Jung Hoon Lee et al.

Patent Trials and Appeals Board

Mar 16, 2020

14303482 - (D) (P.T.A.B. Mar. 16, 2020)

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.
14/303,482 06/12/2014 Jung Hoon LEE 2101-3489C1C1C1 5687
35884 7590 03/16/2020
LEE, HONG, DEGERMAN, KANG & WAIMEY
660 S. FIGUEROA STREET
SUITE 2300
LOS ANGELES, CA 90017
EXAMINER
BURD, KEVIN MICHAEL
ART UNIT PAPER NUMBER
2632
NOTIFICATION DATE DELIVERY MODE
03/16/2020 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):
ip.lhlaw@gmail.com
ip.lhlaw@live.com
uspto@lhlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte JUNG HOON LEE, KI JUN KIM, DONG WOOK ROH,
DAE WON LEE, and JOON KUI AHN
________________

Appeal 2018-006284
Application 14/303,482
Technology Center 2600
________________

Before JOHNNY A. KUMAR, LARRY J. HUME, and
BETH Z. SHAW, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

STATEMENT OF CASE
Introduction
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the final rejection
of claims 1, 4–7, 10–13, 16–19, and 22–24. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, LG Electronics, Inc. is the real
party in interest. Appeal Br. 2.
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Exemplary Claim
Exemplary claim 1 under appeal reads as follows:
1. A method of transmitting Acknowledgement/Negative
Acknowledgement (ACK/NACK) information at a base station
in a mobile communication system, the method comprising:
generating a plurality of first spread ACK/NACK
information using a plurality of spreading codes with a
spreading factor of 4, and generating a plurality of second
spread ACK/NACK information using the plurality of
spreading codes with the spreading factor of 4,
wherein the plurality of first spread ACK/NACK
information and the plurality of second spread ACK/NACK
information carry identical ACK/NACK information;
coding the plurality of first spread ACK/NACK
information for multiple antenna transmission to generate a
plurality of first coded ACK/NACK information, and coding
the plurality of second spread ACK/NACK information for the
multiple antenna transmission to generate a plurality of second
coded ACK/NACK information;
summing the plurality of first coded ACK/NACK
information per each antenna port to generate a first set of
multiplexed ACK/NACK information, and summing the
plurality of second coded ACK/NACK information per each
antenna port to generate a second set of multiplexed
ACK/NACK information; and
transmitting the first set of multiplexed ACK/NACK
information and the second set of multiplexed ACK/NACK
information,
wherein each first spread ACK/NACK information is
coded so as to be mapped as shown in Table 1, and each second
spread ACK/NACK information is coded so as to be mapped as
shown in Table 2:

Table 1

set of available neighboring subcarriers for first
transmission in one orthogonal frequency-division
multiplexing (OFDM) symbol
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antenna port A a1 a2 a3 a4

antenna port B -a2* a1* -a4* a3*
antenna port C 0 0 0 0
antenna port D 0 0 0 0

Table 2

set of available neighboring subcarriers for second
transmission in one OFDM symbol
antenna port A 0 0 0 0

antenna port B 0 0 0 0
antenna port C b1 b2 b3 b4

antenna port D -b2* b1* -b4* -b3*
wherein the"*" symbol represents a conjugate operation,
a1 to a4 represent first to fourth elements of each first spread
ACK/NACK information, and b1 to b4 represent first to fourth
elements of each second spread ACK/NACK information,
wherein the set of available neighboring subcarriers for
the first transmission consists of four consecutive subcarriers
excluding zero or more subcarriers for a pilot signal, and the set
of available neighboring subcarriers for the second
transmission consists of four consecutive subcarriers excluding
zero or more subcarriers for the pilot signal, and
wherein all subcarriers of the set of available
neighboring subcarriers for the first transmission are separated
in a frequency domain from all subcarriers of the set of
available neighboring subcarriers for the second transmission
by a plurality of subcarriers.

