Ex Parte Jeong et al

Patent Trial and Appeal Board

Apr 30, 2018

13042874 (P.T.A.B. Apr. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/042,874 03/08/2011
68103 7590 05/02/2018
Jefferson IP Law, LLP
1130 Connecticut Ave., NW, Suite 420
Washington, DC 20036
FIRST NAMED INVENTOR
Su-Ryong 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.
0202-0539 7791
EXAMINER
LINDENBAUM, ALAN LOUIS
ART UNIT PAPER NUMBER
2466
NOTIFICATION DATE DELIVERY MODE
05/02/2018 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 SU-RYONG JEONG and JEONG-HOP ARK
Appeal2017-010401
Application 13/042,874
Technology Center 2400
Before CAROLYN D. THOMAS, KARA L. SZPONDOWSKI, and
PHILLIP A. BENNETT, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 29, 31-34, 36-38, and 40-59, constituting all
claims currently pending in the application. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
Appeal2017-010401
Application 13/042,874
STATEMENT OF THE CASE
Appellants' invention is directed to a method and apparatus for
transitioning from one power control scheme to another power control
scheme in a wireless communication system. Spec. i-f 2. Claim 40,
reproduced below, is representative of the claimed subject matter:
40. A method of a terminal in a wireless communication
system, the method comprising:
receiving, from a base station (BS), parameters for a
closed-loop (CL) power control scheme;
determining a first transmit (Tx) power based on the
parameters for the CL power control scheme;
transmitting, to the BS, a first signal via the determined
first Tx power;
in response to a completion of receiving parameters for
an open-loop (OL) power control scheme from the BS,
switching a power control scheme of the terminal from the CL
power control scheme to the OL power control scheme;
determining a second Tx power based on the parameters
for the OL power control scheme;
transmitting, to the BS, a message for indicating that the
power control scheme of the terminal has been switched from
the CL power control scheme to the OL power control scheme
over a channel allocated for transmitting the message, the
message comprising information regarding a difference value
between the first Tx power and the second Tx power, wherein
the difference value is usable for indicating the determined
second Tx power to the BS;
in response to transmitting the message, transmitting, to
the BS, a second signal via the determined second Tx power;
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Application 13/042,874
and receiving, from the BS, information regarding a changed
modulation and coding scheme (MCS) level determined based
on the difference value.
REJECTIONS
Claims 40 and 50 stand rejected under 35 U.S.C. § l 12(a) or
35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement.
Claims 40 and 50 stand rejected under 35 U.S.C. § l 12(b) or
35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite for failing
to particularly point out and distinctly claim the subject matter which the
inventor or a joint inventor, or for pre-AIA the applicant regards as the
invention.
Claims 29, 31, and 40-58 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Background Section of
Applicants' Specification ("AAPA"), Kim et al. (US 2010/0119000 Al;
published May 13, 2010) ("Kim"), and Lim et al. (US 2009/0196192 Al;
published Aug. 6, 2009) ("Lim").
Claims 32-34 and 36-38 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of AAP A, Kim, Lim, and Cho et
al. (US 2011/0090856 Al; published Apr. 21, 2011) ("Cho").
ANALYSIS
35 US. C. § 112 Rejections
The Examiner finds independent claims 40 and 50 fail to comply with
the written description requirement. Final Act. 2. Claim 40 recites "in
response to a completion of receiving parameters for an open-loop (OL)
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power control scheme from the BS, switching a power control scheme of the
terminal from the CL power control scheme to the OL power control
scheme" and "transmitting, to the BS, a message for indicating that the
power control scheme of the terminal has been switched from the CL power
control scheme to the OL power control scheme over a channel allocated for
transmitting the message." Claim 50 recites commensurate limitations.
App. Br. 21. The Examiner finds Appellants argued in an October 7, 2016
response at page 15, lines 32-36 "that the claim language should be
interpreted to require that this step of transmitting the message indicating a
power control scheme switch occurs AFTER the switching of the power
control scheme," but also argued at page 12, lines 12-14 "that 'both the
disclosure and the recited features indicate that the message is transmitted
and the power control scheme is switched, without requiring that these
operations be performed in a specific order."' Final Act. 3; see also Ans.
25-26. However, the Examiner finds Appellants' Specification does not
disclose that the transmission of the message comes after the switching.
Final Act. 2 (citing Spec. Fig. 2, step 217); see also Ans. 26. Similarly, the
Examiner concludes claims 40 and 50 are indefinite "[b ]ecause it is unclear
as to whether the present claim language requires a specific order with
respect to these steps." Final Act. 5.
Appellants argue
the power control scheme is a basis by which a transmit power
is determined. One skilled in the art would understand that
changing the basis by which the transmit power is determined
does not require that a new transmit power have been
determined under the new power control scheme. Further, one
skilled in the art would understand that determining a new
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transmit power does not require that a message have been
transmitted using the newly determined transmit power.
Transmitting a message using the newly determined
transmit power requires that the new transmit power has been
determined before that transmission, but, determining the new
transmission power does not preclude that transmissions may
be made using a previously determined transmission power,
before the newly determined transmission power is applied.
