Ex Parte Walley et al

Patent Trial and Appeal Board

Aug 22, 2017

12509422 (P.T.A.B. Aug. 22, 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.
12/509,422 07/24/2009 John Walley 3875.3280000 9941
49579 7590 08/24/2017
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
GALT, CASSI J
ART UNIT PAPER NUMBER
3646
NOTIFICATION DATE DELIVERY MODE
08/24/2017 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):
e-office @ skgf.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN WALLEY, CHARLES ABRAHAM, and
KAMBIZ SHOARINEJAD
Appeal 2015-007325
Application 12/509,422
Technology Center 3600
Before CHARLES N. GREENHUT, ANNETTE R. REIMERS, and
SEAN P. O’HANLON, Administrative Patent Judges.
O’HANLON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-007325
Application 12/509,422
STATEMENT OF THE CASE
John Walley et al. (Appellants)1 appeal under 35 U.S.C. § 134 from
the Examiner’s March 19, 2014 final decision (“Final Act.”) rejecting claims
1—4, 6, 7, 9, 11—14, 16, 17, and 19-22.2 We have jurisdiction over this
appeal under 35 U.S.C. § 6(b).
We AFFIRM.
SUMMARY OF THE INVENTION
Appellants’ disclosure is directed to “a method and system for
calibrating a local GNSS [(Global Navigation Satellite Systems)] clock
using non-GNSS system clocks in a GNSS enabled mobile device.” Spec.
12. Claim 1, reproduced below from page 24 (Claims App.) of the Appeal
Brief, is illustrative of the claimed subject matter:
1. A method for communication, the method comprising:
receiving two or more system clocks from two or more
non-Global Navigation Satellite Systems (GNSS)
communication networks;
selecting a calibration clock from said received two or
more system clocks based on a status of a corresponding one of
said system clocks;
calibrating a local GNSS clock of said GNSS enabled
mobile device using said selected calibration clock; and
converting a GNSS signal received by said GNSS
enabled mobile device to a baseband GNSS signal utilizing said
calibrated local GNSS clock.
1 The Appeal Brief identifies Broadcom Corporation as the real party in
interest. Appeal Br. 3.
2 Claims 5, 8, 10, 15, and 18 are canceled. Appeal Br. 25, 27 (Claims App.)
(filed Mar. 2, 2015).
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Application 12/509,422
REJECTIONS3
Claims 1—4, 6, 7, 9, 11—14, 16, 17, and 19-22 stand rejected under
35 U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement.
Claims 1—4, 6, 7, 9, 11—14, 16, 17, and 19-22 stand rejected under
35 U.S.C. § 112, second paragraph, as being indefinite.
Claims 1—4, 6, 7, 9, 11—14, 16, 17, and 19-22 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Abraham (US 7,053,824 B2,
issued May 30, 2006) and Ladd (US 2009/0322601 Al, published Dec. 31,
2009).
Claims 1—4, 6, 7, 9, 11—14, 16, 17, and 19-22 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Jazra (US 8,009,519 B2,
issued Aug. 30, 2011).
ANALYSIS
Enablement Rejection
Appellants argue independent claims 1,11, and 21 together. Appeal
Br. 12—15. We select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(l)(iv).
The Examiner determines that “the [Specification does not enable
selecting a calibration clock based on its status.” Final Act. 3. The
Examiner recognizes that “[t]he [Specification states that a clock’s status
may be ‘active’ or ‘inactive’ but does not describe what is meant by an
3 A rejection of all the pending claims under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement has
been withdrawn. See Final Act. 2—3; Ans. 2.
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Application 12/509,422
‘active’ or an ‘inactive’ communication network system clock, and the terms
are not well-known in the art.” Id. (citation omitted). Continuing, the
Examiner explains that although “the terms ‘active’ and ‘inactive’ have plain
and ordinary meanings in many contexts,” “one of ordinary skill would not
know what is meant by an ‘active’ or ‘inactive’ system clock.'” Id. at 11.
