Ex Parte Thomson

Board of Patent Appeals and Interferences

May 25, 2007

10177732 (B.P.A.I. May. 25, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID J. THOMSON
____________

Appeal 2007-0759
Application 10/177,732
Technology Center 2600
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Decided: May 25, 2007
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Before KENNETH W. HAIRSTON, HOWARD B. BLANKENSHIP, and
ALLEN R. MACDONALD, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1 to 20. We have jurisdiction under 35 U.S.C. § 6(b).
Appellant has invented a method of estimating a channel. The method
employs one or more basis functions that describe the channel based on
statistics of the channel, and the method employs one or more waveforms
Appeal 2007-0759
Application 10/177,732

that are matched to the channel. The method estimates coefficients for the
basis functions using real-time data by solving a set of linear equations to
thereby estimate the channel (Specification 2 and 3).
Claim 1 is representative of the claims on appeal, and it reads as
follows:
1. A method for estimating a channel, comprising the steps of:

employing one or more basis functions that describe said channel
based on statistics of said channel;

employing one or more waveforms that are matched to said channel;
and

estimating coefficients for said basis functions using real-time data by
solving a set of linear equations to estimate said channel.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Alard US 6,263,029 B1 Jul. 17, 2001
Siala US 6,674,740 B1 Jan. 6, 2004
(filed Aug. 13, 1999)
The Examiner rejected claims 1 to 17 under 35 U.S.C. § 101 as being
directed to nonstatutory subject matter. The Examiner rejected claims 1, 2, 4
to 9, 13, and 17 to 20 under 35 U.S.C. § 102(e) based upon the teachings of
Siala. The Examiner rejected claim 10 under 35 U.S.C. § 103(a) based upon
the teachings of Siala and Alard.
Appellant contends that the nonstatutory subject matter rejection is
without merit because the claimed “transformation to a channel estimate or
in-band estimate provides a useful, concrete and tangible result” (Br 5;
Reply Br. 3). With respect to the prior art rejections, Appellant contends
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Application 10/177,732

that Siala does not solve a set of linear equations to estimate the channel (Br.
6; Reply Br. 4 and 5).
We hereby sustain the nonstatutory subject matter rejection, and
reverse the prior art rejections.
ISSUE (1)
Is the claimed method of estimating a channel directed to statutory
subject matter under 35 U.S.C. § 101?
FINDINGS OF FACT (1)
According to Appellant’s disclosure, the first step of employing one
or more basis functions that describe said channel based on statistics of the
channel is determined by solving a Karhunen-Loeve expansion algorithm
(Specification 2). The step of employing one or more waveforms that are
matched to the channel uses Slepian mathematical sequences or similar
sequences (Specification 2). The step of solving linear equations to estimate
the channel is performed by solving channel estimation coefficient equations
(Specification 8 to 13). After solving the algorithms and equations, the
result can be used as one of the inputs to the multiplexer 430 in the
transmitter (Figure 4).
PRINCIPLE OF LAW (1)
A method or process claim that applies a mathematical algorithm to
“produce a useful, concrete, tangible result without pre-empting other uses
of the mathematical principle, on its face the claimed process comfortably
falls within the scope of § 101.” AT&T Corp. v. Excel Communications,
Inc., 172 F.3d 1352, 1358, 50 USPQ2d 1447, 1452 (Fed. Cir. 1999).
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Application 10/177,732

ANALYSIS (1)
Appellant’s disclosed and claimed invention is completely silent as to
what is used to solve the algorithms and mathematical equations. The
Examiner mentions a computer, but we find no mention in the disclosure of
the use of such a device to solve the algorithms and equations (Answer 3).
Thus, the disclosure does not rule out the use of a pencil and paper to solve
the algorithms and equations. Even if a computer was used by Appellant,
we find that the solved result of the algorithms and equations is merely a
solved mathematical result that is never applied to something to produce
some kind of response or result. Thus, we agree with the Examiner that the
claimed invention is directed to a series of steps that are performed as a
“purely mathematical algorithm” (Answer 3). We additionally agree with
the Examiner’s conclusion that method claims that “merely manipulate an
abstract idea or perform a purely mathematical algorithm is [sic, are] non-
statutory despite the fact that it might inherently have some usefulness”
(Answer 3).
ISSUE (2)
Does Siala solve a set of linear equations to estimate a channel?
FINDINGS OF FACT (2)
Siala uses an Estimation-Maximization (EM) algorithm to construct
the most likely channel (col. 3, ll. 35 to 42). Siala is silent as to the use of
linear versus non-linear equations to construct the most likely channel. The
only mention of linear in Siala is in connection with a conventional Code
Division Multiple Access (CDMA) receiver that uses a linear estimation
algorithm (col. 13, l. 63 to col. 14, l. 7).
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Application 10/177,732

PRINCIPLE OF LAW (2)
Anticipation is established when a single prior art reference discloses
expressly or under the principles of inherency each and every limitation of
the claimed invention. See Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342,
1347, 51 USPQ2d 1943, 1946 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475,
1478-79, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994).
ANALYSIS (2)
Appellant contends that the EM algorithm described by Siala is an
iterative and nonlinear algorithm (Br. 6; Reply Br. 4).
In view of the lack of a disclosure in Siala as to the type of equation
used to arrive at the likely channel, and the mention of linear only in
connection with a conventional receiver and algorithm, we agree with the
Appellant that Siala neither expressly nor inherently discloses the use of
linear equations to solve the EM algorithm.
CONCLUSIONS
The Examiner has established that claims 1 to 17 are directed to
nonstatutory subject matter. Anticipation has not been established by the
Examiner for claims 1, 2, 4 to 9, 13, and 17 to 20 because Siala lacks the
required linear equations to estimate the channel. Obviousness of the
claimed subject matter set forth in claim 10 has not been established by the
Examiner because Alard fails to cure the noted shortcoming in the teachings
of Siala.
DECISION
The nonstatutory subject matter rejection of claims 1 to 17 is affirmed.
The anticipation rejection of claims 1, 2, 4 to 9, 13, and 17 to 20 is reversed,
and the obviousness rejection of claim 10 is reversed.
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Application 10/177,732

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-IN-PART

tdl/ce

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