That is, the power control scheme may be changed, the
transmission power may be determined, and a message based
on the newly determined transmission power may be generated
and transmitted using the previously determined power.
App. Br. 8-9. In the Reply Brief, Appellants argue Figure 2 of the
Specification provides written description support for the claims (Reply Br.
4--7), "the claim's features must be examined as recited," and "there are
features recited that require a particular order so as to have a logically
consistent meaning." Reply Br. 4--8.
The test for definiteness under 35 U.S.C. § 112(b) is whether "those
skilled in the art would understand what is claimed when the claim is read in
light of the specification." Orthokinetics, Inc. v. Safety Travel Chairs, Inc.,
806 F.2d 1565, 1576 (Fed. Cir. 1986). Language in a claim is unclear if,
when given its broadest reasonable interpretation, it is "ambiguous, vague,
incoherent, opaque, or otherwise unclear in describing and defining the
claimed invention ... ,"In re Packard, 751 F.3d 1307, 1311 (Fed. Cir.
2014 ), or if it is "is amenable to two or more plausible claim constructions ..
. ,"Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BP AI 2008) (precedential).
The pertinent claim 40 language reads as follows:
in response to a completion of receiving parameters for
an open-loop (OL) power control scheme from the BS,
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switching a power control scheme of the terminal from the CL
power control scheme to the OL power control scheme;
determining a second Tx power based on the parameters
for the OL power control scheme;
transmitting, to the BS, a message for indicating that the
power control scheme of the terminal has been switched from
the CL power control scheme to the OL power control scheme
over a channel allocated for transmitting the message, the
message comprising information regarding a difference value
between the first Tx power and the second Tx power, wherein
the difference value is usable for indicating the determined
second Tx power to the BS.
App. Br. 18 (emphasis added).
We agree with Appellants that the plain meaning of the claim
language requires a specific order. Specifically, the language of the claims
requires the three steps in the method to be performed in the order in which
they are recited. In other words, switching the power scheme from the CL
power control scheme to the OL power control scheme, then determining a
second Tx power based on the parameters for the OL power scheme, and
then transmitting a message for indicating that the power control scheme has
been switched, the message comprising information regarding a difference
value between the first Tx power and the second Tx power. The
"determining" limitation requires parameters for the OL power control
scheme, which are received in the "in response to" limitation, and the
"transmitting" limitation requires transmitting a message that the power
control scheme has been switched (as occurred in the "in response to"
limitation), where the message includes a difference value calculated using
the second Tx power, which was determined in the "determining" limitation.
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We agree with Appellants that the claims are not indefinite. Rather,
we conclude a person of ordinary skill in the art would understand the plain
meaning of the claim language and would understand the order required by
the claim language.
However, we agree with the Examiner that the claims lack adequate
written description. To satisfy the written description requirement, "the
applicant must convey with reasonable clarity to those skilled in the art that,
as of the filing date sought, he or she was in possession of the claimed
invention," Carnegie Mellon University v. Hoffmann-La Roche Inc., 541
F.3d at 1122 (internal quotations omitted), and "it is the specification itself
that must demonstrate possession." Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1352 (Fed. Cir. 2010) (en bane)). Under the claim
interpretation discussed above, Appellants do not direct our attention to
anything in the Specification showing they had possession of the invention
as claimed. Rather, the Specification supports that the message is
transmitted before the power is switched, in direct contrast to the plain
meaning of the claim language. See e.g., Spec. i-f 68 ("Before changing the
power control scheme from the first power control scheme to the second
power control scheme in the wireless communication system, the terminal
generates the power control transition message, sends the power control
transition message to the base station in the uplink, and then changes its
power control scheme."); Fig. 3A, 3B (power control scheme changed at
step 317, after the power control message has been generated and
transmitted in steps 313 and 315). We are not persuaded by Appellants'
reliance on Figure 2, step 217. Contrary to Appellants' arguments, Figure 2
does not explicitly show when the power control scheme is switched.
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Further, paragraph 68 of the Specification, which occurs immediately before
the discussion of Figure 2, states:
Before changing the power control scheme from the first power
control scheme to the second power control scheme in the
wireless communication system, the terminal generates the
power control transition message, sends the power control
transition message to the base station in the uplink, and then
changes its power control scheme. For doing so, signal flows
between the base station and the terminal are described below.
Spec. i-f 68 (emphasis added). The next text states "[0069] FIG. 2 is a signal
flow diagram of a method of a terminal for generating and sending a power
control transition message before changing a power control scheme in a
wireless communication system according to an exemplary embodiment of
the present invention." Spec. i-f 69 (emphasis added). In other words, the
description at paragraph 68, which describes generating and sending the
power control transition message before changing the power control scheme,
appears to refer to Figure 2, and paragraph 69, which explicitly refers to
Figure 2, also describes generating and sending the power control transition
message before changing the power control scheme. Appellants' arguments
with respect to Figure 2 are, in fact, circular, in that they point to the claim
language in support of what the Specification discloses. 1 See Reply Br. 4--7.
