Ex Parte JEONG et al

Patent Trial and Appeal Board

Jun 27, 2018

14449617 (P.T.A.B. Jun. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/449,617 08/01/2014
68103 7590 06/29/2018
Jefferson IP Law, LLP
1130 Connecticut Ave., NW, Suite 420
Washington, DC 20036
FIRST NAMED INVENTOR
Kyeong In JEONG
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.
0203-0808-1 9903
EXAMINER
REDDIV ALAM, SRINIV ASAR
ART UNIT PAPER NUMBER
2477
NOTIFICATION DATE DELIVERY MODE
06/29/2018 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):
usdocketing@jeffersonip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KYEONG IN JEONG and GERT-JAN VAN LIESHOUT
Appeal2017-002151
Application 14/449,617 1
Technology Center 2400
Before JASON J. CHUNG, AMBER L. HAGY, and
PHILLIP A. BENNETT, Administrative Patent Judges.
CHUNG, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1--4, 6-10, and 12.2 We have jurisdiction under
35 U.S.C. § 6(b ).
We affirm.
INVENTION
The invention is directed to "controlling a random access process
efficiently in a mobile communication system supporting carrier
aggregation." Spec. ,r 2. Claims 1 and 7 are illustrative of the invention and
are reproduced below:
1 According to Appellants, the real party in interest is Samsung Electronics
Co., Ltd. App. Br. 2.
2 The Examiner indicates claims 5 and 11 are allowable. Ans. 9.
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Application 14/449,617
1. A method in a wireless communication system, the
method comprising:
transmitting, by a terminal, a random access preamble on
a primary cell or a secondary cell;
determining, by the terminal, that a random access
problem is detected if a number of transmissions of the random
access preamble reaches a predetermined value;
indicating, by the terminal, the random access problem to
upper layers if the random access preamble is transmitted on the
primary cell; and
determining, by the terminal, that a random access
procedure is unsuccessfully completed if the random access
preamble is transmitted on the secondary cell.
App. Br. 13 (emphases added).
7. A terminal in a wireless communication system, the
terminal comprising:
a transceiver configured to transmit and receive a
signal; and
a controller configured to:
transmit a random access preamble on at
least one of a primary cell and a secondary cell,
determine that the random access problem is
detected if a number of transmissions of the random
access preamble reaches a predetermined value,
indicate the random access problem to upper
layers if the random access preamble is transmitted
on the primary cell, and
determine a random access procedure is
unsuccessfully completed if the random access
preamble is transmitted on the secondary cell.
Id. at 14 (emphases added).
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Application 14/449,617
REJECTION AT ISSUE3
Claims 1--4, 6-10, and 12 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over the combination of Lee et al. (US 2011/0103328
Al; published May 5, 2011) (hereinafter, "Lee") and 3GPP TSG-RAN WG2
Meeting #72bis, R2-110188 (Potevio, "Miscellaneous Corrections to TS
36.300 on Carrier Aggregation", Jan 2011) (hereinafter, "3GPP"). Ans. 2-9.
We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made, but chose not
to make, in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
ANALYSIS
A. Claim Construction
Claim construction is an issue of law that is left for a court or a
tribunal. A court, when construing a patent, "'proceeds upon its own
responsibility, as an arbiter of the law, giving to the patent its true and final
character and force."' Markman v. Westview Instruments, Inc., 517 U.S.
370, 388 (quoting 2 W. Robinson, Law of Patents§ 732, pp. 482--483
(1890)).
We construe claim terms according to their broadest reasonable
construction in light of the specification of the patent in which they appear.
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004). Consistent with the
broadest reasonable construction, claim terms are presumed to have their
3 Claim 7 recites "determine that the random access problem is detected"
( emphasis added). However, there is no antecedence for "the random access
problem." In the event of further prosecution, the Examiner should consider
applying a claim objection or a rejection under 35 U.S.C. § 112, second
paragraph.
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ordinary and customary meaning as understood by a person of ordinary skill
in the art in the context of the entire patent disclosure. In re Trans logic
Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Also, we must be careful
not to read a particular embodiment appearing in the written description into
the claim if the claim language is broader than the embodiment. See In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) ("[L]imitations are not to
be read into the claims from the specification."). However, a term that is
different from its ordinary meaning may be defined in the specification with
reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
1475, 1480 (Fed. Cir. 1994).
