Sai Shankar. Nandagopalan

Patent Trials and Appeals Board

Dec 11, 2019

11572961 - (D) (P.T.A.B. Dec. 11, 2019)

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.
11/572,961 01/30/2007 Sai Shankar Nandagopalan 2004P01756WOUS 4549
24737 7590 12/11/2019
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
SHAO, HONG
ART UNIT PAPER NUMBER
2461
NOTIFICATION DATE DELIVERY MODE
12/11/2019 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):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAI SHANKAR NANDAGOPALAN
Appeal 2018-002050
Application 11/572,961
Technology Center 2400
Before MICHAEL J. STRAUSS, NATHAN A. ENGELS, and
FREDERICK C. LANEY, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 2, 4–10 and 12–20. Claims 3 and 11
are canceled. We have jurisdiction under 35 U.S.C. § 6(b).

1 We refer to the Specification, filed January 30, 2007 as amended August
10, 2009 (“Spec.”); Final Office Action, mailed April 18, 2017 (“Non-Final
Act.”); Appeal Brief, filed September 11, 2017 (“Appeal Br.”); Examiner’s
Answer, mailed October 18, 2017 (“Ans.”); and Reply Brief, filed December
15, 2017 (“Reply Br.”).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Koninklijke Philips
N.V. Appeal Br. 3.
Appeal 2018-002050
Application 11/572,961
2
We AFFIRM.
PRIOR APPEAL
This Application was subject to a prior appeal 2012-007814, decided
on January 13, 2015 (our “prior Decision”), in which this panel of the Board
affirmed the Examiner’s rejections of all of the claims then pending before
us.
CLAIMED SUBJECT MATTER
The claims are directed to providing fair spectrum sharing in multiple
physical transmission rate wireless systems. Spec., Title. Claim 1,
reproduced below and a disputed limitation emphasized in italics (the
“allocating” limitation), is illustrative of the claimed subject matter:
1. A method of providing spectrum allocation fairness in an
environment in which there are two or more co-located wireless
systems operating within an unlicensed radio communication
spectrum that is shared in common with each other co-located
wireless system, wherein at least two of the co-located wireless
systems have different spectral bandwidths and different channel
capacities, the method comprising:
receiving a request for medium access from each co-
located wireless system;
determining from the request a requirement of amount of
data to be exchanged during a particular information exchange
interval for each co-located wireless system; and
allocating at least one of a bandwidth and a
communication period to each co-located wireless system for the
particular communication information exchange interval, such
that each ratio of the one of allocated bandwidths and
communication periods among the two or more co-located
wireless systems is equal to a respective ratio of the determined
requirements of amount of data to be exchanged by each of the
wireless systems during the particular information exchange
interval.
Appeal 2018-002050
Application 11/572,961
3
REFERENCES 3
The prior art relied upon by the Examiner is:
Name Reference Date
Fellman et al. US 2001/0002196 A1 May 31, 2001
Liang US 2003/0083095 A1 May 1, 2003
Sugar et al. US 2003/0181213 Al Sept. 25, 2003
Miller et al. US 2005/0032479 Al Feb. 10, 2005
Carneal et al. US 6,982,969 B1 Jan. 3, 2006
REJECTIONS
Claims 1, 2, 4–10, and 12–20 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement. Final Act. 8–9.
Claims 1, 2, 4, 6–10, 12–14, and 16–19 stand rejected under 35 U.S.C.
§ 103(a) over Liang and Carneal. Final Act. 9–17.
Claims 5 and 15 stand rejected under 35 U.S.C. § 103(a) over Liang,
Carneal, and Fellman. Final Act. 17.
Claim 20 stands rejected under 35 U.S.C. § 103(a) over Liang,
Carneal, and Sugar. Final Act. 18.
ANALYSIS
Except as noted, we adopt as our own the findings and reasons set
forth by the Examiner in the (1) action from which this appeal is taken (Final
Act. 2–18) and (2) Examiner’s Answer in response to Appellant’s Appeal
Brief (Ans. 2–15) and concur with the conclusions reached by the Examiner.
We highlight the following for emphasis.

3 All citations herein to these references are by reference to the first named
inventor only.
