ALCATEL LUCENT

Patent Trials and Appeals Board

Jun 2, 2021

2019006099 (P.T.A.B. Jun. 2, 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.
15/023,781 03/22/2016 Shin Horng WONG LUTZ 202123US01 2569
48116 7590 06/02/2021
FAY SHARPE/NOKIA
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115-1843
EXAMINER
TRAN, THINH D
ART UNIT PAPER NUMBER
2466
NOTIFICATION DATE DELIVERY MODE
06/02/2021 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):
docketing@faysharpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SHIN HORNG WONG, SIGEN YE, and YU CHEN
____________________

Appeal 2019-006099
Application 15/023,781
Technology Center 2400
____________________

Before JOHN A. EVANS, LARRY J. HUME, and
JAMES W. DEJMEK, Administrative Patent Judges.

DEJMEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1–28. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We affirm.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2018). Appellant identifies
Alcatel Lucent as the real party in interest. Appeal Br. 1.
Appeal 2019-006099
Application 15/023,781

2
STATEMENT OF THE CASE
Introduction
Appellant’s disclosed and claimed invention generally relates to
“random access in a wireless communication system.” Spec. ¶ 1. More
particularly, Appellant’s invention relates to random access procedures for
Coverage Enhanced Machine Type Communication User Equipment (“CE-
MTC UE”). Spec. ¶¶ 2–5, 7. An example of an MTC UE may be a smart
utility meter. See Spec. ¶ 2. According to the Specification, such an MTC
UE might be located in the basement of a building and, accordingly, suffer
from high penetration loss. Spec. ¶ 2. As such, the ability of the MTC UE
to effectively communicate with a network may be compromised. Spec. ¶ 2.
An approach for communicating with a coverage enhanced MTC UE (i.e.,
CE-MTC UE) uses repetition in the transmissions from the user equipment
as well as from the base station (or an enhanced NodeB, eNB). Spec. ¶¶ 3,
5, 7–8.
Claim 1 is representative of the subject matter on appeal and is
reproduced below with the disputed limitations emphasized in italics:
1. A method for random access in a base station, comprising:
receiving from a user equipment repetition transmissions
of a first message including a random access preamble;
repeatedly transmitting to the user equipment a second
message including a random access response, RAR, wherein the
second message is configured to have a characteristic dependent
upon a first repetition level, wherein the first repetition level is
indicative of a repetition level which is to be used by the user
equipment in repeatedly transmitting a third message;
receiving from the user equipment repetition
transmissions of a third message; and
Appeal 2019-006099
Application 15/023,781

3
repeatedly transmitting to the user equipment a fourth
message including a contention resolution.

The Examiner’s Rejections
1. Claims 1–28 stand rejected under 35 U.S.C. § 112(b) as being
indefinite. Final Act. 3–4.
2. Claims 1–6, 9–17, and 20–28 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Yang et al. (US 2016/0165640 A1; June 9,
2016) (“Yang ’640”) and Yang et al. (US 2016/0128011 A1; May 5, 2016)
(“Yang ’011”). Final Act. 4–11.
3. Claims 7 and 18 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Yang ’640, Yang ’011, and Jen (US 2008/0233941 A1;
Sept. 25, 2008). Final Act. 11–12.
4. Claims 8 and 19 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Yang ’640, Yang ’011, and Zhang et al. (US
2017/0094690 A1; Mar. 30, 2017) (“Zhang”). Final Act. 12–13.

ANALYSIS2
Rejection under 35 U.S.C. § 112(b)
The Examiner had rejected claims 1–28 under 35 U.S.C. § 112(b) as
being indefinite. See Final Act. 3–4. Claim 1 recites “a first repetition level
is indicative of a repetition level which is to be used by the user equipment
in repeatedly transmitting a third message” and “receiving from the user

2 Throughout this Decision, we have considered the Appeal Brief, filed
February 22, 2019 (“Appeal Br.”); the Reply Brief, filed August 12, 2019
(“Reply Br.”); the Examiner’s Answer, mailed June 12, 2019 (“Ans.”); and
the Final Office Action, mailed March 26, 2018 (“Final Act.”), from which
this Appeal is taken.
Appeal 2019-006099
Application 15/023,781

