Boon Loong. Ng et al.

Patent Trials and Appeals Board

Aug 28, 2019

14930453 - (D) (P.T.A.B. Aug. 28, 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.
14/930,453 11/02/2015 Boon Loong Ng 2014.11.004.SR0 6227
106809 7590 08/28/2019
Docket Clerk - SAMS
P.O. Drawer 800889
Dallas, TX 75380
EXAMINER
MUSA, ABDELNABI O
ART UNIT PAPER NUMBER
2472
NOTIFICATION DATE DELIVERY MODE
08/28/2019 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):
munckwilson@gmail.com
patent.srad@samsung.com
patents@munckwilson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte BOON LOONG NG, JIANZHONG ZHANG,
THOMAS DAVID NOVLAN, ARIS PAPASAKELLARIOU,
and EKO ONGGOSANUSI1
________________

Appeal 2018-007961
Application 14/930,453
Technology Center 2400
________________

Before BRADLEY W. BAUMEISTER, ERIC B. CHEN, and
MICHAEL M. BARRY, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–20. App. Br. 9–17.2 We have jurisdiction under
35 U.S.C. § 6(b). We affirm-in-part.
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we
enter a new ground of rejection for claims 1–5 under 35 U.S.C. § 112(b).

1 Appellants list Samsung Electronics, Co. LTD. as the real party in interest.
Appeal Brief filed March 5, 2018 (“App. Br.”) 1.
2 In this Decision, we refer to the above-mentioned Appeal Brief, as well as
the following documents, for their respective details: the Final Action
mailed Oct. 3, 2017 (“Final Act.”); the Examiner’s Answer mailed May 31,
2018 (“Ans.”); and the Reply Brief filed July 30, 2018 (“Reply Br.”).
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STATEMENT OF THE CASE
Appellants describe the present invention as follows:
Claim 1 defines a base station that treats transmission of a
discovery reference signal and transmission of data over a busy
channel differently. For transmission of the discovery reference
signal, when the channel is busy, the base station initiates a
listen-before-talk protocol based on a single sensing interval—
that is, if the channel is initially determined to be busy but then
is detected to be idle, the base station keeps listening during
every transmission opportunity and transmission of the discovery
reference signal will occur whenever the base station determines
that the channel is no longer busy (as soon as the channel is no
longer busy). For transmission of data, on the other hand, the
base station initiates a listen-before-talk protocol with a random
back off interval—that is, if the channel is initially determined to
be busy, transmission of the data will be deferred for at least
some (randomly selected) number of subsequent transmission
opportunities before another check is made to determine whether
the channel is busy. In addition, the back-off counter for the
listen-before-talk protocol with a random back off interval is not
decremented while the discovery reference signal is being
transmitted.
In Claim 1, therefore, transmission of a discovery
reference signal over a busy channel is prioritized over
transmission of data over the same channel in two manners: the
listen-before-talk protocol initiated for transmission of the
discovery reference signal allows immediate transmission once
the channel becomes available, whereas the listen-before-talk
protocol initiated for the data requires waiting at least some
(random) number of transmission opportunities before
attempting to transmit (so that transmission of the discovery
reference signal will always “go first”); and the listen-before-talk
protocol initiated for the data does not decrement the back-off
counter value while the discovery reference signals are being
transmitted on the channel, ensuring that transmission of the
discovery reference signal is completed before transmission of
the data may be attempted.
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App. Br. 10–11.
Independent claim 6, reproduced below, illustrates the claimed
invention:3
6. A base station (BS), comprising:
a transceiver; and
processing circuitry coupled to the transceiver and
configured to:
generate for transmission at least one of a discovery
reference signal (DRS) or a data signal;
initiate a listen-before-talk (LBT) protocol based on
a single sensing interval in order to access a channel for
transmission of the DRS in contiguous orthogonal
frequency-division multiplexing (OFDM) symbols; and
initiate an LBT protocol with random back-off in
order to access a channel for transmission of the data
signal, wherein a back-off counter value of the LBT
protocol with random back-off does not decrement when
the DRS is transmitted in the channel.

