Ex Parte Kwon et al

Patent Trial and Appeal Board

Dec 26, 2017

11325446 (P.T.A.B. Dec. 26, 2017)

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.
11/325,446 01/05/2006 Chang-yeul Kwon Q91763 7455
23373 7590 12/28/2017
SUGHRUE MION, PLLC
2100 PENNSYLVANIA AVENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
EXAMINER
IQBAL, KHAWAR
ART UNIT PAPER NUMBER
2646
NOTIFICATION DATE DELIVERY MODE
12/28/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHANG-YEUL KWON, JAE-HWA KIM,
and
CHIL-YEUL YANG
Appeal 2017-0023501
Application 11/325,446
Technology Center 2600
Before JEAN R. HOMERE, CARLA M. KRIVAK, and
JEFFREY S. SMITH, Administrative Patent Judges.
KRIVAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1 and 3—29. Claims App’x. Claim 2 has been canceled. Id. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 This Appeal relates Appeal No 2013-000696 (decided May 21, 2015) in
which we affirmed the Examiner’s rejections of claims 1 and 3—23. Dec. 4.
Appeal 2017-002350
Application 11/325,446
STATEMENT OF THE CASE
Appellants’ invention is directed to “multiple input and multiple
output (MIMO) communication apparatus and a channel scanning method
thereof’ (Spec. 12).
Independent claim 1, reproduced below, is exemplary of the subject
matter on appeal.
1. A method, the method comprising:
determining to scan a first channel using a first antenna
and to scan a second channel using a second antenna,
generating a first search frame in order to scan the first
channel and a second search frame in order to scan the second
channel;
transmitting the first search frame and the second search
frame; and
receiving a first response frame in response to the first
search frame using the first antenna and a second response
frame in response to the second search frame using the second
antenna.
REFERENCES and REJECTIONS
The Examiner rejected claims 1, 3—9, 11—18, and 20-27 under 35
U.S.C. § 103(a) based upon the teachings of Beale (US 2005/0250506 Al;
publ. Nov. 10, 2005) and Lastinger (US 2005/0003865 Al; publ. Jan. 6,
2005).
The Examiner rejected claims 10, 19, 28, and 29 under 35 U.S.C.
§ 103(a) based upon the teachings of Beale, Lastinger, and Ginzburg (US
2009/0010221 Al; publ. Jan. 8, 2009).
The Examiner rejected claims 1 and 11 under 35 U.S.C. § 103(a)
based upon the teachings of Beale and Kim (US 2005/0219999 Al; publ.
Oct. 6, 2005).
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Application 11/325,446
ANALYSIS
Appellants contend Lastinger does not disclose the claimed step of
“determining to scan a first channel using a first antenna and to scan a
second channel using a second antenna,” as recited in independent claim 1.
(App. Br. 5). That is, “Lastinger, at best, discloses an active scan which uses
all radios [antennae] to scan a same channel simultaneously,” contrary to the
claim limitation (id.). Appellants then assert Olson and Ginzburg do not
remedy this deficiency (id.).
Initially we note Lastinger, Olson, and Ginzburg were used in the
previous Appeal2; whereas in the instant case, the Examiner relies on Beale
and Lastinger to reject the claims. Particularly, the Examiner finds, and we
agree, Beale—not Lastinger—discloses the disputed determining limitation
(Final Act. 4 (citing Beale Figs. 4—7 and 10, ^fl[ 46 and 86)) and Lastinger
discloses the receiving limitation (Final Act. 4—5). Appellants only address
Lastinger as not teaching or suggesting the determining limitation, thus,
Appellants are arguing the references separately instead of addressing what
the combined teachings would have taught or suggested to one of ordinary
skill in the art (see In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“[0]ne
cannot show non-obviousness by attacking references individually where, as
here, the rejections are based on combinations of references”); Ans. 2) and
have not addressed the Examiner’s findings with respect to Beale.
Further, we agree with and adopt the Examiner’s findings as set forth
in the Answer (Ans. 4—9; Final Act. 2—5) regarding Beale’s teaching and
suggestion of determining to scan first and second channels using first and
2 Supra note 1.
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Appeal 2017-002350
Application 11/325,446
second antennae, respectively (Ans. 4). Not only does Beale teach or
suggest this limitation, we also agree with the Examiner the claim language
is broad and does not specifically state the scanning is performed
simultaneously (id.) as Appellants contend (App. Br. 5). Appellants are
arguing limitations not found in the claims. We decline to read limitations
found in the Specification into the claims (see In re Self, 671 F.2d 1344,
1348 (CCPA 1982) (limitations not appearing in the claims cannot be relied
upon for patentability)).
Appellants provide arguments against Beale, for the first time, in the
Reply Brief (Reply Br. 4). However, we do not consider these arguments
because they were not first raised in the Appeal Brief (see Optivus Tech.,
Inc. v. Ion Beam Appl’ns S.A., 469 F.3d 978, 989 (Fed. Cir. 2006)
(arguments raised for the first time in the Reply Brief that could have been
raised in the opening brief are waived); see also 37 C.F.R. § 41.41(b)(2)).
Appellants contend the limitations of dependent claims 6 and 7, are
also not taught or suggested by Fastinger because Fastinger does not suggest
passive scanning on two channels or waiting to receive a beacon frame as
claimed (App. Br. 6—7). The Examiner’s Answer provides articulated
reasoning with a rational underpinning for why Fastinger teaches and
suggests this limitation, which Appellants do not address in their Reply
Brief.
For the above reasons, we are not persuaded of Examiner error. We
find the weight of the evidence supports the Examiner’s ultimate legal
conclusion of obviousness. Therefore, in light of the broad terms recited in
the claims and the arguments presented, Appellants have failed to clearly
distinguish their claimed invention over the prior art relied on by the
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Application 11/325,446
Examiner. Thus, we sustain the Examiner’s obvious rejections of
independent claims 1 and 11, argued together, dependent claims 6 and 7, and
dependent claims 3—5, 8—10, and 12—29, not separately argued, over the
collective teachings of Beale, Lastinger, and Ginzburg. We also summarily
sustain the Examiner’s rejection of claims 1 and 11 over the combination of
Beale and Kim, which Appellants did not address.
DECISION
The Examiner’s decision rejecting claims 1 and 3—29 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)(l)(iv).
AFFIRMED
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