See Appeal Br. 21–22 (emphases added).
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REJECTION
Claims 1, 4–7, 10–13, 16–19, and 22–24 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Khan et al. (US 2008/0267310
A1; published October 30, 2008) (“Khan1”), Khan et al. (US 2008/0304593
A1; published December 11, 2008) (“Khan2”), Jalali (US 2006/0045001 A1;
published March 2, 2006) (“Jalali”), and Zhang et al. (US 2008/0267158 A1;
published October 30, 2008) (“Zhang”). Ans. 2; Final Act. 3.
ANALYSIS
Appellant urges that the Examiner has applied impermissible
hindsight by combining and modifying the references in a manner that
would not have been obvious to a skilled artisan. Appeal Br. 12–13, 16–17;
Reply Br. 5. Therefore, we review the Examiner’s proffered evidence and
motivation findings to support the rejection of independent claims 1, 7, 13,
and 19 in view of Khan1, Khan2, Jalali, and Zhang.
Our reviewing courts dictate that “[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007), quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006). Moreover, “[a]fter evidence or argument is submitted by the
applicant in response to an obviousness rejection, ‘patentability is
determined on the totality of the record, by a preponderance of evidence
with due consideration to persuasiveness of the argument.’” In re Chu, 66
F.3d 292, 298 (Fed. Cir. 1995), quoting In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992). The totality of the record includes evidence and arguments
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directed to advantages that need not be disclosed in the specification. In re
Chu, 66 F.3d at 298–99.
Here, the Examiner finds that the combination of Khan1 and Khan2
teaches, inter alia, the set of available neighboring subcarriers for the first
transmission comprises a first set of two consecutive subcarriers (f1 and f2)
and a second set of two consecutive subcarriers (f5 and f6). Final Act. 6,
citing to Khan2; see also Khan2 at Figure 11. The Examiner further finds
that the combination of Khan1 and Khan2 teaches that the set of available
neighboring subcarriers for the second transmission comprises a first set of
two consecutive subcarriers (f3 and f4) and a second set of two consecutive
subcarriers (f7 and f8). Final Act. 6, citing to Khan2; see also Khan2 at
Figure 11. The Examiner acknowledges that “[t]he combination of Khan1
and Khan2 does not disclose the four subcarriers are consecutive
subcarriers.” Final Act. 6; Ans. 32.
However, the Examiner finds that a skilled artisan would have
nevertheless been motivated to modify the two sets of two consecutive
subcarriers of each of the first and second transmissions of Khan2 to instead
be a set of four consecutive subcarriers, for the following reasons:
[D]esignating frequencies f1, f2, f5 and f6 as consecutive
subcarriers or non-consecutive subcarriers is simply a design
choice since, whether all four of the subcarriers are consecutive
or only two groups of two of the subcarriers are consecutive,
the symbols will be conveyed on the four subcarriers. It would
have been obvious for one of ordinary skill in the art at the time
of the invention to provide the simple substitution of
consecutive subcarriers to convey the symbols rather than non-
consecutive subcarriers since they will operate in the same
manner (conveying the OFDM symbols via four subcarriers)
and will yield predictable resulted [sic] (a transmitted OFDM
symbol). Other rationales are also applicable such as it would
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have been obvious to try the finite number of possible
combinations of the subcarriers f1-f8 to transmit the symbol to
the desired destination.

Final Act. 6; Ans. 32–33 (emphases added). In short, the Examiner finds that
a skilled artisan would have found motivation to modify the combination of
Khan1 and Khan2 as described supra, on the grounds of design choice,
simple substitution, and obvious to try. We disagree for the following
reasons.
A. Design Choice
A mere design choice is generally a minor and obvious modification
that solves no stated problem, and that need not be shown explicitly in the
prior art. In re Kuhle, 526 F.2d 553, 555 (CCPA 1975); see also In re
Magna Electronics, Inc., 611 F. App’x 969, 974 (Fed. Cir. 2015) (finding of
“obvious design choice” where short horizontal lines provide the same
function as long horizontal lines). Where different structures achieve
different purposes or functionality, however, design choice is not a valid
rationale for obviousness. In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992).
In this case, the Examiner has not provided sufficient explanation as
to why the modification of Khan2 to have the frequencies f1, f2, f5, and f6
be four consecutive subcarriers “is simply a design choice since, whether all
four of the subcarriers are consecutive or only two groups of two of the
subcarriers are consecutive, the symbols will be conveyed on the four
subcarriers.” Final Act. 6; Ans. 32.
The Appellant argues that
because the ACK/NACK channel is transmitted across time-
frequency areas, per transmission power allocation may be
performed more efficiently than over a single OFDM symbol
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only. Appellant’s claimed invention also provides greater
signal reliability by taking advantage of frequency diversity.
Furthermore, Appellant’s scheme simplifies a system's
scheduling operation, and more efficient resource use is
achieved.