4
equipment repetition transmissions of a third message.” (Emphases added.)
Independent claims 12, 23, and 26 recite similar limitations. The Examiner
explains it is unclear whether the second recitation of “a third message” is a
new message or is intended to refer back to the previously recited third
message. See Final Act. 3.
After the Final Office Action, Appellant filed an amendment to the
independent claims changing the second instance of “a third message” to
“the third message.” See Amdt 2–6 (filed Sept. 26, 2018) (emphases
altered). However, in a subsequent Advisory Action, the Examiner did not
indicate that such amendments would be entered. See Adv. Act. 1 (mailed
Oct. 25, 2018). Appellant does not present arguments regarding the
Examiner’s rejection under 35 U.S.C. § 112(b) other than to note that the
proposed amendments (albeit un-entered amendments) are believed to be
sufficient to overcome the Examiner’s rejection.
Because Appellant’s proposed amendments were not entered into the
record by the Examiner, the claims on appeal still contain the identified
antecedent basis issues identified by the Examiner. In addition, the
Examiner maintains the rejection. See Ans. 3. On this record, we
summarily affirm the Examiner’s rejection under 35 U.S.C. § 112(b).

Rejections under 35 U.S.C. § 103
Appellant asserts that Yang ’640 fails to teach “repeatedly
transmitting to the UE a second message including a random access
response, RAR, wherein the second message is configured to have a
characteristic dependent upon a first repetition level, wherein the first
repetition level is indicative of a repetition level which is to be used by the
Appeal 2019-006099
Application 15/023,781

5
user equipment in repeatedly transmitting a third message.” Appeal Br. 6–7;
Reply Br. 4–5. In particular, Appellant argues Yang ’640 describes
parameters (Nr, Nd) that relate to the repeated transmission of RAR and
RAR-PDCCH messages (i.e., the recited second message), but does not
mention a number of repetition times for a UE uplink message for the
claimed third message (i.e., a message in response to the RAR). Appeal
Br. 6 (citing Yang ’640 ¶¶ 96, 107–109); Reply Br. 4–5.
Moreover, Appellant argues that Yang ’640 does not qualify as prior
art. Appeal Br. 5–6; Reply Br. 3–4. More specifically, Appellant explains
that Yang ’640 was filed on July 14, 2014, after Appellant’s effective filing
date of September 27, 2013. Appeal Br. 5. In addition, Appellant asserts
that although provisional application no. 61/858,633 (“the ’633
Provisional”) to which Yang ’640 claims benefit predates Appellant’s
application, “it is drafted in multiple languages” and does not appear to
support paragraphs 136 through 141 of Yang ’640. Appeal Br. 5–6.
Further, Appellant argues that the translated version of the ’633 Provisional
was not filed until after Appellant’s effective filing date. Reply Br. 3–4.
We begin our analysis with a determination of whether Yang ’640
qualifies as prior art.
Yang ’640 is a published National Phase application (application no.
14/903,528), published June 9, 2016, of PCT International Application No.
PCT/KR2014/006889, filed on July 28, 2014. See Yang ’640 [21, 22, 43,
86]. The National Phase application completed all requirements for entry
into the National Stage on January 7, 2016, (i.e., § 371(c)(1),(2) date). See
Yang ’640 [86]. The National Phase application identifies the ’633
Provisional as a related application. See Yang ’640 [60].
Appeal 2019-006099
Application 15/023,781

6
The ’633 Provisional was written in Korean. See ’633 Provisional,
passim. On December 27, 2015, an English translation (i.e., “’633
Provisional (Translated)”), along with a statement of verification, for the
’633 Provisional was filed. In addition, on January 7, 2016, the Yang
applicants amended the specification of the National Phase application to
include a statement claiming benefit to, inter alia, the ’633 Provisional. See
Yang Amdt 1 (filed Jan. 7, 2016). The National Phase application matured
into U.S. Patent No. 9,854,609.
Manual of Patent Examining Procedure (“MPEP”) § 211.01(a) (9th
ed., Rev. 10.2019, June 2020) sets forth the requirements for a later-filed
application to claim the benefit of a prior-filed provisional application under
35 U.S.C. § 119(e). These requirements include that the non-provisional
application or international application be filed no later than 12 months after
the filing date of the provisional application. MPEP § 211.01(a)(1). As
discussed above, the ’633 Provisional was filed on July 26, 2013 and the
PCT International Application was filed on July 28, 2014. Because July 26,
2014 was a Saturday, the PCT International Application was timely filed. In
addition, the prior-filed provisional application must name the inventor or a
co-inventor named in the later-filed international application. MPEP
§ 211.01(a)(2). Here, both the ’633 Provisional and the National Phase
application identify at least one common inventor (e.g., Suckchel Yang).
Further, as discussed above, the National Phase application was amended to
refer to the ’633 Provisional, and such amendment was during the pendency
of the National Phase application. See MPEP § 211.01(a)(3)–(4). In
addition, as discussed above, a translation of the ’633 Provisional and
Appeal 2019-006099
Application 15/023,781

