FINAL ACTION
The present reissue proceeding involves U.S. Pat. 10,644,761.
The amendment filed Aug. 18, 2025, has been received and entered. Response (Aug. 18, 2025).
Claims 1-35 are pending.
I. Acknowledgements
The instant application has an actual filing date of May 5, 2022.
Because the instant application was filed on or after September 16, 2012, the statutory provisions of the America Invents Act (“AIA ”) will govern this proceeding.
The instant application is a reissue of U.S. Pat. 10,644,761 (“’761 patent”). The ’761 patent issued from App. 15/707,826 (“’826 application”), filed on Sep. 18, 2017, which is a continuation application No. 15/231,596 (“’596 application”), filed on Aug. 8, 2016, now Pat. No. 9,768,840, which is a continuation of application No. 14/291,321 (“’321 application), filed on May 30, 2014, now Pat. No. 9,423,439, which is a continuation of application No. 13/025,697 (“’697 application”), filed on Feb. 11, 2011, now Pat. No. 8,744,504, which is a continuation of application No. PCT/US2011/023991, filed on Feb. 8, 2011.
The examiner is not aware of any pending litigation or copending Office proceedings involving the ’761 patent.
II. Response to Amendment
The amendment to the claims filed Aug. 18, 2025, fails to comply with the requirements of 37 C.F.R. § 1.173(d) and (g), which require that all changes made be relative to the underlying patent, and changes made to the patent be indicated through underlining or bracketing, as appropriate. The patent owner has indicated the removal of text from newly proposed claims 21, 26, 28, 34, and 35 using both brackets and underlining. Instead, the removed text should be simply omitted for the newly proposed claims.
The patent owner notes that the relative terms “desired,” “predetermined,” and “desirable,” are removed from claims 2, 7, 9, 10, 14, 16, 18, 21, 26, 28, 34, and 35. (Response at 13.) The examiner finds, however, that merely removing these labels has not appreciably altered the scope of the affected claim elements, when construed in light of the specification, as discussed in detail below.
III. Response to Arguments
A. 35 U.S.C. § 112(f) Claim Interpretation
1. “Processor” and “Circuit” (Response at 14-18)
The patent owner contends:
Applicant does not intend for means-plus-function interpretation to be applied to any of the claim features. Each of “at least one processor” and “at least one circuit” are terms of art (“processor” and “circuit”) preceded by modifying language that would be understood by one having skill in the art of communication systems to be elements of systems having sufficient structure to perform the claimed function such that they should not be interpreted under 35 U.S.C. § 112(f).
(Response at 16.)
The terms “processor” and “circuit” denote sufficient structure and are not merely used as a substitute for means as generic placeholders.
(Response at 17.)
In this case, those of skill in the art would clearly understand what types of structure are meant by the terms “processor” and “circuit” and the terms “processor” and “circuit” are not merely used as a substitute for means as generic placeholders. The term “processor” is used to describe well known programable processors, such as CPUs, microprocessors, micro-controllers, field programmable gate arrays, or ASICs. The term “circuit” is used to describe well known hardware and electrical circuits (having structure) such as processors, memory, ports, and other circuits.
(Response at 18.)
As acknowledged by the patent owner, in view of the above, “processor” and “circuit” in the ’761 patent correspond to programmable processors, such as CPUs, microprocessors, micro-controllers, field programmable gate arrays, or ASICS. As such, these terms do not refer to specific devices, but rather to a class of general-purpose computing devices that require programmed logic to realize specialized functions. Thus, while the terms “processor” and “circuit” do indeed connote some structure, they do not connote a sufficient structure to perform the entire claimed functions. What is missing from the claims is an algorithm for performing the specific claimed functions.
In cases involving a special purpose computer-implemented means-plus-function limitation, the Federal Circuit has consistently required that the structure be more than simply a general-purpose computer or microprocessor and that the specification must disclose an algorithm for performing the claimed function. See, e.g., Noah Systems Inc. v. Intuit Inc., 675 F.3d 1302, 1312 (Fed. Cir. 2012); Aristocrat Techs. Australia PTY Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008).
