Sharp Kabushiki Kaisha et al.

Patent Trials and Appeals Board

Mar 1, 2022

2021001075 (P.T.A.B. Mar. 1, 2022)

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. 15/963,423 04/26/2018 Atsushi ISHII HWB-0427-0438 9334 126613 7590 03/01/2022 NIXON & VANDERHYE, P.C. / SLA 901 N. Glebe Road, 11th Floor Arlington, VA 22203 EXAMINER DAVENPORT, MON CHERI S ART UNIT PAPER NUMBER 2462 NOTIFICATION DATE DELIVERY MODE 03/01/2022 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): PTOMAIL@nixonvan.com pair_nixon@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ATSUSHI ISHII Appeal 2021-001075 Application 15/963,423 Technology Center 2400 Before MICHAEL J. STRAUSS, HUNG H. BUI, and CHRISTA P. ZADO, Administrative Patent Judges. ZADO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-20, all the claims pending in the present application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Sharp Kabushiki Kaisha. Appeal Br. 3. Appeal 2021-001075 Application 15/963,423 2 CLAIMED SUBJECT MATTER The instant application relates to wireless communications, and particularly to performing a random access procedure (RACH). Spec. ¶ 1. Claim 1, reproduced below, illustrates the claimed subject matter: 1. A user equipment comprising: receiving circuitry configured to receive, from a base station apparatus, configuration parameters for a random access procedure, wherein the configuration parameters indicate a set of random access preambles to be used for a request for on demand system information and physical random access channel (PRACH) resources to be used for the request for the on demand system information; processor circuitry configured to select a random access preamble and a PRACH resource from the set of random access preambles and the PRACH resources in a case of requesting the on demand system information; and transmitting circuitry configured to transmit the random access preamble using the PRACH resource. Appeal Br. 23 (Claims App.). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Pani US 2011/0274040 A1 Nov. 10, 2011 Suzuki US 2014/0086193 A1 Mar. 27, 2014 Frenger US 2019/0289639 A1 Nov. 3, 20172 2 This is the filing date of the Patent Cooperation Treaty (“PCT”) application for US patent Application 16/346,602, which resulted in Frenger. Appeal 2021-001075 Application 15/963,423 3 REJECTIONS The claims stand rejected as follows: Claims Rejected 35 U.S.C. § References 1-20 103 Suzuki, Pani, Frenger OPINION A. Frenger as Prior Art Appellant submits that Frenger is not prior art to the instant application. Appeal Br. 18-20. Frenger is a publication of US Patent Application 16/346,602 (“the ’602 application”), filed on May 1, 2019, which is a National Stage entry from a PCT application (PCT/IB2017/056886) filed on November 3, 2017. Frenger [22], [86]. Frenger claims priority to US Provisional Application 62/418,162 (“the ’602 provisional application”), filed on November 4, 2016. Id. [60], ¶ 1. The application on appeal was filed on April 26, 2018, and claims priority to a provisional application-US Provisional Application 62/492,073 (“the ’073 provisional application”)-filed on April 28, 2017. Spec. 1. Appellant does not dispute that Frenger is entitled to the filing data of the PCT application, i.e., November 3, 2017. However, Appellant argues that Frenger is not entitled to the filing date of the ’602 provisional application (i.e., November 4, 2016), whereas the instant application is entitled to the filing date of the ’073 provisional application, i.e., April 28, Appeal 2021-001075 Application 15/963,423 4 2017, which predates Frenger’s PCT application filing date of November 3, 2017. Appeal Br. 18-20. For reasons discussed below, Appellant has not shown that the instant application, filed on April 26, 2018, is entitled to an earlier priority date. Moreover, as we discussed above, Appellant does not dispute that Frenger is entitled to a filing date of November 3, 2017 (i.e., PCT filing date). Appellant, therefore, has not shown that Frenger is unavailable as prior art. Because Frenger qualifies as prior art based on the PCT filing date leading to Frenger, we need not and do not determine whether Frenger is entitled to the filing date of the earlier filed ’602 provisional application. “[A] patent’s claims are not entitled to an earlier priority date merely because the patentee claims priority.” In re NTP, Inc., 654 F.3d 1268, 1276 (Fed. Cir. 2011). For a claim to be entitled to the benefit of an earlier-filed application, the earlier application must comply with the written description requirement of 35 U.S.C. § 112. See 35 U.S.C. § 120; Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998). The relevant inquiry is whether the specification describes an invention understandable to the skilled artisan and shows that the inventor actually invented the invention claimed. Hollmer v. Harari, 681 F.3d 1351, 1355 (Fed. Cir. 2012). This requirement is not satisfied by simply making a claim chart matching features to passages in the specification. To “isolate and combine aspects from various embodiments in the specifications (including patents incorporated by referenced involving a different [device])” does not demonstrate that the inventor was in possession of the purported invention. Purdue Pharma L.P. v. Recro Tech., LLC, 694 F. App’x 794 (Fed. Cir. 2017). Instead, the written description analysis requires “[t]aking each claim . . . as an integrated whole Appeal 2021-001075 Application 15/963,423 5 rather than as a collection of independent limitations.” Novozymes A/S v. DuPont Nutrition Biosciences APS, 723 F.3d 1336, 1349 (Fed. Cir. 2013). Here, the patentee, i.e., Appellant, has not demonstrated that the instant application is entitled to an earlier filing date of April 28, 2017 of its ‘073 provisional application. Specifically, Appellant has not shown that the ’073 provisional application provides written description support for any claim of the instant application. The Appeal Brief provides only the bare assertion that the ’073 provisional application fully supports the subject matter of the instant claims, without providing any support: Applicant’s priority application, US provisional application 62/492073 (filed April 28, 2017), which fully supports the subject matter of the independent claims, precedes in time the filing off all Frenger priority-claimed applications except [the ’062 application]. Appeal Br. 18. This assertion is inadequate to show that the ’073 provisional application complies with the written description requirements under 35 U.S.C. § 112. Appellant does not cite to any disclosure in the ’073 provisional application or identify which disclosure describes which claim limitations, much less demonstrate that the inventor was in possession of the claimed invention. The disclosure of the ‘073 provisional application is nearly 140 pages. We decline to search the application in an attempt to identify written description support. As we discussed above, Appellant bears the burden of showing that the ’073 provisional application provides written description support for the claims in the instant application. For the foregoing reasons, Appellant has not shown that Frenger is unavailable as prior art. Appeal 2021-001075 Application 15/963,423 6 B. Whether Frenger Teaches the Claim Limitations Appellant seeks reversal of the rejection of claims 1-20. In so doing, Appellant argues claims 1-20 together. Appeal Br. 17-22. Pursuant to 37 C.F.R. § 41.37(c)(iv), we select claim 1 in determining this appeal. Appellant argues that Frenger neither discloses nor suggests the following limitations of claim 1: receiving circuitry configured to receive, from a base station apparatus, configuration parameters for a random access procedure, wherein the configuration parameters indicate a set of random access preambles to be used for a request for on demand system information and physical random access channel (PRACH) resources to be used for the request for the on demand system information (“receiving circuitry” limitation); and processor circuitry configured to select a random access preamble and a PRACH resource from the set of random access preambles and the PRACH resources in a case of requesting the on demand system information (“processor circuitry” limitation). Appeal Br. 20. For reasons that follow, we are not persuaded by Appellant’s arguments. The instant application relates to wireless communications systems for new radio (“NR”) 5G (i.e., fifth generation) systems, and more specifically, to the use of a random access channel (“RACH”) for communications between user equipment (“UE”) and a base station. Spec. ¶ 3-5. Because a RACH is shared, collisions may occur when two UE terminals attempt to use the RACH during the same time slot. See, e.g., Pani ¶ 4; Suzuki ¶ 5. Therefore, random access procedures have been developed to avoid Appeal 2021-001075 Application 15/963,423 7 collisions, wherein uplink synchronization information is sent to a UE terminal in order to initiate uplink data transfer to a base station during a specified time slot. Spec. ¶¶ 3-5. During a random access procedure, in order to conserve network bandwidth, a base station initially broadcasts only general system information (“SI”) needed by UE to initiate data transfer. Id. ¶ 69. UE may use such information to send requests to the base station for additional, more specific, system information blocks (“SIBs”) as needed. Id. These requests for additional system information are referred to as on demand requests. Id. The Specification acknowledges that random access procedure techniques were well-known in earlier, pre-5G, wireless communications systems. Id. ¶¶ 3-4, Pani ¶ 3. The Specification asserts, however, a need for “random access procedure (RACH) techniques for [] the 5G system,” but does not identify specific challenges particular to 5G in implementing RACH procedures. Spec. ¶ 6. Pertinent to this appeal, the receiving circuitry limitation of claim 1 recites UE receiving configuration parameters from a base station for a random access procedure, wherein the parameters include random access preambles and PRACH resources to be used for a request for on demand system information. Appeal Br. 23 (Claims App.). Both Suzuki and Pani relate to wireless communications systems, and disclose random access procedures in pre-5G systems in which configuration parameters are received by UE. Suzuki [57]; Pani [57]. These references do not specify that the configuration parameters include information for a request for on demand system information (“SI”), as recited in claim 1. However, Frenger relates specifically to 5G (i.e., NR) communications Appeal 2021-001075 Application 15/963,423 8 systems, and, like the instant application, discloses a UE receiving a general broadcast that includes “a configuration of how to request and receive on- demand system information.” Frenger ¶ 21, 44 (emphasis added); Spec. ¶ 69. Because the Examiner relies on the combination of Suzuki, Pani, and Frenger for the receiving circuitry and processing circuitry limitations (Final Act. 2-4), Appellant’s arguments, which attack Frenger alone (Appeal Br. 20-22), are not persuasive of Examiner error. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). We discuss Appellant’s arguments in more detail below. Specifically, although Appellant makes the sweeping assertion that Frenger does not teach the receiving circuitry and processing circuitry limitations, Appellant drills down by identifying narrowed claim recitations, as discussed below. Appellant argues that Frenger does not teach or suggest the following portion of the receiving circuitry limitation: “the configuration parameters indicate a set of random access preambles to be used for a request for on demand system information and physical random access channel (PRACH) resources to be used for the request for the on demand system information,” as recited in claim 1. Appeal Br. 21. The Examiner does not rely on Frenger alone for this recitation, but instead relies on the combination of Suzuki, Pani, and Frenger. Final Act. 2-4. For this reason alone, arguments directed to Frenger individually are insufficient to demonstrate Examiner error, because such arguments do Appeal 2021-001075 Application 15/963,423 9 not consider the contributions of Suzuki and Pani upon which the rejection relies. We further find that Appellant’s arguments regarding Frenger are flawed. Appellant’s arguments are based on Frenger’s disclosure of UE receiving system information block 1 (“SIB1”), which includes system information (i.e., configuration parameters) for requesting on demand system information. Frenger ¶ 44 (disclosing “[t]he system information may include a configuration of how to request and receive on-demand system information”). Although Frenger undisputedly discloses receiving configuration parameters for a random access procedure, Appellant argues that Frenger does not specify that the configuration parameters are those recited in claim 1. Id. According to Appellant, because Frenger’s parameters could cover a number of configuration parameters other than those claimed, Frenger “cannot teach” those claimed. Appeal Br. 21. Appellant’s reasoning is flawed. Even if Frenger’s configuration parameters may include parameters in addition to those claimed, this does not preclude Frenger from teaching the claimed parameters. There is no rule that disclosure that encompasses more than what is claimed per se cannot teach what is claimed. Such a rule would curtail any further inquiry as to what the disclosure actually teaches. To the extent Appellant’s argument is not that Frenger cannot teach the parameters per se, but rather is that Frenger does not expressly disclose them, this, too, is unavailing. The Examiner relies on the combination of Suzuki, Pani, and Frenger for teaching the claimed configuration parameters. Final Act. 2-4. Specifically, the Examiner finds that Suzuki teaches receiving configuration parameters for a random access procedure, Pani Appeal 2021-001075 Application 15/963,423 10 teaches “wherein the configuration parameters indicate a set of random access preambles,” and Frenger teaches that random access preambles and PRACH resources are to be used for a request for on demand system information. Id. Because Appellant does not address the combination applied by the Examiner, Appellant’s argument fails to show the Examiner erred in finding obviousness. We note that to the extent Appellant seeks review of the Examiner’s findings as to Frenger with regard to the above recitation, Appellant has not shown any Examiner error. Specifically, the Examiner correctly finds that Frenger discloses configuration parameters to be used to request on demand system information, including PRACH resources as a parameter. Id.; Ans. 4-5. Frenger discloses a UE receiving master information block (“MIB”) indicating how the UE can receive system information block 1 (“SIB1”), wherein SIB1 contains only minimal configuration information, including information as to how to request subsequent SIBs. Frenger ¶ 31. In pertinent part, Frenger discloses that SIB1 may include configuration information as to how to request and receive additional on demand system information. Frenger ¶ 44. Configuration information regarding “how to request” on demand system information is reasonably interpreted as falling within the scope of the claim language “to be used for a request for” on demand system information. Accordingly, we agree with the Examiner that Frenger teaches a UE receiving configuration parameters for a random access procedure, wherein the configuration parameters indicate information to be used for a request for on demand system information, as required by claim 1. Final Act. 