Ex Parte Karaoguz et al

Patent Trial and Appeal Board

Nov 14, 2012

11093157 (P.T.A.B. Nov. 14, 2012)

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.
11/093,157 03/29/2005 Jeyhan Karaoguz 14528.00142 5723
16378 7590 11/14/2012
Broadcom/BHGL
P.O. Box 10395
Chicago, IL 60610
EXAMINER
LEVITAN, DMITRY
ART UNIT PAPER NUMBER
2461
MAIL DATE DELIVERY MODE
11/14/2012 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 JEYHAN KARAOGUZ, NAMBIRAJAN SESHADRI, and
JAMES D. BENNETT
____________________

Appeal 2012-004853
Application 11/093,157
Technology Center 2400
____________________

Before JOSEPH L. DIXON, THU A. DANG,
and JAMES R. HUGHES, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-004853
Application 11/093,157

2
I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-35. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
Appellants’ invention is directed to the selection of an information
communication strategy between a first and second system having a first and
second strategy of two different corresponding data rates based on estimated
energy associated with each strategy and the power supply characteristics of
each system (Abstract).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. In a communication system, a method for determining
an information communication strategy, the method
comprising:

identifying a plurality of information communication
strategies that may be utilized to communicate information with
at least a second communication system, the plurality of
information communication strategies comprising:

a first information communication strategy
comprising communicating at a first data rate; and

a second information communication strategy
comprising communicating at a second data rate different
from the first data rate;

Appeal 2012-004853
Application 11/093,157

3
estimating, based at least in part on respective signal
processing power and on respective transmission power,
respective amounts of energy to communicate the information
for at least the first and second information communication
strategies; and

selecting an information communication strategy from
the identified plurality of information communication strategies
based, at least in part, on:

the estimated respective amounts of energy; and

power supply characteristics of at least one or both
of: the communication system and the second
communication system.

C. REJECTIONS1
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Vogel US 5,613,219 Mar. 18, 1997
Gettemy US 6,603,469 B1 Aug. 05, 2003
Razoumov US 6,771,700 Bl Aug. 03, 2004
Hunzinger US 6,845,245 B2 Jan. 18, 2005
Stanforth US 6,873,839 B2 Mar. 29, 2005
Hammerschmidt US 2005/0288062 Al Dec. 29, 2005
(filed Jun. 23, 2004)
Zhang US 7,096,034 B2 Aug. 22, 2006
(filed Oct. 01, 2001)
Cheng US 7,155,655 B2 Dec. 26, 2006
(filed Jul. 22, 2003)
Saito US 7,197,081 B2 Mar. 27, 2007
(filed Dec. 28, 2001)

1 The Examiner has withdrawn the rejection of claims 12, 14, 30 and 32
under 35 U.S.C. 112, second paragraph, being indefinite for failing to
particularly point out and distinctly claim the subject matter which
Appellants regard as the invention (Ans. 4).
Appeal 2012-004853
Application 11/093,157

4
Claims 1-35 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement.
Claims 1, 4, 7, 8, 10, 11, 13-16, 18, 19, 22, 25, 26, 28, 29, and 31-34
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Zhang in
view of Stanforth.
Claims 12 and 30 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zhang in view of Stanforth and Gettemy.
Claims 2 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zhang in view of Stanforth and Hunzinger.
Claims 3 and 21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zhang in view of Stanforth and Saito.
Claims 5 and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zhang in view of Stanforth and Cheng.
Claims 6 and 24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zhang in view of Stanforth and Vogel.
Claims 9 and 27 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zhang in view of Stanforth and Razoumov.
Claims 17 and 35 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zhang in view of Stanforth and Hammerschmidt.

II. ISSUES
The dispositive issues before us are whether the Examiner has erred in
determining that:
1. the Specification fails to provide enabling disclosure for
“estimating, based at least in part on respective signal processing power
and on respective transmission power, respective amounts of energy to
Appeal 2012-004853
Application 11/093,157

5
communicate the information for at least the first and second information
communication strategies” (claim 1, emphasis added);
2. the combination of Zhang and Stanforth teaches or would have
suggested “communicating at a second data rate different from the first data
rate” and “selecting an information communication strategy … based, at
least in part, on: the estimated respective amounts of energy; and power
supply characteristics of at least one or both of: the communication system
and the second communication system” (claim 1, emphasis added);
3. the combination of Zhang, Stanforth, and Gettemy teaches or would
have suggested “selecting an information communication strategy … based,
at least in part, on: the estimated respective amounts of energy; and a
prioritized list of communication strategies input by a user” (claim 12,
emphasis added); and
4. the combination of Zhang and Stanforth teaches or would have
suggested “selecting an information communication strategy … based, at
least in part, on: the estimated respective amounts of energy; and respective
monetary costs associated with the identified plurality of information
communication strategies” (claim 14, emphasis added).

