TELEFONAKTIEBOLAGET LM ERICSSON (PUBL)

Patent Trials and Appeals Board

Sep 14, 2021

2020004698 (P.T.A.B. Sep. 14, 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.
14/423,171 02/23/2015 Håkan Andersson 3000-257 1006
27820 7590 09/14/2021
WITHROW & TERRANOVA, P.L.L.C.
106 Pinedale Springs Way
Cary, NC 27511
EXAMINER
TACDIRAN, ANDRE GEE
ART UNIT PAPER NUMBER
2415
NOTIFICATION DATE DELIVERY MODE
09/14/2021 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):
patents@wt-ip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HKAN ANDERSSON, ANDREAS BERGSTROM,
STEFAN PARKVALL, QIANG ZHANG, JOHAN FURUSKOG, and
LARS LINDBOM
Appeal 2020-004698
Application 14/423,171
Technology Center 2400
Before BRADLEY W. BAUMEISTER, CHRISTA P. ZADO, and
MICHAEL J. ENGLE, 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 1–32. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a).
Appellant identifies the real party in interest as Telefonaktiebolaget LM
Ericsson. Appeal Br. 2.
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Application 14/423,171
2
CLAIMED SUBJECT MATTER
The instant application relates to multi-subframe scheduling of
physical uplink (UL) channels. Spec. 5–6. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method performed by a network node for scheduling of
uplink, UL, resources in multiple time instances, the method
comprising:
including, in an UL grant comprising an UL resource allocation
comprising UL resources in multiple UL time instances, an
indicator indicating that, for at least one UL time instance of the
multiple time instances, at least one UL resource is excluded
from or added to the UL resource allocation of the UL grant;
transmitting the UL grant including the indicator to at least one
communication device, and
receiving from the at least one communication device, an uplink
transmission in accordance with the transmitted UL grant.
Appeal Br. 25 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Love US 2012/0263117 A1 Oct. 18, 2012
Guan US 2014/0010067 A1 Jan. 9, 2014
Yang US 2015/0078222 A1 Mar. 19, 2015

