Ex Parte Kalhan et al

Patent Trials and Appeals Board

Jun 17, 2019

14433288 - (D) (P.T.A.B. Jun. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/433,288 04/02/2015
32968 7590 06/19/2019
KYOCERA INTERNATIONAL INC.
INTELLECTUAL PROPERTY DEPARTMENT
8611 Balboa Ave
SAN DIEGO, CA 92123
FIRST NAMED INVENTOR
Amit Kalhan
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.
TUTL00224 1021
EXAMINER
ULYSSE, JAEL M
ART UNIT PAPER NUMBER
2477
NOTIFICATION DATE DELIVERY MODE
06/19/2019 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):
KII-USPatents@kyocera.com
Kathleen.Connell@kyocera.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte AMIT KALHAN, HENRY CHANG,
DAVID COMSTOCK, and DOUGLAS DUNN
Appeal2018-008652
Application 14/433,288
Technology Center 2400
Before JENNIFER S. BISK, LARRY J. HUME, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.
DIRBA, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 seek our review under 35 U.S.C. § 134(a) of the
Examiner's rejection of claims 1-27, which are all claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
1 This Decision uses the following abbreviations: "Spec." for the original
specification, filed April 2, 2015, as the national stage entry of
PCT/US2013/063879 (filed October 8, 2013), which claims the benefit of an
earlier filed U.S. provisional application; "Final Act." for the Final Office
Action, mailed August 25, 2017; "App. Br." for Appellants' Appeal Brief,
filed March 12, 2018; "Ans." for Examiner's Answer, mailed July 9, 2018;
and "Reply Br." for Appellants' Reply Brief, filed August 30, 2018.
2 According to Appellants, the real party in interest is Kyocera Corporation.
App. Br. 3.
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Application 14/433,288
BACKGROUND
Appellants' disclosed embodiments and claimed invention relate to
"management of communication resources in wireless communication
systems having overlapping service areas." Spec. ,r 2. Claims 1 and 15,
reproduced below, are illustrative of the claimed subject matter:
1. A system comprising:
a small service area (SSA) base station having a SSA
geographical service area and configured to exchange
communication data with SSA user equipment devices (SUEs);
and
a large service area (LSA) base station having a LSA
geographical service area at least partially overlapping the SSA
geographical service area and configured to exchange
communication data with LSA user equipment devices (LUEs),
the LSA base station configured to transmit, to a relaying SUE
(RSUE) of the SUEs, LSA scheduling information indicating
communication resources that will be used for communication
by the LSA base station,
the SSA base station configured to receive resource information
indicative of the LSA scheduling information from the RSUE
and to schedule communication resources to the SUEs based on
the resource information.
App. Br. 17 (Claims App'x) (emphasis added to dispositive limitations).
15. A small service area (SSA) base station providing wireless
service to SSA user equipment devices (SUEs) within a SSA that is
within a large service area (LSA) of a LSA base station providing
wireless service within the LSA, the SSA base station comprising:
a receiver configured to receive LSA resource information
identifying communication resources that will be used by the
LSA base station;
a processor configured to allocate communication resources to
the SUEs based on the LSA resource information.
Id. at 19 ( emphasis added to dispositive limitation).
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THE REJECTIONS
RI. Claims 15, 16, and 22-24 stand rejected under 35 U.S.C.
§ I02(a)(l) as anticipated by Kim (US 2010/0322180 Al, published
Dec. 23, 2010). Final Act. 10-13.
R2. Claims 1-8, 11-13, 17-21, and 25 stand rejected under
35 U.S.C. § 103 as obvious over Kim and Stamoulis (US 2010/0029282 Al,
published Feb. 4, 2010). Final Act. 14--33.
R3. Claims 9, 10, 14, 26, and 27 stand rejected under 35 U.S.C.
§ 103 as obvious over Kim, Stamoulis, and Siomina (US 2011/0319025 Al,
published Dec. 29, 2011). Final Act. 33-39.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential). To the extent Appellants have not advanced separate,
substantive arguments for particular claims, or other issues, such arguments
are waived. 37 C.F.R. § 4I.37(c)(l)(iv).
