Apple Inc.

Patent Trials and Appeals Board

Sep 20, 2021

2020003957 (P.T.A.B. Sep. 20, 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.
14/917,931 03/09/2016 Shafi BASHAR 49176-0626US1 1024
26183 7590 09/20/2021
FISH & RICHARDSON P.C. (APPLE)
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
MARCELO, MELVIN C
ART UNIT PAPER NUMBER
2463
NOTIFICATION DATE DELIVERY MODE
09/20/2021 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SHAFI BASHAR, VADIM SERGEYEV, and
JONG-KAE FWU

Appeal 2020-003957
Application 14/917,931
Technology Center 2400
____________

Before RICHARD M. LEBOVITZ, BETH Z. SHAW, and
SCOTT E. BAIN, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected claims 30–51 under 35 U.S.C. § 103 as
obvious. Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject the claims. 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. Appellant identifies the real party in interest as Intel
Corporation. Appeal Br. 1.
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Application 14/917,931

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STATEMENT OF THE CASE
The Examiner rejected claims 30–51 in the Final Action under 35
U.S.C. § 103 as obvious in view of Jovicic et al. (US 2010/0029216 A1,
published Feb. 4, 2010) (“Jovicic”) and Seo et al. (US 2014/0050206 A1,
published Feb. 20, 2014) (“Seo”). Final Act. 4.
Independent claims 30, 33, and 42 are reproduced below:
30. An Evolved Node-B (eNB) to communicate with one
or more User Equipment (UEs) on a network operating in an
unlicensed spectrum, the eNB comprising hardware processing
circuitry including:
an antenna; and
a transmitter, coupled to the antenna, the transmitter
operable to:
inhibit transmission of system information to a UE when
the spectrum is unlicensed; and
transmit, in a licensed spectrum, the system information
for a carrier to the UE using a Physical Broadcast Channel
(PBCH) on that carrier if the carrier is operating on the licensed
spectrum,
wherein the carrier on the licensed spectrum can transmit
the information associated with the PBCH of another carrier,
which is operated on the unlicensed spectrum, to the UE.

33. A User Equipment (UE) to communicate with an
Evolved Node-B (eNB) on a network operating in an
unlicensed spectrum, the UE comprising hardware processing
circuitry including:
an antenna; and
a receiver, coupled to the antenna, the receiver operable
to:
receive, from the eNB, system information using a
Physical Broadcast Channel (PBCH) relevant to a carrier
operating on the unlicensed spectrum from another carrier
operating on a licensed spectrum, wherein the carrier operating
on the licensed spectrum is for a primary cell (PCell) associated
with the UE; and
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receive the system information from the eNB when the
spectrum is licensed.

42. User Equipment (UE) to communicate with an
Evolved Node-B (eNB) on a network operating in an
unlicensed spectrum, the UE comprising hardware processing
circuitry including:
an antenna; and
a receiver, coupled to the antenna, the receiver operable
to:
receive on a first carrier one or both of Primary
Synchronization Signal (PSS) or Secondary Synchronization
Signal (SSS) from the eNB when the spectrum is licensed; and
receive on a second carrier operating on the unlicensed
spectrum to infer information associated with the one or both of
PSS and SSS.

