Ex Parte Schmidl et al

Patent Trial and Appeal Board

Jul 26, 2017

12410058 (P.T.A.B. Jul. 26, 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.
12/410,058 03/24/2009 Timothy M. Schmidl TI-60022.2 2513
23494 7590 07/28/2017
TEXAS INSTRUMENTS INCORPORATED
P O BOX 655474, M/S 3999
DALLAS, TX 75265
EXAMINER
HSIUNG, HAI-CHANG
ART UNIT PAPER NUMBER
2476
NOTIFICATION DATE DELIVERY MODE
07/28/2017 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):
uspto@ti.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY M. SCHMIDL, EKO N. ONGGOSANUSI,
ANAND G. DABAK, and ARIS PAPASAKELLARIOU
Appeal 2016-004428
Application 12/410,058
Technology Center 2400
Before ST. JOHN COURTENAY III, MICHAEL J. STRAUSS, and
CATHERINE SHIANG, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants have requested rehearing of a portion of our decision
entered February 7, 2017 (“Dec.”), which affirmed the Examiner’s decision
to reject claims 24—26 and 33—35 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.1 For the reasons
discussed below, we deny Appellant’s Request for Rehearing (“Req.”) with
respect to our decision to affirm the Examiner’s rejection under 35 U.S.C.
§112, first paragraph, but grant Appellants an opportunity to respond further
1 Our decision also reverses the Examiner’s rejection of claims 10—14 and
24—35 under 35 U.S.C. § 103, which the Request for Rehearing excludes.
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Application 12/410,058
by designating our prior affirmance of the Examiner’s rejection as a new
ground of rejection.
DISCUSSION
A request for rehearing “must state with particularity the points [of
law or fact] believed to have been misapprehended or overlooked by the
Board,” and must comply with 37 C.F.R. § 41.52(a)(1) (2012).
I
Appellants argue that our decision “misstates] Examiner’s reasons for
rejecting Claims 24-26 & 33-35.” Req. 2 (emphasis omitted). In particular,
Appellants argue:
the Final Rejection clearly shows that Examiner found that the
Specification does not describe “a counter in a first OFDM
symbol” NOT “a counter in a first OFDM symbol during each
TTI”, as determined by the Board.
Req. 3 (emphases omitted); see also Req. 2—5.
Although we disagree with Appellants’ assertion, the Examiner’s final
rejection includes some inconsistency. The Examiner begins the rejection
by explicitly bolding and underlining the entire term “a counter in a first
OFDM symbol during each TTI,” but omits “during each TTI” one time in
the remaining sentence of the rejection. See Final Act. 3. However, the
reasoning for the rejection again discusses “during each TTI.” See Final
Act. 3 (“The closest scenario described in Specification is around [0011,
0033] and Fig.3, that each TTI which has several OFDM symbols and the
base station transmits a counter during each TTI to indicate a number of
SCCH in the TTI.”).
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Application 12/410,058
Similarly, the Examiner’s reasoning in the Answer discusses the
Specification’s disclosure of “a counter during each TTI,” and the lack of
disclosure that such a counter is in a first OFDM symbol. See Ans. 4 (“only
para. [0011, 0033] recite that the base station transmits a counter during each
TTI to indicate a number of SCCH in the TTI; but nowhere in Specification
discloses the counter is in a first OFDM symbol”).
Appellants also assert:
the Board’s inclusion of the term “during each TTI” is in
contrast to Examiner’s determination as Examiner admitted that
the limitation “during each TTI” is taught in the specification
“the base station transmits a counter during each TTI to indicate
a number of SCCH in the TTI[.]”
(Req. 5). That assertion is unpersuasive. As discussed below,
although the Specification discloses “during each TTI,” the issue is
whether the Specification discloses the entire limitation “a counter in
a first OFDM symbol during each TTI.”
Given the inconsistency of the final rejection and to ensure complete
fairness to Appellants, we designate our affirmance of the Examiner’s
decision to reject 24—26 and 33—35 under 35 U.S.C. § 112, first paragraph,
for failing to comply with the written description requirement, as a new
ground of rejection.
II
Appellants argue: “The Board committed error . . . by . . . providing
reasoning for its affirmance of the rejection . . . that is inconsistent with the
cited Federal Circuit case law.” Req. 5 (emphasis omitted). In particular,
Appellants contend:
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Application 12/410,058
the Board’s determination is either: 1) based on the Board’s
determination that all of the words of a claim have to be found
somewhere in the specification exactly as set forth in the claim
and in the same order; OR 2) the Board completely ignored
Appellants discussion about “a counter in a first OFDM symbol
during each TTI” in the specification.