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Zhang
1. Zhang discloses a power control scheme for a wireless network
communication system that dynamically adjusts the transmission power of a
mobile device in conjunction with adjusting its bit allocation in source
Appeal 2012-004853
Application 11/093,157

6
coding and channel coding to minimize its total power consumption
(Abstract). The system minimizes the total power consumption to extend
the service life of the power source (col. 7, ll. 16-25).
2. The total power consumption at a mobile device is the sum of
the source encoding power consumption Ps, the channel encoding power
consumption Pc, and the data transmission power consumption Ptrans (col. 10,
ll. 1-10).
3. Minimization of the total power consumption is a function of
the total data rate, including the source coding rate Rs, channel coding rate
Rc, and the transmission rate Rtran (col. 10, ll. 24-45).
4. The total power consumed in a mobile station includes
transmission power and computational power for generating the data bits to
be transmitted wirelessly; wherein, both the transmission power and
computational power control are adapted by the time-varying wireless
channel conditions including fluctuations in the received power (col. 4, ll.
21-45). The computational power is determined by computational costs for
source coding and channel coding (col. 4, ll. 26-28).
Stanforth
5. Stanforth discloses a peer-to-peer radio system that determines
the best routing from one terminal to another considering the power supply
level of the terminals along the route (col. 4, ll. 50-60; col. 5, l. 41-col. 6, l.
10). In a peer-to-peer radio system, a critical consideration is the status and
life of the battery of each terminal forming a part of the system, since each
terminal serves as a router and relay for other terminals in the system,
ultimately determining whether the system can extend the range or an
provide an alternative route (col. 2, ll. 43-57).
Appeal 2012-004853
Application 11/093,157

7
Gettemy
6. Gettemy discloses a method and system that provides user
selectable display modes: color or monochrome to enhance the life of the
battery for a user device; wherein, the monochrome mode saves more power
than the color mode (col. 2, ll. 10-35).

IV. ANALYSIS
35 U.S.C. §112, first paragraph
Claims 1-35
Appellants argue that, according to Appellants’ Specification, “step
130 comprises estimating respective amounts of energy to communicate
information” and this “discussion first generally explains that electrical
energy may generally be viewed as power integrated over an amount of
time, amount of information, amount of signal processing activity” and then
“specifically discusses estimating respective amounts of energy based at
least in part on signal processing energy” (App. Br. 15). Along with
providing four “non-limiting exemplary scenario[s],” Appellants argue that
“that many manners of estimating an amount of energy that would be
required to communicate information are well within the grasp of one of
ordinary skill in the art, upon being directed to do so with minimal or no
experimentation” (App. Br. 16).
However, the Examiner notes that “[t]he cited portions of disclosure
… are directed to a comparison of communication options without any
estimating/calculating amount of communication energy for any of the
options” and “are general in nature and comprise no method, algorithm or
device to perform estimation of communication energy” (Ans. 14 ). The
Appeal 2012-004853
Application 11/093,157

8
Examiner notes further that the examples provided “are not supported by the
disclosure, as filed … and clearly are undue experimentation” (Ans. 15).
In order to comply with the enablement requirement of 35 U.S.C.
§ 112, first paragraph, the Specification must provide sufficient teaching
such that one skilled in the art could make and use the full scope of the
invention without undue experimentation. CFMT, Inc. v. Yieldup Int’l
Corp., 349 F.3d 1333, 1338 (Fed. Cir. 2003); Genentech, Inc. v. Novo
Nordisk A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997); In re Wands, 858 F.2d
731, 736-37 (Fed. Cir. 1988). The Specification need only teach those
aspects of the invention that one skilled in the art could not figure out
“without undue experimentation.” See, e.g., Nat’l Recovery Techs., Inc., v.
Magnetic Separation Sys., Inc., 166 F.3d 1190, 1196 (Fed. Cir. 1999,
emphasis added).
Factors to be considered in determining whether a disclosure would
require undue experimentation include (1) the quantity of experimentation
necessary, (2) the amount of direction or guidance presented, (3) the
presence or absence of working examples, (4) the nature of the invention, (5)
the state of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth of the claims.
Wands, 858 F.2d at 737.
Although paragraphs [40]-[46] of Appellants’ Specification disclose
that the estimation of energy may include consideration for the transmission
energy through multiple antennas, the amount of electrical power in a signal
reception circuitry (reception power), error correction encoding/decoding,
encryption/decryption, real time processing, retransmission energy, re-
processing of retransmitted information (re-encoding/decoding, re-
Appeal 2012-004853
Application 11/093,157