For a computer-implemented means-plus-function claim limitation invoking 35 U.S.C. § 112(f), the Federal Circuit has stated that "a microprocessor can serve as structure for a computer-implemented function only where the claimed function is ‘coextensive’ with a microprocessor itself." EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 622 (Fed. Cir. 2015), citing In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011). "‘It is only in the rare circumstances where any general-purpose computer without any special programming can perform the function that an algorithm need not be disclosed.’" EON Corp., 785 F.3d at 621, quoting Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012). "‘[S]pecial programming’ includes any functionality that is not ‘coextensive’ with a microprocessor or general-purpose computer." EON Corp., 785 F.3d at 623 (citations omitted). "Examples of such coextensive functions are ‘receiving’ data, ‘storing’ data, and ‘processing’ data—the only three functions on which the Katz court vacated the district court’s decision and remanded for the district court to determine whether disclosure of a microprocessor was sufficient." 785 F.3d at 622. Thus, "[a] microprocessor or general-purpose computer lends sufficient structure only to basic functions of a microprocessor. All other computer-implemented functions require disclosure of an algorithm." Id.
While the patent owner may not intend for these claim features to be interpreted as such, the response does not present a sufficient showing to establish that the claim limitation recites sufficient structure to perform the claimed function so as to avoid interpretation under 35 U.S.C. § 112(f).
2. “Simulating” (Response at 18-20)
The patent owner notes:
As identified by the Examiner, the Issued ‘761 Patent indicates at column 16, line 56 through column 17, line 12 that:
In some embodiments, users can employ a ray-tracing simulator, algorithm, or other equivalent simulation to determine the optimized position of each antenna to provide a maximum C within an environment or to optimize the operation of a system for either MU-MIMO or SU-MIMO modes of operation. As such, embodiments of the invention, and particular embodiments of the invention that utilize the sequence of operations illustrated in FIG. 15 and FIG. 16, can be performed by a computing system, or otherwise integrated into program code executed by the computing system. Such a computing system typically includes one or more processors coupled to a memory. The computing system also typically includes at least one network interface coupled to at least one network, as well as at least one input/output device interface coupled to at least one peripheral device, such as a user interface (including, for example, a keyboard, mouse, a microphone, and/or other user interface) and/or at least one output device (including, for example, a display, speakers, a printer, and/or another output device). Such computer systems are often under the control of an operating system and execute, or otherwise rely upon, various computer software applications, sequences of operations, components, programs, files, objects, modules, etc., consistent with embodiments of the invention.
Issued ‘761 Patent, col. 16, 1. 56 — col. 17,1. 12.
(Response at 19.) The patent owner contends:
Respectfully, Applicant respectfully request that the Examiner accept that those having skill in the art of communication systems would understand how methodologies described regarding determining placement of antennas in the real world described in the Issued ‘761 Patent could be simulated in a simulated environment and the scope of the identified claim elements 1-17 can be determined based on the description of some embodiments employing a “simulator” or “simulation”. See column 16, line 56-57 of the Issued ‘761 Patent.
(Id.)
Original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. See MPEP §§ 2163.02 and 2181, subsection IV.
When examining computer-implemented functional claims, examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing. MPEP § 2161.01. An algorithm is defined, for example, as "a finite sequence of steps for solving a logical or mathematical problem or performing a task." Microsoft Computer Dictionary (5th ed., 2002). See id. Applicant may "express that algorithm in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure." Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (internal citation omitted). It is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. See, e.g., Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681-683 (Fed. Cir. 2015) (reversing and remanding the district court’s grant of summary judgment of invalidity for lack of adequate written description where there were genuine issues of material fact regarding "whether the specification show[ed] possession by the inventor of how accessing disparate databases is achieved"). If the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention a rejection under 35 U.S.C. § 112(a) or pre-AIA 35 U.S.C. § 112, first paragraph, for lack of written description must be made. MPEP § 2161.01.
In this case, the specification neither discloses sufficient detail of a simulator inherently configured to carry out the claimed functions nor sufficiently specifies an algorithm necessary to configure a general-purpose simulator to do so. A bare assertion that one of ordinary skill in the art would know how to implement such simulation cannot take the place of evidence that is missing in the record.
