Ex Parte Shu

Patent Trial and Appeal Board

Dec 19, 2016

12758204 (P.T.A.B. Dec. 19, 2016)

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 12/21/2016
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
12/21/2016 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
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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 APPEAL
I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—6, 8—18, and 20, which are all of the pending
claims. Claims 7 and 19 have been canceled. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
Appeal 2015-001880
Application 12/758,204
A. INVENTION
According to Appellant, the invention relates to “the field of
licensed/unlicensed wireless communication,” and more particularly to
“licensed/unlicensed cellular systems, including unlicensed systems
involving white-space devices” (Spec. 1,11. 4—7).
B. REPRESENTATIVE CLAIM
Claim 1 is exemplary:
1. An apparatus, comprising:
at least one processor; and
at least one memory including computer program code;
the at least one memory and the computer program code
configured to, with the at least one processor, cause the
apparatus to:
determine at least one inner area of a cell and at least one
perimeter area of the cell, wherein the at least one inner area is
closer to the centre of the cell than the at least one perimeter
area;
access a database containing cross-referenced
information regarding white-space channels available within the
at least one inner area of a cell and the at least one perimeter
area of the cell;
generate a prioritised 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; and
generate another prioritised radio channel selection list
for the at least one inner area of the cell, wherein the another
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Application 12/758,204
prioritised radio channel selection list is different from the
prioritised radio channel selection list.
C. REJECTIONS
1. Claims 1—6 and 9-18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the teachings of Eriksson (US 5,448,750; iss. Sept. 5,
1995), Frenger (US 2009/0196193 Al; pub. Aug. 6, 2009), and Henry (US
2011/0096770 Al; pub. Apr. 28, 2011).
2. Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
the teachings of Eriksson, Frenger, Henry, and Chaudhri (US 8,150,328 B2;
iss. Apr. 3, 2012).
3. Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the teachings of Eriksson, Frenger, Henry, and Minegishi (US
6,072,988; iss. June 6, 2000).
II. ISSUE
The principal issue before us is whether the Examiner erred in 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 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” (claim 1).
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III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Eriksson
1. Eriksson discloses allocating channels for connections between base
stations and mobiles to avoid interference with calls in neighboring cells,
wherein channels for establishing connections with the mobiles are ranked in
a priority list (Abst.). Channels in a priority list in the base station are tested
against a predetermined quality criteria, and the priority list is updated every
time a channel is tested (col. 7,1. 66 to col. 8,1. 10).
Frenger
2. Frenger is directed to reducing interference in a system in which a
scheduler controls a set of shared radio resources, wherein a priority weight
is assigned to different resources (Abst). The scheduler assigns resources of
different priority classes, such as cell-edge users and cell-center users,
wherein cell-edge users are assigned to resource with lower priority indexes
than cell-center users (1 57).
Henry
3. Henry discloses channel sharing among white-space packet networks
such as Voice over Internet Protocol (VoIP) networks, Service over Internet
Protocol (SoIP) networks, and the like (112), wherein endpoint devices are
configured for communication with the networks (| 14). A white space
usage manager optimizes spectrum resource usage to allow usage of
available white space channels in a coordinated manner to minimize
interference (| 26), and the user endpoint devices communicate with the
network to access a service with white space channel sharing (| 40). The
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Application 12/758,204
whitespace usage manager interacts with a geo-location database to identify
available unlicensed channels in accordance with a received request (| 46).
IV. ANALYSIS
With respect to claim 1, Appellant contends “Eriksson teaches local
ranking (within a base station) of channels,” whereas “Frenger teaches
receiving ‘cell specific resource priority weights’ from a central node” (App.
Br. 12). Thus, according to Appellant, “a person skilled in the art would not
combine Eriksson with Frenger since they deal with completely different
network operating principles” (id.). Appellant contends the ordinarily
skilled artisan “would not have been motivated to substitute Frenger’s
receiving ‘cell specific resource priority weights’ from a central node, . . .
into the Eriksson network” (App. Br. 17).
Appellant then contends “[tjhere is no disclosure or suggestion in the
Eriksson reference, of the apparatus considering the availability of white-
space channels” (id. at 12). Although Appellant concedes “Henry discloses
channel sharing among white space networks and determines a list of white
space channels or timeslots that are available for assignment,” Appellant
contends “there is no disclose or suggestion in Henry, of Appellant’s
claimed generating a prioritized radio channel selection list” (App. Br. 23).
Appellant also contends “[t]he Henry reference and the Eriksson reference
are not combinable” since “[a] person skilled in the art would never consider
an ‘IMS core infrastructure’ [of Henry], as a ‘cell’ as shown [in Eriksson]”
(App. Br. 22).
We have considered all of Appellant’s arguments and evidence
presented. However, we disagree with Appellant’s contentions regarding the
Examiner’s rejections of the claims. We agree with the Examiner’s findings,
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Application 12/758,204
and find no error with the Examiner’s conclusion that the claims would have
been obvious over the combined teachings.
As a preliminary matter of claim construction, we give the claims
their broadest reasonable interpretation consistent with the Specification.
See In re Morris, 111 F.3d 1048, 1054 (Fed. Cir. 1997). While we interpret
claims broadly but reasonably in light of the Specification, we nonetheless
must not import limitations from the Specification into the claims. See
Phillips v. AWHCorp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc).
Here, we note claim 1 merely requires that the apparatus is caused to
“generate” a “prioritised list” for a perimeter area of a cell in accordance
with a criterion, and another for an inner area of the cell, wherein the
criterion include availability of white-space channels (claim l).1
