Kyocera Corporation

Patent Trials and Appeals Board

Aug 23, 2021

2020001505 (P.T.A.B. Aug. 23, 2021)

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.
15/824,035 11/28/2017 Amit KALHAN TUC1 00209 US 4529
32968 7590 08/23/2021
KYOCERA INTERNATIONAL INC.
INTELLECTUAL PROPERTY DEPARTMENT
8611 Balboa Ave
SAN DIEGO, CA 92123
EXAMINER
JAGANNATHAN, MELANIE
ART UNIT PAPER NUMBER
2468
NOTIFICATION DATE DELIVERY MODE
08/23/2021 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):
KII-USPatents@kyocera.com
Kathleen.Connell@kyocera.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AMIT KALHAN, HENRY CHANG,
DOUGLAS DUNN, and DAVID COMSTOCK

Appeal 2020-001505
Application 15/824,035
Technology Center 2400

Before CARL W. WHITEHEAD JR., DAVID M. KOHUT, and
IRVIN E. BRANCH, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use “Appellant” to reference the applicant as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
“Kyocera Corporation.” Appeal Br. 3.
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APPELLANT’S INVENTION
Appellant describes the invention’s background art as follows:
LTE [(Long-Term Evolution)] supports transmission of
unicast information to specific UEs [(User Equipment)]. LTE
also supports transmission of broadcast information to all UEs
and multicast information to a group of UEs using MBSFN
[(Multicast Broadcast Single Frequency Network)]
transmission. A subframe used for sending unicast information
is typically referred to as a regular subframe. A subframe used
for sending multicast and/or broadcast information is typically
referred to as an MBSFN subframe.
Spec. ¶ 32; see also id. ¶¶ 4–5 (abbreviations).
In the invention, a unicast message is sent via an MBSFN subframe.
Id. ¶¶ 26–28, 39, 45. Appellant describes an environment of the invention
with reference to Figure 1 (id. ¶¶ 18–29), which is reproduced below and
illustrates “an exemplary cellular communication network including plural
nodes” (id. ¶ 8). Appellant describes an embodiment of the invention with
“Figure 1 illustrates an exemplary cellular
communication network including plural nodes.”
Spec. ¶ 8.
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reference to Figure 6 (id. ¶¶ 39–46), which is reproduced below and
illustrates “a signal flow diagram illustrating a procedure for transmitting
intercell messages using one or more MBSFN subframes” (id. ¶ 13).
As shown by the figures, a neighboring “node [is] configured to
transmit information . . . [to a] UE [that] is being served by a second node.”
Spec. ¶ 5. And, “the neighboring node[] can transmit data and/or
control-signaling to the UE using MBSFN subframes[.]” Abstr.
As more particularly shown by Figure 6:
The [neighboring,] non-serving node 406 may obtain [a]
sounding reference signal (SRS), Cell Radio Network
Temporary Identifier (C-RNTI)[,] and/or related information of
the UE 402 by polling the serving node 404[.] The . . .
“Figure 6 illustrates a signal flow diagram
illustrating a procedure for transmitting intercell
messages using one or more MBSFN subframes.”
Id. ¶ 13.
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non-serving node 406 can then detect the UE 402 by detecting
SRS or any other uplink (UL) physical level (PHY) signal
transmitted by the [UE 402 to the] serving node 404 using the
UE information provided by the serving node 404.
Id. ¶ 41. The above communication of the non-serving node 406 is further
described as follows:
After receiving the [C-RNTI and SRS] information 412,
the non-serving node 406 begins monitoring [the] SRS PHY
signals emitted from the UE 402[.] Based on the monitored
signals, the non-serving node 406 detects the uplink (UL)
channel being used by the UE 402 and the UL timing
(step 414). After successfully identifying the UE 402, the
non-serving node 406 sends a UE-identified acknowledgement
(ACK) 416 to the serving node 404. Subsequent to the UE-ID
ACK 416, the non-serving node 406 commences transmission
of unicast messages 418 to the UE 402, which can be sent, for
example, over an MBSFN subframe of the kth frame. . . . [T]he
non-serving node 406 . . . is allowed to send both relevant
signaling information (e.g., handover parameters related to the
non-serving node 406 or the target cell) and any unicast data to
the UE 402[.]
Id. ¶ 45.
CLAIMED INVENTION
Independent claim 1, reproduced below, is illustrative of argued
subject matter.
1. A cellular communication system, comprising:
a plurality of nodes communicatively coupled via a backhaul
network,
where a first node of the plurality of nodes is configured to
transmit information to a user equipment (UE) being served by
a second node, the information being transmitted by unicast
message in a Multicast Broadcast Single Frequency Network
(MBSFN) subframe or portion thereof reserved only for data
transmitted by the first node, the information including control
information or unicast data for the UE.
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Claims App.
REJECTIONS2
Claims 1, 6–9, 11, 16–18, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Racz (US 2011/0256833 A1; Oct. 20,
2011) and Damnjanovic (US 2012/0021753 A1; Jan. 26, 2012).
Final Act. 2–5.
Claims 2–5 and 12–15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Racz, Damnjanovic, Khandekar (US 2009/0252077
A1; Oct. 8, 2009), and Siomina (US 2013/0310077 A1; Nov. 21, 2013).
Final Act. 5–8.
OPINION
The same issues are presented for all claims. Appeal Br. 8 et seq.;
Ans. 14–15. We address the issues with reference to claim 1. For the
following reasons, we are unpersuaded of error in the rejection of claim 1
and therefore sustain the Examiner’s decision to reject claims 1−20.
First Issue
A first issue is whether Appellant has shown Racz fails to teach or
suggest the following claim limitation: “a first node of the plurality of nodes
is configured to transmit information to a user equipment (UE) being served
by a second node, the information being transmitted by unicast message in a
Multicast Broadcast Single Frequency Network (MBSFN) subframe or
portion thereof.” Appeal Br. 8–9.

