Ex Parte Laux et al

Board of Patent Appeals and Interferences

Nov 10, 2009

10293776 (B.P.A.I. Nov. 10, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CARLOS V. LAUX,
KAMALDIP TOOR, MARCIO G. de SIQUEIRA,
SUDHAKAR S. VALLURU, and STEVEN HAYASHI
_____________

Appeal 2009-003048
Application 10/293,776
Technology Center 2600
____________

Decided: November 10, 2009
____________

Before KENNETH W. HAIRSTON, JOSEPH F. RUGGIERO, and
MAHSHID D. SAADAT, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s final
rejection of claims 1 to 9, 11 to 21, 23 to 30, 32, and 33. Claims 10, 22, and
31 are objected to by the Examiner as being dependent upon corresponding
base claims, but would be allowable if rewritten in independent form
including all of the limitations of the corresponding base claims (Ans. 2).
We have jurisdiction under 35 U.S.C. § 6(b).
We will not sustain the written description rejection under 35 U.S.C.
§ 112, first paragraph, and we will sustain the remaining obviousness
rejections under 35 U.S.C. § 103. Accordingly, we AFFIRM-IN-PART.
Appellants’ invention is concerned with a method and apparatus for
classifying channels in a communications system to support mobility (i.e.,
moving from one wireless zone of a network to another) (Spec. 1:2-4, 2:2-6;
Figs. 1 and 2). Appellants’ claimed invention is directed to a method, logic
encoded media, system, and apparatus for (i) identifying plural
communications channels at a wireless device, (ii) classifying each of the
channels into one of four groups of channels (hereinafter, “the classifying
step”), (iii) scanning the channel groups, with two of the groups being
scanned a different number of times, and (iv) updating at least one group
based on the scans (claims 1, 14, 23, and 33; Spec. 3:4-4:2).
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A method comprising:

identifying a plurality of communication channels at a wireless
device;

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classifying each of the communication channels into one of a plurality
of groups, the plurality of groups comprising one or more of a first group of
valid channels, a second group of potential channels, a third group of
overlap channels, or a fourth group of incompatible channels;

scanning the communication channels in the groups, wherein the
frequency of performance of scans of the communication channels in at least
one of the groups is different than the frequency of performance of scans of
the communication channels in at least one other of the groups; and

updating one or more of the groups based on the scans.

The Examiner relies upon the following as evidence of
unpatentability:
Nagashima US 5,363,428 Nov. 8, 1994
Pinard US 5,815,811 Sep. 29, 1998
Dent US 6,205,334 B1 Mar. 20, 2001
Tiedemann, Jr. US 6,216,004 B1 Apr. 10, 2001

The following rejections are before us for review:
(i) The Examiner rejected claims 14 to 22 under 35 U.S.C. § 112, first
paragraph, as failing to provide adequate written description of the claimed
invention.1 The Examiner finds that the claim limitation, “Logic encoded in
one or more tangible media for execution” found in independent claim 14,
was not described in the Specification so as to reasonably convey to one
skilled in the art that the inventor had possession of the claimed invention

1 The Examiner mistakenly includes claim 22 in the statement of the § 112,
first paragraph rejection, because (i) claim 22 has been indicated as
allowable if rewritten (Ans. 2), and (ii) the Examiner “agrees that the cited
portions in Appellant[s’][sic] arguments adequately teach logic encoded in
one or more tangible media for execution” (Ans. 8), thus conceding that the
rejection is in error. We note that Appellants appeal as to claim 22 in their
Brief (see App. Br. 1, 5, 15, and 16), but do not make such appeal in their
Reply Brief (see Reply Br. 1).
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(Ans. 3). Although the Examiner did not withdraw the written description
rejection in the Answer, the Examiner agrees with Appellants’ arguments
that the Specification supports the claimed limitation (Ans. 8).
(ii) Claims 1 to 4, 6 to 9, 13 to 16, 18, 19, 23 to 25, 27, 28, 32, and 33
stand rejected under 35 U.S.C. § 103(a) as unpatentable over Nagashima and
Pinard.2
(iii) Claims 5, 11, 12, 17, 20, 21, 26, 29, and 30 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Nagashima and Pinard, further in
view of Tiedemann, Jr.
(iv) Claims 1 to 4, 6 to 9, 13 to 16, 18, 19, 23 to 25, 27, 28, 32, and 33
stand rejected under 35 U.S.C. § 103(a) as unpatentable over Nagashima and
Dent.3

2 We note that Appellants’ Brief states that the appeal includes all of the
finally rejected claims 1 to 33 (App. Br. 5, 16, and 19), but that only claim 1
is argued on appeal since (i) independent claims 14, 23, and 33 recite
limitations similar to those of claim 1 (App. Br. 17), and (ii) claims 2 to 9,
11 to 13, 15 to 21, 24 to 30, and 32 depend from respective ones of claims 1,
14, and 23 (App. Br. 19; Reply Br. 4). Appellants primarily rely upon the
arguments on the merits of the obviousness rejection of claim 1 in their
Briefs (see App. Br. 17-19; Reply Br. 2-4).