Reply Br. 6–7 (emphases added), citing to Spec. ¶¶ 68, 72–72.
Appellant articulates various benefits and functionality of the claimed
four consecutive subcarriers for the first and second transmissions. On this
record, it is therefore unclear why the modification of Khan1 and Khan2 is
simply an obvious design choice.
B. Simple Substitution to Obtain Predictable Results
The Examiner provides a rationale to modify Khan1 and Khan2 to
teach the claimed four consecutive carriers
[a] simple substitution of consecutive subcarriers to convey the
symbols rather than non-consecutive subcarriers since they will
operate in the same manner (conveying the OFDM symbols via
four subcarriers) and will yield predictable resulted [sic] (a
transmitted OFDM symbol).

Final Act. 6; Ans. 32–33 (emphases added).
We disagree with the Examiner that “simple substitution” is a valid
motivation in this case. The MPEP states that, should an Examiner rely upon
simple substitution as a motivation to reject a claim, the Examiner must
provide:
(1) a finding that the prior art contained a device (method,
product, etc.) which differed from the claimed device by the
substitution of some components (step, element, etc.) with other
components;

(2) a finding that the substituted components and their functions
were known in the art;
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(3) a finding that one of ordinary skill in the art could have
substituted one known element for another, and the results of
the substitution would have been predictable; and

(4) whatever additional findings based on the Graham factual
inquiries may be necessary, in view of the facts of the case
under consideration, to explain a conclusion of obviousness.

See MPEP 2143(I)(B) (emphases added). See also Ruiz v. A.B. Chance Co.,
357 F.3d 1270, 1273–74 (Fed. Cir. 2004) (finding that a concrete haunch
substitute for a metal bracket provided a predictable result of underpinning
an unstable foundation); Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337,
1344 (Fed. Cir. 2008) (finding that a mechanical pressure switch was an
obvious simple substitution for a resistive electrical switch).
Here, we find that the Examiner has incorrectly applied a simple
substitution motivation to find that it would have been obvious to modify the
two sets of two consecutive subcarriers of Khan2 to be four consecutive
subcarriers. The Examiner is not substituting the subcarriers of Khan2 with a
known, functionally equivalent other structure. Instead, the Examiner
attempts to reorganize the subcarriers with a different arrangement of the
same subcarriers. Even assuming, arguendo, that four consecutive
subcarriers is a substitution for two sets of two consecutive subcarriers, the
Examiner has not provided evidence that “the substituted components and
their functions were known in the art,” as required by the MPEP. See MPEP
2143(I)(B). Namely, the Examiner does not provide evidence to show that
four consecutive subcarriers and their functions were well-known in the art
at the time of Appellant’s invention.
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As discussed supra, the Examiner’s modification to meet the claimed
limitations is more akin to a rearrangement, rather than a substitution, of the
two sets of two consecutive carriers of Khan2. Final Act. 5–6. However,
even were the Examiner to have found the modification obvious based on a
rearrangement of parts rationale, the MPEP dictates:
[t]he mere fact that a worker in the art could rearrange the parts
of the reference device to meet the terms of the claims on
appeal is not by itself sufficient to support a finding of
obviousness. The prior art must provide a motivation or reason
for the worker in the art, without the benefit of appellant’s
specification, to make the necessary changes in the reference
device.

