Ex Parte Chen et al

Patent Trial and Appeal Board

Nov 21, 2017

13455025 (P.T.A.B. Nov. 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.
13/455,025 04/24/2012 Wanshi Chen QLXX.PO 1OOUS/11204992 6175
15757 7590 11/24/2017
Qualcomm /Norton Rose Fulbright US LLP
2200 Ross Avenue
Suite 3600
Dallas, TX 75201-7932
EXAMINER
NOWLIN, ERIC
ART UNIT PAPER NUMBER
2474
NOTIFICATION DATE DELIVERY MODE
11/24/2017 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):
ocpat_uspto@qualcomm.com
doipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WANSHI CHEN, PETER GAAL, JUAN MONTOJO, and
JELENA M. DAMNJANOVIC
Appeal 2017-002056
Application 13/455,025
Technology Center 2400
Before ALLEN R. MacDONALD, JEREMY J. CURCURI and
SHARON FENICK, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL1
1 The real party in interest identified by Appellants is QUALCOMM
Incorporated. App. Br. 2.
Appeal 2017-002056
Application 13/455,025
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-3, 5, 11-22, 24, and 30-41. Claims 4, 6-10, 23, and 25-29 are
objected to or allowable. Final Act. 1. We have jurisdiction under 35
U.S.C. § 6(b).
Exemplary Claim
Exemplary claim 1 under appeal reads as follows (emphasis and
formatting added):
1. A method for transmitting long term evolution (LTE)
measurement reports on an uplink, comprising:
[(A)] configuring, at a user equipment (UE), to send measurement
reports for multiple component carriers in one subframe in a
multicarrier configuration;
[(B)] determining, at the UE, a validity of reference subframes for
each of the multiple component carriers; and
[(C)] managing, at the UE, in response to said determining the
validity of the reference subframes for each of the multiple
component carriers, the sending of the measurement reports
for the multiple component carriers in the one subframe in the
multicarrier configuration.
Rejections
The Examiner rejected claims 1, 20, 39, and 40 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of R2-110344 (3GPP
Document: R2-110344, 3GPP TSG-RAN2 Meeting #72bis, SCell activation
and CSI(2011) (hereinafter “3GPPLG”) and Eamshaw et al. (US 8,582,638
B2; issued Nov. 12, 2013).2
2 Separate patentability is not argued for claims 20, 39, and 40. Except for
our ultimate decision, these claims are not discussed further herein.
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Appeal 2017-002056
Application 13/455,025
The Examiner rejected claims3 2, 3, 5, 11-19, 21, 22, 24, 30-38, and
41 under 35 U.S.C. § 103(a) as being unpatentable over various
combinations of 3GPPLG, Eamshaw, and other prior art references.4
Issues on Appeal
Did the Examiner err in rejecting claim 1 as being obvious?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
disagree. We concur with the conclusions reached by the Examiner.
A
Appellants contend the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because:
[T]he focus of 3GPP1 ’s disclosure is to provide a way to select
which CSI report is sent and which one is dropped. Therefore,
the basic principle under which 3GPPLG is designed to operate
is one in which a CSI report of only one serving cell in any
given subframe is transmitted. Thus, a person of ordinary skill
in the art, reading 3GPPLG would find a solution applicable to
3 The Final Action contains a typographical error at page 22 (“16, 18-19,
22-23, and 37-38” should read —16, 18, 19, 35, 37, and 38—). For claim
35, the rejection analysis is provided at pages 24-25 of the Final Action.
For claim 22, the rejection is provided at pages 31-32 of the Final Action.
Claim 23 has been indicated as allowable if rewritten in dependent form at
page 2 of the Final Action.
4 Separate patentability is not argued for claims 2, 3, 5, 11-19, 21, 22, 24,
30-38, and 41. Rather, Appellants address these claims only by referencing
the argument for claim 1. Thus, because we affirm the Examiner’s rejection
of claim 1, the rejection of these claims turns on our decision as to claim 1.
Except for our ultimate decision, these claims are not discussed further
herein.
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Appeal 2017-002056
Application 13/455,025
that basic principle. Under a different principle of operation
(e.g., one where CSI reports of more than one serving cell in
any given subframe are transmitted), the solution disclosed in
3GPPLG to select which CSI report is sent and which one is
dropped would be not needed and would, in fact, be useless.
In contrast to 3GPPLG, Earnshaw offers a solution
designed to work under a principle of operation that includes
transmitting CSI reports for multiple carriers within a single
