Jessica ¿stergaard et al.Download PDFPatent Trials and Appeals BoardOct 28, 201915496706 - (D) (P.T.A.B. Oct. 28, 2019) Copy Citation 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. 15/496,706 04/25/2017 Jessica Östergaard 1009-2240 / P35162 US3 7272 102721 7590 10/28/2019 Murphy, Bilak & Homiller/Ericsson 1255 Crescent Green Suite 200 Cary, NC 27518 EXAMINER GHOWRWAL, OMAR J ART UNIT PAPER NUMBER 2463 NOTIFICATION DATE DELIVERY MODE 10/28/2019 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): official@mbhiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JESSICA ÖSTERGAARD and MIKAEL WITTBERG Appeal 2018-008776 Application 15/496,706 Technology Center 2400 Before JAMES B. ARPIN, JOSEPH P. LENTIVECH, and SCOTT RAEVSKY, Administrative Patent Judges. RAEVSKY, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 3, 5–11, 13, and 15–20. Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “Applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Telefonaktiebolaget LM Ericsson (publ). Appeal Br. 2. Appeal 2018-008776 Application 15/496,706 2 CLAIMED SUBJECT MATTER The claims recite methods for deciding whether to send an uplink transmission to a radio access network node. See Spec., Abstract. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method in a user equipment configured to operate with Discontinuous Reception (DRX) in a radio access network, wherein a corresponding DRX status of the user equipment is either active or inactive, the method comprising: deciding whether to send an uplink transmission, comprising periodic uplink control signaling, for a radio access network node at a transmission time t, based on the DRX status of the user equipment at a predefined earlier time instance relative to the transmission time t; and deciding a format to use for sending other uplink control signaling together with the periodic uplink control signaling, based on the DRX status of the user equipment at the predefined earlier time instance relative to the transmission time t. REJECTIONS Claims 1, 3, 5, 9–11, 13, 15, and 19–20 stand rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over the combined teachings of Hu (WO 2009/0132523 A1, May 11, 2009)2 and Papasakellariou (US 2013/0208672 A1, Aug. 15, 2013). Final Act. 5. Claims 6–8 and 16–18 stand rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over the combined teachings of Hu, Papasakellariou, and Heo (US 2013/0242911 A1, Sept. 19, 2013). Id. at 13. 2 Like the Examiner, we cite to corresponding U.S. Publication 2011/0038277 as an English translation of Hu. See Final Act. 5–6. Appeal 2018-008776 Application 15/496,706 3 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). ANALYSIS Claims 1, 3, 5, 9–11, 13, 15, and 19–20 Issue 1: Did the Examiner err in finding that the combined teachings of Hu and Papasakellariou teach or suggest claim 1’s step of “deciding whether to send an uplink transmission, comprising periodic uplink control signaling, for a radio access network node at a transmission time t, based on the DRX status of the user equipment at a predefined earlier time instance relative to the transmission time t”? See Appeal Br. 6–11; Reply Br. 2–7. Initially, Appellant contends that Hu is “completely silent about any type of ‘uplink transmission’ made by the UE.” Appeal Br. 7. Appellant contends that Hu “only discloses ‘non-periodical transmission’ of CQI,” whereas the claims require “periodic uplink control signaling.” Id. at 7–8. The Examiner finds, and we agree, “Hu at fig. 9, teaches uplink sub-frames are periodical transmission resource of the CQI.” Ans. 15. Specifically, Hu’s Fig. 9 states in block S904, “[d]etermine one or more uplink sub- frames in the queue as the periodical or non-periodical transmission resource of the CQI.” (Emphasis added.) In Reply, Appellant asserts that “the rejections are not based on findings that ‘Hu at Fig. 9 teaches . . . periodical transmission”; rather, Appellant asserts, the rejections are based on “Fig. 9—together with [0079]–[0082],” which Appellant asserts discloses “‘non-periodical transmission’ of CQI.” Reply Br. 2–3. While it is true that some portions of Hu refer to “non-periodical transmission resource of the Appeal 2018-008776 Application 15/496,706 4 CQI” (e.g., Hu ¶¶ 79–80), Appellant does not persuasively distinguish Hu’s alternative disclosure of periodic CQI transmission in Fig. 9. Appellant next contends that Hu fails to make the transmission determination “based on the DRX status of the user equipment at a predefined earlier time