B. 35 U.S.C. § 112 Rejections
1. 35 U.S.C. § 112(a) Rejections (Response at 20-21)
The patent owner contends:
As described above, those having skill in the art of communication systems would understand how methodologies described regarding determining placement of antennas in the real world described in the Issued ‘761 Patent could be simulated in a simulated environment and thus the scope of “simulat[ing]” is clear and the claim features thusly have written description support under 35 U.S.C. § 112(a). Applicant respectfully requests reconsideration and withdrawal of all rejections under 35 U.S.C. § 112(a).
(Remarks at 20-21.)
As noted above, this argument is unpersuasive.
2. 35 U.S.C. § 112(b) Rejections (Response at 21)
The patent owner contends:
For the reasons described above, no claim features should be interpreted under 35 U.S.C. § 112(f) and even if “processor” or “circuit” were interpreted under 35 U.S.C. § 112(f), those having skill in the art of communication systems would understand how methodologies described regarding determining placement of antennas in the real world described in the Issued ‘761 Patent could be simulated in a simulated environment and the scope of the identified claim elements 1-17 can be determined. Applicant respectfully requests reconsideration and withdrawal of all rejections under 35 U.S.C. § 112(b).
(Response at 21.)
As noted above, this argument is unpersuasive.
3. 35 U.S.C. § 112(d) Rejections (Response at 21-22)
The patent owner contends:
Respectfully, dependent claim 10 has been amended to moot the Examiner’s concerns relating to the claim language. More specifically, dependent claim 10 has been amended to specifically call out each of two options for further narrowing independent claim 8 as it relates to the first simulated MIMO signal and the second simulated MIMO signal. Applicant respectfully requests reconsideration and withdrawal of all rejections under 35 U.S.C. § 112(d).
(Remarks at 22.)
Upon reviewing amended claim 10, the examiner agrees that the claim, while still providing alternative limitations potentially affecting only one of the simulating steps previously identified, nonetheless would further limit parent claim 8 under any of the three stated variations because neither of the simulating steps (of claim 8) themselves would be rendered optional by the claim language.
The rejection of claim 10 under 35 U.S.C. § 112(d) is withdrawn.
IV. Claim Interpretation
During examination, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the claims. See MPEP § 2111 et seq.
A. Lexicographic Definitions
A first exception, albeit optional, to the broadest reasonable interpretation standard occurs when there is lexicographic definition in the specification.
After a careful review of the original specification, unless expressly noted otherwise by the Examiner, the Examiner cannot locate any other lexicographic definitions, express or implied, in the original specification with the required clarity, deliberateness, and precision. Because the Examiner cannot locate any lexicographic definitions in the original specification with the required clarity, deliberateness, and precision the Examiner concludes that the Patent Owner is not acting as their own lexicographer. See MPEP § 2111.01 IV.
B. 'Sources' for the 'Broadest Reasonable Interpretation'
For terms not lexicographically defined by Applicant, the Examiner hereby adopts the following interpretations under the broadest reasonable interpretation standard. In other words, the Examiner has provided the following interpretations simply as express notice of how he is interpreting particular terms under the broadest reasonable interpretation standard. Additionally, these interpretations are only a guide to claim terminology since claim terms must be interpreted in context of the surrounding claim language. In accordance with In re Morris, 127 F.3d 1048, 1056, 44 USPQ2d 1023, 1029 (Fed. Cir. 1997), the Examiner points to these other “sources” to support his interpretation of the claims. Finally, the following list is not intended to be exhaustive in any way:
1. “processor”
"The part of a computer system that operates on data – called also a central processing unit." Microsoft Press Computer Dictionary, 5th Edition, Microsoft Press, Redmond, WA, 2002.
2. “configured”
"to set up for operation esp. in a particular way." Merriam - Webster's Collegiate Dictionary, 10th Edition, Merriam-Webster Inc., 1994.
3. “circuit”
The physical connection (or path) of channels, conductors and equipment between two given points through which an electric current may be established. Includes both sending and receiving capabilities. A circuit can also be a network of circuit elements, such as resistors, inductors, capacitors, semiconductors, etc., that performs a specific function. A circuit can also be a closed path through which current can flow See “Newton’s Telecom Dictionary. 14th Expanded Edition, Telecom Books, October 1998,” describing a transmitter as a device that converts signals into electrical impulses.
