APPLE INC.

Patent Trials and Appeals Board

Nov 12, 2021

2020004833 (P.T.A.B. Nov. 12, 2021)

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.
14/871,913 09/30/2015 Chia Yiaw Chong P27617US1 / APPL:0609 6076
73576 7590 11/12/2021
APPLE INC. - Fletcher
c/o Fletcher Yoder, PC
P.O. Box 692289
Houston, TX 77269-2289
EXAMINER
LEE, ANDREW CHUNG CHEUNG
ART UNIT PAPER NUMBER
2411
NOTIFICATION DATE DELIVERY MODE
11/12/2021 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):
docket@fyiplaw.com
hill@fyiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHIA YIAW CHONG, HSIN-YUO LIU,
MOHIT NARANG, PETER M. AGBOH, and
SATHISH SHANBHAG KOTA
__________

Appeal 2020-004833
Application 14/871,913
Technology Center 2400
____________

Before JEAN R. HOMERE, JAMES B. ARPIN, and
PHILLIP A. BENNETT, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–4 and 6–21, all of the pending claims. Final
Act. 2.2 Claim 5 is canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party-in-interest as Apple Inc. Appeal Br. 2.
2 In this Decision, we refer to Appellant’s Appeal Brief (“Appeal Br.,” filed
January 6, 2020) and Reply Brief (“Reply Br.,” filed June 12, 2020); the
Final Office Action (“Final Act.,” mailed April 24, 2019), the Advisory
Action (“Adv. Act.,” mailed July 23, 2019), and the Examiner’s Answer
(“Ans.,” mailed April 16, 2020); and the Specification (“Spec.,” filed
September 30, 2015). Rather than repeat the Examiner’s findings and
Appellant’s contentions in their entirety, we refer to these documents.
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STATEMENT OF THE CASE
The claimed methods and devices “relate[] generally to techniques for
facilitating communication between two electronic devices and, more
particularly to, techniques for reducing interference in communications that
utilize a conducted radio frequency (RF) link to facilitate communication
between electronic devices.” Spec. ¶ 1.
As noted above, claims 1–4 and 6–21 are pending. Claims 1 and 11
are independent. Appeal Br. 15 (claim 1), 17 (claim 11) (Claims App.).
Claims 2–4, 6–10, and 21 depend directly or indirectly from claim 1; and
claims 12–20 depend directly or indirectly from claim 11. Id. at 15–18.
Claims 1 and 2, reproduced below with the disputed limitations
emphasized, are illustrative.
1. A method for operating a conducted radio frequency (RF) link
of an electronic device, the method comprising:
determining, via processing circuitry of the electronic
device, whether the electronic device having the conducted
RF link has an inactive RF channel to use for transmitting an
RF signal via an antenna of the electronic device, the
conducted RF link, or a combination thereof, wherein the
conducted RF link utilizes a conductor that facilitates
communication between the electronic device and another
electronic device; and
if an inactive RF channel exists, using the inactive RF
channel for RF signal generation and transmission over the
conducted RF link, via the processing circuitry, wherein RF
signal transmission over the conducted RF link provides a
lower RF signal amplification relative to RF signal
transmission on the antenna.
Id. at 15 (emphasis added).
2. The method, as set forth in claim 1, wherein determining, via
the processing circuitry, whether the electronic device has an
inactive RF channel comprises:
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determining, via the processing circuitry, if any RF channels of
the electronic device are active and, if so, placing any active RF
channels on a channel avoidance list.
Id. (emphasis added). Independent claim 11 recites limitations
corresponding to the disputed limitations of claim 1, and dependent claim 12
recites limitations corresponding to the disputed limitations of claim 2. Id.
at 15, 17.
REFERENCES3 AND REJECTIONS
The Examiner relies upon the following references:
Name4 Reference Publ’d/Issued Filed
Zicker US 5,774,805 June 30, 1998 June 6, 1996
Chong US 9,549,387 B2 Jan. 17, 2017 Sept. 30, 2015
Sherman US 2009/0137206 A1 May 28, 2009 Nov. 23, 2007
Landmark US 2010/0279744 A1 Nov. 4, 2010 Apr. 30, 2009
Wirtanen US 2016/0157150 A1 June 2, 2016 Nov. 27, 2014
The Examiner rejects:
a. claims 1, 6, 11, and 16 as unpatentable under the judicially-created
doctrine of obviousness-type double patenting in view of claims 1,
8, 9, and 15 of Chong (Final Act. 2–5);
b. claims 1–4, 6, 7, 9, 10, 12–17, 19, 20, and 21 under 35 U.S.C.
§ 103 as obvious over the combined teachings of Zicker, Sherman,
and Landmark (id. at 5–11);
c. claim 11 under 35 U.S.C. § 103 as obvious over the combined

