Ex Parte Lappetelainen et al

Patent Trial and Appeal Board

Aug 17, 2016

10968248 (P.T.A.B. Aug. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/968,248 10/19/2004
10949 7590 08/19/2016
Nokia Corporation and Alston & Bird LLP
c/o Alston & Bird LLP
Bank of America Plaza, 101 South Tryon Street
Suite 4000
Charlotte, NC 28280-4000
FIRST NAMED INVENTOR
Antti Lappetelainen
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
042933/416698 2941
EXAMINER
LY,ANHVUH
ART UNIT PAPER NUMBER
2472
NOTIFICATION DATE DELIVERY MODE
08/19/2016 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte ANTTI LAPPETELAINEN, VISA SMOLANDER,
WHA SALOKANNEL, and
MIKA KASSLIN
Appeal2014-008141
Application 10/968,248
Technology Center 2400
Before ST. JOHN COURTENAY III, JASON J. CHUNG, and
JOYCE CRAIG, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-5 and 10-28. Claims 6-9 are objected to. 1 We have
jurisdiction under 35 U.S.C. § 6(b) as to rejected claims 1-5 and 10-28.
We affirm-in-part.
1 The Examiner indicates "[c]laims 6-9 are objected to as being dependent
upon a rejected base claim, but would be allowable if rewritten in
independent form including all of the limitations of the base claim and
any intervening claims." (Ans. 8).
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Application 10/968,248
Invention
The invention on appeal "relates to an assembly, and an associated
method, by which to facilitate allocation of frequencies upon which to
communicate data during operation of the communication system." (Spec. 1,
11. 9-12).
Representative Claim
1. An apparatus, comprising:
at least a first dynamic frequency selection message
generator coupled to at least one of a communication station and
a mobile station, said at least first dynamic frequency selection
message generator configured to [L] generate a dynamic
frequency selection message, the dynamic frequency selection
message indicating a changed frequency allocation by which to
communicate subsequent data, the changed frequency allocation
made to attain a selected statistical spreading of electromagnetic
energy across a selected frequency range that contains the
frequency allocation.
(Bracketed matter and emphasis added regarding the contested limitation,
labeled as "L").
Rejections
A. Claims 1-5, 10, 12-21, 24, 27, and 28 are rejected under 35 U.S.C.
§ 102( e) as being anticipated by Urs et al. (US 6,529 ,488 B 1; iss. Mar.
4, 2003) ("Urs").
B. Claim 11 is rejected under 35 U.S.C. § 103(a) over Urs and official
notice.
C. Claims 22, 23, 25, and 26 are rejected under 35 U.S.C. § 103(a) over
the combined teachings and suggestions of Urs and Dick et al. (US
6,850,514 Bl; iss. Feb. 1, 2005) ("Dick").
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Grouping of Claims
Based on Appellants' arguments, we decide the appeal of claims 1--4,
10, 13-17, 19-21, 24, 27, and 28, rejected under§ 102 rejection A, on the
basis of representative claim 1. We separately address argued claims 5, 12,
and 18, also rejected under rejection A, infra. We also separately address
argued dependent claim 11, rejected under§ 103 rejection B, and the
remaining claims rejected under§ 103 rejection C, infra. See 37 C.F.R.
§ 41.37(c)(l)(iv).
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. With the exception of rejection A of claim 5 (reversed infra), we
disagree with Appellants' arguments, and we adopt as our own: ( 1) the
findings and reasons set forth by the Examiner in the Final Office Action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Answer in response to Appellants' arguments (Ans. 8-11). However, we
highlight and address specific findings and arguments for emphasis in our
analysis below.