3 Because Appellants have failed to present any argument with regard to the
obviousness rejections applying Nagashima and Dent, or Nagashima, Dent,
and Tiedemann, Jr. under § 103, there is no issue before us for review as to
these rejections. See 37 C.F.R. § 41.37(c)(1)(vii) (requiring a statement in
the briefs as to each ground of rejection presented by Appellants for review);
and see 37 C.F.R. § 41.37(c)(1)(vii) (stating that arguments not presented in
the briefs by Appellants will be refused consideration).

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(v) Claims 5, 11, 12, 17, 20, 21, 26, 29, and 30 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Nagashima and Dent, further in view
of Tiedemann, Jr.4
In all of the obviousness rejections (see rejections (ii) through (v)
supra), the Examiner relies upon Nagashima as disclosing the classifying
step recited in all independent claims 1, 14, 23, and 33 (Ans. 4-7). More
specifically, the Examiner finds that Nagashima inherently discloses
classification of channels into a group of valid or potential channels (Ans.
4).
We agree with Appellants that claim 1 is representative of the group
of independent claims on appeal (claims 1, 14, 23, and 33). Accordingly, we
consider claim 1 representative of claims 1 to 4, 6 to 9, 13 to 16, 18, 19, 23
to 25, 27, 28, 32, and 33 which stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Nagashima and Pinard. The obviousness rejection of
claims 5, 11, 12, 17, 20, 21, 26, 29, and 30 over Nagashima, Pinard, and
Tiedemann, Jr. will fall with claim 1 because (i) the dependent claims
contain the limitations of the respective independent claims upon which they
ultimately depend, and (ii) Appellants rely on the arguments as to claim 1
for the patentability of the dependent claims (see App. Br. 19; Reply Br. 4).
Appellants do not present any arguments or request review of the
obviousness rejections (iv) and (v) listed supra. Arguments not made by
Appellants in the Brief are considered waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).

4 See supra, n.3.
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ISSUES
Written Description
Appellants argue with respect to the written description rejection of
claims 14 to 22 (App. Br. 16), that the processor 212 (Figs. 2 and 11) as
described in the Specification at page 13, line 24 to page 14, line 10 and
page 26, line 19 to page 28, line 18 adequately supports the logic encoded in
one or more tangible media for execution set forth in claims 14 to 22.
Based on Appellants’ arguments, the written description issue is:
Have Appellants adequately demonstrated that the Examiner erred in
determining that the originally filed Specification did not reasonably convey
to one of ordinary skill in the art that Appellants had possession of the claim
limitation, “Logic encoded in one or more tangible media for execution?”
Obviousness
Appellants argue inter alia with respect to the obviousness rejections
(App. Br. 17-19; Reply Br. 2-4) that Nagashima fails to disclose or suggest
the classifying step of claim 1. More specifically, Appellants contend that
Nagashima (i) only teaches organizing channels in groups to avoid
intermodulation (App. Br. 18), (ii) fails to teach the four specific groups
recited in claim 1 (App. Br. 18), (iii) does not indicate that the channels can
be considered as groups one through four as claimed (App. Br. 18-19; Reply
Br. 2-4), and (iv) never discloses that the channels are valid or potential, nor
is such inherent (Reply Br. 3).
Based on Appellants’ arguments, the obviousness issue is: Have
Appellants adequately demonstrated that the Examiner erred by determining
that Nagashima discloses or suggests “classifying each of the
communication channels into one of a plurality of groups, the plurality of
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groups comprising one or more of a first group of valid channels, a second
group of potential channels, a third group of overlap channels, or a fourth
group of incompatible channels,” as set forth in claim 1?

