Ex Parte Hara et al

Patent Trial and Appeal Board

Nov 22, 2016

11697053 (P.T.A.B. Nov. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111697,053 0410512007 Y oshitaka Hara
22850 7590 11/25/2016
OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP,
1940 DUKE STREET
ALEXANDRIA, VA 22314
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
306610US2 5627
EXAMINER
BURD, KEVIN MICHAEL
ART UNIT PAPER NUMBER
2632
NOTIFICATION DATE DELIVERY MODE
11/25/2016 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):
patentdocket@oblon.com
oblonpat@oblon.com
ahudgens@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOSHITAKA HARA, DAMIEN CASTELAIN, and
NORIYUKI FUKUI
Appeal2016-001542
Application 11/697 ,053
Technology Center 2600
Before ALLEN R. MacDONALD, MICHAEL M. BARRY and
MICHAEL J. ENGLE, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-001542
Application 11/697 ,053
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 25-29. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b ).
Exemplary Claim
Claim 25 under appeal reads as follows (emphasis/brackets added):
2 5. A method for transferring to a first
telecommunication device channel quality indication
information determined by a second telecommunication device
for a plurality of frequency sub-bands, the telecommunication
devices being linked through a wireless telecommunication
network using an uplink and a downlink, the wireless
telecommunication network using the plurality of frequency
sub-bands, the method comprising steps executed by the second
telecommunication device of:
[ (A)] determining at least one first channel quality
indication for at least one of the plurality of frequency sub-
bands of the downlink;
[(B)] determining a second channel quality indication
which is a single representative quality for the plurality of
frequency sub-bands of the do\xlnli11k;
[(C)] transmitting, through the uplink, the first channel
quality indication to the first telecommunication device in a
first time period; and
[(D)] transmitting, through the uplink, the second channel
quality indication to the first telecommunication device
[ (i)] in a second time period different from the first time
period,
[(ii)] a length of the second time period being shorter
than a length of the first time period, and
[(iii)] positions within one time-frame of both the first
time period for transmitting the first channel quality indication
and the second time period for transmitting the second channel
quality indication being unchanged through at least two
consecutive cyclic time-frames of the uplink.
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Rejections
The Examiner rejected claims 25-29 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Khan (US 2007 /0026813 Al;
Feb. 1, 2007), and Matthews et al. (US 2006/0004938 Al; Jan. 5, 2006). 1
Appellants ' Contentions2
1. Appellants contend that the Examiner erred in rejecting claim 25
under 35 U.S.C. § 103(a) because:
[The] Office Action at the bottom half of p. 5 acknowledges that
Khan does not disclose transmitting and receiving the first
channel quality indication and the second channel quality
indication in different time periods. For this feature, the
outstanding Office Action relies on Matthews et al. at the bottom
of p. 5 and the top of p. 6. However, applying Matthews et al. in
the manner stated in the outstanding Office Action is reading
features into Matthews et al. which do not exist in Matthews et
al. and it is improper to assert that Matthews et al. discloses or
suggests the feature of transmitting two different channel quality
indications in different time periods.
App. Br. 8.
1 Separate patentability is not properly argued for claims 26-29. Rather,
Appellants address these claims by referencing the arguments for claim 25.
App. Br. 11-13. Then, Appellants merely assert the cited prior art does not
teach or render obvious broadly stated claim limitations (e.g., "transmission
method" (App. Br. 12)). Without more, this fails to constitute a sufficient
argument on the merits. See 37 C.F.R. § 41.37(c)(l)(iv); In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011). Thus, the rejection of these claims turns
on our decision as to claim 25. Except for our ultimate decision, these
claims are not discussed further herein.
2 Appellants' Appeal Brief argues the remarks in the Advisory Action
(paragraph bridging 8-9). This argument (and the Examiner's response
thereto) is not relevant to the Final Rejection on appeal before us as the
Advisory Action remarks are not the basis for that rejection. This argument
is not discussed further herein.
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The outstanding Office Action has extensive speculation
regarding what can occur in Matthews et al., but this is not
supported by the teaching of Matthews et al. or other prior art.
For example, the top of p. 6 of the Office Action states, "The
CQis for each or all sub bands can comprise time slot 21 OA and
the CQI for the average value of the sub bands can comprise a
subsequent time slot such as time slot 210C." This is not based
on any teaching in the prior art but is merely unsupported
speculation. Because the prior art neither discloses nor suggests
the use of different time periods for transmitting channel quality
indications of the "at least one of the plurality of frequency
sub-bands of the downlink," independent Claim 25 is patentable
over the prior art.
App. Br. 9.
2. Appellants contend that the Examiner erred in rejecting claim 25
under 35 U.S.C. § 103(a) because:
A purpose[ in Khan] of transmitting the total average CQI
and the relative difference in a CQI feedback message is to
minimize the amount of feedback overhead. In view of this
desire to minimize the amount of feedback overhead, there is no
reason to transmit the total average and the relative differences
separately, because transmitting them separately requires more
bits to transmit the average CQI and the difference in separate
messages as compared to one message.
Moreover, Matthews et al. merely discloses that there are
plural isolated RF time slots that are separated by periods of
signal processing during which the radio is inactive. Even if
information about the CQI is transmitted separately, the next
information to be transmitted is also information in the form of
one message comprised of both the average CQI and the
difference.
App. Br. 10, emphasis added.
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Application 11/697 ,053
3. Appellants also contend that the Examiner erred in rejecting claim
25 under 35 U.S.C. § 103(a) because:
Modifying Khan based on the teachings of Matthews et al.
results in a performance degradation, and therefore there would
be no motivation to modify Khan in the manner set forth in the
outstanding Office Action.
App. Br. 10.
4. Appellants also contend that the Examiner erred in rejecting claim
25 under 35 U.S.C. § 103(a) because:
Claim 25 recites:
positions within one time-frame of both the first
time period for transmitting the first channel quality
indication and the second time period for
transmitting the second channel quality indication
being unchanged through at least two consecutive
cyclic time-frames of the uplink.
Emphasis added. Thus, Claim 25 clearly requires that positions
within one time-frame "be unchanged through at least two
consecutive cyclic time-frames of the uplink." If there is a
stopping of the transmission of data when there is no more data
to be transmitted and then a starting, there is no expectation that
positions within one time-frame would be unchanged through
at least two consecutive cyclic time-frames of the uplink, as
claimed.
Reply Br. 2-3.
Issues on Appeal
Did the Examiner err in rejecting claim 25 as being obvious?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
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Application 11/697 ,053
disagree with Appellants' conclusions. Except as noted herein, we adopt as
our own ( 1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken and (2) the reasons set forth by the Examiner
in the Examiner's Answer in response to Appellants' Appeal Brief. We
concur with the conclusions reached by the Examiner. We highlight the
following additional points.
As to Appellants' above contention 1, we disagree. Excluding the
findings that "Khan does not disclose the data content to be transmitted is
sent at a first and second time period where the second time period is
different than the first time period (Ans. 19) and that "Khan does not
disclose separating this [CQI feedback] data content into multiple
transmissions at different time periods" (Ans. 21) as discussed below, and
excluding the paragraph bridging pages 21-22 of the Answer in response to
Appellants' Advisory Action argument, we otherwise agree with the
Examiner's response at pages 18-23.
Although not necessary for our decision, we conclude that the
Examiner (and Appellants) has (have) adopted an unnecessarily restrictive
construction of the time periods of claim 25. We find no particular
limitation in Appellants' Specification beyond what an artisan of ordinary
skill would understand the term to mean on its face, i.e., a time of some non-
zero length. We determine nothing more to be required by the term.
Although we agree with the Examiner that Matthews teaches time slots for
transmitting data at different time periods, we disagree with both the
Examiner's and Appellants' conclusions that Khan does not disclose the data
content to be transmitted is sent at a first and second time period where the
second time period is different than the first time period. Rather, we find
that Khan explicitly teaches this limitation at paragraphs 45--4 7. The overall
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message of Khan (with an overall time period) when transmitted is divided
into plural bits (or groups of bits) which each have their own time period
when transmitted. That the CQI message in Khan is a single message is of
no moment. This is consistent with Appellants' Specification which
discloses that a frame "is ... constituted at least by a header field and a
payload field which comprises classical data .... " Spec. 12: 1-2. We
understand this description of a frame to be a single message. Further,
Appellants' Specification teaches that a single frame can have two time slots
TS 1 and TS2, each for different data content (e.g., CQI 201 in the first time
slot and Ave 201 in the second time slot). Spec. 22:3-11. Therefore, the
multi-bit CQI message in Khan is consistent with such a multiple time slot
frame. See also Claim 25 ("one time-frame of both the first time period ...
and the second time period").
As to Appellants' above contention 2, we disagree. Appellants'
arguments are not commensurate with the scope of the claim language.
Contrary to Appellants' argument that the claim requires "separate
messages" (App. Br. 10), the claim language "first time period" and "second
time period different from the first time period" in no way requires the
information about the CQI be transmitted in separate messages. Only
different time periods are required and as discussed above, Khan has
multiple different time periods within its one message.
