Ex Parte Baldemair et al

Patent Trial and Appeal Board

Oct 31, 2016

12746899 (P.T.A.B. Oct. 31, 2016)

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.
12/746,899 06/08/2010 Robert Baldemair 4015-6897 / P26993-US2 2767
24112 7590 10/31/2016
COATS & BENNETT, PLLC
1400 Crescent Green, Suite 300
Cary, NC 27518
EXAMINER
LINDENBAUM, ALAN LOUIS
ART UNIT PAPER NUMBER
2466
MAIL DATE DELIVERY MODE
10/31/2016 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT BALDEMAIR and DAVID ASTELY
____________

Appeal 2015-003975
Application 12/746,899
Technology Center 2400
____________

Before ADAM J. PYONIN, JOSEPH P. LENTIVECH, and
MICHAEL M. BARRY, Administrative Patent Judges.

LENTIVECH, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s non-final rejection of claims 24, 27–30, 32–34, 36–38, and 41–
46. Claims 1–23, 25, 26, 31, 35, 39, and 40 have been canceled. See App.
Br. 15–20 (Claims App’x). We have jurisdiction over the pending claims
under 35 U.S.C. § 6(b).
We affirm.

1 According to Appellants, the real party in interest is Telefonaktiebolaget L
M Ericsson. App. Br. 2.
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STATEMENT OF THE CASE
Appellants’ Invention
Appellants’ invention generally relates to methods and devices for
transmitting and receiving data on a radio channel. Spec. 1:3–4. A
communication device maps and allocates a random access resource to a
frequency in an uplink sub-frame of a radio frame. Spec. 3:18–19. The
communication device then transmits an expression on the radio channel.
Spec. 3:19–20. The expression expresses allocation of the random access
resource to use in relation to at least one uplink sub-frame. Spec. 3:20–21.
Claim 24, which is illustrative, reads as follows:
24. A method, in a base station of an evolved UMTS
Terrestrial Radio Access Network (E-UTRAN) for transmitting
data on a radio channel, wherein a frame comprises subframes
allocated and split between uplink transmission and downlink
transmission, the method comprising:
mapping and allocating a plurality of random access
resources to a plurality of uplink subframes of a radio frame to
use within a random access period within a given cell;
wherein the plurality of random access resources is
allocated by:
determining if enough uplink subframes are
available to map each of the plurality of random access
resources within the cell to different non-overlapping
uplink subframes within the random access period using
only Time Division Multiplexing (TDM);
if the determining indicates that enough uplink
subframes are available, performing TDM of the random
access resources by assigning each of the plurality of
random access resources within the given cell to different
non-overlapping subframes within the random access
period without performing Frequency Division
Multiplexing (FDM); and
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if the determining indicates that not enough uplink
subframes are available, performing both TDM and FDM
for the plurality of random access resources within the
given cell such that the at least two random access
resources are mapped to different frequencies within the
same subframe; and
transmitting data on the radio channel comprising an
expression expressing the allocation.

Rejections
Claims 24, 30, 36, and 42 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Final Act. 2.
Claims 24, 27–30, 32–34, 36–38, and 41–46 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Bertrand
et al. (US 2009/0109919A1; published Apr. 30, 2009) (“Bertrand”) and
Random Access Slot Configurations, 3GPP TSG RAN WG1 #50bis, R1-
074144 (October 2007) (“3GPP”). Final Act. 3–15.
Claims 24, 27–30, 32–34, 36–38, and 41–46 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Fischer et
al. (US 2010/0172299A1; published July 8, 2010) (“Fischer”) and 3GPP.
Final Act. 15–27.