4. “capacity for [simulated] MIMO communications . . .” (claims 2, 9, 18, and 21-35)
In the context of claims 2, 9, 18, and 21-35, the “capacity” is framed as desired capacity, despite the amendment’s removal of the word, “desired.” For example, claim 2 recites, “determining whether a capacity for simulated MIMO communications with the simulated distributed antenna system is achieved.” Every functional MIMO communications system will have a capacity. Determining merely whether one exists would not only render the claim element largely meaningless, but it would be inconsistent with the underlying specification. Accordingly, the claim must be interpreted as essentially determining whether an unstated goal has been met, i.e., whether the system successfully meets a “desired capacity.” Such a goal, as discussed in the previous Office action, is ill-defined and highly subjective. Claims 9, 18, and 21-35 all recite substantially similar limitations.
The relevant portion of the ’761 patent states, “The user then selects a layout that provides the desired coverage with the desired capacity within a desired budget.” (emphasis added).
The Patent Owner previously suggested that support for claim limitations including this term is provided by the ’761 patent at column 2, lines 30-48; and column 17, lines 45-55, (see Preliminary Amendment at 14).
These portions of the ’761 patent mention analyzing at least an imbalance of received power between the first and second signals determined within the environment to determine whether a “predetermined” capacity for MIMO communications with the system has been achieved, and describe a subjective process whereby a user may determine a desired layout of antennas and/ or remote units based upon the existing coverage of that environment, the coverage that can be provided by antennas and/or remote units, and cost considerations. The user ultimately selects a layout that provides the “desired” coverage with the “desired” capacity, within a “desired” budget. ’761 patent, 2:30-48, 17:45-55.
As such, desired “capacity for [simulated] MIMO communications . . .” appears to be a relative and highly subjective condition related to capacity of the system, as characterized by a user with unspecified design/business goals.
5. “capacity threshold” (claims 7, 14, 16, 34)
In the context of claims 7, 14, 16, and 34, the “threshold” is framed as a desired/predetermined threshold, despite the amendment’s removal of the word, “predetermined.” For example, claim 7 recites, “determining that the simulated capacity for the simulated distributed antenna system does not meet a capacity threshold.” This language presupposes that such a threshold exists, i.e., is predetermined, in order to meaningfully perform the act of determining. Accordingly, the claim must be interpreted as essentially determining whether an unstated goal has been met, i.e., whether the system capacity successfully surpasses a predetermined desired threshold. Such a threshold-based goal, as discussed in the previous Office action, is ill-defined and highly subjective. Claims 14, 16, and 34 all recited substantially similar limitations.
The relevant portion of the ’761 patent mentions a “predetermined capacity threshold” only in the language of claims 7, 14, and 16.
The Patent Owner previously suggested that support for claim limitations including this term is provided by the ’761 patent at column 2, lines 30-48; and column 12, line 55, through column 14, line 30, (see Preliminary Amendment at 15).
These portions of the ’761 patent mention analyzing at least an imbalance of received power between the first and second signals determined within the environment to determine whether a “predetermined” capacity for MIMO communications with the system has been achieved. Further, a formula for calculating MIMO channel capacity is presented, which depends on several parameters: 1) the number of receiving and transmitting antennas involved; 2) the signal-to-noise and interference ratio (SNIR) averaged over the receiving antennas; and 3) the MIMO channel matrix, which includes the different channel transfer functions between the receiving and transmitting antennas, normalized so that the path-loss effect on its coefficients is removed and included into the SNIR parameter. Additionally, the Eigen-values of the MIMO channel matrix provide a measure of the MIMO channel’s ability to support multiple spatial streams in order to increase the resulting capacity. Embodiments of the invention specify the power imbalance as well as the SNIR required to have a particular capacity within an area. In “ideal” embodiments, the antenna deployment provides wireless devices with LoS channel conditions from each antenna throughout the environments such that both “low” spatial correlation and “high” SNIR conditions are achieved. However, this solution is often associated with high costs due to the large numbers of antennas that may be necessary. ’761 patent at 2:30-48; 12:55-14:30.
As such, a predetermined “capacity threshold” appears to be a relative and highly subjective determination related to MIMO channel capacity, as characterized by a user with unspecified design/business goals.
