Ex Parte Liu et al

Patent Trial and Appeal Board

Jun 24, 2016

12188075 (P.T.A.B. Jun. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/188,075 08/07/2008
74365 7590 06/28/2016
Slater Matsil, LLP
17950 Preston Road, Suite 1000
Dallas, TX 75252
FIRST NAMED INVENTOR
Juejun Liu
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.
HW 0848142US 4274
EXAMINER
TORRES, MARCOS L
ART UNIT PAPER NUMBER
2645
NOTIFICATION DATE DELIVERY MODE
06/28/2016 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):
uspatent@huawei.com
docketing@slatermatsil.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUEJUN LIU, ZHENGCHUANG MING,
SEAN MICHAEL MCBEATH, and ANTHONY C.K. SOONG
Appeal2014-009033
Application 12/188,075
Technology Center 2600
Before CATHERINE SHIANG, MELISSA A. HAAPALA, and
MONICA S. ULLAGADDI, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-3, 6-11, 25-27, 29, 31, 32, and 34--40, which are all
the claims pending and rejected in the application. 1 We have jurisdiction
under 35 U.S.C. § 6(b). We affirm-in-part.
1 Appellants repeatedly provide incorrect claim lists. See, e.g., App. Br. 9
(listing "claims 1-20"); Reply Br. 8 (omitting claims, such as independent
claim 29, which Appellants specifically argue). Claims 24 and 28 are not
before us, because they are objected to as being dependent upon a rejected
Appeal2014-009033
Application 12/188,075
STATEMENT OF THE CASE
The present invention relates to wireless communications. See
generally Spec. 1. Claim 1 is exemplary:
1. A method for operating a base station of a wireless communications
system, the method comprising:
receiving a resource request for radio resources for a mobile station;
assigning radio resources to the mobile station in accordance with the
resource request,
wherein assigning radio resources comprises assigning one or more
mappings of a channel tree comprising at least a first set of mappings of
radio resources and a second set of mappings of radio resources, wherein at
least one mapping in the second set of mappings of radio resources is non-
orthogonal to another mapping in the second set of mappings of radio
resources such that multiple mappings within the second set of mappings
allocate a common radio resource upon being assigned; and
transmitting an indicator of the assigned radio resources to the mobile
station.
Xu
Ji
References and Rejections2
US 6,907 ,246 B2
US 2006/0209754 Al
June 14, 2005
Sept. 21, 2006
Claims 1-3, 6---8, 26, 27, and 37--40 are rejected under 35 U.S.C.
§ 102( e) as being anticipated by Ji.
Claims 9-11, 25, 29, 31, 32, and 34--36 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ji and Xu. 3
base claim, but allowable if rewritten in independent form. See Non-Final
Act. 11.
2 The Examiner withdrew the 35 U.S.C. § 112 rejection. See Ans. 2.
2
Appeal2014-009033
Application 12/188,075
ANALYSIS
The Anticipation Rejection
We have reviewed Appellants' arguments in the Briefs, the
Examiner's rejection, and the Examiner's response to Appellants'
arguments. We concur with Appellants' conclusion that the Examiner erred
in finding Ji discloses "wherein at least one mapping in the second set of
mappings of radio resources is non-orthogonal to another mapping in the
second set of mappings of radio resources such that multiple mappings
within the second set of mappings allocate a common radio resource upon
being assigned," as recited in independent claim 1. 4 See App. Br. 4--5;
Reply Br. 5.
The Examiner finds:
Ji discloses a channel tree 300 with a first set of mapping [62
and below channel ID' s] and a second set of mapping [ 61 and
below channel ID's] and channels 33 and 34 are a subset of
channel 49 [see paragraphs 0030-0031 ], thereby having a
common radio resource. Also, the mid-section of paragraph
0031 disclose that if orthogonality is desired the mentioned
channels should not be used concurrently and par. 0008
disclose that if the transmissions are separated in the spatial
domain, the same radio [system] resources may be used,
thereby is non-orthogonal and orthogonality is not desired.
3 The header of this rejection contains typographical errors: listing canceled
claim 30, and omitting claims 35 and 36, which are included in the body of
the rejection. See Non-Final Act. 7, 11.
4 Appellants raise additional arguments with respect to the anticipation
rejection. Because the identified issue is dispositive of the appeal with
respect to the anticipation rejection, we do not reach the additional
arguments.
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Appeal2014-009033
Application 12/188,075
And in par. 0033 Ji discloses other reasons why the same radio
resources may be allocated in a channel tree.
Ans. 4 (emphasis added); see also Non-Final Act. 4--5.
Inherency can only be established when "prior art necessarily
functions in accordance with, or includes, the claimed limitations." In re
Cruciferous Sprout Litig., 301F.3d1343, 1349 (Fed. Cir. 2002) (citations
omitted). We have examined the cited Ji portions, and agree with
Appellants that the Examiner fails to show the cited Ji portions necessarily
teach the disputed claim limitation. See Reply Br. 5. Specifically, the
Examiner's finding that Ji's "paragraph 0031 disclose[s] that if orthogonality
is desired the mentioned channels should not be used concurrently and par.
0008 disclose that if the transmissions are separated in the spatial domain,
the same radio [system] resources may be used, thereby is non-orthogonal"
(Ans. 4 (emphasis added)) fails to show Ji necessarily teaches the disputed
claim limitation. 5
