Ex Parte Rooyen

Patent Trial and Appeal BoardAug 18, 2014

11010486 (P.T.A.B. Aug. 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. 11/010,486 12/13/2004 Pieter Van Rooyen 3875.0660000 6415 26111 7590 08/19/2014 STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 NEW YORK AVENUE, N.W. WASHINGTON, DC 20005 EXAMINER CHEN, JUNPENG ART UNIT PAPER NUMBER 2649 MAIL DATE DELIVERY MODE 08/19/2014 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 PIETER VAN ROOYEN ____________ Appeal 2012-003853 Application 11/010,486 Technology Center 2600 ____________ Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and ERIC B. CHEN, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1-8, 10, 30-38, and 40-44. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Appellant’s invention relates to a mobile architecture that supports cellular or wireless networks and broadcast using single-chip cellular and broadcast silicon solutions. See generally Abstract; Spec. ¶ 03. Claim 30 is illustrative: 30. A method for communicating with a plurality of communications networks, the method comprising: selecting, within a single integrated circuit (IC) chip comprising one or more processing modules for use within a mobile terminal, a broadcast Appeal 2012-003853 Application 11/010,486 2 channel for receiving information at said mobile terminal via one or more frequencies within a broadcast frequency band, wherein said one or more processing modules comprising a single cellular processor IC and a single broadcast processor IC; determining, within said one or more processing modules, that said mobile terminal is unable to receive said information via said selected broadcast channel; generating, within said one or more processing modules, a request to receive said information at said mobile terminal via a cellular network; in response to said request, receiving said information at said mobile terminal via one or more frequencies within a cellular frequency band supported by said cellular network; and presenting said information received via said one or more frequencies. THE REJECTIONS The Examiner rejected claims 1, 2, 4-6, 8, 10, 30, 31, 33-36, 38, 40, 41, and 43 under 35 U.S.C. § 103(a) as unpatentable over Foster (US 7,394,761 B2; July 1, 2008) and McClelland (US 2005/0170849 A1; Aug. 4, 2005). Ans. 4-13.1 The Examiner rejected claims 3 and 32 under 35 U.S.C. § 103(a) as unpatentable over Foster, McClelland, and Maalismaa (US 6,892,076 B2; May 10, 2005). Ans. 13. The Examiner rejected claims 7 and 37 under 35 U.S.C. § 103(a) as unpatentable over Foster, McClelland, and Muhonen (US 2005/0129042 A1; June 16, 2005). Ans. 14-15. The Examiner rejected claims 42 and 44 under 35 U.S.C. § 103(a) as unpatentable over Foster, McClelland, and Harano (US 2005/0119026 A1; June 2, 2005). Ans. 15-16. 1 Throughout this opinion, we refer to (1) the Appeal Brief filed March 28, 2011 (“App. Br.”); (2) the Examiner’s Answer mailed July 13, 2011 (“Ans.”); and (3) the Reply Brief filed September 13, 2011 (“Reply Br.”). Appeal 2012-003853 Application 11/010,486 3 THE REJECTION OVER FOSTER AND MCCLELLAND Regarding independent claim 30, the Examiner finds that Foster (1) selects a channel associated with a primary communication mode within a first frequency band, and (2) switches to an alternate communication mode via a frequency band associated with another network when a mobile terminal is unable to receive information via the primary mode. Ans. 7-8. Although the Examiner acknowledges that Foster does not disclose specifically (1) selecting a broadcast channel, and (2) receiving information via cellular frequencies when the mobile terminal is unable to receive information via the selected broadcast channel, the Examiner nonetheless concludes that switching from a broadcast network (e.g., UHF) to a cellular network would have been obvious in light of Foster’s listing various wireless communication modes from which the wireless input device’s (WID) agent 315 may select, including cellular and UHF modes. Ans. 8-9, 16-17. The Examiner also acknowledges that Foster’s multi-mode device lacks a single IC chip comprising single cellular IC and broadcast IC processing modules, but cites McClelland’s application-specific IC (ASIC) with integrated “processing modules” 530 and 580 in Figure 5 as teaching this feature. Ans. 9-10, 17. In view of McClelland, the Examiner concludes that integrating various processing elements for each mode of Foster’s WID in a single chip would have been obvious to, among other things, reduce size. Id. Appellant argues that not only did the Examiner fail to explain the alleged motivation to combine the cited references apart from “cursory statements” and “broad generalizations,” the cited references fail to teach or suggest the limitations of claim 30 even when combined. App. Br. 8-15; Reply Br. 6-11. According to Appellant, Foster and