Samsung Electronics Co., Ltd.

Patent Trials and Appeals Board

Feb 16, 2022

2021000903 (P.T.A.B. Feb. 16, 2022)

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. 15/827,419 11/30/2017 Youngbum KIM 0203-2151 9194 68103 7590 02/16/2022 Jefferson IP Law, LLP 1130 Connecticut Ave., NW, Suite 420 Washington, DC 20036 EXAMINER JANGBAHADUR, LAKERAM ART UNIT PAPER NUMBER 2469 NOTIFICATION DATE DELIVERY MODE 02/16/2022 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): usdocketing@jeffersonip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte YOUNGBUM KIM and JUHO LEE ____________ Appeal 2021-000903 Application 15/827,419 Technology Center 2400 ____________ Before JOHN A. JEFFERY, JAMES R. HUGHES, and LARRY J. HUME, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Under 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 3, 5, 6, 8, 10, 12, 13, and 15. Claims 2 and 9 were cancelled, and claims 4, 7, 11, and 14 have been indicated as containing allowable subject matter.2 See Ans. 8. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Samsung Electronics Co., Ltd. Appeal Br. 2. 2 Throughout this opinion, we refer to (1) the Appeal Brief filed July 10, 2020 (“Appeal Br.”); (2) the Examiner’s Answer mailed September 16, 2020 (“Ans.”); and (3) the Reply Brief filed November 13, 2020 (“Reply Br.”). Appeal 2021-000903 Application 15/827,419 2 STATEMENT OF THE CASE Appellant’s invention involves a base station that, among other things, (1) identifies whether a resource on which a signal was received is included in an overlap region; (2) skips storing the received signal in a buffer if the resource is included in an overlap region; and, if not, (3) stores the received signal in the buffer. See generally Abstract; Spec. ¶¶ 116-126; Fig. 11. Claim 1 is illustrative: 1. A method for a base station (BS), the method comprising: receiving a signal having a signal strength that is higher than a threshold value; identifying whether decoding of the signal fails; and in case that the decoding of the signal fails: identifying whether a resource on which the signal has been received is included in an overlap region where a first resource region dynamically allocated by control information and a second resource region predetermined by configuration information overlap; skipping storing of the received signal in a buffer in case that the resource is included in the overlap region; and storing the received signal in the buffer in case that the resource is not included in the overlap region. THE REJECTION The Examiner rejected claims 1, 3, 5, 6, 8, 10, 12, 13, and 15 under 35 U.S.C. § 103 as unpatentable over On the Operation of Grant-Free Access, InterDigital Communications, 3GPP TSG RAN WGI Meeting No. 87, R1- 1612685 (Nov. 2016) (“3GPP”), Ro (US 2015/0195063 A1; published Appeal 2021-000903 Application 15/827,419 3 July 9, 2015), and Takahashi (US 2014/0126507 A1; published May 8, 2014). Ans. 3-8. FINDINGS, CONCLUSIONS, AND CONTENTIONS Regarding independent claim 1, the Examiner finds that 3GPP discloses a method for a base station including, among other things, (1) receiving a signal whose strength is higher than a threshold value; (2) identifying whether decoding the signal fails; and, if so, (3) identifying whether a resource on which the signal was received is included in an overlap region as claimed. Ans. 3-4. Although the Examiner acknowledges that 3GPP does not (1) skip storing the received signal in a buffer in case the resource is included in the overlap region, and, if not, (2) store the received signal in the buffer, the Examiner cites Ro and Takahashi for teaching features (1) and (2), respectively, in concluding that the claim would have been obvious. Ans. 4-6. Appellant argues that 3GPP’s base station does not identify whether a decoding failure occurs due to overlapping of received signals, much less perform any action, such as skipping storing a received signal, based on such a determination. Appeal Br. 4-6; Reply Br. 2-4. According to Appellant, Ro does not cure 3GPP’s deficiencies in this regard because Ro “skips” signal transmission and, therefore, there can be no failure to decode a received signal that was not transmitted upon anticipating a potential collision. Appeal Br. 7; Reply Br. 4-5. Although Appellant acknowledges that Ro’s base station “skips” receiving when a physical uplink control channel (PUCCH) collides with a sounding reference signal (SRS), Appellant contends that Ro does not store or skip storing a received signal Appeal 2021-000903 Application 15/827,419 4 when failing to decode that signal. Appeal Br. 7; Reply Br. 4-5. Appellant adds that Takahashi’s storing decoding information when decoding fails does not relate to deciding whether to store the signal when decoding fails. Appeal Br. 8; Reply