Ex Parte Chen et al

Patent Trial and Appeal Board

Apr 26, 2017

12904928 (P.T.A.B. Apr. 26, 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.
12/904,928 10/14/2010 Wanshi Chen 100109 6900
23696 7590 04/28/2017
OTTAT mMM TNmRPORATFD
EXAMINER
5775 MOREHOUSE DR.
SAN DIEGO, CA 92121
MUSA, ABDELNABI O
ART UNIT PAPER NUMBER
2472
NOTIFICATION DATE DELIVERY MODE
04/28/2017 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):
us-docketing@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WANSHI CHEN and JUAN MONTOJO
Appeal 2016-003062
Application 12/904,9281
Technology Center 2400
Before DEBRA K. STEPHENS, AMBER L. HAGY, and
SHARON FENICK, Administrative Patent Judges.
FENICK, 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 22—28, 49-53, and 61. (Appeal Br. 1.) Claims 2—21,
29-48, 54—60 and 62—64 have been indicated as allowable. (Notice of Panel
Decision from Pre-Appeal Brief Review, Aug. 5, 2015.) Claim 1 is
cancelled. (Appeal Br. 12.) We have jurisdiction under 35 U.S.C. § 6(b)(1).
We affirm.
1 Appellants identify QUALCOMM Incorporated as the real party in
interest. (Appeal Br. 3.)
Appeal 2016-003062
Application 12/904,928
Invention
Appellants’ invention relates to supporting communication with user
equipment (UEs) of different types on a plurality of system bandwidths.
(Abstract.)
Exemplary Claims
Claims 22 and 49, reproduced below, are exemplary:
22. An apparatus for wireless communication, comprising:
means for generating a control message for a user
equipment (UE);
means for setting a resource allocation field of the control
message based on a system bandwidth selected for the UE from
among a plurality of system bandwidths, the resource allocation
field comprising an indication of resources assigned to the UE
for the selected system bandwidth, wherein the setting the
resource allocation field comprises setting the resource
allocation field based on a type of subframe in which the
control message is sent, and wherein a plurality of types of
subframe is associated with at least two different configurations
of the resource allocation field, and wherein a type of subframe
refers to a way in which the subframe is scheduled among
different types of UEs;
means for sending the control message to the UE; and
means for communicating with the UE on the resources
assigned to the UE.
49. An apparatus for wireless communication, comprising:
means for receiving a control message by a user
equipment (UE);
means for determining resources assigned to the UE
based on a resource allocation field of the control message, the
resource allocation field comprising an indication of the
resources assigned to the UE for a system bandwidth selected
for the UE from among a plurality of system bandwidths, the
means for determining resources being configured to interpret
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Application 12/904,928
the resource allocation field based on a type of the UE to
determine the system bandwidth from among the plurality of
system bandwidths, wherein the plurality of system bandwidths
is associated with a same size but different interpretations of the
resource allocation field for a particular format of the control
message; and
means for communicating on the assigned resources by
the UE.
Rejection2
The Examiner rejects claims 22—28, 49-53, and 61 under 35 U.S.C.
§112, second paragraph as indefinite. (Final Action 8—10.)
Issue
Did the Examiner err in finding that claims 22, 25, 49, and 61 are
indefinite for failing to particularly point out and distinctly claim the subject
matter of the invention?
ANALYSIS
With respect to independent claims 22, 25, 49, and 61, the Examiner
finds that the limitations beginning “means for” in these claims are means-
plus-function limitations and as such invoke 35 U.S.C. § 112, sixth
2 The Final Action also includes rejections of claims 2—21, 29-48, 54—60
and 62—64 under 35 U.S.C. § 103(a) (Final Action 10-60.) These claims
were indicated as allowable in the Notice of Panel Decision from Pre-Appeal
Brief Review of Aug. 5, 2015. The Examiner’s Answer identifies these
§ 103 rejections as grounds to be reviewed on appeal. The Examiner’s
Answer does not specifically note the rejection under 35 U.S.C. § 112,
second paragraph. We assume these are inadvertent errors. See 37 C.F.R.
41.39(a)(1), “An examiner’s answer is deemed to incorporate all of the
grounds of rejection set forth in the Office action from which the appeal is
taken (as modified by any advisory action and pre-appeal brief conference
decision), unless the examiner's answer expressly indicates that a ground of
rejection has been withdrawn.”
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Application 12/904,928
paragraph. (Final Action 8—9). The Examiner further finds that the written
description fails to disclose corresponding structure, and thus, rejects the
claims as indefinite. (Id.)
Under 35 U.S.C. § 112, sixth paragraph, the “means-phis-function”
limitation must be “construed to cover the corresponding structure, material,
or acts described in the specification and equivalents thereof.” Personalized
Media Comm ’ns, LLC v. Int’l Trade Comm ’n, 161 F.3d 696, 703 (Fed. Cir.
1998). If the “means-plus-fimction” limitation recited in the claim does not
have an adequate supporting disclosure, then the claim fails to particularly
point out and distinctly claim the invention as required under 35 U.S.C.
§ 112, second paragraph. See In re Donaldson Co., 16 F.3d 1189, 1195
(Fed. Cir. 1994) (“[I]f one employs means-plus-fimction language in a
claim, one must set forth in the specification an adequate disclosure showing
what is meant.... If an applicant fails to set forth an adequate disclosure,
the applicant has in effect failed to particularly point out and distinctly claim
the invention as required by the second paragraph of section 112.”).
An indefmiteness rejection under § 112, second paragraph, is
appropriate if the Specification discloses no corresponding algorithm
associated with a computer or processor. Aristocrat Techs. Australia Pty
Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1337-38 (Fed. Cir. 2008).