We have considered all of Appellants' arguments and any evidence
presented. Based upon our review of the record, we find a preponderance of
the evidence supports some of Appellants' arguments. We highlight and
address specific findings and arguments for emphasis in our analysis below.
Anticipation Rejection RI of Claims 15, 16, and 22-24
Appellants argue independent claim 15 is not anticipated by Kim.
Appellants do not separately argue the patentability of the dependent claims,
so these claims (i.e., claims 16 and 22-24) stand or fall with their respective
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independent claim (i.e., claim 15). See In re King, 801 F.2d 1324, 1325
(Fed. Cir. 1986).
Claim 15 recites: "A small service area (SSA) base station"3
comprising "a receiver configured to receive LSA resource information
identifying communication resources that will be used by the LSA base
station." App. Br. 19 (Claims App'x) ( emphasis added) (referred to in this
Decision as the "disputed limitation"). Appellants argue that Kim fails to
disclose an SSA base station that receives the claimed LSA resource
information. App. Br. 8-11.
The Examiner found the claimed SSA base station and LSA base
station are disclosed by Kim's femtocell base station (BS) and macrocell BS,
respectively. Final Act. 10-11. The Examiner found: (1) Kim's femtocell
BS receives information regarding allocated resources from the macrocell
BS, and (2) Kim's macrocell BS broadcasts scheduling information. Id. at
5---6, 10-11 ( citing Kim iTiT 87-88, 100, 102---03, Figs. 13, 17).
Appellants do not dispute that Kim's femtocell and macrocell base
stations teach the claimed SSA and LSA base stations, respectively. See
generally App. Br. 8-11. Rather, Appellants argue the reference fails to
disclose that Kim's femtocell BS receives information identifying
3 We conclude that the preamble of claim 15 is limiting because it recites
essential structure and was clearly relied upon by Appellants to distinguish
the invention. See In re Cruciferous Sprout Litig., 301 F.3d 1343, 1347
(Fed. Cir. 2002) ("In general, a preamble limits the claimed invention if it
recites essential structure or steps, or if it is necessary to give life, meaning,
and vitality to the claim. Clear reliance on the preamble during prosecution
to distinguish the claimed invention from the prior art may indicate that the
preamble is a claim limitation because the preamble is used to define the
claimed invention." ( quotation and citation omitted)).
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communication resources that will be used by the macrocell BS, as would be
required by the claim. 4 Id. ( emphasis added). Specifically, Appellants
submit that Kim's femtocell BS receives information regarding resources
that have been allocated to thefemtocell BS. Id. at 10 (citing Kim ,r 103,
Fig. 17). Appellants explain that this identifies resources that will be used
by the femtocell BS, but not resources that will be used by the macrocell BS.
Id. In addition, Appellants contend Kim fails to disclose that the femtocell
BS receives the scheduling information, which is broadcast by the macrocell
BS to the macro andfemto users. Id. at 9 (citing Kim ,r,r 87-88, Fig. 13).
Appellants further argue that, given Kim's approach to scheduling, there
would be no reason for the femtocell BS to receive the macrocell BS' s
broadcast of scheduling information. Id. at 10.
We are persuaded of Examiner error. To anticipate under 35 U.S.C.
§ 102, "[a] single reference must describe the claimed invention with
sufficient precision and detail to establish that the subject matter existed in
the prior art." Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed.
Cir. 2002). The reference does not need to use the same terminology.
Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed.
Cir. 2015) (A reference anticipates if a person of skill in the art "would at
once envisage the claimed arrangement or combination." (quotation marks
and citation omitted)). But, an ambiguous reference will not anticipate a
claim. Wasica Fin. GmbH v. Cont'! Auto. Sys., Inc., 853 F.3d 1272, 1284
4 Appellants and the Examiner dispute the proper construction of the term
"LSA resource information" (Ans. 4--5; Reply Br. 3--4); however, the salient
issue is not the construction of this term, but rather the claim's requirement
that it "identify[] communication resources that will be used by the LSA
base station" (App. Br. 19 (Claims App'x)).
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(Fed. Cir. 2017); see In re Turlay, 304 F.2d 893, 899 (CCPA 1962) ("It is
well established that an anticipation rejection cannot be predicated on an
ambiguous reference.").
