Otmar RengertDownload PDFPatent Trials and Appeals BoardFeb 11, 20212019006309 (P.T.A.B. Feb. 11, 2021) Copy Citation 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. 13/985,292 10/24/2013 Otmar Rengert 8457-US 9279 69054 7590 02/11/2021 RECHES PATENTS HaArba''a Towers North Tower TEL AVIV, 6473925 ISRAEL EXAMINER LAM, DUNG LE ART UNIT PAPER NUMBER 2646 NOTIFICATION DATE DELIVERY MODE 02/11/2021 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 following e-mail address(es): OREN@I-P.CO.IL eofficeaction@appcoll.com patents@geraghtyipservices.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte OTMAR RENGERT Appeal 2019-006309 Application 13/985,292 Technology Center 2600 Before ST. JOHN COURTENAY III, LARRY J. HUME, and PHILLIP A. BENNETT, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision rejecting claims 1–25, which are all claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as DSP Group Ltd. Appeal Br. 3. Appeal 2019-006309 Application 13/985,292 2 STATEMENT OF THE CASE2 The claims relate to “operation of a base station of [a] cordless telephone.” See Spec. ¶ 1. Specifically, the embodiments of the invention relate to a method for “reducing power consumption in a base station of a cordless handset supporting a subset of a plurality of carrier frequencies supported by the base station, the method comprising disconnecting power to a receiver of the base station for carrier frequencies that are not supported by the cordless handset, thereby reducing power consumption by the base station.” Spec. p. 3, ll. 3–8. Exemplary Claim Claim 1, reproduced below, is representative of the subject matter on Appeal: 1. A method for reducing power consumption in a base station, the method comprising: periodically selecting a next carrier frequency out of a plurality of carrier frequencies that are supported by a receiver of the base station; wherein the plurality of carrier frequencies comprises one or more carrier frequencies that are supported by a cordless handset and one or more carrier frequencies that are not supported by the cordless handset; supplying power to the receiver of the base station when the next carrier frequency is supported by the cordless handset; and 2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed May 10, 2018); Appellant’s Reply Brief (“Reply Br.,” filed Aug. 6, 2019); Examiner’s Answer (“Ans.,” mailed Aug. 29, 2018); Final Office Action (“Final Act.,” mailed Nov. 17, 2017); and the original Specification (“Spec.,” filed Aug. 14, 2013). Appeal 2019-006309 Application 13/985,292 3 not supplying power to the receiver of the base station when the next carrier frequency is not supported by the cordless handset. REFERENCES The prior art relied upon by the Examiner as evidence is: Name Reference Date Miller, II et al. (“Miller”) US 5,574,775 Nov. 12, 1996 Zicker US 5,774,805 June 30, 1998 Nagashima US 6,463,050 B1 Oct. 8, 2002 Monte et al. (“Monte”) US 2007/0281611 A1 Dec. 6, 2007 Karls et al. (“Karls”) US 2009/0104913 A1 Apr. 23, 2009 Rofougaran US 2010/0159864 Al June 24, 2010 REJECTIONS R1. Claims 1–11, 13–17, 20, and 21 stand rejected under 35 U.S.C. § 103 as being unpatentable over the combination of Zicker, Nagashima, and Miller. Final Act. 2. R2. Claims 12 and 22 stand rejected under 35 U.S.C. § 103 as being unpatentable over the combination of Zicker, Nagashima, Miller, and Monte. Final Act. 8. R3. Claims 18 and 19 stand rejected under 35 U.S.C. § 103 as being unpatentable over the combination of Zicker, Nagashima, Miller, and Karls. Final Act. 10. R4. Claims 23–25 stand rejected under 35 U.S.C. § 103 as being unpatentable over the combination of Zicker, Nagashima, Miller, and Rofougaran. Final Act. 10. Appeal 2019-006309 Application 13/985,292 4 CLAIM GROUPING Based on Appellant’s arguments (Appeal Br. 10–17) and our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of obviousness Rejection R1 of claims 1, 5–11, 13, 15–17, 20, and 21 on the basis of representative claim 1; we decide the appeal of obviousness Rejection R1 of dependent claims 2, 3, and 14 on the basis of claim 2; we decide the appeal of obviousness Rejection R1 of dependent claims 4, 10, and 17 on the basis of claim 4; and we decide the appeal of obviousness Rejection R2 of dependent claims 12 and 22 on the basis of claim 12. Remaining claims 18, 19, and 23–25 in Rejections R3 and R4, not substantively or separately argued, stand or fall with the respective independent claim from which they depend.3 ISSUES AND ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellant. To the extent Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv). 