9
compressing/decompressing, re-encrypting/decrypting), signal processing
energy (or power), amount of data, data rate, and
compressing/decompressing, we agree with the Examiner’s finding that
“[t]he cited portions of disclosure … are directed to a comparison of
communication options without any estimating/calculating amount of
communication energy for any of the options” and “are general in nature and
comprise no method, algorithm or device to perform estimation of
communication energy” (Ans. 14). That is, we find that the Specification
merely refers to what may be included as a consideration for estimating the
energy rather than specifically providing enabling disclosure as to how the
energy is derived.
Appellants attempt to dismiss the Examiner’s finding by arguing that
“many manners of estimating an amount of energy that would be required to
communicate information are well within the grasp of one of ordinary skill
in the art, upon being directed to do so with minimal or no experimentation”
(App. Br. 16). We note, however, that Appellants’ four “non-limiting
exemplary scenario[s]” are not supported in the Specification, and therefore,
this response is mere attorney argument unsupported by evidence or
technical reasoning2 and is thus inadequate to account for the estimation of
respective amounts of energy to communicate the information using either
communication strategy.
We find that a question is raised as to whether the guidance provided
in Appellants’ Specification is adequate to enable a person of ordinary skill
in the art to ascertain the invention, without undue experimentation.

2 Unsupported attorney argument is entitled to little weight. In re Geisler,
116 F.3d 1465, 1470 (Fed. Cir. 1997).
Appeal 2012-004853
Application 11/093,157

10
Consequently, the PTO has a reasonable basis to find that the subject matter
of claims 1-35 is not adequately enabled by the description of the invention
provided in the Specification of the present application.
Thus, we sustain the rejection of claims 1-35 under 35 U.S.C. § 112,
first paragraph, as containing subject matter which was not described in the
Specification in such a way as to enable one skilled in the art to make and/or
use the invention.
35 U.S.C. §103
Claims 1, 4, 7, 10, 11, 15, 16, 18, 19,
22, 25, 28, 29, and 33-34
Appellants contend that the Examiner does not “‘make[s] clear that
the missing descriptive matter [the second data rate of the second
communication strategy is different from the first data rate of the first
communication strategy]’ said to be inherent ‘is necessarily present in’
Zhang” (App. Br. 30). Appellants argue that “the battery status in Stanforth
is merely used for purposes of determining routing path information, and it
is not used to determine what communication data rates to use (i.e., what
communication strategy to select)” (App. Br. 31, bold emphasis removed).
However, the Examiner finds that “Zhang clearly teaches using
different strategies, based on minimum of the total consumption of energy of
the mobile device, wherein the consumed energy is estimated by
calculations, based on different transmission rates” (Ans. 17).
We give the claim its broadest reasonable interpretation consistent
with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997). Claim 1 does not place any limitation on what “communication
strategy” means, includes, or represents. The Specification discloses that the
Appeal 2012-004853
Application 11/093,157

11
communication strategy is the information communication methodology
(Spec. ¶ [13]). Thus, we give “selecting an information communication
strategy” its broadest reasonable interpretation as selection of any method of
communication, as consistent with the Specification and claim 1.
Zhang discloses a power control scheme for a wireless network
communication system that dynamically adjusts the transmission power of a
mobile device to minimize its total power consumption (FF 1); wherein,
minimization of the total power consumption is a function of the total data
rate (FF 2 and 3). We find Zhang to disclose estimating amounts of energy
from its teaching of the derivation of total power consumption, where energy
is the amount of power integrated over time as defined in Appellants’
Specification (Spec. ¶ [38]). Thus, we find that Zhang’s method for
minimizing total power consumption comprises selecting an information
communication strategy based, at least in part, on the estimated respective
amounts of energy of a communication system.
We also find that minimization of the total power consumption from
one communication method to another includes selection of a method at a
first rate that differs from a method at a second rate. Thus, we find that
Zhang’s method for minimizing total power consumption comprises
“communicating at a second data rate different from the first data rate”
(claim 1).
In addition, Stanforth discloses a peer-to-peer radio system that
determines the best routing from one terminal to another considering the
power supply level of the terminals along the route (FF 5). We find that the
selection of a communication route includes selection of a communication
strategy based at least upon the power supply characteristics of terminals
Appeal 2012-004853
Application 11/093,157