Anticipation Rejection A of Representative Claim 1
Issue: Under 35 U.S.C. § 102(e), did the Examiner err in finding Urs
expressly or inherently discloses contested limitation L (with emphasis
added):
[L] generate a dynamic frequency selection message, the
dynamic frequency selection message indicating a changed
frequency allocation by which to communicate subsequent data,
the changed frequency allocation made to attain a selected
statistical spreading of electromagnetic energy across a selected
frequency range that contains the frequency allocation[,]
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• '.,. • '.,. • ro .,. • -1 n ') wnnm me meanmg or cia1m l I ~
Appellants contend: "Urs fails to disclose, teach or suggest a first
dynamic frequency selection message generator coupled to either of a
communication station or a mobile station," based upon the premise that
"Urs fails to disclose or suggest the base radios generating (or sending) a
dynamic frequency selection message. As such, Urs' s base radios clearly do
not correspond to a dynamic frequency selection message generator." (App.
Br. 8-9). In support, Appellants cite to Urs, and contend, inter alia:
Urs clearly discloses that the modulation scheme indicates the
type of multiplexing or combining technique to be used for
combining frequency allocations in a base radio, such as time
division multiplexing (TDM) or frequency division multiplexing
(FDM). See, e.g., Urs, col. 6, lines 40-43, col. 9, lines 2-6. The
mere disclosure of selecting a type of modulation scheme to be
used by a radio frequency device fails to disclose or suggest
generating a dynamic frequency selection message.
(App. Br. 11 (emphasis added)).
2 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997). See, e.g., Spec. 16, 11. 12-14 ("The preferred
descriptions are of preferred examples for implementing the invention, and
the scope of the invention should not necessarily be limited by this
description"). (Emphasis added). Accord Williamson v. Citrix Online, LLC,
792 F.3d 1339, 1346-47 (Fed. Cir. 2015) ("This court has repeatedly
'cautioned against limiting the claimed invention to preferred embodiments
or specific examples in the specification."') (quoting Teleflex, Inc. v. Ficos a
N. Am. Corp., 299 F.3d 1313, 1328 (Fed. Cir. 2002)).
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The Examiner disagrees, and finds:
Urs et al discloses a base radio [BR] 301 in communication with
units 107, 109, and 111 (Fig. 3). Urs et al discloses a block
diagram of radio frequency device 901 which may be used in the
base radio 301 (col. 9, lines 47-48). The device 901 includes a
transmitter 903, a receiver 907, and a memory and
microprocessor 911 (Fig. 9). Urs et al discloses that the BR
transmitter transmits each frequency allocation to each
individual users (col. 15, lines 32-34). Herein, BR must include
a mechanism for generating the frequency allocation message to
be transmitted by the BR transmitter. In other words, the
transmitter 903 or the receiver 907 is the communication station
of the claim. The unit 107, 109, or 111 is the mobile station of
the claim. And the mechanism for generating the frequency
allocation is the frequency selection message generator of the
claim. Urs et al discloses in Fig. 10, a flow chart of modulating
and demodulating signals within a composite frequency range.
In block 1001, a list of adjacent communication resources is
received. In block 1011, a signal is transmitted within the
frequency range. Then the method loops back to block 1001 to
determine if a new list is received. Herein, the new frequency is
allocated to communicate another subsequent data transmission.
(Ans. 8-9 (emphasis added)).
In the Reply Brief (3--4), Appellants respond to the Examiner's
reliance (Ans. 9) on the flow chart depicted in Figure 10 ofUrs:
However, in Figure 10, Urs discloses a VRFD (radio frequency
device, e.g. a base radio) receiving a list of adjacent
communication resources (programmed into the system by an
operations and maintenance center (OPC)) and determining if it
will be receiving or transmitting signals. Urs further discloses
that for each transmit/receive cycle, the VRFD (base radio) may
determine if a new list of adjacent communication resources has
been received (e.g. from the OPC) or if it should continue using
its current list of communication resources. See Urs, col. 10, lines
23-67. As such, Urs discloses that a base radio may be
programmed with a list of communication resources to use in
transmitting and receiving signals and may determine if a new
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nst of communication resources has been
downloaded/programmed by the OPC before
transmitting/receiving, and does not disclose, teach, or suggest
the base radio generating a dynamic frequency selection message
indicating a changed frequency allocation to use m
communicating. [3J
(Reply Br. 3--4 (emphasis added)).
