Ex Parte Ma et al

Patent Trial and Appeal Board

Jan 10, 2018

13283022 (P.T.A.B. Jan. 10, 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.
13/283,022 10/27/2011 Jianglei Ma HW 83146932US01 7449
74365 7590 01/12/2018
Slater Matsil, LLP/HW/FW/HWC
17950 Preston Road, Suite 1000
Dallas, TX 75252
EXAMINER
RANDHAWA, MANDISH K
ART UNIT PAPER NUMBER
2415
NOTIFICATION DATE DELIVERY MODE
01/12/2018 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):
uspatent@huawei.com
docketing @ slatermatsil. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JIANGLEI MA and MOHAMMADHADI BALIGH
Appeal 2017-008641
Application 13/283,022
Technology Center 2400
Before JOHN A. JEFFERY, BRUCE R. WINSOR, and
JUSTIN BUSCH, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1-6, 8-11, 13-21, 32, 33, and 36^13. Claims 7, 12,
34, and 35 were cancelled, and claims 22-31 are indicated as containing
allowable subject matter. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal 2017-008641
Application 13/283,022
STATEMENT OF THE CASE
Appellants’ invention provides operating mode self-adaptation for a
communications system. See generally Abstract. Claim 1, reproduced
below, is illustrative:
1. A method for controller operations, the method
comprising:
collecting performance information about a
communications system comprising a plurality of
communications controllers;
determining a performance indicator from the
performance information;
automatically switching an operating mode of the
communications system from a first operating mode to a second
operating mode in response to determining that the performance
indicator meets a performance threshold, wherein the first
operating mode comprises a non-inter-cell interference
coordination (non-ICIC) mode, and wherein the second
operating mode comprises an ICIC mode;
determining a frequency reuse mode for a first subset of
communications controllers of the plurality of communications
controllers in response to determining that the performance
indicator meets the performance threshold;
applying the frequency reuse mode to the first subset of
communications controllers; and
removing the frequency reuse mode from the first subset
of communications controllers in response to a performance
change being less than an expected threshold, the performance
change being measured after applying the frequency reuse
mode to the first subset of communications controllers.
THE REJECTIONS
The Examiner rejected claims 1 and 32 under 35 U.S.C. § 103(a) as
unpatentable over Lundborg et al. (US 2014/0370906 Al; Dec. 18, 2014),
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Application 13/283,022
Kashima et al. (US 2007/0275729 Al; Nov. 29, 2007), and Official Notice.
Final Act. 3-4.1
The Examiner rejected claims 1, 3, 5, 6, 8-10, 13, 14, 32, 37-39, and
41—43 under 35 U.S.C. § 103(a) as unpatentable over Lundborg, Komamura
et al. (US 2011/0158187 Al; June 30, 2011), and Official Notice.
Final Act. 5-11.
The Examiner rejected claim 4 under 35 U.S.C. § 103(a) as
unpatentable over Lundborg, Komamura, Official Notice, and Bachmutsky
(US 2009/0232021 Al; Sept. 17, 2009). Final Act. 11-12.
The Examiner rejected claims 2, 15-21, 33, and 36 under 35 U.S.C.
§ 103(a) as unpatentable over Lundborg, Komamura, Official Notice, and
Ma et al. (US 2011/0003598 Al; Jan. 6, 2011). Final Act. 12-16.
The Examiner rejected claims 11 and 40 under 35 U.S.C. § 103(a) as
unpatentable over Lundborg, Komamura, Official Notice, and Mildh et al.
(US 2014/0038653 Al; Feb. 6, 2014). Final Act. 16-17.
THE OBVIOUSNESS REJECTION OVER LUNDBORG, KASHIMA,
AND OFFICIAL NOTICE
The Examiner finds that Lundborg discloses many recited elements of
independent claim 1, including, among other things, (1) collecting
performance information about a communications system, and (2)
determining a performance indicator from the performance information.
Final Act. 3. The Examiner also finds Lundborg discloses automatically
1 Throughout this opinion, we refer to (1) the Final Rejection mailed
February 1, 2016 (“Final Act.”); (2) the Appeal Brief filed August 12, 2016
(“App. Br.”); (3) the Examiner’s Answer mailed March 30, 2017 (“Ans.”);
and (4) the Reply Brief filed May 26, 2017 (“Reply Br.”).
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Application 13/283,022
switching the communication system’s operation mode from a non-ICIC
mode to an ICIC mode in response to determining that the collected
performance indicator meets a performance threshold. Id. Kashima is also
cited for teaching determining a frequency reuse mode of a subset of the
communications controllers in response to determining that the collected
performance indicator meets a performance threshold. Id. at 3—4. Although
the Examiner also acknowledges that Lundborg and Kashima do not teach or
suggest removing the frequency reuse mode from the first subset of
communications controllers in response to a performance change being less
than an expected threshold, the Examiner
makes an official notice that it would have been obvious to one
of ordinary skill in the art at the time of the invention was made
to revert back to the first operating (i.e., non-ICIC) mode in
response to a performance change being less than an expected
threshold after applying the frequency reuse mode to the first
subset of communications controllers in the system of Lundborg
in view of Kashima. The motivation for doing this is to further
enhance system efficiency and reliability.
Id. 4.
Appellants argue, among other things, that the Examiner’s Official
Notice is improper. App. Br. 7-10. According to Appellants, the Examiner
did not take Official Notice of facts that are “capable of instant and
unquestionable demonstration as to defy dispute.” Id. at 7 (citing Manual
of Patent Examining Procedure (MPEP) § 2144.03(A) (9th ed. Rev.
07.2015, Nov. 2015)). Appellants further argue, even if the Examiner’s
Official Notice is proper, it would not have been obvious to modify
Lundborg in view of Kashima. Id. at 10-11.
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Application 13/283,022
ISSUE
Under § 103, is the Examiner’s proposed combination supported by
articulated reasoning with some rational underpinning to justify the
Examiner’s obviousness conclusion?
ANALYSIS
As noted above, a key aspect of the Examiner’s rejection is the
Examiner’s taking of Official Notice that it would have been obvious to
revert back to the non-ICIC mode responsive to a performance change being
less than an expected threshold after applying the frequency reuse mode as
claimed. Final Act. 4. We emphasize the word “obvious” here because an
Examiner’s use of Official Notice unsupported by documentary evidence
should only be taken when the facts so noticed are “capable of such instant
and unquestionable demonstration as to defy dispute.” See In re Ahlert, 424
F.2d 1088, 1091 (CCPA 1970) (citations omitted).
Our emphasis underscores that the Examiner did not officially notice a
fact, let alone a fact capable of instant and unquestionable demonstration,
but instead officially noticed a legal conclusion of obviousness as
Appellants correctly indicate. App. Br. 8-9. The Examiner’s taking of
Official Notice is, therefore, problematic for that reason alone.
The record shows the Examiner similarly took Official Notice
repeatedly during prosecution. See Non-Final Rejection mailed Dec. 26,
2014, at 5-6; Non-Final Rejection mailed July 15, 2016, at 6, 8, 10; and
Final Act. 4, 6, 8, 9, 11. Despite Appellants’ belated challenge in the Appeal
Brief to the Examiner’s taking of Official Notice, it is still incumbent upon
the Examiner to provide documentary evidence to support the Examiner’s
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Application 13/283,022
challenged conclusion—a crucial deficiency on this record. See MPEP
§ 2144.03(C) (noting if the Examiner’s assertion of Official Notice is
adequately traversed, the Examiner must provide documentary evidence in
the next Office Action to maintain the rejection). Here, the Examiner in the
Answer did not respond to Appellants’ challenge apart from citing MPEP
§2144.03, and emphasizing that an adequate traversal to the Examiner’s
taking of Official Notice includes stating why the noticed fact is not
considered to be common knowledge or well known in the art. See Ans. 6.
On this record, Appellants reasonably complied with this requirement by,
among other things, explaining that the proposed modification would not
only be redundant and unnecessary, it would decrease system performance
in Lundborg. App. Br. 8, 10. In light of these contentions, Appellants
effectively explained why the Examiner’s officially-noticed obviousness
conclusion was not common knowledge or well-known in the art, and,
therefore, adequately traversed the Examiner’s taking of Official Notice
under MPEP § 2144.03. Given this traversal, it was then incumbent upon
the Examiner to produce documentary evidence to support the Examiner’s
taking of Official Notice—a requirement that was not satisfied here.
In short, we find problematic the Examiner’s rationale that removing
the frequency reuse mode responsive to a performance change being less
than an expected threshold after applying that mode would have ostensibly
applied logic and common sense. See Ans. 6-9. According to the
Examiner, because the facts in Perfect Web Technologies, Inc. v. InfoUSA,
Inc., 587 F.3d 1324 (Fed. Cir. 2009) are similar to those here, a similar
rationale as provided in Perfect Web is proper. Ans. 8 (citing Wyers v.
Master Lock Co. 616 F.3d 1231, 1239 (Fed. Cir. 2010)). In particular, the
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Application 13/283,022
Examiner finds that it is common sense that Lundborg’s ICIC mode should
be disabled if not effective or helpful. Id. at 8-9. But Perfect Web is
inapposite here, for its facts are not sufficiently similar to those at issue here.
