Ex Parte Son et al

Patent Trial and Appeal Board

Jun 6, 2013

11455142 (P.T.A.B. Jun. 6, 2013)

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.
11/455,142 06/16/2006 Young-II Son 678-2596 (P13329) 8896
66547 7590 06/07/2013
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
TSVEY, GENNADIY
ART UNIT PAPER NUMBER
2648
MAIL DATE DELIVERY MODE
06/07/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YOUNG-II SON, WOO YONG LEE,
HYUNG-WEON PARK, and CHUL-JIN KIM
____________

Appeal 2011-009494
Application 11/455,142
Technology Center 2600
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/455,142
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STATEMENT OF THE CASE
The Examiner finally rejected claims 1-19. Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
INVENTION
This invention relates to a wireless transceiver. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. An apparatus for control of Input 3rd order Intercept Point
(IIP3) in a multi-mode multi-band wireless transceiver, the
apparatus comprising:
[a] a mixer for down-converting an incoming wireless
signal which is received through each frequency band and is
then low noise-amplified, and then directly passed to the mixer
from a low noise-amplifier;
[b] a baseband chip for providing mixer IIP3 control
information according to a current mode of whether the
apparatus employs frequency Division Duplexing (FDD) and
transmission power level of the wireless transceiver; and
[c] a mixer IIP3 controller for controlling the IIP3 of the
mixer based on the mixer IIP3 control information.
(Disputed limitation emphasized).

REJECTIONS
R1. The Examiner rejected claims 12 and 16 under 35 U.S.C. § 102(b)
as being anticipated by Loke (U.S. Pat. 6,311,048 B1).
R2. The Examiner rejected claims 1, 2, 7-9, and 17 under 35 U.S.C.
§ 103(a) based upon the combined teachings and suggestions of Loke and
Haub (U.S. Pat. App. Pub. No. 2004/0152429 A1).
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R3. The Examiner rejected claims 3-5 and 10 under 35 U.S.C.
§ 103(a) based upon the combined teachings and suggestions of Loke, Haub,
and Birleson (U.S. Pat. 7,171,176 B1).
R4. The Examiner rejected claims 13, 14, and 18 under 35 U.S.C.
§ 103(a) based upon the combined teachings and suggestions of Loke and
Birleson.
R5. The Examiner rejected claim 6 under 35 U.S.C. § 103(a) based
upon the combined teachings and suggestions of Loke, Haub, Birleson, and
Kalinsky (Kalinsky, D. and Kalinsky, R. "Introduction to Serial Peripheral
Interface," Embedded.com, Feb. 01, 2002).
R6. The Examiner rejected claim 11 under 35 U.S.C. § 103(a) based
upon the combined teachings and suggestions of Loke, Haub, and Kalinsky.
R7. The Examiner rejected claims 15 and 19 under 35 U.S.C. § 103(a)
based upon the combined teachings and suggestions of Loke and Kalinsky.

ANALYSIS
We disagree with Appellants' contentions regarding the Examiner's
rejections of the claims. We adopt as our own: (1) the findings and reasons
set forth by the Examiner in the action from which this appeal is taken, and
(2), the reasons set forth by the Examiner in the Answer in response to
arguments made in Appellants' Appeal Brief. (Ans. 14-24). We highlight
and address specific findings and arguments below.

Petitionable matter
Appellants contend the Examiner's Answer sets forth a new ground of
rejection for R1. (Reply Br. 2). However, this issue is a petitionable matter.
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Therefore, this issue is not before us.1 Moreover, a review of the record
indicates that a petition was not filed within two months of the mailing date
of the Examiner’s Answer. See MPEP §1207.03.
R1. Claims 12 and 16
Issue: Under §102, did the Examiner err in finding Loke
expressly or inherently discloses "[b] a baseband chip for
providing mixer IIP3 control information according to a current
mode of whether the apparatus employs frequency Division
Duplexing (FDD) and . . . ", within the meaning of claims 12
and 16? Specifically, the issue turns upon whether Loke
inherently discloses that Loke's CDMA receiver uses FDD.

The Examiner relies on Loke as inherently disclosing the limitation at
issue.2 (Ans. 4-6, 14-21). Specifically, the Examiner finds Loke discloses