Issues on Appeal
Did the Examiner err in finding that claims 24, 30, 36, and 42 fail to
comply with the written description requirement under 35 U.S.C. § 112, first
paragraph?
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Did the Examiner err in finding that the combination of Bertrand and
3GPP teaches or suggests
wherein the plurality of random access resources is
allocated by:
determining if enough uplink subframes are
available to map each of the plurality of random access
resources within the cell to different non-overlapping
uplink subframes within the random access period using
only Time Division Multiplexing (TDM);
if the determining indicates that enough uplink
subframes are available, performing TDM of the random
access resources by assigning each of the plurality of
random access resources within the given cell to different
non-overlapping subframes within the random access
period without performing Frequency Division
Multiplexing (FDM); and
if the determining indicates that not enough uplink
subframes are available, performing both TDM and FDM
for the plurality of random access resources within the
given cell such that the at least two random access
resources are mapped to different frequencies within the
same subframe,
as recited in claim 24?
Did the Examiner err in finding that the combination of Fischer and
3GPP teaches or suggests
wherein the plurality of random access resources is
allocated by:
determining if enough uplink subframes are
available to map each of the plurality of random access
resources within the cell to different non-overlapping
uplink subframes within the random access period using
only Time Division Multiplexing (TDM);
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if the determining indicates that enough uplink
subframes are available, performing TDM of the random
access resources by assigning each of the plurality of
random access resources within the given cell to different
non-overlapping subframes within the random access
period without performing Frequency Division
Multiplexing (FDM); and
if the determining indicates that not enough uplink
subframes are available, performing both TDM and FDM
for the plurality of random access resources within the
given cell such that the at least two random access
resources are mapped to different frequencies within the
same subframe,
as recited in claim 24?

ANALYSIS
112 Rejection
Appellants contend the Examiner erred in rejecting claims 24, 30, 36,
and 42 under 35 U.S.C. § 112, first paragraph. App. Br. 7–8; Reply Br. 2–4.
Appellants cite to portions of the Specification (page 7, lines 30–34; page
14, lines 7–10, and page 15, lines 23–26) and contend that these portions
provide the required written description support for “determining if enough
uplink subframes are available to map each of the plurality of random access
resources within the cell to different non-overlapping uplink subframes
within the random access period using only Time Division Multiplexing
(TDM),” as recited in claims 24, 30, 36, and 42. App. Br. 7–8. In particular,
Appellants contend the Specification’s disclosure of “[t]he mapping step
may further comprise to map a plurality of random access resources to a
plurality of uplink subframes and wherein the plurality of random access
resources is allocated by first spreading out the plurality of random access
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resources over the plurality of uplink subframes in time first” (Spec. 14:7–
10) and “the control unit 201 may be arranged to allocate random access
resources that extend over a plurality of uplink subframes in time first and
may allocate random access resources at different frequencies when not
enough uplink subframes are available in time” (Spec. 15:23–26), “clearly
indicate that a determination is made of whether enough UL subframes are
available to map each random access resource using only TDM” (App.
Br. 8). Appellants contend the Specification discloses that random access
resources may be allocated to the uplink subframes in time first and then in
frequency “‘if and only if the number of UL subframes is not sufficient’ to
hold all random access resources.” Reply Br. 3 (citing Spec. 14:8–14).
Appellants contend “the claimed ‘determining’ is implicit in the ‘if and only
if’ language” of the cited portion of the Specification. Id.
In response, the Examiner finds
nowhere in the reproduced passages, or anywhere else in
Applicants’ Specification, is there any disclosure that an
explicit determination must be made of whether ‘enough uplink
subframes are available to map each of the plurality of random
access resources within the cell to different non-overlapping
uplink subframes within the random access period using only
Time Division Multiplexing (TDM).’