The Examiner does not explain why a person of skill in the art would
understand the disputed limitation to be disclosed, expressly or inherently,
by Kim. Kim states, "the macrocell BS first allocates resources to macro
users and the femtocell, and then the femtocell allocates resources to femto
users belonging to the femtocell from within a range of resources possessed
by the femtocell." Kim ,r 54. Consequently, Kim's macrocell BS sends
resource information to the femtocell BS. Id. ,r,r 87-88. But, the resource
information sent to the femtocell BS identifies the femtocell's resources, not
resources that will be used by the macrocell BS. Id. ,r,r 87-88, 100--03. The
macrocell BS also "broadcast[s] information including [1] information of the
results of scheduling performed by the macrocell BS and, [2] in addition, the
scheduling information received from the femtocell BS." Id. ,r 88. But, Kim
does not disclose receipt of this broadcast by the femtocell BS; rather, Kim
states that the users are the recipients. Id.; accord id. at Fig. 13 (showing
"scheduled information" sent to macro and femto users, but not to femtocell
BS). Although the Examiner cites several paragraphs of Kim, the Examiner
cites ( and our review reveals) no portion of Kim that expressly discloses the
macrocell BS sending information to the femtocell BS that "identif[ies]
communication resources that will be used by the [macrocell BS]," as would
be required by the claim.
In the Final Office Action and the Answer, the Examiner also
identifies other aspects of Kim's disclosure (see Final Act. 5-7; Ans. 5-8) as
disclosing this limitation, but the Examiner fails to explain the significance
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of these passages and fails to explain why a person of skill in the art would
have understood these passages of Kim to expressly or inherently disclose
the disputed limitation.
Specifically, in the Final Office Action, the Examiner found Kim
discloses "a conventional method for perform [sic] scheduling at a macro
cell base station." Final Act. 5, 10 (citing Kim, Fig. 2, ,r,r 15, 54). The
Examiner noted Kim states that the macrocell BS and femtocell BS may use
the same frequency, with each using a different subframe for its
transmission. Id. at 5, 6 (citing Kim ,r,r 53, 94, Fig. 16). The Examiner also
quoted portions of Kim stating that the femtocell BS broadcasts resource
allocation information to its users. Id. at 5-6 ( citing Kim ,r 7 6). From this,
the Examiner found it "evident" that "the LSA and SSA base station
coordinate the scheduling of resources, they can use the same band, and
from the range of resources available they can know in detail the amount of
resources needed or will need in each cell respectively." Id. at 6. However,
even if we were to agree that Kim's femtocell BS could, potentially,
ascertain the resources that will be used by the macrocell BS, this possibility
would not provide the disclosure required for anticipation. 5 In addition, this
also would fail to disclose that Kim's femtocell BS is configured to allocate
communication resources to its users based on this information, as would
also be required by claim 15.
5 "Inherency ... may not be established by probabilities or possibilities."
Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991)
Further, we note that "[t]he tests for anticipation and obviousness are
different." Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1364
(Fed. Cir. 2008). As discussed below, the Final Office Action did not find
that the disputed limitation is suggested by Kim or Stamoulis.
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Moreover, in the Answer, the Examiner focused on the PDCCH, "a
control channel that can transmit information" including resource allocation
information. Ans. 5 ( quoting Kim ,r 71 ). The Examiner noted a femto
PDCCH is different from a macro PDCCH (id. at 5---6 (citing Kim ,r 73,
Fig. 8) ), and the Examiner found "the Macro PDCCH can be interpreted as
the 'LSA Resource Information'" (id. at 7 (emphasis omitted)). The
Examiner noted that the macro PDCCH can be used by the macrocell BS
when transmitting resource allocation information to the femtocell BS. Id.
( citing Kim ,r,r 33, 94, Fig. 6). From this, the Examiner concluded:
[T]he PDCCH provides the information or indication for the
SSA BS/Femtocell BS to know the resources used by the LSA
BS/Macrocell BS. Since the Macro and Femto PDCCH is
different, the femto BS/SSA would know the resources the
macro uses or will use in addition to the resources allocated to
it for use within its own service area.
Id. at 7-8.
