Ex Parte Decarreau et al

Patent Trials and Appeals Board

Apr 4, 2019

14220491 - (D) (P.T.A.B. Apr. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/220,491 03/20/2014
10948 7590 04/08/2019
Harrington & Smith, Attorneys At Law, LLC
4 Research Drive, Suite 202
Shelton, CT 06484
FIRST NAMED INVENTOR
Guillaume Decarreau
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.
800.1868.Ul(US) 7092
EXAMINER
ORANGE, DAVID BENJAMIN
ART UNIT PAPER NUMBER
3663
NOTIFICATION DATE DELIVERY MODE
04/08/2019 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@hspatent.com
Nokia.IPR@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GUILLAUME DECARREAU, BENOIST PIERRE SEBIRE,
WOONHEE HWANG, and RAPEEPAT RATASUK
Appeal2018-005629
Application 14/220,491
Technology Center 2600
Before ERIC S. FRAHM, LARRY J. HUME, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1-17 and 21-23, i.e., all pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellants identify the real party in interest as Nokia Solutions and
Networks OY. App. Br. 2.
Appeal2018-005629
Application 14/220,491
STATEMENT OF THE CASE
The Invention
According to the Specification, the "invention relates to improved
systems and techniques for management [ of] extended coverage capabilities
of cellular network nodes so as to avoid undue interference to nodes
incapable of extended coverage." Spec. 1: 5-7. 2 The Specification explains
that a user equipment (UE) "needing to use coverage extension to request
access to a prospective serving cell" takes certain actions: (1) "detects cells
( other than the prospective serving cell) on its frequency"; (2) "investigates
each such cell," e.g., "by attempting to read its system information block";
and (3) "determin[ es] if the [ detected] cell supports access using coverage
extension." Id. at 14 (Abstract). If the "detected cells do not support
coverage extension, the UE does not use coverage extension techniques to
request access" to the prospective serving cell. Id. "[B]ut if all detected
cells support coverage extension, the UE requests access using coverage
extension techniques." Id.
Exemplary Claim
Independent claim 1 exemplifies the claims at issue and reads as
follows (with formatting added for clarity):
1. An apparatus comprising:
at least one processor;
memory storing a program of instructions;
2 This decision uses the following abbreviations: "Spec." for the
Specification, filed March 20, 2014; "Final Act." for the Final Office Action,
mailed March 21, 2017; "App. Br." for the Appeal Brief, filed September 8,
2017; "Ans." for the Examiner's Answer, mailed March 8, 2018; and
"Reply Br." for the Reply Brief, filed May 8, 2018.
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Application 14/220,491
wherein the memory storing the program of instructions
is configured to, with the at least one processor, cause the
apparatus to at least:
control a cellular capable user device needing to
gain access to a prospective serving cell to detect one or
more additional cells within range;
control the user device to, for each detected cell,
attempt to obtain information establishing that the
detected cell supports coverage extension techniques for
access; and
control the user device to, with respect to one or
more of the detected cells, in response to inability to
obtain information establishing that the detected cell
supports coverage extension techniques for access,
refrain from using coverage extension techniques to
attempt access to the prospective serving cell;
wherein the use of coverage extension techniques for
access comprise at least one of:
transmitting a preamble on a random access
channel, wherein transmission is at higher power than in
a mode not using coverage extension techniques; and
transmitting the preamble for a longer time than in
a mode not using coverage extension techniques.
App. Br. 14 (Claims App.).
The Prior Art Supporting the Rejections on Appeal
As evidence ofunpatentability under 35 U.S.C. § 103, the Examiner
relies on the following prior art: 3GPP TSG-RAN WG2 Meeting #85,
R2-140825, Enhanced Coverage Issues (Feb. 2014) ("Sony").
The Re} ections on Appeal
Claims 21-23 stand rejected under 35 U.S.C. § 112(a) for failing to
comply with the written-description requirement. Final Act. 3.
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Application 14/220,491
Claims 4--9 and 13-16 stand rejected under 35 U.S.C. § 112(d) for
failing to further limit or include all the limitations of the respective base
claims. Final Act. 3--4.
Claims 1-17 and 21-23 stand rejected under 35 U.S.C. § 103 as
unpatentable over Sony. Final Act. 4--5.
ANALYSIS
We have reviewed the rejections in light of Appellants' arguments
that the Examiner erred. For the reasons explained below, we agree with the
Examiner's finding that claims 21-23 fail to satisfy§ 112(a)'s written-
description requirement but disagree with the Examiner's determination that
claims 4--9 and 13-16 fail to satisfy§ 112(d). We also disagree with the
Examiner's conclusion concerning unpatentability under § 103. We provide
the following to address and emphasize specific findings and arguments.
The§ l l 2(a) Rejection of Claims 21-23
INTRODUCTION
Section 112(a) requires, among other things, that the specification
"contain a written description of the invention." 35 U.S.C. § 112(a). The
written-description requirement serves to "clearly allow persons of ordinary
skill in the art to recognize that [the inventor] invented what is claimed."
Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en bane) (alteration in original) (quoting Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1563 (Fed. Cir. 1991)); see Blue Calypso, LLC v. Groupon,
Inc., 815 F.3d 1331, 1344 (Fed. Cir. 2016). "[T]he test for sufficiency is
whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date." Ariad, 598 F.3d at 1351; Mentor
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Application 14/220,491
Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275, 1296 (Fed. Cir. 2017).
The "test requires an objective inquiry into the four comers of the
specification from the perspective of a person of ordinary skill in the art."
Ariad, 598 F.3d at 1351. The written-description requirement does not,
however, "demand any particular form of disclosure" or require that "the
specification recite the claimed invention in haec verba." Id. at 1352. The
analysis for disclosure sufficiency may consider "such descriptive means as
words, structures, figures, diagrams, formulas, etc." Lockwood v. Am.
Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
THE CLAIMS AT ISSUE AND SPECIFICATION SUPPORT
Claim 21 depends directly from claim 1 and specifies that
"transmitting the preamble for a longer time than in a mode not using
coverage extension techniques comprises transmitting the preamble over a
period supporting transmission of at least 100 subframes." Sept. 7, 2017
Amendment 5. Claims 22 and 23 depend directly from independent
claims 10 and 1 7, respectively, and also specify transmitting a preamble
"over a period ... of at least 100 subframes." Id.
The Specification explains that for "extended coverage initial access,"
a user equipment may "transmit a [physical random access channel] PRACH
preamble at high power for a long time (up to hundreds of subframes) before
it finally gains access." Spec. 2:7-9; see Final Act. 3; Ans. 5. The
Specification does not describe any other period for transmitting a preamble.
DISCUSSION
In the Answer, the Examiner explains that "for the specification to
provide support for the range of 'at least 100 subframes,' it must provide
support for the entire range, not just part of the range." Ans. 5. In addition,
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Application 14/220,491
the Examiner cites In re Wertheim, 541 F.2d 257 (CCPA 1976). Id. In
Wertheim, the court decided that a priority document disclosing the range
"25 to 60%" and identifying 36% and 50% as specific examples did not
support the claimed range "at least 35%." 541 F.2d at 258-59, 262---64.
In the Reply Brief, Appellants assert that a "disclosure of transmitting
a PRACH preamble at high power for up to hundreds of subframes before a
UE finally gains access clearly describes transmitting a preamble over a
period supporting transmission of at least 100 subframes as claimed in
claims 21-23." Reply Br. 3. But Appellants do not discuss or attempt to
distinguish Wertheim. Id. at 2-3.
We agree with the Examiner that Wertheim controls. See Ans. 5. Just
as in Wertheim the disclosed range "25 to 60%" failed to support the claimed
range "at least 35%," here the disclosed range "up to hundreds of
subframes" fails to support the claimed range "at least 100 subframes." In
particular, the Specification provides no support for periods exceeding
hundreds of subframes, while claims 21-23 encompass periods exceeding
hundreds of subframes, e.g., thousands of subframes. See, e.g., Spec. 2:7-9;
Final Act. 3. Hence, we sustain the§ 112(a) rejection of these dependent
claims.
The§ l l 2(d) Rejection of Claims 4-9 and 13-16
INTRODUCTION
Section 112( d) requires that a dependent claim "contain a reference to
a claim previously set forth and then specify a further limitation of the
subject matter claimed." 35 U.S.C. § 112(d). "A dependent claim that
contradicts, rather than narrows, the claim from which it depends is"
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unpatentable. Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics
Corp., 831 F.3d 1350, 1362 (Fed. Cir. 2016).
THE CLAIMS AT ISSUE
Claims 4 and 5 depend directly from claim 2. These claims read as
follows:
2. The apparatus of claim 1, wherein attempting to obtain
information establishing that a detected cell supports coverage
extension techniques for access comprises attempting to read
the master or system information block of the detected cell.
4. The apparatus of claim 2, wherein the apparatus is further
caused to control the user device to, upon successfully reading
the master or system information block of each detected cell,
attempt to determine, for each detected cell, if the detected cell
supports coverage extension techniques for access and, if each
detected cell supports coverage extension techniques for access,
attempt access to the prospective serving cell using coverage
extension techniques.
5. The apparatus of claim 2, wherein the apparatus is further
caused to control the user device to, if each detected cell
supports coverage extension techniques for access:
measure power characteristics of each detected cell;
evaluate the power characteristics of each detected cell
against a criterion; and
if the power characteristics of one or more detected cells
do not meet the criterion, refrain from attempting access using
coverage extension techniques.
App. Br. 14--15 (Claims App.). Claims 6-9 depend directly or indirectly
from claim 5. Id. at 15. Claims 13 and 14 depend indirectly from
independent claim 10 and include limitations similar to claims 4 and 5,
respectively. Id. at 16-17. Claims 15 and 16 depend directly from claim 14.
Id. at 17.
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DISCUSSION
The Examiner determines that claims 4, 5, 13, and 14 require "using
coverage extension techniques" and contradict claim 1 's requirement to
"refrain from using coverage extension techniques." Final Act. 4; see
Ans. 5---6. Thus, the Examiner rejects these claims and the claims depending
from them for failing to further limit the respective base claims. Final
Act. 3--4. The Examiner reasons that "the claims could have been written to
specify that the refraining from and the attempting to access are at different
times or for different cells," but "as written, the claims conflict." Ans. 5.
