Ex Parte Law

Patent Trial and Appeal Board

Jun 28, 2016

12312260 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/312,260 05/03/2010
20995 7590 06/30/2016
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
FIRST NAMED INVENTOR
Alan Law
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.
VFN.OllAPC 9157
EXAMINER
TRANDAI, CINDY HUYEN
ART UNIT PAPER NUMBER
2647
NOTIFICATION DATE DELIVERY MODE
06/30/2016 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):
j ayna.cartee@knobbe.com
efiling@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALAN LAW
Appeal2014-007691
Application 12/312,2601
Technology Center 2600
Before JOSEPH L. DIXON, LARRY J. HUME, and
JOHN D. HAMANN, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-3, 6-8, 10-13, 15-18, 23-26, 28, 29, 32-34, 37-39,
and 41--45. Appellant has previously canceled claims 4, 5, 9, 14, 19-22, 27,
30, 31, 35, 36, and 40. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is Vodafone Group PLC.
App. Br. 2.
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Application 12/312,260
STATEMENT OF THE CASE2
The Invention
Appellant's claimed "invention relates to mobile telecommunications
systems and methods ... [which] enable radio telecommunication between a
user on a mobile platform such as an aircraft and a terrestrial location."
Spec. 1, 11. 4--7.
Exemplary Claims
Claims 1, 37, and 43, reproduced below, are representative of the
subject matter on appeal (emphases added to contested limitations):
1. A telecommunications system for establishing a
wireless radiation link between any one or more of a plurality
of user terminals movable in aerospace and any one or more of
a plurality of terrestrially based transceiving stations,
compnsmg:
at least one antenna arrangement for producing a
radiation beam for providing the link; and
a control unit operative in response to an altitude of a
user terminal in aerospace to adjust at least one of a size and a
shape of the beam in dependence on a change in the altitude of
the user terminal so as to maintain a desired footprint of the
beam to cover a particular geographical area on the ground.
37. The system according to claim 1, wherein the
desired footprint of the beam is defined so that signals from the
at least one antenna arrangement are only received by a
restricted number of terrestrially based transceiving stations.
2 Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed
Jan. 27, 2014); Reply Brief ("Reply Br.," filed July 1, 2014); Examiner's
Answer ("Ans.," mailed May 1, 2014); Final Office Action ("Final Act.,"
mailed July 8, 2013); and the original Specification ("Spec.," filed
May 1, 2009).
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43. The system according to claim 1, wherein the
desired footprint of the beam is maintained to cover at least two
of the terrestrially based transceiving stations in the particular
geographical area on the ground.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
de La Chapelle et al.
("Chapelle")
Ma et al. ("Ma")
US 2006/0229070 Al
US 2007/0161347 Al
Rejection on Appeal3
Oct. 12, 2006
July 12, 2007
Claims 1-3, 6-8, 10-13, 15-18, 23-26, 28, 29, 32-34, 37-39, and 41-
45 stand rejected under 35 U.S.C. § 103(a) as being obvious over the
combination of Chapelle and Ma. Final Act. 2; Ans. 2.
CLAIM GROUPING
Based on Appellant's arguments (App. Br. 9-15), we decide the
appeal of the obviousness rejection of claims 1-3, 6-8, 10-13, 15-18, 23-
26, 28, 29, 32-34, 38, 39, and 42 (Group I) on the basis of representative
claim 1; we decide the appeal of the obviousness rejection of claims 37
and 41 (Group II) on the basis of representative claim 37; and we decide the
appeal of the obviousness rejection of claims 43--45 (Group III) on the basis
of representative claim 43.
3 We note the Examiner omitted claims 43--45 from the explicit statement of
the rejection (Final Act. 2), but addressed these claims in the detailed
rejection. The Examiner clarified the explicit statement of the rejection in
the Answer to include these claims. Ans. 2.
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Application 12/312,260
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. We do not consider arguments that
Appellant could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellant's arguments with respect to claims 1-3,
6-8, 10-13, 15-18,23-26,28,29,32-34,37-39,and41--45,andwe
incorporate herein and adopt as our own: ( 1) the findings and reasons set
forth by the Examiner in the action from which this appeal is taken, and
(2) the reasons and rebuttals set forth in the Examiner's Answer in response
to Appellant's arguments. We incorporate such findings, reasons, and
rebuttals herein by reference unless otherwise noted. However, we highlight
and address specific findings and arguments regarding claims 1, 37, and 43
for emphasis as follows.
1. § 103 Rejection of Claims 1-3, 6-8, 10-13, 15-18, 23-26, 28, 29,
32-34, 38, 39, and 42 (Group I)
Issue 1
Appellant argues (App. Br. 9-13; Reply Br. 3-5) the Examiner's
rejection of claim 1under35 U.S.C. § 103(a) as being obvious over the
combination of Chapelle and Ma is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a telecommunications system that includes, inter alia,
a control unit operative in response to an altitude of a user
terminal in aerospace to adjust at least one of: a size and a
shape of the beam in dependence on a change in the altitude of
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the user terminal so as to maintain a desired footprint of the
beam to cover a particular geographical area on the ground,
as recited in claim 1?
