Ex Parte Heo et al

Patent Trial and Appeal Board

Oct 20, 2014

11958709 (P.T.A.B. Oct. 20, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/958,709 12/18/2007 Youn-Hyoung Heo 678-3404 1583
66547 7590 10/20/2014
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
GESESSE, TILAHUN
ART UNIT PAPER NUMBER
2649
MAIL DATE DELIVERY MODE
10/20/2014 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 YOUN-HYOUNG HEO, JU-HO LEE, and JOON-YOUNG CHO
____________________

Appeal 2012-009901
Application 11/958,709
Technology Center 2600
____________________

Before ALLEN R. MacDONALD, CAROLYN D. THOMAS and
BETH Z. SHAW, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-009901
Application 11/958,709

2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
25–42, 61, and 62.1 We have jurisdiction under 35 U.S.C. § 6(b).

Exemplary Claims
Exemplary claims 25 and 27 under appeal read as follows (emphasis
added):
25. A method for transmitting data and control information in a
wireless communication system, the method comprising the steps of:
generating the control information;
when the control information and information data to be
transmitted have occurred in a same Transmission Time Interval
(TTl), determining a number of symbols for transmission of the
control information in consideration of a quantity of the information
data to be transmitted;
multiplexing the information data and the control information;
and
transmitting the multiplexed information data and control
information.
27. The method of claim 25, wherein the number of symbols for
transmission of the control information can be determined by
considering a quantity of scheduled resources with the quantity of
information data to be transmitted.

1 We do not find in the record that claims 61 and 62 have been cancelled.
Contrary to the Examiner’s statement at page 2 of the Answer, the
cancellation of these claims was explicitly denied by the Examiner. (“Do not
entered [sic]” Advisory Action 3).
Appeal 2012-009901
Application 11/958,709

3
Rejections on Appeal
1. The Examiner rejected claims 25–42 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Montojo (US 2008/0095110
A1; published Apr. 24, 2008) and Applicants’ Admitted Prior Art (AAPA).
2. The Examiner rejected claims 61 and 62 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement. 2
Appellants’ Contentions
1. Appellants contend that the Examiner erred in rejecting the
independent claims 25 and 34 under 35 U.S.C. § 103(a) because AAPA fails
to disclose “determining a number of symbols for transmission of the control
information in consideration of a quantity of the information data to be
transmitted” as alleged by the Examiner. (App. Br. 8) (emphasis added).
2. Particularly, Appellants contend that the Examiner erred in
rejecting claims 25 and 34 under 35 U.S.C. § 103(a) because the Examiner
relies on a teaching of quality rather than quantity. Appellants quote from
the Examiner’s Final rejection at page 5:
Admission teaches it is necessary to allocate the scheduled M
input symbols (control symbol and data symbols) based on the
information quality of each of the data channel and control
channel to be transmitted (see page 3, lines 12-14) where
determination of number symbols for transmission of the
control channel in consideration of quality data channel.
Further more [sic], Admission (page 3 lines 26-30) teaches data

2 Appellants explicitly agree that claims 61 and 62 fail to comply with
35 U.S.C. § 112, first paragraph. (App. Br. 15–16). We affirm this rejection
pro forma. Except for our ultimate decision, these claims are not discussed
further herein.
Appeal 2012-009901
Application 11/958,709

4
rate is reduced by the amount corresponding to control channel
(In consideration of quality data transmitted).
(App. Br. 10) (emphasis added).
Issues on Appeal
Did the Examiner err in rejecting claims 25–42 as being unpatentable
under 35 U.S.C. § 103(a) because the combination of Montojo and AAPA
fails to disclose “determining a number of symbols for transmission of the
control information in consideration of a quantity of the information data to
be transmitted,” as required by the claims?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred.
As to Appellants’ above contentions, we agree with Appellants. The
Examiner’s Final rejection at page 7 relies on the AAPA to teach the
claimed determining a number of symbols for transmission of the control
information based on making of higher quality the transmission of data. The
rejection is silent as to any rational as to why the AAPA teaches the
limitation of determining a number of symbols for transmission of the
control information in consideration of a quantity of the information data.
In light of this, we reverse this rejection.
Appeal 2012-009901
Application 11/958,709

5

CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 25–42 as being unpatentable under 35 U.S.C. § 103(a).
(2) The Examiner did not err in rejecting claims 61 and 62 as failing
to comply with the written description requirement under 35 U.S.C. § 112,
first paragraph.
(3) On this record, claims 25–42 have not been shown to be
unpatentable.
(4) Claims 61 and 62 are not patentable.

DECISION
The Examiner’s rejection of claims 25–42 as being unpatentable
under 35 U.S.C. § 103(a) is reversed.
The Examiner’s rejection of claims 61 and 62 as failing to comply
with the written description requirement under 35 U.S.C. § 112, first
paragraph, 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-IN-PART

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