3 The application on appeal claims the benefit of U.S. Provisional Patent
Application No. 62/168,277, filed May 29, 2015.
4 All reference citations are to the first named inventor only.
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teachings of Zicker and Sherman (id. at 11–13); and
d. claims 8 and 18 under 35 U.S.C. § 103 as obvious over the
combined teachings of Zicker, Sherman, Landmark, and Wirtanen
(id. at 13–14).
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the contentions and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential). Arguments not made are forfeited.5 Unless otherwise
indicated, we adopt the Examiner’s findings in the Final Office Action and
the Answer as our own and add any additional findings of fact for emphasis.
We address the rejections below.
ANALYSIS
A. Obviousness-Type Double Patenting
As noted above, the Examiner rejects claims 1, 6, 11, and 16 as
unpatentable under the judicially-created doctrine of obviousness-type
double patenting in view of claims 1, 8, 9, and 15 of Chong. Final Act. 2–5.
The issue to consider when determining whether a nonstatutory basis exists
for a double patenting rejection is whether any claim in the application
defines an invention that is merely an obvious variation of an invention
claimed in another patent. In an obviousness-type, double patenting

5 See In re Google Tech. Holdings LLC, 980 F.3d 858, 863 (Fed. Cir. 2020)
(“Because Google failed to present these claim construction arguments to
the Board, Google forfeited both arguments.”); 37 C.F.R. § 41.37(c)(1)(iv)
(2019) (“Except as provided for in §§ 41.41, 41.47 and 41.52, any arguments
or authorities not included in the appeal brief will be refused consideration
by the Board for purposes of the present appeal.”).
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determination, the analysis parallels that for an obviousness determination.
In re Braat, 937 F.2d 589, 593-94 (Fed. Cir. 1991); see also In re Longi, 759
F.2d 887, 892 n. 4 (Fed. Cir. 1985). Obviousness-type double patenting is a
question of law, and, like our reviewing court, we review such a rejection de
novo. See In re Hubbell, 709 F.3d 1140, 1145 (Fed. Cir. 2013).
On this record, Chong and the pending application name one or more
common inventors and, on this record, are commonly owned. Chong, (72),
(73); see Appeal Br. 2. Thus, obviousness-type double patenting may exist
between Chong and the pending application. See Hubbell, 709 F.3d at 1146
(taking judicial notice of MPEP § 804(I)(A)).
In addition, Chong and the pending application appear to share the
same Specification, were filed on the same day, and claim priority from the
same provisional application.6 Chong, (22), (60); see Appeal Br. 5. Thus,
we apply a one-way test for obviousness-type double patenting. In re Berg,
140 F.3d 1428, 1434 (Fed. Cir. 1998) (“We hold, therefore, that if an
applicant can file all of its claims in one application, but elects not to, it is
not entitled to the exception of the two-way test.”). Under the one-way test,
“the examiner asks whether the application claims are obvious over the
patent claims.” Id. at 1432.
Initially, we focus our analysis on independent claim 1 of the pending
application and independent claim 1 of Chong. These claims are reproduced
side-by-side below with emphasis added:
Pending Claim 1 Chong’s Claim 1
1. A method for operating a
conducted radio frequency (RF) link
1. A method for reducing
interference in a conducted radio