Ans. 29.
We find Appellants’ contentions persuasive. Whether a patent claim
satisfies the written description requirement of 35 U.S.C. § 112, paragraph 1
depends on whether the description “clearly allow[s] persons of ordinary
skill in the art to recognize that [the inventor] invented what is claimed.”
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991)
(internal quotation marks omitted) (quoting In re Gosteli, 872 F.2d 1008,
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1012 (Fed. Cir. 1989)); see also Ariad Pharm., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Here, as Appellants point out
(Reply Br. 3), the Specification discloses “the random access resources may
be allocated to the uplink subframes in time first and then in frequency if
and only if the number of UL [uplink] subframes is not sufficient to hold all
random access resources” (Spec. 14:12–14). One of ordinary skill in the art
would understand, therefore, that prior to allocating random access resources
to the uplink subframes in frequency, it must be determined whether the
number of UL subframes is sufficient to hold all of the random access
resources. As such, the Specification describes the claimed “determining” in
compliance with the requirements of under 35 U.S.C. § 112, first paragraph.
Accordingly, we do not sustain the Examiner’s rejections of claims
24, 30, 36, and 42 under 35 U.S.C. § 112, first paragraph.

§ 103 rejection based on Bertrand and 3GPP
CLAIM 24
Contention 1
Appellants contend the combination of Bertrand and 3GPP fails to
teach or suggest “performing both TDM [(Time Division Multiplexing)] and
FDM [(Frequency Division Multiplexing)] for the plurality of random access
resources within the given cell such that the at least two random access
resources are mapped to different frequencies within the same subframe,” as
recited in claim 24. App. Br. 8–9; Reply Br. 4–7. Appellants acknowledge
that Bertrand teaches performing FDM but contend that Bertrand fails to
teach or suggest performing both FDM and TDM, as required by claim 24.
App. Br. 8–9 (citing Bertrand, Fig. 2); Reply. Br. 5. Appellants contend
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Figure 2 of Bertrand, relied upon by the Examiner as teaching the disputed
limitation, “shows that FDM alone is performed for RA resources” and that
this interpretation is supported by the teachings of 3GPP. Reply. Br. 5–7
(citing 3GPP, Fig. 1; § 2.1).
We do not find Appellants’ contention persuasive because they are not
commensurate with the broadest reasonable interpretation of claim 24.
During examination, claims are given their broadest reasonable
interpretation consistent with the specification. See In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). “Construing claims
broadly during prosecution is not unfair to the applicant . . . because the
applicant has the opportunity to amend the claims to obtain more precise
claim coverage.” Id. Here, claim 24 includes steps that only need to be
performed if certain conditions precedent are met. See App. Br. 15, Claims
App’x; see also App. Br. 11 (stating that the “determining” step “serves as a
basis for determining whether to perform (1) TDM without FDM, or (2)
both TDM and FDM.” (emphasis added)). Specifically, claim 24 recites, in
pertinent part:
determining if enough uplink subframes are available to
map each of the plurality of random access resources within the
cell to different non-overlapping uplink subframes within the
random access period using only Time Division Multiplexing
(TDM);
if the determining indicates that enough uplink subframes
are available, performing TDM of the random access resources
by assigning each of the plurality of random access resources
within the given cell to different non-overlapping subframes
within the random access period without performing Frequency
Division Multiplexing (FDM); and
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if the determining indicates that not enough uplink
subframes are available, performing both TDM and FDM for the
plurality of random access resources within the given cell such
that the at least two random access resources are mapped to
different frequencies within the same subframe.
Id. (emphases added). Due to the language in the “performing both TDM
and FDM” step, logically, this step does not need to be performed after the
“performing TDM” step if the condition precedent recited in the
“performing both TDM and FDM” step is not met (i.e., the determining
indicates that enough uplink subframes are available). Based on the claim
limitations as written, the broadest reasonable interpretation of claim 24
encompasses an instance in which the method ends after performing TDM of
the random access resources when the determining indicates that enough
uplink subframes are available, such that the step of “performing both TDM
and FDM for the plurality of random access resources” need not be reached.
Thus, the broadest reasonable interpretation of claim 24 encompasses a
method where only the steps of
determining if enough uplink subframes are available to
map each of the plurality of random access resources within the
cell to different non-overlapping uplink subframes within the
random access period using only Time Division Multiplexing
(TDM); [and]
if the determining indicates that enough uplink subframes
are available, performing TDM of the random access resources
by assigning each of the plurality of random access resources
within the given cell to different non-overlapping subframes
within the random access period without performing Frequency
Division Multiplexing (FDM)
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are performed.2 Accordingly, Appellants’ contention is not persuasive of
error.
Contention 2
Appellants contend the combination of Bertrand and 3GPP fails to
teach or suggest “determining if enough uplink subframes are available to
map each of the plurality of random access resources within the cell to
different non-overlapping uplink subframes within the random access period
using only Time Division Multiplexing (TDM),” as recited in claim 24.
App. Br. 9–11.
We do not find Appellants’ contention persuasive. 3GPP teaches
“[d]epending on the RA load, one or more RA slots need to be allocated per
RA slot period” and “in order to minimize the RA receiver dimensioning . . .
the RA slots are multiplexed in time.” 3GPP, § 2.1 (“Time location of
Random Access slots”). 3GPP further teaches minimizing complexity of the
RA receiver by utilizing a pre-defined set of RA slots locations and that

