Ex Parte Sampath et al

Patent Trial and Appeal Board

Jun 19, 2017

13247100 (P.T.A.B. Jun. 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.
13/247,100 09/28/2011 Hemanth Sampath 103221U1 7231
23696 7590 06/21/2017
OTTAT mMM TNmRPORATFD
EXAMINER
5775 MOREHOUSE DR.
SAN DIEGO, CA 92121
PATEL, PARTHKUMAR
ART UNIT PAPER NUMBER
2468
NOTIFICATION DATE DELIVERY MODE
06/21/2017 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):
us-docketing@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEMANTH SAMPATH, SIMONE MERLIN, MAARTEN
MENZO WENTINK, and SANTOSH PAUL ABRAHAM
Appeal 2017-001399
Application 13/247,100
Technology Center 2400
Before LARRY J. HUME, CATHERINE SHIANG, and
NATHAN A. ENGELS, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—35, which are all the claims pending and rejected in the
application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-
part.
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates to
wireless communications. See generally Spec. 1. Claim 1 is exemplary:
1. A method of wireless communication, comprising:
receiving a data unit comprising a first indicator signifying whether a
control field is present in the data unit;
Appeal 2017-001399
Application 13/247,100
if the first indicator signifies that the control field is present,
determining whether the control field is a first type of control field or a
second type of control field based at least in part on a second indicator in the
control field; and
processing the control field based on the type of the control field.
References and Rejections
Claims 1, 12, 23, 34, 35 are provisionally rejected on the ground of
non-statutory double patenting as being unpatentable over claims 1, 14, 27,
40, and 41 of copending Application No. 13/247,124.
Claims 1, 12, 23, and 34 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Chen (UK Patent Application GB 2 405 052 A;
published Feb. 16, 2005).
Claims 2—11, 13— 22, and 24—33 are rejected under 35 U.S.C. 103(a)
as being unpatentable over Chen and Grandhi (US Pub. No. 2006/0248429
Al; published Nov. 2, 2006).
Claim 35 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Chen and Cho (US Pub. No. 2004/0147223 Al; July 29, 2004).
ANALYSIS
Non-Statutory Double Patenting
Because Appellants do not contest the merits of the Examiner’s
rejection, we summarily affirm the Examiner’s provisional rejection
of claims 1, 12, 23, 34, and 35 on the ground of non-statutory
obviousness-type double patenting in light of the claims of
Application number 13/247,124 (issue notification dated March 21,
2017).
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Application 13/247,100
Anticipation and Obviousness
Claims 12—351
Anticipation
We have reviewed the Examiner’s rejection in light of Appellants’
contentions and the evidence of record. We concur with Appellants’
contention that the Examiner erred in finding Chen discloses “[a]n apparatus
for wireless communication ... if the first indicator signifies that the control
field is present, determine whether the control field is a first type of control
field or a second type of control field based at least in part on a second
indicator in the control fieldf as recited in independent claim 12 (emphasis
added). See App. Br. 8—10; Reply Br. 2-4.
The Examiner maps the claimed “control field” to Chen’s extension
header field, and the claimed “second indicator” to Chen’s router alert type.
See Final Act. 9; Ans. 2. The Examiner cites excerpts from Chen’s pages
13, 16, and 17, and Figures 6 and 9 for teaching the italicized limitation. See
Final Act. 9; Ans. 2—3.
We have reviewed the cited Chen portions, and they do not disclose
“[a]n apparatus for wireless communication . . . determine whether the
control field is a first type of control field or a second type of control field
based at least in part on a second indicator in the control fielcT (emphasis
added), under the Examiner’s mapping. Absent further explanation from the
1 Appellants raise additional arguments with respect to this group of claims.
Because the identified issue is dispositive of the appeal with respect to this
group of claims, we do not reach the additional arguments.
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Application 13/247,100
Examiner, we do not see how the cited Chen portions disclose the disputed
claim limitation.
Because the Examiner fails to provide sufficient evidence or
explanation to support the anticipation rejection, we reverse the Examiner’s
rejection of claim 12.
Each of independent claims 23 and 34 is an apparatus claim, and
recites a claim limitation that is substantively similar to the disputed
limitation of claim 1. See claims 23 and 34. Therefore, for similar reasons,
we reverse the Examiner’s rejection of independent claims 23 and 34.