Accordingly, we sustain the Examiner's 35 U.S.C. § 112, i-f 1 rejection
of claims 40 and 50, and do not sustain the Examiner's 35 U.S.C. § 112, i-f 2
rejection of claims 40 and 50.
1 Appellants' claim language was extensively amended during prosecution.
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35 US.C. § 103(a) Rejections
Appellants argue the references do not teach or suggest "transmitting,
to the BS, a message for indicating that the power control scheme of the
terminal has been switched from the CL power control scheme to the OL
power control scheme over a channel allocated for transmitting the
message," as recited in claim 40. App. Br. 9-10.
The Examiner relies on the combination of AAP A, Kim, and Lim to
teach or suggest the disputed limitation. Final Act. 7-8. Specifically, the
Examiner finds "Kim discloses transmitting, to the base station, a message
indicating transition from a first scheme to a second scheme over a channel
allocated for transmitting the message." Final Act. 7, citing Kim i-f 12. The
Examiner also finds Lim discloses the disputed limitation. Final Act. 8,
citing Lim i-fi-1 12, 13.
Appellants argue Kim teaches a power mode change request message,
which is "a message for requesting a change of the power control method to
the BS ... or a message for acknowledgment of the power change response
message transmitted from the terminal," neither of which "discloses or
suggests an indication that the terminal power control is changed." App. Br.
10 (emphasis omitted); see also Reply Br. 9. Appellants further argue "each
of the mode change request message and the mode change response message
[from the BS] ... is a message for negotiating to determine a change of a
power mode with another entity (e.g. base station or terminal)." App. Br.
11. According to Appellants, "[ n ]either negotiation message is an indication
from the terminal to the BS, that the power control scheme of the terminal
has been changed." App. Br. 11. Appellants further argue "unlike a
message disclosed in KIM, the message disclosed in claim 40 is transmitted
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over a channel allocated for transmitting the message (i.e. the channel
dedicated for transmitting the message)." App. Br. 12. With respect to Lim,
Appellants argue "the power control report message disclosed in LIM is
different" from the claimed message. App. Br. 12.
We are not persuaded by Appellants' arguments. The claim language
"for indicating that the power control scheme of the terminal has been
switched from the CL power control scheme to the OL power control
scheme" recites non-functional descriptive material in that there is no
functional relationship between this information and the method. The
informational content of non-functional descriptive material is not entitled to
weight in the patentability analysis. See Ex parte Nehls, 88 USPQ2d 1883,
1887-90 (BPAI 2008) (precedential); Ex parte Mathias, 84 USPQ2d 1276
(BPAI 2005) (informative), aff'd, 191 Fed. Appx. 959 (Fed. Cir. 2006). See
also MPEP § 2111.05 (9th ed., August 2017) ("[W]here the claim as a whole
is directed to conveying a message or meaning to a human reader
independent of the intended computer system, and/or the computer-readable
medium merely serves as a support for information or data, no functional
relationship exists."). Rather, the difference value transmitted in the
message (as opposed to the indication that the power control scheme has
been switched) is used by the base station in the last limitation of the claim,
"receiving, from the BS, information regarding a changed modulation and
coding scheme (MCS) level determined based on the difference value."
Moreover, to the extent Appellants are arguing that Kim cannot teach
the disputed limitation because Kim has not switched the power control
scheme prior to transmitting the message, Appellants are not addressing the
combination of references as relied upon by the Examiner. Nonobviousness
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cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Examiner
relies on AAP A to teach or suggest switching the power control scheme, and
Kim and Lim to teach or suggest transmitting the message. Final Act. 7-8.
Further, Appellants' arguments with respect to Lim do not sufficiently
explain why the claimed message in Lim does not teach or suggest the
disputed limitation. Moreover, we agree with the Examiner that the claim
language does not require the message be transmitted over a channel
dedicated for transmitting the message. See Ans. 31.
Appellants present various new arguments in the Reply Brief with
respect to the Lim reference. See Reply Br. 10-12. We find these
arguments are not responsive to any new findings of fact or grounds of
rejection in the Examiner's Answer (see Final Act. 8-9). As a result,
Appellants have waived such untimely argument because Appellants have
not shown any good cause for the belated presentation. See Ex parte
Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (Unless good
cause is shown, the Board is not required to address arguments in the Reply
Brief that could have been presented in the Appeal Brief.).
Accordingly, for the foregoing reasons, we sustain the Examiner's
35 U.S.C. § 103 rejection of independent claim 40. Appellants present
similar arguments for independent claims 47, 50, and 57 (App. Br. 13), and
do not separately argue dependent claims 29, 31-34, 36-38, 41--46, 48, 49,
51-56, 58, and 59 (App. Br. 13), so we, likewise sustain the Examiner's
35 U.S.C. § 103 rejections of those claims for the same reasons.
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DECISION
The Examiner's 35 U.S.C. § 112, i-f 2 rejection of claims 40 and 50 are
reversed.
The Examiner's 35 U.S.C. § 112, i-f 1 rejection of claims 40 and 50 are
affirmed.
The Examiner's 35 U.S.C. § 103 rejection of claims 29, 31-34, 36-
38, and 40-59 is affirmed.
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
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