1 MPEP §1207.03:
If appellant believes that an examiner’s answer contains a new
ground of rejection not identified as such, appellant may file a
petition under 37 CFR 1.181(a) within two months from the
mailing of the examiner’s answer requesting that a ground of
rejection set forth in the answer be designated as a new ground
of rejection.
MPEP §1207.03, IV (Eighth Edition, August 2001, Revised August 2012).
2 Anticipation of a claim under 35 U.S.C. § 102 occurs when each claimed
element and the claimed arrangement or combination of those elements is
disclosed, inherently or expressly, by a single prior art reference.
Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir.
2010). A reference inherently discloses an element of a claim “if that
missing characteristic is necessarily present, or inherent, in the single
anticipating reference.” Schering Corp. v. Geneva Pharms., 339 F.3d 1373,
1377 (Fed. Cir. 2003) (citation omitted) (emphasis added).
Once a prima facie case of anticipation has been established, the
burden shifts to the Appellant to prove that the prior art product does not
necessarily or inherently possess the characteristics of the claimed product.
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"[i]n one mode of operation, an IS95 compliant CDMA system permits
duplex communications-that is, simultaneous transmission and reception of
an RF signal." (Loke col. 1, ll. 34-36; Ans. 4, 16 (emphasis added)).
The Examiner additionally finds Loke discloses "[t]he CDMA
processor 116 generates several outputs. One output is a Mode single,
indicating whether the transceiver is operating in duplex mode or simplex
mode." (Loke col. 3, ll. 4-6; See col. 3, ll. 44-47; Ans. 5, 20 (emphasis
added)). Under § 102, the Examiner is permitted to support a finding of
inherent disclosure in a reference by citing extrinsic supporting evidence,
such as other references.3 The Examiner finds that Liu discloses "CDMA
(IS95) [operates] in FDD mode." (Ans. 16; Liu ¶ [0002]). Thus the
Examiner finds that an embodiment of Loke’s apparatus operates in a duplex

In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the claimed
and prior art products are identical or substantially identical, or are produced
by identical or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product.”); see also In re Spada,
911 F.2d 705, 708-09 (Fed. Cir. 1990); Crown Operations Int'l, LTD v.
Solutia Inc., 289 F.3d 1367, 1377 (Fed. Cir. 2002). Our reviewing court
further guides that “[i]nherency [] may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set of
circumstances is not sufficient.” Therasense, 593 F.3d at 1332 (citing Cont'l
Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991))
(emphasis added).
3 “To serve as an anticipation when the reference is silent about the asserted
inherent characteristic, such gap in the reference may be filled with recourse
to extrinsic evidence. Such evidence must make clear that the missing
descriptive matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill.”
Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268, 20
USPQ2d 1746, 1749 (Fed. Cir. 1991). See also MPEP §2131.01(III).
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mode using IS95 compliant CDMA and Liu discloses that "CDMA (IS95)
[operates] in FDD mode." (Ans. 4-5, 16, 20).
On this record, we find the Examiner has established that Loke
inherently discloses Loke's apparatus operates in a duplex mode using IS95
compliant CDMA employing FDD. (Ans. 4-6, 14-21).
Appellants respond:
Loke is directed to intelligent control of linearity in
electronic receivers, such as CDMA receivers. (see Loke, at
col. 1, lines 5-10). It is well known that CDMA receivers may
operate based on frequency division duplexing (FDD), time
division duplexing (TDD), or a hybrid of both FDD and TDD.
In contrast with the requirements of inherency, one of ordinary
skill in the art would not understand that FDD is necessarily
present in Loke, since the duplexing employed could be TDD,
FDD or a hybrid thereof.
(Reply Br. 3).
Appellants' contentions are not persuasive. Appellants present no
evidence to support that "[i]t is well known that CDMA receivers may
operate based on frequency division duplexing (FDD), time division
duplexing (TDD), or a hybrid of both FDD and TDD." (Reply Br. 3).
Appellants' contention does not rebut the Examiner's finding that Loke
inherently discloses operating in FDD because Appellants present no
evidence to support this assertion. (Id.). We also observe that Appellants
acknowledge one embodiment of CDMA operates in FDD. (Reply Br. 3;
Ans. 4-6, 14-21).
Moreover, Loke discloses that Loke's CMDA apparatus's duplex
mode operates using Frequency Modulation (FM), not Time Modulation
(TM). (Col. 4, ll. 28-35). Since only FDD uses Frequency Modulation
(FM), Loke's disclosure further supports the finding that Loke's CDMA
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apparatus' duplex mode operates using Frequency Modulation (FM) in FDD.
(Id.).
Notwithstanding Appellants' contentions, we find the weight of the
evidence supports the Examiner's finding of anticipation. (Ans. 4-6, 14-21).
For these reasons, on this record, we are not persuaded of Examiner error.

R2-R7. REMAINING CLAIMS
Although Appellants present nominal separate arguments for rejected
claims not addressed above, we affirm the Examiner's rejections of all
rejected claims for the reasons set forth by the Examiner in the Answer and
for the reasons discussed above regarding commensurate limitations and
issues.

DECISION
We affirm the Examiner's rejection R1 of claims 12 and 16 under
§ 102.
We affirm the Examiner's rejections R2-R7 of claims 1-11, 13-15, and
17-19 under § 103.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1)(iv).

ORDER
AFFIRMED

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