Ex Parte JIA et alDownload PDFPatent Trial and Appeal BoardJan 21, 201612778863 (P.T.A.B. Jan. 21, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121778,863 05/12/2010 82313 7590 01/25/2016 Conley Rose - BlackBerry Files Attn: J. Robert Brown 5601 Granite Parkway, Suite 500 Plano, TX 75024 FIRST NAMED INVENTOR Y ongkang JIA 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. 32850-1-US-PAT 4214-27300 CONFIRMATION NO. 7304 EXAMINER NGUYEN, ANH NGOC M ART UNIT PAPER NUMBER 2473 NOTIFICATION DATE DELIVERY MODE 01125/2016 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): ConleyRoseReporting@dfw.conleyrose.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YONGKANG JIA, JAMES EARL WOMACK, ZHIJUN CAI, and SHOUXING QU Appeal2014-001350 Application 12/778,863 Technology Center 2400 Before KRISTEN L. DROESCH, TERRENCE W. McMILLIN, and MELISSA A. HAAPALA, Administrative Patent Judges. RAAP ALA, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) from a final rejection of claims 21-34. 1 We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. 1 Claims 1-20 have been canceled. App. Br. 14. Appeal2014-001350 Application 12/778,863 CLAIMED INVENTION Claim 21 is exemplary of the subject matter on appeal: 21. A method in a network access equipment, compnsmg: defining a first sounding reference signal burst and a second sounding reference signal burst for a user equipment with multiple transmit antennas, the first sounding reference signal burst being defined for a first antenna, the second sounding reference signal burst being defined for a second antenna, and the first sounding reference signal burst and the second sounding reference signal burst being different. REJECTIONS ON APPEAL Claims 21-34 stand rejected under 35 U.S.C. § 101 as not falling within one of the four statutory categories of invention. Final Act. 2. Claims 21-24, 26-31, and 33 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Kim (US 2011/0261716 Al; Oct. 27; 2011 ). Final Act. 3-5. Claim 34 stands rejected under 35 U.S.C. § 103(a) as being obvious over the combination of RO (US 2009/0316756 Al; Dec. 24, 2009) and Lee (US 2011/0274071; Nov. 10, 2011). Final Act. 5---6. Claims 25 stands rejected under 35 U.S.C. § 103(a) as being obvious over the combination of Kim and Lee. Final Act. 6-7. Claim 32 stands rejected under 35 U.S.C. § 103(a) as being obvious over the combination of Kim and Sarkar (US 2009/0046570 Al; Feb. 19, 2009). Final Act. 7-8. 2 Appeal2014-001350 Application 12/778,863 ISSUES Appellants' contentions present us with the following issues: A) Did the Examiner err in rejecting claims 21-34 under 35 U.S.C. § 101? B) Did the Examiner err in finding Kim discloses first and second sounding reference signal bursts as set forth in independent claim 1? C) Did the Examiner err in finding the combined teachings of Ro and Lee teach or suggest sounding reference signal bursts as set forth in independent claim 34? ANALYSIS We have reviewed the Examiner's rejections in consideration of Appellants' contentions. We disagree with Appellants' conclusions that the Examiner's 35 U.S.C. § 102(e) and 35 U.S.C. § 103(a) rejections of the claims are in error. Appellants have persuaded us the Examiner has failed to estabiish that claims 21--'34 are unpatentabie under 35 U.S.C § 101. Issue A The Examiner finds claims 21-34 do not fall within one of the four statutory categories of invention because a "process" must be tied to another statutory category (such as a particular apparatus), or transform underlying subject matter to a different state or thing. Final Act. 2; Ans. 10. Appellants argue the claims are statutory because the limitation "in a network access equipment" describes the structure where the method is performed. Br. 9- 10. Section 101 specifies four categories of inventions that are patent eligible: processes, machines, manufactures, and compositions of matter. Bilski v. Kappas, 561 U.S. 601 (2010). As defined in 35 U.S.C. § lOO(b), 3 Appeal2014-001350 Application 12/778,863 process means "process, art or method." Claims 21-34 are process (method) claims. Contrary to the Examiner's findings, the Supreme Court has rejected the "machine-or-transformation test" as the sole basis for determining a claim is not a process claim. See Bilski, 561 U.S. at 604. And although there are judicially recognized exceptions that exclude certain claims from patent protection, the Examiner has not taken the position that any of these exceptions apply. 