3 “Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv). In addition, when Appellant does not separately argue the patentability of dependent claims, the claims stand or fall with the claims from which they depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986). Appeal 2019-006309 Application 13/985,292 5 We disagree with Appellant’s arguments with respect to claims 1, 2, 4, and 12 and, unless otherwise noted, we incorporate by reference herein and 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 and rebuttals set forth in the Examiner’s Answer in response to Appellant’s arguments. We highlight and address specific findings and arguments regarding claim 1, 2, 4, and 12 for emphasis as follows. 1. § 103 Rejection R1 of Claims 1, 5–11, 13, 15–17, 20, and 21 Issue 1 Appellant argues (Appeal Br. 10–14; Reply Br. 2–5) the Examiner’s rejection of claim 1 under 35 U.S.C. § 103 as being obvious over the combination of Zicker, Nagashima, and Miller is in error. These contentions present us with the following issues: (a) Did the Examiner err in combining Zicker, Nagashima, and Miller because Miller allegedly teaches away from the claimed invention? (b) Did the Examiner err in finding the cited prior art combination teaches or suggests “[a] method for reducing power consumption in a base station” that includes, inter alia, the limitations of: periodically selecting a next carrier frequency out of a plurality of carrier frequencies that are supported by a receiver of the base station; wherein the plurality of carrier frequencies comprises one or more carrier frequencies that are supported by a cordless handset and one or more carrier frequencies that are not supported by the cordless handset; supplying power to the receiver of the base station when the next carrier frequency is supported by the cordless handset; and Appeal 2019-006309 Application 13/985,292 6 not supplying power to the receiver of the base station when the next carrier frequency is not supported by the cordless handset, as recited in claim 1? (c) Did the Examiner err in combining Zicker, Nagashima, and Miller because Nagashima allegedly teaches away from the claimed invention? Principles of Law During prosecution, claims must be given their broadest reasonable interpretation when reading claim language 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). Under this standard, we interpret claim terms using “the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). “[O]ne cannot show non-obviousness by attacking references individually where . . . the rejections are based on combinations of references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” Id. at 425. Appeal 2019-006309 Application 13/985,292 7 In KSR, the Court stated “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. . . . [A] court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions. Id. at 417. Further, the relevant inquiry is whether the Examiner has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418). Analysis (a) Miller does not Teach Away from the Claimed Invention “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Ricoh Co., Ltd. v. Quanta Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (citations omitted). A reference does not teach away if it merely expresses a general preference for Appeal 2019-006309 Application 13/985,292 8 an alternative invention from amongst options available to the ordinarily skilled artisan, and the reference does not discredit or discourage investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). In alleging that Miller teaches away from the claimed invention, Appellant argues Miller’s surveying all available channels “requires powering the receiver during the reception of all channels available — and thus Miller teaches away from not supplying power to the receiver of the base station when the next carrier frequency is not supported by the cordless handset.” Appeal Br. 11 (emphasis omitted). Appellant further argues “the office can not just cite certain parts of Miller that may (according to the office) support the 35 USC 103 rejection — and ignore other parts of Miller (as cited above) that do not support the 35 USC 103 rejection.” Id. In response, the Examiner finds: Miller is only used to show that the carrier frequencies could be from those not supported by the handset when the claim is directed to the base station. Miller does not explicitly discourage supplying power to the receiver and in fact is discussing switching between different receivers. Ans. 2. We agree with the Examiner’s findings and legal conclusions of obviousness because we find a person of ordinary skill in the art, upon reading Miller, would not have been discouraged from