Ex Parte Cheng et alDownload PDFPatent Trial and Appeal BoardJan 28, 201612611170 (P.T.A.B. Jan. 28, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/611, 170 11103/2009 Fang-Chen Cheng 46368 7590 02/01/2016 CARLSON, GASKEY & OLDS, P,CJAlcatel-Lucent 400 W MAPLE RD SUITE 350 BIRMINGHAM, MI 48009 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 ATTORNEY DOCKET NO. 67108-383PUS1; Cheng 36-2 CONFIRMATION NO. 1956 EXAMINER HUYNH, NAM TRUNG ART UNIT PAPER NUMBER 2645 NOTIFICATION DATE DELIVERY MODE 02/01/2016 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): ptodocket@cgolaw.com cgolaw@yahoo.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FANG-CHEN CHENG, SAID TA TESH, and JUNG A. LEE Appeal2014-003109 Application 12/611,170 Technology Center 2600 Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1-5 and 7-20. Claim 6 is cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We Affirm. INVENTION Appellants' claimed invention relates to a carrier aggregation for optimizing spectrum utilization. (Title). Claim 1, reproduced below, is representative of the subject matter on appeal: Appeal2014-003109 Application 12/611,170 1. A method of allocating bandwidth to a call for at least one network, comprising the steps of: allocating 10 MHz of the bandwidth for a downlink between a base station and at least one user; allocating 5 MHz of the bandwidth for an uplink between the at least one user and the base station; aggregating a selected bandwidth to the allocated 5 MHz for the uplink, the selected bandwidth being at least one of an additional 3 MHz band or two additional 1.4 MHz bands utilizing less than all of the allocated bandwidth for uplink traffic; and providing a guard band on both sides of the allocated bandwidth for the uplink. (Contested limitations emphasized). 1 1 We note claim 1 requires allocating a bandwidth of 10 Mhz for a downlink and allocating a bandwidth of 5 Mhz for an uplink. The "utilizing" step of claim 1 requires: "utilizing less than all of the allocated bandwidth for uplink traffic .... " (Emphasis added). It is unclear \vhether "utilizing less than all of the allocated bandwidth" refers to just the 5 Mhz of bandwidth allocated for an uplink, or if it is intended to more broadly refer to "all of the allocated bandwidth" including the 10 Mhz bandwidth allocated forthe downlink. (Claim 1, i.e., 5 + 10 = 15 MHz). Thus, it appears claim 1 is amenable to two or more plausible claim constructions under a broad but reasonable interpretation. In the event of further prosecution, we leave it to the Examiner to consider the holding of PT AB precedential Decision Ex parte Miyazaki, as applied to independent claim 1, and the claims which depend thereon: "[I]f a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim ... indefinite." Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BP AI 2008) (precedential); see also In re Packard, 751F.3d1307, 1324 (Fed. Cir. 2014) (Plager, J., concurring) ("In my view (and that of the per curiam court), it is within the authority of the USPTO to so interpret the applicable standard."). Although the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn 2 Appeal2014-003109 Application 12/611,170 REJECTION Claims 1-5 and 7-20 are rejected under 35 U.S.C. § 103(a) as being obvious over the combination of Lunttila (U.S. Application Pub. No. 2011/0305211 Al; published Dec. 15, 2011) and Ding (U.S. Application Pub. No. 2008/0240028 Al; published Oct. 2, 2008). CLAIM GROUPING Based on Appellants' arguments (App. Br. 3-5), we decide the appeal of the rejection of claims 1-5 and 7-20 on the basis of representative claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). ANALYSIS We have considered all of Appellants' arguments and any evidence presented. We disagree with Appellants' arguments, and we adopt as our own: ( 1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken; and (2) the reasons and rebuttals set forth in the Examiner's Answer in response to Appellants' arguments. (Ans. 2-3). However, we highlight and address specific findings and arguments for emphasis in our analysis below. Representative Claim 1 Issue: Under§ 103, did the Examiner err by finding the cited Lunttila reference "teaches away" from the invention as recited in Appellants' claim 1: "utilizing less than all of the allocated bandwidth for uplink traffic; and when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02 (9th Ed., Mar. 2014). 