Appeal 2018-002050
Application 11/572,961
4
35 U.S.C. § 112, First Paragraph
In connection with the disputed allocating limitation, the Examiner
finds there is insufficient written description of the requirement that each
ratio of the allocated bandwidth or communications periods (i.e., resource
allocation ratio) of the wireless systems be equal to the ratio of the data
requirements (i.e., data requirement ratio) of the respective systems. Final
Act. 8. According to the Examiner “The specification does not teach
allocating bandwidth or time such that the ratio of the allocated bandwidth
or time is equal to a ratio of the required amount of data that needs
communicated. The concept of two ratios being equal is not mentioned in
the specification.” Id. The Examiner finds the Specification only discloses
proportionally allocating resources to a wireless system based on its resource
requirements but fails to disclose the recited equality of allocated resource
ratio to data requirement ratio for the plural systems as claimed. Id. at 9.
Appellant contends the disclosure of achieving spectrum allocation
fairness with each allocated time interval being proportional to the ratio of
the respective system requirement supports the disputed limitation. Appeal
Br. 8. Appellant argues the Specification discloses a system that, depending
on its bandwidth capability, may need more or fewer access intervals to
provide equal access to shared spectrum. Id. According to Appellant, this
disclosure, taken together with the example described at page 9, lines 11–27
of the Specification, provides an appropriate written description in support
of the disputed limitation. Id. Based on these disclosures, Appellant argues
“One ordinarily skilled in the art would understand that for fairness each
system will have a ratio of number of intervals to each other system, and the
ratios of intervals are proportional to and equal to the ratio of relative
Appeal 2018-002050
Application 11/572,961
5
bandwidth requirements.” Id. at 8. Appellant contends there is no
distinction between the argued proportional relationships and the disputed
relationships characterized in terms of ratios, arguing “‘ratio’ and
‘proportional to’ mean the same thing.” Id. at 9. In support of this
argument, Appellant presents definitions of the terms ratio and proportional
and further argues, because they are synonyms according to Appellant, the
terms have exactly or nearly the same meaning. Id. at 9–11.
The Examiner responds, arguing “the specification supports the
proportional allocation of resources to a wireless system based on each
wireless system’s own resource requirements”, i.e., irrespective of the
requirements of other systems sharing those resources. Ans. 3. According
to the Examiner “[t]here is no mention in the specification of a ratio of
allocated bandwidths to two or more wireless systems being equal to a ratio
of required amounts of data to be exchanged by each wireless system.” Id.
The Examiner further finds Appellant’s disclosed example of resource
allocation unhelpful to support the disputed ratio relationship limitation. In
particular, rather than providing more resources to a system requiring a
greater amount of system access, according to the examples “the more
bandwidth or throughput a wireless system can utilize, the shorter its access
to the channel.” Id. at 4 (emphasis omitted). The Examiner finds, rather
than “describ[ing] proportional allocation as a ratio based on the allocated
time periods to the wireless systems,” the Specification discloses
“proportional allocation to a wireless systems is only based on its own
requirements and not the requirements of other wireless systems. Simpl[y]
Appeal 2018-002050
Application 11/572,961
6
put, the cited portions do not mention a ratio of allocated bandwidths or time
periods to two or more wireless systems.” Id. at 5.
The Examiner further notes the term ratio is absent from the
Specification. Id. at 6. Although recognizing “a specification need not
‘provide in haec verba support for the claimed subject matter at issue’ to
satisfy the written description requirement, the Examiner contends
‘proportional to’, as used in the specification, does not support the two ratios
being equal to each other.” Id. (citing Purdue Pharma L.P. v. Faulding Inc.,
230 F.3d 1320, 1323 (Fed. Cir. 2000)). The Examiner addresses the resource
allocation examples presented in the Specification, finding the examples do
not comport with the required allocation allotments recited by claim 1. Id. at
5–6. Thus, according to the Examiner, “one skilled in the art would not be
able to immediately discern the ‘allocating’ limitation of claim 1 from
reading the Appellant’s specification.” Id. (citing Purdue Pharma).
The Examiner further disagrees the meaning of the term proportional
as used in the Specification is the same as the term ratio introduced into the
claims during prosecution. Id. at 7. The Examiner notes the definitions
supplied by Appellant for those terms also differ, concluding “the plain
meaning of ‘proportional’ is broader [than] the plain meaning of ‘ratio.’” Id.
The Examiner is also unpersuaded the terms have the same meaning because
they are synonyms, finding, although similar, differences may exist. Id.
