Ex Parte Han et al

Patent Trial and Appeal Board

Dec 8, 2017

13572438 (P.T.A.B. Dec. 8, 2017)

United States Patent and Trademark Office
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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
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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.
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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
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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).
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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
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