Ex Parte Jiang et al

Patent Trials and Appeals Board

Jun 18, 2019

14749732 - (D) (P.T.A.B. Jun. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/749,732 06/25/2015
29683 7590 06/20/2019
Harrington & Smith, Attorneys At Law, LLC
4 RESEARCH DRIVE, Suite 202
SHELTON, CT 06484-6212
FIRST NAMED INVENTOR
Hai Jiang
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.
l 15.0011.U2(US) 9901
EXAMINER
ELPENORD, CANDAL
ART UNIT PAPER NUMBER
2473
NOTIFICATION DATE DELIVERY MODE
06/20/2019 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):
USPTO@HSPATENT.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HAI JIANG, JIAN FENG KANG, XIAOYI WANG, CHAO WEI,
YI WU, and DONG MEI ZHANG
Appeal2018-006706
Application 14/749,732
Technology Center 2400
Before ST. JOHN COURTENAY III, JOYCE CRAIG, and
JASON M. REPKO, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 4--8, 10, 13-17, and 19. Claims 2, 3, 11, and 12
are canceled. The Examiner indicates that "[ c ]laims 9 and 18 are objected to
as being dependent [from] a rejected base claim, but would be allowable if
rewritten in independent form including all of the limitations of the base
claim and any intervening claims." Final Act. 12. We have jurisdiction over
the pending claims under 35 U.S.C. § 6(b).
We reverse.
1 According to Appellants, the real party in interest is "HMD Global Oy,
Karaportti 2, 02610 Espoo, Finland." App. Br. 2.
Appeal2018-006706
Application 14/749,732
STATEMENT OF THE CASE
Embodiments of Appellants' invention relate to "a method and
apparatuses for providing access to a wireless network, such as - but not
limited to - Universal Mobile Communication System (UMTS) or Long
Term Evolution (L TE) networks or Mobile WiMAX (Worldwide
Interoperability for Microwave Access)." Spec. 1.
Exemplary Claim
1. A method comprising:
providing a cell type indication based on at least one of a
preamble and a header portion of a broadcast signal; and
transmitting by a cell of a wireless network said
broadcast signal with a cell type indication set by the preamble
or the header portion of the broadcast signal in accordance with
one of a first cell type or a second cell type of the cell, wherein
said first cell type is a femto cell and said second cell type is a
macro cell.
Claims Appendix, App. Br. 48.
Rejections
A. Claims 1, 4, 10, 13, and 19 are rejected under pre-AIA 35 U.S.C.
§ I03(a) as being obvious over Laroia et al. (US 2005/0250502 Al,
published Nov. 10, 2005) ("Laroia"), in view of Hom et al. (US
2009/0132675 Al, published May 21, 2009) ("Hom"), based upon the filing
date of Hom's provisional Application No. 60/988,646, filed on Nov. 16,
2007, See provisional application Appendix). 2
2 We note the Examiner omits claim 19 from the heading of Rejection A
(Final Act. 3), but sets forth a detailed statement of rejection for claim 19
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Application 14/749,732
B. Claims 5 and 14 are rejected under pre-AIA 35 U.S.C. § I03(a) as
being obvious over Laroia, Hom, and further in view of Parkvall et al. (US
8,169,992 B2, issued May 1, 2012) ("Parkvall").
C. Claims 6-8 and 15-17 are rejected under pre-AIA 35 U.S.C. § I03(a)
as being obvious over Laroia, Hom, and further in view of Wiberg et al. (US
6,628,946 B 1, issued Sept. 30, 2003) ("Wiberg").
ANALYSIS
Rejection A under§ 103(a) of Claims 1, 4, 10, 13, and 19
Issue: Is the Hom patent application publication (US 2009/0132675
Al) available as prior art? In particular, we decide the dispositive question
of whether Hom '675 is entitled to the benefit of its earliest (60/988,646)
provisional application's filing date of November 16, 2007, this date
antedating Appellants' PCT international filing date of June 6, 2008 (WO
2009/146725 Al).
Analysis
Appellants contend the obviousness rejections are improper because
Hom is not available as prior art. App. Br. 4. We note Appellants'
application 14/749,732 on appeal has an effective filing date of June 25,
2015. However, '732 is a continuation of application 12/996,033, filed on
December 3, 2010. Application '033 is a national stage entry (pursuant to
the provisions of 35 U.S.C. § 371) of PCT/EP2008/004543, having an
international filing date of June 6, 2008. Thus, Appellants claim they are
entitled to the benefit of their '543 PCT international filing date of June 6,
under the heading. Final Act. 7-9. We have corrected the omission of claim
19 from the heading of Rejection A, supra.
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Appeal2018-006706
Application 14/749,732
2008, under the provisions of pre-AIA 35 U.S.C. § 119(a). Appellants
describe the chain of priority in the first paragraph of their '732
Specification:
This application is a continuation of U.S. Patent Serial No.
12/996,033, filed on December 3, 2010, which is a national
stage application of PCT/EP2008/004543, filed on June 6,
2008, the disclosures of which are hereby incorporated by
reference in their entirety.