6 See supra note 3.
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of an electronic device, the method
comprising: determining, via
processing circuitry of the
electronic device, whether the
electronic device having the
conducted RF link has an inactive
RF channel to use for transmitting
an RF signal via an antenna of the
electronic device, the conducted RF
link, or a combination thereof,
wherein the conducted RF link
utilizes a conductor that facilitates
communication between the
electronic device and another
electronic device; and
if an inactive RF channel exists,
using the inactive RF channel for
RF signal generation and
transmission over the conducted RF
link, via the processing circuitry,
wherein RF signal transmission
over the conducted RF link provides
a lower RF signal amplification
relative to RF signal transmission
on the antenna.
frequency (RF) link, the method
comprising: determining
country information for an
electronic device having a
conducted RF link; based on the
country information, determining if
any RF channels are not available
to be radiated for wireless
communications; and if an
unavailable RF channel exists, using
the unavailable RF channel for RF
signal generation and transmission
over the conducted RF link.
Final Act. 3–4 (emphases added).
Appellant contends:
The claims of [Chong] are directed at determining country
information for RF transmissions. Specifically, the claims of
[Chong] recite country information to determine if RF channels
are not available for wireless communications and use the
unavailable RF channel for RF signal generation and
transmission over the conducted RF link. However, pending
claims 1, 6, 11, and 16 recite determining inactive RF channels
and using the inactive RF channel for RF signal generation and
transmission over the conducted RF link with lower RF signal
amplification relative to RF signal transmission on an antenna.
Thus, the pending claims do not teach using country codes for
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RF transmissions and are not obvious in view of claims 1, 8, 9,
and 15 of [Chong].
Appeal Br. 5–6 (emphases added); see Reply Br. 2.
The Examiner responds,
the functionalities in the main bodies of the claims of the current
Application and the recited patent are merely claiming the
determination and/or the detection of the availabilities of
transmission channels (and/or paths links connections) with
regard to transmission media (wired (cable, conductor, etc.,),
wireless (air interface, Radio near2 frequency).
Ans. 16. However, the Examiner’s focus on the “functionalities” of the two
claims pays insufficient attention to their recited limitations.
As Appellant explains, Chong’s claim 1 recites, “determining if any
RF channels are not available to be radiated for wireless communications.”
Chong discloses,
most countries limit the sub-bands or channels that electronic
devices may use to transmit wireless signals. Despite that, the
wireless modules used on most electronic devices are capable of
operating on all sub-bands or channels. Hence, the present
techniques for reducing interference on conducted RF links
involve utilizing country information to determine where an
electronic device is located, and using such information to select
sub-bands that are not available for wireless transmission to be
used for transmission of signals via the conducted RF links.
Chong, 3:45–54 (emphasis added); see Spec. ¶ 27 (corresponding
disclosure). Thus, Chong’s claim 1 identifies channels that are legally
“unavailable” and, hence, may not be used for RF transmission via any
antenna, i.e., “for wireless communications.”
As noted above, however, pending claim 1 recites, “determining . . .
whether the electronic device having the conducted RF link has an inactive
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RF channel to use for transmitting an RF signal via an antenna of the
electronic device, the conducted RF link, or a combination thereof.”
Appeal Br. 15 (Claims App.) (emphases added). Thus, because the
determined inactive channel is “to [be] use[d] for transmitting” over an
antenna, a conducted RF link, or both; we understand that the “inactive RF
channel” of pending claim 1 cannot be an “unavailable” RF channel of
Chong’s claim 1. Therefore, the method of pending claim 1 is
distinguishable over the method of Chong’s claim 1.
For the forgoing reasons, we do not sustain the Examiner’s
obviousness-type, double patenting rejection of pending claim 1 or of
pending claim 11, which recites corresponding limitations to those of
pending claim 1. Further, because claims 6 and 16 depend indirectly from
claims 1 and 11, respectively; for the reasons given above with respect to
their base claims, we also do not sustain the Examiner’s obviousness-type,
double patenting rejection of these dependent claims.7
B. Obviousness over Zicker and Sherman, alone or in combination with
Landmark
1. Independent Claim 1
As noted above, the Examiner rejects claim 1 under 35 U.S.C. § 103
as obvious over the combined teachings of Zicker, Sherman, and Landmark.
Final Act. 5–7. In particular, the Examiner finds Zicker teaches or suggests

