Ex Parte Wang et al

Patent Trial and Appeal Board

Dec 11, 2018

14418527 (P.T.A.B. Dec. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/418,527 01/30/2015
10948 7590 12/13/2018
Harrington & Smith, Attorneys At Law, LLC
4 Research Drive, Suite 202
Shelton, CT 06484
FIRST NAMED INVENTOR
Xiao Yi Wang
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. CONFIRMATION NO.
800.1934.Ul(US) 9393
EXAMINER
GEORGE, AYANAH S
ART UNIT PAPER NUMBER
2467
NOTIFICATION DATE DELIVERY MODE
12/13/2018 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):
USPTO@hspatent.com
Nokia.IPR@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XIAO YI WANG and CHUNLI WU
Appeal 2018-003405
Application 14/418,527
Technology Center 2400
Before JENNIFER S. BISK, JUSTIN BUSCH, and JASON M. REPKO,
Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's decision to reject claims 1-6, 8-18, and 20-26, which constitute
all the claims pending in this application. We have jurisdiction over the
pending claims under 35 U.S.C. § 6(b). Claims 7 and 19 were canceled
previously. We affirm.
CLAIMED SUBJECT MATTER
Appellants' claimed invention relates to measurement reports in
Coordinated Multi-Point Transmission (CoMP) schemes and systems.
Spec. 1: 1-5. More specifically, the claims relate to comparing parameter
values of a received "channel state information reference signal,"
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determining that a measurement report is triggered and causing information
from the comparison to be reported. Spec. 2:22-27. Claim 1 is reproduced
below:
1. A method comprising:
comparing at least one received signal received parameter
value for at least one channel state information reference signal
associated with a first frequency with at least one received signal
received parameter value for at least one channel state
information reference signal associated with a second frequency;
determining that the comparing triggers a measurement
report; and
in response to the determining, causing information from
said comparing to be reported.
REJECTIONS 1
Claims 1---6, 8-18, and 20-26 stand rejected under 35 U.S.C. § 101 as
being directed to judicially excepted subject matter. Final Act. 2-3.
Claims 1-5, 13-17, 25, and 26 stand rejected under 35 U.S.C. § 103
as obvious in view ofNogami (EP 2 445 253 Al; Apr. 25, 2012) and
Gauvreau (US 2010/0232382 Al; Sept. 16, 2010). Final Act. 3-8.
Claims 6, 8-12, 18, and 20-24 stand rejected under 35 U.S.C. § 103
as obvious in view ofNogami, Gauvreau, and Choi (US 2011/0312328 Al;
Dec. 22, 2011 ). Final Act. 8-11.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments Appellants made.
1 The Examiner erroneously includes claims 7 and 19, which were
previously canceled, in the headings of two rejections. See Final Act. 2-3.
As these claims are no longer pending, this error is harmless.
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Arguments Appellants could have made, but chose not to make in the Briefs,
are deemed waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
THE 35 U.S.C. § 101 REJECTION
Appellants argue the claims as a group. Appeal Br. 9 ("Independent
claim 14 recites ... similar elements as are recited by method claim 1, and
the specific hardware that claim 14 recites is not argued herein as a
patentable distinction ... so claim 14 stands or falls with claim 1.
Dependent claims are not argued separately herein."); see Appeal Br. 18-20;
Reply Br. 5---6. We select independent claim 1 as representative of this
group, and remaining claims 2-6, 8-18, and 20-26 stand or fall with claim
1. 37 C.F.R. § 4I.37(c)(l)(iv).
Step One of Alice Framework
In step one of the Alice analysis, we "determine whether the claims at
issue are directed to" a patent-ineligible concept, such as an abstract idea.
Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2354--55 (2014).
The Examiner determines the claims are directed to the concept of
"collecting, comparing and reporting known information." Final Act. 2;
Ans. 4--5 (comparing Appellants' claims to those in Electric Power Group,
LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)). The Examiner
explains that Appellants' claims do not recite any step or action claiming the
alleged improvement of using a particular reference signal (i.e., a channel
state information reference signal (CSI-RS)) to both choose intra-frequency
Co MP transmission points (TPs) and decide on which carrier component
(CC) the TPs will transmit their CoMP communications. Ans. 4. Rather,
the Examiner finds claim 1 's recited comparison of received signal
parameters and determination that the comparison triggers are similar to the
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collecting and analyzing steps in Electric Power, and claim 1 's recited step
of causing a report to be generated is similar to Electric Power's displaying
step. Ans. 4--5.