However, merely referencing a general purpose computer or processor with
“appropriate programming” without providing an explanation of the
appropriate programming, or disclosing “software” without providing detail
about the means to accomplish the functionality, is not an adequate
disclosure. Id. at 1334; Finisar Corp. v. DirecTV Group, Inc., 523 F.3d
1323, 1340-41 (Fed. Cir. 2008). Likewise, simply reciting the claimed
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Application 12/904,928
functions in the Specification, while saying nothing about how the computer
or processor ensures that those functions are performed, is not a sufficient
disclosure for an algorithm which, by definition, must contain a sequence of
steps. Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1384 (Fed.
Cir. 2009).
Appellants argue that the structure disclosed for the means-for
limitations is a processor(s) in a base station or a UE and that flow charts in
Figures 9 and 10 and paragraphs 94 and 107 disclose algorithms for the
disputed limitations. (Appeal Br. 8.; Reply Br. 2—3) In particular,
Appellants argue that the disclosure ties “processor 1140 and/or other
processors and modules at base station 110” and “processor 1190 and/or
other processors and modules at UE 120” to the methods disclosed in
Figures 9 and 10. (Appeal Br. 8; Reply Br. 2—3)
Thus, Appellants have disclosed general purpose processors or
modules that perform the functionality in the means-for limitations.
Accordingly, the Specification must disclose a corresponding algorithm for
each means-for limitation. Aristocrat Techs., 521 F.3d at 1337—38.
Appellants contend that the flow charts of Figure 9 or Figure 10 and the
associated disclosure provide an algorithm that corresponds to the functions
recited in the claims and describe a finite sequence of steps for performing a
task, and that therefore, the Examiner’s rejection should be reversed. (App.
Br. 8—9; Reply Br. 2—3.) Each of Figures 9 and 10, however, corresponds to
the entirety of one of the independent claims, with each disputed means-for
limitation represented in these figures as merely a “unit” performing a
function. (Spec. 94, 107.)
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Application 12/904,928
Thus, for example, for the disputed limitation “means for generating a
control message for a user equipment (UE),” the entirety of the relevant
disclosure in the Specification is flow chart 900 in Figure 9, which contains
a unit 912 labelled “Generate a control message for a UE,” coupled with a
statement that “[t]he base station may generate a control message for a UE.”
{Id. 194, Fig. 9.) No algorithm or other description of how this function is
performed is provided. The Specification thus merely recites the claimed
function for this means-for limitation without disclosing in any way how the
function is performed.
Similarly, Appellants identify (Appeal Br. 5, 8—9) Figures 7, 9, and 10
and paragraphs 92—94, 103, and 104 of the Specification as describing the
limitation:
means for setting the resource allocation field of the control
message based on a system bandwidth selected for the UE from
among a plurality of system bandwidths, the resource allocation
field comprising an indication of resources assigned to the UE
for the selected system bandwidth, wherein the setting the
resource allocation field comprises setting the resource
allocation field based on a type of subframe in which the control
message is sent, and wherein a plurality of types of subframe is
associated with at least two different configurations of the
resource allocation field, and wherein a type of subframe refers
to a way in which the subframe is scheduled among different
types of UEs
(Claim 22.) The cited portions of the Specification, however, do not provide
the requisite disclosure. For example, the identified disclosures indicate the
presence of a “resource allocation field setting unit” 740 (Fig. 7) with no
disclosed structure and that this unit sets the resource allocation field of the
control message “based on the assigned resources, the selected system
bandwidth, the selected [downlink control information] format, and/or other
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information” (| 92) and that “the resource allocation field may be set based
on a resource allocation type for the resources assigned to the UE.” (1103.)
But these disclosures provide no detail as to how the functions described are
performed, no algorithm, and no structure. Indeed, the cited portions of the
Specification in large part merely parallel the language of the claims.
Therefore, we determine the disclosure is not sufficient.
Although a flow chart corresponding to the entirety of each rejected
claim is present in the disclosure, section 112 requires disclosure for each
means-for limitation in the claim, such as in the form of an algorithm, and
we agree with the Examiner that no such support has been provided.
Thus, Appellant has necessarily failed to particularly point out and
distinctly claim the invention as required. See Aristocrat Techs., 521 F.3d at
1333 (quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir.
2005) (“‘[t]he corresponding structure for a § 112 | 6 claim for a computer-
implemented function is the algorithm disclosed in the specification.”’); Net
MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008) (“[A]
means-plus-fimction claim element for which the only disclosed structure is
a general purpose computer is invalid if the specification fails to disclose an
algorithm for performing the claimed function.”).
Accordingly, we sustain the Examiner’s rejection of claims 22—28,
49-53, and 61 as indefinite under 35 U.S.C. § 112, second paragraph.
DECISION
The Examiner’s 35 U.S.C. § 112, second paragraph rejection of
claims 22—28, 49—53, and 61 is affirmed.
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Pursuant to 37 C.F.R. § 1.136(a)(l)(iv), no time period for taking any
subsequent action in connection with this appeal may be extended.
AFFIRMED
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