13593181 (P.T.A.B. Dec. 21, 2018)

Ex Parte Chen et al

Patent Trial and Appeal BoardDec 21, 2018

13593181 (P.T.A.B. Dec. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/593,181 08/23/2012 97291 7590 12/26/2018 Huawei Technologies Co., Ltd. c/o Shuang Liu(Huawei ID 00344817) Building Gl-2, Huawei Industrial Base, Bantian, Longgang District, Shenzhen, 518129 CHINA FIRST NAMED INVENTOR Xiaobo Chen 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 82764650US05 9566 EXAMINER MILLS, DONALD L ART UNIT PAPER NUMBER 2462 NOTIFICATION DATE DELIVERY MODE 12/26/2018 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): uspatent@huawei.com shiming.wu@huawei.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte XIAOBO CHEN and YONGXIA L V 1 Appeal2018-005301 Application 13/593,181 Technology Center 2400 Before JAMES R. HUGHES, ERIC S. FRAHM, and MATTHEW J. McNEILL, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Introduction Appellants appeal under 35 U.S.C. Â§ 134(a) from a rejection of claims 21, 22, 24--28, 30-32, 45--48, and 55---60. Claims 1-20, 23, 29, 33--44, and 49-54 have been canceled. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. 1 According to the Appeal Brief, the real party in interest is Huawei Technologies Co., Ltd. App. Br. 1. Appeal 2018-005301 Application 13/593,181 Disclosed Invention Appellants' disclosed invention relates to transmitting channel state information (CSI) in a wireless network. Spec. ,r 2. Specifically, a base station may send to a user equipment an uplink scheduling grant command that includes a CSI request field indicating whether a user equipment needs to send CSI on the uplink data channel. Spec. ,r 21. The user equipment obtains a CSI location label based on information of the resource occupied by the received scheduling grant command, and sends CSI of a carrier corresponding to the obtained CSI location label. See Spec. ,r,r 20-29. Exemplary Claim Claim 21, reproduced below, is illustrative of the claimed subject matter: 21. A method for providing aperiodic channel state information (CSI) feedback in a network utilizing carrier aggregation, the method comprising: receiving, by a user equipment, a scheduling grant command from a base station, the scheduling grant command indicating a data channel on an uplink carrier that is to be used for uplink data communications; sending, by the user equipment to the base station through the data channel, aperiodic CSI of one downlink carrier of a plurality of downlink carriers configured for the user equipment, the one downlink carrier having an index that identifies the one downlink carrier matching an index that identifies the uplink carrier. App. Br. 13 (Claims Appendix). 2 Appeal 2018-005301 Application 13/593,181 The Examiner's Rejection Claims 21, 22, 24--28, 30-32, 45--48, and 55---60 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over US 2011/0170499 Al (pub. July 14, 2011) ("Nayeb Nazar") and US 2010/0271970 Al (pub. Oct. 28, 2010) ("Pan"). ANALYSIS Priority Appellants claim foreign priority to Chinese Application No. 201010147431.2 ("Chinese priority application") filed on April 6, 2010 (see Application Data Sheet, filed August 23, 2012),2 which is prior to the April 20, 2010 filing date of the Pan reference applied in the Examiner's obviousness rejection. In the Answer, the Examiner notes that "the Appellant has not perfected their own priority; therefore, the Pan utility patent [application] qualifies under 35 U.S.C. I02(a) and need not rely on the provisional application [to Pan]." Ans. 13. Appellants, however, assert the foreign priority claim is perfected by the submission of an English translation of the Chinese priority application, along with a statement that the translation is accurate. Reply Br. 1. Based on Appellants' submission of the English translation with the Reply Brief, and Appellants' prior submission of a certified copy (Transmittal filed October 4, 2012), we consider Appellants' current application to be entitled to the benefit of the Chinese priority application. See 37 C.F.R. Â§ 1.55(g). 2 The current application is a continuation of International Application No. PCT/CN20I 1/072465, filed April 6, 2011, which in tum claims priority to the Chinese priority application. See Spec. ,r 1; Application Data Sheet. 3 Appeal 2018-005301 Application 13/593,181 Accordingly, in order for Pan to qualify as prior art with respect to the current application, under 35 U.S.C. Â§ 102(e), the subject matter in Pan the Examiner relies upon must have written description support in Provisional Application No. 61/171,609 ("Provisional '609"), filed April 22, 2009, to which Pan claims priority. See MANUAL OF PATENT EXAMINING PROCEDURE (MPEP) Â§ 2136.03(III) ("The pre-AIA 35 U.S.C. 102(e) critical reference date of a U.S. patent or U.S. application publications ... entitled to the benefit of the filing date of a provisional application under 35 U.S.C. 119(e) is the filing date of the provisional application ... if the provisional application(s) properly supports the subject matter relied upon to make the rejection in compliance with 35 U.S.C. 112(a)/pre-AIA 35 U.S.C. 112, first paragraph."). For the following reasons, we find the relied upon subject matter in Pan is entitled to the April 22, 2009 filing date. We first note that we address the issue of written description support for Pan only with respect to the portions of Pan that are necessary for the Examiner's obviousness rejection, which is discussed further below. 