This appeal turns upon claim construction. Turning to Appellants'
Specification for context, we find the contested dynamic frequency selection
message generator ("DFSM generator" hereinafter) is described using non-
limiting, exemplary language:
The DPS message generators 34 and 36 are operable pursuant to
an embodiment of the present invention to generate DFS
messages to be communicated upon the radio link 15 to facilitate
allocation of frequency channels upon which to communicate
data, thereby to attain a selected spread of electromagnetic
emissions over a selected frequency range.
(Spec. 10, 1. 29-11, 1. 3 (emphasis added)).
l\1ore particularly, we find the claimed DFSl\1 generator is described
in the Specification not as a specific structure, but rather solely in terms of
the functions it is intended to perform. (Jd.).4 Turning to Appellants' Figure
3 We note Appellants use "OPC" instead of "OMC" to refer to the
"operations and maintenance center (OMC)" described in Urs (col. 10, 1.
41).
4 In the event of further prosecution, we leave it to the Examiner to consider
whether at least claim 1 should be rejected under 35 U.S.C. § 35 U.S.C.
§ 112,first paragraph, for lack of enablement. In particular, we leave it to
the Examiner to determine whether the claimed "dynamic frequency
selection message generator" (DFSM generator) is described in the
Specification and drawings purely in terms of the function it is intended to
perform. If the DFSM generator element is not a structure within the
apparatus capable of performing the recited functions, and if it is not a
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2, we find each DFS ivIESSAGE GENERATOR 34 and 36 is merely
depicted as a labeled box.
To the extent Appellants nominally urge the claim requires a
particular DFSM generator structure "configured to" perform the recited
function of generating a dynamic frequency selection message (App. Br. 10),
we find no details in the Specification to inform the artisan how to make and
use such structure. Therefore, under a broad but reasonable interpretation,
fully consistent with the Specification, we conclude the contested DFSM
generator of apparatus claim 1 appears to be a purely functional claim
element unlimited by any defined corresponding structure. See n.4, supra.
Regarding apparatus claims generally, our reviewing court guides the
patentability of an apparatus claim "depends on the claimed structure, not on
the use or purpose of that structure." Catalina Marketing Int'!, Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). "It is well
settled that the recitation of a new intended use for an old product does not
make a claim to that old product patentable." In re Schreiber, 128 F.3d
1473, 1477 (Fed. Cir. 1997) (citations omitted). As addressed by the court
"means" to which § 112, sixth paragraph is applicable, then it is simply an
element defined solely by the intended function(s) to be performed (i.e., a
purely functional element unlimited by any particular structure). As such, at
least claim 1 would be unpatentable under 35 U.S.C. § 112, first paragraph,
for lack of an enabling disclosure commensurate with the scope of the claim.
Although the Board is authorized to reject claims under 37 C.F.R. §
41.50(b), no inference should be drawn when the Board elects not to do so.
See Manual of Patent Examining Procedure (MPEP) § 1213.02 (9th Ed.,
Rev. 07.2015, Nov. 2015).
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in Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1090 (Fed. Cir.
2009):
"[A ]pparatus claims cover what a device is, not what a device
does." Hewlett-Packard Co. v. Bausch & Lomb, Inc., 909 F.2d
1464, 1468 (Fed.Cir.1990) .... Absent an express limitation to
the contrary, any use of a device that meets all of the limitations
of an apparatus claim written in structural terms infringes that
apparatus claim ... see also Roberts v. Ryer, 91 U.S. 150, 157,
23 L.Ed. 267 (1875) ("The inventor of a machine is entitled to
the benefit of all the uses to which it can be put, no matter
whether he had conceived the idea of the use or not.").
Id. at 1090-91.