MPEP 2144.04 (quoting Ex parte Chicago Rawhide Mfg. Co., 223
USPQ 351, 353 (Bd. Pat. App. & Inter. 1984)) (emphasis added).
Here, the Examiner provides insufficient reasoning as to why a skilled
artisan, without the benefit of Appellant’s Specification, would have had
motivation to make the modification proffered by the Examiner.
C. Obvious to Try
The Examiner finds the motivation to modify Khan1 and Khan2 to
have four consecutive subcarriers: “it would have been obvious to try the
finite number of possible combinations of the subcarriers f1-f8 to transmit
the symbol to the desired destination.” Final Act. 6; Ans. 32–33.
Our reviewing courts provide guidance:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this leads
to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
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instance the fact that a combination was obvious to try might
show that it was obvious under § 103.

KSR Int'l Co., 550 U.S. at 421 (emphases added); see also Perfect Web
Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1331 (Fed. Cir. 2009). The
“obvious to try” standard “does not require absolute predictability of success
. . . all that is required is a reasonable expectation of success.” In re Kubin,
561 F.3d 1351, 1360 (Fed. Cir. 2009) (quoting In re O’Farrell, 853 F.2d
894, 903–04 (Fed. Cir. 1988)). However, “obvious to try cannot be found
when the prior art gives no hint that a specific trial might achieve the desired
result.” Hoffmann-La Roche Inc. v. Apotex Inc., 748 F.3d 1326, 1340 (Fed.
Cir. 2104) (citations omitted). Courts recognize a distinct between arriving
at claimed subject matter where there are a known number of finite,
predictable solutions, versus “‘merely throwing metaphorical darts at a
board’ in hopes of arriving at a successful result.” In re Cyclobenzaprine
Hydrocholoride Extended-Release Capsule Patent Litigation, 676 F.3d
1063, 1071 (Fed. Cir. 2012) (quoting In re Kubin, 561 F.3d at 1359)
(additional citations omitted). Additionally, the finite number of known
predictable solutions must have been known to a person having ordinary
skill in the art. Rolls-Royce, PLC v. United Techs. Corp., 603 F.3d 1325,
1339 (Fed. Cir. 2010) (holding that the rationale to use “obvious to try” to
modify the sweep angle of fan blades solves a problem of endwall shock was
impermissible, since there was no suggestion in the prior art that the sweep
angle would have addressed the problem of endwall shock).
The question before us is whether the Examiner has provided
evidence that a skilled artisan would have contemplated having four
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consecutive subcarriers to solve a known problem of ensuring that a signal is
transmitted to its correct destination.
Here, we find that the record does not support the Examiner’s
obvious-to-try rationale. The Examiner does not identify “transmit[ting] the
symbol to the desired destination” (Final Act. 6; Ans. 32–33) as a known
problem in the art for which there was a design need or market pressure to
solve; nor does not Examiner point to any suggestion in Khan1, Khan2,
Jalali, or Zhang that four consecutive subcarriers for the first and second
transmissions would solve the problem of the symbol being transmitted to
the intended destination.
Moreover, Khan2 already addresses the problem of transmitting a
symbol to the desired destination, and the Examiner has not identified why a
skilled artisan would have further modified Khan1 and Khan2 to have four
consecutive subcarriers. Specifically, Khan2 identifies as a problem in the
art:
Typically . . . . [t]he radio wave . . . experiences constructive
and destructive additions because of different phases of
individual waves generated due to the reflections, diffractions,
scattering and out-of-phase recombination . . . . If the mobile
station is moving or there are changes in the scattering
environment, then the spatial variations in the amplitude and
phase of the composite received signal will manifest themselves
as the time variations known as Rayleigh fading or fast fading
attributable to multipath reception.

Khan2 ¶ 6 (emphases added). Khan2 continues:
The problem with combined SFBC+FSTD scheme and
STBC+TSTD schemes is that only a fraction of the total
transmission antennas and hence power amplifier capability is
used for transmission in a given frequency or time resource.

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Khan2 ¶ 11. As a solution, therefore, Khan2 sets forth “[m]ethods and
apparatus for transmitting data via multiple antennas by using antenna
diversity.” See Khan2 at Abstract. Khan2 teaches, at least for one
embodiment:
This proposed mapping results in greater diversity gain
compared to the transmission where mapping does not change
on repetition. This diversity gains stems from the fact that after
one repetition all the four symbols are transmitted from all the
four transmit antennas.