Appellant replies, reasserting the example resource allocation
provided in the Specification supports the allocating limitation. Reply Br. 3.
According to Appellant “if the allocation to a wireless system was based
only on its own requirement [as asserted by the Examiner] and not also on
the requirements of the other wireless systems there would be no way to
Appeal 2018-002050
Application 11/572,961
7
make the allocation amongst the systems fair.” Id. at 4. Appellant further
explains a reluctance to amend the claims to use the term proportional
instead of the disputed ratio terminology because, to do so “would require
restructuring the language of the claim and any change to a claim can lead to
estoppel issues, which are preferably avoided.” Id.
Appellant’s arguments are unpersuasive of Examiner error. By
statute, 35 U.S.C. § 112, first paragraph, requires “[t]he specification shall
contain a written description of the invention.” Under this statute, a claim
should be rejected for lack of written description when it recites elements
found to be without support in the original disclosure. See In re Rasmussen,
650 F.2d 1212 (CCPA 1981). The test for written description is summarized
in Purdue Pharma, 230 F.3d at 1323:
In order to satisfy the written description requirement, the
disclosure as originally filed does not have to provide in haec
verba support for the claimed subject matter at issue. See
Fujikawa v. Wattanasin, 93 F.3d 1559, 1570 (Fed. Cir. 1996).
Nonetheless, the disclosure “must … convey with reasonable
clarity to those skilled in the art that … [the inventor] was in
possession of the invention.” Vas-Cath Inc. v. Mahurkar, 935
F.2d 1555, 1563-64 (Fed. Cir. 1991). Put another way, one
skilled in the art, reading the original disclosure, must
“immediately discern the limitation at issue” in the claims.
Waldemar Link GmbH & Co. v. Osteonics Corp., 32 F.3d 556,
558 (Fed. Cir. 1994). That inquiry is a factual one and must be
assessed on a case-by-case basis. See Vas-Cath, 935 F.2d at 1561
(“Precisely how close the original description must come to
comply with the description requirement of § 112 must be
determined on a case-by-case basis.”).
Because the sufficiency of the written description is evaluated by one of
ordinary skill in the art, details that would be known by the skilled artisan
need not be included in a patent specification. See Hyatt v. Boone, 146 F.3d
Appeal 2018-002050
Application 11/572,961
8
1348, 1353 (Fed. Cir. 1998). However, when an explicit limitation in a
claim is not present in the written description, the burden is on the applicant
to show that a person of ordinary skill in the art would have understood that
the description necessarily includes that limitation. Cf. id. at 1354–55.
“One shows that one is ‘in possession’ of the invention by describing the
invention, with all of its claimed limitations, not that which makes it
obvious.” Lockwood v. Am. Airlines Inc., 107 F.3d 1565, 1572 (Fed. Cir.
1997). Thus, the written description requirement is not satisfied if the
disclosure merely would lead one to speculate as to “modifications that the
inventor might have envisioned, but failed to disclose.” Id.
The U.S. Patent and Trademark Office (USPTO) bears the initial
burden of presenting a prima facie case of unpatentability. In re Glaug, 283
F.3d 1335, 1338 (Fed. Cir. 2002). The burden regarding the written
description requirement is described in In re Alton, 76 F.3d 1168, 1175 (Fed.
Cir. 1996) (parallel citations omitted):
Insofar as the written description requirement is concerned, that
burden is discharged by “presenting evidence or reasons why
persons skilled in the art would not recognize in the disclosure a
description of the invention defined by the claims.” Wertheim,
541 F.2d at 263. Thus, the burden placed on the examiner varies,
depending upon what the applicant claims. If the applicant
claims embodiments of the invention that are completely outside
the scope of the specification, then the examiner or Board need
only establish this fact to make out a prima facie case. Id. at 263-
64. If, on the other hand, the specification contains a description
of the claimed invention, albeit not in ipsis verbis (in the identical
words), then the examiner or Board, in order to meet the burden
of proof, must provide reasons why one of ordinary skill in the
art would not consider the description sufficient. Id. at 264.
Once the examiner or Board carries the burden of making out a
prima facie case of unpatentability, “the burden of coming
Appeal 2018-002050
Application 11/572,961
9
forward with evidence or argument shifts to the applicant.”
Oetiker, 977 F.2d at 1445.