Obviousness
Dependent claims 13—22 and 24—33 depend from claims 12 and 23,
respectively. The Examiner cites an additional reference for the obviousness
rejection of those dependent claims. The Examiner relies on Chen in the
same manner discussed above in the context of claim 12, and does not rely
on the additional references in any manner that remedies the deficiencies of
the underlying anticipation rejection. See Final Act. 19—28. Therefore, we
reverse the Examiner’s obviousness rejection of claims 13—22 and 24—33.
Independent claim 35 is an apparatus claim and recites a claim
limitation that is substantively similar to the disputed limitation of claim 12.
See claim 35. For similar reasons discussed above, the Examiner erred in
finding Chen teaches “[a] user terminal... if the first indicator signifies that
the control field is present, determine whether the control field is a first type
of control field or a second type of control field based at least in part on a
second indicator in the control fieldf as recited in claim 35 (emphasis
added). Because the Examiner fails to provide sufficient evidence or
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Application 13/247,100
explanation to support the rejection, we reverse the Examiner’s rejection of
claim 35.
Claims l—ll2
Anticipation
On this record, the Examiner did not err in rejecting claim 1.
We disagree with Appellants’ arguments, and agree with and adopt
the Examiner’s findings and conclusions relating to claim 1 in (i) the action
from which this appeal is taken and (ii) the Answer to the extent they are
consistent with our analysis below.
Appellants contend the Examiner erred in finding Chen discloses “[a]
method of wireless communication ... if the first indicator signifies that the
control field is present, determining whether the control field is a first type
of control field or a second type of control field based at least in part on a
second indicator in the control field,” as recited in independent claim 1
(emphasis added). See App. Br. 8—10; Reply Br. 2-4.
As discussed above with respect to claim 12, we agree with
Appellants that the Examiner has not shown Chen teaches the claimed
“determine whether the control field is a first type of control field or a
second type of control field based at least in part on a second indicator in the
control field,” if the condition “if the first indicator signifies that the control
field is present” is met. However, as a matter of claim construction and for
2 To the extent Appellants’ advance new arguments in the Reply Brief
without showing good cause, Appellants have waived such arguments. See
37 C.F.R. § 41.41(b)(2).
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the following reasons, we affirm the Examiner’s rejection with respect to
claim 1.
During examination, claims are given their broadest reasonable
interpretation consistent with the specification. In re Am. Acad, of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). “Construing claims broadly
during prosecution is not unfair to the applicant. . . because the applicant
has the opportunity to amend the claims to obtain more precise claim
coverage.” Id.
In claim construction, “the name of the game is the claim.” In re
Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (citation omitted). In Ax
parte Schulhauser, Appeal No. 2013-007847 (PTAB, April 28, 2016)
(precedential), the Board determined that with respect to a method claim,
“claim 1 as written covers at least two methods, one in which the
prerequisite condition for the triggering step is met and one in which the
prerequisite condition for the determining step is met.” Ex parte
Schulhauser, Appeal No. 2013-007847, at *8.
Here, claim 1 is a method claim, and recites “if the first indicator
signifies that the control field is present,” then “determining whether the
control field is a first type of control field or a second type of control field
based at least in part on a second indicator in the control field”
(“Determining Step”). As a result, the method of claim 1 includes the
Determining Step if the first indicator signifies that the control field is
present. Because of the conditional “if’ clause, under the broadest
reasonable interpretation of the claim, the Determining Step does not need to
be performed when the condition “if the first indicator signifies that the
control field is present” is not met. Following our precedent, claim 1 as
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written covers two methods, one in which the prerequisite condition “if the
first indicator signifies that the control field is present” for the Determining
Step is met, and one in which the prerequisite condition for the Determining
step is not met. See Ex parte Schulhauser, Appeal No. 2013-007847, at *8.
When the condition “if the first indicator signifies that the control field is
present” is not met, the broadest reasonable interpretation of the claim
encompasses a method where only the “receiving a data unit comprising a
first indicator signifying whether a control field is present in the data unit”
step is performed. See Ex parte Schulhauser, Appeal No. 2013-007847, at
*9 (holding “[t]he Examiner did not need to present evidence of the
obviousness of the remaining method steps of claim 1 that are not required
to be performed under a broadest reasonable interpretation of the claim (e.g.,
instances in which the electrocardiac signal data is not within the threshold
electrocardiac criteria such that the condition precedent for the determining
step and the remaining steps of claim 1 has not been met.”); see also Applera
Corp. v. Illumina, Inc., 375 Fed.Appx. 12, 21 (Fed. Cir. 2010) (unpublished)
(affirming a district court’s interpretation of a method claim as including a
step that need not be practiced if the condition for practicing the step is not
met); Cybersettle, Inc. v. Nat’l Arbitration Forum, Inc., 243 Fed.Appx. 603,
607 (Fed. Cir. 2007) (unpublished) (“It is of course true that method steps
may be contingent. If the condition for performing a contingent step is not
satisfied, the performance recited by the step need not be carried out in order
for the claimed method to be performed”).
