Ex Parte Nystrom et al

Patent Trial and Appeal Board

Sep 25, 2014

10596859 (P.T.A.B. Sep. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PER JOHAN ANDERS NYSTROM and
PAL KRISTIAN FRENGER
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Appeal 2012-004058
Application 10/596,8591
Technology Center 2600
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Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the second,
non-final Rejection of claims 14–26. Appellants have previously canceled
claims 1–13. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellants, the real party in interest is Telefonaktiebolaget
LM Ericsson. App. Br. 1.
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STATEMENT OF THE CASE2
The Invention
Appellants' "invention relates to signalling of available bandwidth
especially in multicarrier wireless telecommunication systems." Spec. 1,
ll. 7–8.
Exemplary Claim
Claim 14, reproduced below, is representative of the subject matter on
appeal (emphases added to disputed limitations):
14. A method in a multicarrier wireless
telecommunication system for radio communication between
base stations and mobile user stations, comprising the step[3] of:
detecting a presence of an acquisition channel by a
mobile station for mobile station search purposes;
transmitting information signals, over the detected
acquisition channel, relating to size and location of operational
bands of the radio spectrum used by the system;
wherein the information signals comprise information of
the bandwidth and location in the spectrum of the operational
bands as part of the information in one or more sub carriers of
the bands.

2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Dec. 21, 2010); Reply Brief ("Reply Br.," filed Dec. 7, 2011); Examiner's
Answer ("Ans.," mailed Oct. 7, 2011); Non-Final Office Action ("Non-Final
Act.," mailed July 21, 2010); Miscellaneous Communication to Applicant
("Misc. Comm. to Appl." mailed Oct. 28, 2011); and the original
Specification ("Spec.," filed June 27, 2006).
3 In the event of further prosecution, it appears the word "step" would be
more correct in the plural, i.e., "steps."
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Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal (Non-Final Act. 2 and 6; and see Misc.
Comm. to Appl.):
Li et al.
("Li")
US 2003/0169681 A1 Sept. 11, 2003
Alvesalo et al.
("Alvesalo")
US 6,650,655 B2 Nov. 18, 2003
Krishnan et al.
("Krishnan")
US 7,039,001 B2 May 2, 2006
Background Discussion
To ensure a clear record going forward, we find Appellants'
discussion of the prosecution history of this application (App. Br. 4) to be
informative and helpful in determining the actual rejections and issues
before us, in light of the numerous inaccuracies and contradictions we find
in the Examiner's Answer. See Ans. 4–9.
In the "Miscellaneous Communication to Applicant," the Examiner
corrected at least a portion of the mistaken rejections and statements
concerning the applied prior art found in the Appeal Brief (see App. Br. 4
and 8) by stating, "[t]he grounds of rejection is [sic] the office action of
07/21/2010."
We proceed with this Appeal accordingly, and further note claim 26
does not appear to be under any objection or rejection, and is therefore not
before us on Appeal, and forms no part of our Decision.
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Rejections on Appeal 4
R1. Claims 14–20 and 22–25 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Krishnan and Li.
Non-Final Act. 2; and see Misc. Comm. to Appl.
R2. Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Krishnan, Li, and Alvesalo. Non-Final
Act. 6; and see Misc. Comm. to Appl.
GROUPING OF CLAIMS
Based on Appellants' arguments (App. Br. 5–8), we decide the appeal
of Rejection R1 of claims 4–20 and 22–25 on the basis of representative
claim 14. We address Rejection R2 of claim 21, not argued separately,
infra.
ISSUE
Appellants argue (App. Br. 5–8; Reply Br. 1–3) the Examiner's
Rejection R1 of claims 14–20 and 22–25 under 35 U.S.C. § 103(a) as being
obvious over the combination of Krishnan and Li is in error. These
contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests the limitations "transmitting information signals, over the
detected acquisition channel . . . wherein the information signals comprise
information of the bandwidth and location in the spectrum of the operational