Spec. 1, 11. 3---6; see also App. Br. 5.
Regarding the '732 continuing application ( on appeal) filed under pre-
AIA 35 U.S.C. § 120, our reviewing court provides applicable guidance:
Under§ 120, a patent is entitled to the priority date of an earlier
filed application if ( 1) the written description of the earlier filed
application discloses the invention claimed in the later filed
application sufficient to satisfy the requirements of§ 112; (2) the
applications have at least one common inventor; (3) the later
application is filed before the issuance or abandonment of the
earlier filed application; and (4) the later application contains a
reference to the earlier filed application. In addition, if the later
filed application claims priority through the heredity of a chain
of applications, each application in the chain must satisfy§ 112.
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571 (Fed. Cir.
1997).
In re NTP, Inc., 654 F.3d 1268, 1277 (Fed. Cir. 2011).
Turning to Hom (US 2009/0132675 Al), as relied upon by the
Examiner as evidence in support of Rejections A, B, and C, we note Hom's
claim for the benefit of priority under 35 U.S.C. § 119 is applicable to four
commonly-owned provisional applications:
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Appeal2018-006706
Application 14/749,732
CLAIM OF PRIORITY UNDER 35 U.S.C. § 119
This application claims the benefit of and priority to commonly
owned U.S. Provisional Patent Application No. 60/988,646,
filed Nov. 16, 2007, and assigned Attorney Docket No.
072326Pl; U.S. Provisional Patent Application No. 61/059,654,
filed Jun. 6, 2008, and assigned Attorney Docket No. 081769Pl;
U.S. Provisional Patent Application No. 61/074,114, filed Jun.
19, 2008, and assigned Attorney Docket No. 081869Pl; U.S.
Provisional Patent Application No. 61/074,935, filed Jun. 23,
2008, and assigned Attorney Docket No. 081893Pl; the
disclosure of each of which is hereby incorporated by reference
herein.
Hom ,r 1 ( emphasis added).
Assuming arguendo that Appellants are entitled under pre-AIA
35 U.S.C. § 119 to the benefit of their June 6, 2008 '543 PCT international
filing date, we find only the earliest-filed Hom provisional application '646
(filed on Nov. 16, 2007) is relevant to deciding this appeal, because the three
remaining Hom provisional applications are filed on or after Appellants'
PCT international filing date of June 6, 2008.
Thus, Appellants contend:
under pre-AIA 35 U.S.C. § 102(e), only one of [Hom's]
provisional applications, number 60/988,646 ( also referred to as
"the provisional application" herein), filed on November 16,
2007, is filed before the invention (the earliest priority date of
June 6, 2008) by the inventors herein. Therefore, only
provisional [application] number 60/988,646, filed on
November 16, 2007 can be used to provide the priority date of
Hom under 35 U.S.C. § 102(e) for citation against the instant
application.
App. Br. 7 (emphasis added).
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Appeal2018-006706
Application 14/749,732
For Hom '675 to be entitled to the benefit of the '646 provisional
filing date ofNovember 16, 2007, Hom '646 must satisfy 35 U.S.C.
§ 119( e )(1) (2006), which provides that:
An application for patent filed under section 11 l(a) or section
363 of this title for an invention disclosed in the manner
provided by the first paragraph of section 112 of this title in a
provisional application filed under section 111 (b) of this title,
by an inventor or inventors named in the provisional
application, shall have the same effect, as to such invention, as
though filed on the date of the provisional application filed
under section 111 (b) of this title ....
35 U.S.C. § 119(e)(l) (2006) (emphases added).
In addition,
the specification of the provisional must 'contain a written
description of the invention and the manner and process of
making and using it, in such full, clear, concise, and exact
terms,' 35 U.S.C. § 112, ,r 1, to enable an ordinarily skilled
artisan to practice the invention claimed in the non-provisional
app li cation.
Dynamic Drinkware, LLC v. Nat 'l Graphics, Inc., 800 F.3d 1375, 1378
(Fed. Cir. 2015) (quoting New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co.,
298 F.3d 1290, 1294 (Fed. Cir. 2002)) (emphasis added). Also, Examiners
are instructed that "the reference date under pre-AIA 35 U.S.C. 102(e) of a
U.S. patent may be the filing date of a relied upon provisional application
only if at least one of the claims in the patent is supported by the written
description of the provisional application in compliance with pre-AIA 35
U.S.C. 112, first paragraph." MPEP § 2136.03(III) (emphasis added). 3
3 MPEP § 2136.03(III) ("The pre-AIA 35 U.S.C. 102(e) critical reference
date of a U.S. patent or U.S. application publications and certain
international application publications entitled to the benefit of the filing date
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Appeal2018-006706
Application 14/749,732
In applying the guidance of Dynamic Drinkware here, we do not
presume that Hom's '646 provisional application, filed on November 16,
2007, satisfies the statutory requirements of providing written description
support and enablement for the claims of Hom's '675 utility patent
application publication, filed on November 12, 2008.