THE REJECTION
Claims 1–20 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Koutsimanis (US 2016/0249350 A1; published Aug. 25, 2016) and
Valliappan (US 2015/0373582 A1; publ. Dec. 24, 2015). Final Act. 3–7.
The Examiner finds that Koutsimanis discloses most of the limitations
of independent claim 1 including the use of an LBT protocol with random
back-off (Final Act. 3–4), but finds that Koutsimanis “does not explicitly

3 Even though Appellants primarily focus their arguments on independent
claim 1, for reasons that will be explained below in relation to the analysis of
claims 1–5, independent claim 6 illustrates the claimed subject matter more
clearly than does claim 1.
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teach wherein a back-off counter value of the LBT with random back-off
does not decrement when the DRS is transmitted in the channel” (id. at 4).
The Examiner finds that Valliappan teaches this missing functionality. Id.
(citing Valliappan ¶¶ 36, 71; Figs. 3, 7). The Examiner concludes that “it
would have been obvious to have modified Koutsimanis by the teaching of
Valliappan to have the random back-off counter not decrements when the
DRS is transmitted in the channel in order to indicate that the channel may
be used as soon as it is detected as available.” Id. at 5 (citing Valliappan
¶ 71; Fig. 7) (emphasis omitted).
We review the appealed rejection for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).

CLAIMS 6–10
Appellants present multiple arguments regarding the obviousness of
the claims. App. Br. 9–17. For example, Appellants argue that the cited
passage of Koutsimanis does not disclose a listen-before-talk protocol based
on a single sensing interval. Id. 14. Appellants also argue that
“Koutsimanis does not suggest implementing listen-before-talk differently
for reference and synchronization signal transmission than for data
transmission, or not decrementing a back-off counter for data transmission
while reference signal transmission it taking place.” Id. Appellants’
arguments are persuasive.
Appellants’ Specification explains that an LBT protocol based on a
single sensing interval and an LBT protocol with random back-off are
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distinct protocols. Cf. Spec. ¶ 146 (“An example of a ‘frame-based’ LBT
protocol is an LBT protocol based on a single sensing interval and the two
terms are used interchangeably in this disclosure”) with id. ¶ 148 (explaining
that an LBT protocol with a back-off mechanism is a load-based LBT
protocol). The Examiner does not sufficiently explain how Koutsimanis’s
disclosed protocol reasonably may be interpreted to simultaneously read on
both of the distinct protocols being claimed.
Furthermore, even if we assume, solely for the sake of argument, that
the combined cited art does suggest both an LBT protocol based on a single
sensing interval and an LBT protocol with a back-off mechanism, the
Examiner has not sufficiently explained why one of ordinary skill would
have been motivated to simultaneously use the first protocol for the
transmission of the discovery reference signals and the second protocol for
the transmission of data signals.
Accordingly, we do not sustain the rejection of independent claim 6 or
of claims 7 through 10, which depend from claim 6.

CLAIMS 1–5
Independent claim 1 reads as follows:
1. A method of implementing a listen-before-talk (LBT)
protocol by a base station (BS), the method comprising:
generating for transmission at least one of a discovery
reference signal (DRS) or a data signal;
initiating an LBT protocol based on a single sensing
interval in order to access a channel for transmission of the DRS
in contiguous orthogonal frequency-division multiplexing
(OFDM) symbols; and
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initiating an LBT protocol with random back-off in order
to access a channel for transmission of the data signal, wherein a
back-off counter value of the LBT protocol with random back-
off does not decrement when the DRS is transmitted in the
channel.
Claim 1 recites a method of implementing protocols on a base station.
But claim 1 contains a claim-drafting error that renders the claim unclear.
Language in a claim is unclear if it is “ambiguous, vague, incoherent,
opaque, or otherwise unclear in describing and defining the claimed
invention,” In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014), or if it is
“is amenable to two or more plausible claim constructions,” Ex parte
Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential).
Specifically, the first limitation of claim 1 recites that at least one of a
DRS or a data signal is generated. That is, the first limitation only requires
one signal be generated. But the claim subsequently sets forth two
additional limitations that together require initiating both (1) the single-
sensing-interval LBT protocol for the generated discovery reference signal
and (2) the random back-off LBT protocol for the generated data signal.
And both of these two protocols only would be initiated if both signals were
generated.
As such, it is not reasonably clear whether anticipation of claim 1
requires generating both the DRS and data signals or whether the claim
would be anticipated if only one of the signals is generated and only the one
associated protocol is initiated.
We therefore exercise our discretionary authority under 37 C.F.R.
§ 41.50(b) and newly reject claim 1 under 35 U.S.C. § 112(b) for
indefiniteness. 35 U.S.C. § 112(b) (“The specification shall conclude with
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one or more claims particularly pointing out and distinctly claiming the
subject matter which the inventor or a joint inventor regards as the
invention”). We likewise reject claims 2–5 because none of these dependent
claims cures the ambiguity presented in claim 1.
Furthermore, because determining the metes and bounds of claim
protection being sought for claims 1–5 would require undue speculation, we
summarily reverse the Examiner’s obviousness rejection of these claims.
See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (holding that the Examiner
and the Board were wrong in relying on what, at best, were speculative
assumptions as to the meaning of the claims and in basing a prior-art
rejection thereon).

