Ex Parte Baker et al

Patent Trial and Appeal Board

Apr 28, 2017

13884324 (P.T.A.B. Apr. 28, 2017)

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.
13/884,324 05/09/2013 Matthew Baker LUTZ 201648US01 3398
48116 7590 05/02/2017
FAY STTARPF/T TTf’F.NT
EXAMINER
1228 Euclid Avenue, 5th Floor NGUYEN, HANH N
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Cleveland, OH 44115-1843 ART UNIT PAPER NUMBER
2479
NOTIFICATION DATE DELIVERY MODE
05/02/2017 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):
docketing @ faysharpe.com
ipsnarocp @ nokia. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW BAKER,
TECK HU, CHRISTIAN GERLACH, and QI JIANG
Appeal 2016-0083551
Application 13/884,324
Technology Center 2400
Before JOHN A. EVANS, JAMES R. HUGHES, and ALEX S. YAP,
Administrative Patent Judges.
YAP, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1—19, which are all the claims pending in this application. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 According to Appellants, the real party in interest is Alcatel Lucent. (App.
Br. 1.)
Appeal 2016-008355
Application 13/884,324
STATEMENT OF THE CASE
Introduction
Appellants’ invention “relates to wireless network, and particularly to
inter-cell interference coordination.” (Substitute Specification (filed
February 4, 2015) (“Spec.”) 1.) Claim 1 is illustrative, and is reproduced
below (with minor reformatting):
1. A method, in a user equipment, of providing measurement
reports, wherein said user equipment is interfered by a
plurality of wireless networks, said method comprising:
- receiving, from a eNodeB, information about a
plurality of subframe patterns respectively used by said
plurality of wireless networks;
- obtaining, from the eNodeB, associations between
the measurement reports and said plurality of subframe
patterns;
- measuring channel information in at least one
subframe patterns, and generating measurement reports
for said at least one subframe patterns according to said
association;
- sending said measurement reports to said eNodeB.
Prior Art and Rejections on Appeal
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Krishnamurthy et al. US 8,520,617 B2 Aug. 27, 2013
(“Krishnamurthy”)
Claims 7 and 15 stand rejected under 35U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the Appellants regard as the
invention. (See Final Office Action (mailed April 3, 2015) (“Final Act.”) 3.)
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Application 13/884,324
Claims 1—19 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Krishnamurthy. (See Final Act. 4—7.)
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We are persuaded that the Examiner
erred in rejecting the claims on appeal.
Indefiniteness
Claim 7 recites, in part, “relating each of the received measurement
reports with the corresponding subframe pattern according to said
association.” Claim 15, recites, in part, “a fourth unit for relating each of the
received measurement reports with the corresponding subframe pattern
according to said association.” The Examiner rejects claims 7 and 15 as
indefinite because “the claimed limitation does not clearly address how the
received measurement report is related with the corresponding subframe
pattern.” (Final Act. 3.) Appellants, however, contend that “upon reading
the [Specification, one having ordinary skill in the art would understand
clearly how to associate a measurement report with a subframe pattern.”
(App. Br. 9.) According to Appellants, the Specification “gives multiple
examples related to these features.” (Id. (citing Spec. 8—9) (listing various
embodiments of the claimed invention).) The Examiner responds that while
the Specification “provides an example wherein ‘the index of subframe with
the sent measurement report is relating to the index of the subframe[,]’ [the
Specification] does not clearly show how the received measurement report is
related to the corresponding subframe pattern.” (Ans. 7, emphasis added.)
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Application 13/884,324
35 U.S.C. § 112, second paragraph, requires that “[t]he specification . . .
conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention.”
“As the statutory language of ‘particularity]’ and ‘distinctness]’ indicates,
claims are required to be cast in clear—as opposed to ambiguous, vague,
indefinite—terms.” In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014)
(alterations in original);2 see also In re Hammack, 427 F.2d 1378, 1382
(CCPA 1970) (“the essence of [the] requirement [under 35 U.S.C. § 112,
second paragraph] is that the language of the claims must make it clear what
subject matter they encompass.”).
On the record before us, we agree with Appellants that the Examiner
has not established a prima facie case of indefmiteness of claims 7 and 15.
Even assuming arguendo that the Examiner is correct that some of the
examples in the Specification (e.g., embodiments two and three) are relating