The Examiner finds that “[t]he [Specification only teaches that a ‘system
clock’ is used to calibrate a ‘GNSS-clock’” and also “refers to a ‘system
clock’ as a ‘timing signal,”’ but “[n]o other description is provided.” Id. at
12 (citing Spec, 13, 17). The “Examiner concedes that any such ‘system
clock’ received from a communication network could be reasonably
described as ‘active’ according to the dictionary definition of the term,” but
determines that “it is unclear under what circumstances such a clock could
be described as ‘inactive’.” Id.
Appellants argue that although “the Specification does not explicitly
define the terms ‘active’ and ‘inactive,’ a person of ordinary skill in the art
would understand their definitions.” Appeal Br. 13. Appellants explain that
the Specification sets forth that a GNSS-enabled mobile device may receive
two or more system clocks from non-GNSS communication networks, and
the GNSS receiver may calibrate the local GNSS clock using “the received
system clocks of the cellular network 130 andlor the WiMAX network 140.”
Id. (quoting Spec. H 13, 25). Appellants state, therefore, that the
Specification “provides that only one of these system clocks is used to
‘calibrate [the] associated local GNSS clock,’ namely is ‘active’, whereas
the other system clock is not used to ‘calibrate [the] associated local GNSS
clock,’ namely ‘inactive’.” Id. at 13—14 (alterations in original).
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We are not persuaded by Appellants’ arguments. Claim 1 requires
that the calibration clock be selected based on its status, which Appellants
define as being whether or not it is selected to be the calibration clock. Such
circular reasoning fails to clarity how one of the two or more received
system clocks is selected based on its status, and fails to apprise us of error
in the Examiner’s rejection.
Appellants further argue that “‘[a]n active system clock means a
system clock that is actually utilized within a system or network to clock
signals to maintain corresponding communication’ and an ‘inactive system
clock means a system clock that is not actually utilized within a system or
network to clock signals.’” Id. at 14 (alteration in original) (quoting
Amendment, 17 (filed Nov. 30, 2010)). Thus, Appellants argue, a person of
ordinary skill would be able to tell “whether a system clock is actually being
utilized within a system or network, i.e., active, or is not actually utilized
within a system or network to clock signals, i.e., inactive.” Id. at 14—15.
We understand Appellants to be asserting that “status,” as used in claim 1,
means whether the particular system clock is active or inactive. See also id.
at 5, 15—16 (discussing active and inactive system clocks).
The Examiner disagrees, determining that even using Appellants’
definitions, “one of ordinary skill would not understand how to make the
determination of whether a received system clock is active or inactive.”
Ans. 3. According to the Examiner, “the best that one of ordinary skill could
reasonably conclude is that any system clock that is received from a
communication network is an active clock,” and “[a]ny inactive clock would
not be able to be received, as it is not actually being used. This, however,
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provides no basis for selecting between a plurality of received clocks.”
Ans. 3—A.
Appellants reply by asserting that “the terms ‘active’ and ‘inactive’ —
even if not explicitly defined in the specification — are well known terms.”
Reply Br. 5. Appellants further assert that “a person of ordinary skill in the
art would clearly understand the Specification to teach selecting a calibration
clock by, for instance, reading the status of the received clocks from
memory 308 and selecting the active clock.” Id. at 5—6 (referencing Spec.
33, 36). Notably, Appellants acknowledge that “it is unclear to the
Examiner ‘under what circumstances such a clock could be described as
“inactive”’” (Appeal Br. 13), but Appellants fail to explain how an inactive
system clock could be received, as required by claim 1.
“[T]o be enabling, the specification of a patent must teach those
skilled in the art how to make and use the full scope of the claimed invention
without ‘undue experimentation.’” Genentech, Inc. v. Novo Nordisk, A/S,
108 F.3d 1361, 1365 (Fed. Cir. 1997) (alteration in original) (quoting In re
Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993)). “‘The scope of the claims
must be less than or equal to the scope of the enablement’ to ‘ensure that the
public knowledge is enriched by the patent specification to a degree at least
commensurate with the scope of the claims.’” Sitrickv. Dreamworks, LLC,
516 F.3d 993, 999 (Fed. Cir. 2008) (quoting Nat 7 Recovery Techs., Inc. v.
Magnetic Separation Sys., Inc., 166 F.3d 1190, 1195—96 (Fed. Cir. 1999));
see also In re Fisher, 427 F.2d 833, 839 (CCPA 1970) (“[T]he scope of the
claims must bear a reasonable correlation to the scope of enablement
provided by the specification to persons of ordinary skill in the art.”).
