examiner finds it is well-known in the art to divide
nonzero weighting factors by a normalizing value such as the maximum gain
value of a multipath signal because such normalization is known to reduce
the magnitude of values between zero and one, thereby simplifying
subsequent computations. Ans. 8. The Examiner cites to specific textual
portions of three references as evidence that the afore-cited fact is common
knowledge. Id. Further, the Examiner finds the rationale for modifying
Asanuma with established knowledge in the art is to reduce hardware
complexity and to maintain stability in Asanuma’s system. Id. at 9.
Based upon our review of the record before, we agree with the
Examiner’s underlying factual findings and ultimate conclusion of
obviousness regarding claim 20. We note at the outset Appellants’
arguments in the Reply Brief fail to address the specific findings made by
the Examiner in the Answer. In particular, the Examiner relies upon the
following teachings:
1. Fukumoto, column 13, lines 36-40;
2. Bevan, column 9, lines 25-32; and
3. Koike, column 7, lines 42-51.
(Ans. 8.)
In our view, Appellants’ failure to specifically address in the Reply
Brief the Examiner’s findings regarding the cited references constitutes a
waiver of any argument Appellants could have raised to rebut that
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generating weighting factors based normalized (maximum) values of a
multipath component was well-known in the art at the time of Appellants’
invention. Because Appellants fail to rebut the Examiner’s finding that the
asserted fact is unquestionably and undisputedly well-known, Appellants
have not shown error in the Examiner’s Official Notice in accordance with
MPEP § 2144.03(C).3 Consequently, we find Appellants have failed to
adequately traverse the Examiner’s taking of Official Notice.
Further, the U.S. Supreme Court has held “[t]he 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 Co. v. Teleflex,
Inc., 550 U.S. 398, 416 (2007). The Court further instructs that:
[o]ften it will be necessary for a court to look to interrelated
teachings of multiple patents; . . . and the background knowledge
possessed by a person having ordinary skill in the art, all in order to
determine whether there was an apparent reason to combine the
known elements in the fashion claimed by the patent at issue.

Id. at 418.

3 Our reviewing court has held that an appellant adequately traverses a
finding of Official Notice where the appellant’s argument “contain[s]
adequate information or argument” to create on its face “a reasonable doubt
regarding the circumstances justifying the . . . notice” of what is well known
to an ordinarily skilled artisan. In re Boon, 439 F.2d 724, 728 (CCPA
1971). “To adequately traverse such a finding [of Official Notice], an
applicant must specifically point out the supposed errors in the [E]xaminer’s
action, which would include stating why the noticed fact is not considered to
be common knowledge or well-known in the art.” Manual of Patent
Examining Procedure (“MPEP”) § 2144.03(C) (Rev. 8, July 2010).
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Additionally, the Court instructs that:
[R]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal
conclusion of obviousness”. . . . [H]owever, the analysis need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.

Id. (citation omitted).
We find the ordinarily skilled artisan, being a creative individual,
would have been able to fit the cited teachings of Asanuma with the
established knowledge in the art together like pieces of a puzzle to
predictably result in the disputed limitations. In particular, we agree with
the Examiner the proffered combination would predictably result in a system
RAKE receiver that normalizes gain values to maximize signal to
interference noise ratio. Ans. 8. While it may be necessary for an Examiner
to identify a reason for modifying the familiar elements obtained from the
prior art in establishing a prima facie case of obviousness, the identification
of such a reason is not a sine qua non requirement. So long as the Examiner
provides an articulated reasoning with some rational underpinning to
substantiate the obviousness rejection, such a conclusion is proper. In this
case, the afore-cited rationale provided by the Examiner is more than just a
conclusory statement. In our view, such a statement suffices as an
articulated reason with a rational underpinning to support the proffered
combination. As noted above, the case law allows the Examiner to look to
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the state of the prior art, including the knowledge of the ordinarily skilled
artisan, to arrive at such a reason for combining the known elements of the
prior art. Consequently, the Examiner’s reliance upon widely available
knowledge in order to arrive at an articulated reason with a rational
underpinning to support the proffered combination is proper.
For at least the aforementioned reasons, we find Appellants have not
sustained the requisite burden on appeal of providing arguments or evidence
persuasive of error in the Examiner’s rejection of representative claim 20. It
therefore follows that Appellants have not shown the Examiner erred in
finding the combination of Asanuma and Official Notice renders claim 20
unpatentable.
Regarding claims 21-23, 26-29, and 32-54, Appellants reiterate
substantially the same arguments submitted for patentability of claim 20.
(App. Br. 19-23; Reply Br. 5-7.) As discussed above, these arguments are
not persuasive. See 37 C.F.R. § 1.37(c)(1)(vii).

DECISION
We affirm the Examiner’s obviousness rejection of claims 20-23, 26-
29, and 32-54.
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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