7 The Examiner relies on Chong’s dependent claims 8 and 15 to render
obvious pending, dependent claims 6 and 16, respectively. See Final Act. 4–
5. Nevertheless, the Examiner fails to address the differences in the
intervening claims of each dependent claim in the obviousness-type, double
patenting analysis. See id. at 3. For this additional reason, we do not sustain
this rejection.
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the majority of the limitations recited in claim 1.8 Id. (citing Zicker, Abstr.,
1:39–48, 1:58–65, 2:65–67, 3:8–19, 4:7–19, 4:50–63, 8:26–63, Figs. 1, 2, 6).
Specifically, the Examiner finds Zicker teaches or suggests, “determining,
via processing circuitry of the electronic device, whether the electronic
device . . . has an inactive RF channel to use for transmitting an RF signal
via an antenna of the electronic device.” Id. at 5–6 (citing Zicker, 8:26–63,
Figs. 1, 6). In particular, Zicker discloses:
Task 64 may monitor a received signal strength indicator
(RSSI) to determine whether a selected channel is currently in
use. If the signal strength is above a predetermined threshold,
then the channel is currently being used. A channel indicated on
available channel list 62 may legitimately be in use for several
reasons. For example, nearby cordless systems, whether or not
the handset’s home system, may be using the channel.
Alternately, the channel may be receiving some interference
from an adjacent channel being used in a nearby cordless system.
Furthermore, the channel might be a channel in use by a local or
nearby cellular system and have been mistakenly included on the

