Ex Parte He et alDownload PDFPatent Trial and Appeal BoardSep 30, 201613163270 (P.T.A.B. Sep. 30, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/163,270 06/17/2011 NingHe 24112 7590 10/03/2016 COATS & BENNETT, PLLC 1400 Crescent Green, Suite 300 Cary, NC 27518 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. 4015-7448 I P33431-US2 9304 EXAMINER SLOMS, NICHOLAS ART UNIT PAPER NUMBER 2476 MAILDATE DELIVERY MODE 10/03/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NING HE, STEPHEN J. GRANT, and ANDRES REIAL 1 Appeal2015-001728 Application 13/163,270 Technology Center 2400 Before: CARL W. WHITEHEAD JR., ADAM J. PYONIN, and JOHN R. KENNY, Administrative Patent Judges. KENNY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE This is an appeal under 35 U.S.C. § 134 from a Final Rejection of claims 1-26. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM-IN-PART and enter NEW GROUNDS OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b ). 1 Appellants identify Telefonaktiebolaget LM Ericsson as the real party in interest. App. Br. 2. Appeal2015-001728 Application 13/163,270 CLAIMED INVENTION The claimed invention is directed to the preferential allocation of scrambling codes of different lengths. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method implemented by a base station configured to serve a cell in a wireless communication system, the method compnsmg: determining, for each of one or more mobile terminals or downlink carriers in the cell, a preference for whether the length of a scrambling code to be allocated to that mobile terminal or carrier should be short or long, based on whether uplink communications transmitted by the mobile terminal, or downlink communications transmitted over the carrier, are to be processed with a high-complexity receiver or a low-complexity receiver, wherein a high-complexity receiver is of greater complexity than a low-complexity receiver; and sending control signaling indicating said preferences to a radio network controller that is configured to take those preferences into account in order to allocate either a short scrambling code or a long scrambling code to each mobile terminal or downlink carrier. Frerking Jamal Gallagher Dou REFERENCES US 2003/0156564 Al US 6,724,813 Bl US 2010/0214952 Al EP 1,626,514 Al Aug. 21, 2003 Apr. 20, 2004 Aug. 26, 2010 Feb. 15,2006 Fakhrul Alam, Simulation of Third Generation CDMA Systems (Thesis, Master of Science in Electrical Engineering, Virginia Polytechnic Institute & State University, Dec. 15, 1999). 2 Appeal2015-001728 Application 13/163,270 REJECTIONS Claims 1-5, 7, 9-19, 21, and 23-26 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Jamal, Dou, and Alam. Final Act. 4. Claims 6 and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Jamal, Dou, Alam, and Frerking. Final Act. 9. Claims 8 and 22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Jamal, Dou, Alam, and Gallagher. Final Act. 9-10. ANALYSIS The Examiner's Obviousness Rejections Claims 1, 4, 7, 9-15, 18, 19, 21, and 23-26 The Examiner concludes that the combined teachings of Jamal, Dou, and Alam render claim l obvious. Final Act. 4. The Examiner finds Jamal teaches methods that: allocate a scrambling code to a mobile terminal, send explicit control signals between entities for determining a scrambling code, and implicitly determine scrambling codes based on communicated parameters. Id. at 4--5; Ans. 4--6; Jamal 2:35--40, 3:19-23; 9:1-2. The Examiner finds Dou teaches a radio network controller for managing and allocating scrambling codes and Alam teaches selecting short or long codes based on receiver complexity. Final Act. 5; Ans. 3---6; Dou i-fi-16-7, 16; Alam 18. Appellants argue that the combined teachings of these references do not teach or suggest: (i) having a base station assist a radio network controller with scrambling allocation, (ii) having a base station send control 3 Appeal2015-001728 Application 13/163,270 signaling to a radio network controller that is configured to account for the base station's preferences about scrambling codes, and (iii) having a base station indicate to a radio network controller a preference for the length of a scrambling code to be allocated. App. Br. 6-10; Reply Br. 2-7. Appellants argue that the cited prior art does not teach or suggest the above limitations because Jamal's base station sends its control signaling regarding scrambling codes to mobile terminals, not a radio network controller; and Jamal's control signaling indicates an already allocated scrambling code, not a preference about a scrambling code to be allocated. App. Br. 6-11; Reply Br. 2-7. Appellants argue that Dou merely discloses that a radio network controller allocates scrambling codes to a mobile terminal and Alam never mentions a radio network