12
(systems). That is, we find that Stanforth’s method of selecting the best
route in a peer-to-peer system comprises selecting an information
communication strategy based, at least in part, on the power supply
characteristics of a communication system.
In view of our claim construction above, we find that the combination
of Zhang and Stanforth at least suggests providing “selecting an information
communication strategy from the identified plurality of information
communication strategies [having differing data rates] based, at least in part,
on: the estimated respective amounts of energy; and power supply
characteristics of at least one or both of: the communication system and the
second communication system,” as required by claim 1.
The Supreme Court has stated that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 416 (2007).
Thus, we find no error in the Examiner’s finding that the combination
of Zhang’s a power control scheme for a wireless network communication
system (including minimization of the total power consumption as a function
of the total data rate) with the selection of a peer terminal within a
communication route based upon power supply, as disclosed in Stanforth,
produces selection of a communication strategy having differing rates based
upon the estimated respective amounts of energy and power supply
characteristics, which would be obvious (Ans. 8; FF 1-3 and 5).
Accordingly, we find that Appellants have not shown that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) over Zhang in
view of Stanforth. Further, independent claim 18 having similar claim
Appeal 2012-004853
Application 11/093,157

13
language and claims 4, 7, 10, 11, 15, 16, 18, 19, 22, 25, 28, 29 and 33-34
(depending from claims 1 and 18), which have not been argued separately,
fall with claim 1.
Claims 8, 13, 26, and 31
Appellants contend that Zhang “does not disclose any energy
estimation for at least a first and a second communication strategy” and
“also does not even disclose that such energy estimation is performed on the
basis of reception power” (App. Br. 32-33). However, the Examiner finds
that “Zhang clearly teaches using different reception power to compensate
fading in a wireless channel” (Ans. 18).
Claim 8 does not place any limitation on the term “reception power,”
and the Specification discloses that the reception power is the amount of
electrical power in the signal reception circuitry (Spec. ¶ [41]). Thus, we
give “estimating respective amounts of energy … based, at least in part, on
reception power” (claim 8) its broadest reasonable interpretation as deriving
the estimated energy to communicate information based upon the power in
the reception circuitry, as consistent with the Specification and claim 8.
As noted supra, Zhang discloses a power control scheme for a
wireless network communication system that dynamically adjusts the
transmission power of a mobile device to minimize its total power
consumption (FF 1). A calculation for the total power consumed in a mobile
station includes transmission power and computational power for generating
the data bits to be transmitted wirelessly; wherein, both the transmission
power and computational power control are adapted by fluctuations in the
received power (FF 4). We find that the adaptation of both the transmission
power and computational power control using the fluctuations in received
Appeal 2012-004853
Application 11/093,157

14
power includes estimating the amounts of energy based on reception power.
In particular, we find that Zhang’s method for calculation of the total power
consumption includes “estimating respective amounts of energy to
communicate the information comprises estimating respective amounts of
energy for at least the first and second information communication strategies
based, at least in part, on reception power” (claim 8).
Accordingly, we find that Appellants have not shown that the
Examiner erred in rejecting claim 8 under 35 U.S.C. § 103(a) over Zhang in
view of Stanforth and Gettemy. Further, claims 13, 26, and 31 (depending
from claims 1 and 18), having similar claim language which has not been
argued separately, fall with claim 8.
Claims 12 and 30
Appellants contend that “Gettemy does not relate to selecting a
communication strategy for communicating information between
communication systems,” “[i]nstead, Gettemy simply discloses switching
between the device display modes for purposes of saving power” (App. Br.
37-38). However, the Examiner finds that “Gettemy clearly teaches
selecting a monochrome mode of the mobile display to save energy, wherein
the selection is based on a prioritized/preselected list of display modes for
user selection” (Ans. 18).
Since claim 12 does not place any limitation on “prioritized list of
communication strategies,” we give “a prioritized list of communication
strategies input by a user” its broadest reasonable interpretation as a list
having an ordering, as consistent with the claim 12.
Gettemy discloses a method and system that provides user selectable
display modes: color or monochrome to enhance the life of the battery for a
Appeal 2012-004853
Application 11/093,157