We have reviewed the cited portions of Appellant’s Specification and
agree with the Examiner in finding there is inadequate written description
support for the disputed allocating limitation of independent claims 1 and
12. Although, consistent with the Title, the Specification explains
Appellant’s disclosure is directed to “a method of providing bandwidth
fairness among multiple wireless systems” (Spec. p.2., ll. 17–19), it is not
clear what steps or conditions are necessary to achieve that objective. For
example, and in response to Appellant’s argument that fairness dictates
basing resource allocation on the requirements of other systems (Reply Br.
4), we are unpersuaded that achieving access fairness necessitates equal
resource allocation to data requirement ratios across collocated wireless
systems. For example, fairness might also be achieved by dynamically
allocating only such bandwidth as actually needed by a wireless system
rather than using a static bandwidth allocation based on each system’s
maximum or peak data requirements.
We have further reviewed the example allocations described in the
Specification and are unable to discern how the resource allocation
described comports with the disputed allocating limitation. In particular,
Appellant argues the example resource allocation presented at page 11, lines
5–34 of the Specification supports the disputed equal ratio relationship
between and among systems. According to the example, system 101 needs
to send 25 MBits at 54 Mbits/s, system 102 needs to send 100 Mbits at 1
Mbit/s, and system 103 needs to send 480 Mbits at 500 Mbits/s (Spec. p. 11,
ll. 5–34). Based on the stated data requirements and transmission speeds, it
Appeal 2018-002050
Application 11/572,961
10
appears, systems 101, 102, and 103 require 0.46, 100, and 0.96 seconds,
respectively to transmit data. Yet the Specification discloses the allocation
of 2, 25, and 1 second(s), respectively, to systems 101, 102 and 103 without
further explanation. Id. Thus, although there may well be some explanation
for why this allocation is consistent with the requirements of the disputed
allocating limitation (e.g., only certain frequencies or bands overlap and are
subject to sharing), it is not clear how this or any of the other examples
disclosed in the Specification result in the recited ratio relationships.
Therefore, in the absence of sufficient disclosure, we agree with the
Examiner “one skilled in the art would not be able to immediately discern
the ‘allocating’ limitation of claim 1 from reading [] Appellant’s
[S]pecification.” Ans. 6 (emphasis added).
We are also unpersuaded the disputed ratio term is a direct substitute
for the previously recited proportional allocation requirement. As found by
the Examiner, the terms, even if synonymous, do not have exactly the same
meaning as evidenced by differences in the respective definitions proffered
by Appellant. Ans. 7–8. In particular, the disputed allocating limitation
expressed in terms of equal ratios of (i) system data requirements and (ii)
system resource allocations might be interpreted to require attaining a
precise mathematical relationship. In contrast, recitation of a proportional
relationship, even if considered to be across systems, might be less
restrictive. That Appellant declined to adopt the Examiner’s suggestion of
substituting the term proportional for the problematic ratio terminology
(Ans. 8, Reply Br. 4) is itself indicative of a difference in meanings.
Although Appellant attributes the reluctance to revert to the proportional
language to a desire to avoid estoppel, we note the term proportional
Appeal 2018-002050
Application 11/572,961
11
remained in the claim until the Amendment filed January 8, 2016 with the
subsequent introduction of the term ratio by the Amendment filed May 24,
2016. In all, Appellant has filed multiple amendments to the claims such
that it would appear the need to avoid estoppel is not of paramount import.
Thus, Appellant fails to persuade us the Examiner erred in finding “the plain
meaning of ‘proportional’ is broader [than] the plain meaning of ‘ratio.’”
Ans. 7.
For the reasons discussed, Appellant’s contention the Examiner erred
in finding the Specification fails to comply with the written description
requirement of 35 U.S.C. § 112, first paragraph, is not persuasive. See In re
De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (explaining arguments of
counsel cannot take the place of factually supported objective evidence); In
re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney argument is not
evidence). Therefore, we sustain the rejection of independent claim 1 and,
for the same reasons, the rejection of independent claim 12 under 35 U.S.C.
§ 112, first paragraph, together with the rejection of dependent claims 2, 4–
10, and 13–20.