1. Claim 1
Claim 1, a method claim, recites several limitations stated in
conditional language. In particular, claim 1 first recites "determining, by the
terminal, that a random access problem is detected if a number of
transmissions of the random access preamble reaches a predetermined
value" ( emphasis added) (hereinafter, "the determining ... a random access
problem limitation"). According to Appellants, Paragraphs 59 and 63 of the
Specification correspond to this limitation. App. Br. 2 (citing Spec. ,r,r 59,
63). Paragraphs 59 and 63 confirm the conditional nature of this limitation,
reciting "[i]f the number of Random Access Preamble retransmissions is
greater than a predetermined threshold value, then the MAC entity 606
determines that a problem and/or failure has arisen in the random access
procedure at step 651" and "[i]f the number of Random Access Preamble
retransmissions is greater than a predetermined threshold value, then, at
step 681, the MAC entity determines that a problem and/or failure arises in
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the random access procedure," respectively. Spec. ,r,r 59, 63 (emphases
added).
Because the Specification also states "if," nothing in the Specification
requires the "determining ... a random access problem" limitation to be
performed. Stated another way, the broadest reasonable construction in light
of the specification do not require performance of the recited "determining
... a random access problem" for infringement to occur. According to our
precedent, as a matter of claim construction, the broadest reasonable
interpretation of claim 1 encompasses a method in which the conditional
steps are not performed. See Ex parte Schulhauser, Appeal No. 2013-
007847, 2016 WL 6277792, at **3-5 (PTAB Apr. 28, 2016) (precedential).
Claim 1 also recites an additional conditional limitation: "indicating,
by the terminal, the random access problem to upper layers if the random
access preamble is transmitted on the primary cell" ( emphasis added)
(hereinafter, "the indicating limitation"), for which Appellants refer to
paragraph 64 of the Specification for correspondence. App. Br. 2 ( citing
Spec. ,r 64). The indicating limitation is conditional and need not be
performed because it is conditioned on the "determining ... a random access
problem" limitation. Put another way, the claimed "determining ... a
random access problem" limitation may not occur, so it logically follows
that the "indicating" limitation, which is conditioned on occurrence of the
"determining" limitation, may not occur. The Specification also supports
this construction. See also Spec. ,r 64 ("If the random access problem
and/ or failure is detected in the PCell 613 at step 681, then the MAC entity
606 notifies the RRC entity 603 of the random access problem and/or failure
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at step 683 such that the RRC entity 603 performs a RRC Connection Re-
establishment procedure at step 691. ") ( emphasis added).
Moreover, claim 1 recites "transmitting, by a terminal, a random
access preamble on a primary cell or a secondary cell" ( emphasis added).
App. Br. 13. This limitation is satisfied by transmitting on either cell. The
optional nature of this limitation sets up an additional conditional limitation:
only if the random access preamble is transmitted on the secondary cell
would the limitation "determining, by the terminal, that a random access
procedure is unsuccessfully completed if the random access preamble is
transmitted on the secondary cell" (hereinafter, "the 'unsuccessfully
completed' limitation") recited in claim 1 be performed. This limitation is
thus conditional. Appellants refer to Paragraph 60 for written description
support of this limitation. App. Br. 2 ( citing Spec. ,r 60). Paragraph 60 of
the Specification states "[i]f the random access problem and/or failure is
detected in the SCell 616 at step 651, then the MAC entity 606 stops the
random access procedure for the SCell 616 and stops retransmitting the
Random Access Preamble at step 653." Spec. ,r 60 (emphasis added).
However, paragraph 60 of the Specification does not require a random
failure to occur in the secondary cell (i.e., SCell 616); it only requires that jf
a problem were to occur in SCell 616, then the aforementioned stop and
retransmission functions must be performed. Id. Conversely, if a random
access preamble is transmitted on a primary cell, then the "determining ...
is unsuccessfully completed" step of claim 1 need not be performed. Thus,
the Specification also confirms the conditional nature of this limitation.
In view of the conditional nature of the foregoing limitations in claim
1, we determine, as a matter of law, that only the following claim 1 non-
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conditional limitations need to be satisfied in the prior art to render the claim
anticipated or obvious: "[a] method in a wireless communication system,
the method comprising: transmitting, by a terminal, a random access
preamble on a primary cell." See Schulhauser, 2016 WL 6277792 at **3-5.
2. Claim 7
Unlike claim 1, which recites a method, claim 7 recites a product
("terminal in a wireless system"). The broadest reasonable interpretation of
such product or system claims requires that structure and logic be provided
to perform all recited functions, even those that are conditional. See
Schulhauser, 2016 WL 6277792 at **6-7.