2 “Claims 10[and] 19 are objected to as being dependent upon a rejected
base claim, but would be allowable if rewritten in independent form[.]”
Final Act. 8.
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Appellant contends:
Racz does not teach or suggest “a first node of the plurality of
nodes is configured to transmit information to a user equipment
(UE) being served by a second node, the information being
transmitted by unicast message in a Multicast Broadcast Single
Frequency Network (MBSFN) subframe or portion thereof
reserved only for data transmitted by the first node,” as recited
in claim 1. (Emphasis added). . . . [I]n the [cited] embodiment
. . . of Racz . . . , the neighboring base stations 120-1, 120-2,
and 120-3 are grouped into one MBSFN area in which one of
the base stations multicasts/broadcasts MBSFN reference
symbols in a particular MBSFN subframe while the other base
stations mute their transmissions. In this manner, the base
stations of Racz each take turns multicasting/broadcasting
MBSFN reference symbols to multiple UEs 110-1, 110-2, and
110-3 so that the UEs may make interference-free link quality
measurements from selected cells provided by the base stations.
. . . Notably absent from Racz is any explicit or inherent
teaching or suggestion that a single base station transmits
MBSFN reference symbols by unicast message to a
single UE[.]
Appeal Br. 8–9.
The Examiner responds:
The claim does not add any particular definition to the word
“unicast” in its language[. The] Examiner interprets [the
claimed] unicast message to be a message sent from one device
to another one device . . . in a MBSFN subframe. Racz
[transmits] MBSFN reference symbols[,] in a MBSFN
subframe[, from a] base station to a UE[.]
Ans. 13.
Appellant replies:
[T]he Examiner interprets a “unicast message to be a message
sent from one device to another one device.” . . . Appellants
submit that Wikipeda.org indicates that the term “unicast” is
generally understood to mean “a one-to-one transmission from
one point in the network to another point; that is, one sender
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and one receiver.” (Emphasis added; see [“Unicast.” Wikipedia,
Wikimedia Foundation, 16 July 2021,] https://en.wikipedia.org/
wiki/Unicast [(“Unicast-Wikipedia page”)]). Given this
generally accepted meaning of the term “unicast,” Appellants
submit that neither the cited portions of Racz, nor the remainder
of Racz, explicitly or inherently teaches or suggests a
“transmission of information by unicast message in a MBSFN
subframe.”
Reply Br. 3.
Appellant further replies:
[I]t is generally accepted that a subframe that is utilized for
sending multicast and/or broadcast information is typically
referred to as an “MBSFN subframe.” On the contrary, a
subframe that is used for sending unicast information is
typically referred to as a regular subframe. . . . The fact that
Racz refers to its subframes as “MBSFN sub-frames,” without
an indication that the MBSFN sub-frame is somehow
configured to send a unicast message, would lead one of skill in
the art to interpret the transmissions that carry the MBSFN
sub-frames of Racz as multicasts/broadcasts.
Reply Br. 4 (citing Spec. ¶ 32).
Appellant further replies:
[I]t is clearly contemplated by . . . Racz that multiple UEs 110
may receive the MBSFN transmissions from each of the base
stations 120, especially given that multiple UEs 110 are capable
of receiving transmissions from each of the base stations 120 of
FIG. 4. In the cases in which there are multiple UEs 110 within
the MBSFN area, the MBSFN reference symbol transmissions
of Racz cannot be reasonably interpreted as “unicast messages”
since multiple UEs 110 would be receiving the MBSFN
reference symbol transmissions.
Id. at 5.
We are unpersuaded of Examiner error. Appellant argues but does not
provide sufficient evidence or reasoning to show the claimed “unicast
message” is configured to be shared between only one sender and one
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recipient (namely between the claimed first node and UE). See, e.g., Reply
Br. 4 (“[Racz lacks] an indication that the MBSFN sub-frame is somehow
configured to send a unicast message[.]”).3 For this reason, Appellant also
fails to provide sufficient evidence or reasoning to show Racz’s cited
MBSFN subframe (discussed infra) is not a unicast message. We address
these issues in-seriatim below.
1. Appellant has not shown the claimed “unicast message” is
configured to be shared between only sender and receiver.
Appellant cites the above-noted Unicast-Wikipedia page as showing
the claimed “unicast” message is configured to be shared between only one
sender and one recipient. (Reply Br. 3 (block-quoted at supra 7). However,
the Unicast-Wikipedia page’s quoted portion states only that a “unicast” is
“a one to one transmission . . . ; that is, one sender and one receiver” (Reply
Br. 3)—not that a “unicast” message is configured to be shared between only
the “one sender and one receiver.”
The Specification’s cited disclosures also do not show a “unicast”
message is configured to be shared between only one sender and one
recipient. See Appeal Br. 5–6 (citing, in the “Summary of Claimed Subject
Matter,” Appellant’s Figure 1 (elements 50–56), Figure 6 (elements 402–