This reasoning is applicable here. In particular, we find Appellants
have not shown how the contested purely functional DFSM generator
distinguishes over the corresponding structure found by the Examiner in Urs.
Regarding the corresponding structure in Urs, the Examiner finds a
DFSM generator mechanism is inherently disclosed by Urs: "Herein, BR
must include a mechanism for generating the frequency allocation message
to be transmitted by the BR transmitter." (Ans. 9 (emphasis added)).
Our reviewing court guides: "[A] prima facie case of anticipation
[may be] based on inherency." In re King, 801 F.2d 1324, 1327 (Fed. Cir.
1986). Once a prima facie case of anticipation has been established, the
burden shifts to the Appellant to prove that the prior art product does not
necessarily or inherently possess the characteristics of the claimed product.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977). See also In re Spada, 911
F.2d 705, 708---09 (Fed. Cir. 1990).
Here, Appellants do not provide any evidence or persuasive argument
disproving the Examiner's finding of inherency. (Ans. 9). Instead,
Appellants acknowledge (Reply Br. 3): "in Figure 10, Urs discloses a VRFD
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(radio frequency device, e.g. a base radio) receiving a list of adjacent
communication resources (programmed into the system by an operations and
maintenance center (OPC)) and determining if it will be receiving or
transmitting signals" (emphasis added). See n.2, supra.
We find Urs (col. 10, 11. 34--44 (with emphasis added)) describes the
"list" referred to by Appellants (Reply Br. 3), as a list that includes
operational frequencies to be downloaded and/or programmed to appropriate
devices, including base radios (BRs ):
The composite frequency range may be put together or compiled
by a system engineer or system planner optionally using a
frequency planning tool. The frequency planning tool would be
modified from a readily available tool to include the ability to
account for the composite frequency ranges provided by the
present invention. The list would then be programmed into the
communication system, for example at an operations and
maintenance center (OMC) or a similar entity. The OMC or other
such device would then download or program the information to
the appropriate devices, such as BRs.
We find such download of frequencies from the "OMC or other such
device" (emphasis added) (i.e., denoting structure) to "appropriate devices"
including base radios ("BRs"), as described by Urs (id.), meets the contested
claim language regarding the DFSM generator that generates "a dynamic
frequency selection message" (DFSM) (emphasis added). In particular, we
find a base radio (BR) that downloads a list of frequency allocation
information is a specific type of "communication station" structure within
the scope of claim 1, under a broad but reasonable interpretation. See n.2,
supra.
We further note claim 1 does not specify a particular location for the
DFSM generator. Instead, the claim merely requires the DFSM generator to
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be "coupled to at least one of a communication station and a mobile station"
(emphasis added). We find the claimed coupling must necessarily be
present in Urs to implement the download or programming from the OMC
or other such device to at least the base radio (BR) (i.e., "communication
station" -claim 1). See Urs (col. 10, 11. 42--44). "The OMC or other such
device would then download or program the information to the appropriate
devices, such as BRs" (emphasis added). Moreover, a method of assigning
and reassigning frequency allocations using a downloaded or programmed
list of frequency allocations is depicted in Figure 11 of Urs (as found by the
Examiner (Final Act. 2)), and described in detail in Urs (col. 11, 1. 21, et
seq.).
Regarding the remaining contested language of claim 1 ("the changed
frequency allocation made to attain a selected statistical spreading of
electromagnetic energy across a selected frequency range that contains the
frequency allocation"), we find the Examiner correctly concludes this
language "provides no action to be performed on the changed frequency
allocation" (Ans. 10), and is therefore a statement of intended use. 5
Moreover, we find any carrier wave (modulated or unmodulated) meets the
broad language of "a selected statistical spreading of electromagnetic energy
across a selected frequency range that contains the frequency allocation"
5 "An intended use or purpose usually will not limit the scope of the claim
because such statements usually do no more than define a context in which
the invention operates." Boehringer Ingelheim Vetmedica, Inc. v. Schering-
Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although "[s]uch
statements often ... appear in the claim's preamble" (In re Stencel, 828 F.2d
751, 754 (Fed. Cir. 1987)), a statement of intended use or purpose can
appear elsewhere in a claim. Id.