Khan2 ¶ 58 (emphases added).
Khan2 already solves the problem of transmitting a signal to a desired
destination, namely by using antenna diversity. The Examiner has not
sufficiently articulated why a skilled artisan would thus be further motivated
to modify Khan2 to solve the Examiner’s stated problem, when Khan2 has
already provided a solution to the problem. In other words, there is
insufficient indication that a skilled artisan would have tried a number of
solutions to solve a problem of signal transmission, when Khan2 has already
presented a solution with anticipated success.
Moreover, Appellant challenges the Examiner’s finding that there are
a “finite number of possible combinations of the subcarriers f1-f8.” Final
Act. 6; Ans. 33. The Appellant argues
while the recited subcarriers of Tables 1/2 are consecutive,
subcarrier(s) for a pilot signal can be located between them
(see, Appellant’s 2nd wherein limitation). Thus, the number of
combinations of subcarrier patterns to evaluate could grow to
astronomical numbers.

Reply Br. 7 (emphases added). We agree.
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We agree because, although the Examiner has identified a finite
number of subcarriers—f1 to f8—the Examiner fails to consider that both
any number of subcarriers for a pilot signal may be located between the
subcarriers, and also the subcarriers can be grouped into any number of
available subcarriers, for example one, two, three, and so forth.
Thus, a skilled artisan modifying Khan1 and Khan2 would not arrive
at the claimed “the set of available neighboring subcarriers for the first
transmission consists of four consecutive subcarriers,” and “the set of
available neighboring subcarriers for the second transmission consists of
four consecutive subcarriers.” Appeal Br. 22 (emphases added).
After reviewing the record before us, we do not agree with the
Examiner that a skilled artisan having only the knowledge of Khan1, Khan2,
Jalali, and Zhang, would have combined the references in the manner
stipulated by the Examiner (Final Act. 5–9), except with the aid of hindsight
reasoning in view of the Appellant’s claims and Specification.
The Supreme Court in KSR advises: “[a] factfinder should be aware,
of course, of the distortion caused by hindsight bias and must be cautious of
arguments reliant upon ex post reasoning.” KSR, 550 U.S. at 421 (citing
Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 36 (1966)). At the
same time, however, “[r]igid preventative rules that deny factfinders
recourse to common sense, however, are neither necessary under our case
law nor consistent with it.” KSR, 550 U.S. at 421. We should be mindful
that:
[a]ny judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it takes
into account only knowledge which was within the level of ordinary
skill [in the art] at the time the claimed invention was made and does
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not include knowledge gleaned only from applicant’s disclosure, such
a reconstruction is proper.

In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
In other words, use of Appellant’s application as a “road map” for
selecting and combining prior art disclosures is wholly improper. See
Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138 (Fed. Cir. 1985)
(stating that “[t]he invention must be viewed not with the blueprint drawn by
the inventor, but in the state of the art that existed at the time”); see also In
re Fritch, 972 F.2d 1260 (Fed. Cir. 1992); MPEP § 2141.01(111); MPEP §
2142.
Therefore, we must determine whether the Examiner has combined
the references in a manner that would have been reasonable to a skilled
artisan at the time of Appellant’s invention, or has used impermissible
hindsight based on information gleaned from the Appellant’s claims and
Specification.
Based on the evidence before us, we are not persuaded that a skilled
artisan would have modified the references in the manner set forth by the
Examiner, without the benefit of Appellant’s disclosure. We find the
Examiner’s stated motivations—design choice, simple substitution, and
obvious to try—unconvincing and unsupported by a preponderance of the
evidence. Therefore, we do not sustain the Examiner’s rejection of claim 1
as being obvious in view of Khan1, Khan2, Jalali, and Zhang. Independent
claims 7, 13, and 19 include limitations commensurate to the disputed
limitation of independent claim 1. Accordingly, based on the record before
us, we do not sustain the obviousness rejections of independent claims 1, 7,
13, and 19, and their respective dependent claims.
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CONCLUSION
In summary:

REVERSED

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 4–7, 10–
13, 16–19,
22–24
103 Khan1, Khan2,
Jalali, Zhang
1, 4–7, 10–
13, 16–19,
22–24