3 Appellant notably does not contend that MBSFN subframes lacked
UE-specific information at the time of the invention. We have found
evidence that, to the contrary, MBSFN subframes were used to transmit
UE-specific reference signals from a base station to a UE. See U.S. Pub. No.
2011/0103286 A1 to Montojo et al. (pub. May 5, 2011) ¶ 62 (“[I]f an
MBSFN subframe is used for transmitting a MBSFN message, the subframe
may be transmitted with MBSFN reference signals[.] On the other hand, if
the MBSFN subframe is used for transmission of a unicast message, the
subframe may not include MBSFN reference signals[and i]nstead . . .
include UE-specific reference signals or common reference signal[.]”).
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06), and Specification paragraphs 18–19, 39–40, and 45); supra 2–4
(describing the invention with reference to Appellant’s Figures 1 and 6).
At best, the disclosures describe a non-limiting example of the invention
whereby a “unicast” message is directed at one UE by one eNB. See supra
3–4 (describing the invention’s embodiment of Figure 6). Specifically, in
the example, the UE is identified by its serving eNB to a non-serving eNB,
the serving eNB provides the UE’s SRS and C-RNTI information to the
non-serving eNB, the non-serving eNB thereby determines the UE’s uplink
channel and uplink timing, and the non-serving eNB then “commences
transmission of unicast messages 418 to the UE 402 . . . over an MBSFN
subframe.” Spec. ¶¶ 41, 45. This example of the invention—even if
(arguendo) a preferred embodiment and disclosing a message configured to
be shared between only one sender and one recipient—does not compel
importing such a configuration of the claimed “unicast” message into
claim 1. See Spec. ¶ 16 (“The[] embodiments[are] offered not to limit but
only . . . to enable those skilled in the art to practice what is claimed.”); In re
Am. Acad. Of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We
have cautioned against reading limitations into a claim from the preferred
embodiment . . . absent clear disclaimer in the specification.”).
Having considered the presented evidence, we turn to the
Specification’s following generalization of unicast, multicast, and broadcast
communications: “LTE supports transmission of unicast information to
specific UEs. LTE also supports transmission of broadcast information to
all UEs and multicast information to a group of UEs using MBSFN
transmission.” Spec. ¶ 32. These statements differentiate unicast, multicast,
and broadcast communications as being respectively received by one UE, a
group of UEs, and all UEs. Id. The statements are arguably open to a
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further finding that a “unicast” message is UE-specific, but the introduction
of “UE-specific signaling” by the dependent claims indicates claim 1 does
not require the unicast message to be UE-specific. See, e.g., Spec. 18
(original dependent claims 2 and 4); see also In re Rambus Inc., 694 F.3d
42, 48 (Fed. Cir. 2012) (“[I]f a memory device were always a single chip
there would be no need to use the word ‘single’ in [dependent] claim 6[] but
not claim 1[.]”);
In view of our above findings, we hold the Examiner reasonably
interpreted the claimed “unicast message” as a communication occurring
between only two devices (and as nothing more). Appellant has not shown
this interpretation is unreasonable, e.g., divorced from its usage by the
Specification or its understanding by a person of ordinary skill in the art.
See, e.g., In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011) (“[A
claim’s] broadest reasonable construction . . . cannot be divorced from the
specification and the record evidence.”).
2. Appellant has not shown the Examiner’s reliance on Racz is erred.
Appellant fails to show Racz’s MBSFN subframe does not teach or
suggest a “unicast message” as interpreted above. The MBSFN subframe is
described with reference to Racz’s Figure 4, which is reproduced below and
illustrates “a diagram of exemplary interactions among components of an
exemplary portion of the network” (Racz ¶ 17).
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In describing Figure 4, Racz states: “[e]ach of base stations 120-1,
120-2, and 120-3 . . . may provide measurement instructions 420 to a
