Samsung Electronics Co. Ltd.

Patent Trials and Appeals Board

Dec 24, 2021

2020006654 (P.T.A.B. Dec. 24, 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.
13/907,112 05/31/2013 Hyojin LEE 0203-1099 1010
68103 7590 12/24/2021
Jefferson IP Law, LLP
1130 Connecticut Ave., NW, Suite 420
Washington, DC 20036
EXAMINER
COSME, NATASHA W
ART UNIT PAPER NUMBER
2465
NOTIFICATION DATE DELIVERY MODE
12/24/2021 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):
usdocketing@jeffersonip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte HYOJIN LEE, YOUNSUN KIM, and JUHO LEE
____________________

Appeal 2020-006654
Application 13/907,112
Technology Center 2400
____________________

Before ERIC S. FRAHM, CARL L. SILVERMAN, and
MATTHEW J. McNEILL, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1–5, 7–11, 13–17, and 19–23, which constitute all pending claims on
appeal. Claims 6, 12, 18, and 24 have been canceled. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2019). “The word ‘applicant’ when used in this title refers
to the inventor or all of the joint inventors, or to the person applying for a
patent as provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant
identifies the real party in interest as Samsung Electronics Company
Limited. Appeal Br. 2.
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DISCLOSED AND CLAIMED INVENTION
According to Appellant, the disclosed invention “relates to a feedback
method and apparatus for a cellular mobile communication system including
plural base stations” (Spec. ¶ 2), and more particularly to “a method and
apparatus for transmitting feedback information efficiently for use in a
Cooperative Multi-Point downlink transmission of multiple base stations”
(Spec. ¶ 2; see also Figs. 1, 7). Independent claim 1 is illustrative of the
disclosed and claimed subject matter:
1. A method of a terminal in a wireless communication
system, the method comprising:
[A] receiving configuration information including
reference rank indicator (RI) information which indicates a
reference channel state information (CSI) process;
generating first feedback information including an RI for
a first CSI process;
transmitting the first feedback information;
generating [B]second feedback information for a second
CSI process based on the configuration information; and
transmitting the second feedback information,
[C] wherein a channel quality indicator (CQI) included in
the second feedback information is generated based on a value
of the RI of the first CSI process indicated by the reference RI
information.

Appeal Br. 10 (Claims App.) (formatting and emphases added).
REJECTIONS
The Examiner made the following rejections:
(1) Claims 1–3, 5, 7–9, 11, 13–15, 17, 19–21, and 23 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Geirhofer et al. (US
2013/0021926 A1; published Jan. 24, 2013) (hereinafter, “Geirhofer”) and
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Chen et al. (US 2014/0269395 A1; published Sept. 18, 2014) (hereinafter,
“Chen”). Final Act. 3–12; Ans. 3–15.
(2) Claims 4, 10, 16, and 22 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Geirhofer, Chen, and Xiao et al. (US 2013/0088986
A1; published April 11, 2013) (hereinafter, “Xiao”). Final Act. 12–14.
Appellant’s Contentions
With regard to the obviousness rejections of claims 1–3, 5, 7–9, 11,
13–15, 17, 19–21, and 23, Appellant primarily argues the merits of
independent claim 1 (see Appeal Br. 4–8; Reply Br. 2–4), and makes similar
arguments as to the patentability of independent claims 7, 13, and 19 (which
have similar scope) (see Appeal Br. 8), as well as dependent claims 2–5, 9–
11, 14–17, and 20–23 (see Appeal Br. 8–9). As to independent claim 1,
Appellant contends (Appeal Br. 4–8; Reply Br. 2–4) that the Examiner erred
in rejecting claim 1 under 35 U.S.C. § 103(a) because (i) Geirhofer fails to
discloses limitation A (see Appeal Br. 4–6); (ii) Chen fails to cure the
deficiencies of Geirhofer (see Appeal Br. 6); and (iii) there is no proper
motivation for modifying Geirhofer with Chen to produce limitation C (see
Appeal Br. 7). In other words, the combination of Geirhofer and Chen fails
to teach or suggest a method of wireless communication performing
limitations A, B, and C, as recited in claim 1.
With regard to the obviousness rejection of claims 4, 10, 16, and 22,
Appellant relies on the arguments presented as to claims 1, 7, 13, and 19
from which claims 4, 10, 16, and 22 respectively depend (see Appeal Br. 9).
Based on Appellant’s obviousness arguments, and because claims 1–
3, 5, 7–9, 11, 13–15, 17, 19–21, and 23 contain commensurate limitations,
we select claim 1 as representative of claims 1–3, 5, 7–9, 11, 13–15, 17, 19–
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21, and 23 rejected under 35 U.S.C. § 103(a) for obviousness over the base
combination of Geirhofer and Chen. For similar reasons, we decide the
outcome of claims 4, 10, 16, and 22 (rejected over the same base
combination taken with Xiao), which depend from respective ones of claims
1, 7, 13, and 19, on the same basis as claim 1.
Principal Issue on Appeal
Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 3–9)
and the Reply Brief (Reply Br. 2–4), the following principal issue is
presented on appeal:
Did the Examiner err in rejecting claims 1–5, 7–11, 13–17, and 19–23
as being unpatentable over the base combination of Geirhofer and Chen
taken with the knowledge of a person having ordinary skill in the art of
cellular wireless communication, because the resultant combination fails to
teach or suggest limitations A, B, and C, as recited in representative claim 1?

ANALYSIS
We have reviewed the Examiner’s obviousness rejections of claims 1–
5, 7–11, 13–17, and 19–23 (Final Act. 3–14) and response to Appellant’s
arguments in the Appeal Brief (Ans. 3–15), in light of Appellant’s
arguments in the Appeal Brief (Appeal Br. 3–9) and the Reply Brief (Reply
Br. 2–4) that the Examiner has erred.
With regard to representative independent claim 1, we adopt as our
own (1) the findings and reasons set forth by the Examiner in the Action
from which this appeal is taken (Final Act. 3–5), and (2) the reasons set forth
by the Examiner in the Examiner’s Answer (Ans. 3–15) in response to
Appellant’s Appeal Brief. We disagree with Appellant’s arguments
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(see Appeal Br. 4–8; Reply Br. 2–4). We concur with the findings and
conclusions reached by the Examiner, and conclude that it would also
have been obvious and predictable to one of ordinary skill in the art of
cellular wireless communication to use a second feedback signal to further
improve efficiency, accuracy, and quality of signals being transmitted.2 We
provide the following for emphasis only.
Appellant’s contentions (see Appeal Br. 4–6) that Geirhofer fails to
disclose “receiving configuration information including reference rank
indicator (RI) information” (see claim 1, limitation A), are not persuasive.
The Examiner determines, and we agree, that Geirhofer teaches providing
feedback reports based on (i) a reference rank indicator (RI) indicating a
reference channel state information (CSI) process, and (ii) a channel quality

2 “‘[T]he question under 35 USC 103 is not merely what the references
expressly teach but what they would have suggested to one of ordinary skill
in the art at the time the invention was made.’” Merck & Co., Inc. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976)) (emphasis added); see also
Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013) (“[T]he [KSR]
Court required an analysis that reads the prior art in context, taking account
of ‘demands known to the design community,’ ‘the background knowledge
possessed by a person having ordinary skill in the art,’ and ‘the inferences
and creative steps that a person of ordinary skill in the art would employ.’”
(quoting KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007))); In re
Taylor Made Golf Co., Inc., 589 F. App’x 967 (Fed. Cir. 2014) (the Board
erred in failing to consider the prior art in the context of the background
knowledge that a person of ordinary skill in the art would have had); Finisar
Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1336 (Fed. Cir. 2008) (to
determine the “meaning of a prior art reference,” the Board must incorporate
“the understanding of an artisan of ordinary skill.”); Manual of Patent
Examining Procedure (MPEP) § 2123 (9th Ed., Rev. 10.2019 (June 2020)).
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indicator (CQI) (Final Act. 4 (citing Geirhofer Abstr.; ¶¶ 7, 80, 109, 110;
Fig. 13); Ans. 4–5 (citing Geirhofer ¶¶ 8, 103, 107)).
Although Geirhofer does not explicitly describe generating and
transmitting feedback for two CSI processes (which is taught by Chen), one
of ordinary skill in the art of cellular wireless communication using multiple
antennae would understand that providing more feedback about RI, CSI,
and/or CQI would beneficially lead to more accurate and efficient signal
transmission/reception by user equipment in the cellular network. And,
Chen discloses just this, using two feedback signals/reports to improve the
cellular wireless communication process (see Chen ¶ 7).
We note our agreement with the Examiner (see Ans. 7–14) that any
argument Appellant presents as to Chen being relied on as teaching
limitations B and C of claim 1, namely second feedback information
including a channel quality indicator generated by a rank indicator, is
unpersuasive inasmuch as the Examiner relies upon Geirhofer (as to the
configuring rank indicator information and a channel quality indicator) in
combination with Chen (providing two feedback signals to improve
efficiency and accuracy) for these limitations. We note that each reference
cited by the Examiner must be read, not in isolation, but for what it fairly
teaches in combination with the prior art as a whole. See In re Merck & Co.,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (finding one cannot show non-
obviousness by attacking references individually where the rejections are
based on combinations of references). In this light, the base combination of
Geirhofer and Chen, along with the knowledge of the ordinarily skilled
artisan teach or suggest a wireless communication method for performing
limitations A, B, and C as recited in claim 1.
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We also emphasize that the Examiner’s ultimate legal conclusion of
obviousness is based upon the combined teachings of the cited references.
Moreover, “‘the question under 35 USC 103 is not merely what the
references expressly teach but what they would have suggested to one of
ordinary skill in the art at the time the invention was made.’” Merck & Co.,
874 F.2d at 807 (quoting Lamberti, 545 F.2d at 750) (emphasis added); see
also MPEP § 2123. In this light, we agree with the Examiner that the
combined teachings and suggestions of Geirhofer and Chen support the legal
conclusion of obviousness as to claim 1.
In addition, it is well settled that, as part of the obviousness analysis,
the prior art must be viewed in the context of what was generally known in
the art at the time of the invention. See Randall, 733 F.3d at 1362 (“[T]he
[KSR] Court required an analysis that reads the prior art in context, taking
account of ‘demands known to the design community,’ ‘the background
knowledge possessed by a person having ordinary skill in the art,’ and ‘the
inferences and creative steps that a person of ordinary skill in the art would
employ.’” (quoting KSR, 550 U.S. at 418)); In re Taylor Made Golf Co.,
Inc., 589 F. App’x 967 (Fed. Cir. 2014) (the Board erred in failing to
consider the prior art in the context of the background knowledge that a
person of ordinary skill in the art would have had). Art can legitimately
serve to document the knowledge that skilled artisans would bring to bear in
reading the prior art identified as producing obviousness.3 Randall, 733
F.3d at 1362–63.
Here, one of ordinary skill in the art of cellular wireless
communication using signals would understand that employing improved