Analysis
Appellant contends the Examiner erred in combining Chapelle with
Ma because "Ma discloses an approach which provides corrections for the
Doppler shift or effect ... [which] is, of course, the phenomenon relating to
the change in frequency of a wave for an observer moving relative to its
source," and Ma applies a frequency offset and a path delay compensation in
response to the Doppler effect which "do not disclose, and are not analogous
to, adjustment in relation to geographic area in order to maintain a desired
beam footprint on the ground." App. Br. 10-11. Appellant further argues
Ma's techniques involve relative signal frequency or timing to account for
the Doppler Effect, which "provides no teaching at all concerning
maintaining a beam footprint. Changing frequency of a signal has nothing to
do with maintaining an area over which a beam is received." App. Br. 11.
Appellant further argues:
One of ordinary skill in the art is not provided any instructions
as to maintaining a beam footprint over a geographical area on
the ground in dependence upon altitude change of an aircraft
based on teachings like that of Ma addressing changing
frequency of a beam to account for Doppler shift based on the
motion of the aircraft in flight.
Id. Appellant concludes his argument by contending the Examiner
either misunderstood or mischaracterized Ma's disclosure, which is not being
properly used in the rejection because "[t]he physical principles discussed in
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Application 12/312,260
Ma are not relevant to or disclos[ e] Appellant's recited features." App.
Br. 12.
In response, the Examiner finds, and we agree:
[Chapelle teaches] "adjustment of an aircraft antenna to
maintain a desired footprint of the beam to cover a particular
geographical area on the ground". Ma['s] teaching is
incorporated into [Chapelle] just [to] show more evidence on
"adjustment of an aircraft antenna to maintain a desired
footprint of the beam to cover a particular geographical area on
the ground" as follow[s], Ma teaches a directional antenna
l 80a at the belly of the aircraft 110 [which] may form two or
more independent beams to cover first and second base stations
115(1, m) located on the ground 122 over a desired
geographical area and the mobile station 105 on board the
aircraft 110 (Fig. 1 and Pars. 34-38 and 51). Thus, [Chapelle]
alone or in combination with Ma teach[ es] the limitation
"adjustment of an aircraft antenna to maintain a desired
footprint of the beam to cover a particular geographical area on
the ground" of claim 1 as well as claim[s] 15 and 28.
Ans. 4 (emphasis added).
We agree with the Examiner because nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see In re Keller, 642 F.2d
413, 426 (CCPA 1981) (finding "one cannot shownonobviousness by
attacking references individually where, as here, the rejections are based on
combinations of references" (citations omitted)). Additionally, "the
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results." KSR Int'! Co.
v. Teleflex, Inc., 550 U.S. 398, 416 (2007). Furthermore, the artisan is not
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Application 12/312,260
compelled to blindly follow the teaching of one prior art reference over the
other without the exercise of independent judgment. See Lear Siegler, Inc.
v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984).
Moreover, Appellant has not demonstrated that the Examiner's
proffered combination of references would have been "uniquely challenging
or difficult for one of ordinary skill in the art." See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418). Nor has Appellant provided objective evidence of secondary
considerations which our reviewing court guides "operates as a beneficial
check on hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese and Powder
Sys., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
In the Reply Brief, Appellant argues "in Chappelle [sic], no footprint
of a beam is being maintained to cover a particular geographical area on the
ground in dependence on a change of altitude," Reply Br. 3, and "[Chapelle]
is disclosing independently adjustable lobes in which one lobe is fixed on
one BTS station in which one lobe is continuously scanning about a
predetermined arc for another BTS station." Reply Br. 4. We do not find
these arguments persuasive.
We are not persuaded because, Chapelle, as relied upon by the
Examiner (Final Act. 2-3; Ans. 3), discusses the functional dependence of
the aircraft antenna controller on altitude:
With further reference to FIG. 1, the BTS look-up position table
26 includes stored data relating to the locations (latitude and
longitude) of all of the BTS sites in the cellular network. The
aircraft navigation subsystem 18 provides information on the
position of the aircraft 12 (latitude, longitude and altitude), as
well as attitude information (i.e., pitch, roll and heading).
Alternatively, the ART 10 may comprise its own geolocation
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and attitude sensors. In either implementation, the locations of
the network BTSs, as well as the location and attitude of the
aircraft 12, are provided to the antenna controller 24. From
this information, the antenna controller 24 calculates the
antenna pointing angles needed to accurately point the lobe (or
lobes) of the beam from antenna system 32 at the target BTS
(or BTSs) within the cellular network.
Chapelle i-f 37 (emphasis added).