McClelland do not Appeal 2012-003853 Application 11/010,486 4 disclose selecting a broadcast channel within a single IC chip with the recited cellular and broadcast processor ICs, let alone determine whether the mobile terminal is unable to receive information via the selected broadcast channel. App. Br. 13-14; Reply Br. 8-10. Appellant adds that the cited references also do not generate the recited information reception requests, much less receive information at the terminal via cellular frequencies responsive to the request as claimed. App. Br. 14-15; Reply Br. 10-11. Appellant argues various other recited limitations summarized below. ISSUES I. Under § 103, has the Examiner erred by finding that Foster and McClelland collectively would have taught or suggested: (1) the selecting, determining, generating, and receiving steps recited in claim 30? (2) generating the request to receive the information from an Internet Service Provider (ISP) as recited in claim 33? (3) processing the received information via a decoder circuit when the information is received at the mobile terminal via the selected broadcast channel as recited in claim 38? (4) generating the request to receive the information from a data carousel service as recited in claim 40? (5) the single IC chip is a RFIC comprises an RF front end circuit module and a single baseband processor module for processing cellular frequency channels and VHF/UHF broadcast frequency channels as recited in claim 43? Appeal 2012-003853 Application 11/010,486 5 II. Is the Examiner’s combining the teachings of Foster and McClelland supported by articulated reasoning with some rational underpinning to justify the Examiner’s obviousness conclusion? ANALYSIS Claims 1, 2, 5, 6, 30, 31, and 34-36 We sustain the Examiner’s obviousness rejection of representative claim 30 for the reasons indicated by the Examiner. Ans. 7-10, 16-19. As the Examiner indicates, Foster lists various wireless communication modes from which the multi-mode wireless input device’s (WID) agent 315 may select, including cellular and UHF modes. Ans. 8-9, 16-17 (citing Foster, col. 21, ll. 40-44). This teaching reasonably suggests selecting a broadcast channel for receiving information via associated frequencies, including UHF frequencies, in a primary mode, as well as an alternate cellular mode if the primary mode fails as the Examiner indicates. Ans. 16-17. To the extent that Appellants contend that that it would not have been obvious to implement such multi-mode functionality with dedicated processor ICs for each mode in a mobile terminal (see App. Br. 13-15; Reply Br. 8-11), we disagree. The Examiner’s articulated reason to combine McClelland with Foster, namely to integrate various mode processing components of Foster’s multi-mode WID 310 into a single chip to reduce size, cost, and parts in view of McClelland (Ans. 7, 17) has a rational underpinning on this record. As shown in McClelland’s Figure 5, the ASIC includes two processors that are associated with respective received signals, namely the silent zone determination unit 530 and the cellular telephone signal processing unit 580. Appeal 2012-003853 Application 11/010,486 6 McClelland further teaches that various components can be combined or integrated into a single component to reduce costs, part count, and size requirements as the Examiner indicates. Ans. 17 (citing McClelland ¶¶ 0050-51). On this record, the Examiner’s combination rationale is hardly based on “cursory statements” and “broad generalizations” as Appellant alleges (App. Br. 10-11; Reply Br. 7), but the size and cost reduction advantages arising from the proposed integration actually comport with well-established technology-independent rationales that provide at least an implicit motivation to combine the references. See DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (“[A]n implicit motivation to combine exists . . . when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient” (emphases added)). That Foster teaches that the multi-mode capacity may be embedded in the WID in column 21, line 45, and the associated Alternate Mode Sequence 376 can be integrated into the WID’s agent 315 or burned into a chip in column 21, lines 9-14 only bolsters the Examiner’s position that integrating various associated mode processing modules in Foster would have been obvious. Although Appellant argues for the first time on pages 7 and 8 of the Reply Brief that McClelland is non-analogous art, this argument was not raised in Appellant’s opening Brief and is, therefore, waived as untimely. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he reply brief [is not] an opportunity to make arguments that could Appeal 2012-003853 Application 11/010,486 7 have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not.”). Nor are we persuaded of error in the Examiner’s finding that Foster and McClelland collectively teach or suggest the limitations of claim 30. Despite Appellant’s arguments to the contrary (App. Br. 13-15; Reply Br. 8- 11), we see no error with the Examiner’s findings in this regard. Ans. 7-10, 17-19. Although Appellant argues the individual shortcomings of the cited references, such individual attacks do not show nonobviousness where, as here, the rejection is based on the references’ collective teachings. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Therefore, we are not persuaded that the Examiner erred in rejecting representative claim 30, and claims 1, 2, 5, 6, 31, and 34-36 not argued separately with particularity. Claims 4 and 33 We also sustain the Examiner’s rejection of claims 4 and 33 reciting generating the request to receive the information from an ISP. Appellant does not persuasively rebut the Examiner’s position that Foster at least suggests the recited request generation in view of Foster’s using a wireless ISP, such as “FatPort,” as an alternate point of access to the Internet in conjunction with the other relied-upon aspects of the cited prior art. Ans. 10, 19 (citing Foster, col. 16, ll. 31-35). Appellant’s arguments to the contrary (App. Br. 16-17; Reply Br. 12) are unavailing and not commensurate with the scope of the claims. Appeal 2012-003853 Application 11/010,486 8 Claims 8 and 38 We also sustain the Examiner’s rejection of claims 8 and 38 reciting processing the received information via a decoder circuit when the information is received at the mobile terminal via the selected broadcast channel. Despite Appellant’s arguments to the contrary (App. Br. 19-22; Reply Br. 14-17), Appellant does not persuasively rebut the Examiner’s position that because Foster’s WID decodes broadcasted signals in column 4, lines 38 through 43, there must be a decoder within the WID to achieve that end. Ans. 12, 19. To be sure, the Examiner’s particular citation from Foster in the grounds of rejection for claims 8 and 38 in the Final Rejection differs from that articulated in the Answer. Compare Fin. Rej. 9 (citing Foster, col. 20, ll. 3-8) with Ans. 12 (citing Foster, col. 4, ll. 38-43). Appellant’s reliance on the passage in column 20 of Foster, while consistent with the Examiner’s position articulated on page 9 of the Final Rejection, is nonetheless inapposite to the Examiner’s newer position in the Answer that cites column 4 of that reference regarding the WID’s decoding broadcasted signals. Compare App. Br. 19-20 with Ans. 12. Although the Examiner’s shift may have been responsive to Appellant’s contention in the opening brief that the Examiner’s finding in the Final Rejection was tantamount to an unsubstantiated taking of Official Notice (see App. Br. 20-22), we nonetheless deem any error associated with inconsistency harmless. To the extent that this shift constitutes an improper new ground of rejection in the Examiner’s Answer, Appellant did not petition such a procedural deficiency, but instead filed substantive Appeal 2012-003853 Application 11/010,486 9 arguments on the merits of the Examiner’s findings from the Answer on pages 14 through 17 of the Reply Brief. Although Appellant traverses the Examiner’s findings regarding Foster’s decoder from both the Final Rejection and the Answer as tantamount to unsubstantiated Official Notice (App. Br. 20-22; Reply Br. 14-17), Appellants’ traversal is inadequate. To be sure, an Examiner’s use of Official Notice unsupported by documentary evidence should only be taken when the facts so noticed are “capable of such instant and unquestionable demonstration as to defy dispute.” See In re Ahlert, 424 F.2d 1088, 1091 (CCPA 1970) (citations omitted). But apart from alleging that there is no support in the record for the Examiner’s assertions, Appellant does not explain why the noticed facts are not considered to be common knowledge or well-known in the art to constitute an adequate traversal under MPEP 2144.03(C). That the Examiner did not cite a reference for the purported officially- noticed fact despite having searched the prior art as Appellant contends (App. Br. 21-22; Reply Br. 15-16) does not mean that Official Notice cannot be taken in appropriate circumstances; nor does it relieve Appellant from explaining why the noticed facts are not common knowledge or well-known in the art to traverse such a finding adequately. See MPEP 2144.03(C). In any event, skilled artisans would reasonably infer from Foster that for the WID to decode a broadcasted signal as noted in column 4, lines 38-43, it would have a decoder to achieve that end as the Examiner indicates. Ans. 19. Therefore, we are not persuaded that the Examiner erred in rejecting claims 8 and 38. Appeal 2012-003853 Application 11/010,486 10 Claims 10 and 40 We also sustain the Examiner’s rejection of claims 10 and 40 reciting generating the request to receive the information from a data carousel service. As with claim 8 above, the Examiner’s particular citation from Foster in the grounds of rejection for claims 10 and 40 in the Final Rejection differs from that articulated in the Answer. Compare Fin. Rej. 9 (citing Foster, Fig. 6) with Ans. 12 (citing Foster, col. 19, ll. 49-65). Nevertheless, we deem any error associated with this inconsistency harmless, for Appellants did not petition such a procedural deficiency, but instead filed substantive arguments on the merits of the Examiner’s findings from the Answer on pages 17 and 18 of the Reply Brief. Appellant, however, does not squarely address—let alone persuasively rebut—the Examiner’s position based on the recited “data carousel service” as corresponding to the Internet in Foster. Compare App. Br. 23-24; Reply Br. 17-18 with Ans. 12, 20. Accordingly, the weight of the evidence on this record favors the Examiner’s position. Claims 41 and 43 We also sustain the Examiner’s rejection of claims 41 and 43 reciting that the single IC chip is an RFIC comprising an RF front end circuit module and a single baseband processor module for processing cellular frequency channels and VHF/UHF broadcast frequency channels. Despite Appellant’s arguments to the contrary (App. Br. 25-26; Reply Br. 19-23), Appellant does not persuasively rebut the Examiner’s position that Foster’s multi-mode WID would have some sort of RF front-end circuit module and baseband processor module to process received cellular and UHF signals, and that Appeal 2012-003853 Application 11/010,486 11 integrating these components on the same IC to reduce size would have been obvious in view of McClelland. See Ans. 12-13, 20. Appellant’s arguments on pages 19 through 22 of the Reply Brief regarding the Examiner’s alleged unsubstantiated taking of Official Notice are unavailing, for Appellant does not explain why the noticed facts are not considered to be common knowledge or well-known in the art to constitute an adequate traversal under MPEP 2144.03(C). That the Examiner did not cite a reference for the purported officially-noticed fact despite having searched the prior art as Appellant contends (Reply Br. 20-21) does not mean that Official Notice cannot be taken in appropriate circumstances; nor does it relieve Appellant from explaining why the noticed facts are not common knowledge or well-known in the art to traverse such a finding adequately. See MPEP 2144.03(C). Appellant’s newly-raised argument on pages 22 and 23 of the Reply Brief that McClelland is non-analogous art is likewise unavailing, for this argument was not raised in Appellant’s opening Brief and is, therefore, waived as untimely. See Borden, 93 USPQ2d at 1474. Therefore, we are not persuaded that the Examiner erred in rejecting claims 41 and 43. THE REJECTION OVER FOSTER, MCCLELLAND, AND MUHONEN We also sustain the Examiner’s rejection of claims 7 and 37 reciting processing received information via a baseband processor when the information is received via one or more frequencies in the cellular frequency band when using multiple broadcast/multicast service (MBMS). Ans. 14-15, 21. Appeal 2012-003853 Application 11/010,486 12 Despite Appellant’s arguments to the contrary (App. Br. 26-29; Reply Br. 24-25), Appellant does not persuasively rebut the Examiner’s position that McClelland teaches a baseband processor 540 to process baseband cellular signals, and that using such a processor in Foster would have been obvious. Ans. 14 (citing McClelland ¶ 0045; Fig. 5). Nor does Appellant persuasively rebut the Examiner’s additional reliance on Muhonen for teaching that downloading information from a server using MBMS was known in the art to deliver data efficiently, and that providing such a feature in the Foster/McClelland system would have been obvious. Ans. 14-15, 21. Such an efficiency enhancement predictably uses prior art elements according to their established functions—an obvious improvement. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). Accordingly, the Examiner’s combining the teachings of the cited references is supported by articulated reasoning with some rational underpinning to justify the Examiner’s obviousness conclusion. Therefore, we are not persuaded that the Examiner erred in rejecting claims 7 and 37. THE REMAINING OBVIOUSNESS REJECTIONS We also sustain the Examiner’s obviousness rejections of claims 3, 32, 42, and 44. Ans. 13, 15-16. Despite nominally arguing these claims separately, Appellant reiterates similar arguments made previously that we find unpersuasive for the reasons previously discussed. App. Br. 26, 30; Reply Br. 23, 25-26. Appeal 2012-003853 Application 11/010,486 13 CONCLUSION The Examiner did not err in rejecting claims 1-8, 10, 30-38, and 40-44 under § 103. DECISION The Examiner’s decision rejecting claims 1-8, 10, 30-38, and 40-44 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)(iv). AFFIRMED cam