15
user device; wherein, the monochrome mode saves more power than the
color mode (FF 6). We find that the user selection of the modes represents a
selection of how the information will be communicated to the user. We find
further the list of monochrome and color modes having an ordering based
upon power consumption savings includes a prioritized list. That is, we find
that Gettemy’s user selection of display modes comprises selecting an
information communication strategy “based, at least in part, on: … a
prioritized list of communication strategies input by a user” (claim 12).
Accordingly, we find that Appellants have not shown that the
Examiner erred in rejecting claim 12 under 35 U.S.C. § 103(a) over Zhang
and Stanforth, further in view of Gettemy. Further, independent claim 30,
having similar claim language which has not been argued separately, falls
with claim 12.
Claims 14 and 32
Appellants contend that “Zhang … simply discloses that the mobile
device 221 can be powered by a battery pack 368, and the service life of the
batter pack can be extended by minimizing the total power consumption”
and “Zhang discloses that the power consumption within the mobile device
221 is managed by the control component 340, which controls power
consumption by tuning operational parameters of the functional modules
within the mobile device;” yet, there is “[n]othing in … Zhang [that]
discloses any selection of an information communication strategy from an
identified plurality of information communication strategies, based on the
estimated respective amounts of energy for each strategy, and respective
monetary costs associated with the identified plurality of information
communication strategies” (App. Br. 35).
Appeal 2012-004853
Application 11/093,157

16
However, the Examiner finds that “Zhang teaches importance to
minimize consumption to extend the battery life” (Ans. 18). The Examiner
finds further that “Stanforth clearly teaches that life of a battery is a critical
consideration for radio systems;” therefore, “it is self[-]evident that
replacing a battery costs money” (id.).
Claim 14 does not place any limitation on “monetary costs.” Thus,
we give “selecting an information communication strategy … based, at least
in part, on: … respective monetary costs associated with the identified
plurality of information communication strategies” its broadest reasonable
interpretation as selection based upon financial factors, as consistent with the
claim 14.
As noted supra, Zhang teaches that the calculation for the total power
consumed in a mobile station includes transmission power and
computational power for generating the data bits to be transmitted
wirelessly; wherein, computational power is determined by computational
costs for source coding and channel coding (FF 4). We find that the
selection of the communication strategy based upon the transmission power
and the computational power represents a selection based upon the costs.
That is, we find that Zhang’s power control scheme selection based upon the
computational power comprises selecting an information communication
strategy “based, at least in part, on: the estimated respective amounts of
energy; and respective monetary costs associated with the identified plurality
of information communication strategies” (claim 14).
In addition as noted supra, Stanforth discloses a peer-to-peer radio
system takes into consideration the status and life of the battery of each
terminal, since each terminal serves as a router and relay for other terminals
Appeal 2012-004853
Application 11/093,157

17
in the system and hence will ultimately determine whether the range may be
extended or an alternative route may be provided (FF 5). We find that the
consideration of the life of the battery represents a selection based upon the
power costs associated with the communication method. In particular, we
find the Stanforth’s consideration of the battery life of each terminal
comprises selecting an information communication strategy “based, at least
in part, on: … respective monetary costs associated with the identified
plurality of information communication strategies” (claim 14).
Accordingly, we find that Appellants have not shown that the
Examiner erred in rejecting claim 14 under 35 U.S.C. § 103(a) over Zhang
in view of Stanforth. Further, independent claim 32, having similar claim
language which has not been argued separately, falls with claim 14.
Claims 2, 3, 5, 6, 9, 17, 20, 21, 13, 24, 27 and 35
Appellants argue that claims 2, 3, 5, 6, 9, 17, 20, 21, 13, 24, 27, and
35 are patentable over the cited prior art for the same reasons asserted with
respect to claim 1 (App. Br. 38-40). As noted supra, however, we see no
deficiencies in the combined teachings of Zhang and Stanforth. We
therefore affirm the Examiner’s rejection of claims 2 and 20 over Zhang in
further view of Stanforth and Hunzinger; of claims 3 and 21 over Zhang in
further view of Stanforth and Saito; of claims 5 and 23 over Zhang in further
view of Stanforth and Cheng; of claims 6 and 24 over Zhang in further view
of Stanforth and Vogel; of claims 9 and 27 over Zhang in further view of
Stanforth and Razoumov; and of claims 17 and 35 over Zhang in further
view of Stanforth and Hammerschmidt.

Appeal 2012-004853
Application 11/093,157

18
V. CONCLUSION AND DECISION
The Examiner’s rejections of claims 1-35 under 35 U.S.C. § 112, first
paragraph and claims 1-35 under 35 U.S.C. § 103(a) are 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)(iv).

AFFIRMED

peb