Br. 5-6. ISSUE Under § 103, has the Examiner erred in rejecting claim 1 by finding that 3GPP, Ro, and Takahashi collectively would have taught or suggested a base station method that, in case decoding a received signal fails, (1) skips storing the received signal in a buffer in case that resource on which the signal was received is included in an overlap region, or, if not, (2) stores the received signal in the buffer? ANALYSIS Claims 1, 3, 5, and 6 We begin by noting that claim 1 recites a method for a base station with two principal affirmative steps, namely (1) receiving a signal whose strength is higher than a threshold value, and (2) identifying whether decoding the signal fails. The remaining steps, however, all follow the clause “in case that the decoding of the signal fails.” That is, the limitations following this clause, namely (1) identifying whether a resource is in an overlap region; (2) skipping storing the received signal in a buffer in case that the resource is included in the overlap region; and (3) storing the received signal in the buffer in case that the resource is not included in the overlap region are all contingent on signal decoding failure. Appeal 2021-000903 Application 15/827,419 5 In effect, the clause “in case that the decoding of the signal fails” recites a condition that must be satisfied for the steps that follow, namely the last three steps of claim 1, to occur. In other words, claim 1’s last three steps occur only if decoding fails. Conditional limitations, however, need not be satisfied to meet a method claim. See Ex parte Schulhauser, Appeal No. 2013-007847 (PTAB Apr. 28, 2016) (precedential), at 6-10; see also Cybersettle, Inc. v. Nat’l Arbitration Forum, Inc., 243 F. App’x 603, 607 (Fed. Cir. 2007) (unpublished) (noting the Federal Circuit has held that “[i]f the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed”); Applera Corp. - Applied Biosystems Grp. v. Illumina, Inc., 375 F. App’x 12, 21 (Fed. Cir. 2010) (unpublished) (affirming a method claim’s interpretation as including a step that need not be practiced if the condition for practicing the step is not met); MANUAL OF PATENT EXAMINING PROCEDURE (MPEP) § 2111.04(II) (9th ed. Rev. 10.2019, June 2020) (citing Schulhauser). Here, because claim 1’s decoding failure condition need not be satisfied to meet the claim, the prior art need only teach or suggest the first two limitations that are not contingent on satisfying the recited decoding failure condition. Therefore, Appellant’s arguments, which are directed principally to the alleged shortcomings of the cited prior art in connection with claim 1’s last two limitations (see Appeal Br. 4-8; Reply Br. 2-6), are Appeal 2021-000903 Application 15/827,419 6 unavailing, for they are not commensurate with the scope of the claim that does not require performing those steps.3 Nevertheless, we still see no error in the Examiner’s reliance on the cited prior art for at least suggesting claim 1’s limitations even if the claim’s last three steps had to be performed-which they do not. First, Appellant’s contention that 3GPP’s base station does not identify whether a decoding failure occurs due4 to overlapping of received signals (Appeal Br. 6) is unavailing, for the claim recites no such requirement. Rather, all the claim requires in this regard is that the failure to decode the recited received signal be identified: there is no limitation or restriction on the cause of that failure or how that identification is performed. Given the breadth of this limitation, Appellant does not persuasively rebut the Examiner’s reliance on 3GPP’s Section 2 for at least suggesting identifying signal decoding failure, particularly given the requirement to estimate channels to decode transmissions in “Observation 1.” Given this channel estimation requirement, 3GPP at least suggests that the eNB’s inability to estimate channels in overlapping transmissions results in decoding failure, effectively identifying that failure. See 3GPP § 2 (“Observation 1”). Furthermore, Appellant’s contention that 3GPP does not teach or suggest a base station that skips storing a signal for which decoding 3 Given these authorities, we leave to the Examiner to reconsider the patentability of independent method claim 7 whose last four clauses are all contingent upon satisfying the recited condition, namely “in case that a decoding of the signal fails.” 