Ex Parte Kazmi et al

Patent Trial and Appeal Board

Jul 19, 2017

13814971 (P.T.A.B. Jul. 19, 2017)

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.
13/814,971 02/08/2013 Muhammad Kazmi 1009-0422/P31259 US1 8214
7590
Murphy, Bilak & Homiller/Ericsson
1255 Crescent Green
Suite 200
Cary, NC 27518
EXAMINER
HUANG, WEN WU
ART UNIT PAPER NUMBER
2648
NOTIFICATION DATE DELIVERY MODE
07/21/2017 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):
official@mbhiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MUHAMMAD KAZMI, ALI BEHRAVAN, and GABOR FODOR
Appeal 2017-004491
Application 13/814,971
Technology Center 2600
Before JEFFREY S. SMITH, JOHNNY A. KUMAR, and
TERRENCE W. McMILLIN, Administrative Patent Judges.
KUMAR, 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 36—70. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2017-004491
Application 13/814,971
INVENTION
The invention is directed to “controlling operation of wireless devices
capable of operating in both licensed and unlicensed spectrum using the
same or differing radio access technologies.” Spec. 1,11. 6—8. Claim 36 is
illustrative and is reproduced below:
36. A method in a wireless communication device configured
to operate in at least first and second frequency bands, the
method comprising:
accessing a radio access network using a first radio access
mode and the first frequency band; and
transmitting frequency raster data to the radio access
network, wherein the frequency raster data corresponds to the
second band, indicates a tuning capability of the wireless
communication device and comprises at least a first frequency
index and a granularity indicator.
REFERENCES
Caldwell et al. US 5,548,839 Aug. 20, 1996
(“Caldwell”)
Ala-Laurila et al. US 6,477,156 B1 Nov. 5, 2002
(“Ala-Laurila”)
Raaf US 6,785,514 B1 Aug. 31,2004
Matoba et al. US 2006/0063543 Al Mar. 23, 2006
(“Matoba”)
Kang et al. US 2009/0221290 Al Sept. 3, 2009
(“Kang”)
Nakao et al. US 2011/0194515 Al Aug. 11,2011
(“Nakao”)
Lambert et al. US 8,532,041 B1 Sept. 10,2013
(“Lambert”)
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REJECTIONS AT ISSUE
Claims 36, 37, 42-A4, 46-A9, 52-54, 58, 59, 61, 63-65, 67, and 68
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Nakao
and Kang.
Claims 38, 45, 50, 51, 55, 60, 62, 66, and 69 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Nakao, Kang, and Lambert.
Claim 39 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nakao, Kang, and Caldwell.
Claims 40 and 41 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nakao, Kang, and Raaf.
Claim 56 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nakao, Kang, and Matoba.
Claims 57 and 70 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nakao, Kang, and Ala-Laurila.
ISSUES
Did the Examiner err in finding that the combination of Nakao and
Kang teaches or suggests “transmitting frequency raster data to the radio
access network, wherein the frequency raster data corresponds to the second
band, indicates a tuning capability of the wireless communication device
and comprises at least a first frequency index and a granularity indicator,”
as recited in independent claim 36 (emphasis added)?
Did the Examiner err in finding that the combination of Nakao, Kang,
and Caldwell teaches or suggests “wherein a tuning capability
corresponding to the first radio access mode and the first frequency band
comprises a pre-determined first frequency-step size, and wherein the
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granularity indicator corresponds to a second frequency-step size differing
from the first frequency-step size,” as recited in dependent claim 39
(emphasis added)?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner erred. We are not persuaded that Appellants
identify reversible error. Upon consi deration of the arguments presented in
the Appeal Brief and Reply Brief, we agree with the Examiner that all the
pending claims are unpatentable over the cited combination of references.
We adopt as our own the findings and reasons set forth in the rejection from
which this appeal is taken and in the Examiner’s Answer, We provide the
following explanation to highlight and address specific arguments and
findings primarily for emphasis.
Claims 36, 37, 42-44, 46 49, 52-54, 58, 59, 61, 63 65, 67, and 68
We select claim 36 as representative of the group of claims
comprising claims 37, 42-44, 46-49, 52—54, 58, 59, 61, 63—65, 67, and 68,
as Appellants have not argued any of the other claims in this group with
particularity. 37 C.F.R. § 41.37(c)(l)(iv).
1. Transmitting Frequency Raster Data to the Radio Access
Network, wherein the Frequency Raster Data Indicates a Tuning Capability
Appellants argue that neither “Nakao nor Kang, whether alone or in
combination, discloses or suggests a wireless device that transmits, to a radio
access network, frequency raster data comprising a first frequency index and
a granularity indicator that indicates a tuning ability of the wireless device.”
App. Br. 6.
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Appellants specifically argue that Kang’s exchanged sub-band
information is “supported by the network, and is sent from the BS to the
MS,” which Appellants argue is “in the opposite direction” from being “sent
from a wireless device to a radio access network” as required by claim 36.
