Robert Baldemair et al.

Patent Trials and Appeals Board

Apr 15, 2020

14563261 - (D) (P.T.A.B. Apr. 15, 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.
14/563,261 12/08/2014 Robert BALDEMAIR 0110-587-CON/
P32498 US3
1091
113648 7590 04/15/2020
Patent Portfolio Builders, PLLC
P.O. Box 7999
Fredericksburg, VA 22404-7999
EXAMINER
PASIA, REDENTOR M
ART UNIT PAPER NUMBER
2413
NOTIFICATION DATE DELIVERY MODE
04/15/2020 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT BALDEMAIR, JUNG-FU CHENG,
DIRK GERSTENBERGER, DANIEL LARSSON, and
STEFAN PARKVALL
____________

Appeal 2018-007311
Application 14/563,261
Technology Center 2400
____________

Before CAROLYN D. THOMAS, JEFFREY S. SMITH, and
IRVIN E. BRANCH, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–24. We have jurisdiction over the
appeal 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. Appellant identifies the real party in interest as
Telefonaktiebolaget L M Ericsson (Publ). Appeal Br. 2.
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Application 14/563,261

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The present invention relates generally to identifying a resource to use
for a transmission of control information on a physical uplink control
channel. See Spec., Abstract.
Claim 1 is illustrative:
1. A method in a user equipment of a wireless
communication system, for identifying a resource to use for a
transmission of control information on a physical uplink control
channel, PUCCH, format 3, the method comprising:
receiving a resource index from a serving radio base
station, and
identifying the resource to use for the transmission of the
control information in a subframe based on the received
resource index,
wherein identifying the resource includes
identifying a physical resource block,
wherein for both a normal PUCCH format 3 and a
shortened PUCCH format 3 used in the subframe the physical
resource block is identified based on NSF,Opucch, which is a
number of orthogonal sequences available for a physical
resource block in a first time slot of the subframe.

Appellant appeals the following rejections:
R1. Claims 1–24 are rejected on the ground of nonstatutory double
patenting as being unpatentable over respective claims of Baldemair (US
8,954,064 B2, Feb. 10, 2015) in view of Nazar (US 2011/0243066 A1, Oct.
6, 2011). Final Act. 4–11.
R2. Claims 1, 2, 4, 5, 8–10, 12, 13, and 16–242 are rejected under
35 U.S.C. § 102(b) as being anticipated by Nazar. Final Act. 12–16.

2 The body of the rejection for claims 1, 2, 4, 5, 8–10, 12, 13, and 16–22 also
cites claims 23 and 24. See Final Act. 16. Therefore, we shall treat this
rejection as including all of claims 1, 2, 4, 5, 8–10, 12, 13, and 16–24.
Additionally, on this record, there are no prior art rejections of claims 6, 7,
14, and 15.
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Application 14/563,261

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R3. Claims 3 and 11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nazar and Shen (US 2009/0207797 A1, Aug. 20, 2009).
Final Act. 17–18.
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

ANALYSIS
Double Patenting, 102(b), and 103(a) Rejections
Issue: Did the Examiner err in concluding that Nazar is prior art for
each of the obviousness-type double patenting, anticipation, and obviousness
rejections?
The Examiner relies on Nazar as prior art for the claims in each of the
rejections noted-above. Nazar claims the benefit of U.S. Provisional Patent
Application Serial Number 61/329,743 — filed April 30, 2010.
Appellant contends “[t]he claims of the present application are
entitled to priority of US Provisional Application Number 61/375,658, filed
August 20, 2010 . . . , whereas the disclosure relied upon . . . is only entitled
to the October 1, 2010, filing date of Nayeb Nazar’s non-provisional
application.” Appeal Br. 3–4 (citations omitted). Appellant further
emphasizes that the numerous provisional applications that the Examiner is
relying upon to support the sections cited in the rejections, do not provide
support for such sections in Nazar’s non-provisional application. Id. at 4–7.
See also id. at 7 (chart illustrated).
In other words, Appellant contends that because Nazar’s provisional
applications do not disclose or teach the features relied upon in the non-
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Application 14/563,261