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(claim 1 ), because claim 1 is silent regarding any details pertaining to the
type of "statistical spreading" or how it is selected.
Therefore, on this record, and based on a preponderance of the
evidence, we are not persuaded the Examiner erred. Accordingly, we
sustain rejection A of representative claim 1, and rejection A of the grouped
claims, which fall therewith. See Grouping of Claims, supra.
Anticipation Rejection A of Independent Claim 12
Regarding claim 12, Appellants contend: Because "Urs fails to
disclose a WLAN or operating pursuant to IEEE 802.11, it would not be
obvious to use the teachings ofUrs for WLAN or IEEE 802.11, and Urs
further teaches away from the use ofWLAN and IEEE 802.11." (App. Br.
17).
We find Appellants' "teaching away" argument is misplaced because
"[t ]eaching away is irrelevant to anticipation." Seachange Int 'l, Inc., v. C-
COR, Inc., 413 F.3d 1361, 1380 (Fed. Cir. 2005). "A reference is no less
anticipatory if, after disclosing the invention, the reference then disparages it
.... [T]he question whether a reference 'teaches away' from the invention
is inapplicable to an anticipation analysis." Celeritas Techs., Ltd. v.
Rockwell Int'! Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998).
Moreover, we conclude, under a broad but reasonable interpretation,
the preamble of claim 12 merely recites an intended use of the "apparatus"
that is without support in the body of the claim:
12. An apparatus operable pursuant to IEEE 802.11 standard,
compnsmg:
a dynamic frequency selection message generator configured to
generate a dynamic frequency selection message, the dynamic
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frequency selection message indicating a change of frequency
allocations upon which to communicate the data, the change
made to attain a selected statistical spreading." 6
(Claim 12, (emphasis added)).
We are not persuaded the Examiner erred because the body of claim
12 is silent regarding the IEEE 802.11 standard recited in the preamble.
Because we find the body of claim 12 sets out the complete invention, we
conclude the intended use language recited in the preamble is superfluous, as
guided by Schumer v. Lab. Computer Sys., Inc., 308 F.3d 1304, 1310 (Fed.
Cir. 2002); Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d
1368, 1373-74 (Fed. Cir. 2001).
Therefore, on this record, we are not persuaded of error regarding the
Examiner's broader interpretation giving no patentable weight to the
preamble language. (Ans. 10, "Therefore, there is no weight given to
'operable pursuant to IEEE 802.11 standard."').
Accordingly, we sustain the Examiner's anticipation rejection A of
independent claim 12 for the same reasons given above regarding claim 1, as
further discussed above.
Anticipation Rejection A of Dependent Claim 5
Claim 5 recites a contested temporal limitation: "wherein the dynamic
frequency selection message generated at said first dynamic frequency
6 Contra Eaton Corp. v. Rockwell Int 'l Corp., 323 F.3d 1332, 1339 (Fed.
Cir. 2003) (citing e.g., Electro Sci. Indus. v. Dynamic Details, Inc., 307 F.3d
1343, 1348 (Fed. Cir. 2002)) ("When limitations in the body of the claim
rely upon and derive antecedent basis from the preamble, then the preamble
may act as a necessary component of the claimed invention").
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selection message generator is further of values indicative of at least a
relative time at which the frequency allocation change at which the
subsequent communications are to be made shall occur" (emphasis added).