Req. 6; see also Req. 5—12.
Appellants’ statements are incorrect. As discussed in our decision
(Dec. 2—3), to satisfy the written description requirement, the disclosure
must reasonably convey to skilled artisans that Appellant possessed the
claimed invention as of the filing date. See Ariad Pharms., Inc. v. Eli Lilly
& Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (enbanc). Specifically, the
description must “clearly allow persons of ordinary skill in the art to
recognize that [the inventor] invented what is claimed” and
the test requires an objective inquiry into the four comers of the
specification from the perspective of a person of ordinary skill
in the art. Based on that inquiry, the specification must
describe an invention understandable to that skilled artisan and
show that the inventor actually invented the invention claimed.
Id. (alteration in original) (internal quotations and citations omitted).
Further, the written description statute “requires that the written
description actually or inherently disclose the claim element.” PowerOasis,
Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306-07 (Fed. Cir. 2008).
[I]t is not a question of whether one skilled in the art might be
able to constmct the patentee’s device from the teachings of the
disclosure .... Rather, it is a question whether the application
necessarily discloses that particular device ... A description
which renders obvious the invention for which an earlier filing
date is sought is not sufficient.
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir.
1997) (internal quotation marks and citations omitted) (emphasis added).
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We begin by noting Appellants do not contend the original claims
include the limitation “a counter in a first OFDM symbol during each TTI.”
As discussed in our decision (Dec. 3), Appellants have not pointed to any
disclosure in the original Specification about “a counter in a first OFDM
symbol during each TTI,” and have not persuasively shown the cited
paragraphs of the Specification disclose that limitation.
In the Appeal Brief (App. Br. 6-8), Appellants cite a number of
paragraphs2 from the Specification, list excerpts from the paragraphs,3 state
each paragraph teaches or further teaches [excerpts from the paragraph], and
conclude:
As a result, paragraphs [009], [0010], [0011], [0027],
[0028] & [0033]4 contain subject matter that supports the
limitation, “transmitting a counter in a first OFDM symbol that
indicates a number of control channels ”, as required by Claim
24. Examiner’s 35 U.S.C. 112, first paragraph, rejection of
Claim 24 is erroneous and must be reversed as no correction as
the identified subject matter of Claim 24 is described in the
specification.
2 Paragraphs 9, 10, 11, 25—27, and 31. We use the numbering of the
paragraphs in the original Specification. Subsequently, Appellants amended
the Specification, renumbered paragraphs 25—27 and 31 to paragraphs 27—29
and 33, respectively, and amended the original paragraphs 25 and 31.
Amended Spec, dated November 9, 2012 (“Amended Spec.”) pp. 5—8.
3 In the listed excerpts, some sentences are underlined, italicized, and/or
bolded. This applies to our entire analysis: when we state Appellants list (or
state a paragraph teaches or further teaches) excerpts from a paragraph (or
paragraphs), such excerpts may include underlined, italicized, and/or bolded
sentences.
4 Appellants use the revised numbering of the paragraphs. As discussed
above, the revised numbering first appeared in the Amended Spec., which
was filed subsequent to the claimed priority date.
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App. Br. 8 (original emphases omitted) (emphasis added); see also App. Br.
6-8.
We disagree. Claim 24 does not merely recite “transmitting a counter
in a first OFDM symbol that indicates a number of control channels,” as
Appellants assert (App. Br. 8). Instead, it recites “transmitting a counter in a
first OFDM symbol during each TTI that indicates a number of control
channels.” Claim 24 (emphasis added).
Further, it is unclear what Appellants mean by asserting the
Examiner’s rejection “must be reversed as no correction.’ '’ App. Br. 8
(emphasis added). It is also unclear why and how Appellants have reached
the above conclusion, as Appellants have not persuasively explained the
reasoning, and have not explained why and how the Specification actually or
inherently discloses the claimed “a counter in a first OFDM symbol during
each TTI” that is understandable to one skilled in the art and show the
inventor actually invented the claimed invention. Although the cited
excerpts of the Specification separately teach “a counter during each TTI”
and “in a first OFDM symbol,” such separate teachings do not actually or
inherently disclose the combination of “a counter in a first OFDM symbol
during each TTI.” See PowerOasis, 522 F.3d at 1306-07. In fact, the cited
paragraphs of the Specification are silent on “a counter in a first OFDM
symbol during each TTI.” Contrary to Appellants’ assertion, we have never
required the disputed limitation “must be found word for word in the same
order somewhere in the Specification” (Req. 7; see also Req. 6).