35 U.S.C. § 103(a)
The Examiner finds Liang’s coordinator unit that provides a
transmission reservation service to a plurality of collocated wireless
networks discloses the structure recited by the preamble and receiving step
of claim 1. Final Act. 10. The Examiner relies on Carneal for disclosing the
determining and allocating steps such that the combination of Liang and
Carneal teaches or suggests the limitations of claim 1. Id. at 11–12. The
Examiner explains the reason for modifying Liang to incorporate Carneal’s
method of bandwidth allocation is “to enable the devices of the co-located
Appeal 2018-002050
Application 11/572,961
12
networks [as taught by Liang] to share the small portion of the frequency
spectrum that is assigned to the devices of an industry, while still allowing
as many remote units as possible to access the frequency spectrum.” Id. at
12 (citing Caneal, col. 1, ll. 15–22).
Appellant contends the rejection is improper because Carneal
allocates resources in a single wireless system, not across plural co-located
wireless systems as required by claim 1. Appeal Br. 13. The Examiner
responds, explaining Liang, not Carneal, is found to disclose the two or more
co-located wireless systems of claim 1. Ans. 4.
Appellant’s argument that Carneal is deficient is unpersuasive
because, as explained by the Examiner, the argument does not address the
Examiner’s findings that Liang discloses the argued co-located wireless
systems. “Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)).
Appellant next argues the rejection is improper because “there is no
recognition of any problem with the arrangement of Liang to motivate one
of ordinary skill in the art to modify it by combining it with Carneal. Such
an idea can only originate, as mentioned, using improper hindsight based on
Appellant’s own teachings.” Appeal Br. 13. The Examiner responds finding
Liang and Carneal both allocate resources to devices and that it would have
been obvious to use Caneal’s allocation techniques to allocate resources in
the co-located wireless systems of Liang. Ans. 10.
Appellant’s argument is unpersuasive of Examiner error. The Federal
Circuit has held “that while an analysis of obviousness always depends on
Appeal 2018-002050
Application 11/572,961
13
evidence that supports the required Graham factual findings, it also may
include recourse to logic, judgment, and common sense available to the
person of ordinary skill that do not necessarily require explication in any
reference or expert opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587
F.3d 1324, 1329 (Fed. Cir. 2009); see also Nat’l Steel Car, Ltd. v. Canadian
Pacific Ry., Ltd., 357 F.3d 1319, 1337 (Fed. Cir. 2004) (“It has long been the
law that the motivation to combine need not be found in prior art references,
but equally can be found ‘in the knowledge generally available to one of
ordinary skill in the art.’” (Quoting In re Jones, 958 F.2d 347, 351 (Fed.
Cir. 1992))). The Court further instructs that
[w]hen there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
The Examiner finds the reason for combining the teachings of
references is to “‘adjust the bandwidth allocations based on demand, as
taught by Carneal, when allocating bandwidth to the co-located wireless
systems, taught by Liang.” Final Act. 4. In light of the absence of evidence
to rebut the Examiner’s findings and conclusion, we find the Examiner has
articulated reasoning with rational underpinnings sufficient to justify the
legal conclusion of obviousness and are unpersuaded by Appellant’s
argument that the Examiner’s combination of references is inadequate or
improper.
Appellant further argues Carneal’s allocation method cannot be
applied to Liang’s co-located system because “after bandwidth is allocated
Appeal 2018-002050
Application 11/572,961
14
to the different co-located wireless systems it must then be further allocated
amongst the individual devices within each of the different co-located
wireless systems.” Appeal Br. 13–14, Reply Br. 10. The Examiner
responds “[b]ecause both Liang and Carneal allocate time, one skilled in the
art, at the time of the invention, would be able to incorporate the
proportional allocation of time, taught by Carneal, when allocating time to
the wireless systems, taught by Liang.” Ans. 11.
Appellant’s argument is unpersuasive because it (i) is not supported
by sufficient evidence and (ii) relies on bodily incorporation of one reference
into another. In particular, Appellant provides mere attorney argument and
conclusory statements, which are unsupported by factual evidence, and are
entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997); De Blauwe, 736 F.2d at 705. Attorney argument is not evidence.
In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Nor can such argument
take the place of evidence lacking in the record.
We are also unpersuaded by Appellant’s argument that Carneal’s
method of resource allocation is limited in application to within a distinct
co-located wireless system rather than across all co-located systems of
Liang. Such argument improperly relies on bodily incorporation of
Carneal’s teachings rather than what the combination of Liang and Carneal
fairly suggests.
