Ex parte Ogren

Board of Patent Appeals and Interferences

Jan 10, 2002

08478811 (B.P.A.I. Jan. 10, 2002)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 32
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MATS OGREN
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Appeal No. 1997-1373
Application No. 08/478,811
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HEARD: December 11, 2001
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Before HAIRSTON, RUGGIERO, and BARRY, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection
of claims 2-5 and 18. Claims 1 and 6-17 were canceled earlier
in the prosecution. An amendment filed November 27, 1995 after
final rejection was approved for entry by the Examiner as
indicated in the Advisory Action dated December 14, 1995 (Paper
No. 24). This amendment canceled claims 2-5 and 18 and added
new claims 19-23; however, the Examiner maintained that these
Appeal No. 1997-1373
Application No. 08/478,811
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added claims would be subject to the existing rejection under
35 U.S.C. § 112, first paragraph. Accordingly, the rejection of
claims 19-23 is now before us on appeal.
The claimed invention relates to a method of allocating
radio channels among the base stations in a multi-base station
radio system. The allocation method utilizes a mathematical
model of the radio system derived from an analogy with a heat
bath having a plurality of immersed particles. The energy
content of the heat bath is gradually changed in order to
achieve an energy content which corresponds to an acceptable
interaction between the plurality of particles, thereby
determining an acceptable level of interference among base
stations of the radio system by minimizing the total energy of
the system.
Claim 19 is illustrative of the invention and reads as
follows:
19. A method of distributing channels between base stations and
a multi-base section radio system by analogy with a mathematical
model wherein said analogy determines a channel distribution
which has an acceptable level of inter-channel interference
wherein said mathematical model is based on a heat bath having a
plurality of particles immersed therein, said method comprising
the steps of:
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assigning each base station of the radio system as a
corresponding one particle of said plurality of particles of
said mathematical model wherein each of said radio stations
corresponds to a discrete state of each of said particles;
assigning selected channels so they are represented by
different states of a particles so that changes in said
distribution of channels are represented respectively by changes
in the states of said particles;
representing interference between base station channels by
an interaction between said states of different particles of
said plurality of particles;
representing a change in an interference range coverage
area ratio (C/I) by a change in energy of said mathematical
model of said heat bath;
representing the total number of base stations and channels
in said radio systems by the number of particles and states in
said mathematical model wherein said number of particles and
states correspond to those number of particles and states
necessary to meet a predetermined traffic demand with a maximum
acceptable level of interference between channels;
wherein a first condition of said radio system is specified
by the number of said plurality of particles and interaction
between said number of particles and said heat bath and further
wherein one of a redistribution of said radio channels and a
change in number of channels is represented in said mathematical
model by a change in said states and said interactions of said
particles;
setting an initial temperature for said heat bath of said
mathematical model and reducing said temperature in a series of
steps so that the states of the particles change in accordance
with a stochastic process in order to establish channel
allocation; and
changing energy of said heat bath in order to achieve an
energy content which corresponds to an acceptable interaction
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between said plurality of particles and an acceptable level of
interference between said base stations.
No prior art references have been relied upon by the
Examiner.
Claims 19-23 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to provide an adequate disclosure.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Brief (Paper No. 26) and
Answer (Paper No. 27) for the respective details.
OPINION
We have carefully considered the subject matter on appeal,
the rejection advanced by the Examiner, and the evidence and
arguments relied upon by the Examiner as support for the
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, Appellant’s arguments
set forth in the Brief along with the Examiner’s rationale in
support of the rejection and arguments in rebuttal set forth in
the Examiner’s Answer.
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Application No. 08/478,811
Our reviewing court has made it clear that written description and1
enablement are separate requirements under the first paragraph of 35 U.S.C.
§ 112. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1560, 19 USPQ2d 1111, 1114
(Fed. Cir. 1991).
5
It is our view, after consideration of the record before
us, that Appellant’s specification in this application describes
the claimed invention in a manner which complies with the
requirements of 35 U.S.C. § 112. Accordingly, we reverse.
In the statement of the grounds of rejection, the Examiner
asserts a failure “... to provide an adequate written
description of the invention.” (Answer, page 3). It is
apparent, however, from the Examiner’s line of reasoning and
arguments that the Examiner is actually alleging a failure by
Appellant to provide an enabling disclosure. Accordingly, we1