subframe. This principle of operation under which Earnshaw is
designed to operate is different than the principle of operation
under which 3GPPLG is designed to operate. Thus, a person of
ordinary skill in the art reading Earnshaw would not modify
3GPPLG, as the solutions are designed to operate under
different principles and doing so would entail improperly
changing the principle of operation of 3GPPLG. Such
modification changing the principle of operation of 3GPPLG is
impermissible and, thus, renders the teachings of Earnshaw
insufficient to render claim 1 prima facie obvious.
App. Br. 8 (emphasis added).
Appellant respectfully notes that Appellant’s argument was
intended to establish that the disclosure of 3GPPLG, when read
within the disclosure of 3GPP1, cannot be modified by
Earnshaw without changing the basic principle of operation of
3GPPLG.
Reply Br. 4 (emphasis added).
We disagree. Substitution of components (i.e., Eamshaw’s multiple
measurement report for the 3GPPLG single measurement report (Final Act.
4-5)) does not render the combination inoperable where it does not destroy
the overall principle of operation of the device. In re Mouttet, 686 F.3d
1322, 1332 (Fed. Cir. 2012). Our reviewing court’s Mouttet decision is
instructive here. In that case, the combination supporting an obviousness
determination involved replacing the optical components with electrical
components used in the primary reference. Id. at 1332. Our reviewing court
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Application 13/455,025
held that such a change would not destroy the principle of operation of the
primary reference because it only changed how the reference accomplished
its operability, rather than the operations themselves. Id.
Further, the Examiner has provided an articulated reason to combine
the teachings of the references that is supported by evidence drawn from the
record. See Final Act. 4-5 (citing Eamshaw col. 3,1. 61-col. 4,1. 5). We
have considered Appellants’ arguments, but we find the Examiner’s reasons
persuasive.
B
Appellants further contend the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
[I]n order for the modification of 3GPPLG with Earnshaw to
work, 3GPPLG would have to be changed so that CSI reports
of more than one serving cell in any given subframe are
transmitted, instead of the disclosed report in which the CSI of
only one serving cell in any given subframe is transmitted.
Appellant respectfully asserts that such a modification could
only be motivated by information improperly gleaned from the
claimed features. However, knowledge gleaned only from
Appellant’s disclosure cannot form the basis of an obviousness
rejection. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA
1971). Thus, a person of ordinary skill in the art would not be
motivated to modify 3GPPLG to transmit CSI reports of more
than one serving cell in any given subframe, except through an
exercise of impermissible hindsight.
App. Br. 9 (emphasis added).
Appellants repackage their argument that the Examiner improperly
changed the principle of operation and accuse the Examiner of engaging in
impermissible hindsight. In the Final Action, the Examiner states:
It would have been obvious to one having ordinary skill
in the art at the time the invention was made to modify
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Application 13/455,025
3GPPLG by sending measurement reports for multiple
component carriers in a multicarrier configuration in one
subframe in a multicarrier configuration and managing, in
response to said determining the validity of reference subframes
for each of the multiple component carriers, the sending of the
measurement reports for the multiple component carriers in the
one subframe in the multicarrier configuration as taught by
Eamshaw because the wireless system is improved by reducing
the use of uplink resources utilized in reporting channel state
information to the base station (Earnshaw, 3:61-4:5).
Final Act. 4-5.
We agree. This is an adequate non-hindsight reason for making the
proposed combination. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007) (substitute one element for another yielding a predictable result);
In re Cree, 818 F.3d 694, 702, n.3 (Fed. Cir. 2016) (non-hindsight reason).
CONCFUSIONS
(1) The Examiner has not erred in rejecting claims 1-3, 5, 11-22, 24,
and 30^11 as being unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1-3, 5, 11-22, 24, and 30-41 are not patentable.
DECISION
The Examiner’s rejections of claims 1-3, 5, 11-22, 24, and 30^41 are
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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