Ex Parte Jeong et al

Patent Trial and Appeal Board

Mar 14, 2018

13946825 (P.T.A.B. Mar. 14, 2018)

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.
13/946,825 07/19/2013 Cheol Jeong P20302-US
(SAMS05-20302)
1018
23990 7590
DOCKET CLERK
P.O. DRAWER 800889
DAT!.AS, TX 75380
03/16/2018 EXAMINER
REDDIVALAM, SRINIVASA R
ART UNIT PAPER NUMBER
2477
NOTIFICATION DATE DELIVERY MODE
03/16/2018 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):
patents @ munckwilson. com
munckwilson @ gmail. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHEOL JEONG, JEONG-HO PARK, JI-YUN SEOL,
HYUN-KYU YU, and JAE-WEON CHO
Appeal 2017-008592
Application 13/946,8251
Technology Center 2400
Before MICHAEL J. STRAUSS, NABEEL U. KHAN, and
AMBER L. HAGY, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellants the Real Party in Interest is Samsung Electronics
Co., Ltd. App. Br. 3.
Appeal 2017-008592
Application 13/946,825
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
THE INVENTION
The claims are directed to transmitting and receiving control
information in a wireless communication system. Spec., Title. Claim 1,
reproduced below with disputed limitations emphasized in italics and labels
added for ease of reference, is illustrative of the claimed subject matter:
1. A method for transmitting control information in a wireless
communication system, the method comprising:
[i] determining an amount of control information to be
included in a first carrier signal;
[ii] transmitting the first carrier signal including first
control information; and
[iii] transmitting a second carrier signal including data,
wherein the second carrier signal further includes second
control information if a number of bits within the first carrier
signal is not sufficient for the determined amount of control
information;
[iv] wherein the first control information includes
information indicating whether the second control information is
carried on the second carrier signal or not; and
[v] wherein the second control information includes
scheduling information for the data if the second control
information is included in the second carrier signal.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Nory US 2010/0232373 A1 Sept. 16,2010
Tee US 2011/0274066 A1 Nov. 10, 2011
Morioka US 2012/0122392 A1 May 17, 2012
2
Appeal 2017-008592
Application 13/946,825
Marinier US 2013/0039284 A1 Feb. 14,2013
REJECTIONS
The Examiner made the following rejections:
Claims 1, 2, 3, 5, 6, 8, 9, 11—13, 15, 16, 18, and 19 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Tee and Marinier.
Final Act. 3—22.
Claims 4, 10, 14, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Tee, Marinier, and Morioka. Final Act. 22—23.
Claims 7 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tee, Marinier, and Nory. Final Act. 23—26.
APPELLANTS’ CONTENTIONS
1. In connection with limitation (i), Appellants contend the Examiner’s
reliance on Tee is misplaced because:
a. Tee’s signaling, although providing an indication of resource
allocation of extended physical downlink control channel (E-
PDCCH) regions, fails to establish an amount of control
information to be included as required by limitation (i) of claim
1. App. Br. 12.
b. Tee’s carrier pointer message, which indicates a non-anchor
carrier2 to a mobile station, “is silent as to any determination of
any amount of control information to be included in a carrier
signal” as required by limitation (i). App. Br. 13.
2 An anchor carrier is a carrier carrying signaling allowing a device to
perform cell selection, e.g., synchronization and broadcast channels. A non-
anchor carrier does not carry broadcast channels (e.g., NPBCH), primary or
secondary synchronization signals (e.g., NPSS orNSSS) or system
information (SI) messages.
3
Appeal 2017-008592
Application 13/946,825
2. In connection with limitation (iii), Appellants contend:
While Marinier mentions use of E-PDCCH, Marinier fails to
disclose or suggest any condition upon which the E-PDCCH and,
specifically, a condition of whether a number of bits within the
first carrier signal is not sufficient for the determined amount of
control information to be included in the first carrier signal as
recited for inclusion of second control information in the second
carrier signal in Claim 1.
App. Br. 15.
ANALYSIS
Appellants’ contention 1 is persuasive of Examiner error in connection
with the rejection of independent claims 1 and 11. However, because
independent claims 5 and 15 do not include a positive requirement for the
performance of a step corresponding to limitation (i) and because we
disagree the prior art fails to teach or suggest limitation (iii), we disagree
with Appellants’ conclusion in connection with these claims. We highlight
the following for emphasis.