controller. App. Br. 7. We are not persuaded by these arguments because they attack Jamal, Dou, and Alam individually, rather than addressing their combined teachings. In re Mouttet, 686 F.3d 1322, 1332-33 (Fed. Cir. 2012). Here, Dou teaches a radio network controller that allocates scrambling codes, and Alam teaches selecting short or long scrambling codes based on receiver complexity. Final Act. 5, citing Dou i-f 16 and Alam 18. When an ordinarily skilled artisan combines those teachings with Jamal, the combination's base station would send its control signals regarding preferences for scrambling codes to the radio network controller, within the meaning of the claim, because the controller is allocating the scrambling codes and therefore would need information from the base station about preferences derived from the receivers, as taught by Jamal. Final Act. 4--5; Ans. 3---6; Jamal 2 :30-40, 3: 19-23. Thus, the combined disclosures teach or suggest the disputed limitations. Final Act. 4--5; Ans. 3---6. 4 Appeal2015-001728 Application 13/163,270 Appellants argue that Jamal teaches away from sending control signals from the base station to the radio network controller because Jamal teaches sending control signals for scrambling codes in the downlink direction. App. Br. 9; Reply Br. 2. We are not persuaded by this argument because Appellants cite nothing from Jamal that indicates such codes should be sent only in the downlink direction. App. Br. 9; Reply Br. 2. Rather, Jamal's base station sends its codes in the downlink direction because, as Appellants note, the recipient of those codes (the mobile terminal) is in that direction. App. Br. 9; Reply Br. 2. An ordinarily skilled artisan would recognize that, when the teachings of the references are combined, the base station would send its codes to the radio network controller in the uplink direction because the radio network controller is in that direction. Ans. 5; see also App. Br. 9; Reply Br. 2. Appellants also argue that Jamal disparages the use of explicit control signaling for the allocation of scrambling codes, noting that Jamal indicates I" I" • 1• •, 1• •, , 1 • 1• A. ~ A "1f\ a prererence ror 1mp11cn over expncn comro1 s1gna11ng. App. tlr. 'J-1 u; Reply Br. 4--7. And Appellants argue that an ordinarily skilled artisan would not know how to use Jamal's implicit control signaling between the base station and the radio network controller. Reply Br. 5-7. We are not persuaded by these arguments. Although Jamal may express a preference for implicit control signaling over explicit control signaling, if an ordinarily skilled artisan were, as Appellants argue, unable to use Jamal's preferred implicit signaling between the base station and the radio network controller, Appellants have presented no reason why that artisan would not use Jamal's explicit control signaling, which the Examiner found and Appellants do not dispute was prevalent in the art at the time of the invention. Ans. 5; Reply Br. 4--7; see also Jamal (Background). 5 Appeal2015-001728 Application 13/163,270 Accordingly, we sustain the rejection of claim 1 and of claims 4, 7, 9- 15, 18, 19, 21, and 23-26, not separately argued, and we adopt the Examiner's findings and rationales set forth in the Final Action and the Answer regarding these claims. Claims 2, 3, 16, and 17 Claim 2 recites that the preference for a short or long scrambling code is based on whether communications are to be transmitted at a high data rate with a high complexity receiver or at a low data rate with a low complexity receiver. Claim 2 reads: 2. The method of claim 1, wherein determining a preference for whether the length of a scrambling code to be allocated to a mobile terminal or downlink carrier should be short or long is directly or indirectly based on whether uplink communications transmitted by the mobile terminal, or downlink communications transmitted over the carrier, are to be: transmitted at a high data rate and processed with a high- 1 •, • • 1. 1 ,1 1 ' • 1 ,.. • comp1exny receiver, m wmcn case me aetermmea prererence 1s for a short scrambling code; or transmitted at a low data rate and processed with a low- complexity receiver, in which case the determined preference is for a long scrambling code. Appellants argue that the Examiner has not provided a sufficient rationale for concluding that it would be obvious to base the recited preference for long or short scrambling codes on a data rate. App. Br. 12. We agree. The Examiner finds that one or ordinary skill in the art would find that the data rate in a radio access network is variable depending on the services demanded. Final Act. 6; Ans. 6-7. We do not, however, find that rationale to be a sufficient basis for concluding that it would be obvious to 6 Appeal2015-001728 Application 