AWAD, Yassin Aden. et al.

Patent Trials and Appeals Board

Dec 27, 2019

14993636 - (D) (P.T.A.B. Dec. 27, 2019)

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.
14/993,636 01/12/2016 Yassin Aden AWAD 2209650.00309US2 1814
24395 7590 12/27/2019
WILMERHALE/DC
1875 PENNSYLVANIA AVE., NW
WASHINGTON, DC 20006
EXAMINER
D AGOSTA, STEPHEN M
ART UNIT PAPER NUMBER
2414
NOTIFICATION DATE DELIVERY MODE
12/27/2019 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):
scott.barrett@wilmerhale.com
whipusptopairs@wilmerhale.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YASSIN ADEN AWAD, YASUSHI MARUTA, and
TOSHIFUMI SATO
Appeal 2018-004842
Application 14/993,636
Technology Center 2400
Before BRADLEY W. BAUMEISTER, MICHAEL J. STRAUSS, and
RUSSELL E. CASS, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 6, 11, 12, 15–18, and 21–24, which constitute all
claims pending in this application. Appeal Br. 14–18, Claims Appendix.2
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. Appellant identifies the real party in interest as the NEC
Corporation. Appeal Brief filed December 11, 2017 (“Appeal Br.”), 2.
2 Rather than repeat the Examiner’s positions and Appellant’s arguments in
their entirety, we refer to the above mentioned Appeal Brief, as well as the
following documents for their respective details: the Final Office Action
mailed July 7, 2017 (“Final Act.”); the Examiner’s Answer mailed February
Appeal 2018-004842
Application 14/993,636

2

CLAIMED SUBJECT MATTER
Appellant describes the present invention as follows:
The present invention relates to a cellular communication
system in which a base station communicates with a plurality of
mobile communication devices. Spec., Abstract.
Independent claim 1, reproduced below with a dispositive limitation
emphasized in italics, illustrates the appealed claims:
1. A mobile communication device which communicates
with a communication apparatus, the mobile communication
device comprising:
a memory storing instructions; and
one or more processors configured to execute the
instructions to:
receive a physical downlink control channel (PDCCH);
receive a first demodulation reference signal (DMRS) and
a second DMRS;
receive a first enhanced PDCCH and a second enhanced
PDCCH; and
demodulate the first enhanced PDCCH based on the first
DMRS and the second enhanced PDCCH based on the second
DMRS,
wherein the first DMRS is associated with the first
enhanced PDCCH,
wherein the second DMRS is associated with the second
enhanced PDCCH,
wherein the first DMRS is transmitted, from the
communication apparatus, on a first two antenna ports, and
wherein the second DMRS is transmitted, from the
communication apparatus, on a second two antenna ports.

5, 2018 (“Ans.”); and the Reply Brief filed April 5, 2018 (“Reply Br.”).
Oral argument was held on December 9, 2019. A copy of the transcript will
be added to the record in due course.
Appeal 2018-004842
Application 14/993,636

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STATEMENT OF THE REJECTIONS3
The Examiner bases the prior-art rejections on the following
references:
Name Reference Date
Nam et al. US 2011/0103324 Al May 5, 2011
Fong et al. US 2011/0170496 Al July 14, 2011
Kim et al. US 2011/0194536 Al Aug. 11, 2011

Claims 1, 6, 11, 12, 15–17, and 21–23 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Fong, Kim, and Nam. Final Act. 5–11.
Claims 18 and 24 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Fong, Nam and/or Kim. Final Act. 11–14.

STANDARD OF REVIEW
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

DETERMINATIONS AND ARGUMENTS
The Examiner finds Fong discloses the limitations of claim 1 except
for the requirement for both first and second enhanced physical downlink
control channels (ePDCCHs) wherein a second demodulated reference
signal (DM-RS) is associated with the second ePDDCH and is transmitted
from the communications apparatus on a second two antenna ports. Final

3 A nonstatutory double patenting rejection was overcome by the filing of a
terminal disclaimer. Ans. 3.
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Application 14/993,636