corresponding one of UEs 110-1, 110-2, and 110-3” (id. ¶ 48);
“[m]easurement instructions 420 may instruct UEs 110-1, 110-2, and 110-3
to measure MBSFN reference symbols provided by base stations 120-1,
120-2, and 120-3, and to report the measurements” (id.); “MBSFN reference
symbols 440-1 may be provided in MBSFN subframes that are used for
measurement purposes (e.g., no actual MBSFN data may be transmitted in
these sub-frames)” (id. ¶ 49); “each of base stations 120-1, 120-2, and 120-3
may transmit MBSFN reference symbols 440 at different times (e.g., in a
MBSFN sub-frame)” (id. ¶ 52); and “configuring the user equipment with
measurement windows that coincide with the reference signals transmitted
“[Racz’s Figure 4] is a diagram of exemplary interactions among
components of an exemplary portion of the network[.]” Racz ¶ 17.
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by the neighbor cells at the designated times” (id. ¶ 11 (see also id. ¶ 10)).
In view thereof, we find a base station transmits a measurement instruction
to a served UE, which then accordingly awaits MBSFN reference symbols
from non-serving (neighboring) base stations for measurement and reporting
of each non-serving base station’s signal strength. We further find each base
station transmits the MBSFN reference symbols at a respective, scheduled
time.
In view of our above findings, we hold that the Examiner reasonably
determined a base station is capable of transmitting MBSFN reference
symbols to only one UE. That is, the Examiner reasonably determined it is
possible to have only one unserved/neighboring UE of a base station; only
that one UE receiving the base station’s transmission of the MBSFN
reference symbols. See supra 6 (block-quotes of Ans. 11, 13); see also
Appellant’s Figure 1 (In the “exemplary cellular communication network”
(Spec. ¶ 8), node two 54 has multiple unserved/neighboring UEs 64, 68 but
node one 52 has only one unserved/neighboring UE 68 and node three 56
has only one unserved/neighboring UE 66.). And, per the above
interpretation of “unicast,” this one-to-one transmission of MBSFN
reference symbols teaches the claimed “unicast message in a . . . [MBSFN]
subframe” from a “first node . . . to a user equipment (UE) being served by a
second node.” See Hewlett-Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314,
1326 (Fed. Cir. 2003) (“[A] prior art product that sometimes . . . embodies a
claimed method nonetheless teaches that aspect of the invention.”).
Appellant does not rebut the Examiner’s determination that, in
a cellular communication network, there may be only one
unserved/neighboring UE of a base station transmitting MBSFN reference
symbols. And rather, Appellant implicitly acknowledges the above
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occurrence by stating: “In the cases in which there are multiple UEs 110
within the MBSFN area, . . . multiple UEs 110 would be receiving the
MBSFN reference symbol transmissions.” Reply Br. 5 (block-quoted at
supra 7). The corollary of this statement is that there are cases of only one
UE being within a non-serving base station’s MBSFN area; i.e., whereby
only this one UE would be receiving the MBSFN reference symbols
transmissions.
Second Issue
A second issue is whether Appellant has shown Racz fails to teach or
suggest the following claim limitation: “the information including control
information or unicast data for the UE.” Appeal Br. 9–11.
Specifically, Appellant contends:
[Racz’s] “MBSFN reference symbols 440-1 may be provided in
MBSFN sub-frames that are used for measurement purposes
(e.g., no actual MBSFN data may be transmitted in these
sub-frames).” [Racz ¶ 49.] . . . [T]he Examiner contends [the
claimed] “control information can be read [on such] symbols
for measurement since control data is defined [as] identifying,
selecting, executing, or modifying another set of data[.]” [Final
Act. 9.]
[O]ne of skill in the art could not reasonably interpret the
“MBSFN reference symbols” of Racz as teaching or suggesting
“control information[,]” . . . [which] is generally information
that actually controls or commands . . . an action associated
with the content of the “control information.” However, as
generally understood by one of skill in the art, “reference
symbols” do not actually contain any content that can be
reasonably interpreted as controlling or commanding the