6. “a signal-to-noise and interference ratio associated with at least one of the first MIMO signal or the second MIMO signal at the third location in the environment” (claim 26)
In the context of claim 26, the “signal-to-noise and interference ration” is framed as a desirable signal-to-noise and interference ration, despite the amendment’s removal of the word, “desirable.” Claim 26 recites, “the first remote unit and the second remote unit are arranged within the environment to provide a signal-to-noise and interference ratio associated with at least one of the first MIMO signal or the second MIMO signal at the third location in the environment.” Every functional MIMO communications system will have a signal-to-noise-and interference ratio. It is an inherent characteristic. Determining merely whether one exists would not only render the claim element largely meaningless, but it would be inconsistent with the underlying specification. Accordingly, the claim must be interpreted as essentially determining whether an unstated goal has been met, i.e., whether the system successfully meets a “desirable signal-to-noise and interference ratio.” Such a goal, as discussed in the previous Office action, is ill-defined and highly subjective.
While the ’761 patent does not appear to specifically mention a “desirable” signal-to-noise and interference ratio (SNIR), there is a suggestion that a “high” SNIR is associated with “ideal embodiments”. ’761 patent at 14:25-30. The ’761 patent does not appear to provide any objective guidance to determine when a SNIR may be considered “high” or “desirable,” or give any specific examples where such a characterization is met by a particular set of data point values.
The Patent Owner has previously suggested that support for claim limitations including this term is provided by the ’761 patent at Figures 1, 5, and 17-18; and column 3, lines 7-11 and 38-40; column 8, lines 15-27; column 13, lines 20-35; column 13, line 54, through column 14, line 30; column 15, lines 14-30 and 44-59; and column 17, lines 19-44, (see Preliminary Amendment at 15).
These portions of the ’761 patent describe the MIMO channel capacity as being dependent on SNIR and CCN (a channel condition number that is calculated as ratio between the smallest Eigen-value and largest Eigen-value of the MIMO channel matrix) and a Channel Quality Indicator (CQI) is introduced that “might represent a measure of Signal to Interference plus Noise Ratio (SNIR), but in fact it is coded in terms of the Modulation and Coding Scheme (MCS) required for a particular error rate probability.” Further described is the MIMO Channel Capacity Formula, which takes as an input the SNIR averaged over the receiving antennas. It is noted that optimization of MIMO channel capacity depends upon the optimization of the SNIR and the CCN. In “ideal” embodiments, the antenna deployment provides wireless devices with LoS channel conditions from each antenna throughout the environments such that both “low” spatial correlation and “high” SNIR conditions are achieved. However, this solution is often associated with high costs due to the large numbers of antennas that may be necessary. To determine where to selectively place antennas in accordance with one aspect of the invention, a user determines the CCN from a power imbalance, correlates the CCN and SNIR to a datastore of information to determine the MIMO capacity of a system with the antennas at their selected location. The user adjusts the location of the antennas if the capacity is “not acceptable” (e.g., the capacity not high enough for a “desired” installation). ’761 patent at Figs. 1, 5, and 17-18; 3:7-11, 38-40; 8:15-27; 13:20-35; 13:54-14:30; 15:14-30, 44-59; 17:19-44.
As such, a desirable “signal-to-noise and interface ratio associated with at least one of the first MIMO signal or the second MIMO signal at the third location in the environment” appears to be a relative and highly subjective condition related to signal-to-noise and interference ratio, as characterized by a user with unspecified design/business goals.
C. 35 U.S.C. §112(f)
A second exception is when a claimed phrase is interpreted in accordance with 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph. See MPEP § 2181 et seq.
The following is a quotation of 35 U.S.C. § 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. § 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, because the claim limitations use generic placeholders that are coupled with functional language without reciting sufficient structure to perform the recited functions and the generic placeholders are not preceded by a structural modifier.