Limitation (i): determining an amount of control
information to be included in a first carrier signal
The Examiner finds “determining” limitation (i) is taught or suggested
by Tee’s carrier pointer message 502 provided in the PDCCH region of the
anchor carrier (i.e., first carrier signal) to mobile station MS. Final Act. 3
(citing Tee 146). Appellants contend neither Tee’s resource allocation
disclosed at paragraph 44 nor Tee’s carrier pointer message described in
paragraph 46 teach or suggest a determination of an amount of control
information to be included in a carrier signal. App. Br. 12—13. The
Examiner responds, finding Tee’s primary PDCCH 302 of a first carrier
identifies the location and size of E-PDCCH 306A—306C, thereby teaching
4
Appeal 2017-008592
Application 13/946,825
the disputed amount of control information. Ans. 28. Appellants reply,
arguing Tee discloses the size of the E-PDCCH channels (e.g, channel
capacity), not the amount of information transmitted. Reply Br. 3.
Tee does not disclose any amount of information but merely the
size of a resource that is used for transmission. Accordingly, the
“size of the E-PDCCH” of Tee does not correspond to an
“amount of control information that needs to be included in a first
carrier signal” as recited Claim 1.
Id. at 4.
We agree with Appellants. We find insufficient evidence supporting
the Examiner’s finding that the size of the E-PDCCH channel teaches
determining an amount of control information. Accordingly, we do not
sustain the rejection of independent claims 1 and 11 or the rejections of
claims 2-4 and 12—14, which depend therefrom.
Although independent method claim 5 includes language reciting
receiving “second control information if a number of bits within the first
carrier signal is not sufficient for the determined amount of control
information” with similar language appearing in claim 15, neither claim
includes a step of determining an amount of control information needed.
That is, in contrast to “determining an amount of control information,” as
recited by claims 1 and 11, claims 5 and 15 describe conditioning the
performance of a step on the sufficiency of the first carrier signal.
Accordingly, Appellants’ arguments in connection with contention 1 and
“determining” limitation (i) are not applicable to claims 5 and 15.
5
Appeal 2017-008592
Application 13/946,825
Limitation (Hi): transmitting a second carrier signal including data,
wherein the second carrier signal further includes second control
information if a number of bits within the first carrier signal is not
sufficient for the determined amount of control information
Appellants contend the Examiner erred in finding Marinier teaches the
conditional “if’ language of limitation (iii) of transmitting a second carrier
signal... if a number of bits within the first carrier signal is not sufficient
for the determined amount of control information.
The Examiner finds the disputed “if’ language is taught by:
[Marinier’s] different subsets of resource elements (REs) being
used in PDCCH & E-PDCCH regions to support multiple
precoded reference symbols and the single subset of REs in the
PDCCH region is not sufficient to support multiple precoded
reference symbols and also see para [0211] wherein supporting
PDCCH being located on a different component carrier than the
E-PDCCH candidate, is mentioned).
Final Act. 6 (emphasis altered). Appellants argue the portions of Marinier
cited by the Examiner in the Final Action fail to support the emphasized
portion of the Examiner’s findings. App. Br. 16. Appellants further argue
the prior art fails “to disclose the ‘amount of control information’ and,
therefore, cannot establish disclosure of the condition for inclusion of the
second control information in the second carrier signal as recited in Claim
1.” Id.
The Examiner responds, finding:
Marinier et al. also clearly teach that the E-PDCCH may be used
to supplement the legacy control channels/PDCCH and thus the
E-PDCCH of second component carrier of Marinier et al. is used
to supplement the legacy control channel/PDCCH of
primary/first component carrier and all of which clearly
equivalent to having ‘the second carrier signal further includes
second control information if a number of bits within the first
carrier signal is not sufficient for the determined amount of
6
Appeal 2017-008592
Application 13/946,825
control information’ as different subsets of resource elements
(REs) being used in PDCCH & E-PDCCH regions to support
multiple precoded reference symbols and the single subset of
REs in the PDCCH region is not sufficient to support multiple
precoded reference symbols.
Ans. 30—31 (emphasis omitted).
Appellants reply, arguing “use of E-PDCCH simply to supplement or
complement legacy control channels” fails to disclose or suggest making a
“determination of the amount of control information as recited in Claim 1[3],
let alone mention or apply consideration for whether or not the number of
bits within the first carrier signal is insufficient for this determined amount
of control information.” Reply Br. 6. Appellants further contend the
combination of Tee and Mariner is improper in the absence of an articulated
motivation for making the combination. Id.
As explained above, although claims 1 and 11 require a step of
determining an amount of control information to be included in a first carrier
signal, claims 5 and 15 instead include corresponding language in describing
a condition satisfying a conditional limitation. In particular, the
corresponding language of claim 5[4] recites receiving a second carrier signal
3 Because Appellants argue independent claims 5 and 15 are patentable for
one or more reasons presented in connection with claim 1 (App. Br. 17), we
consider arguments made in connection with claim 1 to the extent such
arguments are relevant to the rejection of claims 5 and 15.
