Ex Parte Chen et al

Patent Trial and Appeal Board

Sep 21, 2017

13750735 (P.T.A.B. Sep. 21, 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.
13/750,735 01/25/2013 Wanshi Chen 121088US 3256
15055 7590 09/25/2017
Patterson & Sheridan, L.L.P.
Qualcomm
24 Greenway Plaza, Suite 1600
Houston, TX 77046
EXAMINER
ATKINS JR., GEORGE CALVIN
ART UNIT PAPER NUMBER
2412
NOTIFICATION DATE DELIVERY MODE
09/25/2017 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):
qu alcomm @ pattersonsheridan .com
PAIR_eOfficeAction@pattersonsheridan.com
ocpat_uspto@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WANSHI CHEN,
ALEKSANDAR DAMNJANOVIC,
and JUAN MONTOJO1
Appeal 2017-005132
Application 13/750,735
Technology Center 2400
Before JOHNNY A. KUMAR, JASON J. CHUNG, and
TERRENCE W. McMILLIN, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1—38. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify QUALCOMM Incorporated as the real party in
interest. App. Br. 4.
Appeal 2017-005132
Application 13/750,735
STATEMENT OF THE CASE
Representative Claim
Claim 1 is illustrative of the claims on appeal and is reproduced
below:
1. A method of wireless communications by a wireless
node, the method comprising:
determining resources for transmission of a common
reference signal (CRS) in a subframe based, at least in part, on a
type of one or more channels to be transmitted in the subframe;
and
transmitting the CRS using the determined resources.
Rejections
Claim 29 is rejected under 35 U.S.C. § 112(b) or pre-AIA 35 U.S.C.
§ 112, second paragraph, as being indefinite. Final Act. 6.
Claims 1,9, 10, 18—21, 23, 29, 31, 37, and 38 are rejected under
pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Wang2 in view of
Qu.3 Final Act. 7—17.
Claims 2, 3, 11, 12, 22, 24, 30, and 32 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Wang in view of Qu, further
in view of Ranta-Aho.4 Final Act. 18—24.
Claims 4, 13, 25, and 33 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Wang in view of Qu and Ranta-Aho,
further in view of Lee.5 Final Act. 24—26.
2 US 2011/0268101 A1 (Nov. 3,2011).
3 US 2012/0207126 A1 (Aug. 16, 2012).
4 WO 2013/044948 A1 (Apr. 4, 2013), US 2015/0146629 A1 (May 28,
2015) used for citations.
5 US 2013/0208604 A1 (Aug. 15, 2013).
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Application 13/750,735
Claims 5, 14, 26, and 34 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Wang in view of Qu and Ranta-Aho,
further view of Shin.6 Final Act. 26—30.
Claims 6, 7, 15, 16, 27, 28, 35, and 36 are rejected pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Wang in view of Qu, further in view of
Lee. Final Act. 30—33.
Claims 8 and 17 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Wang in view of Qu, further in view of Kim.7 Final
Act. 33-34.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. With respect to the rejections under
35 U.S.C. § 103(a), we agree with the Examiner’s findings and conclusion
and adopt them as our own. However, regarding the rejection under
35 U.S.C. § 112, second paragraph, we are persuaded by Appellants’
contentions that the Examiner erred.
Rejection under 35 U.S.C. § 112, Second Paragraph
The Examiner rejects claim 29 as indefinite for failing to point out
particularly and distinctly claim the subject matter applicants regard as the
invention. Specifically, the Examiner finds the “application fails to disclose
algorithms sufficient to transform a general purpose computer to a special
purpose computer, so that one of ordinary skill in the art could implement
the disclosed algorithms to achieve the claimed functions.” Final Act. 6.
6 US 2013/0176952 A1 (July 11, 2013).
7 Jingyu Kim et al., Optimal Relaying Strategy for UE Relays, 2011
17th Asia-Pacific Conference on Communications (APCC).
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Application 13/750,735
A decision on whether a claim is indefinite under 35U.S.C. § 112,
second paragraph, requires a determination of whether one of ordinary skill
in the art would understand what is claimed when the claim is read in light
of the specification. See Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d
1343, 1350 (Fed. Cir. 2010); Orthokinetics, Inc. v. Safety Travel Chairs,
Inc., 806 F.2d 1565, 1568 (Fed. Cir. 1986). Applying such test to the claim
language in question, we agree with Appellants’ contention that “paragraphs
[0057] and [0072]-[0080] of the Appellants’ published application disclose
the necessary algorithms (at least in prose) with respect to amended claim
29.” App. Br. 9-10; Reply Br. 2-3.
Thus, we do not sustain the Examiner’s rejection of claim 29 under
35 U.S.C. § 112, second paragraph.
Rejections under 35 U.S.C. § 103(a)
Appellants contend that the combination of Wang and Qu does not
teach or suggest the claimed subject matter because:
Wang and Qu provide no motivation to a skilled person to
determine the REs in a subframe for transmission of CRS based
on a type of channel itself to be transmitted in the subframe,
without using the Appellants ’ specification as a guide.
App. Br. 13 (Appellants’ emphasis omitted, emphasis ours).
In other words, Appellants contend the Examiner has relied on
impermissible hindsight (i.e., no motivation to a skilled person to determine
.. .without using the Appellants’ specification as a guide) for limitations in
claim 1. Regarding Appellants’ hindsight argument, we are cognizant that