REJECTIONS
Claims 1–32 stand rejected under 35 U.S.C. § 112(a) for failure to
comply with the written description requirement. Final Act. 3–6.
Claims 1–3, 5–11, 13–19, 21–27, and 29–32 stand rejected under
35 U.S.C. §§ 102(a)(1) and 102(a)(2) as anticipated by Guan. Id. at 6–10.
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Claims 4, 12, 20, and 28 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the combination of Guan and Love. Id. at 11–12.
Claims 2, 10, 18, and 26 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the combination of Guan and Yang. Id. at 12–13.
OPINION
1. Background
The Specification relates to the scheduling of resource allocation on
uplink (UL) and downlink (DL) channels between a user equipment, such as
a cell phone, and a base station. See, e.g., Spec., Fig. 1, 1:12–14, 5:24–25.
The Specification alleges, with regard to long-term evolution (LTE), that
certain problems exist with scheduling UL resources, namely that resources
go unused as a result of prior art UL grants that reserve the resource
exclusively for physical uplink control channel (PUCCH) transmission. Id.
at 2:4–19. According to the Specification, the prior art UL grant format
schedules a resource allocation in the UL, and applies the resource allocation
to all UL subframes (e.g., time instances) until a new UL grant is received.
Id. at 2:20–21. The Specification proposes to address this alleged problem
by introducing a modifier, e.g., an “indicator,” to the UL grant that
“indicates” a different resource allocation (by adding or excluding a
resource) for a subset of subframes in the UL grant. Id. at 3:30–5:7.
2. 35 U.S.C. § 112(a)—Written Description Requirement
Appellant submits the Examiner erred in finding claims 1–32
unpatentable for failure to satisfy the written description requirement of
35 U.S.C. § 112(a). Appeal Br. 18–20. For the following reasons, we
reverse.
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The Examiner finds that the following limitation of claim 1—and
similarly recited recitations in independent claims 9, 17, and 25—lacks
adequate written description support:
[T]he method comprising . . . including, in an UL grant
comprising an UL resource allocation comprising UL resources
in multiple UL time instances, an indicator indicating that, for
at least one UL time instance of the multiple time instances,
at least one UL resource is excluded from or added to the UL
resource allocation of the UL grant.
Final Act. 3–5 (quoting claim 1) (emphasis added). The Examiner
determines that the claimed “indicator” must indicate both:
a) multiple time instances; and
b) whether a UL resource is added to or excluded from the UL
resource allocation for the multiple UL time instances.
Id. at 3. According to the Examiner, even though the Specification includes
the claim language at issue almost verbatim (see, e.g., Spec. 7:34–8:2), such
language is at a high level and fails to provide details as to a single indicator
that performs both functions in a way that reasonably conveys to a skilled
artisan that the inventor was in possession of the invention at the time of
application. Final Act. 5. The Examiner finds that to the extent the
Specification includes details describing the indicator, such description is of
an indicator that performs only one, but not both, of functions a) and b). Id.
at 4; Ans. 4–5.
For example, for a description of an indicator indicating a time
instance, the Specification discloses an indicator embodied by a bitmap,
wherein the bitmap points to at least one UL time instance. Ans. 4 (citing
Spec., Fig. 3, 8:3–7). However, the Specification neither describes how this
structure also indicates the addition/exclusion of a resource, nor provides an
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additional structure within this indicator that performs such function,
according to the Examiner. Id. at 5.
Appellant submits that the Specification provides adequate written
description, citing the following portions of the Specification for support:
6:12–21, 7:34–8:16, 7:1–7. Appeal Br. 19–20.
Compliance with the written description requirement is a question of
fact which must be resolved on a case-by-case basis. Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). To satisfy the written
description requirement, a patent specification must describe the claimed
invention in sufficient detail that one skilled in the art can reasonably
conclude that the inventor had possession of the claimed invention. See,
e.g., Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319 (Fed.
Cir. 2003); Vas-Cath, 935 F.2d at 1563. An applicant shows possession of
the claimed invention by describing the claimed invention with all of its
limitations using such descriptive means as words, structures, figures,
diagrams, and formulas that fully set forth the claimed invention. Lockwood
v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). Possession may
be shown in a variety of ways including description of an actual reduction to
practice, or by showing that the invention was “ready for patenting” such as
by the disclosure of drawings or structural chemical formulas that show that
the invention was complete, or by describing distinguishing identifying
characteristics sufficient to show that the applicant was in possession of the
claimed invention. See, e.g., Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 68
(1998); Regents of Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1566
(Fed. Cir. 1997); Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1206
(Fed. Cir. 1991).
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In determining whether the original patent disclosure satisfies the
written description requirement, we first address the scope of the claim
limitation at issue. MPEP § 2163(II)(1) (2019). As we discuss above, the
Examiner determines that the claimed indicator must indicate both
a) multiple time instances; and b) whether a UL resource is added to or
excluded from the UL resource allocation for the multiple UL time
instances. Final Act. 3. We first clarify that the claim language does not
require indication of UL resource addition/exclusion allocation for multiple
time instances. The claim language recites “at least one UL time instance of
the multiple time instances,” and, therefore, is met by indication of one UL
time instance. However, for the purposes of determining whether the
original disclosure provides written description for the full scope of the
claimed invention, the original disclosure must provide support for an
indicator that indicates multiple time instances, because such is within the
scope of the phrase “at least one of multiple time instances.”
As to whether the “indicator” must itself identify the at least one time
instance for which UL resources are added/excluded, we find the following.
The claims recite a UL grant, wherein the UL grant includes UL resource
allocation for multiple UL time instances. The UL grant also includes an
“indicator.” The claimed “indicator” must indicate at least one UL resource
to be excluded from or added to the UL resource allocation of the UL grant,
because the claims expressly recite this feature. Appeal Br. 25–30 (Claims
App.) (see, e.g., claim 1, reciting “an indicator indicating that, for at least
one UL time instance of the multiple time instances, at least one UL
resource is excluded from or added to the UL resource allocation of the UL
grant”). However, the claims do not recite that the “indicator” must also
identify the time instance(s) during which the excluded/added UL resource
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allocation applies. In other words, although the additions/exclusions apply
during specific time instances (i.e., are “for at least one UL time instance of
the multiple time instances”), the claim language does not require that the
“indicator” expressly identify the time instances. The claim language allows
for the applicable time instance(s) to be implicit.
Our interpretation is consistent with the Specification, which provides
an example in which the time instance during which the addition/exclusion
applies is implicit. The Specification describes an embodiment that includes
an “indicator” indicating that additional resource blocks (RBs) are added to
the UL grant. Spec. 6:22–23. As such, this “indicator” performs the
function the Examiner identifies as requirement b), namely, the indicator
identifies resources to be added to the UL grant.
In addition, the “indicator” is used “for at least one UL time instance
of the multiple time instances,” as required by the claims. Specifically, the
“indicator” applies to the first UL subframe after the DL subframe
containing the UL grant. Spec. 6:24–26 (“The subframe that is to have its
resource allocation modified may be the first UL subframe after the DL
subframe containing the UL grant, after which the unmodified resource
allocation is used for all subsequent UL subframes”). Even though the
“indicator” does not expressly identify the first UL subframe, it is implicitly
understood that the “indicator” applies to, i.e., is “for,” the first UL
subframe. Id.
Having determined the scope of the claim limitation at issue, we turn
to whether the original disclosure provides written description support for
the claimed invention.
As we discuss above, the Specification alleges certain problems exist
with scheduling UL resources, namely that the prior art UL grant format
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schedules a resource allocation in the UL, and applies the resource allocation
to all UL subframes (time instances) until a new UL grant is received, which
may result in unused resources. Id. at 2:4–21. The Specification proposes to
address this alleged problem by introducing a modifier, e.g., an “indicator,”
to the UL grant that “indicates” a different resource allocation (by adding or
excluding a resource) for a subset of subframes. Id. at 3:30–5:7.
The Specification states that the proposed solution provides
advantages including: 1) the alleged scheduling problems associated with
prior art UL grants may be addressed through use of a single improved UL
grant; 2) the size increase (attributable to the bits required to implement the
“indicator”) of the improved UL grant is minor; and 3) resource allocation
can be changed dynamically using the improved UL grant. Id. at 5:9–18.
Based on these disclosures, it appears Appellant’s invention is the
improvement of prior art UL grants by including an “indicator” that
indicates adding or excluding resources to the UL grant during at least one
time instance. It does not appear that the details of implementing an
“indicator,” per se, are an inventive aspect of the alleged improvement.
Here, it appears the art is sufficiently mature that a person of ordinary skill
in the art would, in light of the original disclosure, understand that the
inventor had possession of the invention. The portions of the original patent
disclosure cited in the Appeal Brief—i.e., 6:12–21, 7:34–8:16, 7:1–7—
support our finding.
One cited portion of the Specification essentially repeats the language
of the claim limitation at issue. Id. at 7:34–8:2. However, this is not the
extent of the description in the Specification. As cited by Appellant, the
Specification provides additional description.
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For example, as cited by Appellant, the Specification provides
guidance as to what an indicator may be, stating:
The indicator as proposed herein, may be viewed as a modifier,
a modifier field or fields which indicate a communication device
such as a user equipment (UE) that for a specific subframe, or
subframes, the resource allocation shall be modified in a certain
manner.
Spec. 6:12–14.
Also cited by Appellant, the Specification, explains that the
“indicator” may be a bit field that indicates time instance(s). Id. at 8:3–6.
Figure 3 of the Specification provides an illustration of said bit field. Id. at
8:3–6 (discussing Fig. 3). Even though this particular embodiment is
specific to an “indicator” that expressly indicates a) (i.e., time instances),
this disclosure, read in light of the description of an indicator as being
viewed as “modifier fields” (Spec. 6:12–14), sufficiently describes using a
bit field to indicate requirement b) (i.e., addition/exclusion of a UL resource
for at least one time instance). Use of the plural form of “field,” in
describing “modifier fields,” discloses an indicator having more than one
field. The description of one type of field (i.e., time instance field) being
implemented as a bit field, provides an example of a modifier field. As we
set forth below, the Specification also describes other types of fields that
may be included in the indicator (i.e., fields denoting addition/exclusion of
UL resources during specific time instances). A skilled artisan reading these
disclosures, therefore, would have understood that the inventor had
possession of using a bit field to indicate requirement b), as well as
including multiple bit fields to indicate both of requirements a) and b).
For example, the Specification states that an indicator “may indicate
that some indicated resource blocks (RBs) in the UL grant are not included
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in the one or more specific subframe(s) [i.e., time instances].” Spec. 6:15–
17.
The Specification states that the indicator may indicate additional
RBs, not included in the regular UL grant, may be added. Spec. 6:18–21.
The Specification discloses that the indicator may modify the existing
format of a UL grant such that one or more UL subframes of the resources
being allocated have modified allocations, compared to other subframes not
being specified by the indicator. Spec. 8:7–9.
The Specification states that the indicator may indicate a set of UL
resources configured by higher layer signaling. Spec. 8:10–13.
The Specification discloses that the set of UL resources indicated by
an index in the UL grant may indicate that for the at least one UL time
instance, at least one UL resource in the set of resources may be excluded
from or added to the UL resource grant. Spec. 8:14–16.
The Specification states that the indicator may indicate that a set of
multiple different modifications may be configured by higher-layer signaling
such as by a RCC message. Spec. 7:1–4.
The Specification discloses that the indicator may indicate that
different modifications shall be applied in different subframes. Spec. 7:5–7.
For the foregoing reasons, we reverse the Examiner’s rejection of
claims 1–32 under 35 U.S.C. § 112(a) for failing to satisfy the written
description requirement.2