See MPEP § 2144(111) (“The examiner must apply the law consistently to
each application after considering all the relevant facts. If the facts in a prior
legal decision are sufficiently similar to those in an application under
examination, the examiner may use the rationale used by the court.”); see
also In re Eli Lilly & Co., 902 F.2d 943, 947^18 (Fed. Cir. 1990)
(recognizing the Federal Circuit has built a wide spectrum of illustrations
and accompanying reasoning of an exceedingly large body of precedent
having applied the law of obviousness to particular facts). Nevertheless, the
court in Perfect Web held that if a transmission does not deliver all emails,
then common sense dictates that one should try again—not revert back to a
state reflecting a time before the emails were transmitted. See Perfect Web,
587 F.3d at 1330.
Notably, the Federal Circuit has repeatedly warned that references to
“common sense”—whether to supply a motivation to combine or a missing
limitation—cannot be used as a wholesale substitute for reasoned analysis
and evidentiary support, especially when dealing with a limitation missing
from the cited prior art as is the case here. See Arendi S.A.R.L. v. Apple Inc.,
832 F.3d 1355, 1362 (Fed. Cir. 2016). As our reviewing court indicates,
“the Board cannot accept general conclusions about what is ‘basic
knowledge’ or ‘common sense’ as a replacement for documentary evidence
for core factual findings in a determination of patentability.” K/S Himpp v.
Hear-Wear Techs., LLC, 751 F.3d 1362, 1366 (Fed. Cir. 2014). Otherwise,
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Application 13/283,022
the examining process would deviate from the well-established and time-
honored requirement that rejections be supported by evidence. See id.
Turning to claim 1, the claim recites two independent and distinct
results from determining that a performance indicator meets a performance
threshold: (1) automatically switching an operating mode of a
communications system from a non-ICIC mode to an ICIC mode, and (2)
determining and applying a frequency reuse mode for a first subset of
communications controllers. Claim 1 further provides that the frequency
reuse mode of the first subset is removed in response to a performance
change being less than an expected threshold. Even assuming, without
deciding, that common sense dictates reverting back from an ICIC mode to a
non-ICIC mode in response to a performance change during the ICIC mode
being less than an expected threshold as the Examiner concludes (see Final
Act. 4; Ans. 8-9), the Examiner has not sufficiently explained why reverting
back to the non-ICIC mode removes the frequency reuse mode, as claimed.
Nor will we speculate in that regard here in the first instance on appeal.
“[T]he deficiencies of the cited references cannot be remedied by the
Board’s general conclusions about what is ‘basic knowledge’ or ‘common
sense’ to one of ordinary skill in the art” absent some concrete evidence in
the record to support these findings. In re Zurko, 258 F.3d 1379, 1385-86
(Fed. Cir. 2001).
We are, therefore, persuaded that the Examiner erred in rejecting
independent claim 1, and independent claim 32 that recites commensurate
limitations. Because this issue is dispositive regarding our reversing the
rejection of these claims, we need not address Appellants’ other arguments.
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Application 13/283,022
THE OBVIOUSNESS REJECTION OVER LUNDBORG, KOMAMURA,
AND OFFICIAL NOTICE
We likewise will not sustain the Examiner’s obviousness rejection of
claims 1,3,5, 6, 8-10, 13, 14, 32, 37-39, and 41-43 over Lundborg,
Komamura, and Official Notice. Final Act. 5-11. Although the Examiner
replaces Kashima’s teachings in rejecting independent claims 1 and 32 with
Komamura’s teachings, the Examiner nevertheless provides no concrete
evidence to support the Examiner’s challenged taking of Official Notice
(see Ans. 12-15)—a conclusion we are constrained by this record to reverse.
Moreover, even assuming, without deciding, that common sense dictates
reverting back from an ICIC mode to a non-ICIC mode in response to a
performance change during the ICIC mode being less than an expected
threshold as the Examiner proposes (see id.), the Examiner still has not
sufficiently explained why reverting back to the non-ICIC mode also
removes the frequency reuse mode as noted previously in connection with
the obviousness rejection of claims 1 and 32 over Lundborg, Kashima, and
Official Notice.
Therefore, for the reasons noted above, we are persuaded that the
Examiner erred in rejecting (1) independent claim 1; (2) independent
claim 32 which recites commensurate limitations; and (3) dependent claims
3, 5, 6, 8-10, 13, 14, 37-39, and 41^43 for similar reasons. Because this
issue is dispositive regarding our reversing the rejection of these claims, we
need not address Appellants’ other arguments.
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Application 13/283,022
THE OTHER OBVIOUSNESS REJECTIONS
Because the Examiner has not shown that the cited prior art cures the
foregoing deficiencies regarding the rejection of independent claims 1 and
32, we will not sustain the obviousness rejections of dependent claims 2, 4,
11, 15-21, 33, 36, and 40 for similar reasons.
CONCLUSION
The Examiner erred in rejecting claims 1-6, 8-11, 13-21, 32, 33, and
36^13 under § 103.
DECISION2
The Examiner’s decision rejecting claims 1-6, 8-11, 13-21, 32, 33,
and 36^13 is reversed.
REVERSED
2 We leave to the Examiner to consider whether limitations of method
claim 22 are conditional and need not be performed if the condition
precedent “if’ is not satisfied. See Ex parte Schulhauser, No. 2013-007847,
slip op. at 9-10 (PTAB Apr. 28, 2016) (precedential).
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