Ex Parte 7512095 et al

Patent Trial and Appeal Board

Jan 31, 2018

90013498 (P.T.A.B. Jan. 31, 2018)

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.
P257056.US.01 6156
EXAMINER
POKRZYWA, JOSEPH R
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
90/013,498 04/29/2015 7512095
20686 7590 01/31/2018
DORSEY & WHITNEY, LLP - Denver
INTELLECTUAL PROPERTY DEPARTMENT
1400 Wewatta Street
Suite 400
DENVER, CO 80202-5549
01/31/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHINE MICRO INC. and SOFTWARE RADIO
TECHNOLOGY PLC,
Patent Owner and Appellants,
Appeal 2017-007186
Application 90/013,498
Patent No. 7,512,095 B2
Technology Center 3900
Before JOHN A. JEFFERY, MARC S. HOFF, and
DENISE M. POTHIER, Administrative Patent Judges.
POTHIER, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Pursuant to 37 C.F.R. § 41.52, Patent Owner has submitted a timely
Request for Rehearing dated October 23, 2017 (hereafter the “Request for
Rh’g”), requesting rehearing of our August 24, 2017 opinion (hereafter the
“Opinion” or “Op.”) that affirmed rejections of claims 1—15 and 24—26 of
U.S. Patent No. 7,512,095 B2 (“the ’095 patent”). Op. 17, 19, 22, 24, 26,
27,30, 33.
We have reconsidered the Opinion in light of Patent Owner’s
discussions in the Request for Rehearing. Upon further reconsideration, we
grant the Request to the extent that we designate our affirmance of the
Appeal 2017-007186
Application 90/013,498
Patent 7,512,095 B2
Examiner’s rejections as new grounds of rejection under 37 C.F.R. §
41.50(b).
As to the remaining assertions presented by Patent Owner, however,
we determine that we have not misapprehended or overlooked Patent
Owner’s briefed positions, and we decline to change our prior decision for
the following reasons.
Concerning Fraughton and Fulthorp, Patent Owner argues “a
‘transmission detector’ is a known structure in the art for detecting
transmissions” and that it could have provided an expert declaration as
evidence to support this position. Request for Rh’g 4—5. Yet, given the
current record, there is insufficient evidence (1) to support the recited
“transmission detector” is a term of art with a known corresponding
structure, or (2) to demonstrate we misapprehended or overlooked Patent
Owner’s position. See Op. 7 (discussing the ’095 patent 1:44^45, 2:63—65,
3:16-18, Figs. 1-3).
Additionally, Patent Owner identified the corresponding structure for
the recitation “means for detecting transmission periods by a transmission
detector” recited in claims 1,15, and 261 “to the extent [it] contains a means
plus function recitation.” App. Br. 8 (citing the ’095 patent 3:16—18), cited
in Op. 6. Thus, Patent Owner has contemplated the above limitation may be
construed to invoke 35 U.S.C. § 112, 6th paragraph (pre-AIA) or § 112(f)
1 There are several references to claim 24 (see, e.g., Op. 6, 13) in the
Opinion. These are typographical errors intended to refer to claim 26.
Additionally, we mistakenly stated “we sustain the rejection of claims 1 and
26 based on Fraughton” (id. at 22) when intending to refer to Fulthorp.
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Application 90/013,498
Patent 7,512,095 B2
and has taken the opportunity to respond and map its corresponding
structure. App. Br. 8.
Patent Owner further argues “a person of ordinary skill in the art
understands that ‘transmission periods’ (‘T’) is simply the reciprocal of a
transmission frequency (‘f’). That is, 1/f = T.” Request for Rh’g 5 (citing
The Illustrated Dictionary of Electronics 522 (Stan Gibilisco ed., 8th ed.
2001)). Patent Owner shifts its position related to how to construe the
recited phrase “transmission periods” from that presented in the Appeal
Brief and presents this argument for the first time in the Request for
Rehearing. As previously noted, “Appellants contend that the term
‘transmission periods’ recited within this means-plus-fimction recitation
should be construed to mean ‘time lengths or time segments for the
transmission of data. ’ App. Br. 17.” Op. 8. Based on this original
argument, we reasonably construed the phrase “transmission period.” Op.
8—10. Patent Owner has not sufficiently demonstrated how we overlooked
or misapprehended its points in the briefs related to how to construe the
phrase “transmission period.” See 37 C.F.R. § 41.52(a)(1).
Patent Owner next asserts “Applicant could have submitted factual
evidence, such as expert testimony, demonstrating that the listening times in
Fraughton are not known in advance as asserted by the Board, but in fact
[are] random and completely unpredictable.” Request for Rh’g 6. Yet,
given the current record, there is insufficient evidence to support Patent
Owner’s assertion or to demonstrate we misapprehended or overlooked
Patent Owner’s position. See Op. 16 (discussing Fraughton 9:68—10:3,
10:21-32, 19:10-14, Fig. 1A (step 14)).
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Application 90/013,498
Patent 7,512,095 B2
Regarding the construction of the recited “higher order protocol” in
claim 15, Patent Owner contends we “omitted slot numbers, frames, and slot
management from the construction.” Request for Rh’g 7. However,
Appellants argued in the Appeal Brief “a higher order protocol implies that
there are at least two kinds of protocols: a higher order and a lower order
protocol. The orders of the protocol generally refer to the complexity of the
set of rules governing the format of messages in some examples.” App. Br.
26; see also Op. 11. Although providing an example from the ’095 patent of
a higher order protocol (App. Br. 26), Patent Owner did not assert that the
phrase “higher order protocol” must include the slot number, frames, or slot
