Ex Parte Shu

Patent Trial and Appeal Board

Jan 30, 2017

12758204 (P.T.A.B. Jan. 30, 2017)

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.
12/758,204 04/12/2010 Kodo Shu 1004289.477US
(4208-4533)
4478
10928 7590 02/01/2017
T nrke T nrH T T P
EXAMINER
IP Docket Department
3 World Financial Center
DEAN, RAYMOND S
New York, NY 10281-2101 ART UNIT PAPER NUMBER
2649
NOTIFICATION DATE DELIVERY MODE
02/01/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KODO SHU
Appeal 2015-001880
Application 12/758,204
Technology Center 2600
Before ROBERT E. NAPPI, THU A. DANG, and JAMES R. HUGHES,
Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appeal 2015-001880
Application 12/758,204
I. STATEMENT OF THE CASE
Appellant has filed a Request for Rehearing under 37 C.F.R. § 41.52
(hereinafter “Request”) on December 27, 2016 for reconsideration of our
affirmance of the Examiner’s rejection of claims 1—6, 8—18, and 20 in a
Decision mailed December 21, 2016 (hereinafter “Decision”).
The Decision affirmed the Examiner’s 35 U.S.C. § 103(a) rejections
of: 1) claims 1—6, and 9—18 over Eriksson, Frenger, and Henry; 2) claim 8
over Eriksson, Frenger, Henry, and Chaudhri; and 3) claim 20 over Eriksson,
Frenger, Henry, and Minegishi.
We have reconsidered our Decision regarding claims 1—6, 8—18, and
20 in light of Appellant’s comments in the Request (Request 2—6). We grant
the Rehearing Request to the extent that we consider the Appellant’s
arguments infra, but DENY the request to modify our Decision. As noted
infra, we are still of the view that the invention set forth in claims 1—6, 8—18,
and 20 is unpatentable over the combined teachings of Eriksson, Frenger,
and Henry (and Chaudhri or Minegishi) under 35 U.S.C. § 103(a). We
incorporate our earlier Decision herein by reference. See 37 C.F.R.
§ 41.52(a)(1).
II. ISSUE
The issue we address in this Request is whether Appellant has
persuasively identified that the Board misapplied the relevant law or
misapprehended Appellant’s arguments set forth in the Appeal Brief in
finding no error with the Examiner’s finding that the combination of
Eriksson, Frenger, and Henry teaches or would have suggested computer
program code configured to cause an apparatus to “generate a prioritised
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Application 12/758,204
radio channel selection list, in accordance with at least one predetermined
selection criterion, for the at least one perimeter area,” the criterion
“including availability of white-space channels” and “generate another
prioritised radio channel selection list for the at least one inner area of the
cell,” as recited in claim 1 (emphasis added).
III. ANALYSIS
In the Request, Appellant addresses “instances of what the Appellant
believes to be the Board’s misapprehension or overlooking of the
Appellant’s arguments in the Appeal Brief’ regarding the combination of
Eriksson, Frenger, and Henry (Request 2). In particular, Appellant points to
page 24 of the Appeal Brief, as an argument that Appellant believes the
Board to have overlooked:
The combination of Eriksson, Frenger, and Henry does not
result in the Appellant's claimed invention. There is no disclosure
or suggestion in the combination of Eriksson, Frenger, and
Henry, of the Appellant's claimed generating a prioritized radio
channel selection list, in accordance with at least one
predetermined selection criterion, for the at least one perimeter
area, the predetermined selection criterion including availability
of white-space channels and configured to reduce the probability
of the same channel being selected for use by a first radio device
in the at least one perimeter area of the cell and by a second radio
device in an adjacent cell. The apparatus may generate another
prioritized radio channel selection list for the at least one inner
area of the cell, wherein the another prioritized radio channel
selection list is different from the prioritized radio channel
selection list, as claimed by the Appellant.
(Id., citing App. Br. at 24).
Further, Appellant also points to page 17 of the Appeal Brief as
“evidence” that Appellant believes the Board to have overlooked:
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Application 12/758,204
Eriksson teaches local ranking (within a base station) of
channels based on locally measuring signal strength and quality.
The purpose of this is to avoid a fixed plan of frequencies. Thus,
Eriksson teaches away from centralized network planning or
generating channel selection lists elsewhere than in the base
station. One of ordinary skill in the art would not have been
motivated to substitute Frenger's receiving "cell specific resource
priority weights" from a central node, in a network-wide fixed
plan of frequencies, into the Eriksson network, because such a
modification would destroy the advantage of avoiding a fixed
plan of frequencies in the Eriksson network. The proposal made
by the Final Office Action to make such a substitution, would
destroy the advantage of the Eriksson network.
(Request 2—3, citing App. Br. at 17).
However, we note that the paragraph referenced by Appellant on page
24 of the Appeal Brief merely consists of repeating the claim language and
the contention that “the another prioritized radio channel selection list is
different from the prioritized radio channel selection list, as claimed by the
Appellant” (Request 2, citing App. Br. at 24). Such form of conclusory
argument (merely contending that the prior art is different) fails to comply
with 37 C.F.R. § 41.37(c)(l)(iv) (“A statement which merely points out what
