Ex Parte Han et alDownload PDFPatent Trial and Appeal BoardDec 8, 201713572438 (P.T.A.B. Dec. 8, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/572,438 08/10/2012 Shuangfeng Han SP12130-US (SAMS06-12130) 9493 23990 7590 12/12/2017 DOPKF.T n FR K EXAMINER P.O. DRAWER 800889 DAT!.AS, TX 75380 HAIDER, SYED ART UNIT PAPER NUMBER 2633 NOTIFICATION DATE DELIVERY MODE 12/12/2017 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): patents @ munckwilson. com munckwilson @ gmail. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SHUANGFENG HAN and BRUNO CLERCKX Appeal 2017-004309 Application 13/572,438 Technology Center 2600 Before JOSEPH L. DIXON, JOHN A. JEFFERY, and DENISE M. POTHIER, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2017-004309 Application 13/572,438 Appellants request rehearing of our decision dated September 27, 2017 (“Dec.”), where we affirmed the Examiner’s obviousness rejections of (1) claims 26, 27, 30, 33, 36-39, 41, and 42 over Nsenga, Dendy, and Orihashi,1 and (2) claims 35 and 40 over Nsenga, Dendy, Orihashi, and Bala.2 Request for Rehearing filed November 27, 2017 (“Req. Reh’g”). In the Request, Appellants contend that by extending inferences regarding the results of combining the cited references beyond the actual subject matter disclosed, we allegedly made a finding of fact not supported by substantial evidence of record. Req. Reh’g 2. For the reasons noted below, we deny the request to modify our decision. As we noted in our decision, a key aspect of the Examiner’s proposed combination was the notion that despite Dendy’s one-to-one correspondence between phase shift and antenna elements in Figure 2, we nevertheless found no error in the Examiner’s reliance on Ho soya’s on/off switch elements 414-1 to 414-M for at least suggesting that a single common element, such as transmitter circuit 403, can be connected to different antenna elements 415-1 to 415-M via controlled on/off switches to control the directivity pattern. See Dec. 6-8. As we indicated, the Examiner’s proposed combination would, among other things, provide an additional way to alter the radiation pattern by connecting phase shift elements not just to one antenna element as in Dendy’s Figure 2, but also to other antenna elements in an array—a 1 As noted in our earlier opinion (Dec. 4 n.2), “[bjecause the Examiner cites Hosoya as an English-language equivalent document to Orihashi, we refer to Hosoya throughout this opinion in connection with the Examiner’s reliance on Orihashi unless otherwise indicated.” 2 These references are cited in full on pages 2 and 3 of our earlier decision. Therefore, we omit their full citations here for brevity. 2 Appeal 2017-004309 Application 13/572,438 predictable result that would at least contribute to improving beamforming as the Examiner indicates. See Dec. 8 (citing Ans. 7). Our emphasis underscores that the Examiner’s articulated reason to combine the references is not limited to improving communication quality as Appellants seem to suggest (see Req. Reh’g 2—4), but rather also to improve beamforming and reduce cost (Ans. 7)—rationales that Appellants did not squarely address, let alone persuasively rebut. To be sure, Hosoya discloses two alternative ways to control antenna directivity in (1) Figures 2 and 3, and (2) Figure 4, respectively, as Appellants indicate. Req. Reh’g 4. But we fail to see a reason why connecting a particular phase shift element not just to one antenna element as in Dendy’s Figure 2, but also to other antenna elements in an array would not have been at least an obvious variation yielding a predictable result for the reasons indicated in our decision. Dec. 6-8. As we indicated, this “one- to-many” correspondence is at least suggested by connecting a single common element 403 to multiple antennas via switches in Hosoya’s Figure 4. Id. 7-8. That the embodiment of Hosoya’s Figure 4 differs from that Figures 2 and 3 does not obviate the fundamental inferences ordinarily skilled artisans would reasonably draw from the reference in light of the other cited references, namely that connecting a single common element to multiple antennas via switches is known in the art as shown in Hosoya’s Figure 4, and that providing such a relationship in the Nsenga/Dendy system would 3 Appeal 2017-004309 Application 13/572,438 have been obvious.3 As we noted in our earlier decision, this enhancement would at least contribute to improving beamforming. Dec. 8. Despite Appellants’ assertions to the contrary (Req. Reh’g 4-5), the Examiner’s rationale to combine the references is supported by articulated reasoning with some rational underpinning to justify the Examiner’s obviousness conclusion. As we indicated on pages 8 and 9 of our decision, the Examiner’s reason to combine the cited references need not be found in the references themselves, including Hosoya, but rather may be found in any number of sources, including common knowledge, the prior art as a whole, or the nature of the problem itself as is the case here. DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1361 (Fed. Cir. 2006). Nor have Appellants shown that the Examiner’s proposed enhancement to the Nsenga/Dendy system would have been uniquely challenging or otherwise beyond the level of ordinarily skilled artisans. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). In reaching this conclusion, we emphasize that “a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” In re Mouttet, 686 F.3d 1322, 3 To the extent that Appellants contend that it is improper to combine teachings from different embodiments in Hosoya (see Req. Reh’g 4-5), such an argument is inapposite to the proposed combination of Hosoya with the other cited references for the reasons indicated in our decision. See Dec. 6- 8. Nevertheless, even if this argument was germane to the proposed combination, it is unavailing, for it is well settled that “[cjombining two embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness.” Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009). 4 Appeal 2017-004309 Application 13/572,438 1332 (Fed. Cir. 2012) (citations omitted). Nor is the test for obviousness whether a secondary reference’s features can be bodily incorporated into the structure of the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. Id. And here, the Examiner’s proposed combination predictably uses prior art elements according to their established functions to yield a predictable result for the reasons indicated in our decision. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). Accordingly, we are not persuaded that we misapprehended or overlooked those points in rendering our decision. CONCLUSION For the foregoing reasons, we have granted Appellants’ request to the extent that we have reconsidered our decision, but we deny the request with respect to making any changes therein. DENIED 5 Copy with citationCopy as parenthetical citation