Ex Parte McCoy et alDownload PDFPatent Trial and Appeal BoardDec 27, 201613544887 (P.T.A.B. Dec. 27, 2016) Copy Citation United States Patent and Trademark Office 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. 13/544,887 07/09/2012 James W. McCoy 30134/01302 (PI 1809USC1) 6395 114746 7590 12/28/2016 Ar>r>le Tno — FKM EXAMINER 150 Broadway Suite 702 JAROENCHONWANIT, BUNJOB New York, NY 10038 ART UNIT PAPER NUMBER 2466 MAIL DATE DELIVERY MODE 12/28/2016 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 JAMES W. McCOY and LEO G. DEHNER1 Appeal 2015-000092 Application 13/544,887 Technology Center 2400 Before HUNG H. BUI, DANIEL N. FISHMAN, and MICHAEL M. BARRY, Administrative Patent Judges. FISHMAN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 15—36, all pending claims of the application.2 Claims 1—14 were previously cancelled. App. Br. 11. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify Apple Inc. as the real party in interest. Appeal Brief 2. 2 In this Decision, we refer to Appellants’ Appeal Brief (“App. Br.,” filed May 8, 2014); Appellants’ Reply Brief (“Reply Br.,” filed September 23, 2014); the Final Office Action (“Final Act.,” mailed October 11, 2013); the Examiner’s Answer (“Ans.,” mailed on July 23, 2014); and the original Specification (“Spec.,” filed July 9, 2012). Appeal 2015-000092 Application 13/544,887 THE INVENTION Appellants’ invention is directed generally to “dynamic allocation of communication resources.” Spec. 11. More specifically, Appellants’ invention is directed to receiving a plurality of wireless subframes within a periodic interval and determining, for each received subframe, whether the subframe includes a “grant resource that indicates that a resource . . . includes information for the [receiving] communication device.” Spec. Abstract. Independent claim 15, reproduced below, is illustrative: 15. A method of receiving information by a wireless communication device, the method comprising: receiving a plurality of wireless subframes at a periodic interval, wherein an interval duration of the periodic interval is greater than a duration of each of the plurality of wireless subframes; and determining for each wireless subframe of the plurality whether the wireless subframe includes a grant resource that indicates that a resource unit pattern of a plurality of selectively assignable resource unit patterns of resource units of the subframe includes information for the communication device. THE REJECTIONS Claims 15, 16, 19, 20, 22—24, 26—29, and 33—36 stand rejected under 35 U.S.C. § 102(e) as anticipated by Park et al. (US 2010/0002638 Al; Jan. 7, 2010) (“Park”). Final Act. 3-5. Claims 17, 18, and 21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Park and Sundaresan (US 2008/0151803 Al; June 26, 2008). Final Act. 5—6. 2 Appeal 2015-000092 Application 13/544,887 Claims 25, 30, and 31 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Park and Aim et al. (US 2010/0284347 Al; Nov. 11,2010). Final Act. 6-7. Claim 32 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Park. Final Act. 7. ISSUES Appellants’ arguments present the following issues on appeal: 1. Has the Examiner erred in finding Park qualifies as prior art under 35 U.S.C. § 102(e) (pre-AIA) based on a priority claim to a provisional patent application? 2. Has the Examiner erred in finding Park teaches all elements of claim 15? ANALYSIS Only those arguments actually made by Appellants have been considered in this Decision. Arguments that Appellants did not make in the Briefs are waived. See 37 C.F.R. § 41.37(c)(l)(iv). We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner erred. App. Br. 4—9; Reply Br. 2—5. We are not persuaded by Appellants’ contentions of Examiner error. Accordingly, we adopt as our own the Examiner’s findings and reasons set forth in the Final Action and the Answer. We highlight and address specific arguments and findings for emphasis as follows. 3 Appeal 2015-000092 Application 13/544,887 35 U.S.C. § 102(e): Claims 15, 16, 19, 20, 22-24, 26-29, and32-36 Issue 1 The present application claims priority to January 15, 2008 as a continuation of US Patent Number 8,218,509. Park was published January 2010 and claims priority to a US Provisional Patent Application Number 60/888,508 filed February 6, 2007 (through PCT/KR2008/000719 filed February 5, 2008) (hereinafter “PPA ’508”).3 An English translation of PPA ’508 was filed in 2013 in an Advisory Action (“Adv. Act.” mailed December 24, 2013), in which the Examiner asserts: Applicant argues that Park (US 2010/0002639) [sic] is not prior art because the provisional application (60/888508) does not support the citations, e.g., figures 11 and 12 (see remark page 3). Examiner disagrees; the provisional application clearly teaches the conventional limitations, as