ALCATEL LUCENTDownload PDFPatent Trials and Appeals BoardJun 2, 20212019006099 (P.T.A.B. Jun. 2, 2021) Copy Citation 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 Copy with citationCopy as parenthetical citation