Ex Parte Agin

Patent Trial and Appeal BoardAug 8, 2017

10504082 (P.T.A.B. Aug. 8, 2017)

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. 10/504,082 08/10/2004 Pascal Agin 104454-US-PCT 6627 59978 7590 08/10/2017 Chiesa Shahinian & Giantomasi PC (ALU) Attn: Jeffrey M. Weinick One Boland Drive West Orange, NJ 07052 EXAMINER CAI, WAYNE HUU ART UNIT PAPER NUMBER 2644 NOTIFICATION DATE DELIVERY MODE 08/10/2017 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): patent @ csglaw. com ipsnarocp @ nokia. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PASCAL AGIN Appeal 2017-0015551 Application 10/504,0822 Technology Center 2600 Before ELENI MANTIS MERCADER, DAVID M. KOHUT, and LARRY J. HUME, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134(a) of the Final Rejection of claims 1â€”22, all of the pending claims in the application. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 This application was the subject of prior Appeal No. 2010-012266 in which the Examiner's prior art rejections under Â§Â§102 and 103 were reversed, and new grounds of rejection were imposed on various claims under Â§ 112 for lack of enablement, undue breadth, and indefiniteness. See Prior Decision 1 et seq. 2 According to Appellant, the real party in interest is Nokia Corporation. App. Br. 1. Appeal 2017-001555 Application 10/504,082 STATEMENT OF THE CASE3 The Invention Appellant's disclosed embodiments and claimed invention "relate[] to a method for diversity broadcasting in a mobile radio communication system." Spec. p. 1â€”5. Exemplary Claims Claims 1 and 4, reproduced below, are representative of the subject matter on appeal (emphasis added to contested limitations): 1. Method of improving the performance of a mobile radio system with N transmit antennas (where N > 1), wherein different antenna diversity modes are possible, including at least one mode with "n" transmit antennas (where 1 < n < N), wherein different antenna diversity modes are possible, said method comprising: selecting "n" transmit antennas from the N transmit antennas for transmission in a mode with "n " transmit antennas so as to not always use the same transmit antennas in a mode with n transmit antennas. 4. Method according to claim 1, wherein said "n" transmit antennas are selected from the N transmit antennas (where 1 < n < N) in such a manner as to distribute the transmitted powers between the N transmit antennas. 3 Our Decision relies upon Appellant's Appeal Brief ("App. Br.," filed Apr. 15, 2016); Reply Brief ("Reply Br.," filed Nov. 2, 2016); Examiner's Answer ("Ans.," mailed Sept. 8, 2016); Final Office Action ("Final Act.," mailed Oct. 19, 2015); the original Specification ("Spec.," filed Aug. 10, 2004); and our prior Decision ("Prior Decision" mailed Aug. 20, 2013). 2 Appeal 2017-001555 Application 10/504,082 Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Greenstein et al. US 6,131,016 ("Greenstein") Oct. 10, 2000 Sampath et al. US 2003/0012308 Al ("Sampath") Jan. 16, 2003 Walton etal. US 2003/0125040 Al ("Walton") July 3, 2003 Subrahmanya et al. US 2003/0128678 Al (" Subrahmanya") July 10, 2003 Rejections on Appeal*â€™4 5 Rl. Claim 1 stands rejected under pre-AIA 35 U.S.C. Â§ 112, first paragraph, as lacking an enabling disclosure. Final Act. 6. R2. Claims 1â€”4, 7â€”9, 14, 15, 17, 20, and 22 stand rejected under pre-AIA 35 U.S.C. Â§ 103(a) as being unpatentable over Walton. Final Act. 11. 4 Although not argued by Appellant, we note claims 14â€”16 are improperly rejected by what we characterize as an "inverted rejection" in which the rejection of the dependent claims do not rely upon all the references cited in the rejection of the corresponding base claims 12 and 13. However, Appellant does not point out nor argue the Examiner's inconsistency in their Briefs. Arguments not made are waived. 5 In the event of further prosecution, we invite the Examiner's attention to dependent hybrid claims 20â€”22 to determine whether these claims meet the requirements of 35 U.S.C. Â§ 112, fourth paragraph, for failing to further limit independent claims 7, 12, and 17 from which they variously depend. 