4 As indicated above, we note the Examiner corrected the erroneous
rejections in the Answer by issuing the "Miscellaneous Communication to
Applicant," cited above, and which indicated the rejections on appeal are to
be taken as those found in the Non-Final Action mailed July 21, 2010.
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bands as part of the information in one or more sub carriers of the bands," as
recited in claim 14?
ANALYSIS
We only consider those arguments actually made by Appellants in
reaching this decision, and we do not consider arguments which Appellants
could have made but chose not to make in the Briefs so that any such
arguments are deemed to be waived. 37 C.F.R. § 41.37(c)(1)(vii).
We disagree with Appellants' arguments with respect to claims 14–20
and 22–25, and we agree with and 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 by the Examiner in the
Examiner's Answer in response to Appellants' arguments. However, we
highlight and address specific findings and arguments regarding claim 14 for
emphasis as follows.
Appellants contend the subbands illustrated in Krishnan Figure 5:
[are not] analogous to the subcarriers of the operational bands
of a radio spectrum used by a multicarrier wireless
telecommunication system, much less that an acquisition
channel in such system can carry information signals relating to
size and location of the operational bands, or that the
information signals comprise information of the bandwidth and
location in the spectrum of the operational bands as part of the
information in one or more sub carriers of the bands. In
looking to the teachings of Li to overcome the deficiencies in
the teachings of Krishnan, the Examiner refers to Figure 1B
thereof and the description relating thereto. Figure 1B relates to
transmitting pilot symbols for use in selecting subcarriers.
There is no teaching in Li, however, that an acquisition channel
in such system can carry information signals relating to size
and location of the operational bands of the radio spectrum
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used by the system, or that the information signals comprise
information of the bandwidth and location in the spectrum of
the operational bands as part of the information in one or more
sub carriers of the bands.
App. Br. 7 (emphasis added).
The ultimate issue of obviousness is a matter of law that turns on four
underlying factual determinations: (1) the scope and content of the prior art,
(2) the level of ordinary skill in the art, (3) the differences between the
claimed invention and the prior art, and (4) objective indicia of
nonobviousness (secondary considerations). See Graham v. John Deere Co.,
383 U.S. 1, 17–18 (1966), as reaffirmed by KSR Int'l Co. v. Teleflex, Inc.,
550 U.S. 398, 406 (2007).
For each of independent claims 14 and 23–25, we find Appellants'
arguments regarding the purported differences between the claimed
invention and the prior art center on Krishnan and Li's deficiencies in
teaching or suggesting the type or informational content of the “information
signals” carried by the claimed acquisition channel, i.e., “information
signals” that include both bandwidth and spectrum location information.
App. Br. 7–8.
We conclude it would have been obvious for a person of ordinary skill
in the art to substitute the abstract data concerning "information signals
compris[ing] information of the bandwidth and location in the spectrum of
the operational bands" into the method and system taught by the
combination of Krishnan and Li because this information is readily available
to a person with skill in the art for incorporation into one or more
information signals, and Appellants have not demonstrated that the
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Examiner's proffered combination and modification of references would
have been "uniquely challenging or difficult for one of ordinary skill in the
art." See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Nor have Appellants
provided objective evidence of secondary considerations which our
reviewing court guides "operates as a beneficial check on hindsight."
Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Systems, 725 F.3d 1341,
1352 (Fed. Cir. 2013). (See also App. Br. 13, "EVIDENCE APPENDIX
. . . None.").
Another way of framing the § 103 obviousness issue for the
independent claims is to first determine whether the only difference between
the claimed wireless communications method and system, and the prior art
method and system, is the type or informational content of the information
signals that are transmitted or received. .
As a matter of claim construction, we conclude the particular type or
informational content carried by the “information signals” recited in the
independent claims is non-functional descriptive material because it is not
positively recited as: (1) actually being used to change or affect the manner
in which the “transmitting” step is performed (claims 1 and 14), or (2)
change or affect the function of the telecommunication system apparatus.
(Claims 23–25).
The informational content of non-functional descriptive material is not
entitled to weight in the patentability analysis. See Ex parte Nehls, 88
USPQ2d 1883, 1887–90 (BPAI 2008) (precedential); Ex parte Curry, 84
USPQ2d 1272 (BPAI 2005) (informative), aff'd, No. 06-1003 (Fed. Cir.
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Jun. 12, 2006) (Rule 36); Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005)
(informative), aff'd, 191 Fed. Appx. 959 (Fed. Cir. 2006). 5
Therefore, based upon our claim construction and findings above, on
this record, Appellants have not persuaded us of at least one error in the
Examiner's reliance on the combined teachings and suggestions of the cited
prior art combination to teach or suggest the disputed limitations of claim
14, and therefore we do not find error in the Examiner's resulting legal
conclusion of obviousness. Accordingly, we sustain the Examiner's
obviousness rejection of independent claim 14. For the same reasons
discussed, supra, we also sustain the obviousness rejection of independent
claims 23–25, and dependent claims 15–20 and 22, which depend from
independent claim 14.

5 The patentability of an apparatus or system claims [23–25] "depends on
the claimed structure, not on the use or purpose of that structure." Catalina
Marketing 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 Industries, Inc. v. Masaba, Inc., 553 Fed. Appx. 986, 991
(Fed. Cir. 2014) (Rader, J., concurring) (stating: "[A] system claim generally
covers what the system is, not what the system does." 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)).
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§ 103(a) Rejection R2 of Claim 21
In view of the lack of any substantive or separate arguments directed
to obviousness Rejection R2 of claim 21 under § 103 (see App. Br. 18;
Reply Br. 2), we sustain the Examiner's rejection of this claim, as it falls
with its respective independent claims 14. Arguments not made are
considered waived. Our reviewing court states:
When the appellant fails to contest a ground of rejection to the
Board, section 1.192(c)(7) [(now section 41.37(c)(1)(vii))]
imposes no burden on the Board to consider the merits of that
ground of rejection . . . . [T]he Board may treat any argument
with respect to that ground of rejection as waived.
See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir 2008). Further, when
Appellants do not separately argue the patentability of dependent claims, the
claim stands or falls with the claim from which it depends. In re King, 801
F.2d 1324, 1325 (Fed. Cir. 1986); In re Sernaker, 702 F.2d 989, 991 (Fed.
Cir. 1983). Accordingly, we sustain the rejection of claim 21.
CONCLUSION
The Examiner did not err with respect to the obviousness rejections of
claims 14–25 under 35 U.S.C. § 103(a) over the combinations of the prior
art of record, and we sustain the rejections. We note claim 26 is not before
us on appeal, and forms no part of this Decision.
DECISION
We affirm the Examiner's decision rejecting claims 14–25.
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
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