Such claim limitations are as follows:
1. “at least one processor . . . configured to simulate communication of a first simulated MIMO signal from a first remote unit at a first simulated location over a first simulated air interface in the simulated environment” (claim 8);
2. “at least one processor . . . configured to simulate communication of a second simulated MIMO signal from a second remote unit at a second simulated location over a second simulated air interface in the simulated environment” (claim 8);
3. “at least one processor . . . configured to analyze at least a first simulated received power of the first simulated MIMO signal and a second simulated received power of the second simulated MIMO signal at the third simulated location within the simulated environment” (claim 8);
4. “at least one processor . . . configured to analyze at least the first simulated received power of the first simulated MIMO signal and the second simulated received power of the second simulated MIMO signal at the third simulated location within the simulated environment in order to determine whether a capacity for simulated MIMO communications with the simulated distributed antenna system is achieved at the third simulated location in the simulated environment” (claim 9);
5. “at least one processor . . . configured to position a first simulated remote unit at a first respective simulated location within the simulated environment and to simulate communication of a respective simulated MIMO signal over a first respective simulated air interface” (claim 10);
6. “at least one processor . . . configured to position a second simulated remote unit at a second respective simulated location within the simulated environment and to simulate communication of a respective simulated MIMO signal over a second respective simulated air interface” (claim 10);
7. “at least one processor . . . configured to determine a simulated signal-to-noise and interference ratio that is associated with at least one of the first simulated MIMO signal and the second simulated MIMO signal” (claim 11);
8. “at least one processor . . . configured to determine a simulated channel condition number associated with the simulated distributed antenna system based on at least one of the first simulated MIMO signal and the second simulated MIMO signal” (claim 12);
9. “at least one processor . . . configured to determine a simulated capacity of the simulated distributed antenna system from the simulated signal-to-noise and interference ratio and the simulated channel condition number” (claim 13);
10. “at least one processor . . . configured to compare the simulated capacity for the simulated distributed antenna system to a capacity threshold” (claim 14);
11. “at least one processor . . . configured to access a datastore including capacity information” (claim 15);
12. “at least one processor . . . configured to: determine that the simulated capacity for the simulated distributed antenna system does not meet a capacity threshold; and adjust at least the first simulated location or the second simulated location” (claim 16);
13. “at least one circuit configured to simulate wireless communication of a first simulated MIMO signal from a first remote unit at a first simulated location in the simulated environment” (claim 17);
14. “at least one circuit . . . configured to simulate wireless communication of a second simulated MIMO signal from a second remote unit at a second simulated location in the simulated environment” (claim 17);
15. “at least one circuit . . . configured to analyze at least a first simulated received power of the first simulated MIMO signal and a second simulated received power of the second simulated MIMO signal at the third simulated location within the simulated environment” (claim 17);
16. “at least one circuit . . . . configured to analyze at least the first simulated received power of the first simulated MIMO signal and the second simulated received power of the second simulated MIMO signal at the third simulated location within the simulated environment in order to determine whether a capacity for simulated MIMO communications with the simulated distributed antenna system is achieved at the third simulated location in the simulated environment” (claim 18);
17. “at least one circuit . . . configured to determine a simulated signal-to-noise and interference ratio that is associated with at least one of the first simulated MIMO signal and the second simulated MIMO signal” (claim 19); and
18. “at least one circuit . . . configured to determine a simulated channel condition number associated with the simulated distributed antenna system based on at least one of the first simulated MIMO signal and the second simulated MIMO signal” (claim 20).
Because these claim limitations are being interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
1. “Processor” claim elements (claim elements 1-12 above)
Although these claims recite at least one “processor,” the ’761 patent appears to describe such processors broadly and generically. Specifically, the ’761 patent discloses a central processing unit (CPU) 36 coupled to a memory 38, where each CPU 36 “is typically implemented in hardware using circuit logic disposed on one or more physical integrated circuit devices or chips. Each CPU 36 may be one or more microprocessors, micro-controllers, field programmable gate arrays, or ASICs.” ’761 patent at 7:8-14. Further, the ’761 patent broadly describes a software-based implementation, where “program code typically comprises one or more instructions that are resident at various times in various memory and storage devices, and that, when read and executed by one or more processors, cause that a system associated with that processor to perform the steps necessary to execute steps, elements, and/or blocks embodying the various aspects of the invention.” ’761 patent at 19:62-20:9. A general purpose CPU cannot, by itself, perform the entirety of any of the corresponding claimed functions. Accordingly, the affected claim elements are interpreted as a CPU programmed to perform the algorithms corresponding to the claimed functions, as disclosed in in the ’761 patent specification.