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When rejecting a claim under the enablement requirement of § 112,
the Examiner bears an initial burden of setting forth a reasonable explanation
as to why the scope of protection provided by that claim is not adequately
enabled by the description of the invention provided in the specification of
the application; this includes providing sufficient reasons for doubting any
assertions in the specification as to the scope of enablement. In re Wright,
999 F.2d at 1561—62. If the Examiner meets this burden, the burden then
shifts to the Applicant to provide suitable proofs indicating that the
specification is indeed enabling. Id. at 1562 (citing In re Marzocchi, 439
F.2d 220, 223—24 (CCPA 1971)). We determine that the Examiner has met
this burden and Appellants have failed to persuade us that the Specification
provides enabling support for claim 1.
Here, as noted by Appellants, the Specification sets forth that memory
308 may store executable instructions that “may be utilized to indicate active
system clocks received from external communication networks such as, for
example, the cellular network 130 and/or the WiMAX network 140.” Spec.
133 (emphases added). As further noted by Appellants, the Specification
also sets forth that the calibration clock is selected from the received system
clocks according to its status as being active or inactive. Id. 136. This is in
keeping with the use of “status” in the Specification, which consistently
defines the status as being either active or inactive. See Spec. H 13, 36, 39,
41. We thus construe “status” as used in the claims as meaning either active
or inactive. See GPNE Corp. v. Apple Inc., 830 F.3d 1365, 1370 (Fed. Cir.
2016) (“[W]hen a patent ‘repeatedly and consistently’ characterizes a claim
term in a particular way, it is proper to construe the claim term in accordance
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with that characterization.” (citations omitted)). We also adopt the
definitions of “active” and “inactive” as proposed by Appellants supra.
What the Specification fails to explain, and Appellants fail to address,
is how an inactive system clock would be received from a non-GNSS
network. Claim 1 requires that the set of system clocks, from which the
calibration clock is selected, is received from non-GNSS communication
networks. Appeal Br. 24 (Claims App.). System clocks are timing signals
that are used as reference frequency sources for communication. See Spec.
127; see also Harry Newton, Newton’s Telecom Dictionary: The Official
Dictionary of Telecommunications 692 (Ray Horak ed., 14th ed., 1998)
(defining system clock as “[t]he clock designated as the reference for all
clocking in a network of electronic devices such as a multiplexer or
transmission facilities management system”). As the recited received
system clocks necessarily are utilized to maintain corresponding
communication with the associated non-GNSS communication network
from which each of such system clocks is received, the received system
clocks are, therefore, active system clocks. See Appeal Br. 14 (defining
active system clock). Thus, all clocks within the set of received system
clocks are active, and the Specification fails to explain how the calibration
clock is selected “based on a status” of being active or inactive as required
by claim 1. See Ans. 3^4.
Accordingly, we sustain the rejection of claim 1, and its dependent
claims 2-4, 6, 7, 9, and 22, claim 11, and claim 21, and its dependent claims
12—14, 16, 17, 19, and 20, as failing to comply with the enablement
requirement.
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Indefiniteness Rejections
First Ground
Appellants argue all of the claims together. Appeal Br. 15—16. We
select claim 1 as representative. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds claim 1 to be indefinite for reasons similar to
those discussed above regarding the enablement rejection, determining that
use of the term “status” renders the claims indefinite because
the [Specification does not describe what said term means with
respect to a communication network system clock, and the
meaning is not well-known in the art. The [Specification only
states that a clock’s “status” may be “active” or “inactive” but
does not describe what is meant by an “active” or an “inactive”
communication network system clock, and the meanings are not
well-known in the art.