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the
art.
Appeal 2018-002050
Application 11/572,961
15
Keller, 642 F.2d at 425 (citations omitted). The artisan is not compelled to
mechanically follow the teaching of one prior art reference over the other
without the exercise of independent judgment. See Lear Siegler, Inc. v.
Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). Instead, the skilled
artisan would “be able to fit the teachings of multiple patents together like
pieces of a puzzle” because the skilled artisan is “a person of ordinary
creativity, not an automaton.” KSR, 550 U.S. at 420–21. Here, Appellant
has not demonstrated that the Examiner’s proffered combination in support
of the conclusion of obviousness would have been “uniquely challenging or
difficult for one of ordinary skill in the art.” Leapfrog Enters., Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at
420). Thus, we are not persuaded that the combination of Liang and Carneal
would result in bandwidth among the co-located systems being allocated
only within each of the distinct co-located systems as argued by Appellant
rather than across all systems as found by the Examiner.
Appellant further argues Carneal’s disclosure of bandwidth allocation
is deficient because it is based on channel performance. Appeal Br. 15–16.
The Examiner responds, contending “the ability to consider channel
performance is not mutually exclusive to the ability to proportionally
allocated resources.” Ans. 13. We agree with the Examiner. Merely
because Carneal discloses considering additional factors in determining
bandwidth allocation does not detract from or negate the reference’s
teaching of allocating timeslots to remote units in proportion to their data
rates as found by the Examiner. See Final Act. 11–12, Ans. 13–14. Thus,
Appellant’s argument is unpersuasive of Examiner error.
Appeal 2018-002050
Application 11/572,961
16
We are also unpersuaded the Examiner erred in combining Liang and
Carneal in rejecting the claims because “there is no recognition by the
references or the art of the problem solved by Appellant’s invention.”
Appeal Br. 17. This is because Examiner’s reason for incorporating
Carneal’s bandwidth allocation method across Liang’s co-located wireless
systems need not address the same problem as that to which the invention is
directed. In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006) (The reason or
motivation to modify the reference may often suggest what the inventor has
done, but for a different purpose or to solve a different problem. It is not
necessary that the prior art suggest the combination to achieve the same
advantage or result discovered by applicant.); Cross Med. Prods., Inc. v.
Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005) (“One
of ordinary skill in the art need not see the identical problem addressed in a
prior art reference to be motivated to apply its teachings.”); In re Linter, 458
F.2d 1013 (CCPA 1972); In re Dillon, 919 F.2d 688 (Fed. Cir. 1990), cert,
denied, 500 U.S. 904(1991).
Moreover, the Supreme Court has held, “[i]n determining whether the
subject matter of a patent claim is obvious, neither the particular motivation
nor the avowed purpose of the patentee controls.” KSR., 550 U.S. at 419.
For a prima facie case of obviousness to be established, the reference need
not recognize the same problem solved by Appellants. See Ex parte Obiaya,
227 USPQ 58, 60 (Bd. Pat. App. & Int. 1985) (“The fact that [Appellants
have] recognized another advantage which would flow naturally from
following the suggestion of the prior art cannot be the basis for patentability
when the differences would otherwise be obvious.”).
Appeal 2018-002050
Application 11/572,961
17
Appellant’s argument that the combination of references is improper
because they are not analogous art to each other is unpersuasive on both
procedural and substantive grounds. In particular, for the first time in the
Reply Brief, Appellant argues “The references must be in analogous arts to
each other . . . . being analogous to Appellant’s invention is not a proper
basis for the any combination, and certainly not of Liang and Carneal.”
Reply Br. 4–5. Procedurally, such belated argument is untimely and waived.
