Ex Parte Jeong et al

Patent Trial and Appeal Board

Sep 18, 2014

11714060 (P.T.A.B. Sep. 18, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/714,060 03/05/2007 Hong-Sil Jeong 678-3070 2029
66547 7590 09/19/2014
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
MCKIE, GINA M
ART UNIT PAPER NUMBER
2631
MAIL DATE DELIVERY MODE
09/19/2014 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 HONG-SIL JEONG, SEUNG-HOON CHOI,
GYU-BUM KYUNG, DONG-SEEK PARK, and JAE-YOEL KIM
____________

Appeal 2012-005195
Application 11/714,060
Technology Center 2600
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–4, 6–15, and 17–20, which are all the claims pending
in the application. Claims 5 and 16 are cancelled. We have jurisdiction
under 35 U.S.C. § 6(b).
We Affirm.

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Invention
The claimed invention on appeal is directed to “an apparatus and
method for transmitting/receiving signals in a communication system using,
for example, a Low Density Parity Check-Per Antenna Rate Control (LDPC-
PARC) Multiple Input Multiple Output (MIMO) communication system.”
(Spec. 11).
Representative Claim
1. An apparatus for transmitting a signal in a Multiple Input
Multiple Output (MIMO) communication system, the apparatus comprising:

an encoder for encoding an input information data stream into a
codeword using a coding scheme;

a MIMO mapper for mapping the codeword using a MIMO mapping
scheme thereby generating at least one mapped symbol;

modulators for modulating the mapped symbols into modulation
symbols according to a modulation scheme;

a transmitter for performing transmission processing on the
modulation symbols thereby generating transmission streams, and
transmitting the transmission streams via transmission antennas; and

a controller for detecting a channel status of each transmission
antenna depending on channel quality information received from a signal
reception apparatus associated with the signal transmission apparatus,
determining an antenna to be used by the signal transmission apparatus
depending on the detected transmission antenna channel status, and
transmitting the transmission streams via the determined antenna,

wherein the controller controls generation of mapped symbols such
that codeword bits being robust against puncturing among codeword bits
included in the codeword are transmitted via poor-channel status
transmission antennas, and
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wherein the codeword bits being robust against puncturing represent
high-degree codeword bits.
App. Br. 16 (Contested limitations emphasized).
Rejections
A. Claims 1–4, 8–15, and 17–20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combined teachings and suggestions of
Applicant’s Admitted Prior Art (AAPA) in view of Walton et al.
(US 2006/0039275 A1 published Feb. 23, 2006) and Lee et al.
(US 2003/0060173 A1 published Mar. 27, 2003).
B. Claim 6 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over the combined teachings and suggestions of AAPA,
Walton, Lee, and Lidman (US 7,088,868 B1 issued Aug. 8, 2006).
C. Claim 7 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over the combined teachings and suggestions of AAPA,
Walton, Lee, Lidman, and Chae (US 2006/0039496 A1 published
Feb. 23, 2006).

GROUPING OF CLAIMS
Based on Appellants’ arguments, we decide the appeal of Rejection A
of claims 1–4, 8–15, and 17–20 on the basis of representative claim 1. We
address rejections B and C of claims 6 and 7, separately infra. See 37 C.F.R.
§ 41.37(c) (1)(vii)(2004).1

1 Appellants filed a Notice of Appeal on June 16, 2011. The date of filing
the Notice of Appeal determines which set of rules applies to an Ex Parte
appeal. If a Notice of Appeal is filed prior to January 23, 2012, then the
2004 version of the Board Rules last published in the 2011 edition of Title

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ANALYSIS
We disagree with Appellants’ arguments regarding representative
claim 1 and we 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 Answer in response to Appellants’
arguments. (Ans. 15-26). However, we highlight and address specific
findings and arguments regarding representative claim 1 for emphasis in our
analysis below.
Rejection A of Claim 1
Issue: Under § 103, has the Examiner erred by finding the
cited prior art would have collectively taught or suggested the
contested limitations of:
wherein the controller controls generation of mapped
symbols such that codeword bits being robust against
puncturing among codeword bits included in the codeword are
transmitted via poor-channel status transmission antennas, and

wherein the codeword bits being robust against
puncturing represent high-degree codeword bits,
within the meaning of representative claim 1? (Emphasis added).
Appellants contend, inter alia:
Lee merely discloses in paragraphs [0024] and [0067] an
apparatus and method for transmitting/receiving data bits more
significant to a receiver, like systematic bits, through an
antenna in a good condition and data bits less significant to the
receiver, like parity bits, through an antenna in a poor