Final Act. 4 (citing Spec. ^fl[ 13, 36, 39, 41). Appellants present arguments
similar to those discussed above with respect to the enablement rejection.
Appeal Br. 15—16; Reply Br. 6—7.
A claim is indefinite when it contains language that is “ambiguous,
vague, incoherent, opaque, or otherwise unclear in describing and defining
the claimed invention.” In re Packard, 751 F.3d 1307, 1311 (Fed. Cir.
2014). For the same reasons as set forth above, we conclude that one of
ordinary skill would not understand how the calibration clock is selected
from the “received two or more system clocks based on a status of a
corresponding one of said system clocks'1'’ as required by claim 1. Appeal Br.
24 (Claims App., emphasis added).
Accordingly, we sustain the rejection of claims 1—4, 6, 7, 9, 11—14,
16, 17, and 19-22 as being indefinite.
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Second Ground
The Examiner presents an additional ground of rejection for claims 4
and 14, which depend from claims 1 and 21, respectively, and require that
the calibrating occur “without using an external circuitry.” Appeal Br. 25,
27 (Claims App.). The Examiner determines that “the language ‘calibrating
said local GNSS clock without using an external circuitry’ is indefinite
because the [Specification does not describe what such a circuitry would
comprise or how calibration is performed without it, and one of ordinary
skill would not understand what is meant.” Final Act. 5. The Examiner
explains that “the claims do not clearly define where any of the steps are
performed, and it is therefore unclear what the ‘external circuitry’ is external
to.” Ans. 5.
Appellants traverse, arguing that “a person of ordinary skill in the art
would clearly understand claims 4 and 14 exclude the use of ‘external
circuitry’to calibrate the local GNSS clock.” Appeal Br. 16. Appellants
note that the Specification explains that a GNSS-enabled mobile device, a
GNSS receiver, a GNSS clock calibrator, and a host processor may be
operable to perform certain functions without using external circuitry. Reply
Br. 7—8 (citing Spec. Tflf 13, 20, 27, 32, 41). Thus, Appellants argue, “a
person of ordinary skill in the art would be reasonably appraised of the scope
of the claim terms as excluding calibration circuitry that is external to the
GNSS receiver or mobile device.” Id. at 8.
We are persuaded of error regarding claim 14, which depends from
claim 21. Claim 21 recites “a receiver” including “a calibrator configured to
calibrate a local GNSS clock of said GNSS enabled mobile device utilizing
said selected system clock.” Appeal Br. 28 (Claims App.). Thus, one of
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ordinary skill would understand that claim 14 precludes the use of circuitry
external to the receiver.
Claim 4 depends from claim 1, which does not specify any component
that performs the recited steps of receiving, selecting, calibrating, and
converting. Appeal Br. 24 (Claims App.). Thus, we agree with the
Examiner that “it is therefore unclear what the ‘external circuitry’ is external
to.” Ans. 5.
Accordingly, we sustain this ground of rejection as to claim 4, and do
not sustain this ground of rejection as to claim 14.
Obviousness Rejections
In view of our determination that claims 1—4, 6, 7, 9, 11—14, 16, 17,
and 19—22 are indefinite, it follows that the prior art rejections of these
claims must fall because they are necessarily based on speculative
assumptions as to the meaning of the claims. See In re Steele, 305 F.2d 859,
862—63 (CCPA 1962). It should be understood, however, that our decision
in this regard is based solely on the indefiniteness of the claimed subject
matter, and does not reflect on the adequacy of the prior art evidence applied
in support of the rejections.
DECISION
The Examiner’s decision to reject claims 1—4, 6, 7, 9, 11—14, 16, 17,
and 19—22 under 35 U.S.C. § 112, first paragraph, is affirmed.
The Examiner’s decision to reject claims 1—4, 6, 7, 9, 11—14, 16, 17,
and 19—22 under 35 U.S.C. § 112, second paragraph, is affirmed.
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The Examiner’s decision to reject claims 1—4, 6, 7, 9, 11—14, 16, 17,
and 19—22 under 35 U.S.C. § 103(a) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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