Appellant further argues, "Chappelle [sic] is disclosing independently
adjustable lobes in which one lobe is fixed on one BTS station in which one
lobe is continuously scanning about a predetermined arc for another BTS
station." Reply Br. 4. We note Appellant's argument is not persuasive
because the breadth of claim 1 does not preclude such a teaching. Moreover,
" [A ]ppellant's arguments fail from the outset because ... they are not based
on limitations appearing in the claims." See In re Self, 671F.2d1344, 1348
(CCPA 1982). Appellant further renews his argument against the teachings
and suggestions of Ma by alleging that Ma's emphasis on countering the
Doppler Effect "provides no teaching at all concerning maintaining a beam
footprint on the ground [because c]hanging frequency of a signal has nothing
to do with maintaining an area over which a beam is received." Reply
Br. 4-5.
In the present case, the Examiner found that the proposed combination
would have resulted in using Chapelle in combination with Ma for the
reasons, and in the manner previously stated. See Final Act. 2--4; Ans. 4.
We find this articulated rationale to be sufficient to justify the combination,
and we incorporate the Examiner's factual findings and legal conclusions
herein as our own.
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Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 1, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 1, and grouped
claims 2-3, 6-8, 10-13, 15-18, 23-26, 28, 29, 32-34, 38, 39, and 42, which
fall therewith. See Claim Grouping, supra.
2. § 103 Rejection of Claims 37 and 41 (Group II)
Issue 2
Appellant argues (App. Br. 13-14; Reply Br. 5---6) the Examiner's
rejection of claim 37 under 35 U.S.C. § 103(a) as being obvious over the
combination of Chapelle and Ma is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests the system of claim 1, "wherein the desired footprint of the beam
is defined so that signals from the at least one antenna arrangement are only
received by a restricted number of terrestrially based transceiving stations,"
as recited in claim 37?
Analysis
Appellant contends:
[Claims 3 7 and 41] recite that the desired footprint of the beam
is defined so that signals from the at least one antenna
arrangement are only received by a restricted number of
terrestrially based transceiving stations. That is, as discussed
by Appellant in the specification, the antenna arrangement
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emits radiation with a particular beam size and shape, thus
providing a beam footprint of specific size on the earth. Thus,
the footprint will cover a particular geographical area on the
ground. If the area of this footprint is so large that it
encompasses a significant number of the base stations, then it is
unlikely that the system will operate satisfactorily-because a
significant number of the base stations will receive signals from
the aircraft of substantially the same strength and it is unlikely
that any one of the base stations would be able to establish a
proper communications link with the base station in the aircraft.
App. Br. 13.
We find Appellant's Specification merely discusses:
It is therefore highly desirable that the radio beam from the 25
antenna arrangement 26 should have a suitably defined
footprint so that signals are only received by a restricted
number of the base stations 24. In some circumstances, the
footprint should be such that the signals are received only by a
single base station. More usually, though, the beam footprint
should be such that the radio signals are received by more than
one, preferably two, of the base stations as the aircraft moves
through the air.
Spec. 7, 11. 24--30.
We note Appellant has not cited to an explicit definition of "restricted
number" in the Specification that would preclude the Examiner's broader
reading. 4 Final Act. 10 (citing Chapelle i-f 12); Ans. 4--5 (citing Chapelle
i-fi-136-37, and Fig. 1).
4 Any special meaning assigned to a term "must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention." Multiform
Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
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Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 37, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of dependent claim 37, and grouped
claim 41, which falls therewith. See Claim Grouping, supra.
3. § 103 Rejection of Claims 43--45 (Group III)
Issue 3
Appellant argues (App. Br. 14--15; Reply Br. 5---6) the Examiner's
rejection of claim 43 under 35 U.S.C. § 103(a) as being obvious over the
combination of Chapelle and Ma is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests the system of claim 1, "wherein the desired footprint of the beam
is maintained to cover at least two of the terrestrially based transceiving
stations in the particular geographical area on the ground," as recited in
claim 43?
Analysis
"Appellant respectfully submits that Appellant's features, as discussed
[on Appeal Brief page 14], are not disclosed by the cited prior art,
particularly given the features by the Examiner as missing from Chappelle
[sic] and the above-noted discussions of the Ma reference with respect to
meaning; however, a patentee must clearly express that intent in the written
description.").
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Doppler shift offsets that are not relevant to Appellant's recited features."
App. Br. 14--15.
We disagree with Appellant for the reasons set forth by the Examiner,
which we incorporate herein and adopt as our own. See Final Act. 11 (citing
Chapelle i-fi-139--44, Fig. 1); Ans. 5 (citing Chapelle i-fi-136-37, Fig. 1).
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 43, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of dependent claim 43, and grouped
claims 44--45, which falls therewith. See Claim Grouping, supra.
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 3---6) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellant has not shown.
CONCLUSION
The Examiner did not err with respect to the obviousness rejection of
claims 1-3, 6-8, 10-13, 15-18, 23-26, 28, 29, 32-34, 37-39, and 41--45
under 35 U.S.C. § 103(a) over the cited prior art combination of record, and
we sustain the rejection.
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DECISION
We affirm the Examiner's decision rejecting claims 1-3, 6-8, 10-13,
15-18, 23-26, 28, 29, 32-34, 37-39, and 41--45.
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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