3 Appeal 2017-001555 Application 10/504,082 R3. Claims 5, 6, 11, 16, 18, 19, and 21 stand rejected under pre- AIA 35 U.S.C. Â§ 103(a) as being unpatentable over Walton in view of Subrahmanya. Final Act. 13. R4. Claim 10 stands rejected under pre-AIA 35 U.S.C. Â§ 103(a) as being unpatentable over Walton in view of Greenstein. Final Act. 15. R5. Claims 12 and 13 stand rejected under pre-AIA 35 U.S.C. Â§ 103(a) as being unpatentable over Walton in view of Sampath. Final Act. 16. CLAIM GROUPING We address enablement Rejection R1 of claim 1, infra. Based on Appellant's arguments (App. Br. 4â€”14), we decide the appeal of obviousness Rejection R2 of claims 1â€”3, 7â€”9, 14, 15, 17, 20, and 22 on the basis of representative claim 1. We decide the appeal of obviousness Rejection R2 of separately argued claim 4, infra. Remaining claims 5, 6, 10â€”13, 16, 18, 19, and 21 in Rejections R3 through R5, not argued separately or substantively, stand or fall with the respective independent claim from which they depend.6 6 "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. Â§ 41.37(c)(l)(iv). In addition, when Appellants do 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). 4 Appeal 2017-001555 Application 10/504,082 ISSUES AND ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellant. We do not consider arguments Appellant could have made but chose not to make in the Briefs, and we deem any such arguments waived. 37 C.F.R. Â§ 41.37(c)(l)(iv). We disagree with Appellant's arguments with respect to claims 1â€”22, and we incorporate 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 incorporate such findings, reasons, and rebuttals herein by reference unless otherwise noted. However, we highlight and address specific findings and arguments regarding claims 1 and 4 for emphasis as follows. 1. $ 112,11, Enablement Rejection R1 of Claim 1 Issue 1 Appellant argues (App. Br. 4â€”8; Reply Br.2 4) the Examiner's rejection of claim 1 under 35 U.S.C. Â§ 112(a) as lacking an enabling disclosure is in error. These contentions present us with the following issue: Did the Examiner err in concluding claim 1 lacks enablement under 35 U.S.C. Â§ 112, first paragraph, based upon an undue experimentation analysis using the Wands factors?7 7 See In re Wands, 858 F.2d 731,737 (Fed. Cir. 1988). 5 Appeal 2017-001555 Application 10/504,082 Analysis Appellant contends: The Specification as filed ("Specification") sufficiently enables the element "selecting "n" transmit antennas from the N transmit antennas for transmission in a mode with "n" transmit antennas so as to not always use the same transmit antennas in a mode with n transmit antennas" of claim 1 (emphasis added). In particular, page 9, lines 16â€”20 of the Specification explain that: "the invention therefore makes no provision for always using the same transmit antenna ... for transmission." App. Br. 5. We agree with the Examiner's detailed factual findings and legal conclusions (Final Act. 6â€”10), which we incorporate herein by reference and adopt as our own, including the undue experimentation analysis under Wands. We further find Appellant's arguments (App. Br. 4â€”8), Inventor's Rule 132 Declaration filed July 29, 2015 ("Declaration"), and the Specification merely repeat the objectives of the claimed invention, but do not provide any details or enabling disclosure as to how a person of ordinary skill in the art would carry out the invention when provided the Specification as a guide, nor is there any evidence of record as to how a person of ordinary skill in the art would interpret the Specification, notwithstanding the Declaration evidence asserting otherwise. With further regard to the Declaration,8 we note our reviewing courts have found a Declaration provided by an inventor is by nature self-serving, 8 Appellant asserts the Examiner did not give proper weight to the Declaration. App. Br. 4. We disagree. We find the Examiner addressed the Declaration in two parts: "The declaration under 37 CFR 1.132 filed July 29, 2015 is insufficient to overcome the rejection of claims 1â€”22 based 6 Appeal 2017-001555 Application 10/504,082 and is therefore accorded little, if any, evidentiary weight. See e.g., Reese v. Hurst, 661 F.2d 1222, 1239 (CCPA 1981) (discussing the weight to be given to self-serving declarations made by an inventor in an interference proceeding). "A man cannot make evidence for himself by writing a letter containing the statements that he wishes to prove." A. B. Leach & Co. v. Peirson, 275 U.S. 120, 128 (1927). Cf. with Bell & Howell Document Mgmt. Prods, v. AltekSys., 132 F.3d 701, 706 (Fed. Cir. 1997) (An inventor's self-serving statements are rarely relevant to the proper construction of a claim term.). We additionally note the Declaration, notwithstanding assertions made to the contrary in paragraph 9 therein, does not provide any objective evidence showing that a