8 Zicker recites, “determining . . . whether the electronic device having the
conducted RF link has an inactive RF channel to use for transmitting an RF
signal” and “if an inactive RF channel exists, using the inactive RF channel
for RF signal generation and transmission over the conducted RF link.”
Appeal Br. 15 (Claims App.) (emphases added). Due to the language in the
“determining” and “using” steps, logically, the “using” step need not be
performed, after the “determining” step if the condition precedent recited in
the “using” step is not met. See Ex parte Schulhauser, Appeal No. 2013-
007847, 2016 WL 6277792, at *3 (PTAB 2016) (precedential).
Consequently, the applied references need not teach or suggest that step in
order to render the claimed method obvious. Id. at *5. This interpretation
does not apply to the device, as recited in claim 11. See id. at *7 (“The
broadest reasonable interpretation of a system claim having structure that
performs a function, which only needs to occur if a condition precedent is
met, still requires structure for performing the function should the condition
occur.”).
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available channel list or simply not an available channel at the
precise location within a cell 14 where the handset 18 may be
currently positioned. By checking for prior channel use from a
list of potentially available channels, handset 18 improves
channel assignment reliability and reduces the risks of
interference. . . .
When task 64 finds a channel from available channel
list 62 that is not currently in use, a task 66 transmits a “Here I
Am” message over the channel.
Zicker, 8:26–43, 49–51 (emphases added). Thus, the Examiner finds Zicker
teaches or suggests determining via processing circuitry whether a device
has an inactive, i.e., unused, RF channel to use for transmitting an RF signal.
The Examiner finds, however, Zicker does not teach or suggest a
conducted RF link or “wherein the conducted RF link utilizes a conductor
that facilitates communication between the electronic device and another
electronic device,” as recited in claim 1. Final Act. 6. Nevertheless, the
Examiner finds the combination of Zicker with Sherman teaches or suggests
this missing limitation and that a person of ordinary skill in the relevant art
would have had reason to combine Sherman’s teachings with those of Zicker
to achieve this limitation of claim 1. Id. at 6–7 (citing Sherman ¶¶ 216–220,
Fig. 21); Adv. Act. 4; Ans. 21–22.
In particular, Sherman discloses, “The cellular phone, generally
referenced 70, comprises a baseband processor or CPU 71 having analog
and digital portions. The basic cellular link is provided by the RF
transceiver 94 and related one or more antennas 96, 98.” Sherman ¶ 216
(emphasis added); see Adv. Act. 7–9 (citing Spec. ¶¶ 33, 37, 42, 49).
Further, Sherman discloses, “A USB interface connection 78 provides a
serial link to a user’s PC or other device.” Id. ¶ 219; see also Spec. ¶ 5
(“Traditionally, such connections have been ‘hard-wired’, such that the
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devices had to be connected directly to one another by some sort of cabling
or by cabling via a network interface. Such cabling is typically terminated
by standardized connectors (e.g., USB, RS232, etc.) or by proprietary
connectors, e.g. Apple’s Lightning® connector, etc.” (emphasis added)).
Thus, the Examiner finds Sherman teaches or suggests using a conducted RF
link, e.g., a USB interface, for signal transmission in addition to or as an
alternative to an antenna. Final Act. 6; Adv. Act. 5; Ans. 21–22.
Appellant contends that Sherman fails to teach or suggest this
disputed limitation for two reasons. Appeal Br. 6–9; Reply Br. 3–5. First,
Appellant contends Zicker’s teaching is limited to “multiple radio
communication channels that are used by either a cellular station or cordless
base station include[ing] only wireless modes of operation, and not a
conductor (e.g., utilizing a cable or surface contacts) that facilitates
communication between the electronic device and another electronic
device.” Reply Br. 4; see Appeal Br. 7. Second, Appellant contends,
“Sherman teaches a USB interface that is connected to a digital baseband
processor. By definition, a baseband signal is a signal that either has not
been modulated (e.g., without modulation) or demodulated, whereas an RF
signal, by definition, has been modulated.” Reply Br. 4–5 (citations
omitted); see Appeal Br. 7. For the reasons given below, we disagree with
Appellant.
First, Appellant contends Zicker’s teaching is limited to RF channels
that are used by devices “only [for] wireless modes of operation.” Reply
Br. 4; see Appeal Br. 7. Nevertheless, although Zicker clearly discloses
wireless modes of operation, Appellant points to no portion of Zicker that
excludes other modes of operation. Reply Br. 4; see Appeal Br. 7.
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Moreover, the Examiner finds Zicker discloses, “In this multimode
communication network, radio coverage areas of a cellular land station and a
cordless base station overlap. The method calls for identifying a plurality
of radio communication channels which are unused by the cellular land
station.” Ans. 21 (quoting Zicker 3:14–16 (italics added)). Thus, the
Examiner finds that Zicker does not exclude other forms of communication
channels and teaches or suggests that devices may include a “conducted RF
link.” See Adv. Act. 5. We agree with the Examiner.
Consequently, we are not persuaded of Examiner error by this first
reason.
Second, Appellant contends Sherman’s USB interface is connected to
a digital baseband processor and such an interface can only transmit “a
signal that either has not been modulated (e.g., without modulation) or
demodulated, whereas an RF signal, by definition, has been modulated.”
Reply Br. 4–5; see Appeal Br. 7. In particular, Appellant cites to a
Wikipedia article retrieved on March 19, 2019, and June 7, 2020, to support
its contention regarding the limits of Sherman’s USB interface. Reply Br. 4;
Appeal Br. 7.
Initially, we note that Wikipedia has not been recognized as a
trustworthy source of information. See Ex parte Three-Dimensional Media
Group, Ltd., Appeal No. 2009-004087, 2010 WL 3017280, at *17 (BPAI
2010) (non-precedential) (“Wikipedia is generally not to be considered as
trustworthy as traditional sources for several reasons, for example because
(1) it is not peer reviewed; (2) the authors are unknown; and (3) apparently
anyone can contribute to the source definition”); see also Bing Shun Li v.
Holder, 2010 WL 4368469, at *2 (5th Cir. 2010) (unpublished) (noting
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Wikipedia’s unreliability and citing Badasa v. Mukasey, 540 F.3d 909, 910–
11 (8th Cir. 2008)). Further, Appellant fails to show the relevance of an
article retrieved in 2019 and 2020 to the interpretation of a reference filed in
2007. Sherman (22).
Moreover, even if we were to accept the Wikipedia article as a
trustworthy source, we are not persuaded that it limits Sherman’s teachings.
As noted above, Sherman discloses, “The cellular phone, generally
referenced 70, comprises a baseband processor or CPU 71 having analog
and digital portions.” Sherman ¶ 216 (emphases added). Appellant only
relies on the Wikipedia article to address the baseband processor, not a CPU.
E.g., Appeal Br. 7 (“Accordingly, the USB interface that is coupled to the
baseband processor taught in Sherman cannot be used to transmit an RF
signal via the USB cable.”). Thus, Appellant’s contentions are not
commensurate with the scope of Sherman’s teachings.
Consequently, we are not persuaded of Examiner error by this second
reason.
On this record, we are not persuaded the Examiner errs in rejecting
independent claim 1 as obvious over the combined teachings of Zicker,
Sherman, and Landmark; and we sustain that rejection. Further, the
Examiner rejects claim 21, which depends directly from claim 1, as obvious
over the combined teachings of Zicker, Sherman, and Landmark. Appellant
does not challenge the rejection of claim 21 separately, and we also sustain
the rejection of claim 21.
2. Independent Claim 11
As noted above, the Examiner rejects claim 11 under 35 U.S.C. § 103
as obvious over the combined teachings of Zicker and Sherman. Final
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Act. 11–13. As with claim 1, the Examiner relies on Zicker to teach or
suggest the majority of the limitations of claim 11, but relies on Sherman to
teach or suggest, “wherein the at least one conducted RF link utilizes a
conductor that facilitates communication between the electronic device and
another electronic device.” Final Act. 12–13.
Appellant contends the Examiner errs in rejecting claim 11 for the
same reasons argued with respect to claim 1. Appeal Br. 13 (“For the
reasons discussed above with respect to independent claim 1, Zicker and
Sherman, alone or in hypothetical combination, also fail to teach or suggest
at least these recitations.”); see Ans. 30–31. For the reasons set forth above
with respect to claim 1, on this record, we are not persuaded the Examiner
errs in rejecting independent claim 11 as obvious over the combined
teachings of Zicker and Sherman; and we also sustain the Examiner’s
rejection of claim 11.9
3. Dependent Claims 2 and 12
As noted above, claim 2 depends directly from independent claim 1
and recites in the “determining” step of claim 1, the additional steps of
“determining, via the processing circuitry, if any RF channels of the