37 of the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to
the appeal. See also Manual of Patent Examining Procedure (MPEP) 8th
ed., Rev. 8, July 2010.
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condition. That is, more significant data (e.g., systematic bits
of a turbo encoder) is assigned to a transmission antenna with a
good transmission status, and less significant data (e.g., parity
bits) to a transmission antenna with a lower transmission status.
Therefore, Lee suggests that system performance is increased.
This is not an equivalent of, nor does it render obvious,
codeword bits being robust against puncturing among
codeword bits included in the codeword transmitted via poor-
channel status transmission antennas, and codeword bits being
robust against puncturing representing high-degree codeword
bits, as recited in independent Claims 1, 8, 12, and 17, and has
no relation to the significance of the bits to the receiver.
(App. Br. 9, emphasis added).
The Examiner disagrees:
The appellant states that the codeword bits being robust
against puncturing of Claim 1 are not related to their
significance, but provides no evidence to support said statement
because the Appellant fails to provide a definition for
“codeword bits being robust against puncturing” either in the
claims or the Specification. The examiner maintains that the
limitation “codeword bits being robust against puncturing
among codeword bits included in the codeword” is not well-
known to one of ordinary skill in the art and the appellant's
specification, while repeatedly using this phrase, fails to
provide an explicit definition of what it means. As such, the
examiner is entitled to give the phrase “codeword bits being
robust against puncturing among codeword bits included in the
codeword” the broadest reasonable interpretation . . . .
(Ans. 16–17, emphasis added).
Since the appellant’s disclosure does not provide an explicit
definition for “codeword bits being robust against puncturing
among codeword bits included in the codeword,” the examiner
has interpreted the limitation “codeword bits being robust
against puncturing among codeword bits included in the
codeword” as parity check bits or less significant data.
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(Id. at 17–18).
[Further] “high-degree codeword bits” is a relative term.
“High-degree codeword bits” is not defined by the claim and
the specification does not provide a standard for ascertaining
the requisite degree. As such, the term “high-degree codeword
bits” of claims 1, 8, 12, and 17 is interpreted by the examiner
as [reading on] the less significant data (e.g. parity bits) of Lee
in absence of an explicit definition of “high-degree codeword
bits” given by the appellant in the original specification and
claims.
(Id. at 24, emphasis added).
Appellants further respond in the Reply Brief:
However, paragraph [0081] of the present Application
recites “The codeword bits being robust against puncturing
differ according to a parity check matrix of the LDPC code.
Generally, the high-degree codeword bits are robust against
puncturing, but an increase in the number of punctured high-
degree codeword bits makes it difficult to decode the LDPC
code. Therefore, the codeword bits constituting each codeword
bit set differ according to Np (the number of the codeword bits
requird [sic] to each of mapped symbols).”

Namely, the codeword bits being robust against
puncturing of Claim 1 are not related to their significance.
However, paragraph [0067] of Lee discloses transmitting data
by using the antenna in a good condition or poor condition
according to the significance of the data. Thus, the disclosure
of Lee fails to disclose “codeword bits being robust against
puncturing among codeword bits included in the codeword are
transmitted via poor-channel status transmission antennas, and
wherein the codeword bits being robust against puncturing
represent high-degree codeword bits" of Claim 1.
(Reply Br. 2).
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ANALYSIS
This appeal turns upon claim construction. We focus our analysis on
the scope of the contested “wherein” clause limitations: “codeword bits
being robust against puncturing . . . and wherein the codeword bits being
robust against puncturing represent high-degree codeword bits.” (Claim 1).
As an initial matter of claim construction, MPEP § 2111.04 guides:
Claim scope is not limited by claim language that suggests or
makes optional but does not require steps to be performed, or
by claim language that does not limit a claim to a particular
structure. However, examples of claim language, although not
exhaustive, that may raise a question as to the limiting effect of
the language in a claim are:
(A) “adapted to” or “adapted for” clauses;
(B) “wherein” clauses; and
(C) “whereby” clauses.
Following this guidance, we conclude the functional limitations
recited in the contested “wherein” clauses do not limit the scope of the claim
because the contested functional limitations do not further limit the structure
of the apparatus of representative claim 1.2
Moreover, our reviewing court guides the patentability of an apparatus
claim “depends on the claimed structure, not on the use or purpose of that
structure.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d
801, 809 (Fed. Cir. 2002). “It is well settled that the recitation of a new
intended use for an old product does not make a claim to that old product
patentable.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations
omitted). See also Superior Indus., Inc. v. Masaba, Inc., 553 Fed. Appx.