Appellants do not dispute the Examiner's conclusion that claim 1 is
directed to an abstract idea. See Appeal Br. 18 ("Assuming arguendo that
the claims begin from an abstract idea, they recite significant detail" and the
additional detail "takes the independent claims into the 'significantly more'
realm of the analysis for patentable subject matter."), 19 ("As such, even
assuming arguendo claim 1 begins from an abstract idea its terms still recite
significantly more, and thus satisfies 3 5 USC 101. "); Reply Br. 6 ("It is
submitted that a[ t] least independent claims 1 and 14 include elements that
amount to significantly more than the judicial exception").
Appellants, however, conclude their argument by stating "[ w ]e 've
argued the claim is not abstract for the very reason that ... this level of
specificity for the described purpose is the very antithesis of abstraction."
Appeal Br. 20. Although, on its face, this statement appears to assert that
claim 1 is not directed to an abstract idea, there are no particular arguments
addressing whether claim 1 is directed to an abstract idea. Thus, we
interpret this statement as merely a summary of Appellants' arguments
regarding the question of whether claim 1 recites "significantly more" as
analyzed under step two of the Alice framework. We address Appellants'
step two arguments in the following sub-section.
We agree with the Examiner's conclusions because claim 1 focuses on
comparing two parameter values and, in response to the comparison, causing
information regarding the comparison to be reported. Even construing claim
1 to include an affirmative step of reporting information, claim 1 simply
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involves analyzing and reporting information. Claim 1 merely recites a
comparison of two data values associated with two different reference
signals, determining that the comparison triggers a measurement report,
thereby causing information from the comparison to be reported. Notably,
Appellants' claim 1 does not recite how to obtain the data or performing any
particular steps by a computer, let alone claim a particular improvement in
the way computers operate.
The Federal Circuit has concluded similar concepts were directed to
abstract ideas. Specifically, in Electric Power, the Federal Circuit concluded
claims reciting a method of collecting data from various sources, "detecting
and analyzing events" by identifying information in the received data,
reporting the event analysis results and visualizations of measurements,
aggregating the event analysis information, and providing a composite
indicator were directed to an abstract idea because the claims were directed
to "collecting information, analyzing it, and displaying certain results of the
collection and analysis." Elec. Power,830 F.3d at 1351-53.
Similarly, the Federal Circuit concluded claims directed to collecting
and analyzing information and presenting the results were ineligible as
claiming no more than an abstract idea. Content Extraction & Transmission
LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014); see
also Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364,
1372 (Fed. Cir. 2017) (concluding "claims directed to the collection, storage,
and recognition of data are directed to an abstract idea"); SAP Am., Inc. v.
InvestPIC, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) ("merely presenting
the results of abstract processes of collecting and analyzing information ...
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is abstract as an ancillary part of such collection and analysis") ( quotations
omitted).
Moreover, limiting the particular data analyzed does not change the
character of the claim. See Elec. Power, 830 F.3d at 1353 (stating that
"collecting information, including when limited to particular content (which
does not change its character as information)" is treated as "within the realm
of abstract ideas"). Thus, the identity of the parameter values compared and
the fact that the two values are associated with two different signals, do not
change the character of the claims.
We agree with the Examiner that the claims are directed to an abstract
idea and, thus, tum to step two of the Alice analysis.
Step Two of Alice Framework
In step two of our Alice analysis, we determine whether the additional
limitations, when considered both "individually and 'as an ordered
combination"' contain an "inventive concept" sufficient to transform the
claimed "abstract idea" into a patent-eligible application. Alice, 134 S. Ct. at
2355-58.
The Examiner concludes the elements of the claims combined merely
provide the functions of the individual elements and do not add significantly
more that would render the claims patent eligible. Final Act. 3; Ans. 4--5.
As discussed above, the Examiner explains that Appellants' claims do not
claim the alleged improvement of using a CSI-RS to both choose intra-
frequency CoMP TPs and decide on which CC the TPs will transmit their
CoMP communications. Ans. 4. Thus, the Examiner concludes the claims
do not amount to significantly more than the abstract idea. Final Act. 3;
Ans. 4--5.
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Appellants argue the claims add significantly more to the abstract idea
because the claims "recite significant detail in that the reference signals
specifically recited therein are CSI-RSs" and Appellants' application
describes particular advantages of using CSI-RSs for a dual purpose (i.e.,
selecting both CCs and TPs). Appeal Br. 18 (citing Spec. 11:22-34).
Appellants also argue "claim 1 specifically recites channel state information
reference signals (CSI-RSs)," the claims compare parameter values "of
different CSI-RSs of two different CCs/frequencies," and substituting a
different type of reference signal for the recited CSI-RSs would prevent
utilizing the signals for both CC and TP selection. Appeal Br. 19.