Appellants contend:
The Final Office Action alleges that these features are disclosed
by Urs in Figure 5. However, Figure 5 ofUrs provides a diagram
showing frequency allocations for a base radio assignment. Urs
discloses that in Figure 5, the frequency allocations are combined
into TDM resources. Urs discloses that each of the frequency
allocations are combined into one communication resource that
is a time division multiplexed communication resource for users
of all of the allocations that are combined. See, e.g., Urs, col. 7,
lines 15-48. Figure 5 of Urs and the associated description fails
to disclose or suggest anything about values indicative of at least
a relative time at which the frequency allocation change at which
the subsequent communications are to be made shall occur.
(App. Br. 18).
The Examiner disagrees, and finds:
Urs et al discloses sending a message to a radio frequency
communication unit, the message indicating ... the time division
multiplex modulation scheme (col. 6, lines 4-6). Urs et al
discloses that the device may vary in time to cover different
frequencies (col. 9, lines 34-35). Urs et al discloses in Fig. 5, a
TDM transmission. Urs et al discloses in Fig. 9 that F A3 and F A4
are transmitted according to TDM in TD3-4 and FA6 and FA7
are transmitted according to TD M in TD6-7. Here in, the
message must include time slot allocations. The time slots are
values indicative of a relative time in which subsequent
communications are to be made shall occur of the claim.
(Ans. 10-11 (emphasis added)).
Regarding dependent claim 5, we find the Examiner has not fully
developed the record to show how the aforementioned citations (id.) pertain
to the same frequency allocation list (i.e., dynamic frequency selection
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message), we found anticipates the generated dynamic frequency selection
message, as discussed above regarding claim 1. (See, e.g., Urs col. 10, 11.
39--44).
Therefore, we find a preponderance of the evidence supports
Appellants' contention:
Figure 5 ofUrs and the associated description fails to disclose or
suggest anything about values indicative of at least a relative time
at which the frequency allocation change at which the subsequent
communications are to be made shall occur.
(App. Br. 18).
Accordingly, we do not sustain the Examiner's rejection of dependent
claim 5.
Anticipation Rejection A of Dependent Claim 18
Claim 18 recites: "The method of claim 17 further comprising the
additional operation of selecting one of the first frequency selection and the
second frequency selection at which to perform the subsequent
communications."
Appellants contend:
The Final Office Action alleges that Urs discloses this feature in
Figure 8 at blocks 805 and 809. However, Figure 8 of Urs
illustrates a method of combining frequency allocations in a
radio device. Urs discloses that at block 805, when a FDM
scheme is to be used, the radio frequency device is programmed
to simultaneously receive and/or transmit a different signal in
each frequency allocation. Urs discloses that at block 809, when
a TDM scheme is to be used, the radio frequency device is
programmed to receive and/or transmit a different signal
occupying the frequency allocations identified at step 801. See,
e.g., Urs, col. 8, lines 59-63, col. 9, lines 18-30. As such, Urs
discloses how the allocations are programmed for use in a device
(e.g., a base station radio) based on the type of modulation
scheme selected and fails to disclose or suggest selecting one of
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the first frequency selection and the second frequency selection
at which to perform the subsequent communications.
(App. Br. 20-21 ).
The Examiner disagrees: "Urs et al discloses in Fig. 8, different mode
of operations. Regardless of the mode of operation, multiple frequency
allocations are assigned to be used by the mobile terminal to perform
communications." Ans. 11.
Because claim 18 merely requires selection of one frequency
selection, on this record we are not persuaded the Examiner erred. See Urs,
Fig. 8 (809 and/or 805). Therefore, we sustain the Examiner's anticipation
rejection A of claim 18.
Rejection B of Dependent Claim 11 under 35 U.S. C. § 103 (a)
Appellants contend "Urs fails to disclose or suggest a WLAN or IEEE
802.11 environment and actually teaches away from such." (App. Br. 19).