claimed. Refer to the provisional application’s figures 6 and 7 (page 14), they clearly teach the same as depicted in Park’s figures 11—12. Figure 7 illustrates transmitting and/or receiving subframes at periodic interval and the periodic interval is greater than duration of the subframes. Figure 6 illustrates a UE determining whether resource grant is in the subframes. An ordinary skilled in the art will recognize the same inventive concept is in all said figures, thus the provisional application meet[s] the requirement under 35 USC § 112, first paragraph. Adv. Act 2. Appellants argue Park is not prior art because it is not entitled to the priority date of PPA ’508. App. Br. 4—7; Reply Br. 2-4. Specifically, 3 The Examiner provides an annotated portion of PPA ’508 as Exhibit “AA3” attached to the Answer. See Ans. 4. To clarity references within PPA ’508, the Examiner’s annotations include page numbers. In this Decision, when referring to PPA ’508, we refer to the annotated attachment (“AA3”) to the Examiner’s Answer and refer to page numbers therein as indicated by the Examiner’s annotations. 4 Appeal 2015-000092 Application 13/544,887 Appellants argue the content of Figures 11 and 12 of Park is not supported in PPA ’508. App. Br. 4—6. In particular, Appellants argue Park’s Figure 11 relates to transmission of control information “such as downlink and uplink scheduling grants,” whereas Figure 7 of PPA ’508 relates to timing advance (“TA”) and random access (“RA”) information sent over the downlink control channel. Id. at 4—5. Appellants further argue PPA ’508 “fails to make any reference to the use of subframes illustrated in Fig. 11 of Park.” Id. at 5. Similarly, with respect to Park’s Figure 12, Appellants argue Park’s Figure 12 is “silent on the persistent resources as including a TA element,” whereas Figure 6 of PPA ’508 illustrates “transmitting the downlink scheduling grant including a TA-RNTI [(“Radio Network Temporary Identifier”)] element and a TA command element. (See Provisional Application, p. 14, Fig. 6).”4 App. Br. 5—6. Thus, Appellants contend, “the Final Office Action does not present any basis that the cited portions of Park would qualify as prior art under 35 U.S.C. § 102(e) because they are not supported by the Provisional Application” and, therefore, the Examiner has failed to establish a prima facie case of anticipation under section 102(e). Id. at 6—7. Appellants contend that, to qualify as prior art under 35 U.S.C. § 102(e), it is necessary that the provisional application “properly supports the subject matter relied upon to make the rejection in compliance with 35 U.S.C. r$] 112, first paragraph.” Id. at 6 (quoting MPEP § 2136.03(111)); see also MPEP § 706.02(f)(l)(I)(B). 4 There are three Figures in PPA ’508 labeled as “Fig. 6.” PPA ’508, 9, 14, 18. The Examiner’s Answer clearly refers to the “Fig. 6” on page 18 in the annotated version of PPA ’508 attached to the Answer as attachment “AA3.” Appellants refer to a different Figure 6 in PPA ’508 at page 14. For at least this reason, we are unpersuaded by Appellants’ argument. 5 Appeal 2015-000092 Application 13/544,887 The Examiner responds, and we agree, that Park qualifies as prior art as long as the requirements of 35 U.S.C. §§ 119(e) and 112, first paragraph are met (i.e., so long as the claims of Park are supported by the written description of PPA ’508). Ans. 2—3.5 To that end, the Examiner maps each element of the claims of the Park Patent Publication to features of PPA ’508 {id. at 3—7) and, thus, asserts Park is properly entitled to the priority of PPA ’508 {id. at 7).6 Furthermore, the Examiner finds, and we agree, Park’s Figures 11 and 12 (relied upon for the rejection) are similar to Figures 6 and 7 of PPA ’508 and, thus, the critical date for Park is properly the filing date of PPA ’508 (February 6, 2007). Figure 6 of PPA ’508 and Figure 12 of Park are reproduced below. 5 The Examiner’s Answer numbers each page as “Page 1.” In this Decision, we refer to the first page after the mailing cover sheet as page 1 and refer to each subsequent page with a next sequential page number. 6 The Examiner identifies support for Park’s claims in PPA ’508 that support the critical priority date of Park. This analysis may not be required for a patent publication because the published claims are not issued and may never issue in their published form. Regardless, the Examiner has shown that level of support. 6 Appeal 2015-000092 Application 13/544,887 7 . S3K55 At. VUT S^F?C ! sssw&w CA v -j 4.7 A1 cbS'Tk i At stalk At. 3 y\y iX.i.tfES Di. A A7 *15 Utv**! f ASftitiEL f-fjn «s»SWO?Si vk AiS 1C V l \ K'"' t f \ xdz : f ^ i :iL r ^ jifc s AfAliTjAA,': [FIG. 6] Figure 6 of PPA ’508 [Fig. 12] UE | Monitor to find it schedui PDCCH S uplink r»g grant BS Allocate persistent resources S220 Transmit data based on persistent resources .5210 Monitor PDCCH to find its uplink scheduling grant '.