receiving device.
Appeal Br. 9–10 (emphases omitted).
The Examiner responds: “The claim language does not recite the
particular definition of ‘control information’ that Appellant argues one of
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skill in the art would interpret as the known meaning for ‘control
information’.” Ans. 14.
We are unpersuaded of error because the Examiner presents a prima
facie case that Racz teaches the present claim feature and Appellant’s
contentions do not constitute a meaningful response.
It is well settled that an examiner may present a prima facie case of a
teaching, i.e., that the applied prior art teaches a claim limitation, by reading
the respective claim language on a specific disclosure of prior art. See, e.g.,
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (“The examiner clearly
conveyed his understanding that [the claimed] well-charge-level controller
was broad enough [in scope] to encompass [the applied prior art’s]
‘controller 340[.]’ [T]he specific column and line cites to the prior art
reference would have put any reasonable applicant on notice[.]”). Here, the
Examiner does so by reading the claimed “control information” specifically
on Racz’s MBSFN reference symbols. Ans. 14.
It is also well settled that, if such a prima facie case is presented, the
applicant can show a difference between the claim limitation and applied
prior art only via a meaningful explanation of the difference. See, e.g., Jung,
637 F.3d at 1365 (Fed. Cir. 2011) (affirming because appellant “merely
argued that the claims differed from [the prior art] and chose not to proffer a
serious explanation of this difference.”); SmithKline Beecham Corp. v.
Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006) (“[I]ssues adverted to in
a perfunctory manner, unaccompanied by some effort at developed
argumentation, are deemed waived.”). A meaningful explanation is one
supported by accompanying evidence. See, e.g., Jung, 637 F.3d at 1363
(“[I]dentification of where [the] limitation . . . is shown in the prior art
. . . was more than sufficient” for the applicant to “determine what the issues
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are on which he can or should produce evidence.”). Appellant’s contentions
are not accompanied by presented evidence, but rather only by attorney
argument that the claimed control information is “information that actually
controls or commands . . . an action associated with the content of the
[]control information.” Appeal Br. 10 (block-quoted at supra 15); see also
In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“An assertion of what
seems to follow from common experience is . . . not the kind of factual
evidence . . . required to rebut a prima facie case of obviousness.”).
Appellant also contends Racz’s MBSFN reference symbols are not
unicast to a UE, are therefore not UE-specific, and therefore do not teach or
suggest “control information or unicast data for the UE.” Appeal Br. 11.
We are unpersuaded because this contention rests upon the mere attorney
argument that the claimed control information “actually controls or
commands” the device(s) receiving the information. As stated above,
Appellant presents no evidence that the claimed control information must
actually control or command a device receiving the information.4
OVERALL CONCLUSION
We affirm the Examiner’s decision to reject claims 1–20.5
DECISION SUMMARY

4 We add Appellant does not show the claimed “for the UE” modifies
“control information” (as opposed to modifying only “unicast data”) nor
that, if so, the “for the UE” is more than merely an intended use of the
information. See Tex. Instruments Inc. v. U.S. Int’l Trade Comm’n, 988 F.2d
1165, 1172 (Fed. Cir. 1993) (claim language held to be non-limiting because
it “merely describe[s] the result of arranging the components of the claims in
the manner recited in the claims”).
5 See supra n.2.
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Claims
Rejected 35 U.S.C.
Reference(s)/
Basis Affirmed Reversed
1, 6–9, 11,
16–18, 20 103(a)
Racz,
Damnjanovic
1, 6–9, 11,
16–18, 20
2–5, 12–15 103(a)
Racz,
Damnjanovic,
Khandekar,
Siomina
2–5, 12–15
Overall
Outcome
1–9, 11–
18, 20

TIME PERIOD FOR RESPONSE
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.
§ 1.136(a)(1)(iv).
AFFIRMED