3 With respect to the claim 21 limitation of "sending ... aperiodic CSI of one 3 Although Appellants contend that Pan's channel quality indicator (CQI) request bit and carrier indication field (CIF) described in paragraph 53 are not supported by Provisional '609 (App. Br. 6-9; Reply Br. 5-6}-where Pan's "'CQI request' bit may request a UCI [uplink control information] report for configured DL component carriers" and Pan's "CIF may be sent in the UL grant" and "[t]he value of the CIF field ... may indicate (e.g., as an index or offset) which DL component carrier the UCI is being sent for" (Pan ,r 53}-the Examiner's citation to paragraph 53 is cumulative to other findings that rely on different portions of Pan. Specifically, the Examiner relies on Pan's description of mapping DL carriers to UL carriers for teaching the claim 21 limitation of "the one downlink carrier having an index ... matching an index that identifies the uplink carrier." See Ans. 13. We address support for Pan's mapping feature here. 4 Appeal 2018-005301 Application 13/593,181 downlink carrier of a plurality of downlink carriers configured for the user equipment, the one downlink carrier having an index that identifies the one downlink carrier matching an index that identifies the uplink carrier," the Examiner clarifies the rejection in the Answer as follows: "Pan's mapping corresponds to the claimed index. The mapping permits one-to-one or one- to-many mappings to convey the UL/DL configurations." Ans. 13. With respect to the mapping feature, Pan describes the following: In a first option for UL/DL carrier association and UCI grouping, the WTRU may use the same UL/DL carrier association rule for both UCI and DCI transmission. In order to indicate which UL component carrier that an UL grant is intended, the UL component carrier may be associated with a DL component carrier in such way that if an UL grant is transmitted in a DL component carrier x, then the UL grant is intended for an UL component carrier y where a mapping function f( ) that maps a DL component carrier x to UL component carrier y by y=f(x). Such a mapping may also be used by the WTRU for UCI reporting. That is, the WTRU may transmit the UCI for DL component carrier x in UL component carrier y, where y=f(x). Pan ,r 41. Provisional '609 describes the following: Option 1: Use the same UL/DL carrier association rule for both UCI and DCI transmission: In order to indicate which UL carrier that UL assignment is intended for, UL carrier may be associated with DL carrier in such way that if a UL assignment is transmitted in DL carrier x, this UL assignment is intended for UL carrier y where a mapping function f( â€¢) that maps DL carrier x to UL carrier y by y=f(x). Such mapping may also be used for UCI reporting. That is, UCI for DL carrier x should be transmitted in UL carrier y where y=f(x). Provisional '609 ,r 63. 5 Appeal 2018-005301 Application 13/593,181 The above-quoted portions both disclose a mapping function that maps DL carrier x to UL carrier y by y=f(x). Thus, Provisional '609 sufficiently supports the relied-upon portions of Pan. We thus find Pan'sÂ§ 102(e) critical date is prior to Appellants' foreign priority date, and therefore Pan qualifies as prior art for use in the Examiner's obviousness rejection under 35 U.S.C. Â§ 103(a). Obviousness Appellants contend neither Nayeb Nazar nor Pan, nor the combination thereof, teaches "sending ... aperiodic CSI of one downlink carrier of a plurality of downlink carriers configured for the user equipment, the one downlink carrier having an index that identifies the one downlink carrier matching an index that identifies the uplink carrier," as recited in claim 21. App. Br. 9--10; Reply Br. 2-5. Specifically, Appellants argue the following: Pan Provisional further discloses that the UL carrier y is obtained from an equation of DL downlink carrier x or z, that is, the UL carrier index is obtained from the downlink carrier index where the DCI is sent. However, in claim 21, the scheduling grant command indicates a data channel on an uplink carrier, and the user equipment sends the one downlink carrier having an index matching an index that identifies the uplink carrier. That is, the index of uplink carrier is obtained first and then the index of the 6 Appeal 2018-005301 Application 13/593,181 one downlink earner 1s obtained from the index of uplink carrier. 4 App. Br. 10. We are not persuaded by Appellants' argument because it is not commensurate with the scope of claim 21. Claim 21 recites "the one downlink carrier having an index that identifies the one downlink carrier matching an index that identifies the uplink carrier." There is no recitation in claim 21 defining how indexes are obtained, or in what order they are obtained. In the Reply Brief, Appellants argue that Pan's use of a channel quality indicator (CQI) request bit or carrier indication field (CIF) for indicating the downlink carriers for which uplink control information (UCI) reports are desired fails to teach the argued claim 21 feature of downlink and uplink carriers that have matching indexes. See Reply Br. 3--4. This argument, however, is not responsive to the Examiner's reliance on Pan's mapping function that maps a downlink carrier to an uplink carrier for teaching the claimed matching indexes feature. See Ans. 13; Pan ,r 41; Provisional '609 ,r 63. Additionally, in the Reply Brief, Appellants argue Pan teaches away from Nayeb Nazar. Reply Br. 4--5. This argument was not presented in the Appeal Brief when the opportunity was available. We thus deem the teaching away argument to have been waived. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) ("Any bases for asserting 4 Although Appellants cite to the Provisional '609, we note the obviousness rejection is based on Pan, the non-provisional application. See Final Act. 2; Ans. 2. 7 Appeal 2018-005301 Application 13/593,181 error, whether factual or legal, that are not raised in the principal brief are waived."). We are, therefore, not persuaded the Examiner erred in rejecting claim 21, and claims 22, 24--28, 30-32, 45--48, and 55---60 not specifically argued separately. CONCLUSION The Examiner did not err in rejecting claims 21, 22, 24--28, 30-32, 45--48, and 55---60 under 35 U.S.C. Â§ 103(a). DECISION We affirm the Examiner's decision to reject claims 21, 22, 24--28, 30-32, 45--48, and 55-60. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 41.50(Â±). AFFIRMED 8