the measurement report to the index of the subframe rather than to the
corresponding subframe pattern, three other embodiments (one, four, and
five, on pages 8 to 9 of the Specification) discuss CQI measurement reports
and measurement subframe patterns. The Examiner does not address these
2 Our reviewing court has held that when the USPTO has initially issued a
well-grounded rejection that identifies ways in which the language in a claim
is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing
and defining the claimed invention, and thereafter the applicant fails to
provide a satisfactory response, the USPTO can properly reject the claim as
failing to meet the statutory requirement that the claims be definite. 751
F.3d at 1311, 1313—14. The court explained a satisfactory response can take
the form of a modification of the language identified as unclear, a separate
definition of the unclear language, or, in appropriate circumstances,
“persuasive explanation for the record of why the language at issue is not
actually unclear.” Id. at 1311.
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Application 13/884,324
other embodiments, pointed out by Appellants, in the Answer. For example,
the fourth embodiment states that “the association between the CQI
measurement report and the measurement subframe pattern is signalled [sic]
to the PUE by the PeNB together with the signaling that requests the CQI
measurement report.” (Spec. 9.) For the foregoing reasons, we are
persuaded of Examiner error in the rejection of claims 7 and 15 and
therefore do not sustain the 35 U.S.C. § 112, second paragraph rejection of
these claims.3
Anticipation
The Examiner finds Krishnamurthy anticipates claim 1. (Final Act.
3—4.) Appellants contend the Examiner erred because the rejection cites to
different embodiments in Krishnamurthy for different limitations. (App. Br.
10—11.) According to Appellants, the Examiner cited to the first and third
embodiments of Krishnamurthy for the receiving and obtaining limitations
of claim 1 and that both embodiments should not be combined, {id.; Reply
3^4; see Final Act. 4 (discussing the third embodiment for the receiving
limitation and the first and third embodiments for the obtaining limitation).)
We agree with Appellants of Examiner error. Even assuming
arguendo that the Examiner is correct that the third embodiment of
Krishnamurthy teaches or suggests sending measurement patterns to the UE
(Ans. 8), we agree with Appellants, that the first embodiment of
Krishnamurthy teaches using a pre-defmed or signaled pattern, which could
3 In case of further prosecution, the Examiner should consider whether the
pending claims are directed to a patent-ineligible abstract idea and whether
the claims have an “inventive concept” beyond the abstract idea under the
Supreme Court’s Alice test. Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S.
Ct. 2347 (2014).
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reasonably be interpreted as using a pre-defmed pattern that is already stored
in the UE (i.e., there is no need to send measurement patterns to the UE).
(App. 10—11.) The Examiner does not respond to this contention and we
agree with Appellants that it would be improper to combine the two
embodiments in an anticipation rejection.4 Net Money In, Inc. v. Verisign,
Inc., 545 F.3d 1359, 1369, 1371 (Fed. Cir. 2008) (“Thus, it is not enough [in
an anticipation rejection] that the prior art reference discloses part of the
claimed invention, which an ordinary artisan might supplement to make the
whole, or that it includes multiple, distinct teachings that the artisan might
somehow combine to achieve the claimed invention.”).
For the foregoing reasons, we are persuaded of Examiner error in the
rejection of claim 1 and do not sustain the 35 U.S.C. § 102 rejection of claim
l.5 Independent claims 7, 14, and 15 contain similar limitations at issue and
the Examiner cites to the same passages of Krishnamurthy for the limitation
and makes similar findings. (Final Act. 4—5.) Thus, for the same reason, we
do not sustain the 35 U.S.C. § 102 rejection of independent claims 7, 14, and
15, as well as claims 2—6, 8—13, and 16—19, which depend from either
independent claim 1 or 7.
4 In case of further prosecution, the Examiner should consider whether a
35 U.S.C. § 103 rejection over Krishnamurthy is appropriate. For example,
whether one of ordinary skill in the art would combine the two embodiments
of Krishnamurthy.
5 Because we do not sustain the Examiner’s rejection for the reasons
discussed herein, we need not address Appellants’ further arguments. See
Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (finding an
administrative agency is at liberty to reach a decision based on “a single
dispositive issue”).
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DECISION
The decision of the Examiner to reject claims 1—19 is reversed.
REVERSED
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