management. Id. Thus, this purported omission of the proper claim
construction for the recitation “higher order protocol” in claim 15 was not
presented by Patent Owner, and thus could not have been overlooked or
misapprehended.
Moreover, Patent Owner asserts we improperly shifted the burden,
requiring Patent Owner to demonstrate “Fraughton’s system was not capable
of scanning for such protocols.” Request for Rh’g 7. We withdraw such
statements to the extent our statements improperly shifted the burden to
Patent Owner to demonstrate Fraughton did not teach a “transmission
detector scanning ... for the appearance of transmissions initiated by other
participants using a higher order protocol.”
Even so, the court in In re Swinehart, 439 F.2d 210 (CCPA 1971)
indicates:
where the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
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Application 90/013,498
Patent 7,512,095 B2
characteristic of the prior art, it possesses the authority to
require the applicant to provide that the subject matter shown to
be in the prior art does not possess the characteristic relied on.
Id. at 213. Consistent with this reasoning, we addressed that the recitation of
“the transmission detector scanning ... for the appearance of transmissions
initiated by other participants using a higher order protocol” is a functional
limitation and determined Fraughton’s detector has the ability to perform
this function. Op. 17—19.
For example, we indicated Fraughton teaches three techniques (e.g.,
an altimeter (ID position fix), a LORAN receiver (2D position fix), or a
LORAN receiver with an altimeter or GPS (3D position fix) to obtain a
craft’s position fix, each having various complexity or functionality. Op. 18
(citing Fraughton 4:44—57, 9:34—55). We also explained that these
techniques are used to determine a craft’s position, to transmit its own
position, and to monitor the position of other crafts (e.g., a transmission
detector). Op. 18 (citing Fraughton 4:44—57, 9:34—55). Thus, Fraughton
teaches a navigation system, which includes a transmission detector having
the ability to “scan[] ... for the appearance of transmissions initiated by
other participants” and further demonstrates some participants “us[e] a
higher order protocol,” such as the 2D or 3D position fix, as recited. See In
re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Nonetheless, we
additionally pointed to Fraughton’s discussion of (a) using RS-232
communication protocol to communicate with other devices along with (b) a
CAS technique to listen for conflicts or check if a frequency is clear and
reasonably concluded that a transmission detector using this protocol would
have the ability to scan for transmissions initiated by other participants using
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Patent 7,512,095 B2
higher order protocols. Op. 19 (citing Fraughton 9:68—10:3, 10:21—32,
12:43-50, 19:10-14, Fig. 1A).
Patent Owner further contends that it “could have provided evidence
rebutting” rebutting Fraughton has the ability to scan for higher order
transmissions, because Fraughton is limited to CSMA (carrier-sense multiple
access). Request for Rh’g 7. We are not persuaded. Reviewing Fraughton,
we find no discussion of CSMA. See generally Fraughton. The Examiner
discusses a RS-232 communication protocol—not CSMA as argued—in the
context of Fraughton. Ans. 13—14, cited in Request for Rh’g 7. To the
extent Patent Owner intended to refer to Fulthorp, we are not persuaded for
the reasons set forth in the Opinion. Op. 22—24.
Patent Owner next contends “RS-232 is [a] computer protocol, not a
wireless RF protocol.” Request for Rh’g 8 (citing App. Br. 26). Patent
Owner argues the recited “higher order protocol” “must be wireless.”
Request for Rh’g 8 (citing Douglas A. Downing et al., Dictionary of
Computer and Internet Terms 405 (6th ed. 1998)). We are not persuaded.
This argument asserting the recited protocol must be wireless was not
presented in the briefs and could not have been overlooked or
misapprehended. Moreover, claim 15 recites “a higher order protocol” and
does not include any limitation to a wireless protocol. App. Br. iii (Claims
App’x). Lastly, claim 15 does not recite scanning the higher order protocol.
Rather, claim 15 recites scanning for transmissions’ appearance “initiated by
other participants using a higher order protocol.” Id.
Regarding Lans and ITU-R M. 1371-1, Patent Owner does not address
any points we overlooked or misapprehended. Request for Rh’g 8—9.
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Application 90/013,498
Patent 7,512,095 B2
We have considered the arguments raised by Patent Owner in the
Request for Rehearing and have granted to the Request for Rehearing to the
extent indicated. Based on the record, we are still of the view that: (1)
claims 1,15, and 26 are anticipated under § 102(b) by Fraughton, (2) claims
1,15, and 24—26 are anticipated under § 102(b) by Fulthorp, (3) claims 2—5
are anticipated under § 102(b) by Lans, and (4) claims 6—14 are anticipated
under § 102(b) by ITU-R M. 1371-1.2 We however designate our affirmance
of these rejections as new grounds of rejection under 37 C.F.R. § 41.50(b).
Section 41.50(b) provides “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
2 This “decision on the request for rehearing is deemed to incorporate the
earlier opinion reflecting its decision for appeal, except for those portions
specifically withdrawn on rehearing.” 37 C.F.R. 41.52(a)(1).
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Application 90/013,498
Patent 7,512,095 B2
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
REHEARING GRANTED
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