CLAIMS
The Specification discloses that the demand for wireless broadband
data is increasing. Spec. 1:15. To meet this demand, the Specification further
discloses that “unlicensed spectrum” is being considered to “augment” the
services provided by cellular operators. Spec. 1:15–16. Unlicensed spectrum
(or bands) includes Television’s white spaces and the 5GHz spectrum. Spec.
3:21–27. The Specification explains:
To utilize the unlicensed spectrum in Long Term Evolution
Advance (LTE-A), a new study item proposal named “LTE in
Unlicensed” or LTE-U or “Licensed Assisted Access” or LAA
is under consideration in the 3rd Generation Partnership Project
(3GPP). The idea behind LTE-U is to extend the LTE platform
into unlicensed deployments.
Spec. 1:16–20.
The claims use an Evolved Node-B (eNB) as a base station to
communicate with one or more User Equipments (UEs). Spec. 5:22–27. A
UE is described in the Specification as “any device used directly by an end-
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user to communicate,” such as “a handheld telephone, a laptop computer
equipped with a mobile broadband adapter, or any other device.” Spec.
6:15–17. The eNB communicates with the one or more UEs.
Claim 30 is directed to the eNB which, using a transmitter coupled to
an antenna, “inhibit[s] transmission of system information to a UE when the
spectrum is unlicensed” and “transmit[s] in a licensed spectrum, the system
information for a carrier to the UE using a Physical Broadcast Channel
(PBCH) on that carrier” when the carrier is operating in a licensed spectrum.
The Specification explains the advantage of these limitations:
By not transmitting the PBCH signals on the unlicensed
carrier, fair co-existence is ensured with other incumbent radio
access technologies (RAT), as well as other LTE operators that
may use the unlicensed spectrum/medium, according to some
embodiments. By refraining from transmitting the PBCH
signals when there are no data transmissions, interference to
other RATs is reduced, according to some embodiments. Due to
the unlicensed nature of the medium, the transmission by itself
may not be reliable. While reliability may not be a big issue for
the [Primary Synchronization Signal (PSS) and Secondary
Synchronization Signal (SSS)] and CRS [(Common Reference
Signal)], transmission of system information using the PBCH
needs reliability. In some embodiments, by transmitting the
PBCH information for an unlicensed carrier by using RRC
[(Radio Resource Control)] message from a licensed PCell
[(Primary Cell)], the reception reliability of such message can
be improved.
Spec. 12:9–17.
Claim 33 is directed to the User Equipment, which using a receiver
coupled to an antenna, receives the system information from the eNB using
the PBCH signal when the carrier is operating on the unlicensed spectrum
and receives the system information from the eNB when the spectrum is
licensed.
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Claim 42 is also directed to User Equipment that communicates with
an eNB. The UE in claim 42 uses a receiver coupled to an antenna to receive
the PSS or SSS signals from the eNB when the spectrum is licensed and
“receive[s] on a second carrier operating on the unlicensed spectrum to infer
information associated with the one or both of PSS and SSS.”
Thus, the UEs in claims 33 and 42 are capable of receiving unlicensed
and licensed information/signals from the eNB, depending on the operating
status of the carrier.
REJECTION
The Examiner found Jovicic describes “a communication system that
uses a first licensed spectrum which can be cellular telecommunications
(paragraph 0018) to provide system control information (Figures 4-5 and
paragraph 0036) for transmitting traffic data on a second unlicensed
spectrum which can be Wi-Fi telecommunications (paragraph 0017).” Final
Act. 4. Thus, the Examiner found that the system described in Jovicic
broadcasts and receives in both licensed and unlicensed spectrum as recited
in the claims.
The Examiner found that “Jovicic does not teach the specifics of a
licensed cellular telecommunications systems such as an eNB using the
PBCH to transmit PSS/SSS on a Pcell or Scell.” Final Act. 4. Compare
claim 30 in which PBCH is used by the eNB (base station) to transmit
“system information” in the licensed spectrum, claim 33 in which the UE
receives the transmitted “system information” on the PBCH, and claim 42 in
which one or both of the PSS and SSS is received from the eNB when the
spectrum is licensed. To make up for this deficiency, the Examiner found
that Seo describes a licensed cellular communication system LTE-A which
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uses “PBCH to transmit the synchronization signals (PSS/SSS) of the Pcell
and Scell (Figure 15 and paragraphs 0164-0171).” Id. The Examiner found it
would have been obvious to one of ordinary skill in the art “to adopt the
licensed cellular telecommunications system LTE-A such as in Seo for the
licensed cellular telecommunications in Jovicic.” Id.