9 The Examiner also relies on the Specification’s disclosure and certain non-
patent literature to support the findings regarding a person of ordinary skill
in the art’s understanding of a USB interface. See Ans. 31–34; see also
Spec. ¶ 5 (“Such cabling is typically terminated by standardized connectors
(e.g., USB, RS232, etc.) or by proprietary connectors, e.g. Apple’s
Lightning® connector, etc.”). Nevertheless, because on this record, we
determine Sherman’s disclosure is sufficient to teach or suggest this
limitation, we need not address the Examiner’s reliance on additional
evidence.
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electronic device are active and, if so,10 placing any active RF channels on a
channel avoidance list.” Appeal Br. 15 (Claims App.) (emphasis added).
Claim 12 depends directly from independent claim 11 and recites a
corresponding limitation to the disputed limitation of claim 2. Id. at 17.
Further, each of claims 3, 4, 7, 9, and 10 depends indirectly from claim 1 via
intervening claim 2; and each of claims 13–17, 19 and 20 depends indirectly
from claim 11 via intervening claim 12. Id. at 15–18.
The Examiner rejects claims 2 and 12 as obvious over Zicker,
Sherman, and Landmark. Final Act. 9–10. For the reasons given below, we
do not sustain this rejection.
As an initial matter, the Examiner errs in relying on Landmark in the
rejection of claims 12–17, 19, and 20. In the Final Office Action, the
Examiner relies on Landmark to teach or suggest, “wherein RF signal
transmission over the conducted RF link provides a lower RF signal
amplification relative to RF signal transmission on the antenna,” as recited
in claim 1. Final Act. 7; see Appeal Br. 15 (Claims App.). However, there
is no corresponding limitation in independent claim 11 or in the claims
dependent therefrom. Appeal Br. 17–18 (Claims App.). Thus, in view of
the rejection of independent claim 11 as obvious over the combined
teachings of Zicker and Sherman, the inclusion of Landmark in the rejection
of claims 12–17, 19 and 20 appears to have been inadvertent. Nevertheless,
the Board may sustain a multi-reference obviousness rejection by relying on
less than all of the applied references without having to designate the
reliance on less than the total amount of evidence as a new ground of