Claim 7 recites not only conditional limitations, but also an optional
limitation. In particular, claim 7 recites "a controller configured to transmit
a random access preamble on at least one of a primary cell and a secondary
cell" ( emphasis added). App. Br. 14. According to Appellants, Paragraphs
58 and 62 of the Specification correspond to this limitation. App. Br. 2
( citing Spec. ,r,r 5 8, 62 ). In light of the language "at least one of," the
broadest reasonable construction (which is consistent with the Specification)
is a controller that is configured to transmit a random access preamble on
either a "primary cell" or a "secondary cell"; it does not require the
controller be configured to transmit a random access preamble on both a
"primary cell" and a "secondary cell." In other words, if the controller is
configured to transmit a random access preamble on a "primary cell," that is
enough to meet the limitation of claim 7; we conclude that a controller being
configured to transmit on the remaining a "secondary cell" is merely an
optional limitation. In re Johnston, 435 F.3d 1381, 1384 (Fed. Cir. 2006)
(holding, with regard to a "spirally formed pipe" (i.e., apparatus) claim, that
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Application 14/449,617
"optional elements do not narrow the claim because they can always be
omitted").
Claim 7 also recites "a controller configured to ... determine a
random access procedure is unsuccessfully completed if the random access
preamble is transmitted on the secondary cell" ( emphasis added)
(hereinafter, "the unsuccessfully completed limitation of claim 7"), which is
tied to the transmission of a random access preamble on a secondary cell via
antecedence of "the secondary cell." As noted above, because we conclude
a controller being configured to transmit on a secondary cell is optional (in
light of the "at least one of language" referring to either a "primary cell" or a
"secondary cell"), this limitation (being tied to the "secondary cell"
configuration) is also optional.
Therefore, as a matter of law, we determine only the following claim
7 limitations need to be satisfied in the prior art to render the claim
anticipated or obvious:
A terminal in a wireless communication system, the
terminal comprising:
a transceiver configured to transmit and receive a signal;
and
a controller configured to:
transmit a random access preamble on a primary
cell ... ,
determine that the random access problem is
detected if a number of transmissions of the random
access preamble reaches a predetermined value,
indicate the random access problem to upper layers
if the random access preamble is transmitted on the
primary cell ....
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Application 14/449,617
B. Applying the Claim Construction in view of the Prior Art
The Examiner finds Lee teaches all the limitations recited in claim 1
except for the unsuccessful limitation of claim 1. Ans. 3--4. Additionally,
the Examiner finds Lee teaches all the limitations recited in claim 7 except
for the unsuccessful limitation of claim 7. Id. at 6-7. The Examiner
concludes a person having ordinary skill in the art at the time of the
invention would have combined Lee and 3GPP to support both primary and
secondary cells for controlling random access procedures of user equipment
using carrier aggregation and also to optimize the use of resources in the
wireless communication system. Id. at 4, 7.
Appellants argue the Examiner improperly dissects the claim elements
and considers each element in isolation by relying on impermissible
hindsight. App. Br. 4--7; Reply Br. 2--4, 7-9. And Appellants argue 3GPP
fails to teach the unsuccessful limitation of claim 1 and the unsuccessful
limitation of claim 7. App. Br. 7-11; Reply Br. 4--7.
As an initial matter, we need not consider whether 3GPP fails to teach
the "unsuccessfully completed" conditional limitation of claim 1. See supra
§§A.I. and A.2. Regarding Appellants' argument that the Examiner relied
on impermissible hindsight to combine the references, for the reasons
discussed supra in §§ A. I. and A.2., we need not consider whether the
rationale to combine Lee and 3GPP is proper because Lee discloses all the
limitations in claims 1 and 7 that are given patentable weight. See In re
McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002) ("It is well settled that
'anticipation is the epitome of obviousness."') ( quoting Connell v. Sears,
Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)).
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Even if we consider the Examiner's rationale to combine Lee and
3GPP, we agree with the Examiner's conclusion that a person having
ordinary skill in the art at the time of the invention would have combined
Lee and 3GPP to support both primary and secondary cells for controlling
random access procedures of user equipment using carrier aggregation and
also to optimize the use of resources in the wireless communication system.
Ans. 4, 7. The Examiner, thus, provides articulated reasoning with rational
underpinnings to support the motivation to combine the teachings of Lee and
3GPP. In re Kahn, 441 F.3d 977, 989 (Fed. Cir. 2006).
Appellants do not separately argue dependent claims 2--4, 6, 8-10,
and 12 with particularity, but assert the rejections of those claims should be
withdrawn for at least the same reasons as argued in independent claims 1
and 7. App. Br. 11; Reply Br. 9. Accordingly, we sustain the Examiner
rejection of: (1) independent claims 1 and 7; and (2) dependent claims 2--4,
6, 8-10, and 12.
DECISION
The Examiner's decision rejecting claims 1--4, 6-10, and 12 under
35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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