App. Br. 7.
Appellants’ argument against Kang separately from Nakao does not
persuasively rebut the combination made by the Examiner. One cannot
show non-obviousness by attacking references individually, where the
rejections are based on combinations of references. In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA
1981).
The Examiner finds, and we agree, that Nakao’s wireless terminal
transmits capability information to a base station (Final Act. 3 (citing Nakao
Fig. 7 and Tflf 82, 94)), and the base station uses the capability information to
determine the communication-capable bandwidth containing a plurality of
unit bands (see Nakao 1 82). We agree with the Examiner’s finding that
transmitting Nakao’s capability information teaches transmitting frequency
raster data to the radio access network, wherein the frequency raster data
corresponds to the second band (i.e., the plurality of unit bands) and
indicates a tuning capability (i.e., communication-capable bandwidth) of the
wireless communication device. Final Act. 3 (citing Nakao Fig. 7 and 82,
94). Appellants have not provided argument rebutting the Examiner’s
findings that Nakao teaches transmitting frequency raster data to the radio
access network and that frequency raster data corresponds to the second
band and indicates a tuning capability of the wireless communication device.
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2. Frequency Raster Data comprises at least a First Frequency
Index and a Granularity Indicator
Appellants further argue that Nakao “says nothing about frequency
raster data comprising a frequency index and a granularity indicator.” App.
Br. 7.
Again, Appellants’ argument against Nakao separately from Kang
does not persuasively rebut the combination made by the Examiner. In re
Merck & Co., 800 F.2d at 1097; In re Keller, 642 F.2d at 425.
The claim recites “frequency raster data . . . comprises at least a first
frequency index and a granularity indicator.” Appellants’ Specification
provides an example of a “single frequency index” that includes “a first
parameter that specifies or indexes a low-end of a frequency band.” Spec.
14,11. 30-32. Appellants’ Specification provides an example of “a
granularity indicator” that includes “a second parameter that specifies or
indexes a step size.” Spec. 14,11. 30, 33—34. The Examiner finds, and we
agree, that Kang’s exchanged sub-band information teaches the claimed
frequency raster data comprising at least a first frequency index, or
frequency range, and a granularity indicator, or step size. Final Act. 3
(citing Kang || 42-43 and Table 1). Appellants have not provided argument
rebutting the Examiner’s specific findings regarding Kang.
Furthermore, Appellants’ argument that Kang’s sub-band information
is sent from the BS to the MS, which is in the opposite direction as required
by the claim from the wireless device to the radio access network (see App.
Br. 7), does not persuasively rebut the Examiner’s combination. The
Examiner relies on Nakao, not Kang, to teach transmitting capability
information from the mobile station to the base station. Final Act. 3. The
Examiner relies on Kang to teach the capability information can include a
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frequency index and granularity indicator. Id. Appellants have not
persuasively shown that including the capability information of Kang in the
capability information transmitted by the mobile station of Nakao was
“uniquely challenging or difficult for one of ordinary skill in the art.” See
Leapfrog Enters., Inc. v. Fisher—Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citing KSR Int 7 Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007)).
Further, we are not persuaded that Kang is limited to transmitting
capability information from the base station to the mobile station. We agree
with the Examiner’s finding that Kang’s sub-band information “is
exchanged between MS and BS (see Kang’s fig. 2, 201, two-way arrow).”
Ans. 2 (emphasis added). For example, Kang describes “an overlay mode
support information exchange step for exchanging information” and “an
overlay mode supporting available sub-band information exchange step for
exchanging information on a sub-band,” and that the information on the sub­
band may contain information such as a “Frequency band index” with a
“channel frequency step size.” Kang || 42-43 and Table 1. As further cited
by the Examiner, “Kang teaches the MS transmits information (e.g. sub­
band readiness indicator) notifying that the MS has been prepared for data
transmission and reception through the sub-band to the BS.” Ans. 2—3
(citing Kang 145). In contrast with Appellants’ assertion, Kang does not
disclose that sub-band information is sent exclusively from the BS to the
MS. Rather, Kang describes exchanging the information, showing such an
exchange in two directions between the BS and the MS, and including the
MS sending information to the BS that it is ready for data transmission.
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3. Obviousness to Combine the Teachings of Nakao with the
Teachings of Kang
Appellants argue the Examiner’s reason to combine Nakao and Kang
“in order to use multiple frequency bands and communicate via a second
band” does “not explain how or why a person of ordinary skill in the art
would replace or modify the bandwidth support information sent from
Nakao’s terminal to a base station with parameters that in Kang’s system are
sent from Kang’s base station to a terminal, to thereby arrive at a wireless
terminal transmitting tuning capability information to a base station.” App.
Br. 7—8 (citing Final Act. 4). Specifically, Appellants argue that “Nakao’s
BS has no need for Kang’s frequency index and frequency step size
information in order ‘to allocate the secondary band.’” App. Br. 8.