selecting a carrier frequency from those frequencies supported by a receiver of the base station. We note claim 1 recites the term “selecting” which does not preclude surveying frequencies that are not supported by the cordless handset, prior to selecting a carrier frequency. Appeal 2019-006309 Application 13/985,292 9 (b) Disputed Limitations are Taught or Suggested by Zicker and Nagashima The Examiner relies upon the combination of Zicker, Nagashima, and Miller as teaching or suggesting the contested limitations. Final Act. 2–5 (citations omitted). The Examiner specifically finds Zicker’s Figure 8 teaches or at least suggests “periodically selecting a next carrier frequency out of a plurality of carrier frequencies that are supported by a receiver of the base station,” “supplying power to the receiver of the base station when the next carrier frequency is supported by the cordless handset,” and “not suppling power to the receiver of the base station when the next carrier frequency is not supported by the cordless handset.” Final Act. 2–3. Appellant argues “[t]he selection of Zicker does not include selecting frequencies that are not supported by the cordless handset.” Appeal Br. 12. Appellant specifically argues “Zicker does not discuss power saving and does not teach or suggest supplying power to the receiver of the base station when the next carrier frequency is supported by the cordless handset; and not supplying power to the receiver of the base station when the next carrier frequency is not supported by the cordless handset.” Id. Although Appellant concedes “tuning to a carrier will require supplying power to the receiver,” Appellant argues “Zicker does not teach or suggest that not tuning to a selected unsupported carrier would result in not supplying power.” Appeal Br. 13. We are not persuaded by Appellant’s argument because we find Zicker’s depiction in Figure 8 of selecting a channel from “Available Channel List 62,” and not selecting a channel from “Dormant Channel list 70” teaches or at least suggests the claim 1 disputed limitation “not Appeal 2019-006309 Application 13/985,292 10 supplying power to the receiver of the base station when the next carrier frequency is not supported by the cordless handset.” See Zicker, Fig. 8. We are also not persuaded by Appellant’s argument because Appellant is arguing the references separately. Although the Examiner cites Zicker for the disputed limitation, the Examiner specifically cites Nagashima, for the teaching of not supplying power to the receiver of the base station. See Final Act. 3, citing Nagashima. Appellant also argues Nagashima does not teach or suggest the same disputed limitations: Periodically selecting a next carrier frequency out of a plurality of carrier frequencies that are supported by a receiver of the base station; wherein the plurality of carrier frequencies comprises one or more carrier frequencies that are supported by a cordless handset and one or more carrier frequencies that are not supported by the cordless handset; supplying power to the receiver of the base station when the next carrier frequency is supported by the cordless handset; and not supplying power to the receiver of the base station when the next carrier frequency is not supported by the cordless handset. Appeal Br. 13. Appellant argues this is because Nagashima’s receivers and transmitters use the same frequencies (in a TDMA scheme), and so “most of the time each receiver of the radio system is closed even [if] a carrier frequency is supported by the transmitter associated to the receiver.” Id. Notwithstanding Nagashima’s use of TDMA, we are not persuaded by Appellant’s argument because we find Nagashima’s description of the receiver of radio system 101 switching on and off in certain time slots in order to save power teaches or at least suggests the disputed claim 1 Appeal 2019-006309 Application 13/985,292 11 limitation of “not supplying power to the receiver of the base station.” See Nagashima Fig. 2, col. 2, ll. 48–50. Nagashima’s power is supplied to the receiver when the output of the logic circuit 108 changes to a logical high resulting in reduced power consumption of the base station. Id. at col. 4, ll. 53–59. Therefore, on this record, we are not convinced the Examiner erred because we find both Zicker and Nagashima at least suggest not supplying power to the receiver of the base station when the next carrier frequency is not supported by the cordless handset. We do not conclude the Examiner’s claim interpretation is overly broad or unreasonable, because Appellant does not point to any limiting definition, in the claim, or in the Specification, that