Ex Parte Nagy

Patent Trial and Appeal Board

Jun 24, 2013

10755814 (P.T.A.B. Jun. 24, 2013)

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.
10/755,814 01/12/2004 Louis L. Nagy DP-309796 3138
7590 06/24/2013
STEFAN V. CHMIELEWSKI
DELPHI TECHNOLOGIES, INC.
Legal Staff MC CT10C
P.O. Box 9005
Kokomo, IN 46904-9005
EXAMINER
HUANG, WEN WU
ART UNIT PAPER NUMBER
2648
MAIL DATE DELIVERY MODE
06/24/2013 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 LOUIS L. NAGY
____________

Appeal 2010-011369
Application 10/755,814
Technology Center 2600
____________

Before THU A. DANG, JAMES R. HUGHES, and
GREGORY J. GONSALVES, Administrative Patent Judges.

GONSALVES, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-011369
Application 10/755,814

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 1-25 (App. Br. 2). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The Invention
Exemplary Claim 1 follows:
1. A self-structuring antenna system comprising:

a single, reconfigurable antenna comprising a plurality of
antenna elements and a plurality of switching elements arranged
with the antenna elements to when selectively closed,
electrically couple selected ones of the antenna elements to one
another in a pattern to generate an antenna configuration
selected from a plurality of possible antenna configurations:
and

a control management operatively coupled to the
plurality of switching elements and to a plurality of
communication devices and configured to

select one of the communication devices to evaluate the
selected antenna configuration,

operatively multiplex couple the selected one of the
communication devices to the antenna arrangement,

close selected ones of the switching elements as a
function of the selected antenna configuration, and

receive a feedback signal from the selected one of the
communication devices,

wherein said plurality of communication devices
comprises at least two communication devices selected from a
group consisting of receivers, transmitters and transceivers.
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The Rejections
Claim 21 is rejected under 35 U.S.C. 101 as being directed to non-
statutory subject matter (Ans. 12-13).
Claims 1, 3, 4, 8, 16, 18, 21 and 23 stand rejected under 35 U.S.C.
103(a) as being unpatentable over Rothwell (US. 6,175,723 B1) in view of
Sobczak (US. 7,245,938 B2) (Ans. 13-21).
Claims 2, 17 and 22 stand rejected under 35 U.S.C. 103(a) as being
unpatentable over the combination of Rothwell, Sobczak, and Maeki (US.
Pub No. 2003/0228857 A1) (Ans. 21-22).
Claims 7 and 9-15 stand rejected under 35 U.S.C. 103(a) as being
unpatentable over the combination of Rothwell, Sobczak, Chao-Cheng (US.
5,991,643) and Irvin (US. 6,021,317) (Ans. 23-31).
Claims 5, 6, 19, 20, 24 and 25 stand rejected under 35 U.S.C. 103(a)
as being unpatentable over the combination of Rothwell, Sobczak and Irvin
(Ans. 31-32).
Claim 11 stands rejected under 35 U.S.C. 103(a) as being
unpatentable over the combination of Rothwell, Sobczak, Chao-Cheng,
Irvin, and Maeki (Ans. 32-33).

FACTUAL FINDINGS
We adopt the Examiner’s factual findings as set forth in the Answer
(Ans. 3, et seq.).
ISSUES
Appellants’ responses to the Examiner’s positions present the
following issues:
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1. Is claim 21 directed to non-statutory subject matter under
35 U.S.C. 101?
2. Would the combination of Rothwell and Sobczak have taught
or suggested a self-structuring antenna have a plurality of communication
devices as required by independent claims 1, 16, and 21?
3. Would the combination of Rothwell, Sobczak, and Maeki have
taught or suggested “a non-volatile memory operatively coupled to the
control arrangement and configured to store data representing at least some
of the plurality of antenna configurations,” as recited in claim 2, and as
similarly recited in claims 17 and 22?

ANALYSIS
Rejection of Claim 21 Under 35 U.S.C. 101
Appellants contend that the Examiner erred in rejecting independent
claim 21 as being directed to non-patentable subject matter because “claim
21 is limited to a particular practical application and, accordingly, passes the
‘machine-or-transformation test’” (App. Br. 14). The Examiner concluded,
however, “that given its broadest reasonable interpretation consistent with
the specification, the scope of the claimed processor-readable medium [of
claim 21] encompasses non-tangible embodiments which do not fit within
anyone of the four statutory categories” (Ans. 34). .
We agree with the Examiner’s conclusions and underlying findings of
fact. Claim 21 recites “a processor-readable medium having processor-
executable instructions.” Appellants’ Specification states that “processor
readable media may include storage media and communication media” (¶
[0043]). The Specification further states that “[c]ommunication media
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typically embodies processor-readable instructions, data structures, program
modules or other data in a modulated data signal such as a carrier wave”
(id.). That is, according to the Specification, claim 21’s processor-readable
medium encompasses a transient carrier signal. Such a signal is not
patentable subject matter. A computer data signal embodied in a carrier
wave (a propagating signal) is not within any of the four statutory categories
of patentable subject matter. See In re Nuijten, 500 F.3d 1346, 1357 (Fed.
Cir. 2007); Subject Matter Eligibility of Computer Readable Media, 1351
Off. Gaz. Pat. Office 212 (Feb. 23, 2010). Therefore, we conclude that the
Examiner did not err in rejecting claim 21 as being directed to non-
patentable subject matter.