13/163,270 base the preference for long or short scrambling codes on the data rate. Therefore, we do not sustain the rejection of claim 2 or of claim 3, which depends on claim 2. Claims Appendix. Claim 16 recites a limitation with commensurate scope as claim 2. Accordingly, we do not sustain the rejection of claim 16 or of claim 17, which depends on claim 16. Claims Appendix. Claims 6 and 20 In their Argument, Appellants do not specifically address claims 6 or 20, which depend respectively on claims 4 and 18. App. Br. 6-13; Claim Appendix. Therefore, we sustain the rejection of claims 6 and 20 for the reasons expressed above for claims 4 and 18. Claims 7 and 21 The Examiner finds that Jamal's teaching of overhead parameters for generating scrambling codes in combination with other cited teachings teach or suggest determining whether communications are to be processed by a high-complexity receiver is dependent on the existence of sufficient receiver resources, as recited in claims 7 and 21. Final Act. 7; Ans. 7; Jamal 8:7-24. Appellants argue that Jamal's disclosed overhead parameters do not indicate whether a node has sufficient resources to perform certain processing because those parameters merely relate to the expense of control signaling. App. Br. 13. This argument, however, disregards what Jamal's overhead parameters would suggest to an ordinarily skilled artisan, e,g., the consideration of resources, such as receiver resources. Final Act. 7; Ans. 7. Further, we are not persuaded that Jamal uses the term overhead (and overhead parameters) only to refer to the expense of control signaling. Jamal 6:28("system and cell overhead information.") We adopt the Examiner's findings and rationales regarding claims 7 and 21. 7 Appeal2015-001728 Application 13/163,270 Claims 8 and 22 In their Argument, Appellants do not specifically address claims 8 or 22, which depend respectively on claims 1 and 15. App. Br. 6-13; Claim Appendix. Therefore, we sustain the rejection of claims 6 and 20 for the reasons expressed above for claims 4 and 18. New Ground of Rejection: Indefiniteness Pursuant to 37 C.F.R. § 41.50(b), we newly reject claims 1-26 under 35 U.S.C. § 112, second paragraph, for indefiniteness. Each of the independent claims (1, 12, 15, and 25) recite short and long scrambling codes. We find that one of ordinary skill in the art, from reading the specification, however, would not know with reasonable certainty the scope of those terms. codes: The Specification provides examples of short and long scrambling The different length scrambling codes may comprise, for instance, short scrambling codes of approximately 256 chip periods and long scrambling codes of approximately 38,400 chip periods (or, in general, long scrambling codes that are on the order of 100 to 200 times longer than short scrambling codes, in terms of chip periods, seconds, or the like). Spec. ii 29. These examples, however, do not reasonably bound the terms. For instance, it is unclear whether a scrambling code of 5,000 chip periods would be a short scrambling code or a long scrambling code (or neither) or whether a ratio of ten would be sufficient to distinguish long and short scrambling codes. We have no reason to believe that an ordinarily skilled 8 Appeal2015-001728 Application 13/163,270 artisan would reasonably perceive bounds for the terms based on their ordinary usage. Accordingly, we find these terms to be indefinite. 2 Separately, we note that the terms high-complexity receiver and low- complexity receiver recited in the claims could also indefinite. We, however, do not include those terms in this rejection. If there is ongoing prosecution, we leave it to the Examiner to determine whether those terms are, in fact, indefinite. DECISION We affirm the obviousness rejections of claims 1, 4--15, and 18-26. We reverse the obviousness rejection of claims 2, 3, 16, and 17. Pursuant to 37 C.F.R. § 41.50(b), we newly reject claims 1-26 under 35 U.S.C. § 112, second paragraph, for indefiniteness. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.'' Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in 2 We were nevertheless able to address the obviousness rejections because Alam expressly uses the terms "short scrambling codes" and "long scrambling codes." Alam 18. Regarding indefiniteness, Alam also has a description regarding short codes, but does not provide evidence from which we could discern with reasonable certainty the boundaries of the terms in Applicants' claims. Id. at 21-22. 9 Appeal2015-001728 Application 13/163,270 which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure§ 1214.01. 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-IN-PART ,....,..,r"iT""I~ (\ Al-1 !""'f\/1"- j I G.1' .K. S Lf-1.JU\ DI 10 Copy with citationCopy as parenthetical citation