person of ordinary skill in the art would understand how to incorporate the stated objectives into the claimed invention. Instead, the declarant merely cites portions of the Specification, and asserts understanding by a person of ordinary skill in the art as to how to carry out the purported inventive concept. Therefore, we do not find the Declaration evidence to be persuasive of Examiner error. We further find our previous enablement analysis (see Prior Decision 8â€”12) and legal conclusions therein remain relevant to claim 1 and upon 35 U.S.C. 112(a) as set forth in the last Office action because: It include(s) statements which amount to an affirmation that the claimed subject matter functions as it was intended to function." Final Act. 2; see also Ans. 2â€”3. Although not particularly relevant to the obviousness rejections R2 through R5, we find the Examiner goes on to preemptively state the Declaration "is not relevant to the issue of nonobviousness of the claimed subject matter and provides no objective evidence thereof. See MPEP Â§ 716." Final Act. 2. 7 Appeal 2017-001555 Application 10/504,082 arguments presented in the present Appeal, and are incorporated herein by reference. Accordingly, on this record, based upon the factual findings and conclusions of law cited above, we are not persuaded of error in the Examiner's legal conclusion that Appellant's disclosure is non-enabling with respect to the subject matter of claim 1 at least based upon the Examiner's undue experimentation analysis using the Wands factors, as cited above and incorporated herein. Therefore, we sustain the Examiner's enablement rejection of independent claim 1. 2. $103 Rejection R2 of Claims 1â€”3, 7â€”9, 14, 15, 17, 20, and 22 Issue 2 Appellant argues (App. Br. 9â€”10) the Examiner's rejection of claim 1 under 35 U.S.C. Â§ 103(a) as being obvious over Walton is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art teaches or suggests a "[mjethod of improving the performance of a mobile radio system with N transmit antennas" that includes the step of "selecting 'n' transmit antennas from the N transmit antennas for transmission in a mode with 'n' transmit antennas so as to not always use the same transmit antennas in a mode with n transmit antennas," as recited in claim 1? Analysis Appellant contends the cited portions of Walton (| 469) relied upon by the Examiner do not teach or suggest the contested "selecting" step, particularly selecting "so as to not always use the same transmit antennas in a mode with n transmit antennas," as recited by claim 1. App. Br. 9. 8 Appeal 2017-001555 Application 10/504,082 Appellant contrasts Walton's teaching with claim 1 by alleging "the cited portions of Walton merely relate to assignment of transmit antennas to selected terminals .... [but] merely assigning transmit antennas based on availability does not teach or suggest, either explicitly or implicitly, at least," the "selecting 'n' transmit antennas step." App. Br. 9â€”10. The Examiner finds, and we agree: In light of Walton, paragraph 0469 describes that the transmit antennas are selected based on the availability of the transmit antennas. In other words, when the transmit antennas are available, then they will be selected for use. At other times, when the transmit antennas are unavailable, then they would not be selected for use. It is also commonly understood that the transmit antennas cannot be selected if they are not available. The Examiner also notes that the phrase "not always" in claim language means that if there is one time, or one opportunity that one of the transmit antennas is not used, then it [discloses the recited] "not always" because this one possibility of unavailability means that not all of the transmit antennas are always [ ] used. Hence, it is reasonable to conclude that when the transmit antennas are available, then they will be selected, and they cannot be selected when the transmit antennas are unavailable. Ans. 5. The Examiner goes on to find the contested claim limitation reads on Walton's cited disclosure "because the transmit antennas cannot be selected when they are unavailable, which also means that the transmit antennas do not always use the same transmit antennas." Ans. 5â€”6. We agree with the Examiner's broad but reasonable interpretation because we note Appellant has not cited to a supported definition for the recitation in claim 1 of "selecting 'n' transmit antennas from the N transmit antennas for transmission in a mode with 'n' transmit