instance relative to the transmission time t.” Appeal Br. 8 (emphasis omitted). Appellant argues, Hu [0079]–[0082] discloses determining whether to send this “non-periodical transmission” based on an “active time period” exceeding a “threshold.” In other words, Hu’s UE can transmit the CQI in the “succeeding uplink sub-frames” based on knowledge that the UE will [be] in an “active time period” at that future transmission time. Id. Appellant further contends that Hu’s “‘queue’ relates to future subframes when the UE is known to be in DRX active status.” Id. As a result, Appellant argues, “Hu’s selection decisions are based on ‘whether there is an uplink subframe in the determined queue’ rather than ‘based on the DRX status’ of the UE.” Id. The Examiner finds that the claim is “not clear how the deciding of a format is ‘based on the DRX status.’” Ans. 16. The Examiner further finds that, under the broadest reasonable interpretation, this limitation “may simply mean that there is a particular DRX status at a predefined earlier time instance, and based on the DRX status’ existence, at a later time ‘t,’ we send uplink transmission.” Id. (emphasis omitted). The Examiner further finds, “Hu is used to teach periodic uplink control signaling (fig. 9) and an active DRX time period (para. 0003). As periodic signaling is transmitted during Appeal 2018-008776 Application 15/496,706 5 an active DRX period, this is ‘based on’ this active DRX period commencing after a period of DRX inactivity.” Id.3 On Reply, Appellant contests the Examiner’s interpretation of the claimed “based on the DRX status” to mean “based on the DRX status’ existence” as inconsistent with the claim language and Specification. Reply Br. 4. With respect to the claim language, Appellant contends, That the UE is “configured to operate with DRX [and] a corresponding DRX status” necessarily implies that a “DRX status” exists. Since a “DRX status” necessarily exists, basing both “deciding whether to send” and “deciding a format to use” on the existence of “DRX status” results in trivial “decisions” that always produce the same, known result. This renders both the “deciding whether to send” and the “deciding a format to use” limitations meaningless. Id. With respect to the Specification, Appellant quotes paragraph 25 as pertinent. Id. at 5 (also citing Spec. ¶¶ 41, 48, 51, 53, Fig. 2). Paragraph 25 states in pertinent part: The user equipment is configured with Discontinuous Reception, DRX, to be in active time or not be in active time. The user equipment decides whether or not to send the uplink transmission at a transmission time t, based on whether the user equipment was in active time or not at a predefined earlier time instance relative to the transmission time t. Spec. ¶ 25. Appellant then contends, without analysis, that the Examiner’s interpretation of “based on DRX status” to include “based on DRX status’ existence” is inconsistent with the Specification. Reply Br. 5. Finally, Appellant reiterates contentions from the Appeal Brief and contends, “the decision to transmit made by Hu’s UE is based on availability of an uplink 3 The Examiner also relies on Papasakellariou in part for the “based on” claim language, but we do not so rely on Papasakellariou. Appeal 2018-008776 Application 15/496,706 6 transmission opportunity provided by the network in a particular subframe”—not based on DRX status. Id. at 6. Appellant’s contentions are unpersuasive. The claim element, “based on the DRX status . . . at a predefined earlier time instance relative to the transmission time t,” is broadly claimed. Appellant points us to no disclosure in the Specification that defines how deciding whether to send an uplink transmission is “based on” the DRX status. Hu discloses a preset period after activation, i.e., DRX status (see claim 1, “DRX status . . . is either active or inactive”), and subsequently a periodical CQI transmission, which is therefore broadly “based on” the earlier DRX status. See Hu, Fig. 9. Specifically, Hu “[d]etermine[s] a queue in which uplink . . . sub-frames are ordered in a preset period after activation of a receiver of a UE.” Hu, Fig. 9, block S902 (emphasis added). Subsequently, Hu “[d]etermine[s] one or more uplink sub-frames in the queue as the periodical . . . transmission resource of the CQI.” Id., Fig. 9, block S904. Hu’s determination of the periodical CQI transmission resource comes after the “preset period of [DRX] activation” and is thus broadly based on the “preset period of activation.” See