will direct our discussion primarily to the merits of the
Examiner’s position as to the enabling nature of Appellant’s
disclosure. We point out, however, that our review of
Appellant’s specification and drawing figures reveals a detailed
description of the construction of the mathematical model as an
analogy to a heat bath, as well as the procedures involved in
arriving at an acceptable particle interaction energy to develop
a corresponding base station channel allocation with an
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acceptable level of interference between base stations. In our
view, this description unquestionably provides compliance with
the statutory “written description” requirement, i.e., Appellant
was clearly in possession of the invention at the time of filing
of the application.
As to the Examiner’s assertion of lack of enablement of
Appellant’s disclosure, we note that, in order to comply with
the enablement provision of 35 U.S.C. § 112, first paragraph,
the disclosure must adequately describe the claimed invention so
that the artisan could practice it without undue
experimentation. In re Scarbrough, 500 F.2d 560, 566, 182 USPQ
298, 305 (CCPA 1974); In re Brandstadter, 484 F.2d 1395, 1404,
179 USPQ 286, 293 (CCPA 1973); and In re Gay, 309 F.2d 769, 774,
135 USPQ 311, 316 (CCPA 1962). If the Examiner has a reasonable
basis for questioning the sufficiency of the disclosure, the
burden shifts to Appellant to come forward with evidence to
rebut this challenge. In re Doyle, 482 F.2d 1385, 1392, 179
USPQ 227, 232 (CCPA 1973), cert. denied, 416 U.S. 935 (1974); In
re Brown, 477 F.2d 946, 950, 177 USPQ 691, 694 (CCPA 1973); and
In re Ghiron, 442 F.2d 985, 992, 169 USPQ 723, 728 (CCPA 1971).
However, the burden is initially upon the Examiner to establish
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a reasonable basis for questioning the adequacy of the
disclosure. In re Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ
561, 563 (CCPA 1982); In re Angstadt, 537 F.2d 498, 504, 190
USPQ 214, 219 (CCPA 1976); and In re Armbruster, 512 F.2d 676,
677, 185 USPQ 152, 153 (CCPA 1975).
The Examiner has questioned (Answer, page 3) the
sufficiency of Appellant’s disclosure in describing any physical
link between the heat bath mathematical model and the base
station channel allocation system. In arguments related to this
contention, the Examiner asserts a failure of Appellant’s
disclosure to show how the changes of heat bath particle state
are related to base station interference, as well as failure to
provide a description of how the reduction of heat bath
temperature would effect a change in the base station
interference level. (Id., at 4). In the Examiner’s view,
Appellant’s disclosure fails to provide a “nexus” between the
heat bath mathematical model, which the Examiner likens to a
theoretical experiment, and the base station channel
distribution system. (Id., at 5).
After careful review of the arguments of record, however,
we are in agreement with Appellant’s position as stated in the
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Brief. In our view, the Examiner’s requirement for establishing
a direct physical link between the mathematical model and the
channel allocation system is misplaced since, as pointed out by
Appellant, no direct physical link exists because a mathematical
model, by its very nature, provides an analog to a physical
system. (Brief, page 9).
We further agree with Appellant that the present disclosure
does in fact provide a detailed description of the
correspondence between elements of the radio system base and
components of the heat bath. For example, Appellant’s
specification at pages 9 and 10 describes the analog
relationship between the radio system base stations and the
particles of a heat bath, as well as the relationship between
channels of the radio system and the various discrete states of
the particles. In addition, the relationship between the
interference range between base stations in the radio system and
the energy created by particle interaction in the heat bath is
described in detail at pages 11 and 12 of the specification.
We also find to be persuasive the comments made in the
Simpson declaration filed August 10, 1995 (Paper No. 19) under
37 CFR
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§ 1.132. In particular, Mr. Simpson, at page 4 of the
declaration, makes reference to the example of the mathematical
model provided at pages 16-18 of Appellant’s specification. In
our view, Mr. Simpson’s statements that all of the functions
required to obtain a value for the level of interference for a
multi-channel, multi-base station radio system are contained in
the model example is persuasive evidence relating to the
adequacy of Appellant’s disclosure.
In view of the above discussion, we find that the Examiner
has not established a reasonable basis for challenging the
sufficiency of the instant disclosure. For all of the reasons
discussed supra, we are persuaded that the present disclosure is
of sufficient detail so as to enable one of ordinary skill to
implement an operative embodiment of the invention without undue
experimentation.
Accordingly, we will not sustain the rejection of claims
19-23 under the first paragraph of 35 U.S.C. § 112. Therefore,
the decision of the Examiner rejecting claims 19-23 is reversed.
Appeal No. 1997-1373
Application No. 08/478,811
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REVERSED

KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
JFR/lp
Appeal No. 1997-1373
Application No. 08/478,811
11
OBLON SPIVAK MCCLELLAND MAIER & NEUSTADT
1755 JEFFERSON DAVIS HIGHWAY
FOURTH FLOOR
ARLINGTON VA 22202
Lettie
JUDGE RUGGIERO
APPEAL NO. 1997-1373
APPLICATION NO. 08/478,811
APJ RUGGIERO
APJ HAIRSTON
APJ BARRY
DECISION: REVERSED
PREPARED: Nov 7, 2002
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