1 We also note that claim 1 merely requires that the apparatus is caused to
“generate” a “list” for a perimeter area and another for the inner area of the
cell, but the particular contents of the lists generated are not positively
recited as actually being used to change or affect the manner in which the
data is input. Moreover, the informational content of the list is not positively
recited as actually being used to change or affect any machine or computer
function, within the broad scope of claim 1. That is, claim 1 recites that the
list are merely generated. The PTAB has provided guidance in decisions on
the appropriate handling of claims that differ from the prior art only based
on “non-functional descriptive material.” See Ex parte Nehls, 88 USPQ2d
1883, 1889 (BPAI 2008) (precedential) (“[T]he nature of the information
being manipulated does not lend patentability to an otherwise unpatentable
computer-implemented product or process.”); Ex parte Mathias, 84 USPQ2d
1276, 1279 (BPAI 2005) (informative) (“[Nonfunctional descriptive
material cannot lend patentability to an invention that would have otherwise
been anticipated by the prior art.”), aff’d, 191 F. App’x 959 (Fed. Cir. 2006)
(Rule 36); Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005)
(informative) (“Nonfunctional descriptive material cannot render
nonobvious an invention that would have otherwise been obvious.”), affd,
No. 06-1003 (Fed. Cir. June 12, 2006) (Rule 36).
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We find no error with the Examiner’s reliance on Eriksson for
teaching that “channels are prioritized such that adjacent channel or co­
channel interference is avoided between neighboring cells” (Ans. 2—3; FF 1).
We agree with the Examiner’s finding that Eriksson discloses prioritizing
channels in “perimeter areas of cells being adjacent to perimeter areas of
other cells” (Ans. 3). Accordingly, we are not persuaded of error with the
Examiner’s reliance on Eriksson for disclosing and suggesting generating “a
prioritised radio channel selection list, in accordance with at least one
predetermined selection criterion, for the at least one perimeter area,” as
recited in claim 1.
Further, Frenger discloses assigning priority for cell-edge users
different from those of cell-center users (FF 2). We find no error with the
Examiner’s reliance on Frenger for teaching and suggesting “determining at
least one inner area [i.e., cell center] of a cell” and “generating another
prioritized radio channel selection list for the at least one inner area of the
cell” (Ans. 4; FF 2). We also agree with the Examiner’s reliance on Henry
for teaching that the selection criterion includes “availability of white-space
channels” (Ans. 5; FF 3).
Thus, we find no error in the Examiner’s finding that the combination
of the references teaches and suggests the contested limitation of claim 1. In
fact, other than contending “there is no disclose or suggestion in Henry, of
Appellant’s claimed generating a prioritized radio channel selection list”
(although the Examiner relies on Eriksson for such teaching and suggestion),
Appellant does not contend that the combined teachings do not disclose or
suggest contested limitations of the claims (App. Br. 12—23). Instead,
Appellant’s contentions seem to turn on “a person skilled in the art would
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not combine” the references (id.). In particular, Appellant contends “a
person skilled in the art would not combine Eriksson with Frenger since they
deal with completely different network operating principles” (App. Br. 12)
and that “[a] person skilled in the art would never consider an ‘IMS core
infrastructure’ [of Henry], as a ‘cell’ as shown [in Eriksson]” (App. Br. 22).
However, 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, contrary to Appellant’s contention that the ordinarily
skilled artisan “would not have been motivated to substitute Frenger’s
receiving ‘cell specific resource priority weights’ from a central node, . . .
into the Eriksson network” (App. Br. 17), 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, contrary to Appellant’s contention that the ordinarily
skilled artisan would not combine Henry’s IMS core infrastructure with
Eriksson (App. Br. 22), 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 (FF 2), would have found it obvious to
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modify Eriksson’s generating a prioritized radio channel selection list (FF
1), to further “generate another prioritised radio channel selection list for the
at least one inner area of the cell” as recited in claim 1 (Ans. 4). Similarly,
we agree with the Examiner that it would have been obvious to combine
Henry’s teaching of a “known technique of accessing a database containing
cross-referenced information regarding white-space channels available” (FF
3) to include white-space channel availability as a criterion in the system of
Eriksson (Ans. 5).
The Supreme Court guides that the conclusion of obviousness can be
based on the background knowledge possessed by a person having ordinary
skill in the art. KSR Inti Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007).
Here, 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.” Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
(citing KSR, 550 U.S. at 418). Instead, as the Examiner points out, such
combination “would have been predictable” (Ans. 5).
Thus, we conclude that it would have been well within the skill of one
skilled in the art to combine the references in the same field of endeavor.
See KSR, 550 U.S. at 417. That is, the skilled artisan is “a person of
ordinary creativity, not an automaton.” Id. at 421. Here, we find
Appellant’s invention is simply a modification of familiar prior art teachings
(as taught or suggested by the cited references) that would have realized a
predictable result (id.).
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Therefore, 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. Accordingly, we also
sustain the Examiner’s § 103(a) rejection of claim 1 over Eriksson, Frenger
and Henry.
Appellant does not provide arguments for claims 2—6 and 9-18
separate from claim 1 (App. Br. 27). Further, with respect to claims 8 and
20, Appellant does not provide substantive arguments, but merely contends
that “[tjhere is no disclosure or suggestion” of the contested limitations in
the references in combination with Chaudhri (App. Br. 25) and Minegishi
(App. Br. 27). Accordingly, we also affirm the rejections of claims 2—6 and
9—18 over Eriksson, Frenger, and Henry; claim 8 over Eriksson, Frenger,
and Henry in further view of Chaudhri; and claim 20 over Eriksson, Frenger,
and Henry in further view of Minegishi.
V. CONCLUSION AND DECISION
We affirm the Examiner’s rejections of claims 1—6, 8—18, and 20
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)(l)(iv).
AFFIRMED
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