Ex Parte Zhitnitsky

Patent Trial and Appeal Board

Feb 18, 2015

12030066 (P.T.A.B. Feb. 18, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte GENE E. ZHITNITSKY
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Appeal 2012-011686
Application 12/030,066
Technology Center 2600
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Before ANDREW J. DILLON, BRETT C. MARTIN, and
IRVIN E. BRANCH, Administrative Patent Judges.

BRANCH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2012-011686
Application 12/030,066
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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to finally reject claims 1–21. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part.
Illustrative Claim
Appellant’s claimed subject matter relates to a multi-band radio
frequency communication device using a single antenna. Abstract.
Claims 1 and 21 are reproduced below with the disputed limitation
italicized:
1. A wireless communication device, comprising:
a single antenna;
an n-plexer coupled to the antenna, a global positioning
system (GPS) receive path, and first transmit and receive paths
configured to transmit and receive signals, respectively, in a
first radio frequency (RF) communication band while GPS
location signals are received through the single antenna;
a bypass path bypassing the n-plexer and configured to
transmit and receive signals in a second RF communication
band while the GPS location signals are received through the
single antenna; and
a switch configured to selectively couple the bypass path
to the antenna.

21. A wireless communication device, comprising:
a single antenna;
a global positioning system (GPS) receive path coupled
to the single antenna;
a radio frequency (RF) transmit path coupled to the
single antenna and configured to transmit transmission signals
in an RF communication band while GPS location signals are
received through the single antenna; and
a radio frequency (RF) receive path coupled to the single
antenna and configured to receive reception signals in the RF
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communication band while GPS location signals are received
through the single antenna.

Rejections
Claims 1–8 and 12–18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lee (US 2006/0199549 A1; published Sept. 7, 2006) and
Sue (US 2006/0234658 A1; published Oct. 19, 2006). Ans. 5–8.
Claims 9–11 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Lee, Sue, and Mahbub (US 2006/0067254 A1; published Mar. 30,
2006). Ans. 9–10.
Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sue and Lee. Ans. 10–12.
Claim 21 stands rejected under 35 U.S.C. § 102(b) as unpatentable
over Sue. Final Office Action 4–5.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments in the Appeal Brief (“App. Br.” filed Apr. 13, 2012) and Reply
Brief (“Reply Br.” filed Aug. 7, 2012). We refer to the Briefs and the
Answer (“Ans.” mailed June 7, 2012) for the respective positions of
Appellant and the Examiner.
Rejection of Claim 1 Over Sue and Lee
The Examiner finds that Lee discloses all elements of claim 1 (Ans. 5
(citing Lee, Fig.2 and ¶ 22)), except that “Lee does not explicitly disclose a
single antenna and a global positioning system (GPS) receive path and GPS
location signals are received through the single antenna.” Id. For these
features, the Examiner cites Sue (id. (citing Fig. 2)), reasoning that “it would
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have been obvious to a person of ordinary skill in the art at the time the
invention was made to modify the teachings of Lee with the teachings of Sue
in order to provide a compactly design multimode integrated mobile phone
with simultaneous GPS reception during cellular communication.” Id.
Appellant argues that the Examiner erred in rejecting claim 1 because
Sue does not teach the claimed subject matter and teaches away from the
claimed combination. App. Br. 10–12. Appellant also argues that the
Examiner’s motivation to combine is flawed because “Sue does not allow
for ‘simultaneous GPS reception during cellular communication’.” App. Br.
12–13. Appellant asserts that “the combination and modification of the
teachings of Lee does not arrive at Appellant’s claimed subject matter
because the resulting combination would isolate the GPS reception from
cellular communication in the same manner as Sue does independently” and
“[n]othing is gained from the combination of Lee and Sue with respect to the
claimed subject matter because there is no teaching or suggestion in Lee or
Sue to combine GPS reception with other communication bands.” Id. at 13.
The Examiner finds that claim 1 requires reception of GPS signals at
the antenna only and does not recite further processing of the signals or
propagation of GPS signals to any other part of the mobile terminal. Ans.
13. Appellant responds that “one of skill in the art would not consider that
simply exposing an antenna to a signal (e.g., reception ‘at’ an antenna)
would be equivalent to reception ‘through’ an antenna.” Reply Br. 2.
Appellant attempts to support this assertion with reference to teachings from
Sue. Id. at 3–4.
We do not find Appellant’s reference to Sue persuasive evidence of
how one skilled in the art would construe Appellant’s claim. Appellant does
not provide argument or evidence sufficient to persuade us that the
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Examiner’s construction is unreasonably broad or that it is not met by Sue’s
disclosure. We agree with the Examiner that the claim recites “the RF first
or second band signals and GPS location signals are received through a
single antenna and only through the single antenna and nothing further.”
Ans. 12.
We note that Appellant is not without recourse. Appellant may, for
example, amend the claim to recite propagation of the GPS location signals
beyond the antenna or further processing of the signals beyond mere receipt
“through the antenna.” Prosecution is the time to remove uncertainties in
claim scope. See, e.g., In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989).
Appellant’s further arguments regarding the teachings of Sue, Sue’s
teaching away, and the Examiner’s motivation to combine the references
(App. Br. 10–14; Reply Br. 5) are unavailing because they are premised on
Appellant’s unwarranted, narrower claim construction. Appellant’s
argument regarding Sue not teaching a “single antenna” (Reply Br. 3–4) are
unpersuasive because the claim is open-ended and does not preclude a
second antenna being present in the references.
Accordingly, based on the record before us, we are unpersuaded of
error in the Examiner’s rejection of claim 1. We sustain the rejection of
claim 1, as well as, the Examiner’s rejection of claims 2–8 and 12–18, which
Appellant argues together with claim 1. We also sustain the Examiner’s
rejection of claims 19 and 20, which Appellant argues based on arguments
presented with respect to claim 1.
Rejection of Claim 21 Over Sue and Lee
We reach a different conclusion regarding the Examiner’s rejection of
claim 21. Claim 21 recites a GPS receive path, an RF transmit path, and an
RF receive path, all coupled to an antenna. We do not find that Sue
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describes such simultaneous coupling of three paths to an antenna.
Accordingly, we do not sustain the Examiner’s rejection of claim 21.

DECISION
We sustain the Examiner’s decision to rejection claims 1–20. We do
not sustain the Examiner’s decision to reject claim 21.
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

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