Hu ¶ 3 (describing “activation” as a period of the DRX cycle). Accordingly, Appellant does not persuade us that the Examiner erred in finding that Hu teaches or suggests claim 1’s “deciding whether to send an uplink transmission, comprising periodic uplink control signaling, for a radio access network node at a transmission time t, based on the DRX status of the user equipment at a predefined earlier time instance relative to the transmission time t.” Appeal 2018-008776 Application 15/496,706 7 Issue 2: Did the Examiner err in finding that the combined teachings of Hu and Papasakellariou teach or suggest claim 1’s “deciding a format to use for sending other uplink control signaling together with the periodic uplink control signaling, based on the DRX status of the user equipment at the predefined earlier time instance relative to the transmission time t”? See Appeal Br. 11–13; Reply Br. 7–9. Appellant contends that Hu fails to disclose “deciding a format to use for sending other uplink control signaling together with the periodic uplink control signaling.” Appeal Br. 11–12. But, as Appellant appears to recognize, the Examiner relied on Papasakellariou, not Hu, for this language. See id. (“In the final OA, the Examiner admitted that Hu does not disclose the entire ‘deciding a format to use’ limitation, but found that Papasakellariou [0063] discloses the features missing from Hu.”); Final Act. 6–7; Adv. Act. 2. Appellant next contends that Papasakellariou fails to disclose this limitation. Appeal Br. 12–13. Specifically, Appellant asserts that although Papasakellariou “discloses multiplexing CQI (‘typically periodic’) and HARQ ACK/NACK transmissions, it does not disclose ‘a format to use’ for combined transmissions, much less ‘deciding a format to use.’” Id. (citing Papasakellariou ¶ 63). Further, Appellant contends that Papasakellariou does not disclose basing this decision on “the DRX status of the user equipment at the predefined earlier time instance relative to the transmission time t.” Id. at 13 (emphasis omitted) (citing Papasakellariou ¶ 45). The Examiner finds, and we agree, “it is implicit that there is a transmission format that is decided upon [in Papasakellariou], as this is necessary for transmission to occur.” Ans. 17. The Examiner also finds, Appeal 2018-008776 Application 15/496,706 8 and we agree, “there is mention of these transmissions occurring within the same sub-frame. Therefore, the transmissions occur within the format of the sub-frame structure.” Id. (emphasis omitted). In particular, the Examiner relies on Papasakellariou’s disclosure that “CQI transmission from a UE in a Physical Uplink Control Channel (PUCCH), which is typically periodic in nature, may occur in the same sub-frame as the ACK/NACK signal transmission.” Id. at 16 (citing Papasakellariou ¶ 63) (emphasis added). In Reply, Appellant asserts, “a general statement of benefit from combination in a subframe neither expressly nor inherently discloses deciding a particular format in the subframe to use for such a combination.” Reply Br. 8. Appellant further contends, “many different formats could be used to provide a benefit, and Papasakellariou [0063] fails to describe any criteria for selecting or deciding among formats, or even the need to ‘decide a format to use.’” Id. Appellant’s contentions are unpersuasive at least because they are not commensurate with the scope of the claim. The claim does not recite “selecting or deciding among formats,” but rather, “deciding a format to use.” We interpret “format” broadly here, and Appellant does not point us to any specific definition of this term in the Specification that specifies, for instance, a more granular format “in the subframe.” See id. at 8 (contending that Papasakellariou fails to disclose a “particular format in the subframe” (emphasis added and omitted)). Thus, under the broadest reasonable interpretation, we agree with the Examiner that Papasakellariou teaches or suggests “deciding a format to use” by Papasakellariou’s decision to send CQI and HARQ transmissions within the format of the same sub-frame. See Ans. 17. Appeal 2018-008776 Application 15/496,706 9 Further, we find unpersuasive Appellant’s contention that Papasakellariou does not disclose basing the format decision on “the DRX status of the user equipment at the predefined earlier time instance relative to the transmission time t.” Appeal Br. 13 (emphasis omitted). As we noted above, the Examiner relied on Hu for this limitation. See Final Act. 6–7. Although