Ex Parte Kim et al

Patent Trial and Appeal Board

Nov 13, 2017

11787425 (P.T.A.B. Nov. 13, 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.
11/787,425 04/16/2007 Soeng-Hun Kim 678-3162 3150
66547 7590 11/15/2017
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
CHANG, TOM Y
ART UNIT PAPER NUMBER
2456
NOTIFICATION DATE DELIVERY MODE
11/15/2017 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):
pto @ farrelliplaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SOENG-HUN KIM, GERT-JAN VAN LIESHOUT,
and
HIMKE VAN DER VELDE
Appeal 2017-004593
Application 11/787,425
Technology Center 2400
Before JOSEPH L. DIXON, CARLA M. KRIVAK,
JOHNNY A. KUMAR, Administrative Patent Judges.
KRIVAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—5 and 10—14. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify Samsung Electronics Co, Ltd. as the real party in
interest. App. Br. 1.
Appeal 2017-004593
Application 11/787,425
STATEMENT OF THE CASE
Appellants’ invention is directed to “a method and apparatus for
transmitting and receiving a status report of Automatic Repeat reQuest
(ARQ) in an ARQ layer” (Spec. 1:15—17).
Independent claim 1, reproduced below, is exemplary of the subject
matter on appeal.
1. A method for transmitting a status report of an
Automatic Repeat reQuest (ARQ) layer in a mobile
communication system including the ARQ layer and a Hybrid
Automatic Repeat reQuest (HARQ) layer, the method
comprising:
determining, by an ARQ receiving (Rx) entity, whether a
transmission opportunity of the status report is permitted by a
lower layer, if a predetermined status report generation
condition is satisfied, wherein the lower layer is lower than the
ARQ layer and allocates resources to the ARQ Rx entity;
if the transmission opportunity of the status report is
permitted by the lower layer, generating a status report
depending on a reception status of ARQ packets received; and
transmitting the generated status report to an ARQ
transmitting (Tx) entity at the transmission opportunity of the
status report.
REFERENCES and REJECTIONS
The Examiner rejected claims 1—5 and 10-14 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
The Examiner rejected claims 1—5 and 10-14 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the enablement requirement.
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Application 11/787,425
The Examiner rejected claims 1—5 and 10-14 under 35 U.S.C.
§ 102(b) as anticipated by Hebsgaard (US 2005/0094632 Al; published May
5, 2005).
ANALYSIS
Rejections under 35 U.S.C. § 112, first paragraph
The Examiner finds there is no description in Appellant’s
Specification for the limitation in independent claims 1 and 10 of a “lower
layer is lower than the ARQ layer and allocates resources to the ARQ Rx
entity” (Ans. 2). The Examiner finds Appellants’ Specification “describes ‘a
lower layer to the ARQ Tx entity 205’, but such a disclosure does not recite
[sic] further layer lower than the ARQ layer” (id.).
The test for written description is summarized in Purdue Pharma L.P.
v. FauldingInc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (internal quotation
marks and citations omitted):
In order to satisfy the written description requirement, the
disclosure as originally filed does not have to provide haec verba
support for the claimed subject matter at issue. . . . Nonetheless,
the disclosure must . . . convey with reasonable clarity to those
skilled in the art that. . . [the inventor] was in possession of the
invention.... Put another way, one skilled in the art, reading the
original disclosure, must immediately discern the limitation at
issue in the claims. . . . That inquiry is a factual one and must be
assessed on a case-by-case basis.
Further, one shows possession “by such descriptive means as words,
structures, figures, diagrams, formulas, etc. that fully set forth the claimed
invention.” Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed.
Cir. 1997).
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Application 11/787,425
Appellants cite to various portions of the Specification for support
(App. Br. 4; Spec. 13:6-20; Reply Br. 2-3). We agree with Appellants and,
upon further review of Appellants’ Specification, find page 12, lines 6—7,
state “[i]f transmission resource is allocated, the lower layer permits ARQ
Rx entity 320 to deliver the transmission data” (emphasis added), and page
13, lines 6—9, state a “status report generation condition is satisfied and a
generation of the status report is triggered in step 405, and then an ARQ Rx
entity reports in step 410 the presence of transmission data to a lower layer
in charge of management of transmission resources’ '' (emphasis added).
For the foregoing reasons, we find the written description reasonably
conveys to one of ordinary skill in the art the inventor had possession of the
claimed subject matter as of the filing date.
The Examiner also finds the claims are not enabled as there is
“currently no method of performing ARQ at the physical layer thus to claim
such a limitation the specification would be required to describe how ARQ
is performed at the physical layer such that one of ordinary skill could use
such a disclosure to make and use the invention” (Ans. 3). The Examiner
then asserts such support is absent from Appellants’ Specification (Ans. 3—
4).
The test for compliance with the enablement requirement in the first
paragraph of 35 U.S.C. § 112 is whether the disclosure, as filed, is
sufficiently complete to enable one of ordinary skill in the art to make and
use the claimed invention without undue experimentation (In re Wands, 858
F.2d 731, 737 (Fed. Cir. 1988)). Factors that may be considered in
determining whether a disclosure would require undue experimentation
include (1) the quantity of experimentation necessary, (2) the amount of
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Application 11/787,425
direction or guidance presented, (3) the presence or absence of working
examples, (4) the nature of the invention, (5) the state of the prior art, (6) the
relative skill of those in the art, (7) the predictability or unpredictability of
the art, and (8) the breadth of the claims (id.) “Enablement is not precluded