An inventive concept "cannot be furnished by the unpatentable law of
nature (or natural phenomenon or abstract idea) itself." Genetic Techs. Ltd.
v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016); see also Alice, 134
S. Ct. at 2355 (explaining that, after determining a claim is directed to a
judicial exception, "we then ask, ' [ w ]hat else is there in the claims before
us?"' (emphasis added, brackets in original) (quoting Mayo, 566 U.S. at
78)). Instead, an "inventive concept" is furnished by an element or
combination of elements that is recited in the claim in addition to the judicial
exception and sufficient to ensure the claim as a whole amounts to
significantly more than the judicial exception itself. Alice, 134 S. Ct. at
2355 (citing Mayo, 566 U.S. at 72-73); see BSG Tech LLC v. BuySeasons,
Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (explaining that the Supreme
Court in Alice "only assessed whether the claim limitations other than the
invention's use of the ineligible concept to which it was directed were well-
understood, routine and conventional," (emphasis added)).
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On the other hand, "[i]f a claim's only 'inventive concept' is the
application of an abstract idea using conventional and well-understood
techniques, the claim has not been transformed into a patent-eligible
application of an abstract idea." BSG Tech, 899 F.3d at 1290-91 (citing
Berkheimer v. HP Inc., 881 F.3d 1360, 1370 (Fed. Cir. 2018)). "[I]t is
irrelevant whether [the claimed abstract idea] may have been non-routine or
unconventional as a factual matter ... narrowing or reformulating an
abstract idea does not add 'significantly more' to it." BSG Tech, 899 F.3d at
1291.
First, as discussed above, we note claim 1 merely recites comparing
information and causing a report to be generated. Contrary to Appellants'
arguments, claim 1 does not recite using the recited CSI-RSs to perform the
"double duty" of selecting both CCs and TPs. In fact, claim 1 recites no
elements other than the comparing, determining and ( causing) reporting
steps. The fact that the two compared values (i.e., "received signal received
parameter value") are each values for two reference signals associated with
different frequencies does not change the fact that the claim merely recites
comparing two values.
Because claim 1 recites no additional elements, claim 1 fails to add
significantly more to the abstract idea. Even to the extent that computer
processing is implied, such use of computers is merely as tools to compare
and report information, which simply implements the abstract idea. See BSG
Tech, 899 F.3d at 1286; Gottschalkv. Benson, 409 U.S. 63, 67 (1972)
( explaining that the claimed steps could easily "be carried out in existing
computers long in use, no new machinery being necessary").
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Summary of Analysis of§ 101 Rejection
For the above reasons, we determine the Examiner did not err in
rejecting claims 1---6, 8-18, and 20-26 under 35 U.S.C. § 101 as being
directed to judicially excepted subject matter.
THE 35 U.S.C. § 103 REJECTION
Appellants argue the claims as a group. Appeal Br. 9 ("Independent
claim 14 recites ... similar elements as are recited by method claim 1, and
the specific hardware that claim 14 recites is not argued herein as a
patentable distinction ... so claim 14 stands or falls with claim 1. Dependent
claims are not argued separately herein."); See Appeal Br. 10-17; Reply
Br. 2-5. We select independent claim 1 as representative of this group, and
remaining claims 2---6, 8-18, and 20-26 stand or fall with claim 1. 3 7 C.F .R.
§ 4I.37(c)(l)(iv).
Claims 1-5, 13-17, 25, and 26
The Examiner finds the combination ofNogami and Gauvreau teaches
or suggests every limitation recited in claims 1-5, 13-17, 25, and 26. Final
Act. 3-8. Of particular note, the Examiner finds Nogami discloses channel
state measurement reference signals from which a mobile terminal measures
and generates channel state information. Ans. 3--4. Thus, the Examiner
finds Nogami's "channel state measurement reference signals" teach or
suggest the recited channel state information reference signals. Ans. 3--4.
The Examiner finds Nogami's sub bands teach or suggest the recited first
and second frequencies, and N ogami' s disclosure of measuring feedback
information for each sub band teaches or suggests the recited two received
signal parameter values for reference signals on two different frequencies
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and causing a report to be generated. Final Act. 4 ( citing Nogami ,r 99);
Ans. 3--4 (additionally citing Nogami ,r,r 2, 103).
The Examiner finds Nogami does not teach comparing signals and
determining that the comparing triggers a measurement report, but finds
Gauvreau teaches triggering a measurement report "based on a comparison
of the RSRQ [(reference signal received quality)] being below a certain
threshold." Final Act. 4 (citing Gauvreau ,r 96); Ans. 4 ("The office action
admits that Nogami does not teach comparing or determining that the
comparing triggers a measurement report and is the reason for the secondary
reference Gauvreau."). The Examiner concludes it would have been obvious
to combine Nogami's and Gauvreau's teachings "because Gauvreau teaches
the candidate set ( of carriers) may be different than the current set e.g., it
may be determined that the quality of a primary carrier is below a certain
threshold, while another non-primary carrier may have a received quality
that is higher than the primary." Final Act. 5 ( citing Gauvreau ,r,r 96-97).
