Ex Parte Bertrand et al

Patent Trial and Appeal Board

Jan 24, 2018

13455463 (P.T.A.B. Jan. 24, 2018)

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.
13/455,463 04/25/2012 Pierre Bertrand TI-70773 8950
23494 7590 01/26/2018
TEXAS INSTRUMENTS INCORPORATED
P O BOX 655474, M/S 3999
DALLAS, TX 75265
EXAMINER
MILLS, DONALD L
ART UNIT PAPER NUMBER
2462
NOTIFICATION DATE DELIVERY MODE
01/26/2018 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@ti.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PIERRE BERTRAND, JING JIANG,
and MICHAEL LIVSHITZ
Appeal 2017-0064671
Application 13/455,463
Technology Center 2400
Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
ADAM J. PYONIN, Administrative Patent Judges.
PYONIN, 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 60 and 622. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify Texas Instruments Incorporated as the real party in
interest. See Br. 1.
2 Claims 2, 7—16, 18—31, 34-45, 48—59, 61, and 63 are pending and not
subject to a rejection. See Ans. 2—5.
Appeal 2017-006467
Application 13/455,463
STATEMENT OF THE CASE
Appellants’ disclosure relates to wireless communication between
user equipment and a base station in which “[e]ach user equipment signals
the base station a scheduling recommendation” and “[t]he base station
schedules downlink transmissions ... in response to the recommendations.”
Spec 3:4—14.3 Claims 60 and 62 are independent, and claim 60 is
reproduced below for reference (with emphases added):
60. A base station comprising:
circuitry for scheduling an uplink communication with a
user equipment based upon Sounding Reference Signal (SRS)
and DeModulation Reference Signal (DMRS) signals received
from said user equipment, said scheduling including a 2-step
recursive maximum expansion calculation including
initial subband allocation and expansion,
subband gap filling', and
circuitry for signaling to said user equipment its
scheduling grant.
The Examiner’s Rejections
Claims 60 and 62 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. Ans. 4.
Claims 60 and 62 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Chen (US 2009/0262695 Al; Oct. 22, 2009). Ans. 5.
3 Separately, we note Appellants’ Briefs appear to be printed with a pattern
of missing portions of the text fonts. See 37 C.F.R. 1.52(a)(l)(iv) and 37
C.F.R. 1.52(a)(l)(v).
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Appeal 2017-006467
Application 13/455,463
ANALYSIS
A. 35 U.S.C. § 112, Second Paragraph
The Examiner finds independent claims 60 and 62 are indefinite,
because the claims both recite “circuitry for,” but “fail[] to recite the element
which performs each step.” Ans. 6. The Examiner further finds Appellants’
“specification describes at most a single circuitry for symbol processing, but
makes no mention of‘circuitry’ for signaling,” and therefore “[t]he claimed
‘circuitry for’ improperly groups together two distinct invention elements;
thereby, omiting essential subject matter.” Id.
Appellants argue the Examiner erred, because the use of the phrase
“circuitry for” in claims 60 and 62 does not create a gap between elements in
the claims (see Reply Br. 3—5), and “it is not necessary to recite in the claim
everything necessary to operate the device.” Reply Br. 6, citing Deering v.
Winona, 155 U.S. 286 (1894), and Special Equipment v. Coe, 324 U.S. 370
(1945).
We are persuaded by Appellants’ arguments. We find one skilled in
the art, having reviewed the disclosure, would consider the disclosed
hardware as comprising electronic circuitry (see Spec 39:12—30 and Fig. 18)
and would not consider the claims as containing gaps or omitting essential
subject matter.
Accordingly, we reverse the Examiner’s indefmiteness rejection of
claims 60 and 62.
B. 35 U.S.C. § 102(b)
Appellants argue the Examiner erred in rejecting independent claims
60 and 62 as anticipated by Chen, because the cited portions of Chen fail to
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Appeal 2017-006467
Application 13/455,463
teach or suggest the “2-step recursive maximum expansion calculation”
recited by both claims. See Br. 29-30.
We agree. The Examiner finds that “[t]he claims recite[] ‘circuitry
for’ language, which the Examiner interprets as intended use language and
the claim language following the preposition ‘for’ is given no patentable
weight” and further finds that “any ‘circuitry’ in the prior art that is also
capable of performing the recited step discloses the claimed limitation.”
Ans. 7.
Appellants have successfully shown, however, “that the prior art
structure did not inherently possess the functionally defined limitations of
[Appellants’] claimed apparatus.” In re Schreiber, 128 F.3d 1473, 1478
(Fed Cir. 1997) (emphasis added). We agree with Appellants that the
Examiner has not pointed to any portion of Chen to show that Chen
explicitly or inherently performs a “2-step recursive maximum expansion
calculation” as claimed. Chen, therefore, does not anticipate the limitations
of claims 60 and 62. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970)
(“All words in a claim must be considered in judging the patentability of that
claim against the prior art.”).
Accordingly, we are constrained by the record to reverse the
Examiner’s anticipation rejection of claims 60 and 62.
IN THE EVENT OF FURTHER PROSECUTION
Should there be further prosecution of this application, the Examiner
may wish to consider whether the “circuitry for” claim language invokes the
means plus function analysis under 35U.S.C. § 112, sixth paragraph. See
Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015)
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Appeal 2017-006467
Application 13/455,463
(finding means plus function may apply if the claim limitation “fails to recite
sufficiently definite structure or else recites function without reciting
sufficient structure for performing that function.”); see also Apex Inc. v.
Raritan Computer, Inc., 325 F.3d 1364 (Fed. Cir. 2003) and Linear
Technology Corp. v. Impala Linear Corp., 379 F.3d 1311 (Fed. Cir. 2004).
DECISION
We reverse the Examiner’s indefmiteness rejection of claims 60 and
62.
We reverse the Examiner’s anticipation rejection of claims 60 and 62.
REVERSED
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