by the necessity for some experimentation . . . However, experimentation
needed to practice the invention must not be undue experimentation. The
key word is ‘undue,’ not ‘experimentation’” (id. at 736—737).
When rejecting a claim under the enablement requirement of Section
112, the PTO bears an initial burden of setting forth a reasonable explanation
as to why it believes that the scope of protection provided by that claim is
not adequately enabled by the description of the invention provided in the
Specification of the application; this includes, of course, providing sufficient
reasons for doubting any assertions in the Specification as to the scope of
enablement. If the PTO meets this burden, the burden then shifts to the
applicant to provide suitable proofs indicating that the Specification is
indeed enabling. In re Wright, 999 F.2d 1557, 1561—62 (Fed. Cir. 1993)
(citing In re Marzocchi, 439 F.2d 220, 223—24 (CCPA 1971)).
In concluding there is no enabling disclosure, the Examiner relies on
two assertions: (1) there is no description of how the “ARQ is performed at
the physical layer such that one of ordinary skill could use such a disclosure
to make and use the invention” (Ans. 3) and (2) “the specification never
explicitly uses the language ‘wherein the lower layer is lower than the ARQ
layer’” (Ans. 7). Based on these two assertions, the Examiner finds “the
specification does not support the limitation as recited” (id.) In making this
finding, however, the Examiner has not addressed the Wands factors or
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Application 11/787,425
otherwise explained why one of ordinary skill in the art would have to
engage in undue experimentation to practice the claimed invention.
In the instant case, we agree with Appellants’ arguments on pages 7
and 8 of their Appeal Brief. For example, Appellants’ Specification, page
13, lines 6—20, discloses the contested limitation. In addition, Appellants
have made counter-arguments that the Examiner has not responded to in the
Answer (see Ans. 6—7; the Examiner does not address Appellants’
arguments that their Specification, pages 12 and 13, or Figure 4 disclose this
limitation). We also note the Examiner’s response lumps the written
description and enablement requirements together and asserts pages 9, 10,
and 11 of Appellants’ Specification do not provide support for the lower
layer (pages 10 and 11, however, do indeed support this limitation).
For the foregoing reasons, we conclude the Examiner has failed to
establish a prima facie case of non-enablement. Therefore, we do not
sustain the Examiner’s rejection of claims 1—5 and 10—14 under 35 U.S.C.
§112, first paragraph.
Rejection under 35 U.S.C. §102
The Examiner finds Hebsgaard discloses all the limitations of
independent claims 1 and 10, particularly the limitation, “wherein the lower
layer is lower than the ARQ layer and allocates resources to the ARQ Rx
entity” (Ans. 9). The Examiner finds Hebsgaard’s MAC layer (lower layer)
performs the ARQ protocol for determining, at the end of a time window,
whether there are any missing packets and generates and sends a report if
there are missing packets (id.). We do not agree.
To anticipate, every element and limitation of the claimed invention
must be found in a single prior art reference, arranged as in the claim
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(Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
2001), see also Net Money IN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371
(Fed. Cir. 2008)).
Here the Examiner states “the MAC layer reasonably teaches a lower
layer” (emphasis added) (Ans. 9). A 102 rejection requires that every
element of the claim must be disclosed in the cited reference—the “mere fact
that a certain thing may result from a given set of circumstances is not
sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations
and internal quotation marks omitted). The Examiner, therefore, does not
provide a correct or sufficient 102 analysis.
Additionally, we agree with Appellants the Examiner’s finding that
Hebsgaard’s MAC layer (lower layer) performs ARQ protocol is incorrect.
As Appellants contend, and we agree, Hebsgaard “merely refers to
performing resource management and the ARQ at the MAC layer” (Reply.
Br. 3). That is, Appellant’s claims recite “an ARQ receiving (Rx) entity, not
MAC layer, i.e., the lower layer, determines whether a transmission
opportunity of the status report is permitted, if a predetermined status report
generation condition is satisfied” (id.). “Therefore, Hebsgaard describing
the MAC layer performing resource management and the ARQ does not
teach or suggest another layer, i.e., the ARQ Rx entity, determining whether
a transmission opportunity of the status report is permitted by the MAC
layer” (Reply Br, 4). Thus, Hebsgaard does not disclose the “determining, by
an ARQ receiving (Rx) entity, whether a transmission opportunity of the
status report is permitted by a lower layer, if a predetermined status report
generation condition is satisfied, wherein the lower layer is lower than the
ARQ layer and allocates resources to the ARQ Rx entity,” as claimed (id.).
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We therefore do not sustain the Examiner’s rejection of independent
claims 1 and 10, and claims 2—5 and 11—14, dependent therefrom, as
anticipated by Hebsgaard.2
DECISION
The Examiner’s decisions rejecting claims 1—5 and 10—14 under 35
U.S.C. § 112, first paragraph are reversed.
The Examiner’s decision rejecting claims 1—5 and 10—14 under 35
U.S.C. § 102 is reversed.
REVERSED
2 In light of any further prosecution the Examiner may want to consider a
112, 2nd rejection (indefiniteness). The conditional “if’ limitation appears to
cover only a true condition and not a false condition (cf. In re Johnston, 435
F.3d. 1381, 1384 (Fed. Cir. 2006) (“[Ojptional elements do not narrow the
claim because they can always be omitted.”). Based on such interpretation,
the Examiner is not required to find the disclosure of a conditional step . . .
in the prior art. See Ex Parte Gary M. Katz, 2011 WL 514314, *4 (BPAI
2011).
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