the Examiner also points to Papasakellariou for the “based on” language in the Answer (see Ans. 16), for reasons stated above, we find that Hu alone teaches or suggests the “based on” language. Accordingly, Appellant does not persuade us that the Examiner erred in finding that Hu teaches or suggests claim 1’s step of “deciding a format to use for sending other uplink control signaling together with the periodic uplink control signaling, based on the DRX status of the user equipment at the predefined earlier time instance relative to the transmission time t.”4 Issue 3: Did the Examiner err in finding that one of ordinary skill in the art would have combined the teachings of Hu and Papasakellariou? See Appeal Br. 14–15; Reply Br. 9–10. Appellant contends that the Examiner’s stated rationale for combining the teachings of Hu and Papasakellariou ignores that both claimed decisions 4 We also note that, under the broadest reasonable interpretation, the recited “deciding a format to use . . .” language may not limit the claim due to the conditional nature of the preceding “deciding whether to send” limitation. (Emphasis added.) If, in the “deciding whether to send an uplink transmission” limitation, it is decided not to send an uplink transmission, presumably no format would then be decided upon for sending “other uplink control signaling together with the [now nonexistent] periodic uplink control signaling.” See Ex parte Schulhauser, Appeal No. 2013-007847, at 6–8 (PTAB April 28, 2016) (precedential) (determining that due to conditional language in some method steps, subsequent method steps need not be performed); see also infra pg. 13 (discussing claims 6 and 8). Appeal 2018-008776 Application 15/496,706 10 are “based on the DRX status.” Appeal Br. 14 (emphasis omitted). Appellant also contends the Examiner’s stated motivation of “transmit[ting] ACKs or NACKs and CQI signals over the same transmission time interval in an SC-FDMA system” is “fulfilled by Papasakellariou alone, which provides no motivation to [s]eek another reference such as Hu.” Id. Appellant further asserts that “since Papasakellariou is silent about DRX, a skilled person starting with Papasakellariou’s combined format would not be aware of any DRX-related needs and would not look to Hu for ‘deciding the format to use . . . based on the DRX status.” Id. at 14–15. Moreover, Appellant contends that a “skilled person starting with Hu wouldn’t be aware of a need to combine periodic signaling (e.g., CQI) and other (e.g., non-periodic) signaling, much less a need to ‘decide a format to use’ for such combination ‘based on the DRX status.’” Id. at 15. Appellant, therefore, concludes that the Examiner employed hindsight reasoning to combine the teachings of the references. Id. The Examiner states, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the Appellant’s disclosure, such a reconstruction is proper. Ans. 17 (citing In re McLaughlin, 443 F.2d 1392 (CCPA 1971)). The Examiner also finds, At the time of invention, it would have been obvious to a person of ordinary skill in the art to incorporate the sub-frame as taught by Papasakellariou into the invention of Hu. The suggestion/motivation would have been to transmit ACKs or Appeal 2018-008776 Application 15/496,706 11 NACKs and CQI signals over the same transmission time interval in an SC-FDMA system (Papasakellariou, para. 0003). Id. at 5. We agree with the Examiner. Appellant does not persuasively show that the Examiner gleaned knowledge only from the Appellant’s disclosure. Rather, it is apparent from the references themselves that both Hu and Papasakellariou relate to LTE and that both references transmit CQI. See, e.g., Hu ¶ 3 (referring to E-UTRAN), 74 (CQI); Papasakellariou ¶¶ 3 (LTE, E-UTRA[N]), 63 (CQI). We agree with the Examiner that “[i]ncluding the sub-frame of Papasakellariou into the invention of Hu was within the ordinary ability of one of ordinary skill in the art based on the teachings of Papasakellariou.” See Final Act. 7. “A person of ordinary skill is . . . a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Accordingly, we sustain the Examiner’s rejection of claim 1. Appellant’s arguments regarding the rejection of independent claim 11 rely on the same arguments as for claim 1, and Appellant does not argue separate patentability for the dependent claims except claims 6–8 and 16–18, which we address below. See Appeal Br. 15. We, therefore, also sustain the Examiner’s rejection of claims 3, 5, 9–11, 13, 15, and 19–20. See 37 C.F.R. § 41.37(c)(1)(iv).5 5 We also note that claim 1 merely recites making decisions, namely deciding whether to send an uplink transmission and deciding a format to use, and does not positively recite sending an uplink transmission. If prosecution resumes, the Examiner may wish to consider whether the claimed decisions are recited so broadly so as to merely recite a mental process, and, therefore, an abstract idea. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (USPTO Jan. 7, 2019) Appeal 2018-008776 Application 15/496,706 12 Claims 6–8 and 16–18 Issue 4: Did the Examiner err in finding that the combined teachings of Hu, Papasakellariou, and Heo teach or suggest, if the uplink transmission comprises a sounding reference signal transmission, deciding whether to puncture an uplink data transmission coinciding with the transmission time t with the sounding reference signal transmission, based on the DRX status of the user equipment at the predefined earlier time instance relative to the transmission time t in claim 6 (and a similar limitation in claim 16)? See Appeal Br. 16–17; Reply Br. 10–13. We begin by interpreting claim 6. During prosecution, the Office gives the language of the proposed claims “the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). (“Mental processes—concepts performed in the human mind (including an observation, evaluation, judgment, opinion)”); see also CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed. Cir. 2011) (determining that a claim whose “steps can be performed in the human mind, or by a human using a pen and paper” is directed to an unpatentable mental process); Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have examined claims that required the use of a computer and still found that the underlying, patent- ineligible invention could be performed via pen and paper or in a person’s mind.”). We reach no conclusion here as to whether the claims recite an abstract idea. Appeal 2018-008776 Application 15/496,706 13 Claim 6 recites two conditional limitations: “if the uplink transmission comprises a sounding reference signal transmission,” and “deciding whether to puncture an uplink data transmission coinciding with the transmission time t with the sounding reference signal transmission, based on the DRX status of the user equipment at the predefined earlier time instance relative to the transmission time t.” (Emphasis added.) Under the broadest reasonable interpretation, the “deciding” step might not be reached “if” the uplink transmission does not comprise a sounding reference signal transmission. Accordingly, the “deciding” step need not be performed, and as such, is not a limitation on the claim. See Ex parte Schulhauser, Appeal No. 2013- 007847, at 6–8 (PTAB April 28, 2016) (precedential) (determining that due to conditional language in certain method steps, subsequent method steps need not be performed); see also Appeal Br. 19 (claim 8 also recites the conditional phrase “if the decision is made to puncture the uplink data transmission with the sounding reference signal transmission” (emphasis added)). Appellant’s contentions focus on the “based on the DRX status” portion of the “deciding” step. See Appeal Br. 16; Reply Br. 11–12. But since the “deciding” step is not limiting, Appellant’s contentions are unpersuasive.6 Accordingly, we sustain the Examiner’s rejection of claim 6 and similar claim 16, and the claims dependent therefrom. 6 In any event, we note that Appellant argues the references individually with respect to the “based on the DRX status” recitation, as the Examiner cited Hu for this limitation. See Final Act. 14. Further, Appellant raises a new argument on Reply attacking the Examiner’s rationale to combine but presents no persuasive reason for not raising this late argument in the Appeal Brief. See Reply Br. 12–13; Ex parte Nakashima, No. 2009-001280, 2010 Appeal 2018-008776 Application 15/496,706 14 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1, 3, 5, 9– 11, 13, 15, 19–20 103 Hu, Papasakellariou 1, 3, 5, 9– 11, 13, 15, 19–20 6–8, 16–18 103 Hu, Papasakellariou, Heo 6–8, 16–18 Overall Outcome 1, 3, 5–11, 13, 15–20 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 WL 191183, at *3–*6 (BPAI 2010) (explaining that arguments and evidence not timely presented in the principal Brief will not be considered when filed in a Reply Brief, absent a showing of good cause explaining why the argument could not have been presented in the Principal Brief). Copy with citationCopy as parenthetical citation