Ex Parte Baldemair et alDownload PDFPatent Trial and Appeal BoardDec 20, 201613766111 (P.T.A.B. Dec. 20, 2016) Copy Citation 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. 13/766,111 02/13/2013 Robert Baldemair HE604US3 9829 47391 7590 12/22/2016 THOMAS T PRISM AN EXAMINER PanOptis Patent Management, LLC P.O. Box 250649 LINDENBAUM, ALAN LOUIS Plano, TX 75025 ART UNIT PAPER NUMBER 2466 NOTIFICATION DATE DELIVERY MODE 12/22/2016 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): docketing@panoptis.com 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 2015-004590 Application 13/766,111 Technology Center 2400 Before LINZY T. MCCARTNEY, MELISSA A. HAAPALA, and SCOTT E. BAIN, Administrative Patent Judges. HAAPALA, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. We have reviewed Appellants’ contentions in the Briefs, the Examiner’s rejection, and the Examiner’s response to Appellants’ contentions. We agree with Appellants that the Examiner has not established the Background of Applicant’s Specification (AAPA) discloses jointly encoding a preamble format with a first random access Appeal 2015-004590 Application 13/766,111 configuration, forming an extended random access configuration (“jointly encoding” limitation), as recited in independent claim 1. The Examiner interprets the statement in AAPA that “6 bits are required to indicate preamble format (2 bits) and RA subframe configuration (4 bits)” as disclosing a code that represents preamble format and a code that represents a subframe configuration are encoded together (jointly), and, therefore, discloses the “jointly encoding” limitation. Ans. 14. The Examiner finds that “joint encoding” does not require interdependence between the bits of the “jointly encoded” code.” Ans. 15. The Examiner further finds a “jointly encoded” codeword (e.g., “010001”) does not inherently indicate a different combination than the concatenation of separately encoded codewords (e.g., “01” and “0001”). Ans. 15—16. During examination of a patent application, pending claims are given their broadest reasonable interpretation in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad, of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Where the specification makes clear that the invention does not include a particular feature, that feature is deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification, might be considered broad enough to encompass the feature in question. SciMedLife Sys, Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001). We agree with Appellants contentions (App. Br. 7—12; Reply Br. 7—8) that the Examiner’s construction of “joint encoding” as encompassing the concatenation (uniting) of two separately encoded keywords is unreasonably broad in light of the Specification. In particular, we agree with Appellants’ 2 Appeal 2015-004590 Application 13/766,111 argument (App. Br. 7) that the Specification contrasts the “joint encoding” approach it describes with the approach described in the Background Section. See Spec. 7:30-8:2 (describing that joint encoding of RA configuration and preamble format improves signaling and reduces the number of combinations to enable reuse of FDD signaling). We further agree with Appellants (App. Br. 8) that the Specification consistently explains the encoding of the RA configuration and the preamble format as occurring in a single action, and illustrates that joint encoding produces one code that represents both the preamble format and the RA configuration. See e.g., Spec., Fig. 3 (one code (Cl) represents the preamble format (C2) and the RA configuration (C3+C4)), 10:14—15 (one step to jointly encode a preamble format with a first random access configuration), 11:11—15 (describing Fig. 3). Thus, Appellants persuade us that the cited section of AAPA does not disclose the “jointly encoding” limitation because it describes two separately encoded sets of bits (2 bits encoded as the preamble format, and 2 bits encoded as the RA configuration). See Spec. 3:4—6. For the reasons stated above, Appellants persuade us of error in the rejection of claim 1. Accordingly, we do not sustain the 35 U.S.C. § 102(a) rejection of: (1) claim 1; (2) independent claim 7, which contains a limitation substantially similar to the “jointly encoding” limitation; and (3) claims 3, 4, 8, 10, 11, which depend from claims 1 and 7. Independent claims 14 and 17 recite “decoding the extended random access configuration, thereby retrieving a preamble format and a first random access configuration.” For this limitation, the Examiner relies on the same findings made with respect to the “jointly encoding” limitation. Compare Final Act. 5 with id. at 2. We agree with Appellants (App. Br. 13) 3 Appeal 2015-004590 Application 13/766,111 that these claims are allowable for similar reasons discussed previously. Accordingly, we do not sustain the 35 U.S.C. § 102(a) rejection of claims 14, 17, and their dependent claims 16, 17, 19 and 20. We further do not sustain the 35 U.S.C. § 103(a) rejection of dependent claims 2, 9, 15, and 18 as being obvious over AAPA. DECISION We affirm the Examiner’s decision to reject claims 1—20. REVERSED 4 Copy with citationCopy as parenthetical citation