-S240 Transmit uplink scheduling grant , S250 Transmit data based on uplink scheduling grant ,. Monitor PDCCH to find its uplink scheduling grant -.5270 Transmit data based on persistent resources , ; -.... s?sn -S230 S260 Figure 12 of Park Figure 6 of PPA ’508 and Park’s Figure 12 both show a user equipment (UE) periodically transmitting information based on previously received static (persistent) resources indicating scheduling of the UE’s transmissions and show subsequent periodic information transmitted based on modified scheduling information received at the UE. The Examiner asserts, and we agree, the disclosure of Park’s Figure 12 is essentially similar to that of Figure 6 of PPA ’508. Ans. 7 (“Fig. 6 (page 18) of the provisional application is basically the same as or at least 7 Appeal 2015-000092 Application 13/544,887 has the same functionality as the process illustrated in Fig. [ ] 12 of Park et al.”). Figure 7 of PPA ’508 and Figure 11 of Park are reproduced below. frequency DqAQ s.a ew tU-SCH [Fig. 11] PDSCH Figure 7 of PPA ’508 and Park’s Figure 11, reproduced above, both disclose a frame comprising a plurality of subframes wherein each subframe 8 Appeal 2015-000092 Application 13/544,887 includes a control channel (“DL L1/L2” and “PDCCH”) and a data channel (“DL-SCH” and “PDSCH”). The Examiner finds, and we agree, Figure 7 of PPA ’508 is substantially similar to Park’s Figure 11. Adv. Act. 2. Thus, PPA ’508 provides sufficient written description to support Park’s Figures 11 and 12 on which the Examiner relies for the rejection. Therefore, we conclude Park, based on its priority claim to PPA ’508, qualifies as prior art against Appellants’ application. Issue 2 Appellants argue, even if Park is valid prior art, “the Provisional Application is silent on the use of either a periodic interval or a plurality of wireless subframes.” App. Br. 7. Appellants further argue that, in Park’s Figure 11, “each subframe is adjacent to the next subframe, a duration of the TTI [(“Transmission Time Interval”)] for transmitting each of the subframes is actually equal to a duration of the subframe.” Id. Thus, Appellants contend, Park does not teach “an interval duration of the periodic interval is greater than a duration of each of the plurality of wireless'1'’ as claimed. Id.; see also Reply Br. 4—5. We are not persuaded the Examiner erred. The Examiner finds it is well-known to ordinarily skilled artisans that “in the wireless communication that wireless data are ordinarily transmission in 10 millisecond frame, which consists of 10 subframes, each of the subframes has a standard interval is 1 millisecond.” Ans. 4; see also Park| 56. Thus, Park’s Figure 12 teaches an ordinarily skilled artisan an interval (i.e., a 9 Appeal 2015-000092 Application 13/544,887 frame) comprising multiple subframes and having a duration greater than the duration of a single subframe. In their Reply, Appellants further contend “the Examiner ignores the one notable difference that Fig. 6 of the Provisional Application relates to downlink transmissions . . . while Fig. 12 of Park relates to uplink transmissions.” Reply Br. 4; see also App. Br. 5—6. We remain unpersuaded of Examiner error. Appellants’ argument mischaracterizes the disclosure of Figure 6 of PPA ’508. As shown above, both figures relate to a method for uplink of data from the UE to a base station where the scheduling of such uplink data is controlled by configuration information received from (downlinked from) the base station. Summary We are not persuaded the Examiner erred in rejecting independent claim 15 and, thus, we sustain the rejection of claim 15 and claims 16, 19, 20, 22—24, 26—29, and 33—36 not argued separately with particularity. App. Br. 8. Further, Appellants present no arguments regarding claim 32, which depends from claim 27. Thus, we summarily sustain the rejection of claim 32. Claims 17, 18, and 21 Appellants do not argue these claims separately from claim 15 other than to assert Sundaresan does not cure the alleged deficiencies of Park. App. Br. 8. Thus, for the same reasons as claim 15, we are unpersuaded of Examiner error and we sustain the rejection of claims 17, 18, and 21. 10 Appeal 2015-000092 Application 13/544,887 Claims 25, 30, and 31 Appellants do not argue these claims separately from claim 15 other than to assert Ahn does not cure the alleged deficiencies of Park. App. Br. 9. Thus, for the same reasons as claim 15, we are unpersuaded of Examiner error and we sustain the rejection of claims 25, 30, and 31. DECISION We affirm the Examiner’s decision to reject claims 15—36. 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 11 Copy with citationCopy as parenthetical citation