As to Appellants' above contention 3, we disagree. We are not
persuaded because essentially Appellants' argument is premised on a
"physical" or "bodily" incorporation of method step limitations of one
reference into the method of the other reference. This is not the standard.
See In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary
that the inventions of the references be physically combinable to render
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obvious the invention under review."); In re Keller, 642 F.2d 413, 425
(CCP A 1981) (The "test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference . . . . Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill in the art.").
Moreover, "[a] reference must be considered for everything it teaches by
way of technology and is not limited to the particular invention it is
describing and attempting to protect." EWP Corp. v. Reliance Universal
Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (emphasis omitted).
The Examiner did not suggest the method steps of Matthews should
be bodily incorporated into the method of Khan. Rather, the Examiner
relied on Matthews to show it is known in the prior art to use time slots for
transmitting data at different time periods. Final Act. 5---6. Appellants go
beyond this to incorporate limitations (e.g., discontinuity) from Matthews
which were not relied upon by the Examiner, and then argues the limitations
the Examiner did not rely upon. We are unpersuaded by this form of
argument.
As to Appellants' above contention 4, contrary to Appellants'
statement ("This Reply Brief is responsive to the Examiner's Answer"
(Reply Br. 1) ), Appellants present for the first time a new argument against
the rejections. Appellants' previous mention of the "unchanged through at
least two consecutive cyclic time-frames" was in the Claims Appendix
presentation of claim 25, and was not as any particularized argument
directed to the "unchanged through at least two consecutive cyclic time-
frames" limitation.
In the absence of a showing of good cause by Appellants, we decline
to consider an argument raised for the first time in the Reply Brief. This is
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Application 11/697 ,053
because, as the Examiner has not been provided a chance to respond, and in
the absence of a showing of good cause by Appellants, these arguments are
deemed waived. See 37 C.F.R. § 41.41(b)(2) (2012); In re Hyatt, 211 F.3d
1367, 1373 (Fed. Cir. 2000) (noting that an argument not first raised in the
brief to the Board is waived on appeal); Ex parte Nakashima, 93 USPQ2d
1834, 1837 (BP AI 2010) (informative) (explaining that arguments and
evidence not timely presented in the principal Brief, will not be considered
when filed in a Reply Brief, absent a showing of good cause explaining why
the argument could not have been presented in the Principal Brief); Ex parte
Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative) ("Properly
interpreted, the Rules do not require the Board to take up a belated argument
that has not been addressed by the Examiner, absent a showing of good
cause."). Appellants have provided this record with no such showing of
good cause. 3
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 25-29 as being
unpatentable under 35 U.S.C. § 103(a).
(2) Claims 25-29 are not patentable.
3 Although not necessary for our decision, if we were to consider
Appellants' argument, we would be unpersuaded. We conclude the argued
limitation merely requires that a message frame be identically consecutively
repeated. We deem this to be well within the skill in the art. Moreover,
"[i]t is well settled that the mere duplication of parts has no patentable
significance unless a new and unexpected result is produced, and we are of
the opinion that such is not the case here." In re Harza, 274 F.2d 669, 671
(CCPA 1960).
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DECISION
The Examiner's rejection of claims 25-29 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED4
4 As the Examiner has shown that all the claims are unpatentable, we do not
further reject Appellant's claims 25-29 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
However, should there be further prosecution of these claims, the
Examiner's attention is directed to our following concerns.
On September 3, 2014, Appellants filed an amendment adding similar
language to each of claims 25-29. All pending claims now include language
requiring "a length of the second time period being shorter than a length of
the first time period" (Claim 25, emphasis added). \X/e have revie\x1ed
Appellants' Specification and have not found sufficient support for the
above bold-italicized limitation.
Appellants identify Figure 7b as supporting this claim language (App.
Br. 4). While the "being shorter" limitation may be obvious in view of
Figure 7b, our review finds Figure 7b does not provide proper written
description support for the limitation. See Ariad Pharms., Inc. v. Eli Lilly
and Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) ("[A] description that merely
renders the invention obvious does not satisfy the [written description]
requirement.)"
Rather, Appellants' use of the proportions shown only in Figure 7b to
justify the claim limitation is misguided. "[I]t is well established that patent
drawings do not define the precise proportions of the elements and may not
be relied on to show particular sizes if the specification is completely silent
on the issue." Hockerson-Halberstadt, Inc. v. Avia Group Int 'l, Inc., 222
F.3d 951, 956 (Fed. Cir. 2000); In re Wright, 569 F.2d at 1124, 1127 (CCPA
1977) ("Absent any written description in the specification of quantitative
values, arguments based on measurement of a drawing are of little value.").
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