In support, Appellants note:
Urs discloses that base radio (BR) 301 at the base site 101 is
capable of receiving and/or transmitting a signal for each
communication unit on each different frequency allocation 303,
305, and 307. See, e.g., Urs, col. 6, lines 28-47. As such, Urs
clearly teaches that different frequency allocations are used for
the different communication units and that different signals on
these different frequency allocations are transmitted
simultaneously. This is contrary to the functionality of a WLAN
or IEEE 802 .11 wherein the same frequency channel is used by
all stations associates to the access point and stations may
transmit one at a time after contending for channel access and
winning. Therefore, it would not be possible to apply the
teachings of Urs to a WLAN or IEEE 802.11 environments. As
such, Urs fails to disclose a WLAN or operating pursuant to
IEEE 802.11, it would not be obvious to use the teachings of Urs
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for WLAN or IEEE 802 .11, and Urs further teaches away from
the use of WLAN and IEEE 802 .11.
(App. Br. 19-20).
The Examiner disagrees:
Urs et al discloses a multiple frequency allocation device (Fig.
9). Urs et al does not disclose that the station is configured to
operate within a WLAN system generally operable pursuant to
an IEEE 802.11 standard. However, WLAN s operate according
to [the] IEEE 802.11 standard are well known in the art.
Therefore, it would have been obvious to one having ordinary
skilled in the art at the time the invention was made to include
802.11 WLANs in Urs's system, to extend dynamic frequency
allocations to multiple wireless networks.
(Ans. 11, emphasis added).
The Examiner may take notice of facts or common knowledge in the
art which are capable of such instant and unquestionable demonstration as to
defy dispute. In re Ahlert, 424 F.2d 1088, 1091(CCPA1970). We note that
to adequately traverse the Examiner's finding, Appellants must specifically
point out the supposed errors in the Examiner's action, which would include
stating why the noticed fact is not considered to be common knowledge or
well-known in the art. See MPEP § 2144.03.
Here, we find no statement in Appellants' Briefs that the functionality
of a WLAN or IEEE 802.11 (claim 11) was not well known in the art at the
time of Appellants' invention.
Moreover, the "mere disclosure of alternative designs does not teach
away." In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (internal
quotation and citation omitted). A "teaching away" requires a reference to
actually criticize, discredit, or otherwise discourage the claimed solution. In
re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
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Here, Appellants have not shown where Urs actually criticizes,
discredits, or otherwise discourages other communication architectures or
protocols, such as WLAN or IEEE 802.11 (claim 11 ). "[J]ust because better
alten1atives exist in the prior art does not mean that an inferior combination
is inapt for obviousness purposes." S'ee l'vfouttet, 686 F.3d at 1334.
Accordingly, because Appellants have not persuaded us the Examiner
erred, we sustain the Examiner's rejection of claim 11 as being obvious over
the combination ofUrs and official notice.
Rejection C of Dependent Claims 22, 23, 25, and 26
under 35 U.S.C. § 103(a)
Appellants submit that the secondary Dick reference does not cure the
deficiencies of Urs, as previously discussed. (App. Br. 21 ). Because we
find no deficiencies regarding rejection A of independent claim 1, we are not
persuaded the Examiner erred regarding the claims rejected under rejection
C. Arguments not made are considered \vaived. See 37 C.F.R.
§ 41.37(c)(l)(iv). Therefore, we sustain rejection C of claims 22, 23, 25,
and 26.
Conclusion
For at least the aforementioned reasons, on this record, we find a
preponderance of the evidence supports the Examiner's finding of
anticipation for all claims rejected under rejection A, except claim 5
(reversed for the reasons given above). Likewise, we find a preponderance
of the evidence supports the Examiner's underlying factual findings and
ultimate legal conclusion of obviousness for all claims rejected under
§ 103 rejections B and C.
17
Appeal2014-008141
Application 10/968,248
DECISION
We reverse the Examiner's rejection of claim 5 under§ 102(e).
We affirm the Examiner's rejection of claims 1--4, 10, 12-21, 24, 27,
and 28 under § 102( e ).
We affirm the Examiner's rejections of claims 11, 22, 23, 25, and 26
under§ 103(a).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 41.50(±).
AFFIRMED-IN-PART
18