3 Appeal2014-003109 Application 12/611,170 providing a guard band on both sides of the allocated bandwidth for the uplin~' (Emphasis added)? Appellants contend Lunttila "teaches away" from utilizing less than all of the allocated bandwidth for uplink traffic, because: [Lunttila] repeatedly states that the teachings of that reference are intended to provide for a larger number of resource blocks than a maximum number of resource blocks associated with an allocated system bandwidth. In other words, the reference teaches to use more than the available bandwidth, which is the opposite of using less than the available bandwidth [as claimed]. (App. Br. 4). Appellants further contend the extended bandwidth of Figure 3 of Lunttila "shows that all of the bandwidth of the allocation (and more) is being used for the uplink and there is no indication of any provision for a guard band." (Id.) Thus, Appellants urge: "regardless of what the Ding reference may teach, the Lunttila reference cannot be modified in a way that goes directly contrary to its express teachings." (App. Br. 5). Regarding Appellants' contention Lunttila purportedly "teaches away" from the claimed invention, we acknowledge "when the prior art teaches away from combining certain known elements, discovery of a successful means of combining them is more likely to be nonobvious." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (citing U.S. v. Adams, 383 U.S. 51-52 (1966)). However, "more likely" is not fully dispositive to our inquiry regarding the ultimate issue of obviousness; rather, it is merely a factor to be considered. (Id.) Our reviewing court guides: "A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led 4 Appeal2014-003109 Application 12/611,170 in a direction divergent from the path that was taken by the applicant." Ricoh Co., Ltd. v. Quanta Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (citations omitted). However, "[a] reference does not teach away ... if it merely expresses a general preference for an alternative invention but does not 'criticize, discredit, or otherwise discourage' investigation into the invention claimed." DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (citation omitted). Here, we find Appellants' argument that Lunttila "teaches away" from "reducing the number of resource blocks used" by "intend[ing] to have a resource allocation including a larger number of resource blocks than a maximum number of resource blocks associated with the particular system bandwidth" (App. Br. 4), is contradicted by evidence of alternative embodiments contemplated by Lunttila. We agree with the Examiner's finding (Final Act. 3, citing claims 8 and 14 of Lunttila) that at least Lunttila's claim 14 (p. 6) teaches or suggests utilizing less than the claimed 5 MHz of allocated bandwidth for uplink traffic, within the limitations recited in Appellants' claim 1. 2 Moreover, the Supreme Court has held the "analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." KSR, 550 U.S. at 418. The Examiner, consistent with this Supreme Court holding, identified that an ordinarily skilled artisan could modify "the bandwidth allocation of Lunttila ... to create guard bands by reducing the effective bandwidth, as taught by 2 See Lunttila, claim 14: "The method of claim 3, where the particular uplink system bandwidth is about 1.4 MHz, .... " 5 Appeal2014-003109 Application 12/611,170 Ding," with a motivation to "eliminate interference between neighboring sub-carriers." (Ans. 3). See also KSR, 550 U.S. at 417 ("When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it . . . . If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability"). No persuasive evidence has been identified by Appellants that Lunttila discredits, criticizes, or otherwise discourages the claimed invention (Claim 1). See DePuy Spine, Inc. 567 F.3d at 1327. Nor have Appellants shown the Examiner's proffered combination of Lunttila and Ding would have resulted in unexpected results, or could not have been implemented by an artisan possessing ordinary skill. On this record, we are not persuaded the Examiner's proffered combination would have been "uniquely challenging or difficult for one of ordinary skill in the art." See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Therefore, by the preponderance of evidence, we are not persuaded of error regarding the Examiner's underlying factual findings and ultimate legal conclusion of obviousness. Accordingly, we sustain the rejection of representative claim 1, and the grouped claims which fall therewith. See Claim Grouping, supra. 6 Appeal2014-003109 Application 12/611,170 DECISION We affirm the Examiner's rejection of claims 1-5 and 7-20 under § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See 37 C.F.R. § 41.50(±). AFFIRMED hh 7 Copy with citationCopy as parenthetical citation