10 See supra note 8 (discussing conditional claiming).
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rejection. In re Boyer, 363 F.2d 455, 458 n.2 (CCPA 1966); In re Bush, 296
F.2d 491, 496 (CCPA 1961). Consequently, we find this inclusion of
Landmark in the rejection of claims 12–17, 19, and 20 harmless error. See
also supra note 5 (discussing forfeited arguments).
The Examiner finds Zicker’s disclosure of finding channels not
currently in use on an “available channel list 62” teaches or suggests the
recited steps of “determining . . . if any RF channels of the electronic device
are active and, if so, placing any active RF channels on a channel avoidance
list,” in claims 2 and 12. Final Act. 10; Appeal Br. 15 (Claims App.)
(emphases added). Appellant contends,
the cited portions of Zicker appear to teach a handset registration
process that includes determining if a selected channel is
currently in use, and then loops back to select the next channel in
an available channel list until an unused channel is found. See
Zicker at col. 8, lines 3-7. That is, Zicker continues to loop until
an unused channel is found, but does not place the determined
active channel on an avoidance list. As such, Zicker does not
teach or suggest placing active RF channels on a channel
avoidance list, as generally recited by claims 2 and 12.
Appeal Br. 9 (emphasis added); see Reply Br. 5–6. We agree with
Appellant that the Examiner fails to show that searching for unused channels
on an “available channels list” teaches or suggests determining active
channels and placing them on a “channel avoidance list.”
On this record, we are persuaded the Examiner errs in rejecting
dependent claim 2 as obvious over the combined teachings of Zicker,
Sherman, and Landmark and dependent claim 12 as obvious over the
combined teachings of Zicker and Sherman. Consequently, we do not
sustain the rejection of claims 2 and 12. Further, because each of claims 3,
4, 7, 9, and 10 depends indirectly from claim 1 via intervening claim 2; and
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each of claims 13–17, 19 and 20 depends indirectly from claim 11 via
intervening claim 12; we also do not sustain the rejection of those claims.11
C. Obviousness over Zicker, Sherman, Landmark, and Wirtanen
The Examiner rejects claims 8 and 18 under 35 U.S.C. § 103 as
obvious over the combined teachings of Zicker, Sherman, Landmark, and
Wirtanen. Final Act. 13–14. As noted above, the Examiner errs in applying
Landmark in rejecting claim 18, but this error is harmless. See supra
Section B.3. Because claim 8 depends from claim 2, and claim 18 depends
from claim 12, for the reasons given above, we also do not sustain the
rejection of those claims.12 Id.
DECISION
1. The Examiner errs in rejecting:
a. claims 1, 6, 11, and 16 as unpatentable under the judicially-
created doctrine of obviousness-type double patenting in view
of claims 1, 8, 9, and 15 of Chong;
b. claims 2–4, 6, 7, 9, 10, 12–17, 19, and 20 under 35 U.S.C.
§ 103 as obvious over the combined teachings of Zicker and
Sherman, alone or in combination with Landmark; and

11 Because these claims depend from a rejected base claim, dependent
claims 2–4, 7, 9, 10, 12–17, 19, and 20 are not patentable as currently
written. We do not reach the merits Appellant’s contentions with respect to
the Examiner’s rejections of claims 3, 4, 7, 9, 10, 13–17, 19 and 20. See
Appeal Br. 10–13.
12 Because these claims depend from a rejected base claim, dependent
claims 8 and 18 are not patentable as currently written. We do not reach the
merits Appellant’s contentions with respect to the Examiner’s rejection of
claims 8 and 18. See Appeal Br. 13–14.
Appeal 2020-004833
Application 14/871,913

18

c. claims 8 and 18 under 35 U.S.C. § 103 as obvious over the
combined teachings of Zicker, Sherman, and Wirtanen, alone or
in combination with Landmark.
2. The Examiner does not err in rejecting:
a. claims 1 and 21 under 35 U.S.C. § 103 as obvious over the
combined teachings of Zicker, Sherman, and Landmark; and
b. claim 11 under 35 U.S.C. § 103 as obvious over the combined
teachings of Zicker and Sherman.
3. Thus, on this record, claims 1, 11, and 21 are not patentable, and
claims 2–4, 6–10, and 12–20 are not unpatentable.
CONCLUSION
We affirm the Examiner’s rejections of claims 1, 11, and 21 and
reverse the Examiner’s rejections of 2–4, 6–10, and 12–20.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 6, 11, 16 Nonstatutory Double
Patenting, Chong
1, 6, 11,
16
1–4, 6, 7, 9,
10, 12–17, 19,
20, 21
103 Zicker, Sherman,
Landmark
1, 21 2–4, 6, 7,
9, 10, 12–
17, 19, 20
11 103 Zicker, Sherman 11
8, 18 Zicker, Sherman,
Landmark, Wirtanen
8, 18
Overall
Outcome
1, 11, 21 2–4, 6–
10, 12–20
Appeal 2020-004833
Application 14/871,913

19

TIME PERIOD FOR 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART