Ex Parte Van Berkel et al

Patent Trial and Appeal Board

Jan 17, 2013

10565926 (P.T.A.B. Jan. 17, 2013)

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.
10/565,926 01/20/2006 Cornelis Hermanus Van Berkel 6275-223 9399
24112 7590 01/17/2013
COATS & BENNETT, PLLC
1400 Crescent Green, Suite 300
Cary, NC 27518
EXAMINER
BULLOCK JR, LEWIS ALEXANDER
ART UNIT PAPER NUMBER
2199
MAIL DATE DELIVERY MODE
01/17/2013 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 CORNELIS HERMANUS VAN BERKEL, PATRICK PETER
ELIZABETH MEUWISSEN, and RICKY JOHANNES MARIA NAS
____________________

Appeal 2010-0072411
Application 10/565,926
Technology Center 2100
____________________

Before JEAN R. HOMERE, DEBRA K. STEPHENS, and JASON V.
MORGAN, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is ST-Ericckson, S.A. (App. Br. 3.)

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Application 10/565,926

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-11. (App. Br. 5.) We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Appellants’ Invention
As depicted in Appellants’ Figure 2 below, Appellants invented a
vector processing device (100) for composing basic code vectors (102) into a
composite code vector (104). In particular, two weighted sum units (106)
perform two distinct weighted sum operations, each under the control of a
distinct configuration word (114), from a plurality of incoming basic code
vectors (102) to select therefrom basic code vectors (102) that are added
together to separately produce each an intermediate code vector. An add unit
(110) subsequently adds the intermediate vectors together to produce the
composite code vector (104). (Abstract.)

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Illustrative Claim
Independent claim 1 further illustrates the invention as follows:

1. A device arranged to compose basic-code vectors into a
composite-code vector, the device comprising:
at least two weighted sum units, each weighted sum unit
being arranged to provide an intermediate-code vector which is
a weighted sum of a plurality of the basic-code vectors;
an add unit, the add unit being arranged to sum the
intermediate-code vectors into the composite-code vector;
the weighted sum units being under the control of a first
and a second configuration word, and
wherein the first and the second configuration word are
deployed to configure the operations performed by the weighted
sum units.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Erdogan US 7,076,514 B2 Jul. 11, 2006

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claims 1-10 stand rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter.
2. Claims 1-11 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Erdogan.
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ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the principal Brief, pages 7-21.
Non-Statutory Rejection
Dispositive Issue 1: Have Appellants shown the Examiner erred in
concluding that claim 1 is directed to non-statutory subject matter?

Appellants argue that the Examiner erred in finding that claim 1 is
directed to a series units of mathematical operations for generating a
composite vector code. Rather, Appellants argue that the claim is directed to
a particular machine arranged to compose the basic code vector. (App. Br.
14.)
In response, the Examiner finds that because the recited device does
not set forth any physical structure for performing the recited functions, the
claim is directed to software units for performing the functions. (Ans. 7-8.)
We find error in the Examiner’s conclusion that claim 1 is directed to
non-statutory subject matter. Appellants’ Specification indicates that the
subject matter of the invention can be implemented in the form of dedicated
hardware or in the form of a programmed general purpose computer. (Spec.
7.) We find nothing in the Specification to support the Examiner’s finding
that the recited units are implemented in software. We are therefore satisfied
that implementing the units in hardware or in a programmed general purpose
computer would satisfy the machine requirements, and would thereby render
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the claim patent eligible.2 It follows that Appellants have shown error in the
Examiner’s rejection of claims 1-10.
Anticipation Rejection
Dispositive Issue 2: Have Appellants shown that the Examiner erred
in finding that Erdogan describes a first and second weighted sum units,
under the control of a first and second configuration words, arranged to
provide intermediate code vectors, as recited claim 1?
Appellants argue that Erdogan does not describe the disputed
limitations emphasized above. (App. Br. 15-21.) In particular, Appellants
argue that while Erdogan discloses a first and a second summer, the
disclosed summers are not weighted sum units because they simply add the
outputs of filter coefficients, without performing any selection of input
vectors. (Id. at 16-17.) Further, Appellants argue that because Erdogan’s
summers provide a sum of filtered binary signals, and do not relate to
standards/codes, their outputs cannot be said to describe an intermediate
code vector. (Id. at 18-19.)
In response, the Examiner finds that Erdogan’s disclosure of a first
summer and a second summer, under the control of a plurality of filters, for

2 “[A] machine is a ‘concrete thing, consisting of parts, or of certain devices
and combination of devices.’ This ‘includes every mechanical device or
combination of mechanical powers and devices to perform some function
and produce a certain effect or result.’” Ferguson, 558 F.3d 1359, 1364
(Fed. Cir. 2009) (quoting In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir.
2007), reh’g denied en banc, 515 F.3d 1361 (Fed. Cir. 2008), cert. denied,
129 S. Ct. 70 (2008)).
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adding a plurality of selected input vector codes describes the disputed
limitations, as broadly claimed. (Ans. 8-9.)
Figure 12 of Erdogan is reproduced below:

Figure 12 depicts a diagram of a polyphase combiner-sinc filter.
On the record before us, we agree with the Examiner’s finding of
anticipation. As depicted in Figure 12 above, Erdogan discloses a plurality
of input vectors (D11..22) that are fed to a plurality of filters (C11..24) before
they are selected to be summed by a first summer or a second summer, the
outputs of the summers are subsequently added to produce a composite
output vector. We find that because the filters are able to select or de-select
input vectors based on whether or not the characteristics of the vectors
match those of filters to which they are fed, the filters in conjunction with
the summers describe the weighted summers, as claimed. Further, we find
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for these same reasons that the output of the summers describe the
intermediate vectors. Therefore, we find Erdogan discloses each weighted
sum unit (adder) being arranged to provide an intermediate-code vector
which is a weighted sum of a plurality of the basic-code vectors.
Additionally, we find unpersuasive Appellants’ argument seeking to
distinguish the claimed units from Erdogan’s disclosure on the basis on the
types of data they are set out to process. We conclude that the content of the
code vectors to be directed to nonfunctional descriptive material. In a
precedential Opinion, an expanded Board panel held that nonfunctional
descriptive material (sequence data) did not distinguish the claimed
computer-based system from a prior art system that was the same except for
its sequence data. See Ex parte Nehls, 88 USPQ2d 1883, 1887-88 (BPAI
2008) (precedential).3 It follows that Appellants have not shown error in the
Examiner’s rejection of claim 1 as being anticipated by Erdogan.
Because Appellants did not argue 2-11 separately, those claims fall
together with claim 1 as set forth above. See 37 C.F.R. § 1.37(c)(1)(vii).

DECISION
1. We reverse the Examiner’s decision to reject claims 1-10 as
being directed to non-statutory subject matter under 35 U.S.C. § 101.

3 See also Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005)
(informative), aff’d 191 Fed. Appx. 959 (Fed. Cir. 2006) (stating if a claimed
phrase cannot alter how the process steps are to be performed to achieve the
utility of the invention or merely states an intended use or purpose for the
data, it is not entitled to patentable weight).
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2. We affirm the Examiner’s decision to reject claims 1-11 as
being anticipated by Erdogan under 35 U.S.C. § 102(e).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See
37 C.F.R. § 41.50(a)
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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