Ex Parte Schmandt

Board of Patent Appeals and Interferences

Mar 30, 2009

10911811 (B.P.A.I. Mar. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BERND SCHMANDT
____________

Appeal 2008-5583
Application 10/911,811
Technology Center 2600
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Decided1: March 30, 2009
____________

Before ROBERT E. NAPPI, JOHN A. JEFFERY, and
KEVIN F. TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Final Rejection of
claims 1-4 and 6-18. We have jurisdiction under 35 U.S.C. § 6(b). We
AFFIRM.
Appellant’s claimed invention relates to data packet transmission
between terminal devices, where the necessary transmission power is

1 The two-month period of filing an appeal or commencing a civil action, as
recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on
this page of the decision. The time period does not run from the Mail Date
(paper delivery) or Notification Date (electronic delivery).
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Application 10/911,811

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established to be as low as possible during the actual connection setup.
(Spec. ¶¶ [0002] and [0008]).
Claim 1 is illustrative of the invention and reads as follows:

1. A method for establishing the necessary transmission
power in a data transmission system which has a first
terminal device and a second terminal device between
which data are transmitted by radio, comprising the steps
of:

(a) transmitting consecutive test data packets by the first
terminal device, with the transmission power in the first
terminal device rising in prescribed fashion over time;

(b) transferring a reception confirmation data packet from
the second terminal device to the first terminal device
following reception of an initialization data packet,
wherein the initialization data packet comprises a first of
the test data packets to be detected by the second
terminal device and

(c) upon subsequently executing steps (a) and (b),
transmitting a first of the consecutive test data packets to
the second terminal device using an initialization
transmission power, wherein the initialization
transmission power is the transmission power
corresponding to the initialization data packet.

(App. Br. 12, Claims Appendix).

The Examiner relies on the following prior art references to show
unpatentability:
Saarela 2002/0068596 A1 Jun. 6, 2002
Kantola 6,990,354 B2 Jan. 24, 2006
Ozluturk EP 1037395 A2 Sep. 20, 2000

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Claims 1-4, 6, 8-11, 13-15, 17, and 18 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ozluturk and Saarela.
Claims 7, 12, and 16 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ozluturk, Saarela, and Kantola.

Appellant argues that Saarela discloses using a maximum
transmission power, used during the previous transmission, rather than the
initialization transmission power, which is the lowest value that was
successful in transmitting a packet during the previous transmission, as
recited in claim 1 (Br. 7). Appellant also argues that Saarela teaches away
from using a transmission power associated with any particular packet, (Br.
9), and that there is no motivation to combine Ozluturk and Saarela (Br. 9-
10). The Examiner finds that all of the elements of claims have been taught
or suggested by the cited references and that there is motivation to combine
those cited references (Ans. 7-9).
Rather than reiterate all of the arguments of Appellants and the
Examiner, reference is made to the Brief and the Answer for the respective
details. Only those arguments actually made by Appellants have been
considered in this decision. Arguments which Appellants could have made
but chose not to make in the Brief have not been considered and are deemed
to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUES
(i) Under 35 U.S.C. § 103(a), with respect to appealed claims 1-4, 6,
8-11, 13-15, 17, and 18, would one of ordinary skill in the art at the time of
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the invention have found it obvious to combine Ozluturk and Saarela to
render the claimed invention unpatentable?
(ii) Under 35 U.S.C. § 103(a), with respect to appealed claims 7, 12,
and 16, would one of ordinary skill in the art at the time of the invention
have found it obvious to combine Ozluturk, Saarela, and Kantola to render
the claimed invention unpatentable?

FINDINGS OF FACT
1. According to the present application, a data transmission system
includes at least two terminal devices, where one of the devices increases the
transmission power in a prescribed fashion over time when data are being
sent. This power transmission increase is stopped when a data packet is
received back from the other device. This measure ensures that the
transmission power has as low of a value as possible but one which is still
sufficient for transmitting data (Spec. ¶¶ [0018], [0020] and [0021]).
2. Ozluturk is directed to a system for reducing the reacquisition time
of a subscriber unit by a base station. The subscriber unit starts transmitting
a periodic pilot code at a power level guaranteed to be lower than what is
required and increases transmission power output until the correct power
level is achieved. The phase delay during the initial acquisition is
determined and used for subsequent transmissions (Abstract; ¶¶ [0029]-
[0031] and [0036]; Fig. 2, elements 14, 16, 18, 20, 22).
3. Both the Examiner and Appellant acknowledge that Ozluturk fails
to disclose using the initialization transmission power, based on the
initialization data packet, during subsequent transmissions (Ans. 4; Br. 5).
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4. Saarela is directed to a radio telecommunications terminal and
control method, where the terminal is arranged to store in the memory
information relating to a power level used in at least one transmission, and,
when such information is stored, to use this information to initiate a
subsequent transmission (Abstract).