2 Appellant improperly introduces a new argument in the Reply Brief that
the claims do not require that the indicator indicate both a) and b). Reply
Br. 2–4. Given the Examiner’s finding that the claims require both a) and b)
is part of the office action from which this appeal is taken (Final Act. 3–5),
Appellant’s argument could have and should have been made in the Appeal
Brief. Appellant provides no explanation for its delinquent introduction of
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3. 35 U.S.C. §§ 102 and 103—Guan
Appellant contends the rejections of claims 1–32 under §§ 102 and
103 should be reversed because: 1) Guan neither discloses, teaches, nor
suggests the following limitation of claim 1—and similarly recited
recitations in independent claims 9, 17, and 25—and; 2) the additional relied
upon prior art does not cure such deficiency:
the method comprising . . . including, in an UL grant
comprising an UL resource allocation comprising UL resources
in multiple UL time instances, an indicator indicating that, for
at least one UL time instance of the multiple time instances, at
least one UL resource is excluded from or added to the UL
resource allocation of the UL grant.
Appeal Br. 20–23 (quoting claim 1) (emphasis added). For the following
reasons, we do not sustain the Examiner’s rejections based on Guan.
For the claim limitation at issue, the Examiner relies on Guan’s
evolved NodeB (“eNB”), which sends UL grants to User Equipment (UEs).
Final Act. 6–7 (citing Guan ¶¶ 67–70, 74, 80–82, 88–90, 97–99). Guan
discloses a resource table in which certain subframes are allocated as either
downlink (“D”) or uplink (“U”). See, e.g., Guan ¶ 5. When eNB suspects a
packet from the UE (in connection with a first UL grant) is not correctly
delivered, eNB allocates a subframe for packet retransmission, and sends a
second UL grant to the UE to retransmit the packet. See, e.g., id. ¶¶ 64–65,
¶¶ 67–70, 7480–82, 88–90, 97–99. The second UL grant may carry

