Full Spectrum Inc.

Patent Trials and Appeals BoardMay 14, 2021

2020001645 (P.T.A.B. May. 14, 2021)

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. 15/394,185 12/29/2016 Menashe SHAHAR P-79679-US 6034 49443 7590 05/14/2021 Pearl Cohen Zedek Latzer Baratz LLP 7 Times Square, 19th Floor New York, NY 10036 EXAMINER ONAMUTI, GBEMILEKE J ART UNIT PAPER NUMBER 2463 NOTIFICATION DATE DELIVERY MODE 05/14/2021 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): Arch-USPTO@PearlCohen.com USPTO@PearlCohen.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MENASHE SHAHAR Appeal 2020-001645 Application 15/394,185 Technology Center 2400 Before ST. JOHN COURTENAY III, SCOTT B. HOWARD, and JOYCE CRAIG, Administrative Patent Judges. HOWARD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 3–12. See Adv. Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Although Appellant identifies the real party in interest as Ondas Networks Inc. (Appeal Br. 1), on August 28, 2018, Appellant filed a Notice of Name Change with the Office indicating that Appellant’s new name is Full Spectrum, Inc. (Assignment recorded at reel/frame 046939/0564). Appeal 2020-001645 Application 15/394,185 2 CLAIMED SUBJECT MATTER The claims are directed “to a method and system for reducing per- frame overhead in the air interface for orthogonal frequency division multiple access (OFDMA) systems.” Spec. ¶ 2. Claim 1, reproduced below with the disputed limitation italicized, is illustrative of the claimed subject matter: 1. A non-transient computer-readable medium for causing a processor of a base station in an OFDMA system to perform the method of reducing a size of a Media Access Control (MAC) layer message according to the IEEE 802.16 standard between the base station and the OFDMA system, the method comprising: transmit to remote stations m communication with the base station reduced-length downlink and uplink map MAC messages, wherein the length of a header of said reduced-length uplink and downlink map MAC message is no more than 16 bits and wherein the reduced-length downlink message includes a header consisting of a length field and a header check sequence (HCS). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Yucek US 8,160,163 B1 Apr. 17, 2012 Park US 2005/0232181 A1 Oct. 20, 2005 Lim US 2007/0060149 A1 Mar. 15, 2007 Oleszcsuk US 2008/0108355 A1 May 8, 2008 Cheng US 2009/0316806 A1 Dec. 24, 2009 Kim US 2011/0164586 A1 July 7, 2011 Chen US 2013/0121274 A1 May 16, 2013 Appeal 2020-001645 Application 15/394,185 3 REJECTIONS Claims Rejected 35 U.S.C. § Reference(s)/Basis 1, 32 103 Lim, Kim 4 103 Lim, Kim, Chen 5 103 Lim, Kim, Cheng 6–9 103 Lim, Kim, Oleszcsuk 10 103 Lim, Kim, Park 11, 12 103 Lim, Kim, Yucek OPINION The Examiner finds that Kim teaches “wherein the reduced-length downlink message includes a header consisting of a length field and a header check sequence (HCS)” as recited in claim 1.3 Final Act. 4; Adv. Act. 2; Ans. 18–19. Specifically, the Examiner finds Kim’s Figure 5 teaches a header including “a sub header indicator (SHI) field, a length field, and a header control sequence (HCS) field.” Final Act. 4; see also Adv. Act. 2; Ans. 18–19. The Examiner further concludes, based on MPEP § 2111.03(II), that “the transition phrase ‘CONSISTING OF’ does not limit or excludes any element, step or ingredient not specified in the claim as argued by the appellant.” Ans. 19. According to the Examiner, “Kim’s reference does not need to disclose ONLY a length field and a header check sequence (HCS) as argued by the appellant and that Kim’s reference 2 The Examiner rejected claim 2 on this ground. Final Act. 3. That rejection was mooted by an amendment cancelling claim 2. See Adv. Act. 1. 3 Appellant argues the pending claims as a group. See Appeal Br. 3–5. Accordingly, we decide the appeal of these claims on the basis of claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2020-001645 Application 15/394,185 4 ‘header’ can include more elements than the length field and header check sequence.” Id. Appellant argues that “[f]or claims that contain both of the terms ‘comprising’ and ‘consists,’ it is reasonable to interpret the term ‘consists of’ as limiting subsequently named elements, while the earlier term ‘comprising’ means that the claim can include the named elements plus other elements.” Appeal Br. 3–4 (citing In re Crish, 393 F.3d 1253, 1254, 1257 (Fed. Cir. 2004). According to Appellant, “because the Examiner admits that the Kim header includes more elements then the length field and the HCS, Appellant submits that the Kim reference does not satisfy this element of the independent claims, as alleged.” Id. at 4. During prosecution, claims must be given their broadest reasonable interpretation while reading claim language in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The only issue in dispute is the broadest reasonable construction of a claim that contains both “comprising” and “consisting of.” When the term “consisting of” follows the term “comprising” in a claim, it is reasonable to interpret the term “consists of” as limiting subsequently named elements, while the earlier term “comprising” means that the claim can include the named elements plus other elements. In re Crish, 393 F.3d 1253, 1254, 1257 (Fed. Cir. 2004). Accordingly, although the claim is broad enough to cover additional items not specifically recited in the claim, the use of “consisting of” limits the reduced heading to only the recited length field and header check sequence. Because the Examiner finds that Kim’s header includes a subheader indicator, we agree with Appellant Appeal 2020-001645 Application 15/394,185 5 that the Examiner erred in finding Kim teaches a “a header consisting of a length field and a header check sequence (HCS)” as recited in claim 1. Accordingly, we are constrained on this record to reverse the Examiner’s rejection of claim 1, along with the rejection of claim 11, which recites a limitation commensurate in scope to the disputed limitation discussed above, and dependent claims 3–10 and 12.4 CONCLUSION The Examiner’s rejections of claims 1 and 3–12 as obvious is REVERSED. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3 103 Lim, Kim 1, 3 4 103 Lim, Kim, Chen 4 5 103 Lim, Kim, Cheng 5 6–9 103 Lim, Kim, Oleszcsuk 6–9 10 103 Lim, Kim, Park 10 11, 12 103 Lim, Kim, Yucek 11, 12 Overall Outcome 1, 3–12 REVERSED 4 The Examiner does not find that any of the additional references relied on to reject dependent claims teaches the disputed limitation.