2 See MPEP § 2111.04 Eighth Edition, Rev. 9, Aug. 2012.
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986, 991 (Fed. Cir. 2014) (Rader, J., concurring) (stating: “[A] system claim
generally covers what the system is, not what the system does.”3 Hewlett-
Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990));
see also Roberts v. Ryer, 91 U.S. 150, 157 (1875) (“The inventor of a
machine is entitled to the benefit of all the uses to which it can be put, no
matter whether he had conceived the idea of the use or not.”). Thus, it is
usually improper to construe non-functional claim terms in system claims in
a way that makes infringement or validity turn on their function. Paragon
Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009).
For these reasons, a question arises as to how much patentable weight,
if any, should be given to the contested functional limitations recited within
the “wherein” clauses of representative claim 1. Assuming arguendo the
contested functional limitations may be accorded patentable weight by our
reviewing court, we find the preponderance of the evidence supports the
Examiner’s underlying factual findings and ultimate legal conclusion of
obviousness for the reasons discussed below.
“In the patentability context, claims are to be given their broadest
reasonable interpretations . . . limitations are not to be read into the claims
from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
1993) (citations omitted). 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

3 Superior Indus., Inc. v. Masaba, Inc., 553 Fed. Appx. 986, 991 (Fed. Cir.
2014) is a non-precedential opinion of the Court of Appeals for the Federal
Circuit. However, we consider the concurring opinion by former Chief
Judge Rader as guiding because it cites precedential authority in support.
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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.”).
Here, we agree with the Examiner (Ans. 16–18) that Appellants have
not established where a definition is set forth in the Specification that
provides an artisan with notice of a special or uncommon meaning for the
contested limitation of “codeword bits being robust against puncturing.”
(Independent claims 1, 8, 17, emphasis added). Moreover, during the
prosecution, Appellants have not provided dictionary or other rebuttal
evidence establishing a common or plain meaning for the contested
limitation “codeword bits being robust against puncturing.” See MPEP
§ 2145 Eighth Edition, Rev. 9, Aug. 2012. Nor is there a declaration of
record to consider as evidence regarding the intended metes and bounds of
the disputed limitation: “codeword bits being robust against puncturing.”
(Independent claims 1, 8, 12, 17, emphasis added). See Evidence Appendix:
“[t]here is no evidence submitted pursuant to 37 C.F.R. 1.130, 1.131, 1.132
or entered by the Examiner and relied upon by Appellants.” (App. Br. 21).
Turning to paragraph 81 of Appellants’ Specification for context, we
observe the use of the qualifier “Generally, the high-degree codeword bits
are robust against puncturing . . .” Spec. 16, ll. 27–28 (emphasis added).
Thus, we find paragraph 81 as merely exemplary and therefore non-limiting.
The scope of the “codeword bits being robust against puncturing [that]
represent high-degree codeword bits” is not defined in claim 1 or the
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Specification and thus, appears to depend solely on the unrestrained,
subjective opinion of a particular individual purportedly practicing the
invention. 4 (Claim 1 (emphasis added)).
For these reasons, we are not persuaded the Examiner’s broader
reading of the contested “wherein” clause limitations on the cited
combination of AAPA, Walton, and Lee is overly broad or unreasonable.
Because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted). Given the Examiner’s broad but reasonable
claim construction, and after considering all of Appellants’ arguments in the
Briefs, we find the preponderance of the evidence supports the Examiner’s
findings as articulated in the Answer. (Ans. 15–26). Given the significant
claim construction issues addressed above, on this record, we are not

4 In the event of further prosecution, we leave it to the Examiner to consider
whether all claims which recite “codeword bits being robust against
puncturing represent high-degree codeword bits,” either directly or by virtue
of their dependency, meet the requirements of § 112, second paragraph.
Specifically, the scope of the claimed “codeword bits being robust against
puncturing represent[ing] high-degree codeword bits” is not defined and
thus, appears to depend solely on the unrestrained, subjective opinion of a
particular individual purportedly practicing the invention. See Datamize,
LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005) (“The
scope of claim language cannot depend solely on the unrestrained, subjective
opinion of a particular individual purportedly practicing the invention.
[Regarding method claim 17,] [s]ee Application of Musgrave, 57 C.C.P.A.
1352, 431 F.2d 882, 893 (1970) (noting that ‘[a] step requiring the exercise
of subjective judgment without restriction might be objectionable as
rendering a claim indefinite’). Some objective standard must be provided in
order to allow the public to determine the scope of the claimed invention.”).
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persuaded of error regarding the Examiner’s underlying factual findings and
ultimate legal conclusion of obviousness. Accordingly, we sustain § 103
rejection A of representative claim 1. Grouped claims 2–4, 8–15, and 17–20
(not argued separately) fall therewith. See 37 C.F.R. § 41.37(c)(1)(iv).

Rejections B and C of claims 6 and 7
Regarding § 103 rejections B and C, Appellants aver that the
additional cited reference “fails to cure the above-described deficiencies of
AAPA, Walton, and Lee.” (App. Br. 13–14). However, we find no
deficiencies regarding the teachings and suggestion s of AAPA, Walton, and
Lee for the reasons discussed above regarding claim 1. Therefore, we
sustain the Examiner’s §103 rejections B and C of claims 6 and 7,
respectively.
CONCLUSION OF LAW
For the aforementioned reasons, on this record, we are not persuaded
of error regarding the Examiner’s underlying factual findings and ultimate
legal conclusion of obviousness regarding the rejections of claims 1–4,
6–15, and 17–20 under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner’s § 103 rejections of claims 1–4, 6–15, and
17–20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED
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