4 We note, as recited by method claim 5, the step of receiving a second
carrier signal is conditioned on an event that is not required to occur and
may never occur and, therefore, is not a positive limitation. See Ex parte
Schulhauser, Appeal No. 2013-007847, 2016 BL 173053 (PTAB April 28,
2016) (precedential) (concluding the broadest reasonable interpretation of a
claim encompassed situations in which conditional method steps “need not
be reached”); see also Ex parte Katz, Appeal No. 2010-006083, 2011 WL
514314, at *4—5 (BPAI Jan. 27, 2011). However, because the corresponding
7
Appeal 2017-008592
Application 13/946,825
. . . if a number of bits within the first carrier signal is not sufficient for the
determined amount of control information. Therefore, Appellants’ argument
that the prior art fails to include making a “determination of the amount of
control information” is not commensurate in scope with claims 5 and 15.
Furthermore, in essence, the argued language only requires
performance of certain actions at least when the recited condition is
satisfied. By only requiring action “if’ a condition is satisfied, the claim
does not exclude also performing the action if the condition is not satisfied
as would have been the case by reciting, for example, “only if’ or “if. . .
else,” the latter covering both when the condition is satisfied and when the
condition is not satisfied. A method or device that always performs the
recited actions also performs the actions when (i.e., “if’) the stated condition
is present. Based on this interpretation, we agree with the Examiner in
finding Marinier’s description of an “E-PDCCH . . . used to supplement or
complement the legacy control channels” (Marinier | 73), teaches or
suggests including second control information if a number of bits within the
first carrier signal is not sufficient for the determined amount of control
information. That is, one skilled in the art would have understood a
supplementary or complementary control channel to be used at least when a
primary channel being supplemented has insufficient capacity to
accommodate a desired amount of control information.
Appellants’ further argument that the teachings of Tee and Marinier
are so disparate that “one of ordinary skill in the art would not be motivated
language appearing in apparatus claim 15 imposes a requirement that the
recited transceiver be capable of receiving second control information if the
stated condition occurs, we substantively consider the disputed conditional
language.
8
Appeal 2017-008592
Application 13/946,825
to combine them in the manner proposed by the Examiner” (Reply Br. 6) is
untimely and waived because it was presented for the first time in
Appellants’ Reply Brief.5 Furthermore, even if timely presented, such
argument is not persuasive of Examiner error.
Any judgment on obviousness is . . . necessarily a reconstruction
based upon hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary
skill at the time the claimed invention was made and does not
include knowledge gleaned only from applicant’s disclosure,
such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971); see also Radix Corp.
v. Samuels, 13 USPQ2d 1689, 1693 (D.D.C. 1989) (“[A]ny obviousness
inquiry necessarily involves some hindsight.”); In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds . . . must
[include] some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.”), cited with approval in KSR
Int’l Co v. Teleflex Inc., 550 U.S. 398, 418 (2007). Here, the Examiner has
articulated reasoning with rational underpinnings sufficient to justify the
legal conclusion of obviousness. Final Act. 11, 20—21; Ans. 11—12, 21—22.
5 “Any argument raised in the reply brief which was not raised in the appeal
brief, or is not responsive to an argument raised in the examiner’s answer,
including any designated new ground of rejection, will not be considered by
the Board for purposes of the present appeal, unless good cause is shown.”
37 C.F.R. § 41.41(b)(2); see also Ex parte Nakashima, 93 USPQ2d 1834,
1837 (BPAI 2010) (explaining that arguments and evidence not presented
timely in the principal brief, will not be considered when filed in a Reply
Brief, absent a showing of good cause explaining why the argument could
not have been presented in the principal brief); see also Ex parte Borden, 93
USPQ2d 1473, 1474 (BPAI 2010) (informative) (“Nor is the reply brief an
opportunity to make arguments that could have been made in the principal
brief on appeal to rebut the Examiner’s rejections, but were not.”).
9
Appeal 2017-008592
Application 13/946,825
In contrast, Appellants provide insufficient evidence demonstrating one
skilled in the art would not have been motivated to combine the respective
teachings of Tee and Marinier.
For the reasons discussed above, Appellants’ arguments in connection
with the rejection of independent claims 5 and 15 are unpersuasive of
reversible Examiner error. Accordingly, we sustain the rejection of claims 5
and 15 together with the rejections of dependent claims 6—10 and 16—20,
which are not argued separately with particularity
DECISION
We reverse the Examiner’s decision to reject claims 1—4 and 11—14
under 35 U.S.C. § 103(a).
We affirm the Examiner’s decision to reject claims 5—10 and 15—20[6]
under 35 U.S.C. § 103(a).
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(f).
AFFIRMED-IN-PART
6 Claim 15 includes “a controller configured to identify information from the
first carrier signal and the second carrier signal or not” (emphasis added),
the “or not” language potentially rendering some or all of the foregoing
requirements optional. Should prosecution be continued, the Examiner may
want to consider whether or not the emphasized language renders the claim
indefinite under 35 U.S.C. § 112, second paragraph.
10