2. “Circuit” claim elements (claim elements 13-18 above)
Although these claims recite “circuitry,” the claims contain no contextual language that describes the objective or the desired output of the circuitry that would provide a person of ordinary skill in the art reading the claims with an understanding of the structural arrangements of the circuit elements necessary to carry out the entire claimed functions. 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, applies where the words of a claim are not “understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). Referring to the ’761 patent specification, as noted above, the ’761 patent appears to describe such processors broadly and generically. Specifically, the ’761 patent discloses a central processing unit (CPU) 36 coupled to a memory 38, where each CPU 36 “is typically implemented in hardware using circuit logic disposed on one or more physical integrated circuit devices or chips. Each CPU 36 may be one or more microprocessors, micro-controllers, field programmable gate arrays, or ASICs.” ’761 patent at 7:8-14. Further, the ’761 patent broadly describes a software-based implementation, where “program code typically comprises one or more instructions that are resident at various times in various memory and storage devices, and that, when read and executed by one or more processors, cause that a system associated with that processor to perform the steps necessary to execute steps, elements, and/or blocks embodying the various aspects of the invention.” ’761 patent at 19:62-20:9. Accordingly, the affected claim elements are interpreted as a CPU (implemented as circuit logic, as acknowledged in the ’761 patent) programmed to perform the algorithms corresponding to the claimed functions, as disclosed in in the ’761 patent specification.
3. Corresponding algorithms (claim elements 1-18 above)
Each of claim elements 1-18 identified above describe a simulated aspect of an overall computing system or apparatus for determining placement of a plurality of simulated antennas of a simulated distributed antenna system for handling simulated MIMO signals in a simulated environment.
“Simulat[ing]” is discussed in the ’761 patent at Abstract, 2:48-62, 16:56-17:12. Specifically, the ’761 patent suggests that “users can employ a ray-tracing simulator, algorithm, or other equivalent simulation to determine the optimized position of each antenna to provide a maximum C within an environment or to optimize the operation of a system for either MU-MIMO or SU-MIMO modes of operation. As such, embodiments of the invention, and particular embodiments of the invention that utilize the sequence of operations illustrated in FIG. 15 and FIG. 16, can be performed by a computing system, or otherwise integrated into program code executed by the computer system.”
An attempt to determine the scope of claim elements 1-18 identified above, according to the framework discussed above, fails at the outset. Fundamentally, each of these limitations rely on simulating communication of a first simulated MIMO signal at a simulated first location and simulating communication of a second simulated MIMO signal at a simulated second location. The sequence of operations at FIG. 15 and FIG. 16 of the ’761 patent begin with deploying a first antenna and deploying a second antenna. See ’761 patent, FIGS. 15 and 16. However, the ’761 patent does not appear to describe in any way how these operations are carried out in a simulated environment. Accordingly, algorithms corresponding to these operations, or potential algorithms that rely on these operations, in the context of claim limitations 1-18 identified above are not found in the ’761 patent specification. At least because of this deficiency, the scope of claim elements 1-18 identified above cannot be determined.
V. Claims Rejections – 35 U.S.C. § 112
1. Rejections under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA ), first paragraph
The following is a quotation of the first paragraph of 35 U.S.C. § 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. § 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-7 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. § 112, the inventors, at the time the application was filed, had possession of the claimed invention.
a. Written description support for “Simulating”
Independent claim 1 recites:
A method for determining placement of a plurality of simulated antennas of a simulated distributed antenna system for handling simulated MIMO signals in a simulated environment comprising:
at a first simulated location within the simulated environment, simulating communication of a first simulated MIMO signal by a first remote unit over a first simulated air interface in the simulated environment;
at a second simulated location within the simulated environment, simulating communication of a second simulated MIMO signal by a second remote unit over a second simulated air interface in the simulated environment;
the first simulated location and the second simulated location arranged within the simulated environment to provide overlapping simulated signal coverage of both the first simulated MIMO signal and the second simulated MIMO signal at a third simulated location in the simulated environment; and
analyzing at least a first simulated received power of the first simulated MIMO signal and a second simulated received power of the second simulated MIMO signal at the third simulated location in the simulated environment.
’761 patent, Claim 1.