4. Moreover, Frenger discloses, e.g., that the configuration information in SIB1 includes PRACH resources to be used for Appeal 2021-001075 Application 15/963,423 11 subsequent on demand system information requests. See, e.g., id. ¶ 44 (disclosing that the configuration information in SIB1 can be configuration information on how to request on demand system information that is part of another SIB, wherein the information includes PRACH resources). Appellant further narrows its argument that Frenger cannot teach the claimed configuration parameters, arguing that Frenger does not teach the parameter of “a physical random access procedure or PRACH resource to be used for the request for the on demand system information.” In support of this argument, Appellant quotes a portion of one sentence in Frenger, which states “[t]he on-demand SIBs . . . also include system information for PRACH resource 770.” Appeal Br. 21 (citing Frenger ¶ 44). This disclosure explicitly states the system information to request on demand system information includes a PRACH resource. Appellant does not articulate why the quoted disclosure indicates Frenger cannot teach a PRACH to obtain on demand system information, even though this disclosure states the exact opposite of Appellant’s conclusion. In the absence of further explanation, Appellant’s assertion is conclusory and entitled to little weight. For the foregoing reasons, Appellant’s argument is insufficient to show Examiner error. Appellant further asserts that the Examiner incorrectly finds in the Advisory Action that Frenger’s “on-demand system information blocks (SIBs) contains PRACH resources and random access preambles.” Appeal Br. 21. Again, Appellant’s remark is conclusory, as it fails to explain why the Examiner is incorrect. Appellant merely states, without explanation, that the Examiner’s observation “belies the Examiner’s misunderstanding of the claimed subject matter, as elucidated in” the argument discussed in the Appeal 2021-001075 Application 15/963,423 12 preceding paragraph (i.e., the argument discussed in the preceding paragraph of this Decision). Appellant’s unsupported assertions are insufficient to show the Examiner erred. Appellant also asserts that the problem Frenger seeks to address is encoding SIB for multiple cells and beams using a single SIB. Appeal Br. 20. Appellant asserts that in this regard, Frenger does not disclose or suggest the “receiving circuitry” limitation or “processor circuitry” limitation. Id. It is insufficient to argue that Frenger fails to teach or suggest these limitations, because the rejection does not rely only on Frenger. Final Act. 2-4. For this reason alone, Appellant’s argument does not show the Examiner erred in the rejection. Moreover, assuming arguendo that the nature of the problem Frenger seeks to address is as Appellant asserts (hereinafter, “Frenger’s asserted purpose” or “asserted purpose”), Appellant does not sufficiently articulate why this asserted purpose demonstrates error in the Examiner’s obviousness determination. Appellant argues that Frenger’s SIB encoding technique “has nothing to do with whether the particular SIB includes information that is on-demand or broadcast.” Appeal Br. 20. Such reasoning, without more, is insufficient because it provides no explanation regarding why encoding SIB information for multiple cells and beams precludes an SIB from including information to request on demand system information. As we discussed above, infra Sec. B.1., contrary to Appellant’s assertion, Frenger discloses a UE receiving SIB1, which includes configuration parameters to be used for on demand system information requests. Appeal 2021-001075 Application 15/963,423 13 Appellant also quotes disclosure in Frenger that states, “a SIB is encoded jointly for multiple cells and beams and a UE can extract one particular SIB from that encoding that is valid for a particular cell and beam.” Appeal Br. 21-22. Appellant argues that this disclosure “means that SIBs for multiple cells and beams are encoded jointly and a UE can extract one particular SIB from the SIBs based on a particular cell and beam.” Id. (emphasis omitted). Appellant concludes, without providing any explanation, that this is “clearly different from the Applicant’s claim limitation,” which recites “select a random preamble and a PRACH resource from the set of random access preambles and the PRACH resources.” Id. at 21-22. A bare assertion that a disclosure is different from a claim recitation is inadequate to show Examiner error. Moreover, the Examiner relies on Suzuki in addition to Frenger, which Appellant does not address. Final Act. 2-3 (finding Suzuki teaches selecting a random access preamble and PRACH resource from the set of random access preambles and the PRACH resources). CONCLUSION For the foregoing reasons, Appellant has not demonstrated Examiner error in rejecting claim 1. Therefore, we affirm the Examiner’s rejection of claim 1, as well as claims 2-20, which stand or fall with claim 1. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § References Affirmed Reversed 1-20 103 Suzuki, Pani, Frenger 1-20 Appeal 2021-001075 Application 15/963,423 14 Overall Outcome 1-20 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