our reviewing courts have not established a bright-line test for hindsight. In
KSRIntj Co. v. Teleflex, Inc., 550 U.S. 398 (2007), the U.S. Supreme Court
guides that “[a] factfinder should be aware, of course, of the distortion
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Application 13/750,735
caused by hindsight bias and must be cautious of arguments reliant upon ex
post reasoning.” Id. at 421 (citing Graham v. John Deere Co. of Kansas
City, 383 U.S. 1, 36 (1966)). Nevertheless, the Supreme Court qualified the
issue of hindsight by stating, “[rjigid preventative rules that deny factfinders
recourse to common sense, however, are neither necessary under our case
law nor consistent with it.” Id.
Here, we see the post-AST? hindsight question before us as a balancing
test'. We decide whether the Examiner’s proffered combination of
references is merely: (1) “the predictable use of prior art elements according
to their established functions” (AST?, 550 U.S. at 417), consistent with
common sense; or, (2) would an artisan reasonably have combined the cited
references in the manner proffered by the Examiner but for having the
benefit of Appellants’ claims and Specification to use as a guide.
After reviewing the respective teachings and suggestions of the
references (as cited by the Examiner, Final Act. 7—8), we find the weight of
the evidence supports the Examiner’s findings. In reviewing the record, we
find the Examiner provided sufficient articulated reasoning with some
rational underpinning to establish why an artisan would have been motivated
to combine the secondary Qu reference with the primary Wang reference.
Final Act. 7—8; Ans. 5.8
8 The Examiner finds,
[I]t would have been obvious to one having ordinary skill in the
art to combine Wang with Qu such that resources are
determined for transmitting a CRS based on a type of one or
more channels to be transmitted in the subframe. Both
inventions are directed toward transmitting CRS, with Wang
determining CRS resources based on physical cell ID. A
subframe of a cell will have particular channel types associated
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Moreover, Appellants have not demonstrated the Examiner’s
proffered combination would have been “uniquely challenging or difficult
for one of ordinary skill in the art.” Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
Nor have Appellants provided any objective evidence of secondary
considerations, which our reviewing court guides “operates as a beneficial
check on hindsight.” Cheese Systems, Inc. v. Tetra Pak Cheese and Powder
Systems, Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
In summary, we find combining the respective reference teachings in
the manner proffered by the Examiner would have merely resulted in “the
predictable use of prior art elements according to their established
functions,” KSR, 550 U.S. at 417. See Ans. 4—5. We find the Examiner
provided sufficient articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness. See KSR, 550 U.S. at 418; see
also Final Act. 8. We are further mindful that the skilled artisan would “be
able to fit the teachings of multiple patents together like pieces of a puzzle”
since the skilled artisan is “a person of ordinary creativity, not an
automaton.” KSR, 550 U.S. at 420-21.
with it, and Qu matches a channel type associated with a cell
with overlapping CRS resources. A phosita would therefore
take the teaching of Qu and map a set of CRS resources for a
type of channel associated with the subframe of a particular
PCI, the motivation being efficient support of P2P
communication for UEs (See Wang, par. 0006).
Final Act. 8.
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This reasoning is applicable here. Accordingly, on this record we are
not persuaded the Examiner erred by improperly combining the cited
references under § 103.
For at least the aforementioned reasons, on this record, and based
upon a preponderance of the evidence, we are not persuaded by Appellants’
arguments alleging the Examiner improperly combined the cited references
under § 103, or that the proffered combination of Wang and Qu does not
teach or suggest the contested limitations within the meaning of
representative claim 1. For independent claims 10, 19, and 20, Appellants
rely on the arguments presented for claim 1. Id. We are not persuaded for
the previously discussed reasons.
Regarding dependent claims 3 and 4, while Appellants raised
additional arguments for patentability of the cited claims (App. Br. 14—16),
we find that the Examiner has rebutted in the Answer each and every one of
those arguments by a preponderance of the evidence. Ans. 6—7. Therefore,
we adopt the Examiner’s findings and underlying reasoning, which are
incorporated herein by reference.
Appellants argue the Examiner erred in rejecting the remaining claims
based on arguments similar to those provided for their respective base
claims. For the reasons previously described above, these arguments do not
persuade us that the Examiner erred in rejecting the remaining claims.
DECISION
We reverse the Examiner’s rejections of claim 29 under 35 U.S.C.
§112, second paragraph.
We affirm the Examiner’s rejections of claims 1—38 under 35 U.S.C.
§ 103(a).
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No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f).
AFFIRMED
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