In the Reply Brief (Reply Br. 2—3), Appellants duplicate statements
from the Appeal Brief, assert paragraph 9 of the Specification teaches and
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Application 12/410,058
further teaches excerpts from the paragraph5 and “[paragraph [0010]
confirms this by teaching [excerpts from the paragraph],” and contend:
while paragraph [0033] teaches that “the base station” transmits
a counter during each Til”, paragraph [0011] more broadly
applies the teaching to “transmitter transmits”. Moreover,
paragraph [0011] further teaches that “the transmitter transmits
a plurality of orthogonal frequency division multiplex (OFDM)
control channels during a Til”.6
As a result, paragraphs [0011] & [0033] teach that “a
transmitter transmits a counter during each TTI to indicate a
number of SCCH in the TTI”. Paragraph [0009] teaches that
each TTI includes “plural OFDM symbols”. Paragraph [0009]
& [0010] further teach that “control and pilot channels are
within the first OFDM symbol”. Paragraph [0025] teaches that
“the first OFDM symbol includes a shared control channel
(SCCH) and common pilot channel multiplexed with data”. As
a result, the above identified paragraphs of the specification
clearly teach, and/or provide sufficient enablement that one
having ordinary skill in the art would understand that the
specification teaches sufficient disclosure for the term “. . .
transmitting a counter in a first OFDM symbol during each TTI
that indicates number of control channels . . .”, as required by
Claim 24.
Reply Br. 2, 3^4.
It is unclear why Appellants assert “providing] sufficient
enablement,” as enablement is a separate requirement from the contested
written description requirement. See Ariad Pharms., 598 F.3d at 1340 (“We
5 Appellants also paraphrase the excerpts of paragraph 9: “Thus paragraph
[0009] teaches that a TTI includes plural OFDM symbols. . . . Thus the
concept of a control channel within the first OFDM symbol is introduced.”
Reply Br. 2.
6 Appellants do not persuasively explain why and how this argument
leads to the argued conclusion.
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Application 12/410,058
now reaffirm that § 112, first paragraph, contains a written description
requirement separate from enablement[.]”).
Further, Appellants have not persuasively explained why and how the
following assertion:
paragraphs [0011] & [0033] teach that “a transmitter transmits a
counter during each TTI to indicate a number of SCCH in the
TTI”. Paragraph [0009] teaches that each TTI includes “plural
OFDM symbols”. Paragraph [0009] & [0010] further teach that
“control and pilot channels are within the first OFDM symbol”.
Paragraph [0025] teaches that “the first OFDM symbol includes
a shared control channel (SCCH) and common pilot channel
multiplexed with data”
(Reply Br. 3) leads to the argued conclusion that
[a]s a result, the above identified paragraphs of the specification
clearly teach, and/or provide sufficient enablement that one
having ordinary skill in the art would understand that the
specification teaches sufficient disclosure for the term “. . .
transmitting a counter in a first OFDM symbol during each TTI
that indicates number of control channels . . .”, as required by
Claim 24.
Reply Br. 3^4.
In the Request for reconsideration, Appellants argue:
Important in such consideration is the fact that Examiner admits
that the specification teaches “the base station transmits a
counter . . .” thus the only limitation missing in Examiner’s
admission is “in a first OFDM symbol”, which Appellants
identified as being set forth in paragraphs [0009] & [0010] and
provided arguments why the limitations at issue are there[.]
Req. 7.
That argument is unpersuasive and underlines the deficiency of
Appellants’ position: as discussed above, while the cited Specification
excerpts separately teach “a counter during each TTI” and “in a first OFDM
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symbol,” such separately teachings do not actually or inherently disclose “a
counter in a first OFDM symbol during each TTI.” See PowerOasis, 522
F.3d at 1306-07.
Ill
Appellants argue: “[t]he Board committed error in its DECISION to
affirm the 35 U.S.C. 112, first paragraph^ rejection ... by determining that
Appellants have not pointed to any discussion about ‘a counter in a first
OFDM symbol during each TTF in the Specification.” Req. 10 (emphasis
omitted); see also Req. 10—12.
As discussed above, Appellants’ argument is unpersuasive, because
Appellants fail to explain why and how the cited paragraphs of the
Specification actually or inherently disclose the claimed “counter in a first
OFDM symbol during each TTI.” See PowerOasis, Inc., 522 F.3d at 1306—
07.
Contrary to the Appellants’ assertion (Req. 11—12), the Examiner
explicitly acknowledges the paragraphs of the Specification cited by
Appellants, but “respectfully disagrees with Appellant’s argument.” Ans. 4.