Appellants assert that the base claims do not require "always not
be[ing] able to use coverage extension techniques to attempt access to the
prospective serving cell." Reply Br. 3--4. Appellants contend that claims 4,
5, 13, and 14 concern "following a path" that may use coverage extension
techniques due to "a decision that does not lead to ... refraining from using
coverage extension techniques" according to the base claims. See App.
Br. 8-9; see also Spec. Fig. 2 (depicting a flowchart with alternate paths).
Appellants also contend that the "conditions required" for refraining from
attempting access and attempting access differ, "so that the claim elements
referred to by the Examiner do not in fact conflict." App. Br. 8. Appellants
urge that the additional elements in claims 4, 5, 13, and 14 further limit the
base claims. See Reply Br. 4--5.
We agree with Appellants that the additional elements in claims 4, 5,
13, and 14 further limit the base claims. The base claims use the transitional
term "comprising." App. Br. 14--15 (Claims App.). Thus, they "do[] not
exclude unrecited elements," such as elements concerning successful
attempts to obtain information establishing that the detected cell supports
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coverage extension techniques. See Regeneron Pharm., Inc. v. Merus NV.,
864 F.3d 1343, 1352 (Fed. Cir. 2017) (citing Manual of Patent Examining
Procedure§ 2111.03). Claims 4, 5, 13, and 14 specify further limitations
that narrow the base claims, such as "successfully reading the master or
system information block of each detected cell" ( claims 4 and 13) and
"measur[ing] power characteristics of each detected cell" (claims 5 and 14).
We note that claims 21-23 assume successful attempts to obtain information
establishing that the detected cell supports coverage extension techniques,
and the Examiner did not reject them under§ 112(d). See Final Act. 3--4.
Because claims 4--9 and 13-16 specify further limitations that narrow
the base claims, we do not sustain the§ 112(d) rejection of these dependent
claims.
The§ 103 Rejection of Claims 1-17 and 21-23
Appellants argue the Examiner erred in rejecting independent
claims 1, 10, and 17 because Sony does not teach or suggest refraining from
using coverage extension techniques "in response to inability to obtain
information establishing that the detected cell supports coverage extension
techniques" as each claim requires. See App. Br. 10-13; Reply Br. 5-7.
Specifically, Appellants assert that Sony "teaches that the determination of
whether a UE should operate in enhanced coverage mode or normal mode is
based on cell measurement" and the measurement occurs "after the UE has
detected that the cell supports coverage extension." App. Br. 11 ( citing
Sony§ 2.2); Reply Br. 7 ( emphasis omitted). Appellants also assert that
Sony "describ[ es] that after detecting that the cell supports coverage
extension, the UE then uses various parameters ( e.g., Srxlev/Squal,
Qrxlevmin/Qqual, Qrxlevmin,EC/Qqual,EC) to determine whether [the] UE
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should operate in enhanced coverage mode or normal mode." Reply Br. 6.
Appellants then contend Sony fails to teach or suggest "a UE being
configured, with respect to one or more of the detected cells, in response to
inability to obtain information establishing that the detected cell supports
coverage extension techniques for access, to refrain from using coverage
extension techniques to attempt access to the prospective serving cell." Id.
at 7.
In response, the Examiner admits that in Sony "various parameters"
are "used by the phone after detecting that the cell supports coverage
extension." Ans. 7. But the Examiner reasons that "[t]he cell measurement
determines whether UE should operate in enhanced coverage mode or
normal mode," and "'[n]ormal mode' means not using enhanced coverage
mode, in other words, using normal mode discloses the claimed refraining
from." Id. at 8; see Final Act. 6.
Based on the record before us, we agree with Appellants that the
Examiner has not adequately explained how the cited portions of Sony teach
or suggest refraining from using coverage extension techniques "in response
to inability to obtain information establishing that the detected cell supports
coverage extension techniques" as required by claims 1, 10, and 1 7. The
cited portions of Sony merely describe comparing measured parameters to
threshold values after a user equipment detects that a cell supports coverage
extension techniques. See Sony§§ 2.1-2.3. Sony contemplates ability-not
inability-to obtain information establishing that the detected cell supports
coverage extension techniques. Hence, we do not sustain the § 103 rejection
of claims 1, 10, and 17.
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Claims 2-9 and 21 depend directly or indirectly from claim 1;
claims 11-16 and 22 depend directly or indirectly from claim 10; and
claim 23 depends directly from claim 17. For the reasons discussed for
claims 1, 10, and 17, we do not sustain the§ 103 rejection of claims 2-9,
11-16, and 21-23.
DECISION
We affirm the rejection of claims 21-23 under 35 U.S.C. § 112(a).
We reverse the rejection of claims 4--9 and 13-16 under 35 U.S.C.
§ 112(d).
We reverse the rejection of claims 1-17 and 21-23 under 35 U.S.C.
§ 103.
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). See
37 C.F.R. § 41.50(±).
AFFIRMED-IN-PART
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