would preclude the Examiner’s broad but reasonable construction of the disputed limitations. (c) Nagashima does not Teach Away from the Claimed Invention In alleging that Nagashima teaches away from the claimed invention, Appellant argues Nagashima teaches away from using multiple frequencies and thus teaches away from the subject matter of claim 1. Appeal Br. 13. We are not persuaded by Appellant’s arguments because while Nagashima describes a TDMA scheme and its advantages under certain conditions, it does not discredit or discourage the solution claimed by Appellant. See Fulton, 391 F.3d at 1201. Accordingly, we are not persuaded that Nagashima “teaches away.” We agree with the Examiner’s underlying factual findings and legal conclusions of obviousness because we find a person of ordinary skill in the art, upon reading Miller, would not have been discouraged from selecting a Appeal 2019-006309 Application 13/985,292 12 carrier frequency from those frequencies supported by a receiver of the base station. We note claim 1 recites the term “selecting” which does not preclude first surveying frequencies that are not supported by the cordless handset. Accordingly, we sustain the Examiner’s obviousness rejection of independent claim 1, and grouped claims 5–11, 13, 15–17, 20, and 21, which fall therewith. See Claim Grouping, supra. 2. § 103 Rejection R1 of Dependent Claims 2, 3, and 14 Dependent claim 2 recites: 2. The method according to claim 1, wherein the periodically selecting comprises repeating the selecting of the next carrier frequency after a predefined time. The Examiner finds Zicker’s cycle of going between steps 116 and 118 occurring after a predefined time teaches or at least suggests the disputed limitation “repeating the selecting of the next carrier frequency after a predefined time.” Final Act. 5, citing Zicker, Fig. 8. Appellant argues “Zicker fails to teach or suggest repeating the selecting of the next carrier frequency after a predefined time - and the argument of the office is not supported by Zicker and is a forbidden hindsight.” Appeal Br. 15. We are not persuaded by Appellant’s arguments that the Examiner erred. We agree with the Examiner’s finding, because we find Zicker’s description of program looping between tasks 116 and 118, until an unused channel is found, at least suggests “repeating the selecting of the next carrier frequency after a predefined time.” See Zicker, Fig. 8, col. 13, ll. 13–24. Appeal 2019-006309 Application 13/985,292 13 We note Appellant has not cited to a definition of “predefined time” in the Specification that would preclude the Examiner’s broader reading.4 Accordingly, we sustain the Examiner’s obviousness rejection of dependent claim 2, and grouped claims 3 and 14 which fall therewith. See Claim Grouping, supra. 3. § 103 Rejection R1 of Dependent Claims 4, 10, and 17 Dependent claim 4 recites: 4. The method according to claim 1 comprising informing the cordless handset that the base station uses carrier frequencies supported by the cordless handset in addition to carrier frequencies that are not supported by the cordless handset. The Examiner finds Zicker’s single active channel list 62 serves the cordless handsets. Final Act. 5–6. However, the Examiner points out this single active channel list is a result of merging multiple dormant channel lists 70 obtained from multiple handsets 18. Id. Appellant argues: All the channels of the pool are supplied by all handsets — even the generation of a shared available list of channels for multiple handsets includes only channels that are supported by all handsets — as any available list is generated based on dormant channel lists — which include supported by (temporarily) unused channels. The various channels lists exchanged between various entities are all included in the pool of channels. Accordingly — 4 Because “applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted). Appeal 2019-006309 Application 13/985,292 14 each list only includes only channels that may be supported by each one of the handset 18, cellular land station 20, and cordless base station 22 — and Zicker does not teach or suggest informing the cordless handset that the base station uses carrier frequencies supported by the cordless handset in addition to carrier frequencies that are not supported by the cordless handset - as recited in claim 4. Appeal Br. 16. We are not persuaded by Appellant’s arguments that the Examiner erred. We agree with the Examiner’s finding, because we find Zicker’s description of merging dormant channel lists teaches, or at least suggests, the disputed limitation of: “in addition to carrier frequencies that are not supported by the cordless handset.” See Zicker, Fig. 8, col. 8, ll. 64 – col. 9, ll. 18. We note Appellant has not cited to an explicit definition of the disputed terms found in the Specification that would preclude the Examiner’s broader reading. Accordingly, we sustain the Examiner’s obviousness rejection of dependent claim 4, and grouped claims 10 and 17 which fall therewith. See Claim Grouping, supra. 