The Examiner's logic is not abundantly clear. However, as with the
passages discussed above, these cited portions of Kim do not expressly
disclose that the resource allocation information received by the femtocell
BS identifies the resources that will be used by the macrocell BS. See Kim
,r,r 33, 71, 73, 94, Figs. 6, 8, 16; see also App. Br. 11 ("[N]otably absent
from Kim is any disclosure that the resource allocation information being
transmitted, via the macro PDCCH, to the femtocell BS also includes
resources to be used by the macrocell BS, as suggested by the Examiner.").
In addition, the Examiner fails to adequately explain that Kim inherently
discloses the disputed limitation, as inherency cannot be shown by mere
possibilities. Finally, the Examiner fails to explain the finding that Kim's
femtocell BS "know[s] the resources the macro[cell] ... will use." Ans. 8.
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Therefore, based upon the findings above, on this record, we are
persuaded of error in the Examiner's reliance on the cited prior art
combination to disclose the disputed limitation of claim 15. Accordingly,
we do not sustain the Examiner's anticipation rejection of independent claim
15 and its dependent claims (i.e., claims 16, and 22-24), which stand
therewith.
Obviousness Rejection R2 of Claims 1---8, 11-13, 17-21, and 25
Claim 1 includes a limitation commensurate with the disputed
limitation discussed above with respect to claim 15. Specifically, claim 1
recites: "the SSA base station configured to receive resource information
indicative of the LSA scheduling information," where the "LSA scheduling
information indicat[ es] communication resources that will be used for
communication by the LSA base station." App. Br. 17 (Claims App'x)
(referred to in this decision as the "analogous limitation").
The Examiner finds Kim teaches the analogous limitation and points
to Stamoulis for other limitations of the claim. Final Act. 8; accord Ans. 9
("The primary art KIM did not teach a 'relay DE/mobile station' or a device
performing relaying function. Therefore, the second prior art, Stamoulis,
was used to cure the deficiency relating to 'relaying device.'") ( emphasis
omitted). Appellants allege this rejection is in error, referencing the
arguments provided for claim 15. App. Br. 12-13; see also id. at 10
(explaining why "there would be no incentive for" Kim's femtocell BS to
receive the information recited by the claim); Reply Br. 9-11 (arguing
references fail to teach or suggest the analogous limitation).
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The Examiner's rejection relies on Kim in the same erroneous manner
discussed above in the context of claim 15. Appellants contend that a person
skilled in the art would not have modified Kim to yield the analogous
limitation, and Appellants support this argument with reasoning supported
by the reference. E.g., App. Br. 10; Reply Br. 5. On this record, we are not
persuaded that Kim teaches or suggests the analogous limitation. The
Examiner does not rely on Stamoulis to teach or suggest the analogous
limitation (see Final Act. 14--17; Ans. 9-13), so we have not considered, and
do not decide, whether Stamoulis cures the deficiencies of Kim.
Accordingly, we reverse the Examiner's rejection R2 of claim 1 and
its respective dependent claims (i.e., claims 2-8, 11-13, and 17-21), which
stand therewith. Independent claim 25 includes a substantially similar
limitation to the analogous limitation. See App. Br. 14; Ans. 9 (addressing
claims 1 and 25 collectively because they "have similar argued limitations");
see Reply Br. 11 (Claim 25 is "allowable for at least the same reasons" as
claim 1.). Accordingly, we also reverse the Examiner's rejection R2 of
claim 25.
Obviousness Rejection R3 of Claims 9, 10, 14, 26, and 27
The Examiner rejects dependent claims 9, 10, 14, 26, and 27 over a
combination of Kim, Stamoulis, and Siomina. Final Act. 33-39. Each of
these claims depends, directly or indirectly, from either claim 1 or claim 25.
For these claims, the Examiner relies on Siomina as teaching only
additionally recited elements of the dependent claims. The Examiner's
rejection relies on Kim in the same erroneous manner discussed above in the
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context of claims 1 and 25, and accordingly, we reverse the Examiner's
rejection R3 of claims 9, 10, 14, 26, and 27.
DECISION
We reverse the Examiner's decision rejecting claims 1-27.
REVERSED
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