i\~ccordingly, 'l.fe are constrained by the record to reverse the
Examiner's rejection of claim 1; independent claim 26, which recites a
limitation similar to the disputed claim limitation; and corresponding
dependent claims 2, 3, 6-8, 27, and 37--40.
The Obviousness Rejection
On this record, we find the Examiner did not err in rejecting claim 9.
We disagree with Appellants' arguments (App. Br. 7-9; Reply Br. 7-
8), and agree with and adopt the Examiner's findings and conclusions on
5 Appellants incorrectly argue that Ji's paragraph 31 teaches lower-tiered
channels include channels 57, 61, and 63. See Reply Br. 5; Ji Fig. 3
(showing such channels are not lower-tiered); i-f 31.
4
Appeal2014-009033
Application 12/188,075
pages 6-8 of the Answer. Therefore, we provide the following points for
emphasis.
First, Appellants contend Ji and Xu do not collectively teach the
claimed "annular channel tree." See App. Br. 7-8; Reply Br. 7. In
particular, Appellants contend "Xu 's circularly segmented cell is not a
'channel tree,' and therefore cannot be used to modify Ji 's binary channel
tree into 'an annular channel tree comprising ... ring[s] [that] are
interconnected in a circularly adjacent manner."' App. Br. 7-8; see also
Reply Br. 7.
We disagree. Because the Examiner relies on the combination of Ji
and Xu to teach the disputed claim limitations, Appellants cannot establish
nonobviousness by attacking the references individually. See In re Merck &
Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Examiner finds-and
Appellants concede-Ji teaches the claimed "channel tree." See Non-Final
Act. 8, Ans. 6-7; App. Br. 8. We understand the Examiner further finds Xu
teaches "an annular [structure] comprising ... ring[ s that] are interconnected
in a circularly adjacent manner" (Non-Final Act. 8, Ans. 6-7), and
Appellants fail to show error in that finding. See In re Baxter Travenol
Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) ("It is not the function of this
court [or this Board] to examine the claims in greater detail than argued by
an appellant, looking for [patentable] distinctions over the prior art.").
Therefore, the Examiner finds Ji and Xu collectively teach "an annular
channel tree ... comprising ... ring[s that] are interconnected in a circularly
adjacent manner." Using Xu's annular technique in the Ji method would
have predictably used prior art elements according to their established
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Appeal2014-009033
Application 12/188,075
functions-an obvious improvement. See KSR Int? Co. v. T'elejlex, Inc., 550
U.S. 398, 422 (2007).
Second, Appellants argue:
Claim 9 further recites that at least two "nodes on an
outer-most one of the two or more intermediate rings [are] non-
orthogonal with [one] another ... such that multiple nodes on the
outer-most intermediate ring allocate a common time-frequency
resource upon being assigned." (Emphasis added).
[N]othing in either reference suggests that two nodes on
the same ring of an annular channel tree are non-orthogonal
with one another.
More specifically, the Office Action acknowledges that Ji
does not disclose annular channel trees .... Therefore, Ji cannot
disclose that two nodes on the same ring of an annular channel
tree are non-orthogonal with one another.
Xu does not discuss non-orthogonal nodes, and therefore
also fails to disclose the aforementioned feature of claim 9. As
such, the combination of Ji and Xu fails to disclose at least one
limitation recited by independent claim 9, and consequently
does not render obvious that claim.
App. Br. 9; see also Reply Br. 7-8.
Again, because the Examiner relies on the combination of Ji and Xu
to teach the disputed claim limitation, Appellants cannot establish
nonobviousness by attacking the references individually. See Merck & Co.,
800 F .2d at 1097. The Examiner finds Ji and Xu collectively teach the
disputed claim limitation. See Non-Final Act. 8; Ans. 8. Appellants fail to
specifically respond to the Examiner's findings, and fail to analyze the Ji and
Xu portions cited by the Examiner. Further, Appellants' general assertion
that the references do not teach the disputed claim limitation is unpersuasive.
For example, Appellants do not persuasively argue why the "non-
orthogonal" feature is not taught by or obvious in light of Ji' s teachings.
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Application 12/188,075
Therefore, Appellants fail to show error in the Examiner's findings. See
Baxter Travenol Labs., 952 F.2d at 391.
Finally, in the Reply Brief and for the first time, Appellants belatedly
argue it is improper to modify Ji to incorporate Xu's teachings. See Reply
Br. 7. Appellants have waived such argument because it is untimely, and
Appellants have not demonstrated any "good cause" for the belated
presentation. See 37 C.F.R. § 41.41(b)(2) (2012).
Accordingly, we sustain the Examiner's rejection of independent
claim 9, and independent claim 29, which Appellants argue are allowable for
similar reasons discussed above with respect to claim 9.
We also sustain the Examiner's rejection of dependent claims 10, 11,
25, 31, 32, and 34--36, which Appellants do not separately argue.
DECISION
We reverse the Examiner's decision rejecting claims 1-3, 6-8, 26, 27,
and 37--40 under 35 U.S.C. § 102.
We affirm the Examiner's decision rejecting claims 9-11, 25, 29, 31,
32, and 34--36 under 35 U.S.C. § 103.
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).
AFFIRMED-IN-PART
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