Ex parte Khayrallah
Appeal 2009007971; Appl. No. 10/427,872; Tech. Center 2600
Decided October 15, 2010
15. A method for improving the performance of a portable wireless device in a wireless network, the portable wireless device comprising a front-end and a front-end controller, wherein the front-end comprises a primary antenna connected to a primary receiver and a secondary antenna connected to a secondary receiver, the method comprising:
activating the primary antenna; and
selectively varying the gain of the secondary receiver to maintain a desired performance and to reduce power consumption.
21. The method of claim 15 wherein selectively varying the gain of the secondary receiver comprises disabling one or more components of an analog-to-digital converter.
In the Appeal Brief, the Applicant didn't even make arguments to distinguish over the prior art for dependent claim 21. Instead, the Applicant argued that the rejection was legally deficient because the rejection didn't even address the specific limitations of the dependent claim. Instead, the Examiner discussed features in the prior art related to adjusting sampling rate. Those limitations were present in a different dependent claim.
In the Examiner's Answer, the Examiner alleged for the first time that:
Schumutz teaches of using one of the A-D converter when there is no diversity capability is required (see column 6 and lines 60-64) in which means one of the A-D converter is disable when there is not need for it in which does make sense of power reduction.
The Applicant filed a Reply Brief, but did not address the Examiner's new argument. Instead, the Applicant referred to the deficient rejection in the last Office Action, and mistakenly stated that "the Examiner's Answer does not address this point."
The relied-upon section of reference disclosed:
This multichannel baseband signal is preferably coupled to high-speed A-D converters 52-1 and 52-2 operating in parallel for diversity receive capability. Where no diversity capability is required, a single A-D 52-1 could be utilized.
The BPAI found that this section taught "design choices for different systems", but "does not teach disabling one or more components of an analog-to-digital converter for varying the gain of a secondary receiver."
Takeaway: The BPAI reached the right outcome, but only because the Board read the reference. This case could have easily gone the other way, because the Applicant did not actually address the grounds of rejection which appeared for the first time the Examiner's Answer.
A safer bet would be for the Applicant to use the Reply Brief to make the same point the Board did: that the reference merely disclosed two options for building a receiver(use two converters when diversity is desired and one when diversity is not required), which is not the same as selective enabling one or more components during operation of the receiver.
Perhaps you are thinking that selectively enabling converters during operation of a receiver is still obvious. What about this for a prima facie case ... Adding selective enablement of an A/D converter to a receiver produces a predictable result. Any required design modifications are within the skill of a POSITA. The motivation is to reduce power consumption, a benefit that would a POSITA would readily appreciate.
Finally, one minor quibble. If you read the claim closely, it says disabling one or more components of an A/D converter. The reference described, and the Board discussed, options for building a receiver using one or two A/D converters. There's a difference, right?
Now, the reference certainly didn't teach disabling components of an A/D converter, so the Board properly reversed. But was that an accident? Did the Board go down the wrong track because they didn't read the claim carefully? Makes me wonder.
Related Posts: This case says disclosing two alternatives for components when building a system is not the same as disclosing selective disablement of the components during operation. I blogged about another case, Ex parte Keller, and made a related point: a reference that discloses the presence of a particular feature in one embodiment along with the absence of the same feature in another embodiment does not teach selectively enabling the feature.