CLAIMS 11–20
Independent claims 11 and 16 read as follows:
11. A method of implementing a listen-before-talk (LBT)
protocol by a mobile station (MS), the method comprising:
receiving a discovery reference signal (DRS) transmitted
from a base station (BS) via a channel using an LBT protocol
based on a single sensing interval, wherein the DRS is received
in contiguous orthogonal frequency-division multiplexing
(OFDM) symbols; and
receiving a data signal transmitted from the BS via the
channel using an LBT protocol with random back-off.
16. A mobile station (MS), comprising:
a transceiver; and
processing circuitry coupled to the transceiver and
configured to:
detect a reception, via the transceiver, of a discovery
reference signal (DRS) transmitted from a base station
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(BS) via a channel using an LBT protocol based on a
single sensing interval, wherein the DRS is received in
contiguous orthogonal frequency-division multiplexing
(OFDM) symbols; and
detect a reception, via the transceiver, of a data
signal transmitted from the BS via the channel using an
LBT protocol with random back-off.
Appellants present arguments only with respect to independent
claim 1. App. Br. 9–17. Appellants argue the patentability of claims 11–20
based on the fact that independent claims 11 and 16 “recite analogous
limitations to those discussed” in relation to claim 1. App. Br. 17.
Independent claims 11 and 16 differ from independent claims 1 and 6
in at least one significant manner though. Claims 1 and 6 are directed
respectively to a method implemented in a base station (claim 1) and the
base station, itself (claim 6). Claims 11 and 16, on the other hand, are
directed respectively to a method implemented in a mobile station (claim 11)
and the mobile station, itself (claim 16).
This is relevant because Appellants’ listen-before-talk protocol takes
place at the base station. See, e.g., App. Br. 5 (“Claim 1 defines a base
station that treats transmission of a discovery reference signal and
transmission of data over a busy channel differently”) (emphasis added).
Appellants present no persuasive arguments, much less supporting evidence,
that the mobile station must possess any additional functionality to receive
discovery request signals or data signals from a base station that performs
the LBT protocol, as claimed. See generally App. Br. 9–17 (only arguing
the functionality that resides in the base station).
Restated, the current record indicates that it would be irrelevant from
the standpoint of the mobile station whether the base station uses the
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claimed LBT protocol or any other protocol. The current record indicates,
instead, that the protocol used by the base station does not change the
content of the DRS signals or data signals, and the mobile station will
receive these signals in identical form regardless of what protocol the base
station uses to transmit them. In other words, the claim language that the
base station uses distinct LBT protocols based on a single sensing interval
and random back-off constitute intangible properties of the signals from the
perspective of a mobile station that receives the signals.
Appellants do not present any persuasive arguments that the cited
references, either alone or in combination, fail to teach mobile stations that
receive DRS and data signals. App. Br. 9–17; Reply Br. 2–5. Accordingly,
Appellants have not demonstrated that the Examiner erred in rejecting
claims 11–20 as obvious over the cited art.

DECISION
The Examiner’s decision rejecting claims 11–20 is affirmed.
The Examiner’s decision rejecting claims 6–10 is reversed.
The Examiner’s decision rejecting claims 1–5 is summarily reversed.
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we
enter a new ground of rejection for claims 1–5 under 35 U.S.C. § 112(b) for
indefiniteness.
Rule 41.50(b) provides that “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.” Rule
41.50(b) also provides the following guidance:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
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of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new Evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the prosecution will be
remanded to the examiner. The new ground of
rejection is binding upon the examiner unless an
amendment or new Evidence not previously of
Record is made which, in the opinion of the
examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner
reject the claims, appellant may again appeal to the
Board pursuant to this subpart.
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same Record. The request for rehearing
must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds
upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure (MPEP) § 1214.01
(9th Ed., Rev. 9, Nov. 2015).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)