Rejection of Claims 1, 3, 4, 8, 16, 18, 21 and 23 Under 35 U.S.C. 103(a)
Appellants contend that the Examiner erred in rejecting independent
claims 1, 16, and 21 are obvious because “Sobczak et al. does not relate to
self-structuring antennas. Rather, it addresses a protocol for switching
between separate discrete fixed antenna structures” (App. Br. 15).
Appellants also argue that “Rothwell does not disclose or suggest the
inclusion of a ‘plurality of communication devices’ in the context of the
present invention” (id. at 16). The Examiner concluded, however, “that
Rothwell teaches the claimed ‘self structuring antenna’ and Sobczak teaches
the claimed ‘plurality of communication devices’” (Ans. 35).
We agree with the Examiner’s conclusion and underlying findings of
fact. Rothwell discloses “[a] self-structuring antenna system that includes an
antenna array defined by a plurality of antenna elements that are selectively
electrically connectable to each other by series of switches, so as to alter the
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physical shape of the antenna array” (Abstract). Sobczak discloses an
antenna panel 22 coupled via a traffic matrix 2 to a plurality of transceivers
420, 422 and 424 (FIG. 2). Therefore, we conclude that the claim limitation
in dispute is a combination of the familiar elements taught by Rothwell and
Sobczak that would have yielded predictable results. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 416 (2007). Accordingly, we find no error in the
Examiner’s obviousness rejection of independent claims 1, 16, and 21, as
well as claims 3, 4, 8, 18 and 23 dependent therefrom because Appellants
did not set forth any separate patentability arguments for those dependent
claims (see App. Br. 18).

Rejection of Claims 2, 17, and 22 Under 35 U.S.C. 103(a)
Appellants contend that the Examiner erred in rejecting claims 2, 17,
and 22 as obvious because Maeki’s algorithms “do not alter or combine any
of his predefined/predetermined antenna configurations nor do they create
any new antenna configurations” (App. Br. 19 (emphasis omitted)).
Appellants argue that Maeki’s algorithms instead “only use fixed predefined/
predetermined antenna configurations throughout the search process” (id.).
The Examiner concluded, however, that “that it would have been
obvious to one of ordinary skill in the art at the time of the invention was
made to combine the teaching of Rothwell and Sobczak with the teaching of
Maeki in order to implement high performance and high data
communication (see Maeki, para. [0020]) and to improve the prior art that
does not have a memory storing antenna configurations (see Maeki, para.
[0025])” (id. at 38).
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We agree with the Examiner’s conclusion and underlying findings of
fact. Rothwell teaches creating new antenna configurations by opening and
closing junctions:

In other words, by electrically shortcircuiting certain of the
controllable junctions 18 and open circuiting other junctions 18,
the active configuration of the antenna array 10 can be changed
accordingly to form different conducting paths within the array
10. This provides the self-structuring feature of the antenna
array 10 that allows the array 10 to change its physical shape.
By choosing which junctions 18 are closed, a wide variety of
different physical antenna shapes can be provided, including
loops, dipoles, stubs, etc.

(col. 3, ll. 42-51). Maeki discloses storing “previous antenna configurations
for future use . . . The storage of the embodiment . . . links antenna
configuration to measured performance” (¶[0025]). Accordingly, we
conclude that the claim limitation of storing and updating data for antenna
configurations is a combination of the familiar elements of creating antenna
configurations as taught by Rothwell and storing data for the configurations
as taught by Maeki that would have yielded predictable results. KSR Int’l
Co. at 416. Accordingly, we find no error in the Examiner’s obviousness
rejection of independent claims 2, 17, and 22.
We also find no error in the Examiner’s obviousness rejection of the
remaining claims on appeal (i.e., claims 6-7, 9-15, 19, 20, 24 and 25)
because Appellants did not set forth any separate or different patentability
arguments for those claims (see App. Br. 21-25).

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DECISION
We affirm the Examiner’s decision rejecting claim 21 as being
directed to non-statutory subject matter and rejecting claims 1-25 as being
unpatentable under 35 U.S.C. § 103(a).

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

Vsh