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provisional application, the effective date accorded to the subject matter of
Nazar relied upon in the rejection must be the filing date of Nazar’s non-
provisional (i.e., October 1, 2010), which date does not antedate the priority
date of the instant application (i.e., 61/375,658, August 20, 2010).
Appellant’s arguments have persuaded us of error by the Examiner.
Nazar’s non-provisional application does not antedate Appellant’s
application without relying upon the filing date of Nazar’s provisional
application.
Our reviewing court has said: “In Dynamic Drinkware, we clearly
explained that for a non-provisional application to claim priority to a
provisional application for prior art purposes, ‘the specification of the
provisional [application] must contain a written description of the invention
. . . in such full, clear, concise, and exact terms, to enable an ordinarily
skilled artisan to practice the invention claimed in the non-provisional
application.’” Amgen Inc. v. Sanofi, 872 F.3d 1367, 1380 (Fed. Cir. 2017)
(alteration in original) (quoting Dynamic Drinkware, LLC v. Nat’l Graphics
Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)).
Stated differently, the non-provisional application can rely upon the
filing date of the provisional application only if at least one of the claims in
the non-provisional application is supported by the written description of the
provisional application in compliance with pre-AIA 35 U.S.C. § 112, first
paragraph. MPEP § 2136.03 (III) (citing Dynamic Drinkware, 800 F.3d at
1381) (finding insufficient the combination of: (1) a comparison between
the claims of the patent-in-suit and the disclosure of the prior art patent; and
(2) a comparison between a claim of the patent-in-suit and the provisional
application upon which the prior art patent’s priority claim is based).
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Thus, for the Examiner to rely upon the filing date of Nazar’s
provisional application, at least one claim of the published application (non-
provisional application) must be supported by the provisional application.
Here, the Examiner has not made any findings in this regard. See Ans. 3–7.
Instead, the Examiner concludes that Nayeb Nazar is considered prior
art because “the subject matter relied upon in the rejections are supported in
at least one of the provisional applications of Nayeb Nazar.” Ans. 3–4.
Specifically, the “Examiner elects to mainly discuss the support provided by
the provisional application 61/329,743 - 04/30/2010 (hereinafter Prov. 743)
to which the non-provisional of Nayeb Nazar claims benefit to.” Id. at 5.
Also, “the Examiner emphasizes that support is disclosed in Prov. 743 as
shown in Par. 0047, 0059–0062.” Id. The Examiner further finds that “the
same subject matter discussed in the Prov. 743 is also discussed in Par.
0261, 0267, and 0273-0275 of the non-provisional of Nayeb Nazar.” Id. at
6. In other words, the Examiner only focuses on the subject-matter of the
claimed invention and whether the provisional applications describes the
same.
However, it is insufficient for the Examiner to merely compare the
provisional application to (1) the written description of the non-provisional
child, or (2) the claims of the application alleged to be invalid. Dynamic
Drinkware, 800 F.3d at 1381. What is needed, and is missing, is the
Examiner’s finding that at least one claim in Nazar’s non-provisional
application is supported by the written description of the provisional
application in compliance with pre-AIA 35 U.S.C. § 112, first paragraph.
Accordingly, we are therefore constrained by the record before us to find
that the Examiner erred in rejecting the claims under at least Nazar.
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Application 14/563,261

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CONCLUSION
Appellant has demonstrated that the Examiner erred in using Nazar as
prior art in rejecting the claims.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–24 Nonstatutory
Double Patenting
1–24
1, 2, 4, 5, 8–10,
12, 13, 16–24
102(b) Nazar 1, 2, 4, 5,
8–10, 12,
13, 16–24
3, 11 103(a) Nazar, Shen 3, 11
Overall
Outcome
1–24

REVERSED