Ex Parte Johansson et al

Patent Trial and Appeal Board

Aug 21, 2017

13643647 (P.T.A.B. Aug. 21, 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.
13/643,647 10/26/2012 Martin Johansson 3602-527 8728
6449 7590 08/23/2017
ROTHWELL, FIGG, ERNST & MANBECK, P.C.
607 14th Street, N.W.
SUITE 800
WASHINGTON, DC 20005
EXAMINER
SMITH, GRAHAM P
ART UNIT PAPER NUMBER
2845
NOTIFICATION DATE DELIVERY MODE
08/23/2017 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):
PTO-PAT-Email @rfem. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN JOHANSSON, BJORN JOHANNISSON,
STEFAN JOHANSSON, and SVEN PETERS SON
Appeal 2016-001989
Application 13/643,647
Technology Center 2800
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
JULIA HEANEY, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 1—10 under 35 U.S.C. § 103(a) over
the combined prior art of Linehan (US 2007/0030208 Al; publ. Feb. 8,
2007) and Deng (US 2008/0309568 Al; publ. Dec. 18, 2008). The claims
are also rejected under 35 U.S.C. § 112, first paragraph, for lack of
enablement, and for lack of written description.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 The real party in interest is stated to be Telefonaktiebolaget L M Ericsson
(publ) (App. Br. 2).
Appeal 2016-001989
Application 13/643,647
Independent claim 1 is illustrative of the subject matter on appeal
(emphasis added to highlight key limitation in dispute):
1. A node in a wireless communication system,
comprising:
at least one antenna arrangement, the antenna arrangement
comprising:
a first antenna part having a first longitudinal extension
along which a first column axis runs; and
a second antenna part having a second longitudinal
extension along which a second column axis runs, wherein
the first antenna part further comprises a first antenna
element, a second antenna element, and a third antenna element,
each of said first, second and third antenna elements being
distributed along said first column axis and being connected to a
first antenna port arrangement,
the second antenna part further comprises a fourth antenna
element, a fifth antenna element, and a sixth antenna element,
each of said fourth, fifth and sixth antenna elements being
distributed along said second column axis and being connected
to a second antenna port arrangement but not connected to the
first antenna port arrangement, the second antenna port
arrangement being separate and distinct from the first antenna
port arrangement,
the first antenna element is positioned on said first column
axis,
the fourth antenna element is positioned on said second
column axis,
the second antenna element is positioned separate from
said first column axis with a certain distance (dl), wherein dl is
greater than zero,
the fifth antenna element is positioned separate from said
second column axis with said certain distance (dl).
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Appeal 2016-001989
Application 13/643,647
ANALYSIS
The § 112, first paragraph, lack of enablement rejection
As explained in LizardTech, Inc. v. Earth Resource Mapping, PTY,
Inc.:
A claim will not be invalidated on section 112 grounds simply
because the embodiments of the specification do not contain
examples explicitly covering the full scope of the claim
language. . . . That is because the patent specification is written
for a person of skill in the art, and such a person comes to the
patent with the knowledge of what has come before. . . . Placed
in that context, it is unnecessary to spell out every detail of the
invention in the specification; only enough must be included to
convince a person of skill in the art that the inventor possessed
the invention and to enable such a person to make and use the
invention without undue experimentation.
424 F.3d 1336, 1345 (Fed. Cir. 2005) (citing Union Oil Co. v. Atl. Richfield
Co., 208 F.3d 989, 997 (Fed. Cir. 2000); In re GPACInc., 57 F.3d 1573,
1579 (Fed. Cir. 1995)).
Upon consideration of the record, we find that the preponderance of
evidence supports the Appellants’ position that the claims are enabled. As
Appellants point out, planar array antennas are known in the prior art and
antenna technology has been well established (e.g., Spec. 1:15—22; App. Br.
6; Reply Br. 1—4). The Examiner’s conclusion that the nature of the art is
“unpredictable” (Ans. 4) is insufficient in light of the facts tending to
support Appellants’ position that any experimentation needed to practice the
scope of the claimed invention is routine in the art (App. Br. 6; Reply Br. 1—
4). Furthermore the Examiner’s position that the claims are so broad as to
read on almost any antenna array (Ans. 3) appears in conflict with the
Examiner’s position that Appellants have allegedly invented “one small
class of antenna arrays” (Ans. 5).
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Application 13/643,647
Accordingly, we reverse the Examiner’s rejection of the claims under
§ 112, first paragraph, for lack of enablement.
The § 112, first paragraph, lack of written description rejection
For an applicant to comply with the 35 U.S.C. § 112, first paragraph,
written description requirement, the applicant’s Specification must ‘“convey
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention.’” Carnegie Mellon
Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008)
(quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563—64 (Fed. Cir.
1991)).
After review of the respective positions provided by Appellants and
the Examiner, we find that a preponderance of the evidence supports
Appellants’ position that the original disclosure provides support for the
claimed “a second antenna port arrangement. . . not connected to the first
antenna port arrangement, the second antenna port arrangement being
separate and distinct from the first antenna port arrangement” as recited in
independent claim 1 (App. Br. 9, 10; Reply Br. 7; Spec. Figs. 2—5 (each
showing three distinct ports). As Appellants explain, the Specification
explicitly describes in the Background section that planar antenna arrays
have multiple columns that each have their own port, and more than one port
may, or may not, be associated with a given signal (Spec. 1:18—27). In re
Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (the scope
of the claims in patent applications is determined by giving claims their
broadest reasonable construction in light of the specification as it would be
interpreted by one of ordinary skill in the art); see also, Phillips v. AWH
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Appeal 2016-001989
Application 13/643,647
Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (the specification is always
highly relevant to the claim construction analysis, and is usually dispositive
as it is the single best guide to the meaning of any disputed terms).
Thus, a preponderance of the evidence supports Appellants’ position
that one of ordinary skill in the art would have understood that the originally
filed Specification encompasses port arrangements that are separate, distinct
and not connected to one another (Reply Br. 2—\\ Spec. 1:14—22 (cie facto
explaining in the Background section that each column in a planar antenna
array was known to have its own port). The claim need not use the same
words as the specification; it is enough that one of ordinary skill in the art
would recognize that the inventor invented what is claimed. Union Oil Co.,
208 F.3d at 997.
On the other hand, the Examiner has also separately rejected
dependent claim 10, stating that “the Examiner can find no support in the
originally-filed application for the claimed ratio of d2 and dl . . .” (Final
Act. 6). The Examiner also noted that “it is well established that patent
drawings do not define the precise proportions of the elements and may not
be relied on to show particular sizes if the specification is completely silent
on the issue. MPEP [§] 2125.” (Id.). Appellants have not responded, and,
thus, have not disputed the Examiner’s determination that the relationship
recited in claim 10 is not described in the application as originally filed (see
App. Br.; Reply Br. generally). Accordingly, while we reverse the
Examiner’s rejection of claims 1—9 under 35 U.S.C. § 112, first paragraph,
for lack of written description for the separate port arrangements, we affirm
the Examiner’s rejection of claim 10 under 35 U.S.C. § 112, first paragraph,
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Appeal 2016-001989
Application 13/643,647
for lack of written description of the claimed ratio of d2 and dl (that is, that
d2 equals two times dl).
The § 103(a) rejection
Upon consideration of the evidence in this appeal and each of
Appellants’ contentions, we find that the preponderance of evidence
supports the Examiner’s conclusion that the subject matter of Appellants’
claims is unpatentable over the applied prior art. We sustain the Examiner’s
§ 103(a) rejection essentially for the reasons set out by the Examiner in the
Answer.
We add the following primarily for emphasis.
It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int T Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). Likewise, it is also well settled that a
reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in the art would have reasonably been
expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264—65 (Fed.
Cir. 1992).
Appellants’ only argument regarding claim 1 is that Deng does not
necessarily teach two separate port arrangements (App. Br. 11; Reply Br. 8,
9). Appellants’ argument is not persuasive of reversible error. Even
assuming arguendo that the Examiner’s proposed claim construction on this
issue is unreasonable, Appellants have admitted that separate port
arrangements for columns of antenna elements are known as discussed
previously (e.g., Spec. 1:18—27). An applicant cannot defeat an obviousness
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Appeal 2016-001989
Application 13/643,647
rejection by asserting that the cited references fail to teach or suggest
elements which the applicant has acknowledged are taught by the prior
art. Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1570 (Fed.
Cir. 1988) (“A statement in a patent that something is in the prior art is
binding on the applicant and patentee for determinations of anticipation and
obviousness”) and In reNomiya, 509 F.2d 566, 571 n.5 (CCPA 1975) (A
statement by an applicant that certain matter is prior art is an admission that
the matter is prior art for all purposes).
Appellants present one other argument regarding the prior art
rejection; i.e., Appellants argue that Deng does not teach or suggest that
column spacing is a result effective variable as relied upon by the Examiner
for dependent claim 10 (App. Br. 12; Reply Br. 9). This argument is
unavailing since a preponderance of evidence supports the Examiner’s
reasoning that Deng exemplifies the concomitant horizontal adjustment of
antenna elements and columns/axes (Ans. 13). Further, we “take account of
the inferences and creative steps that a person of ordinary skill in the art
would employ,” and find a person of ordinary skill in the art would have
readily inferred that distances between columns of antenna elements as well
as horizontal adjustment of antenna elements would have been prima facie
obvious. KSR Int’l, 550 U.S. at 418; see also id. at 421 (“A person of
ordinary skill is also a person of ordinary creativity, not an automaton”);
Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d
984, 993 (Fed. Cir. 2009) (under the flexible inquiry set forth by the
Supreme Court, the PTO must take account of the “inferences and creative
steps,” as well as routine steps, that an ordinary artisan would employ)).
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Application 13/643,647
Accordingly, we affirm the Examiner’s prior art rejection of the
claims under 35 U.S.C. § 103(a) for the reasons given above and presented
by the Examiner.
DECISION
The Examiner’s § 112, first paragraph, rejection of claims 1—10 for
lack of enablement is reversed.
The Examiner’s § 112, first paragraph, rejection for lack of written
description of claims 1—9 is reversed, while it is affirmed as to claim 10.
The Examiner’s § 103(a) rejection of claims 1—10 is affirmed.
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).
AFFIRMED
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