2 The Board previously has construed similar method steps in this same
manner. See, e.g., Ex Parte Fleming, Appeal 2014-002849, 2014 WL
7146104 (PTAB Dec. 12, 2014) (expanded panel decision on rehearing), Ex
parte Urbanet, Appeal 2011-002606, 2012 WL 4460637 (PTAB Sept. 19,
2012), and Ex parte Katz, Appeal 2010-006083, 2011 WL 514314 (BPAI
Jan. 27, 2011); see also Applera Corp. v. Illumina, Inc., 375 Fed. Appx. 12,
21 (Fed. Cir. 2010) (unpublished) (affirming a district court’s interpretation
of a method claim as including a step that need not be practiced if the
condition for practicing the step is not met); Cybersettle, Inc. v. Nat’l
Arbitration Forum, Inc., 243 Fed. Appx. 603, 607 (Fed. Cir. 2007)
(unpublished) (“It is of course true that method steps may be contingent. If
the condition for performing a contingent step is not satisfied, the
performance recited by the step need not be carried out in order for the
claimed method to be performed.”).

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these slots locations are derived by applying a set of rules including “1.
minimize the number of RA slots occurring in the same sub-frame.” Id.
This teaching is similar to language in Appellants’ Specification, which
Appellants cited to as providing adequate written description support for this
limitation under 35 U.S.C. § 112, first paragraph. See App. Br. 7 (citing
Spec. 7:30–34). Further, 3GPP’s rule requiring the minimization of the
number of RA slots occurring in the same sub-frame teaches that, if
possible, each sub-frame includes no more than one RA slot (e.g., perform
TDM of the random access resources without performing FDM) and, when
there are not enough sub-frames to allow each sub-frame to include no more
than one RA slot, perform TDM and FDM for the random access resources.
As such, the combination of Bertrand and 3GPP teaches or suggests
determining if enough uplink subframes are available to
map each of the plurality of random access resources within the
cell to different non-overlapping uplink subframes within the
random access period using only Time Division Multiplexing
(TDM);
if the determining indicates that enough uplink subframes
are available, performing TDM of the random access resources
by assigning each of the plurality of random access resources
within the given cell to different non-overlapping subframes
within the random access period without performing Frequency
Division Multiplexing (FDM); and
if the determining indicates that not enough uplink
subframes are available, performing both TDM and FDM for the
plurality of random access resources within the given cell such
that the at least two random access resources are mapped to
different frequencies within the same subframe,
as recited in claim 24.
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For the foregoing reasons, we are not persuaded the Examiner erred in
rejecting claim 24, and claims 27–29, which depend from claim 24 and are
not separately argued, under 35 U.S.C. § 103(a) based on Bertrand and
3GPP.