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Act. 5–7. To address the noted deficiency, the Examiner finds “Kim teaches
using multiple DM-RS antenna ports for a single [user equipment (UE), (i.e.,
the mobile communications device of claim 1)] and support for [multiple
input multiple output (MIMO)] where the [evolved Node B) (eNB) (i.e.,
base station or the communications apparatus referenced by claim 1)] can
transmit data on at least 3 DM-RS antenna ports to one/more UE’s.” Id.
at 7. The Examiner further finds that “Nam teaches the ability to transmit
data to a user using a SUBSET of ANTENNA PORTS.” Id. at 8.
According to the Examiner,
It would have been obvious to one skilled in the art at the
time of the invention, to modify Fong, such that both first and
second E-PDCCH’s and wherein the second DMRS is associated
with the second enhanced PDCCH, on a first two antenna ports
(for the first DMRS), wherein the second DMRS is transmitted,
from the communication apparatus, on a second two antenna
ports to provide multiple D[M]RS’s for E-PDCCH reception/
demodulation across multiple antenna ports for MIMO
transmission (which is per the new standard, more optimal than
SISO, etc.).
Id. at 9.
Appellant contends
[T]he combination does not disclose a second enhanced
PDCCH based on a second DMRS, where the first DMRS and
second DMRS are associated with the first enhanced PDCCH
and second enhanced PDCCH, respectively, and where the
communication apparatus transmits the first DMRS and second
DMRS from a first two antenna ports and second two antenna
ports, respectively.
Appeal Br. 11.
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Application 14/993,636

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The Examiner responds, repeating the earlier finding that Kim teaches
using multiple DMRS/DM-RS antenna ports for a single UE and support for
MIMO using multiple antenna ports. Ans. 6. The Examiner further finds:
Nam teaches the ability to transmit data to a user using
various subset(s) of antenna ports (which dovetails with Fang’s
figure 10 and Para #100). Hence any subset of antennas (such as
the DMRS signals being transmitted on first/second antenna
ports - Note that the claim does not state that the ports are
different, just that they are identified as first/second antenna
ports).
Id.
The Examiner concludes that “[t]he references combine to teach using
different/multiple antenna ports AND the transmitting of multiple DMRS,
e-PDCCH signals, that is, the ability to transmit first/second e-PDCCH’s
/DMRS’s on multiple antenna ports (along with how they would correlate to
each other for demodulation).” Id. at 7.
Appellant replies,
The Examiner’s Answer . . . asserts that Nam teaches the ability
to transmit data to a user using various subsets of antenna ports.
Examiner’s Answer at p. 6. However, even if Nam arguably
discloses transmitting data using subsets of antenna ports, the
cited portions of Nam at most arguably disclose a first PDCCH.
Nam at [0024]-[0009], [0038]. That is, like Fong and Kim, cited
portions of Nam also fail to disclose a second DMRS or a second
PDCCH, let alone a second enhanced PDCCH. Id. Therefore,
Nam also fails to disclose, teach, or suggest one or more
processors configured to execute the instructions to receive a
second DMRS, receive a second PDCCH, and demodulate the
second enhanced PDCCH based on the second DMRS; the
second DMRS is associated with the second enhanced PDCCH;
Appeal 2018-004842
Application 14/993,636

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and the second DMRS is transmitted on a second two antennae
ports, as recited in claim 1.
Reply Br. 4.

ANALYSIS
Appellant’s argument persuades us that the Examiner’s rejection is in
error. As a matter of claim construction, we disagree that the “first two
antenna ports” and the “second two antenna ports” may be the same two
antenna ports. Where a claim lists elements separately, the clear implication
is that those elements are distinct components of the patented invention.
Becton, Dickinson and Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249,
1254 (Fed. Cir. 2010) (citing Gaus v. Conair Corp., 363 F.3d 1284, 1288
(Fed. Cir. 2004); Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1404–
05 (Fed. Cir. 1996)). Thus, it is insufficient that Nam discloses multiple
antenna ports if, as here, Nam in combination with Fong and Kim fails to
teach or suggest the second DMRS being transmitted on a second two
antennae distinct from the first two antennae used to transmit the first
DMRS. Because the Examiner fails to find the prior art teaches or suggests
the first DMRS is transmitted on the first two antenna ports and the second
DMRS is transmitted on the second two antenna ports that are distinct from
the first two antenna ports, we do not sustain the rejection of independent
claims 1, 6, 11, and 12. For the same reason, we do not sustain the rejection
of claims 15–18 and 21–24, which depend from claims 11 and 12. Because
we agree with at least one of the arguments advanced by Appellant, we need
not reach the merits of Appellant’s other arguments.
Appeal 2018-004842
Application 14/993,636