4. § 103 Rejections R2 of Claims 12 and 22 Dependent claim 12 recites: 12. The base station according to claim 6 wherein the controller is configured to apply a random algorithm when periodically selecting the next carrier frequency. Claim 22 similarly recites “applying a random algorithm.” The Examiner cites to Monte for teaching or suggesting the concept of applying a random algorithm when a selecting a frequency. Final Act. 9. The Examiner also finds Monte to be analogous art. Id. Appeal 2019-006309 Application 13/985,292 15 Appellant argues Monte “teaches away” because “the satellite receiver is powered when traffic is transmitted in F1 — which teaches away from not supplying power to the receiver of the base station when the next carrier frequency is not supported by the cordless handset.” Appeal Br. 17–18 (emphasis omitted). We are not persuaded by Appellant’s argument because the Examiner cites to Monte merely for teaching applying a random algorithm. Final Act. 9. We agree with the Examiner’s finding because we find Monte’s description of a method of allocation, including random assignments or using an algorithm for selecting frequencies sequentially based on a determination of which ones have least interference, teaches, or at least suggests, the disputed limitations of claims 12 and 22. See Monte ¶ 49. In construing the scope of analogous art our reviewing court guides: “The Supreme Court's decision in KSR . . . directs us to construe the scope of analogous art broadly.” Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010). “The field of endeavor of a patent is not limited to the specific point of novelty, the narrowest possible conception of the field, or the particular focus within a given field.” Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1001 (Fed. Cir. 2016). Here, we agree with the Examiner that Monte is analogous art because we find Monte also is in the field of base stations and telephones (Monte ¶¶ 2, 3, 35) and, furthermore, an object of the Monte disclosure is to provide a system that minimizes interferences by reusing or sharing frequency spectrum of a system. Monte ¶¶ 20–28. Thus, in construing the scope of analogous art broadly, we agree with the Examiner’s finding that Monte is analogous art particularly because we find Monte is reasonably pertinent to Appeal 2019-006309 Application 13/985,292 16 the problem of minimizing-interferences, a problem with which the inventor is involved. We are not persuaded by Appellant’s “teaching away” argument because we find Monte does not discredit or discourage the solution claimed by Appellant. Accordingly, we are not persuaded that Monte “teaches away.” See Fulton, 391 F.3d at 1201. Accordingly, we sustain the Examiner’s obviousness rejection of dependent claims 12 and 22. 5. § 103 Rejections R3 and R4 of Dependent Claims 18, 19, and 23–25 In view of the lack of any arguments directed to obviousness Rejections R3 and R4 of claims 18, 19, and 23–25 under § 103, we sustain the Examiner’s rejection of these claims. Arguments not made are forfeited. REPLY BRIEF To the extent Appellant may advance new arguments in the Reply Brief (Reply Br. 2–5) not in response to a shift in the Examiner’s position in the Answer, arguments raised in a Reply Brief that were not raised in the Appeal Brief or are not responsive to arguments raised in the Examiner’s Answer will not be considered except for good cause (see 37 C.F.R. § 41.41(b)(2)), which Appellant has not shown. CONCLUSION The Examiner did not err with respect to obviousness Rejections R1 through R4 of claims 1–25 under 35 U.S.C. § 103 over the cited prior art combinations of record, and we sustain the rejections. Appeal 2019-006309 Application 13/985,292 17 DECISION SUMMARY Claims Rejected 35 U.S.C. § Basis / References Affirmed Reversed 1–11, 13–17, 20, 21 103 Obviousness Zicker, Nagashima, Miller 1–11, 13–17, 20, 21 12, 22 103 Obviousness Zicker, Nagashima, Miller, Monte 12, 22 18, 19 103 Obviousness Zicker, Nagashima, Miller, Karls 18, 19 23–25 103 Obviousness Zicker, Nagashima, Miller, Rofougaran 23–25 Overall Outcome 1–25 FINALITY AND RESPONSE 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). See 37 C.F.R. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation