Ex Parte Smith

Board of Patent Appeals and Interferences

Mar 10, 2010

10033572 (B.P.A.I. Mar. 10, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MALCOLM M. SMITH
_____________

Appeal 2009-003208
Application 10/033,572
Technology Center 2600
____________

Decided: March 10, 2010
____________

Before KENNETH W. HAIRSTON, JOSEPH F. RUGGIERO, and
ROBERT E. NAPPI, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s final
rejection of claims 1 to 40. We have jurisdiction under 35 U.S.C. § 6(b).
We will sustain the rejection.
Appellant’s invention is concerned with a wireless communications
system (see Fig. 1) that uses signal selection and combination to produce a
best quality signal based on signal portions or frames (see Figs. 6, 14, 15,
Abstract). By selecting the best signal portions from several base station
signals, a high quality output signal can be determined (i.e., the signal
portions are concatenated) (see Spec. 10:19-29). Appellant discloses and
claims a system, method, and computer-readable medium directing a
processor to perform either of the steps of (i) selecting signal portions, and
(ii) combining signal portions by adding and/or averaging the signal portions
(see Spec. 9:25-14:32, claims 1, 9, 17, 25, 33).
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A communication system, comprising:
a first base transceiver station receiving a first
wireless signal from a mobile unit, the first wireless signal
comprising:
a first signal portion having a first signal
characteristic, and
a second signal portion; and

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a second base transceiver station receiving a second
wireless signal from the mobile unit, the second wireless
signal comprising:
a third signal portion having a second signal
characteristic, and
a fourth signal portion, wherein a fifth signal
portion is generated by applying a processing operation to the
first and third signal portions, independently from the second
and fourth signal portions, the processing operation operable
to perform either of the steps of:
selecting one of the first and third signal portions
using the first and second signal characteristics, and
combining the first and third signal portions,
wherein combining includes adding or averaging the first and
third signal portions.
The Examiner relies upon the following as evidence of
unpatentability:
Obuchi US 6,320,852 B1 Nov. 20, 2001
(filed Mar. 2, 1998)
Kondo US 6,728,919 B1 Apr. 27, 2004
(filed Aug. 20, 1999)

The following sole rejection is before us for review:
Claims 1 to 40 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kondo and Obuchi.
The Examiner relies upon Kondo as describing all of the features of a
system and method for communicating using a first base transceiver station
receiving first and second signal portions, a second base transceiver station
receiving third and fourth signal portions, and generating a fifth signal

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portion by processing the first and third signals by selecting one of the first
and third signal portions (Ans. 3). The Examiner relies upon Obuchi as
describing a communication system and method which not only selects a
first or third signal portion, but also combines those signal portions by
adding and/or averaging them (Ans. 4). The Examiner determined that it
would have been obvious “to add the additional combining (composite)
function together with the selecting function of Kondo’s system for the
purpose of increasing the performance of the system” (Ans. 4).
Appellant contends, inter alia, that (i) no motivation to combine
Kondo and Obuchi exists other than hindsight (App. Br. 10-11, Reply Br.
10-12, Supp. Reply Br. 10-12); (ii) the Examiner has not shown a reasonable
expectation of success for Kondo as modified by Obuchi to perform the
claimed invention (App. Br. 11-12, Reply Br. 12-13, Supp. Reply Br. 12-
14); and (iii) Kondo and Obuchi, whether taken individually or in
combination, fail to teach or suggest all of the features recited in
independent claims 1, 9, 17, 25, and 33 (App. Br. 12-14, Reply Br. 13-16,
Supp. Reply Br. 14-18).

ISSUE
Based on Appellant’s arguments, the obviousness issue is whether it
would have been obvious to one of ordinary skill in the art to combine the
communications systems and methods taught by Kondo and Obuchi, thereby
rendering obvious the communication systems, method, and computer-
readable medium directing a processor to perform either of the steps of (i)
selecting signal portions, and (ii) combining signal portions by adding and/or

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averaging the signal portions?
Based on Appellant’s arguments with regard to obviousness, an
additional issue presents itself: does a proper construction of the independent
claims on appeal require the system, method, and computer-readable
medium to be operable to perform the combining step set forth in claims 1,
9, 17, 25, and 33?

FINDINGS OF FACT
1. As indicated supra, Appellant describes and claims generating a final
signal portion by applying a processing operation to the first and third
signal portions by performing either of the steps of (i) selecting one of
the first and third signal portions based on their signal characteristics
(e.g., signal quality, noise ratio, etc.), and (ii) combining the first and
third signal portions by adding and/or averaging the first and third
signal portions (see Spec. 9:25-14:32, claims 1, 9, 17, 25, 33).
Appellant recognizes the need for improving “the capacity and/or
coverage of a wireless communications system . . . by reducing the
required transmit power of the MU in simultaneous communications
with multiple BSTs” (Spec. 5:12-18).
2. Appellant describes determining signal quality parameters by using
averaging, as follows:
Various types of signal quality parameters and/or
characteristics can be utilized as indicators of signal
quality. For example, there is a signal-to-noise ratio
(SNR) and/or a signal-to-interference ratio (SIR)
associated with each bit received by a BTS. High signal

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quality is generally associated with high SNR and/or high
SIR. The mean (e.g., the arithmetic mean) of the
respective SNRs or SIRs of a bit 702 within the payload
138 of a frame can be utilized as an indicator of the
quality of reception of the frame, and based upon this
criterion, the best frame can be selected from among the
corresponding copies received by the respective BTSs
14.
Other criteria can also be used to select a
preferred frame from among the copies received by the
various BTSs 14. For example, an algorithm in
accordance with the present invention can select the
frame with the highest energy-per-bit (Eb), the lowest
error-per-bit, or can select only those frames which pass
an error-detection procedure such as, for example, the
well-known Cyclic Redundancy Check (CRC).
In accordance with an additional aspect of the
present invention, data from the various BTSs 14 can be
selected on a bit-by-bit basis. In other words, the
respective copies of each bit which are received by the
respective BTSs 14 can be compared based upon SNR,
SIR, energy, Eb, CRC, or another criterion indicating the
quality of reception. The bit or bits having the best
quality can be selected.
Spec. 10:30-11:25 (emphasis added).
3. Appellant describes the processing operation of combining signals as
follows:
In accordance with another aspect of the present
invention, signals received by multiple BTSs can be
combined on a bit-by-bit or symbol-by-symbol basis by
adding and/or averaging the energy and/or voltage

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associated with each copy of a bit or symbol received
through a set of BTSs.
Spec. 14:1-6. Appellant describes the selecting and combining processes
again at page 18 of the Specification, as follows:
In accordance with the present invention, the SDU
function includes selection of digital data signals
corresponding to the best quality wireless data signal or
signals received by the primary BTS 378 and the
secondary BTSs 382. As discussed above, the selection
need not be based solely upon which signals, considered
in their entirety, have the best quality. The selection can
also be based which portions (e.g., frames) of the
wireless signals have the best quality. The selection
procedure is preferably performed on a frame-by-frame
basis. Preferably, the SDU function includes
combination of digital data signals corresponding to two
or more of the wireless data signals 502 received by the
primary BTS 378 and the secondary BTSs 382. The
combination procedure preferably includes adding
and/or averaging of the respective amplitudes and/or
power levels of the wireless data signals 502, and is
preferably performed on a frame-by-frame basis.
Spec. 18:14-32 (italicized emphases added) (underlined emphasis in
original).
4. Kondo describes a system and method for communicating between a
mobile station 5 and a base station controller 6 using a first base
station 1 receiving plural signal portions, a second base station 3
receiving plural signal portions, and generating an output signal
portion by processing using a diversity reception method to select one

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of the signal portions (see Figs. 1, 2, 5, 7, 17, col. 1, ll. 7-11, col. 1, l.
48 to col. 2, l. 17).
5. Kondo employs a site diversity reception method (see col. 1, ll. 44-45)
which can transmit data with a reduced error rate (col. 3, ll. 45-47) by
using a base station controller to select a signal portion (e.g., a frame
or a bit) from plural signal portions (e.g., frames or bits) having the
highest reception level (i.e., lowest error rate) (col. 2, l. 65 to col. 3, l.
42, col. 4, ll. 57-67, col. 5, ll. 18-27). Error checking is performed by
majority decision (Fig. 18, col. 15, ll. 55-65).
6. Obuchi describes a communication system and method which selects
at least two signal portions from base stations 2-1, 2-2, and 2-3 and
employs a composite device 35 (see Fig. 6) to combine the signal
portions into one signal by weighting them to produce a composite
signal (see Abstract, Fig. 8(b), col. 24, ll. 3-49; col. 34, ll. 56-62).
Obuchi uses a “majority determination” to process the signals in the
composite device 35 (col. 24, ll. 7-10). Composite device 35 (and
composing section 35A) “composes the signals into one signal while
assigning the previously[-]measured error rates as weights to the
signals” (col. 34, ll. 60-62) (emphasis added).
7. Obuchi describes an exchange 3F including a selector which selects
from the signals to selectively output a data signal having a superior
error rate (Fig. 20, col. 34, ll. 63-67). Obuchi describes this as a site
diversity receiving method (col. 1, ll. 10-20).
8. Obuchi discloses that “[s]ince the signals received from the base
stations 2-1 to 2-3 can be composed into one signal while weighting

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the signals according to the error rates, more accurate data can be
obtained” and “performance of the mobile communications system
can be improved” (col. 35, ll. 27-31). Obuchi’s method can “improve
the error rate of a received signal without increasing the amount of
signal data flowing between the base stations and the base-station host
apparatus” (Abstract).

PRINCIPLES OF LAW
Claim Construction
“During examination, ‘claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citation omitted); In re Morris,
127 F.3d 1048, 1053-54 (Fed. Cir. 1997). “[T]he specification ‘is always
highly relevant to the claim construction analysis. Usually, it is dispositive;
it is the single best guide to the meaning of a disputed term.’” Phillips v.
AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (citation omitted).
Additionally, [t]hough understanding the claim language
may be aided by the explanations contained in the written
description, it is important not to import into a claim limitations
that are not a part of the claim. For example, a particular
embodiment appearing in the written description may not be
read into a claim when the claim language is broader than the
embodiment.

SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir.
2004).

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Obviousness
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). The
Examiner’s articulated reasoning in the rejection must possess a rational
underpinning to support the legal conclusion of obviousness. In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006).

ANALYSIS
At the outset we note that each of the independent claims on appeal
(claims 1, 9, 17, 25, 33) recites the same subject matter which is at issue in
this case: generating a final signal by applying a processing operation which
is “operable to perform either of the steps of : [i] selecting one of the . . .
signal portions using . . . signal characteristics, and [ii] combining the . . .
signal portions, wherein combining includes adding or averaging the . . .
signal portions” (claims 1, 9, 17, 25, 33) (emphases added). Appellant only
presents arguments with respect to the independent claims, and does not
contest the rejection of any of the dependent claims.
We will sustain the Examiner’s rejection with respect to independent
claims 1, 9, 17, 25, and 33 for the reasons that follow. We agree with the
Examiner’s findings of fact and conclusions of obviousness with respect to
claims 1 to 40 (Ans. 3-8), and adopt them as our own, along with some
amplification of the Examiner’s explanation of the teachings of Kondo (FF
4, 5) and Obuchi (see FF 6-8). See Fine, 837 F.2d at 1073; Kahn, 441 F.3d
at 988.

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Claims 1, 9, 17, 25, and 33 merely require that either of two
operations be performed: (i) “selecting . . . ,” and (ii) “combining . . .” (see
claims 1, 9, 17, 25, 33). The broadest reasonable interpretation of the phrase
“either” indicates that a processing operation performing one or the other of
the two functions recited in the claims (e.g., selecting and combining) would
be encompassed by the language of the claims. See Am. Acad. of Sci. Tech.
Ctr., 367 F.3d at 1364. In other words, the broadest reasonable
interpretation of claims 1, 9, 17, 25, and 33 merely requires that a
communications system, method, or computer-readable medium direct a
processor to receive signal portions from first and second base transceiver
stations and generate a final signal by applying a processing operation
operable to perform the selection step. The broadest reasonable
interpretation of claims 1, 9, 17, 25, and 33 does not require the system,
method, and computer-readable medium to be operable to perform the
combining step set forth in claims 1, 9, 17, 25, and 33. Therefore, in light of
our findings with respect to Kondo (FF 4, 5) and Obuchi (FF 6-8) supra, the
applied references, whether taken individually or in combination, disclose or
suggest all of the required limitations of the independent claims as broadly
interpreted.
Another interpretation of claims 1, 9, 17, 25, and 33, and one that the
Examiner and Appellant have taken as evidenced from the arguments of
record, is that these claims require that both the selecting and the combining
steps be performed. And, if this interpretation is taken, the last step of the
claims, the combining operation, merely requires that combining occur by
“adding or averaging” (see claims 1, 9, 17, 25, 33) (emphasis added). Thus,

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only one form of combining need take place, either combining including (i)
“adding” of the signal portions, or (ii) “averaging.”
A proper interpretation of claims 1, 9, 17, 25, and 33, giving these
claims their broadest reasonable interpretation consistent with the
Specification as understood by one of ordinary skill in the art (Phillips, 415
F.3d at 1315), has to rely on any definition provided in the originally filed
Specification. The Specification (see FF 2-4) does not provide any
definitions for “adding” or “averaging,” however these are commonly used
terms in mathematics and in the signal communication field. Adding is
simply the operation of summing or combining two or more signals or
values. An average can be a mean, mode, or median.
The Specification (FF 2) only sheds light on one example of
averaging, that of taking an arithmetic mean. Although Appellant’s
Specification provides the specific example of averaging as taking a mean,
“a particular embodiment appearing in the written description may not be
read into a claim when the claim language is broader than the embodiment.”
SuperGuide, 358 F.3d at 875. In the instant case, the use of the phrase
“averaging” in claims 1, 9, 17, 25, and 33 is not limited to the specific
example provided in the Specification. Accordingly, broadly interpreted, the
independent claims on appeal encompass an averaging operation using a
mode or a median.
As indicated supra (FF 6-8), Obuchi describes the salient features of
claims 1, 9, 17, 15, and 33 including combining signals using a weighting
operation and composing a final signal. The weighting operation assigns
weights to the signal portions which are then combined into a composite

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signal (FF 6). Broadly interpreted, Obuchi’s composing operation performs
adding to the extent “adding” is claimed and described in Appellant’s
Specification. Obuchi assigns different weights to different signal portions
and then adds or combines them into a composite signal (FF 6, 8).
Furthermore, taking a majority determination is considered taking a mode,
which is a type of averaging. Therefore, Appellant’s contentions (App. Br.
13; Reply Br. 14; Supp. Reply Br. 15) that Obuchi’s “majority determination
technique is hardly the same as adding or averaging signal portions” are
therefore unpersuasive. Similarly, while we agree with Appellant that
Obuchi’s Figure 8(b) shows a majority determination process, Appellant’s
arguments (App. Br. 13, Reply Br. 15, Supp. Reply Br. 17-18) that Obuchi’s
Figure 8(b) does not disclose adding or averaging signal portions are
unpersuasive. Broadly interpreted, the language of each independent claim
on appeal encompasses the combining step including “adding or averaging”
two signal portions (claims 1, 9, 17, 25, 33), as described by Obuchi (FF 6).
Appellant’s arguments that Kondo and Obuchi, taken individually or
in combination, fail to disclose or suggest selecting or processing signal
portions on either a (i) frame-by-frame, or (ii) bit-by-bit basis are
unpersuasive inasmuch as these arguments are not commensurate in scope
with the claim language. Claims 1, 9, 17, 25, and 33 do not contain the
phrases “frame-by-frame” or “bit-by-bit,” or even the terms “frame” or
“bit.” Even so, we note that Kondo operates on frames and bits, and thus
discloses such a feature (FF 5).
Both Kondo and Obuchi are from the same field of endeavor as
Appellant’s invention, wireless communications systems using diversity