As discussed above, the Examiner maps the claimed “control field” to
Chen’s extension header field. See Final Act. 9; Ans. 2. Further, the
Examiner finds—and Appellants do not dispute—Chen teaches “receiving a
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data unit comprising a first indicator signifying whether a control field is
present in the data unit.” See Final Act. 8; Chen Fig. 9, S22 (“Does header
include hop-by-hop extension header?”). As a result, under the Examiner’s
mapping, Chen teaches both scenarios: when the condition “if the first
indicator signifies that the control field is present” is met; and alternatively,
when the condition “if the first indicator signifies that the control field” is
not met.3
Because it is undisputed Chen discloses “receiving a data unit
comprising a first indicator signifying whether a control field is present in
the data unit,” and for the reasons provided supra that as a matter of claim
construction, we find Chen anticipates claim 1.
Because Appellants have not persuaded us the Examiner erred, we
sustain the Examiner’s rejection of independent claim 1.
Obviousness
Regarding dependent claims 5—7, 9, and 11, Appellants argue the
claims
are allowable over Chen for at least the reasons presented
above [with respect to claim 1.] . . . . Grandhi fails to teach “if
the first indicator signifies that the control field is present,
determining whether the control field is a first type of control
field or a second type of control field based at least in part on a
second indicator in the control field; and processing the control
field based on the type of the control field” as recited in claim 1
. . . . Thus, Grandhi fails to overcome the deficiencies of Chen.
3 Chen provides two actions in response to S22: proceed to S24 if the
response to the inquiry is “YES” (when the condition “if the first indicator
signifies that the control field is present” is met) and proceed to S28 if the
response is “NO” (when the condition “if the first indicator signifies that the
control field is present” is not met). Chen Fig. 9.
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Application 13/247,100
App. Br. 11.
As discussed above, Appellants’ arguments about Chen are
unpersuasive with respect to claim 1, and Appellants have not provided
separate substantive arguments about dependent claims 5—7, 9, and 11. Asa
result, we affirm the Examiner’s rejection of dependent claims 5—7, 9,
and 11.
Regarding dependent claims 2-4, we agree with Appellants the
Examiner erred in finding Chen and Grandhi collectively teach (i) “the
second indicator is the first bit of the control field,” as recited in claim 2;
(ii) “the second indicator indicates whether the control field type is very high
throughput (VHT) or high throughput (HT),” as recited in claim 3; and
(iii) “the second indicator is a reserved bit in the control field,” as recited in
claim 4. See App. Br. 11—14. We have reviewed the cited prior art portions,
and find they do not teach the above disputed limitations. Absent further
explanation from the Examiner, we do not see how the cited prior art
portions teach the disputed claim limitations. Therefore, we reverse the
Examiner’s rejection of dependent claims 2—A.
Similarly, regarding dependent claims 8 and 10, we agree with
Appellants the Examiner erred in finding Chen and Grandhi collectively
teach the claims. See App. Br. 11. Specifically, we find the Examiner has
not adequately shown the cited prior art portions teach (i) “the control field
comprises an HT control field in the MAC header,” as recited in claim 8;
and (ii) “determining a modulation coding scheme (MCS) based on the
control field,” as recited in claim 10. We have reviewed the cited prior
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portions, and find they do not teach the above disputed limitations. Absent
further explanation from the Examiner, we do not see how the cited prior art
portions teach the disputed claim limitations. Therefore, we reverse the
Examiner’s rejection of dependent claims 8 and 10.
DECISION
We affirm the Examiner’s decision rejecting claims 1, 5—7, 9,
and 11—35.
We reverse the Examiner’s decision rejecting claims 2-4, 8, and 10.
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). See 37
C.F.R. § 41.50(f).
AFFIRMED-IN-PART
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