2 Therefore, we determine the Examiner has not established claims 21-34 are not a statutory category of invention and accordingly we do not sustain the 35 U.S.C. § 101 rejection of these claims. 3 Issue B Appellants contend Kim fails to disclose a first sounding reference signal (SRS) burst defined for a first antenna and a second sounding reference signal burst defined for a second antenna recited in claim 1. Br. 10. In support of this contention, Appellants argue Kim "merely describes a single SRS transmission from each antenna." Br. 10-11. We are not persuaded by Appellants' argument. The Examiner construes a "burst" to be "a sequence of signals." Ans. 11. Using this construction, the Examiner finds Kim discloses the user equipment (UE) 2 We have decided the issue before us. In the event of further prosecution, the Examiner is directed to the most recent guidance on patent subject matter eligibility issued since the Supreme Court decision is Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2354 (2014), set forth in 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 74618 (Dec. 16, 2014), and July 2015 Update on Subject Matter Eligibility, 80 Fed. Reg. 45429 (July 30, 2015). 3 We need not determine whether the preamble limitation "in a network access equipment" is entitled to patentable weight and thus decline to reach this issue. 4 Appeal2014-001350 Application 12/778,863 generates (defines) an SRS sequence (burst) for each transmission antenna and that Kim clearly transmits a SRS sequence (burst) from each antenna. Ans. 11-12 (citing e.g., Kim i-fi-f 127-129). We agree with these findings. During examination of a patent application, claims are given their broadest reasonable interpretation consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Although Appellants point to portions of the Specification that provide examples of SRS bursts (Br. 10), Appellants do not persuasively argue why the Examiner's construction of "burst" is unreasonably broad or inconsistent with the Specification. We additionally note that Appellants do not offer an alternative construction. Thus, Appellants do not persuade us of error in the Examiner's findings that Kim's SRS sequences disclose first and second SRS bursts as set forth in claim 21. Accordingly, we sustain the 35 U.S.C. § 102( e) of claim 21 and its dependent claims 22-24, 26-31, and 33, which are not separately argued. We further sustain the 35 U.S.C. § 103(a) rejections of claims 25 and 32, for which Appellants merely contend the additional references used in these rejections do not make up for the purported deficiencies in the rejection of claim 21 (Br. 12). Issue C Appellants contend the combination of Ro and Lee fail to teach or suggest the SRS signal bursts set forth in claim 34 because Ro describes transmitting a pattern of single SRS and Lee describes an SRS sequence, but not an SRS burst. Br. 11-12. The Examiner finds the SRS sequences taught in Ro and Lee teach the claimed SRS bursts. Ans. 11-12. For the reasons discussed supra with reference to claim 21, Appellants fail to persuasively distinguish between an SRS sequence and an SRS burst. Therefore, 5 Appeal2014-001350 Application 12/778,863 Appellants fail to persuade us of error in the rejection of claim 34 and we accordingly sustain the 35 U.S.C. § 103(a) rejection of this claim. DECISION The Examiner's decision to reject claims 21-34 under 35 U.S.C. §101 is reversed. The Examiner's decision to reject claims 21-24, 26-31, and 33 is under 35 U.S.C. § 102(e) is affirmed. The Examiner's decision to reject claims 25, 32, and 34 under 35 U.S.C. § 103(a) is affirmed. Because we affirm at least one ground of rejection with respect to each claim on appeal, we affirm the Examiner's decision to reject claims 21- 34. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R. § 41.50(f). AFFIRMED Jagr 6 Copy with citationCopy as parenthetical citation