this new argument. Reply Br. 2–4. We do not consider this new argument
raised in the Reply Brief, for which the Examiner has not had the
opportunity to respond. See 37 C.F.R. § 41.71 (providing that the reply brief
“may be directed to the examiner’s answer”). We note that our refusal to
consider this new argument does not affect the outcome of this Decision.
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“identification information and an identifier which identifies or indicates the
. . . subframe in the UL-grant signaling.” Id. ¶ 88.
As argued by Appellant, the claims require that the “indicator”
indicate resources to be added to/excluded from the UL grant. Appeal
Br. 20–21; Reply Br. 3. In other words, the UL grant that includes the
“indicator” must be the same UL grant that initially grants the UL resource
allocation. The Examiner finds that Guan’s UL grant that includes the
“indicator” indicates addition of a UL resource to a previous UL grant,
rather than the same UL grant that includes the “indicator.” Ans. 7.
In making this finding, the Examiner explains that the claim language
does not require that the additions/exclusions to the UL grant, as indicated in
the “indicator,” be for the same UL grant, but may be additions/exclusions to
a previous UL grant. Id. We disagree. The claim language recites
“including, in an UL grant . . . an indicator indicating . . . at least one UL
resource that is excluded from or added to the UL resource allocation of the
UL grant.” Appeal Br. 25 (Claims App.) (emphasis added). Based on the
use of the word “the” preceding “UL grant,” the claim language requires that
the exclusion/addition of the UL resource must be an exclusion/addition to
the current UL grant, and not to the previous UL grant. Accordingly, the
Examiner has not shown that Guan’s “indicator,” which the Examiner finds
indicates an addition of a UL resource to a previous UL grant, rather than the
current UL grant, satisfies the claim language.
For the foregoing reasons, we do not sustain the Examiner’s rejection
of claims 1–3, 5–11, 13–19, 21–27, and 29–32 under 35 U.S.C. § 102 as
anticipated by Guan. Moreover, we do not sustain the rejections of claims 4,
12, 20, and 28 under 35 U.S.C. § 103 as being unpatentable over the
combination of Guan and Love, or the rejections of claims 2, 10, 18, and 26
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under 35 U.S.C. § 103 as being unpatentable over the combination of Guan
and Yang, because these rejections do not address the above-discussed
deficiencies of Guan. Appeal Br. 22–23.

CONCLUSION
The Examiner’s rejections are reversed.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–32 112(a) Written
Description
1–32
1–3, 5–11,
13–19, 21–
27, 29–32
102(a)(1),
102(a)(2)
Guan 1–3, 5–11,
13–19, 21–
27, 29–32
4, 12, 20,
28
103 Guan, Love 4, 12, 20,
28
2, 10, 18,
26
103 Guan, Yang 2, 10, 18,
26
Overall
Outcome
1–32

REVERSED