37 C.F.R. § 41.41(b)(2) (2016).
More importantly, Appellant’s statement of the law is substantively
incorrect. Prior art is analogous if it is (1) from the same field of endeavor
as that of Appellant’s invention, regardless of the problem addressed or (2)
reasonably pertinent to the particular problem with which the inventor is
involved. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). That is, the
analogous-art test does not ask whether the prior art references are analogous
to each other, as Appellant argues. See Reply Br. 4–5. Rather, the proper
inquiry is whether the references are analogous to Appellant’s invention or
the problem with which the inventor is concerned. See Bigio, 381 F.3d at
1325. For at least the reason that Appellant’s arguments do not squarely
address the relevant considerations, this analogous-art argument is
unpersuasive. Furthermore, both Liang’s transmission scheduling of
collocated wireless network operations and Carneal’s optimization of
frequency spectrum are reasonably pertinent to the inventor’s problem of
providing “improved coordination . . . to handle wireless traffic of wireless
stations/nodes sharing a common spectrum” and “airtime and bandwidth
fairness to wireless systems in unlicensed spectra thus satisfying their
Appeal 2018-002050
Application 11/572,961
18
quality of service (QoS) needs and simultaneously utilizing the radio
spectrum efficiently.” See Spec. p. 1, ll. 9–11, p. 2, ll. 13–16.
For the reasons discussed above, Appellant’s arguments are
unpersuasive of reversible Examiner error. Accordingly, we sustain the
rejection of independent claim 1 under 35 U.S.C. § 103(a) over Liang and
Carneal together with the rejection of independent claim 12 which is argued
on the basis of claim 1. Appeal Br. 18. We further sustain the rejections of
dependent claims 2, 4, 6, 8–10, 13, 14, 16, 18, and 19 under 35 U.S.C.
§ 103(a), those claim not being argued separately with particularity. Appeal
Br. 19.
Appellant contends the rejection of dependent claims 7 and 17 (id.) is
improper, arguing “Liang only relates to contention access within one of the
collocated networks in Liang that are using the same spectrum,” and
therefore fails to teach spectrum control allocation of different networks as
required by claims 7 and 17. Appeal Br. 19. The Examiner responds,
finding “the claim language does not require distributed control to be
executed over two or more networks. Merely executing contention-based
access in one network would constitute distributed control of spectrum.”
Ans. 15. Appellant replies, arguing “claims 7 and 17 require that control of
the spectrum allocation is distributed, and contention-based access in one
network is clearly not distributed and does not meet the terms of the claim
language.” Reply Br. 11.
Appellant argues claims 7 and 17 collectively. We note that argument
not made in the Appeal Brief is waived. 37 C.F.R. § 41.41(b)(2) (2016).
See In re Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000) (noting that an
argument not first raised in the brief to the Board is waived on appeal). In
Appeal 2018-002050
Application 11/572,961
19
particular, claim 7 adds the requirement of “wherein control of the spectrum
allocation is distributed” is added. Thus, we agree with the Examiner
Appellant’s argument that the prior art fails to teach control of the spectrum
allocation is distributed across networks (Reply Br. 11) is not commensurate
in scope with claim 7. Ans. 19.
Although, as indicated above, Appellant does not argue it separately,
we note the language of claim 17 differs from that of claim 7, requiring
“[t]he device of claim 12, being configured as a plurality of devices each of
which is distributed amongst a different respective one of the collocated
wireless systems.” Appellant’s argument does not argue this distinction in
claim language and, as such, such argument is waived. Furthermore, even if
timely presented, the argument is unpersuasive because Liang’s disclosure
of “a distributed communications methodology” (Liang ¶ 41) at least
suggests, if not teaches, distributing devices among the systems. In contrast,
Appellant does not direct attention to, and we do not ascertain, sufficient
evidence that Laing’s disclosure is limited to the distribution of functionality
within a single system as argued by Appellant. Accordingly, we sustain the
rejection of claims 7 and 17 under 35 U.S.C. § 103(a) over Liang and
Carneal.
Appellant’s arguments in connection with the rejections of claims 5
and 15 (Appeal Br. 19) and claim 20 (id. at 20) rely on argument presented
in connection with independent claims 1 and 12 and are unpersuasive for the
reasons discussed above. Accordingly we sustain the rejection of claims 5,
15 and 20 under 35 U.S.C. § 103(a).
Appeal 2018-002050
Application 11/572,961
20
DECISION
We affirm the Examiner’s rejections under 35 U.S.C. §§ 112 and
103(a).
Claims
Rejected 35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
1, 2, 4–10,
12–20
112, First
Paragraph Written Description
1, 2, 4–10,
12–20
1, 2, 4, 6–10,
12–14, 16–19 103(a) Liang, Carneal
1, 2, 4, 6–10,
12–14, 16–19
5, 15 103(a) Liang, Carneal, Fellman 5, 15
20 103(a) Liang, Carneal, Sugar 20
Overall
Outcome
1, 2, 4–10,
12–20

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