3 See e.g., supra n.2.
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channel estimation (e.g., as performed using the first type of reference signal
in Chen’s paragraph 7) in combination with an estimation by user equipment
of “the effective precoded MIMO channel characteristics” (e.g., as
performed using another type of reference signal in Chen’s paragraph 7),
would, in a multiple antenna system, improve signal to noise ratio (see Chen
¶ 9), and improve transmission accuracy and quality, as evidenced by Chen,
thus improving the efficiency of cellular wireless communications.
Moreover, we are not persuaded that employing multiple feedback
information based on known channel and transmission parameters was
“uniquely challenging or difficult for one of ordinary skill in the art” at the
time of Appellant’s invention (see Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418)).
Appellant’s arguments to the contrary (Appeal Br. 7) do not convince us
otherwise.
Finally, we note that both Geirhofer (see Geirhofer Figs. 1, 2, 9, 10)
and Chen (see Chen Fig. 1) pertain to cellular wireless communication in a
network having a base station and user equipment similar to Appellant (see
Fig. 7), and are thus both in analogous art when compared with Appellant’s
disclosed invention (see Abstr.; Spec. ¶¶ 6–26; Fig. 1–4, 7, 9–11). And,
both Geirhofer (see Geirhofer Abstr.; ¶¶ 3, 7, 8, 80, 107; Figs. 13, 14) and
Chen (see Chen Abstr.; ¶¶ 7, 10, 23, 28–30; Figs. 3, 4) are concerned with
feedback reporting based on various channel information, such as (i) a rank
indicator (RI) information, (ii) channel state information (CSI), and (iii) a
channel quality indicator (CQI).
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Summary
Appellant has not persuasively shown the Examiner erred in rejecting
representative claim 1 as being unpatentable under 35 U.S.C. § 103(a). In
view of the foregoing, we sustain the obviousness rejection of representative
claim 1, as well as claims 2, 3, 5, 7–9, 11, 13–15, 17, 19–21, and 23 grouped
therewith, as being obvious over the base combination of Geirhofer and
Chen. For similar reasons, and because (i) Appellant relies on the arguments
presented as to claims 1, 7, 13, and 19 in arguing dependent claims 4, 10, 16,
and 22 (see Appeal Br. 9); and (ii) claims 4, 10, 16, and 22 directly depend
from claims 1, 7, 13, and 19 respectively, we also sustain the remaining
obviousness rejection of claims 4, 10, 16, and 22 over the base combination
taken with Xiao.

CONCLUSION
For all of the reasons above, we hold as follows:

Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–3, 5,
7–9, 11,
13–15,
17, 19–
21, 23
103(a) Geirhofer, Chen 1–3, 5, 7–9,
11, 13–15, 17,
19–21, 23

4, 10, 16,
22
103(a) Geirhofer, Chen,
Xiao
4, 10, 16, 22
Overall
Outcome
1–5, 7–11, 13–
17, 19–23

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Application 13/907,112

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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)(1). See 37 C.F.R.
§§ 41.50(f), 41.52(b).

AFFIRMED