7
statement of accuracy (i.e., verification) were filed previously. See MPEP
§ 211.01(a)(5).
In Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d
1375 (Fed. Cir. 2018), our reviewing court explained that “[f]or a patent to
claim priority from the filing date of its provisional application . . . the
specification of the provisional must . . . [comport with the requirements of
35 U.S.C. § 112] to enable an ordinarily skilled artisan to practice the
invention claimed in the non-provisional application.” Dynamic Drinkware,
800 F.3d at 1378 (citation and internal quotations omitted, emphasis
omitted); see also Amgen Inc. v. Sanofi, 872 F.3d 1367, 1380 (Fed. Cir.
2019) (explaining the requirement of the specification of the provisional
application must provide § 112 ¶ 1 support for the invention claimed in the
non-provisional application).
Based on our review of ’633 Provisional (Translated), we find
adequate support under 35 U.S.C. § 112 ¶ 1 for, inter alia, claim 1 of Yang
’640. Claim 1 of Yang ’640 is reproduced below:
1. A method for performing a random access procedure by a
user equipment (UE) in a wireless communication system
supporting repeated transmission of a same signal, the method
comprising:
repeatedly transmitting a physical random access channel
(PRACH) signal using a PRACH resource; and
receiving a random access response signal in a specific
time interval in response to the PRACH signal,
wherein the random access response signal comprises
information about a repeated transmission number of the
PRACH signal.
In particular, ’633 Provisional (Translated) describes a random access
procedure comprising a UE repeatedly transmitting (a number of times, Np)
Appeal 2019-006099
Application 15/023,781

8
a PRACH preamble; a base station (i.e., eNB) repeatedly transmitting (a
number of times, Nr or Nd) a response including RAR; and in response to
receiving the RAR, the UE repeatedly transmitting (a number of times, Nm)
a PUSCH message. ’633 Provisional (Translated) 59–60. In addition, ’633
Provisional (Translated) describes that the number of repetitions, Nm, for
the UE to transmit the PUSCH message is part of message 3 related
information that “may be signaled through (specific) SIB or RAR.” ’633
Provisional (Translated) 61.
In addition, for similar reasons, we find the identified portions of ’633
Provisional (Translated), inter alia, support paragraphs 96, 105, 107–111,
and 136–141 of Yang ’640.
For the reasons discussed supra, we find Yang ’640 is entitled to
benefit of the filing date of the ’633 Provisional and is, accordingly, prior art
to Appellant’s claimed invention.
Moreover, as discussed above, we find Yang ’640 (as supported by
’633 Provisional) teaches a base station (i.e., eNB) repeatedly transmitting to
the user equipment a second message including a random access response,
RAR, and that the RAR may contain a repetition level (i.e., Nm) used by the
user equipment in sending a message in response to the RAR. See Yang
’640 ¶¶ 96, 105, 107–111, 136–141; see also Ans. 3–8.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of independent
claim 1. Appellant advances similar arguments with respect to the
Examiner’s rejection of independent claims 12, 23, and 26. See Appeal
Br. 7–12. For similar reasons to those related to our discussion of claim 1,
we sustain the Examiner’s rejection of independent claims 12, 23, and 26.
Appeal 2019-006099
Application 15/023,781

9
In addition, we sustain the Examiner’s rejection of claims 2–6, 9–11, 13–17,
20–22, 24, 25, 27, and 28, which depend therefrom and were not argued
separately. See Appeal Br. 7–12; see also 37 C.F.R. § 41.37(c)(1)(iv).
Regarding dependent claims 7, 8, 18, and 19, Appellant also argues
the additionally cited references (Jen and Zhang) fail to overcome the
alleged deficiencies relating to the rejection of the independent claims.
Because we do not find the Examiner’s rejection of the independent claims
to be in error, we are not apprised of error regarding the rejections of
dependent claims 7, 8, 18, and 19. Accordingly, we sustain the Examiner’s
rejections of these claims.

CONCLUSION
We affirm the Examiner’s decision rejecting claims 1–28 under
35 U.S.C. § 112(b).
We affirm the Examiner’s decision rejecting claims 1–28 under
35 U.S.C. § 103.

Appeal 2019-006099
Application 15/023,781

10
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–28 112(b) Indefiniteness 1–28
1–6, 9–17,
20–28
103 Yang ’640, Yang
’011
1–6, 9–17,
20–28

7, 18 103 Yang ’640, Yang
’011, Jen
7, 18
8, 19 103 Yang ’640, Yang
’011, Zhang
8, 19
Overall
Outcome
1–28

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended. 37 C.F.R. § 1.136(a)(1)(iv); see 37 C.F.R.
§ 41.50(f).

AFFIRMED