PRINCIPLES OF LAW
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).
[T]here must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness’. . .
[H]owever, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim,
for a court can take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.

KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007) (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
During examination, the claims must be interpreted as broadly as their
terms reasonably allow. In re Am. Acad. of Sci. Tech Center, 367 F.3d 1359,
1369 (Fed. Cir. 2004). When the specification states the meaning that a term
in the claim is intended to have, the claim is examined using that meaning,
in order to achieve a complete exploration of the applicant's invention and its
relation to the prior art. In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989).
“Even when guidance is not provided in explicit definitional format, the
specification may define claim terms by implication such that the meaning
may be found in or ascertained by a reading of the patent documents.”
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Phillips v. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005) (citations and
internal quotation marks omitted).

ANALYSIS
Appellant argues that Saarela discloses using a maximum
transmission power, used during the previous transmission, rather than the
initialization transmission power, which is the lowest value that was
successful in transmitting a packet during the previous transmission, as
recited in claim 1 (Br. 7). Appellant acknowledges that “Ozluturk explicitly
indicates that it uses a starting power value that is guaranteed to be lower
that the required power level for detection....” (Br. 9). As such, Ozluturk
discloses an equivalent to the initialization transmission power recited in
claim 1. Thus, the fact that Saarela discloses storing and later using a
maximum or average power level is not necessarily detrimental to the
rejection, since Ozluturk discloses this element of claim 1 and both Ozluturk
and Saarela are applied against claim 1. “The test for obviousness is not
whether . . . the claimed invention must be expressly suggested in any one or
all of the references. Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981). As such, we do not find
Appellant’s argument to be compelling.
Appellant also argues that Saarela teaches away from using a
transmission power associated with any particular packet, since the first,
intermediate or last packet may be used (Br. 9). However, since the first
successful packet is used as a base in Ozluturk we do not find the
alternatives disclosed in Saarela as a teaching away from the combination.
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Appellant also argues that there is no motivation to combine Ozluturk and
Saarela (Br. 9-10). However, the Examiner finds that the motivation to
combine Ozluturk and Saarela, namely “in order to avoid interference in the
telecommunication system due to unnecessary increase of power levels[]”
(Ans. 4). We find this motivation sufficient to sustain the combination
proffered in the rejection and do not find the Appellant’s argument to be
compelling.
Appellant also argues that, per claim 9, Saarela fails to teach or
suggest storing the minimum power levels of a plurality of second devices in
a table, because Saarela suggests storing power levels within the mobile
devices (Br. 10). The Examiner responds that the term record in Saarela is
given a broad interpretation to include a table and that Saarela discloses
storing in a record the operating power levels from all of the base stations/
second devices in the near vicinity (Ans. 9). We agree with the Examiner
that use of a table for storage of values would have been obvious in view of
the disclosure of Saarela, and that this aspect of claim 9 is at least suggested
by the combination of Ozluturk and Saarela.
In addition, Appellant argues that with respect to dependent claims 2-
4, 6-8, 10-13, and 15-18, those claims should be allowable by virtue of their
dependence on independent claims 1, 9, and 14 (Br. 10). Because we do not
find in error in the rejections of independent claims 1, 9, and 14, we find no
error in the rejections of the dependent claims.

CONCLUSION
The decision of the Examiner rejecting claims 1-4, 6, 8-11, 13-15, 17,
and 18 under 35 U.S.C. § 103(a) as being unpatentable over Ozluturk and
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Saarela, and rejecting claims 7, 12, and 16 over Ozluturk, Saarela, and
Kantola, is affirmed.

DECISION
The Examiner’s rejections of claims 1-4 and 6-18 before us on appeal
are 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).

AFFIRMED

MAT

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