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reception techniques to select the best portions of a signal for composition
into a final signal based on signal portion characteristics such as error rate
(compare FF 1 with FF 4, 5 and FF 6-8). The best signal portions are
concatenated to produce the best final signal. In addition, not only do both
Kondo (FF 4, 5) and Obuchi (FF 7) employ site diversity reception, but they
both describe using majority determination (see FF 5, 6). We agree with the
Examiner that it would have been obvious to modify Kondo with the
weighting technique of Obuchi in order to increase system performance
(Ans. 4). In addition, it would have been obvious to employ the composing
and combining feature including adding and averaging (using the mode
methodology) of Obuchi to enhance Kondo’s system and method in order to
obtain more accurate data and improve the error rate of received signals as
recognized by Obuchi and Kondo (see FF 5, 8). This would in turn be
understood by one of ordinary skill in the art to reduce the required transmit
power of a cellular phone since unwanted and incorrect bits would not need
to be transmitted, accomplishing the objective recognized by Appellant as
desirable in wireless communications systems, reducing transmit power (see
FF 1).
The Examiner has provided articulated reasoning with a rational
underpinning to support the combination for the legal conclusion of
obviousness (Ans. 3-8). See Kahn, 441 F.3d at 988. Appellant has failed to
rebut the Examiner’s showing that Kondo and Obuchi teach or suggest all of
the limitations of claims 1, 9, 17, 25, and 33. Appellant’s contentions that (i)
no motivation to combine Kondo and Obuchi exists other than hindsight
(App. Br. 10-11, Reply Br. 10-12, Supp. Reply Br. 10-12), and (ii) there is

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no reasonable expectation of success for Kondo as modified by Obuchi to
perform the claimed invention (App. Br. 11-12, Reply Br. 12-13, Supp.
Reply Br. 12-14) are unpersuasive.
In view of our discussion as to the breadth of the claim terminology,
along with the teachings and suggestions of Kondo and Obuchi supra,
Appellant has not demonstrated that the Examiner erred in relying on the
combination of Kondo and Obuchi as teaching or suggesting a
communication system, method, and computer readable-medium operable to
direct a processor to receive signal portions from first and second base
transceiver stations and generate a final signal by selecting one of the signal
portions and combining signal portions, as set forth in independent claims 1,
9, 17, 25, and 33.
Under the broadest reasonable interpretation, the independent claims
on appeal do not require the combining operation set forth at the end of
claims 1, 9, 17, 25, and 33. As indicated supra (FF 4-8), both Kondo and
Obuchi describe all of the elements of the independent claims including a
selection operation which is commonplace in wireless communications
systems using site diversity reception to receive a signal from multiple base
stations. In other words, claims 1, 9, 17, 25, and 33 read in their entirety on
Kondo or Obuchi, whether considered alone or in combination with each
other, and the teachings of one are cumulative of what is disclosed by the
other.1

1 “[A] lack of novelty in the claimed subject matter, e.g., as evidenced by a
complete disclosure of the invention in the prior art, is the ‘ultimate or
Footnote continued on next page.

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For all of the above reasons, Appellant’s arguments have not
persuaded us of error in the Examiner’s rejection of claims 1, 9, 17, 25, and
33 under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Kondo and Obuchi. One of ordinary skill in the art would have found
Appellant’s claimed subject matter in claims 1, 9, 17, 25, and 33 obvious in
light of the combination of Kondo and Obuchi. Accordingly, we sustain the
rejection of claims 1, 9, 17, 25, and 33. Claims 2 to 8, 10 to 16, 18 to 24, 26
to 32, and 34 to 40 were not argued separately, and fall together with their
respective independent claims. See 37 C.F.R. § 41.37(c)(1)(vii). Therefore,
we sustain the rejection of these claims for the same reasons discussed with
respect to claims 1, 9, 17, 25, and 33.

CONCLUSION OF LAW
It would have been obvious to one of ordinary skill in the art to
combine the communication systems and methods taught by Kondo and
Obuchi, thereby rendering obvious the communication systems, method, and
computer-readable medium directing a processor to perform either of the
steps of (i) selecting signal portions, and (ii) combining signal portions by
adding and/or averaging the signal portions.

epitome of obviousness.’” In re Fracalossi, 681 F.2d 792, 794 (CCPA
1982) (internal citation omitted). “[A] rejection for obviousness under § 103
can be based on a reference which happens to anticipate the claimed subject
matter.” In re Meyer, 599 F.2d 1026, 1031 (CCPA 1979).

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A proper construction of the independent claims on appeal does not
require the system, method, and computer-readable medium to be operable
to perform the combining step set forth in claims 1, 9, 17, 25, and 33.

ORDER
The decision of the Examiner to reject claims 1 to 40 is 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)(1)(iv).

AFFIRMED

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