DISCUSSION
Appellant argues that the Examiner’s reasoning is conclusory and
lacks the required “articulated reasoning with rational underpinning.”
Appeal Br. 10 (emphasis omitted). Appellant states that the Examiner did
not provide a reason for combining Jovicic and Seo, but rather just states the
teachings of each. Id. at 11, 12 (“They are mere statements regarding the
teachings of the references, and the conclusion does not explain how they
amount to ‘articulated reasoning’ or ‘rational underpinning’ for the
described combination of Jovicic and Seo.”).
The Examiner responded:
Jovicic does not identify the standards for the licensed spectrum
(paragraph 0003); however, a skilled artisan would have been
motivated to adopt known wireless standards for the licensed
spectrum such LTE in Seo (paragraph 0089). Thus, the rational
underpinning to combine Jovicic and Seo is that the “licensed
spectrum” in Jovicic must be implemented with a
communication protocol wherein a skilled artisan would have
been motivated to implement known standards such as that
described in Seo.
Ans. 2.
Appellant filed a Reply Brief in response, but repeats the same
argument that the Examiner does not state a reason to combine Jovicic and
Seo. Reply Br. 2.
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Appellant’s argument does not persuade us that the Examiner erred in
finding the claims obvious in view of Jovicic and Seo.
“An examiner bears the initial burden of presenting a prima facie case
of obviousness.” In re Huai-Hung Kao, 639 F.3d 1057, 1066 (Fed. Cir.
2011). A prima facie case for obviousness “requires a suggestion of all
limitations in a claim,” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333,
1342 (Fed. Cir. 2003) and “a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007).
In this case, Appellant did not dispute that the combination of Jovicic
and Seo suggests all the limitations recited in the claim.2 Therefore, all
arguments regarding whether the specific limitations in the claims are
described or suggested by Jovicic and Seo are waived. See Ex parte Borden,
93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“Any bases for
asserting error, whether factual or legal, that are not raised in the principal
brief are waived.”).
In the Final Action, the Examiner found that Jovicic teaches utilizing
a licensed LTE-A spectrum, not its “specifics.” Final Act. 4. The “specifics”
of the licensed spectrum, the Examiner found, are described in Seo (id.), a
finding not disputed by Appellant. The Examiner explained it would have
been obvious to adopt the licensed LTE-A of Seo in Jovicic, which teaches
using a licensed spectrum. Id. It is clear that the “reason” to apply Seo to

2 To the extent our explanation of the claims and rejection is any different
from the Examiner’s, such explanation is only meant to be supplemental to
the Examiner’s statement of the rejection and the factual findings contained
in it. We rely solely on the Examiner’s findings in affirming the rejection.
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Jovicic is because Jovicic does not teach how to implement licensed
communication using PBCH, PSS, SSS, etc., as required by the claim. The
Examiner made this explicit in the Answer by explaining “that the ‘licensed
spectrum’ in Jovicic must be implemented with a communication protocol
wherein a skilled artisan would have been motivated to implement known
standards such as that described in Seo.” Ans. 2. Jovicic teaches, as found by
the Examiner, that “where the first frequency band is a licensed frequency
band, this has the advantage of adding an additional level of security simply
by the fact that the licensed frequency band is likely to be more reliable for
communications than a publically accessible frequency band.” Jovicic ¶ 17
(emphasis added).3 But because Jovicic does not describe how to the
licensed frequency band, the skilled worker would have had reason to look
for another publication to determine, as the Examiner put it, the “specifics”
of implementing it. Seo is cited for this purpose. In sum, we conclude that
the Examiner’s reasoning was not conclusory as asserted by Appellant, but
fact-based and reasonable.
The rejection of claims 30, 33, and 42 is affirmed for the reasons
provided by the Examiner. Claims 31, 32, 34–41, and 43–51 are not argued
separately and fall with claims 30, 33, and 42. 37 C.F.R. § 41.37(c)(1)(iv)
(2019).
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
30–51 103 Jovicic, Seo 30–51

3 Compare similar explanation in the Specification of the advantages of the
claimed subject matter. Supra at 4.
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TIME PERIOD
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)(iv).

AFFIRMED