Appellants argue Nogami's mobile terminal measures the RSRP of
cells that are on the same frequency because Nogami's system is used to
suppress interference on cell edges when neighboring cells use the same
frequency. Appeal Br. 11-12 (citing Nogami ,r,r 2, 94, 99); Reply Br. 4
(additionally citing Nogami ,r 3). Appellants also argue Nogami's
measurement report is different from its feedback. Appeal Br. 10-11 ( citing
Nogami ,r,r 3, 99). Specifically, Appellants argue a mobile terminal
measures neighboring cells' RSRP of reference signals and sends a report of
the measurements to a serving base station. Appeal Br. 12 (citing Nogami
,r 99). Appellants argue Nogami explicitly distinguishes these measurement
reports from its feedback information, which may include more detailed
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information on a channel (e.g., CQI (channel quality indicator), PMI
(precoding matrix index), and RI (rank indicator)) determined from a signal
to interference plus noise power ratio (SINR). Appeal Br. 12 ( citing Nogami
,r 99); see N ogami ,r,r 8, 100.
Appellants acknowledge Gauvreau teaches measuring different RSRP
and RSRQ values on different carriers (i.e., frequencies) and triggering a
measurement report if a primary carrier's value is below a threshold and a
different carrier's value is a threshold amount better than the primary
carrier's value. Appeal Br. 15 (citing Gauvreau ,r,r 3, 12, 95-96).
Appellants argue, however, that Gauvreau does not cure Nogami's failure to
teach parameter values for the recited reference signals. Appeal Br. 15.
Appellants argue their invention claims a particular improvement over the
prior art, which involves comparing the received signal parameter of two
reference signals on different frequencies and the Examiner has not shown
that the combination ofNogami and Gauvreau teaches the claimed features.
Appeal Br. 15-16. Appellants argue the Examiner failed to demonstrate
sufficient rationale for modifying Nogami and Gauvreau to teach or suggest
the subject matter recited in claim 1. Appeal Br. 16.
We agree with Appellants that the Examiner erred. Specifically, the
Examiner relies on Nogami's disclosure of determining feedback
information (e.g., CQI, PMI, and RI) from a reference signal's SINR for
teaching or suggesting the recited parameter values. See Ans. 3--4; Nogami
,r 103. The Examiner relies on Gauvreau' s disclosure of comparing an
RSRP/RSRQ value of a primary carrier to an RSRP/RSRQ value of a non-
primary carrier for teaching comparing reference signal parameter values.
The Examiner, however, fails to explain sufficiently why or how Gauvreau's
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teaching of comparing RSRQ values of two different carriers would be
combined with Nogami's teaching of generating feedback information (e.g.,
CQI, PMI, and RI) for each sub band of a component carrier. That is, even
assuming Nogami's determination of feedback information for each sub
band on a single component carrier associated with a single reference signal
teaches or suggests determining a parameter value from a reference signal
associated with a first frequency and a parameter value from a reference
signal associated with a second frequency, the Examiner has not explained
why or how a person of ordinary skill in the art would have combined and
modified Gauvreau and Nogami to arrive at a system that compares
Nogami's feedback information for each sub band.
For the above reasons, we are persuaded the Examiner erred in
rejecting claim 1 as obvious in view of the combination ofNogami and
Gauvreau. Claims 2-5, 13-17, 25, and 26 recite a commensurate limitation.
Thus, for the same reasons, we also are persuaded the Examiner erred in
rejecting claims 2-5, 13-17, 25, and 26.
Claims 6, 8-12, 18, and 20-24
The Examiner rejects claims 6, 8-12, 18, and 20-24 as obvious in
view of the combination of N ogami, Gauvreau, and Choi. Final Act. 8-11.
The Examiner, however, does not find Choi remedies the deficiency
identified above with respect to the independent claims. Thus, for the above
reasons, we are persuaded the Examiner erred in rejecting claims 6, 8-12,
18, and 20-24 as obvious in view of the combination ofNogami, Gauvreau,
and Choi.
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SUMMARY
We affirm the Examiner's decision to reject claims 1---6, 8-18, and
20-26 under 35 U.S.C. § 101.
We reverse the Examiner's decision to reject claims 1---6, 8-18, and
20-26 under 35 U.S.C. § 103.
DECISION
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner's decision to reject claims 1---6, 8-18,
and 20-26 is affirmed. See 37 C.F.R. § 4I.50(a)(l).
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).
AFFIRMED
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