a claim recites will not be considered an argument for separate patentability
of the claim.”). That is, merely reciting the language of a particular claim
and asserting the cited prior art reference does not teach or suggest the claim
limitation, without more, fails to constitute a separate issue of patentability.
See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). Accordingly, as set
forth in our Decision, “on this record, and by the preponderance of evidence,
we are not persuaded of error regarding the Examiner's underlying factual
findings and ultimate legal conclusion of obviousness” of the claims over the
combined teachings (Decision 10).
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Application 12/758,204
Furthermore, we note that the paragraph referenced by Appellant on
page 17 of the Appeal Brief merely consists of attorney arguments that
“[t]he proposal made by the Final Office Action to make such a substitution,
would destroy the advantage of the Eriksson network” (Request 3, citing
App. Br. at 17). However, our reviewing court guides that such mere
attorney conclusory statements (that the combination “would destroy the
advantage” (Request 3, App. Br. 17)) which are unsupported by factual
evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984);
and Ex parte Belinne, 2009 WF 2477843, at *3^4 (BPAI Aug. 10, 2009)
(informative). Thus, as we pointed out in our Decision, “Appellant has
presented no evidence that combining the prior art techniques (generating
prioritized lists and allocating white space channels) in the manner proffered
by the Examiner would have been ‘uniquely challenging or difficult for one
of ordinary skill in the art’” (Decision 9, emphasis added, citing Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)).
In our Decision, we addressed Appellant’s arguments as set forth in
the Appeal Brief. Although Appellant added additional arguments in the
Reply Brief in an attempt to cure the noted deficiencies in the Appeal Brief,
because Appellant’s arguments could have been raised in the Appeal Brief
but Appellant failed to do so, in our Decision, we deemed the arguments
technically waived.
Thus, although Appellant contends that the Board overlooked
Appellant’s arguments in the Reply Brief (Request 3—6), it is inappropriate
for Appellant to discuss for the first time in the Reply Brief matters that
could have been raised in the Appeal Brief. As the Board has found, “[t]he
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Application 12/758,204
failure to raise all issues and arguments diligently, in a timely fashion, has
consequences,” and thus, such newly-raised arguments are technically
waived. Ex parte Borden, 93 USPQ2d 1473, 1475 (BPAI 2010)
(informative decision) (“[The reply brief [is not] an opportunity to make
arguments that could have been made in the principal brief on appeal to
rebut the Examiner's rejections, but were not.”). Cf. Kaufman Company v.
Lantech, Inc., 807 F.2d 970, 973 n.* (Fed. Cir. 1986) and McBride v.
Merrell Dow andPharms., Inc., 800 F.2d 1208, 1211 (D.C. Cir. 1986).
Nevertheless, as set forth in our Decision:
Appellant appears to view the combination in a different
perspective than that of the Examiner. The issue here is not
whether the skilled artisan would have bodily incorporated the
entire system of Frenger into the entire system of Eriksson, and
then combine the entire system of Henry thereto. That is,. . . the
issue is whether the ordinarily skilled artisan, upon reading
Frenger’s prioritizing of channels for an inner area of the cell as
well as the perimeter, would have found it obvious to generate a
prioritized list for an inner area of a cell as well as the perimeter
in Eriksson.
Similarly, . . . the issue is whether the ordinarily skilled artisan,
upon reading Henry’s use of white-space channel availability as
a channel allocation criterion, would have found it obvious use
white-space channel availability as a criterion in the generation
of prioritized list in Eriksson.
We agree with the Examiner that one of ordinary skill in the art,
upon reading Frenger’s teaching of prioritizing for an inner area
of a cell as well as the perimeter area of the cell. .., would have
found it obvious to modify Eriksson’s generating a prioritized
radio channel selection list . . . , to further “generate another
prioritised radio channel selection list for the at least one inner
area of the cell” as recited in claim 1 . . . .
Similarly, we agree with the Examiner that it would have been
obvious to combine Henry’s teaching of a “known technique of
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Application 12/758,204
accessing a database containing cross-referenced information
regarding white-space channels available” ... to include white-
space channel availability as a criterion in the system of Eriksson
(Decision 9).
Accordingly, Appellant’s Request does not persuade us of any points
we misapprehended or overlooked in the Decision.
On this record, Appellant has not identified that the Board has
misapplied the relevant law or misapprehended Appellant’s arguments. We
therefore maintain our affirmance of the Examiner’s rejection under 35 USC
§ 103(a) of claims 1—6, 8—18, and 20.
IV. CONCLUSION AND DECISION
We have considered the arguments raised by Appellant in the Request
for Rehearing. Although we have considered our prior Decision in light of
the Request for Rehearing, we decline to modify our prior Decision in any
respect.
REHEARING DENIED
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