Because there is no presumption of support, the burden falls upon the
Examiner seeking to rely upon the Hom '646 provisional filing date
(November 16, 2007) to provide evidence that at least one of the claims of
the non-provisional Hom '675 patent application publication is fully
supported and enabled by the specification (including the appendix) of
Hom's '646 provisional application. See Dynamic Drinkware, 800 F.3d at
1378.
Appellants correctly apply the guidance of Dynamic Drinkware and
argue: "the specification of [the] provisional application must support the
claims of the later filed and cited utility application in order for the utility
application to claim the benefit of the provisional application." App. Br. 8
( emphasis added).
of a provisional application under 35 U.S.C. 119(e) is the filing date of the
provisional application with certain exceptions if the provisional
application(s) properly supports the subject matter relied upon to make the
rejection in compliance with 35 U.S.C 112(a)/pre-AIA 35U.S.C.112,first
paragraph ... In addition, the reference date under pre-AIA 35 U.S.C.
102( e) of a U.S. patent may be the filing date of a relied upon provisional
application only if at least one of the claims in the patent is supported by
the written description of the provisional application in compliance with
pre-AJA 35 U.S.C. 112,first paragraph. See Dynamic Drinkware, LLC, v.
National Graphics, Inc., 800F.3d 1375, 116 USPQ2d 1045 (Fed. Cir.
2015). ") ( emphasis added).
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Appeal2018-006706
Application 14/749,732
We have reviewed Hom's '646 provisional application, filed on
November 16, 2007, including the appendix to the '646 provisional.
For example, we reproduce claim 1 of Hom '675 below:
1. A method of communication, comprising:
determining a first identifier for establishing communication
with an access point;
determining a type of the first identifier; and
determining, based on the type of the first identifier, a
second identifier for establishing communication with
the access point.
Appellants refer to page 31 of the Appendix to Hom's '646
provisional application (filed on November 16, 2007), and contend:
The word "type" is used in in this section, but there is no
disclosure of determining a second ID based on a type of a first
ID and therefore no disclosure of the subject matter in
claim 1 of Hom of "determining, based on the type of the first
identifier, a second identifier for establishing communication
with the access point".
App. Br. 13 (emphasis added).
Based upon our review, we find at best the Hom '646 provisional
application describes the first and second identifier and an access point (AP),
but not "determining, based on the type of the first identifier, a second
identifier for establishing communication with the access point," as recited
in claim 1 of Hom '675 supra. (emphasis added). The closest support we
find is at paragraph 16 of the Hom '646 provisional application:
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Appeal2018-006706
Application 14/749,732
At processing block 320, an AP is selected and a determination
is made whether the selected AP is restricted for association or,
respectively, unrestricted for association using, in one
embodiment, a first type of identification parameter (ID) to
identify a restricted AP and/or, in the alternative, a second type
of ID to identify an unrestricted AP.
Hom '646 provisional application, ,r 16.
Hom's independent claim 58 recites the steps of claim 1 as similar
functions performed by various means in an apparatus. Hom's independent
claim 68 recites similar language in the context of a computer-readable
medium, with the code executed by a computer. Hom's remaining
independent claims 12, 23, 34, 38, and 48 recite similar language. All other
claims in the Hom '675 patent application publication depend from one of
independent claims 1, 12, 23, 34, 38, 48, 58, and 68. Therefore, Hom's '646
provisional application (filed on Nov. 16, 2007) does not support at least one
of the Hom '675 patent application publication claims. See
MPEP § 2136.03(III).
In the Answer, the Examiner does not address Appellants' arguments
based upon the requirement of Dynamic Drinkware (800 F.3d at 1378), to
provide evidence that the claims of the non-provisional Hom '675 patent
application publication are fully supported and enabled by the specification
(including the Appendix) of Hom's '646 provisional application.
The Examiner merely avers: "In response, the Examiner did not cite
any of the claims in Horn's reference in the rejection of the instant claims.
Thus the Appellant's arguments are not deemed persuasive." Ans. 12
( emphasis omitted).
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Appeal2018-006706
Application 14/749,732
Further, regarding the issue of adequate written-description support
purportedly found in Hom's '646 provisional (including the Specification
and Appendix), the Examiner finds:
page 16-27 of the Hom's Provisional Application does provide
adequate support for what is the later filed Application. In
particular, the aforementioned pages contemplate the aspect of
performing handoff from the macro cell to the femto cell on the
basis of the signal quality. Therefore, given what is disclosed in
the Provisional Application, one skilled in the art can derive
the disclosure of[the] non-provisional application from the
appendix of the provisional Application. To that end, the
Examiner respectfully [finds] that there is adequate support for
citing the specification of the later filed Application.
Ans. 13 ( emphasis added).
The Examiner appears to be referring to pages 16-27 of the Appendix
to the Hom '646 provisional application. We reproduce page 16 below:
Cross Frequency Beacons
• Femto inter frequency handoff goals
- Pull !he AT to the femto frequency but latency is 11ot critical
·- Avoid loo many beacons beings.int because of false alm-rnlarnbigui!y issm%
-- No bits av