CLAIM 30
Claim 30 is directed to a base station of an evolved UMTS Terrestrial
Radio Access Network. Although claim 30 recites functions that are
substantially similar to the steps recited in the method of claim 24, as noted
supra, claim 30 is directed to a base station. The broadest reasonable
interpretation of a claim directed to a base station having structure that
performs a function, which only needs to occur if a condition precedent is
met, still requires structure for performing the function should the condition
occur. This interpretation of claim 30 differs from the method claim because
the structure (i.e., a control circuit configured to carry out the recited
function should the recited condition be met) is present regardless of
whether the condition is met and the function is actually performed. Thus,
in order to show anticipation or obviousness of a claim reciting structure that
performs a function tied to a condition precedent, the Examiner must cite
prior art that discloses or renders obvious such structure.
Appellants do not separately argue claim 30 but, instead, rely on the
arguments presented for patentability of claim 24. App. Br. 11. We find the
combination of Bertrand and 3GPP teaches or suggests the disputed
limitations for the reasons discussed supra, particularly with respect to
Appellants’ second contention regarding the patentability of claim 24.
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Accordingly, we are not persuaded the Examiner erred in rejecting
claim 30 and claims 32–34, which depend from claim 30 and are not
separately argued, under 35 U.S.C. § 103(a) based on Bertrand and 3GPP.

CLAIMS 36–38 AND 41–46
Appellants do not separately argue claims 36–38 and 41–46 but,
instead, rely on the arguments presented for patentability of claim 24. App.
Br. 11. Accordingly, we are not persuaded the Examiner erred in rejecting
claims 36–38 and 41–46 under 35 U.S.C. § 103(a) based on the combination
of Bertrand and 3GPP for the reasons discussed supra.

§ 103 rejection based on Fischer and 3GPP
CLAIM 24
Appellants contend the Examiner erred in finding the combination of
Fischer and 3GPP teaches or suggests “performing both TDM and FDM for
the plurality of random access resources within the given cell such that the at
least two random access resources are mapped to different frequencies
within the same subframe,” as recited in claim 24. App. Br. 11–14; Reply
Br. 9–12.
Appellants’ arguments with respect to the combination of Fischer and
3GPP are predicated on the same construction of claim 24 as used in the
arguments with respect to Bertrand and 3GPP discussed supra. See App. Br.
8–14. For the reasons discussed supra, we find Appellants’ contention is not
commensurate with the broadest reasonable interpretation of claim 24 and,
therefore, is unpersuasive of error.
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Accordingly, we are not persuaded the Examiner erred in rejecting
claim 24, and claims 27–29, which depend from claim 24 and are not
separately argued, under 35 U.S.C. § 103(a) based on Fischer and 3GPP.

CLAIM 30
Appellants do not separately argue claim 30 but, instead, rely on the
arguments presented for patentability of claim 24. App. Br. 14. We find the
combination of Fischer and 3GPP teaches or suggests the disputed
limitations for the reasons discussed supra, particularly with respect to
Appellants’ second contention regarding the patentability of claim 24.
Accordingly, we are not persuaded the Examiner erred in rejecting
claim 30 and claims 32–34, which depend from claim 30 and are not
separately argued, under 35 U.S.C. § 103(a) based on Fischer and 3GPP.

CLAIMS 36–38 AND 41–46
Appellants do not separately argue claims 36–38 and 41–46 but,
instead, rely on the arguments presented for patentability of claim 24. App.
Br. 14. Accordingly, we are not persuaded the Examiner erred in rejecting
claims 36–38 and 41–46 under 35 U.S.C. § 103(a) based on the combination
of Fischer and 3GPP for the reasons discussed supra.

DECISION
We reverse the Examiner’s rejections of claims 24, 30, 36, and 42
under 35 U.S.C. § 112, first paragraph.
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We affirm the Examiner’s rejections of claims 24, 27–30, 32–34, 36–
38, and 41–46 under 35 U.S.C. § 103(a) based on the combination of
Bertrand and 3GPP.
We affirm the Examiner’s rejections of claims 24, 27–30, 32–34, 36–
38, and 41–46 under 35 U.S.C. § 103(a) based on the combination of Fischer
and 3GPP.
Because at least one rejection encompassing all claims on appeal is
affirmed, the decision of the Examiner is affirmed.
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