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ISSUES NOT CONSIDERED
We note, in an ex parte appeal, the Board “is basically a board of
review—we review . . . rejections made by patent examiners.” Ex parte
Gambogi, 62 USPQ2d 1209, 1211 (BPAI 2001). “The review authorized by
35 U.S.C. Section 134 is not a process whereby the examiner . . . invite[s]
the [B]oard to examine the application and resolve patentability in the first
instance.” Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999). Because
we are a board of review and not a place of initial examination, we do not
engage in a de novo examination supplementing the Examiner’s findings in
this particular case. Although the Board is authorized to reject claims under
new grounds pursuant to 37 C.F.R. § 41.50(b), no inference should be drawn
when the Board elects not to do so. See Manual of Patent Examining
Procedure (MPEP) § 1213.02 (9th Ed., Mar. 2014).
Furthermore, our decision is limited to the findings before us for
review. The Board does not “allow” claims of an application. Rather, the
Board’s primary role is to review adverse decisions of examiners including
the findings and conclusions made by the Examiner. See 37 C.F.R.
§ 41.50(a)(1) (“The Board, in its decision, may affirm or reverse the decision
of the examiner in whole or in part on the grounds and on the claims
specified by the examiner.”). Therefore, despite this Decision reversing the
Examiner’s rejection, no inference should be made as to whether an
alternative claim construction or other prior art may exist that renders the
claims unpatentable.
For example, claim 1 is directed to a mobile communication device
and claim 11 to a method of operating such a device. Both claims recite that
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the first and second demodulation reference signals (DMRS) are transmitted
on respective first and second pairs of antenna ports from a communication
apparatus. That is, the claims specify how the inferentially recited
communication apparatus transmits the DMRS to the affirmatively claimed
mobile communication device. As explained above, we reverse the
obviousness rejection because the Examiner and Appellant agree that the
recitations of the pairs of antenna ports further limit the structures of the
mobile communication device, as claimed. Final Act. 7–9; Appeal Br. 9–11.
However, Appellant’s Specification indicates that beamforming is
employed in order to focus beams emitted from the communication
apparatus in a particular direction, and the Specification further indicates
that the apparatus’s pair of antennas produce beamformed signals by
adjusting the phase, and possibly gain, of each stream of signals transmitted
from each antenna. Spec. 29:11–30–2.
As such, we question whether and to what extent these claims’
recitations of how the inferentially claimed communication apparatus
transmits a beamformed signal necessarily further limits or distinguishes
over the cited art, the structure of the affirmatively claimed mobile
communication device that receives the signal, as recited in claim 1.
Likewise, we question whether transmission of beamformed signals limits or
distinguishes the steps performed by the mobile communication device, as
recited in claim 11. Restated, we question whether a mobile communication
device necessarily must have any additional components or functionality to
receive a beamformed signal, as opposed to a non-beamformed signal.
Appeal 2018-004842
Application 14/993,636

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As another example of an issue we decline to resolve, the claims
recite a first and second enhanced PDCCH (ePDCCH). Counsel for
Appellant indicates at oral argument that the term “enhanced PDDCH” is not
synonymous with a PDCCH that uses beamforming technology. Rather, the
use of beamforming is just one example of an enhanced PDDCH. Moreover,
Counsel for Appellant indicates that the term “enhanced” is a relative term
with a meaning that may change relative to the state of the technology:
JUDGE BAUMEISTER: If I can interrupt for a second, before
we get into what the art teaches, if you can help me out
understanding what constitutes an enhanced PDCCH and what
makes it enhanced as opposed to a conventional PDCCH.
MR. NEMTZOW: Certainly, good question. So enhanced
PDCCH is a PDCCH that includes some sort of additional
technology compared to a regular conventional PDCCH. Is that
helpful?
JUDGE BAUMEISTER: Is that an objective difference, or is
that relative to what point in time we’re talking about?
MR. NEMTZOW: So I think that it could be relevant to what
point in time you’re talking about. And I think at the time that
this application was filed, one of ordinary skill would understand
what kinds of improvements or additional functionality would be
included in enhanced PDCCH.
And one of those that’s disclosed, at least in our application,
would be beam forming which as Your Honors may know is a
technology that allows signals to be geographically located,
right?
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Application 14/993,636

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So you can send a signal instead of broadcasting it to a big, large
area and specifically geographically target, for example, a cell
phone using that technology.
Transcript 6–7 (emphasis added).
For these reasons, we question whether the claims’ recitation of the
first and second enhanced PDDCHs renders sufficiently definite the metes
and bounds of claim protection being sought. When a term of degree is used
in a claim, the Specification must provide some standard for measuring the
requisite degree to meet the definiteness requirement of 35 U.S.C. § 112.
Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1351 (Fed. Cir.
2005) (citation omitted).
However, the issue of definiteness was not raised on appeal, so we
leave it to the Examiner to consider this issue, as well, upon any further
prosecution on the merits. Ex parte Frye, 94 USPQ2d at 1075 (The Board
reviews the appealed rejections for error based upon the issues identified by
Appellant, and in light of the arguments and evidence produced thereon).

Appeal 2018-004842
Application 14/993,636

11

CONCLUSION
We reverse the Examiner’s rejection of claims 1, 6, 11, 12, 15–18,
and 21–24.
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 6, 11, 12,
15–17, 21–
23
103 Fong, Kim, Nam 1, 6, 11, 12,
15–17, 21–23
18, 24 103 Fong, Nam/Kim 18, 24
Overall
Outcome
103 1, 6, 11, 12,
15–18, 21–24

REVERSED