antennas so as to not 9 Appeal 2017-001555 Application 10/504,082 always use the same transmit antennas in a mode with n transmit antennas" in the Specification that would preclude the Examiner's broader reading.9 Based at least in part upon the written description rejection of claim 1 discussed, supra, we are not persuaded the Examiner's claim interpretation is overly broad, unreasonable, or inconsistent with the Specification. In short, "[wjhere an inventor chooses to be his own lexicographer and to give terms uncommon meanings, he must set out his uncommon definition in some manner within the patent disclosure" to give ordinarily skilled artisans notice of the change. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Moreover, the common practice of failing to precisely define claim terms in the Specification, and then later arguing these undefined terms are not taught by the cited reference(s) only serves to undermine the fundamental public notice function of a U.S. Patent grant, and has the potential to create unnecessary litigation costs to the public, which is entitled to a clear warning from the patent owner as to what constitutes infringement of the claimed invention. See Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379 (Fed. Cir. 2000). Accordingly, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the teachings and 9 Any special meaning assigned to a term "must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention." Multiform Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to a term a unique definition that is different from its ordinary and customary meaning; however, a patentee must clearly express that intent in the written description."). 10 Appeal 2017-001555 Application 10/504,082 suggestions of the cited prior art to teach or suggest the disputed limitation of claim 1, nor do we find error in the Examiner's resulting legal conclusion of obviousness. Therefore, we sustain the Examiner's obviousness rejection of independent claim 1, and grouped claims 2, 3, 7â€”9, 14, 15, 17, 20, and 22 which fall therewith. See Claim Grouping, supra. 3. Rejections R3 through R5 of Claims 5, 6, 10-13, 16, 18, 19, and 21 In view of the lack of any substantive or truly separate arguments directed to obviousness Rejections R3 through R5 of claims 5, 6, 10-13, 16, 18, 19, and 21 under Â§ 103 (see App. Br. 10â€”14), we sustain the Examiner's rejection of these claims. Arguments not made are waived. REPLY BRIEF To the extent Appellant may advance new arguments in the Reply Brief (Reply Br. 2-4) not in response to a shift in the Examiner's position in the Answer, we note arguments raised in a Reply Brief that were not raised in the Appeal Brief or are not responsive to arguments raised in the Examinerâ€™s Answer will not be considered except for good cause (see 37 C.F.R. Â§ 41.41(b)(2)), which Appellant has not shown. 11 Appeal 2017-001555 Application 10/504,082 CONCLUSIONS10 (1) The Examiner did not err with respect to enablement Rejection R1 of claim 1 under 35 U.S.C. Â§ 112, first paragraph, and we sustain the rejection. (2) The Examiner did not err with respect to obviousness Rejections R2 through R5 of claims 1â€”22 under 35 U.S.C. Â§ 103(a) over the cited prior art combinations of record, and we sustain the rejections. DECISION We affirm the Examiner's decision rejecting claims 1â€”22. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). See 37 C.F.R. Â§ 41.50(f). AFFIRMED 10 We further invite the Examiner's attention to independent claims 1,13, and 17 to determine whether these claims avoid the undue breadth requirement under Â§ 112, second paragraph, for claims arguably eligible for construction under 35 U.S.C. Â§ 112, sixth paragraph, by reciting single "means." We note Appellant has overcome the prior undue breadth rejection under Â§ 112, second paragraph, of claims 7, 12, and 17, previously defined by "single means" claims, by substituting "configured to" for the previously recited "means for" in these claims. We leave it to the Examiner to determine whether these claims fall under the ambit of our reviewing court's holding in Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346-47 (Fed. Cir. 2015). It appears these claims may not recite sufficient structure, and are examples of pure functional claiming which may be construed under 35 U.S.C. Â§ 112, sixth paragraph. Although the Board is authorized to reject claims under 37 C.F.R. Â§ 41.50(b), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) 1213.02. 12