FINDINGS OF FACT
1. As indicated supra, Appellants describe and claim a method (Fig. 11)
and apparatus (Fig. 2) for classifying channels 112 in a
communications system to support mobility (Spec. 1:2-4, 2:2-6; Figs.
1 and 2). Appellants’ claimed invention is directed to a method (Fig.
11), logic encoded media (Figs. 2 and 11), system (Fig. 1), and
apparatus (Fig. 2) for (i) identifying plural communications channels
112 at a wireless device 110 (step 1102), (ii) classifying each of the
channels 112 into one of four groups of channels (see Fig. 7; step
1104), (iii) scanning the channel groups, with two of the groups being
scanned a different number of times (step 1106), and (iv) updating at
least one group based on the scans (claims 1, 14, 23, and 33; Spec.
3:4-4:2).
2. Appellants disclose the classification of channels 112 into four
different categories as follows:
Wireless device 110 may also classify the channels
112 into different categories. Example categories may
include valid channels 112 that could be used by wireless
device 110, potentially valid channels 112 that are
currently out of range of wireless device 110, channels
112 that overlap with each other or with a valid channel,
and incompatible channels 112 that cannot be used. A
channel 112 could be incompatible because the access
point 102 supporting the channel 112 uses a different
Service Set Identifier (SSID) or a different authentication
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type than the wireless device 110. Example
authentication types could include LEAP and OPEN
authentication types. A channel 112 could be valid
because the access point 102 supporting the channel 112
uses the same SSID and authentication type as the
wireless device 110 and has an acceptable signal
strength. A channel 112 could be
potentially valid when it uses the same SSID and
authentication type, does not overlap with another valid
or potentially valid channel 112, and has an acceptable
signal strength, but no response was received when
wireless device 110 probed the channel 112.

(Spec. 10:26-11:8 (emphasis added)).
3. Appellants describe the operation of processor 212 as follows:
Processor 212 represents one or more processors,
programmed logic devices, or other suitable processing
equipment for managing the operation of wireless device
110. Memory 214 may store information used by
processor 212, such as instructions executed by processor
212 and data processed by processor 212. Memory 214
may represent any suitable device or devices for storing
information using any of a variety of data structures,
arrangements, or compilations.
In one aspect of operation, processor 212 may
monitor one or more characteristics associated with a
communication session. For example, processor 212
may identify the load on a channel 112 used by wireless
device 110 and the strength of a signal received from
access point 102. Based on these measurements,
processor 212 could adjust the operational parameters of
wireless device 110. For example, processor 212 could
increase or decrease the transmission rate or transmission
power of wireless device 110.
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In another aspect of operation, processor 212 may
scan and classify different communication channels 112.
Processor 212 may also update the status of the channels
112 by performing additional scans of the channels 112.
The interval between scans of a particular channel 112
may vary depending on how processor 212 classifies the
channel 112. If wireless device 110 needs to begin
communicating with another access point 102, processor
212 may select another communication channel 212 and
attempt to use that channel 112.
(Spec. 13:24-14:10).

4. Nagashima describes a method (Figs. 4-6, 7A, and 7B) and apparatus
(Figs. 1 and 2) for classifying channels (e.g., channel #1, #2, and #3,
etc.) in a communications system (Fig. 1) to support mobility
(Abstract; col. 1, ll. 33-39). Nagashima describes a central controller
13 and channel controller 16 for (i) identifying plural communications
channels at a wireless device (Fig. 2, base unit 2-i), and (ii) classifying
each of the channels into one of a plurality of groups of channels (see
Fig. 3; group #1, group #2, etc.) (see col. 1, l. 33 to col. 4, l. 39; col. 3,
l. 55 to col. 4, l. 59).
5. Nagashima’s method includes organizing and classifying the channels
into a plurality of channel groups (col. 1, ll. 33-43). The method
classifies the channels into groups based on a busy/idle state of the
channel and a measured field intensity of each channel (col. 1, ll. 55-
61; col. 2, ll. 5-13). Nagashima describes that such a classification
process avoids intermodulation products between channels, as well as
interference between adjacent service zones (see col. 1, ll. 39-43; col.
4, ll. 24-28).
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6. Nagashima describes the classification of channels as follows:
. . . and each channel is classified as representing a first
possible state of the channel if the retrieved status bit
indicates a busy state. The field intensity of each channel
is measured if the retrieved status bit of the channel
indicates an idle state, and this channel is classified as
representing a second possible state if the measured
intensity the channel is lower than a specified value or a
third possible state (a busy state of a channel of a group
not currently assigned to the base unit) if the measured
intensity is higher than the specified value.

(Col. 2, ll. 20-29 (emphasis added)).

PRINCIPLES OF LAW
Written Description
The test for satisfying the written description requirement is “whether
the disclosure of the application relied upon ‘reasonably conveys to the
artisan that the inventor had possession at that time of the later claimed
subject matter.’” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed.
Cir. 1991) (quoting Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570,
1575 (Fed. Cir. 1985). “One shows that one is ‘in possession’ of the
invention by describing the invention, with all its claimed limitations, not
that which makes it obvious. . . . One does that by such descriptive means as
words, structures, figures, diagrams, formulas, etc., that fully set forth the
claimed invention.” Lockwood v. American Airlines, Inc., 107 F.3d 1565,
1572 (Fed. Cir. 1997) (citation and parenthetical quotation omitted).

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Obviousness
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). The
Examiner’s articulated reasoning in the rejection must possess a rational
underpinning to support the legal conclusion of obviousness. In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006).
The Examiner bears the initial burden of presenting a prima facie case
of obviousness, and Appellants have the burden of presenting a rebuttal to
the 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 Kahn, 441 F.3d at 985-86.

ANALYSIS
Written Description
We agree with Appellants (App. Br. 16), and the Examiner (Ans. 8),
that Figures 2 and 11 taken with page 13, line 24 to page 14, line 10 and
page 29, line 19 to page 28, line 18 of the Specification supports the
limitation of claim 14 of, “Logic encoded in one or more tangible media for
execution” (see FF 3). The logic or program instructions (see flowchart of
Fig. 11) are part of the processor 212 (Fig. 2) and their operation are
adequately disclosed in the Specification (FF 3).
The original disclosure, including its claims, structure, and drawings,
fully sets forth or reasonably conveys to the ordinary artisan that Appellants
had possession of the claimed limitation, “Logic encoded in one or more
tangible media for execution” at the time of filing. See Lockwood, 107 F.3d
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at 1572; Vas-Cath, 935 F.2d at 1563 (internal citations omitted). Appellants
have adequately demonstrated that the Examiner erred in determining that
the originally filed Specification did not reasonably convey to one of
ordinary skill in the art that Appellants had possession of the claim
limitation, “Logic encoded in one or more tangible media for execution,”
found in representative claim 14. The same holds true for dependent claims
15 to 22 on appeal because they include the noted limitation.
We will not sustain the decision of the Examiner rejecting claims 14
to 22 under 35 U.S.C. § 112, first paragraph.
Obviousness
With respect to the obviousness rejections based at least in part on the
applied reference to Dent (see rejections (iv) and (v) listed supra),
Appellants have not particularly pointed out errors in the Examiner’s
reasoning to persuasively rebut the Examiner's prima facie case of
obviousness. Accordingly, we hereby sustain the Examiner’s rejections of
(i) claims 1 to 4, 6 to 9, 13 to 16, 18, 19, 23 to 25, 27, 28, 32, and 33 as
being obvious under 35 U.S.C. § 103(a) over Nagashima and Dent, and (ii)
claims 5, 11, 12, 17, 20, 21, 26, 29, and 30 as being obvious under 35 U.S.C.
§ 103(a) over Nagashima, Dent, and Tiedemann, Jr. pro forma. See 37
C.F.R. § 41.37(c)(1)(vii) (requiring a statement in the briefs as to each
ground of rejection presented by Appellant for review); 37 C.F.R.
§ 41.37(c)(1)(vii) (stating that arguments not presented in the briefs by
Appellants will be refused consideration); see also supra note 3.
Turning now to the obviousness rejection of (i) claims 1 to 4, 6 to 9,
13 to 16, 18, 19, 23 to 25, 27, 28, 32, and 33 over Nagashima and Pinard,
and (ii) claims 5, 11, 12, 17, 20, 21, 26, 29, and 30 over Nagashima, Pinard,
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and Tiedemann, Jr., we agree with the Examiner’s findings of fact and
conclusions of obviousness with respect to claims 1, 14, 23, and 33 (Ans. 4-
6, 8-9), and adopt them as our own, along with some amplification of the
Examiner’s explanation of the teachings of Nagashima (see FF 4-6). See
Fine, 837 F.2d at 1073; Kahn, 441 F.3d at 988. We will sustain the
Examiner’s rejections of claims 1 to 9, 11 to 21, 23 to 30, 32, and 33 for the
reasons that follow.
As indicated supra (FF 4-6), Nagashima describes all of the elements
of claim 1 including the classifying step. Specifically, Nagashima describes
classifying channels by measuring the field intensity of each channel (FF 5,
6), and then assigning a group based on the measured intensity (FF 4, 5).
Notably, Appellants describe that the channel classification performed by
processor 212 is based at least in part on a determination of acceptable signal
strength (i.e., measured intensity meeting a specific value) (FF 2). In other
words, signal strength plays a role in the channel classification by both
Appellants and Nagashima.
We find that a proper construction of claim 1 requires the presence of
at least two groups of channels as a result of the requirement in the
paragraph following the classifying step which recites “at least one of the
groups” and “at least one other of the groups” (see claim 1). However, we
agree with the Examiner that Nagashima inherently discloses at least two
groups of channels (Ans. 4), including a first group of valid channels (e.g.,
channels with a measured field intensity higher than a specified value), and a
second group of potential channels (i.e., channels with a measured field
intensity not meeting a specified value) (see FF 6).

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The Examiner has provided articulated reasoning with a rational
underpinning to support the combination for the legal conclusion of
obviousness (Ans. 4-6, 8-9). See Kahn, 441 F.3d at 988. We agree with the
Examiner that Nagashima meets all of the classifying step limitations
broadly set forth in claims 1, 14, 23, and 33. Once the Examiner has
satisfied the burden of presenting a prima facie case of obviousness, the
burden then shifts to Appellants to present evidence and/or arguments that
persuasively rebut the Examiner's prima facie case. See Oetiker, 977 F.2d at
1445.
Appellants’ arguments (Reply Br. 3) that Nagashima fails to
inherently disclose a first group of valid channels and a second group of
potential channels are unpersuasive in light of our findings as to Nagashima
just discussed. Claim 1 does not define how a channel might be determined
to be valid or potential, and as such, claim 1 broadly encompasses the
channel groups of Nagashima which are classified according to measured
intensity (see FF 6).
Appellants’ arguments (App. Br. 18-19; Reply Br. 2-4) that
Nagashima fails to indicate that the channels can be considered as groups
one through four as set forth in claim 1 are unpersuasive in light of the
recitation of the four groups in the alternative (i.e., using an “or”), and our
determination that claim 1 only requires the presence of two groups,
discussed supra.
Appellants’ contentions (App. Br. 18) that Nagashima only teaches
organizing channels in groups to avoid intermodulation are unconvincing
inasmuch as (i) they are not commensurate with what is claimed (i.e., claim
1 does not preclude classifying channels to avoid intermodulation), and (ii)
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Nagashima’s avoidance of “intermodulation products” (see FF 5) is
conceptually similar to Appellants’ determination of channel “overlap” (see
FF 2).
In view of the foregoing, Appellants have not shown that the
Examiner erred in finding that Nagashima discloses or suggests “classifying
each of the communication channels into one of a plurality of groups, the
plurality of groups comprising one or more of a first group of valid channels,
a second group of potential channels, a third group of overlap channels, or a
fourth group of incompatible channels,” as set forth in claim 1.
Accordingly, we will sustain the obviousness rejection of claim 1 based
upon the teachings of Nagashima and Pinard. The same holds true for
claims 14, 23, and 33 which were argued with claim 1 (App. Br. 17, 19;
Reply Br. 4). The obviousness rejections of claims 2 to 9, 11 to 13, 15 to 21,
24 to 30, 32, and 33 are sustained because (i) Appellants have not presented
any patentability arguments for these claims apart from the arguments
presented for claims 1, 14, 23, and 33, and (ii) the dependent claims contain
the salient limitations of the respective independent claims upon which they
ultimately depend.

CONCLUSIONS OF LAW
Appellants have adequately demonstrated that the Examiner erred in
determining that the originally filed Specification did not reasonably convey
to one of ordinary skill in the art that Appellants had possession of the claim
limitation, “Logic encoded in one or more tangible media for execution.”
Appellants have not shown that the Examiner erred in finding that
Nagashima discloses or suggests “classifying each of the communication
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channels into one of a plurality of groups, the plurality of groups comprising
one or more of a first group of valid channels, a second group of potential
channels, a third group of overlap channels, or a fourth group of
incompatible channels,” as set forth in claim 1.
As indicated supra (see notes 3 and 4), Appellants have failed to
present any argument with regard to the obviousness rejections of (i) claims
1 to 4, 6 to 9, 13 to 16, 18, 19, 23 to 25, 27, 28, 32, and 33 (Nagashima and
Dent), and (ii) claims 5, 11, 12, 17, 20, 21, 26, 29, and 30 (Nagashima, Dent,
and Tiedemann, Jr.). As such, Appellants have not shown the Examiner
erred in rejecting these claims. See 37 C.F.R. § 41.37(c)(1)(vii).

ORDER
The decision of the Examiner rejecting claims 14 to 22 under 35
U.S.C. § 112, first paragraph is reversed.
The decision of the Examiner rejecting claims 1 to 9, 11 to 21, 23 to
30, 32, and 33 under 35 U.S.C. § 103 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).

AFFIRMED-IN-PART

KIS

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