Each claim element describes a simulated aspect of an overall method for determining placement of a plurality of simulated antennas of a simulated distributed antenna system for handling simulated MIMO signals in a simulated environment.
“Simulat[ing]” is discussed in the ’761 patent at Abstract, 2:48-62, 16:56-17:12. Specifically, the ’761 patent suggests that “users can employ a ray-tracing simulator, algorithm, or other equivalent simulation to determine the optimized position of each antenna to provide a maximum C within an environment or to optimize the operation of a system for either MU-MIMO or SU-MIMO modes of operation. As such, embodiments of the invention, and particular embodiments of the invention that utilize the sequence of operations illustrated in FIG. 15 and FIG. 16, can be performed by a computing system, or otherwise integrated into program code executed by the computer system.”
An attempt to determine the written description support for these simulating claim elements of claims 1-7 fails at the outset. Fundamentally, each of these limitations rely on simulating communication of a first simulated MIMO signal at a simulated first location and simulating communication of a second simulated MIMO signal at a simulated second location. The sequence of operations at FIG. 15 and FIG. 16 of the ’761 patent begin with deploying a first antenna and deploying a second antenna. See ’761 patent, FIGS. 15 and 16. However, the ’761 patent does not appear to describe in any way how these operations are carried out in a simulated environment. Accordingly, process steps corresponding to these operations, or potential steps that rely on these operations, in the context of claims 1-7 are not adequately described in the ’761 patent specification. At least because of this deficiency, the simulating steps, and the steps of making determinations based on the simulating, as recited in claims 1-7, lack written description support under 35 U.S.C. § 112.
2. Rejections under U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA ), second paragraph
The following is a quotation of 35 U.S.C. § 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. § 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. § 112, the applicant), regards as the invention.
a. Scope of elements interpreted as invoking with 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph
For a computer-implemented 35 U.S.C. § 112(f) claim limitation, the specification must disclose an algorithm for performing the claimed specific computer function, or else the claim is indefinite under 35 U.S.C. § 112(b). See Net MoneyIN, Inc. v. Verisign. Inc., 545 F.3d 1359, 1367, 88 USPQ2d 1751, 1757 (Fed. Cir. 2008). See also In re Aoyama, 656 F.3d 1293, 1297, 99 USPQ2d 1936, 1939 (Fed. Cir. 2011) ("[W]hen the disclosed structure is a computer programmed to carry out an algorithm, ‘the disclosed structure is not the general purpose computer, but rather that special purpose computer programmed to perform the disclosed algorithm.’") (quoting WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349, 51 USPQ2d 1385, 1391 (Fed. Cir. 1999)).
As noted above in Section IV, the scope of the “simulat[ing]” elements of claims 1-20 cannot properly be determined because the ’761 patent fails to describe an algorithm corresponding to the function of the various “processor” and “circuit” elements recited in these claims. Accordingly, claims 1-20 that recite these elements are indefinite.
b. Scope of relative terminology
When a subjective term is used in the claim, the examiner should determine whether the specification supplies some objective standard for measuring the scope of the term. Some objective standard must be provided in order to allow the public to determine the scope of the claim. A claim term that requires the exercise of subjective judgment without restriction may render the claim indefinite. In re Musgrave, 431 F.2d 882, 893, 167 USPQ 280, 289 (CCPA 1970). Claim scope cannot depend solely on the unrestrained, subjective opinion of a particular individual purported to be practicing the invention. Datamize LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350, 75 USPQ2d 1801, 1807 (Fed. Cir. 2005).
As noted above, the term ”capacity for [simulated] MIMO communications . . .” in claims 2, 9, 18, and 21-35 is a relative term which renders the claim indefinite. The term “capacity for [simulated] MIMO communications . . .” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
As noted above, the term “capacity threshold” in claims 7, 14, 16, and 34 is a relative term which renders the claim indefinite. The term “capacity threshold” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
As noted above, the term “signal-to-noise and interference ratio associated with at least one of the first MIMO signal or the second MIMO signal at the third location in the environment” in claim 26 is a relative term which renders the claim indefinite. The term “signal-to-noise and interference ratio associated with at least one of the first MIMO signal or the second MIMO signal at the third location in the environment” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be rea