Appellants’ contention does not persuade us of Examiner error in the
rejection. The Examiner finds, and we agree, that “a reason in Kang for MS
to transmit sub-band information to BS is to notify a BS that an MS can
transmit and receive data using multiple frequency bands.” Final Act. 4;
Ans. 3 (citing Kang 19). The Examiner further finds that “one of ordinary
skill in the art as motivated to provide reliable communication in multiple
bands would modify Nakao to ensure that the BS knows the MS defined
minimum resolution of frequency.” Ans. 4 (citing Nakao | 55 and Kang
19). We agree with the Examiner. Appellants’ arguments do not take into
account what the collective teachings of the prior art would have suggested
to one of ordinary skill in the art and are therefore ineffective to rebut the
Examiner’s prima facie case of obviousness. See In re Keller, 642 F.2d at
425 (“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly suggested in
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any one or all of the references. Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.” (citations omitted)). This reasoning is applicable here.
We further find that the Examiner has found actual teachings in the
prior art and has provided a rationale for the combination (see Final Act. 3—
4). We find that the above-noted teachings suggest that the combination
involves the predictable use of prior art elements according to their
established functions, i.e., transmitting data from a mobile device to a
network and the device having properties including being indicative of
tuning capability and comprising a frequency index and granularity
indicator. There is no requirement that the problem solved by the secondary
reference be discussed by the primary reference to apply the teachings of the
secondary reference in a rejection under 35 U.S.C. § 103. The Supreme
Court has held that in analyzing the obviousness of combining elements, a
court need not find specific teachings, but rather may consider “the
background knowledge possessed by a person having ordinary skill in the
art” and “the inferences and creative steps that a person of ordinary skill in
the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). To be nonobvious, an improvement must be “more than the
predictable use of prior art elements according to their established
functions,” id. at 417, and the basis for an obviousness rejection must
include an “articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness.” Id. at 418 (citation and internal
quotation marks omitted). Here, the Examiner has provided a rationale for
the combination. That Appellants disagree with the Examiner’s rationale for
the combination does not negate the validity of the rationale nor the
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existence of rational underpinning. See App. Br. 9. Accordingly, we find
that the Examiner has provided sufficient motivation for modifying Nakao
with the teachings of Kang.
For the above reasons we sustain the Examiner’s § 103 rejection of
independent claim 36, as well as independent claims 48, 58, and 64, each
with a commensurate limitation, and dependent claims 37, 42-44, 46, 47, 49,
52-54, 59, 61, 63, 65, 67, and 68.
Claim 39
Appellants contend that “Kang shows only one frequency step size,
not a second step size differing from a first step size” and Caldwell’s “tuning
step size” is “completely unrelated to a tuning capability of a wireless
terminal accessing a radio access network using frequency raster data.”
App. Br. 12; Reply Br. 8—9.
We are not persuaded of error in the rejection. As discussed supra,
the Examiner finds Nakao teaches a tuning capability of a wireless device
comprising a plurality of unit bands. Final Act. 3 (citing Nakao Fig. 7 and
82, 94)). The Examiner further finds Caldwell teaches a tuning capability
comprising a pre-determined first frequency-step size (Final Act. 13 (citing
Caldwell col. 9,11. 1—15)), and, more specifically, Caldwell describes
“CNST functions in the lower RF input ranges (i.e., below approximately
500 Mhz) require smaller tuning step sizes” (Caldwell col. 9,11. 1—3). The
Examiner finds Kang’s granularity indicator (i.e., step size of 250 KHz)
teaches the second frequency-step size. Final Act. 13 (citing Kang || 42-43
and Table 1).
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In light of the Examiner’s findings and “the inferences and creative
steps that a person of ordinary skill in the art would employ,” we agree that
it would have been obvious to one of ordinary skill in the art to use a second
frequency-step size (i.e., Kang’s granularity indicator) differing from a
smaller, first frequency-step size used for lower frequencies (i.e., Caldwell’s
tuning step size), “in order to process signal[s] of different frequency
bandwidth.” Final Act. 13 (citing Caldwell col. 1,11. 25^40); KSR, 550 U.S.
at 418. Appellants’ argument fails to persuasively rebut the Examiner’s
findings regarding Kang teaching at least one example step size, and
Caldwell’s teaching of smaller tuning step sizes for lower frequencies
(resulting in differing step sizes).
Thus, we sustain the Examiner’s § 103(a) rejection of claim 39.
Claims 38, 40, 41, 45, 50, 51, 55-57, 60, 62, 66, 69, and 70
Appellants have provided no separate arguments towards patentability
for claims 38, 40, 41, 45, 50, 51, 55—57, 60, 62, 66, 69, and 70. Therefore,
the Examiner’s § 103 rejections of claims 38, 40, 41, 45, 50, 51, 55—57, 60,
62, 66, 69, and 70 are sustained for similar reasons as noted supra.
DECISION
The Examiner’s decision to reject claims 36—70 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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