The Examiner points out two paragraphs cited by Appellants7 disclose “a
counter during each TTI,” but the Specification does not disclose such a
counter is in a first OFDM symbol. Ans. 4. Likewise, the Board explicitly
acknowledges that Appellants cites specific paragraphs of the Specification,
but “Appellants have not pointed to any discussion about ‘a counter in a first
OFDM symbol during each TTI’ in the Specification. . . . Appellants have
7 Paragraphs 11 and 31.
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Application 12/410,058
not persuasively shown the cited paragraphs of the Specification support the
conclusion argued by Appellants.” Dec. 3.
Finally, Appellants’ following arguments are unpersuasive:
Appellants identified paragraphs [0009], [0010], [0011],
[0025], [0026], [0027], [0031] and underlined and bolded the
important teachings in each paragraph (Appeal Brief; p. 6,
line 5 - p.l, line 29). Appellants thereafter provided a detailed
explanation of the core teaching of each of the above
paragraphs as it relates to paragraphs [0009], [0010], [0011],
[0025], [0026], [0027], [0031] and how such teaching relates to
the claim limitations at issue. {Appeal Brief p. 7, line 30 - p. 8,
line 23 ). Appellants provided additional discussion regarding
the teaching of paragraphs [0009], [0011], [0027], [0028] &
[0033] with relevant underlining and holding as it applies to the
claim language at issue (Reply Brief; p. 2, line 9-p. 4; line 4).
Req. 10 (emphases added); see also Req. 6.8
We have discussed Appellants’ briefs in our analysis above.
Regardless of whether Appellants’ statements indeed quality as “a detailed
explanation of the core teaching of each of the above paragraphs as it relates
to paragraphs . . . and how such teaching relates to the claim limitations at
issue” (Req. 10), “how such teaching relates to the claim limitations at
8 In addition, Appellants do not cite any legal authority for the assertion that
the Examiner or the Board must “provide . . . counter arguments or
discussion that one having ordinary skill in the art looking to the additional
paragraphs identified by Appellants would NOT have found support in the
additional paragraphs to arrive at the claim language” (Req. 11). In our
case, Appellants do not assert the Examiner’s rejection has not establish a
prima facie case of unpatentability. In order to rebut a prima facie case of
unpatentability, Appellants must distinctly and specifically point out the
supposed Examiner errors. See 37 C.F.R. § 1.111(b). As discussed above,
Appellants have not carried their burden of showing Examiner error. In any
event and as discussed above, the cited paragraphs of the Specification are
silent on “a counter in a first OFDM symbol during each TTI.”
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issue” (Req. 10 (emphasis added)) is insufficient to satisfy the written
description requirement. Instead, “the specification must describe an
invention understandable to that skilled artisan and show that the inventor
actually invented the invention claimed.” Ariad Pharms, 598 F.3d at 1351
(emphasis added).
IV
“Arguments not raised, and Evidence not previously relied upon . . „
are not permitted in the request for rehearing except as permitted . . .
37 C.F.R. § 41.52(a)(1). Therefore, to the extent Appellants advance new
arguments without showing good cause, such new arguments are untimely.
Specifically, Appellants’ new arguments begin at page 8 (“[i]n
addition to the above, Appellants note that in order to make a rejection, the
examiner has the initial burden to establish a reasonable basis to question the
enablement provided for the claimed invention . . . ”), and end at page 10
(‘ ‘'Atlas Powder Co. v. EI. du Pont de Nemours & Co., 750 F.2d 1569, 1576,
224 USPQ 409, 413 (Fed. Cir. 1984)).”
Such new arguments are untimely, as Appellants have not shown any
good cause for the belated presentation. We further note the belated
arguments are unpersuasive because they deal with a separate enablement
requirement, and the Examiner has not rejected any claim under the
enablement requirement. See Ariad Pharms., 598 F.3d at 1340.
CONCLUSION
For the reasons stated above, we adhere to our decision to affirm the
Examiner’s decision to reject 24—26 and 33—35 under 35 U.S.C. § 112, first
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paragraph, as failing to comply with the written description requirement.
Appellants’ Request for Rehearing is granted to the extent we designate that
affirmance as a new ground of rejection pursuant to 37 C.F.R. § 41.50(b).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b), which states that “[a] new ground of rejection . . . shall
not be considered final for judicial review.”
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION,
Appellant must exercise one of the following two options with respect to the
new ground of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record.9
37 C.F.R. §41.50(b).
DENIED-IN-PART; GRANTED-IN-PART
9 Because we designate our original affirmance as a new ground of rejection,
a second request for rehearing is permitted under 37 C.F.R. § 41.52.
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