4 Although Appellant’s argument contains an apparent typographical error by using the phrase “do to overlapping of received signals” (Appeal Br. 6; emphasis added), we nonetheless presume the term “due” was intended instead of “do” for proper grammatical form. Appeal 2021-000903 Application 15/827,419 7 fails when the signal is received in an overlap region (Appeal Br. 5; Reply Br. 3) is unavailing, for the Examiner did not cite 3GPP for teaching that particular feature. See Ans. 3-5, 14-17. Nor do we find error in the Examiner’s reliance on Ro and Takahashi for at least suggesting claim 1’s last two limitations, respectively. First, as the Examiner indicates (Ans. 9-11), the embodiments shown in Takahashi’s Figures 5 and 13, where the base station detects error in step S6 in connection with decoding process S5, at least suggests determining signal decoding failure, at least to that extent. See Takahashi ¶¶ 72-73, 94. Appellant does not squarely address-let alone persuasively rebut-the Examiner’s findings in this regard. See Appeal Br. 8; Reply Br. 5-6. Nor does Appellant persuasively rebut the Examiner’s reliance on Takahashi for at least suggesting storing the received signal in a buffer in case that a resource is not included in an overlap region as claimed. As the Examiner explains (Ans. 18), because Takahashi’s error detection occurs in connection with retransmissions where signals are stored and combined with retransmission signals to increase efficiency as noted in Takahashi’s paragraph 2, Takahashi at least suggests storing the received signal in a buffer. That the frequency band used to transmit retransmission signals does not overlap the band used to transmit initial transmission signals when decoding information is smaller than a predetermined reference value in Takahashi’s paragraphs 18 and 19 at least suggests that received signals would be stored in these particular retransmission scenarios. Accord Ans. 18 (noting this point). We also see no error in the Examiner’s reliance on Ro for at least suggesting skipping storing the received signal in a buffer in case that a Appeal 2021-000903 Application 15/827,419 8 resource is included in an overlap region as claimed. First, Ro’s paragraph 26 teaches skipping SRS transmission when it overlaps with a PUCCH region-a transmission avoidance that likewise skips receiving as well. See Appeal Br. 7; Reply Br. 4 (acknowledging this point). Nevertheless, because Takahashi teaches storing received signals in connection with retransmissions when signal decoding fails as noted previously, skipping transmissions when resources are in an overlap region, as taught by Ro, in connection with retransmissions would, therefore, skip storing received signals in connection with those retransmissions. Nor are we persuaded of error in the Examiner’s reliance on the functionality of Ro’s controller 1303 in Figure 13 that ensures receiving the SRS is skipped when the SRS overlaps with PUCCH region and, therefore, at least suggests not storing dropped signals, particularly when considered in light of Takahashi’s storing received signals in connection with retransmissions. See Ro ¶¶ 90-91, 11; Takahashi ¶ 2; see also Ans. 8, 14-17. To the extent Appellant contends (Appeal Br. 7; Reply Br. 4) that Ro’s controller that skips receiving the SRS does not drop that received signal as the Examiner finds (Ans. 4, 8), we disagree. Ro states in paragraph 26 that if a SRS transmission is skipped, it is dropped. Given Ro’s parlance, Ro at least suggests that the controller’s skipping receiving the SRS includes dropping that received signal, at least in an obvious variation. Appellant’s arguments regarding Ro’s alleged shortcomings in this regard, including its lack of a received signal decoding failure (Appeal Br. 6-8; Reply Br. 4-5) do not show nonobviousness where, as here, the rejection is not based on Ro alone, but rather on the cited references’ Appeal 2021-000903 Application 15/827,419 9 collective teachings. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Therefore, we are not persuaded that the Examiner erred in rejecting claim 1, and claims 3, 5, and 6 not argued separately with particularity. Claims 8, 10, 12, 13, and 15 For similar reasons, we also sustain the Examiner’s rejection of independent claim 8 reciting an apparatus with limitations commensurate with those recited in claim 1. Although conditional limitations need not be met to satisfy a method claim as noted previously, that is not the case where, as here, the claim recites an apparatus whose structure performs a function that occurs only if a condition is satisfied. See Schulhauser, at 14. That is, for apparatus claims, the claim still requires structure for performing the function should the condition occur. Nevertheless, for the reasons noted previously, we are not persuaded that the Examiner erred in rejecting claim 8, and claims 10, 12, 13, and 15 not argued separately with particularity. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 5, 6, 8, 10, 12, 13, 15 103 3GPP, Ro, Takahashi 1, 3, 5, 6, 8, 10, 12, 13, 15 Appeal 2021-000903 Application 15/827,419 10 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED