Ex Parte ROH et al

Patent Trial and Appeal Board

May 14, 2018

14297145 (P.T.A.B. May. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/297,145 06/05/2014
23494 7590 05/16/2018
TEXAS INSTRUMENTS IN CORPORA TED
P 0 BOX 655474, MIS 3999
DALLAS, TX 75265
FIRST NAMED INVENTOR
June Chui ROH
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.
TI-73852 6580
EXAMINER
ZHANG, ZHENSHENG
ART UNIT PAPER NUMBER
2474
NOTIFICATION DATE DELIVERY MODE
05/16/2018 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@ti.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUNE CHUL ROH, PIERRE BERTRAND, SRINATH HOSUR,
VIJA Y POTHUKUCHI, and MOHAMED F AROUK MANSOUR
Appeal2017-009532
Application 14/297, 145
Technology Center 2400
Before THU A. DANG, JOHNNY A. KUMAR, and CATHERINE
SHIANG, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge THU A. DANG.
Opinion dissenting-in-part filed by Administrative Patent Judge
CATHERINE SHIANG.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-8, 12-13, 15, 32-36. 2 Claims 16-31 have been withdrawn from
consideration. We have jurisdiction under 35 U.S.C. § 6(b ).
1 According to Appellants, the real party in interest is Texas Instruments
Incorporated. App. Br. 1.
2 In the Examiner's Answer, the Examiner withdraws the rejections of
claims 9-11, 14, 37, 38, and 41 under§ 103(a). Ans. 15. In particular, the
Examiner indicates that these claims "would be allowable if rewritten in
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We affirm.
A. INVENTION
According to Appellants, the invention is directed to a "non-line-of-
sight (NLOS) wireless backhaul downlink communication." Spec. i-f 3.
B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A method for communicating over a wireless backhaul
channel, comprising:
generating a radio frame comprising a plurality of time
slots, wherein each time slot comprises a plurality of symbols in
time and a plurality of sub-carriers in a system bandwidth, and
wherein the radio frame comprises an adjustable link
directionality ratio of a number of the time slots for an uplink
(UL) direction and the number of time slots for a downlink (DL)
direction to provide traffic load balancing;
broadcasting a broadcast channel signal to a plurality of-
remote units in a number of consecutive sub-carriers centered
about a direct current (DC) sub-carrier in at least one of the time
slots in the radio frame regardless of the system bandwidth,
wherein the broadcast channel signal comprises a transmission
schedule comprising slot assignments that indicate a link
direction and a transmission opportunity for a first of the plurality
of remote units; and
transmitting a DL control channel signal and a DL data
channel signal to the first remote unit, wherein the DL control
channel signal comprises DL control information that controls
transmission of the DL data channel signal, wherein the
broadcast channel signal, the DL control channel signal, and the
DL data channel signal are transmitted by employing a time-
frequency multiplex scheme, and wherein the DL data channel
signal is transmitted by employing a single carrier block
independent from including all of the limitations of the base claim and any
intervening claims." Id.
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transmission scheme comprising a Discrete Fourier Transform
(DPT) spreading for frequency diversity.
C. REJECTIONS 3
1) Claims 1-5 and 12 stand rejected under 35 U.S.C. § 103(a) over
Choi (US 2011/0007695 Al; published Jan. 13, 2011), Classon (US
200710064669 Al; published Mar. 22, 2007), and Drewes (US
2014/0064067 Al; published Mar. 6, 2014).
2) Claim 6 stands rejected under 35 U.S.C. § 103(a) over Choi,
Classon, Drewes, and Kim (US 2014/0044104 Al; published Feb. 13, 2014).
3) Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) over Choi,
Classon, Drewes, and Li (US 2013/0201925 Al; published Aug. 8, 2013).
4) Claims 13 and 15 stand rejected under 35 U.S.C. § 103(a) over
Choi, Classon, Drewes, and Nakao (US 2011/0134874 Al; published June 9,
2011).
5) Claims 32-34 stand rejected under 35 U.S.C. § 103(a) over Zhang
(US 2009/0201838 Al; published Aug. 13, 2009), and Drewes.
6) Claims 35 and 36 stand rejected under 35 U.S.C. § 103(a) over
Zhang, Drewes, and Li.
7) Claim 39 stands rejected under 35 U.S.C. § 103(a) over Zhang,
Drewes, and Classon.
8) Claims 40 and 42 stand rejected under 35 U.S.C. § 103(a) over
Zhang, Drewes, and Nakao.
3 In the Examiner's Answer, the Examiner withdraws the rejections of
claims 9-11, 14, 37, 38, and 41 under§ 103(a). Ans. 15.
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II. ISSUE
The dispositive issue before us is whether the Examiner errs in finding
the combination of Choi, Classon and Drewes teaches or suggests a method
"for communicating over a wireless backhaul channel" comprising the steps
of:
1) "generating a radio frame . . . wherein the radio frame comprises
an adjustable link directionality ratio of a number of the time slots for an
uplink (UL) direction and the number of time slots for a downlink (DL)
direction to provide traffic load balancing" and
2) "transmitting a DL control channel signal and a DL data channel
signal to the first remote unit ... by employing a single carrier block
transmission scheme comprising a Discrete Fourier Transform (DPT)
spreading for frequency diversity." Claim 1 (emphasis added).
III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Choi
1. Choi discloses mapping physical control channels onto radio
resource elements. Abstract. Choi recognizes that Long Tern Evolution
(L TE) networks employ packet-scheduling, which dynamically allocates
resources to mobile communication devices through time and frequency
domain scheduling over a shared physical control channel. Id. i-f 3.
Accordingly, Choi provides mobile radio technologies, L TE and LTE-A
(LTE-Advanced), which support multiple access methods for uplink and
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downlink transmissions. Id. i-f 17. L TE and LTE-A support duplexing
methods including TDD (time division duplex), and FDD (full-duplex). Id.
,-r 18.
2. Although Choi describes embodiments in a full-duplex FDD
environment, Choi indicates that "half-duplex FDD and TDD
implementations are provided in alternative embodiments." Id.
IV. ANALYSIS
Claim 1
Appellants contend the "Examiner fails to address any prior art
teaching 'a wireless backhaul channel'" ... [as set forth in the preamble].
App. Br. 12. According to Appellants, "[a] wireless backhaul channel as
described in Appellants' specification may refer to the part of radio access
network from the base station to the core network" wherein "[ t ]he
requirements of a backhaul communication channel are completely different
than a mobile access channel." Id. However, Appellants merely contend
that "this was traversed in Appellants' last response," then point to the
Specification and contend the "Examiner has not provided any rationale in
rejecting the claim." Id.
Further, Appellants contends that "Claim 1 recites adjustable 'link
directionality ratio to provide traffic load balancing"' but "[ n ]owhere in the
cited sections does Choi describe adjustability of timeslots for downlink and
uplink direction for load balancing as recited in Claim 1." App. Br. 13.
Although Appellants concede that "Choi clearly defines DL and UL
bandwidth with defined frequency carriers based on the technology used:
L TE and/or LTE-A," Appellants contend "Choi further does not disclose 'an
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adjustable link directionality ratio ... to provide traffic load balancing."' Id.
(repeating the contested language of claim 1) (emphasis omitted).
Although Appellants acknowledge that the Examiner "cites Classon
as disclosing DL transmission using single carrier DPT-spread OFDM,"
Appellants contend "Classon does not disclose a backhaul network as
explained herein above." App. Br. 14. Similarly, although Appellants
acknowledge that the Examiner relies on Drewes in combination with Choi
and Classon for teaching and suggesting "broadcast channel signal to a
plurality of remote units in a number of consecutive sub-carriers centered
about a direct current (DC) sub-carrier in at least one of the time slots in the
radio frame regardless of the system bandwidth" (id. (emphasis omitted)),
Appellants contend "Drewes does not disclose the broadcast channel signal
comprises a transmission schedule comprising slot assignments that indicate
a link direction and a transmission opportunity for a first of the plurality of
remote units as recited." Id. (repeating the contested language of claim 1)
(emphasis omitted).
We give the claim, as specifically recited, its broadest reasonable
interpretation consistent with the Specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997). While we interpret claims broadly but
reasonably in light of the Specification, we, nonetheless, must not import
limitations from the Specification into the claims. See In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993).
Preamble
Although Appellants contend the "Examiner fails to address any prior
art teaching 'a wireless backhaul channel"' as set forth in the preamble
(App. Br. 12) (emphasis omitted), Appellants merely provide attorney
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conclusory statement that Choi is different from a "wireless backhaul
channel" as claimed. Id. Our reviewing court guides that such mere
attorney conclusory statements, which are unsupported by factual evidence,
are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984); and Ex parte Belinne, No. 2009-004693, slip op. at 7-8 (BPAI Aug.
10, 2009) (informative). See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011).
Here, Appellants provide no factual support for the contentions that
"[ t ]he requirements of a backhaul communication channel are completely
different than a mobile access channel." App. Br. 12. Rather, as set forth in
the exemplary embodiment in the cited portion of the Specification, there
"may" be differences, wherein the differences decrease as the backhaul link
density increases. See Spec. i-f 28.
Although Appellants contend that "this was traversed in Appellants'
last response" (App. Br. 12), Appellants are reminded that "Appellants' last
response" is not part of the record in this appeal.
Nevertheless, we note that claim 1 does not positively recite a
"wireless backhaul channel" (App. Br. 12), but rather, recites a method "for
communicating over" a backhaul channel in the preamble. A preamble
"limits the invention if it recites essential structure or steps, or if it is
'necessary to give life, meaning, and vitality' to the claim." Catalina Mktg.
Int'!, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)
(quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305
(Fed. Cir. 1999)). The preamble limits claim scope when it is essential to
understand limitations or terms in the claim body. Catalina Mktg. Int 'l, 289
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F.3d at 808. Conversely, "a preamble is not limiting 'where a patentee
defines a structurally complete invention in the claim body and uses the
preamble only to state a purpose or intended use for the invention."' Id.
(quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)).
Here, we determine that the recitation of "for communicating over a
wireless backhaul channel" appears only in the preamble of claim 1, and
nowhere else in the claim, and thus does not limit the claim. We agree with
the Examiner that 1) "the preamble merely recites the purpose of the process
because the preamble does not provide any additional distinct definition," 2)
"the body of the claim does not depend on the preamble for completeness
because the steps can apply for any type of communication channels," and 3)
"the steps in the body of the claim are able to stand alone because the
removal of the preamble phrase does not affect the steps of the claimed
invention." See Ans. 2. In particular, the body of the claim recites
"generating," "broadcasting," and "transmitting" of various data, which sets
forth a complete invention that is readily understood without resorting to the
preamble of the claim.
Based on the record before us, we are unpersuaded that the Examiner
errs in finding that Choi at least suggests a method that maybe intended "for
communicating over a wireless backhaul channel." Claim 1.
Adjustable Link Directionality Ratio
Although Appellants contend "[ n Jo where in the cited sections does
Choi describe adjustability of timeslots for downlink and uplink direction for
load balancing as recited in Claim 1" (App. Br. 13), we note that method
claim 1 does not positively recite any adjusting step. Rather, claim 1 merely
recites a "generating" step "wherein" the generated radio frame comprises
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particular data, i.e., "an adjustable link directionality ratio" that is intended
for "load balancing." That is, the type of data comprised in the generated
data frame is provided in a "wherein" clause. 4,5 Given the broadest
reasonable interpretation of the claim, claim 1 merely requires generating
4 See MANUAL OF p ATENT EXAMINING PROCEDURE § 2111.04 (9th Ed., Rev.
08.2017, Jan. 2018))regarding "wherein" clauses:
Id.
Claim scope is not limited by claim language that suggests or
makes optional but does not require steps to be performed, or
by claim language that does not limit a claim to a particular
structure. However, examples of claim language, although not
exhaustive, that may raise a question as to the limiting effect of
the language in a claim are:
(A) "adapted to" or "adapted for" clauses;
(B) "wherein" clauses; and
(C) "whereby" clauses.
5 Further, Appellants' claim merely recites a step of generating data (radio
frame) which comprises certain data (adjustable link directionality ratio).
Appellants attempt to distinguish the claim strictly based on the content of
generated data - the type of data comprised in the generated data. The
content of the data, however, does not change the functionality of the recited
"generating" step. The recited functionality remains the same regardless of
what the data constitutes, or how the data may be named, wherein such data
does not further limit the claimed invention either functionally or
structurally. The informational content of the data, thus, represents non-
functional descriptive material, which "does not lend patentability to an
otherwise unpatentable computer-implemented product or process." Ex
parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008) (precedential). See Ex
parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (informative) (Fed. Cir.
Appeal No. 2006-1003), ajf'd, (Rule 36) (June 12, 2006) ("wellness-related"
data in databases and communicated on distributed network did not
functionally change either the data storage system or the communication
system used in the claimed method). See also In re Ngai, 367 F.3d 1336,
1339 (Fed. Cir. 2004); Nehls, 88 USPQ2d at 1887-90 (discussing non-
functional descriptive material).
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data, which may include a type of data, such as the link directionality ratio,
used for load balancing.
Nevertheless, even assuming arguendo, that our reviewing court were
to give the "wherein" clause and the content of the generated data patentable
weight, we are unpersuaded that the Examiner errs in finding that Choi at
least suggests the contested limitation.
As Appellants concede, "Choi clearly defines DL and UL bandwidth
with defined frequency carriers based on the technology used: LTE and/or
LTE-A." App. Br. 13. In particular, Choi discloses the use ofLTE and
L TE-A technology that support duplexing methods including TDD as well
as FDD. FF 1. The Examiner finds, and we agree, as possible
"'[a]dvantages/disadvantages ofLTE TDD and LTE FDD for cellular
communications"' such as those of Choi, "'it is possible to dynamically
change the ratio of UL and DL capacity to match demand."' Ans. 3 (quoting
https://web.archive.org/web/20130518034 7 44/http://www.radio-
electronics.com/ info/ cellulartelecomms/l te-1 ong-term-evo lution/l te-f dd-tdd-
dup lex. php ). In particular, for L TE-TDD, as shown below,
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10
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"It is possible to dynamically change the UL and DL capacity ratio to match
demand." Id.
As the Examiner concludes, "[b ]ased on fig[ ure] 17 and par[ agraph]
98 of the Appellants['] specification, the claimed phrase 'traffic load
balancing' means that changing the DL and UL ratio in a radio frame to
meet the demand of users," which is "exactly what Choi (and the 3GPP
standard) discloses." Id. Accordingly, we find no error with the Examiner's
reliance on Choi for teaching or at least suggesting the use of "an adjustable
link directionality ratio ... to provide load balancing." Id.; FF 1.
In the Reply Brief, Appellants concede that "'[i]t is possible to
dynamically change [t]he UL and DL capacity ratio to match demand"'
(internal citation omitted), but contend that such is "in the 'L TE-TDD'
characteristic column" whereas "the 'LTE-FDD' column states 'UL/DL
capacity is determined by frequency allocation set out by the regulatory
authorities."' Reply Br. 6-7 (internal citation omitted). Thus, Appellants
contend that "[i]t is therefore not possible to make dynamic changes to
match capacity" (emphasis omitted) in Choi because "Choi teaches ONLY
LTE-FDD embodiments." Id.
However, contrary to Appellants' contention that Choi teaches only
LTE-FDD (id.), Choi discloses the use ofLTE and LTE-A that support
duplexing methods including TDD as well as FDD. FF 1. Even Appellants
concede that "Choi mentions TDD" and "even further states ... , half-
duplex FDD and TDD implementations are provided in alternative
embodiments." Reply Br. 7 (emphasis omitted). That is, although Choi
describes embodiments in a full-duplex FDD environment, Choi indicates
that TDD implementations are also provided, however, in alternative
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embodiments. FF 2. Thus, we agree with the Examiner that, one of
ordinary skill in the art, upon reading Choi, would have found it obvious to
implement LTE-TDD as well, wherein, as Appellants do not contest, "[i]t is
possible to dynamically change [t]he UL and DL capacity ratio to match
demand." Reply Br. 6 (internal quotation marks and citation omitted).
In the Reply Brief, Appellants also "traverse Examiner's 'inherency"'
findings and contend that "[a] prior art reference anticipates a claim only if
the reference discloses, either expressly or inherently, every limitation of the
claim," that "this negative pregnant is not enough to show anticipation," and
that "to server as an anticipation ... [ s ]uch evidence must make clear that
the missing descriptive matter is necessarily present." Reply Br. 7-8 (citing
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999); Ex parte Levy, 17
USPQ2d 1461, 1464 (Bd. Pat. App. & lnt'f 1990); Rowe v. Dror, 112 F,3d
473; 478, 480-81 (Fed. Cir. 1997); Continental Can Company USA, Inc. v.
Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991)).
Appellants' argument is misplaced as the Examiner does not reject the
claims as being anticipated by Choi but rather as being obvious over Choi in
combination with the other references. Here, we find Choi's teaching and
suggestion of the use ofLTE-TDD to be sufficient to support the Examiner's
finding of obviousness.
We note that, even assuming arguendo that "Choi teaches ONLY
LTE-FDD embodiments" (Reply Br. 6-7), Appellants' contention that "[i]t
is therefore not possible to make dynamic changes to match capacity"
(emphasis omitted) is not commensurate in scope with the language of the
claim. In particular, claim 1 does not recite any "dynamic" changes "to
match capacity." See claim 1. Instead, claim 1 merely recites "wherein" the
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radio frame comprises an "adjustable" link directionality ratio. Thus,
although Appellants contend that, for LTE-FDD, "regulatory changes" that
are "set out by the regulatory authorities" would normally be required
(Reply Br. 7), nothing in claim precludes the cited "adjustable" ratio from
being "regulatory changes" set out by authorities. Id.
Discrete Fourier Transform (DFT) Spreading
As Appellants acknowledge, the Examiner "cites Classon as
disclosing DL transmission using single carrier DPT-spread OFDM." App.
Br. 14. Appellants do not contest such finding by the examiner but merely
contend, "Classon does not disclose a backhaul network." Id. (emphasis
omitted).
The test for obviousness is not what the references show individually
but what the combined teachings would have suggested to one of ordinary
skill in the art. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986). On this record, we are unpersuaded that the Examiner erred in
finding that the combination of Choi, Classon, and Drewes teaches and
suggests the contested limitation.
Although Appellants also contend "Drewes does not disclose the
broadcast channel signal comprises a transmission schedule comprising slot
assignments that indicate a link direction and a transmission opportunity for
a first of the plurality of remote units as recited" (App. Br. 14 (repeating the
contested language of claim 1 (emphasis omitted))), Appellants provide no
factual support for the contention. Merely reciting the language of the claim
is insufficient. See 37 C.F.R. § 41.37(c)(l)(iv) ("A statement which merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim"). Here, the Examiner makes a detailed
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finding that the combination of Choi, Classon, and Drewes teaches and
suggests the contested limitation. See Ans. 5. On this record, we are
unpersuaded that the Examiner erred in such finding.
Accordingly, we find that Appellants have not shown the Examiner
erred in rejecting claim 1 over Choi, Classon, and Drewes.
Dependent Claims 2---8, 12, 13, and 156
As for the dependent claims, Appellants merely provide mere
conclusory statements that the cited references do not teach, disclose or
mention particular claim limitations, as repeated. See App. Br. 15-30. As
discussed above, merely reciting the language of the claim and providing
mere attorney conclusory statements is insufficient. See 37 C.F.R.
§ 41.37(c)(l)(iv), Geisler, 116 F.3d at 1470; De Blauwe, 736 F.2d at 705;
and Belinne, No. 2009-004693, slip op. at 7-8. Here, the Examiner makes a
finding that the combination of Choi, Classon, and Drewes (and Kim, Li, or
Nakao) teaches or at least suggests the disputed limitations (Ans. 6-11 ),
which Appellants do not contest with factual support. On this record, we are
also unpersuaded that the Examiner erred in rejecting 1) claims 2-5 and 12
over Choi, Classon, and Drewes; 2) claim 6 over Choi, Classon, and Drewes,
in further view of Kim; 3) claims 7 and 8 over Choi, Classon, and Drewes,
in further view of Li ; and 4) claims 13 and 15 over Choi, Classon, and
Drewes, in further view of Nakao.
Claims 32-36, 39, 40, and 42 7
6 The Examiner withdraws the rejections of claims 9-11 and 14. See Ans.
15.
7 The Examiner withdraws the rejections of claims 37, 3 8, and 41. See Ans.
15.
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As for claim 32, Appellants merely contend that Zhang "is nothing
more than a general discussion of TDD" wherein it "does not teach
'generating a mute interval to replace a downlink interval or an uplink
interval in a previous frame to effect a change in a downlink-uplink
allocation ratio for a subsequent frame."' App. Br. 32-33 (internal citation
omitted). However, such contentions are not commensurate in scope with
the recited language of claim 32. See Claims Appendix 5---6. In particular,
claim 32 does not require any "mute interval" to "replace" and uplink or
downlink interval "in a previous frame" for "allocation ratio for a
subsequent frame."
As Appellants concede, Zhang discloses the use of TDD. Even
Appellants concede that Zhang discusses that "[a]dvantages of a TDD
system can include the flexibility of bandwidth allocation in an unpaired
frequency band, and the flexibility in selecting a downlink-to-uplink
resource allocation ratio (D/U ratio)." App. Br. 33 (citing Zhang i-f 34). On
this record, we are unpersuaded the Examiner erred in relying on Zhang for
teaching or at least suggesting a processing unit configured to "generate a
radio frame including an adjustable link directionality ratio ... to provide
traffic load balancing," as specifically recited. Claim 32.
Although Appellants also contend, "Drewes does not disclose
'broadcast a broadcast channel to a plurality of remote units ... "(App. Br.
34 (repeating the contested language of claim 32)), Appellants provide no
factual support for the contention. As similarly discussed above with respect
to claim 1, merely reciting the language of the claim is insufficient. See 3 7
C.F.R. § 41.37(c)(l)(iv). Here, the Examiner makes a detailed finding that
the combination of Zhang and Drewes teaches and suggests the contested
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limitation. See Ans. 13. On this record, we are unpersuaded that the
Examiner erred in such finding.
As for the dependent claims, Appellants merely contend that the
claims are allowable for the same reasons set forth above in support of the
patentability of claim 32, and/or provide mere conclusory statements that the
cited reference(s) do not teach, disclose, or mention particular claim
limitations, as repeated. See App. Br. 35--43. As discussed above, we are
unpersuaded that the Examiner erred in the rejection of claim 32. Further, as
discussed above, merely reciting the language of the claim and providing
mere attorney conclusory statements is insufficient. See 37 C.F.R.
§ 41.37(c)(l)(iv), Geisler, 116 F.3d at 1470; De Blauwe, 736 F.2d at 705;
and Belinne, No. 2009-004693, slip op. at 7-8. Here, the Examiner makes a
finding that the combination of Zhang and Drewes (and Li, Classon, or
Nakao) teaches or at least suggests the disputed limitation. See Ans. 15-16;
Final Act. 16-24. On this record, we are also unpersuaded that the
Examiner erred in rejecting: 1) claims 33 and 34 over Zhang and Drewes; 2)
claims 35 and 36 over Zhang and Drewes, in further view of Li; 3) claim 39
over Zhang and Drewes, in further view of Classon; and 4) claims 40 and 42
stand over Zhang and Drewes, in further view of Nakao.
V. CONCLUSION AND DECISION
The Examiner's rejections of claims 1-8, 12, 13, 15, 32-36, 39, 40,
and 42 under 35 U.S.C. § 103(a) are affirmed.
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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
17
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUNE CHUL ROH, PIERRE BERTRAND, SRINATH HOSUR,
VIJA Y POTHUKUCHI, and MOHAMED F AROUK MANSOUR
Appeal2017-009532
Application 14/297, 145
Technology Center 2400
Before THU A. DANG, JOHNNY A. KUMAR, and CATHERINE
SHIANG, Administrative Patent Judges.
SHIANG, Administrative Patent Judge, dissenting-in-part.
I join my colleagues in the decision affirming the Examiner's
rejection of claims 32-36, 39, 40, and 42 under 35 U.S.C. § 103(a).
I respectfully dissent from the majority's decision affirming the
Examiner's rejection of independent claim 1 and corresponding dependent
claims 2-8, 12, 13, and 15 under 35 U.S.C. § 103(a). In particular, the
Examiner has not provided adequate evidence or explanation to show the
cited prior art portions teach the claim limitation "wherein the radio frame
comprises an adjustable link directionality ratio of a number of the time slots
for an uplink (UL) direction and the number of time slots for a downlink
(DL) direction to provide traffic load balancing" ("Wherein Limitation"), as
required by claim 1, under the Examiner's mapping.
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I
In the Final Office Action, the Examiner cites Choi's paragraphs 3,
61, and 62 for teaching the Wherein Limitation. See Final Act. 6. The
Examiner finds "signals the allocation of physical radio resources for data
transmission on a Downlink Shared Channel (DL-SCH) and an Uplink
Shared Channel (UL-SCH) through a control channel mapped on physical
resource blocks, that is adjust ratio of DL and UL directions." Final Act. 6
(emphasis omitted). 8
The cited Choi paragraphs state:
[0003] For example, LTE networks employ packet-
scheduling, which dynamically allocates resources to mobile
communication device through time and frequency domain
scheduling over a shared physical control channel. Current L TE
networks, however, are unable to support mobile communication
device having higher bandwidth capabilities than L TE mobile
communication device. Thus, a network capable of supporting
mobile communication devices with different bandwidth
capabilities and/or mobile radio technologies is desired.
[0061] Resource grid 700 represents the time domain
horizontally and the frequency domain vertically. For example,
L TE-compliant bandwidth 701 is shown by a vertical arrow
centered on carrier frequency f3 703. Similarly, LTE-A-
compliant bandwidth 702 is shown by a vertical arrow centered
on carrier frequency f3 703. Among the various DL component
8 The Examiner also cites Choi's Figure 2, paragraphs 30-32 and finds "a
radio frame consists of slots, a slot may include symbols, subframe may be
available for downlink and uplink transmission in each interval." Final Act.
6 (emphasis omitted). That finding does not show the cited Choi paragraphs
teach the Wherein Limitation. Further, I have reviewed those cited Choi
portions and agree with Appellants that they do not teach the disputed
limitation. See Appeal Br. 13.
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carriers, the component carrier characterized by carrier
frequency f3 703 may be configured to support mixed
deployment scenario with L TE and LTE-A UEs. In some
embodiments, all other DL component carriers are configured to
be non-LTE backwards compatible (e.g., component carriers
characterized by other carrier frequencies).
[0062] In some embodiments, the bandwidth size allocated
for LTE and L TE-A operation is variable. A network may
determine the bandwidth necessary to support L TE user
operation and allocate the rest of the bandwidth to LTE-A
operation. This determination may be based on, for example,
L TE UE traffic, number of L TE UE users accessing a base
station, or pre-determined. As more users obtain LTE-A UEs, the
bandwidth needed for L TE operation may decrease. Thus, some
embodiments may adapt bandwidth allocation on a cell-by-cell
basis in response to the technology distribution of the users. In
some embodiments, the bandwidth allocation may be determined
uniformly for a whole network. In any case, variable L TE and
LTE-A bandwidth allocation is within the scope of some
embodiments. The determined LTE and L TE-A bandwidth
allocation may be signaled explicitly on P-BCH. Determining a
size for a bandwidth may include an active determination such
as setting a bandwidth size or may include a passive
determination such as making a check as to what the bandwidth
size is currently set to by the network or some other entity.
Choi i-fi-13, 61---62 (emphases omitted).
As pointed out by Appellants, the above Choi' s paragraphs do
not describe "an adjustable link directionality ratio of a number of the
time slots for an uplink (UL) direction and the number of time slots
for a downlink (DL) direction to provide traffic load balancing," as
required by claim 1. See Appeal Br. 13. Nor does the Examiner's
finding that "the allocation of physical radio resources for data
transmission on a Downlink Shared Channel (DL-SCH) and an
Uplink Shared Channel (UL-SCH) through a control channel mapped
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on physical resource blocks, that is adjust ratio of DL and UL
directions" (Final Act. 6 (emphasis omitted)) explains why and how
the cited Choi portions teach the Wherein Limitation.
In response to Appellants' arguments, the Examiner cites an
article entitled "LTE FDD, TDD, TD-LTE Duplex Schemes"
(https://web.archive.org/web/20130518034 7 44/http://www.radio-
electronics.com/ info/ cellulartelecomms/l te-1 ong-term-evo lution/l te-
f dd-tdd-dup lex. p hp) ("LTE Article") and Choi's paragraphs 3 and 36,
and determines Choi's paragraphs 3 and 36 inherently teach the
Wherein Limitation. See Ans. 3-5. In particular, the Examiner
determines:
[In the article,] Table entitled Advantages /disadvantages of LTE
TDD and LTE FDD for cellular communications, it clearly states
"it is possible to dynamically change the ratio of UL and DL
capacity to match demand". A screenshot of the Table is given
below where the arrow indicates the teaching. [9J Therefore, this
is inherent from Choi paragraphs [003] and [0036] based on the
mere definitions of the LTE standard .
. . . based on the subject matter from the L TE overview article,
and the citations from Choi, the subject matter of an adjustable
link directionality ratio of a number of the time slots for an uplink
(UL) direction and the number of time slots for a downlink (DL)
direction to provide traffic load balancing is inherent. Hence,
Choi discloses an "adjustable link directionality ratio of a
9 The cited table is under the section entitled "Advantages I disadvantages of
LTE TDD and LTE FDD for cellular communications." LTE Article 3.
Consistent with that heading, the cited table compares the pros and cons of
"L TE-TDD" and "L TE-FDD" configurations for various parameters. See
L TE Article 3. The Examiner cites the description for the L TE-TDD
configuration, which states, "it is possible to dynamically change the ratio of
UL and DL capacity to match demand." See Ans. 3. The Examiner does not
cite the description for the LTE-FDD configuration for the rejection.
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number of the time slots for an uplink (UL) direction and the
number of time slots for a downlink (DL) direction to provide
traffic load balancing" as recited in Claim 1, based on the cited
recitations and the inherency of this feature in the L TE standard.
Ans. 3-5 (emphases added) (original emphases omitted).
I disagree with the Examiner's determination.
Inherency is a question of fact that arises both in the context of
anticipation and obviousness rejections. See In re Napier, 55 F.3d 610, 613
(Fed. Cir. 1995). Inherency can only be established when "prior art
necessarily functions in accordance with, or includes, the claimed
limitations." In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir.
2002) (citations and internal quotation marks omitted).
The cited Choi's paragraphs 3 and 36 state:
[0003] For example, LTE networks employ packet-
scheduling, which dynamically allocates resources to mobile
communication device through time and frequency domain
scheduling over a shared physical control channel. Current L TE
networks, however, are unable to support mobile communication
device having higher bandwidth capabilities than L TE mobile
communication device. Thus, a network capable of supporting
mobile communication devices with different bandwidth
capabilities and/or mobile radio technologies is desired.
[0036] The Physical Downlink Control Channel (PDCCH)
carries the control information related to downlink transmissions
such as resource allocation ofDL-SCH. It also carries the control
information related to uplink transmissions such as resource
allocation of UL-SCH and Transmit Power Control commands
for PUCCH and PUSCH.
Choi i-fi-13, 36 (emphasis added) (original emphases omitted).
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Those cited Choi's paragraphs refer to LTE generally. The Examiner
incorrectly determines because Choi teaches L TE, and the L TE Article states
"it is possible"-but it is not necessary-to dynamically change the ratio of
UL and DL capacity to match demand, Choi inherently teaches "wherein the
radio frame comprises an adjustable link directionality ratio of a number of
the time slots for an uplink (UL) direction and the number of time slots for a
downlink (DL) direction to provide traffic load balancing," as required by
claim 1 (Ans. 3-5). The Examiner's determination is incorrect because
merely being "possible" does not meet the well-established standard for
inherency. See Cruciferous Sprout Litig., 301 F.3d at 1349. 10
II
For completeness, I also address whether the limitation "wherein the
radio frame comprises an adjustable link directionality ratio of a number of
the time slots for an uplink (UL) direction and the number of time slots for a
downlink (DL) direction to provide traffic load balancing" has patentable
weight, which the majority refers to in the analysis.
The original claim recites the above limitation. See Spec. p. 3 8. The
Summary of this invention specifies that limitation. See Spec. i-f 3. And the
Specification repeatedly describes that limitation. See, e.g., Spec. i-fi-133, 93,
95. That limitation does not merely describe an intended result, and both the
Examiner and Appellants give patentable weight to that limitation. See Final
10 Appellants raise additional arguments regarding claim 1. Because I
determine the Examiner erred in rejecting claiml based on the inherency
theory (discussed above), it is unnecessary to reach the additional arguments
regarding claim 1.
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Act. 6; Ans. 3-5; Appeal Br. 12-13; Reply Br. 5-8. The Examiner's
decision is correct in light of Federal Circuit precedents. See, e.g., Hoffer v.
Microsoft Corp., 405 F.3d 1326, 1330 (2005) (holding the whereby clause in
a method claim has patentable weight). The Examiner's decision is also
consistent with the MANUAL OF PATENT EXAMINING PROCEDURE
(MPEP) § 2111.04(II) (9th ed. Rev. 08.2017, Jan. 2018) regarding wherein
clauses, which specifically cites Hoffer. In short, I agree with the Examiner
that the Wherein Limitation has patentable weight.
III
For completeness, I also address whether the limitation "an adjustable
link directionality ratio of a number of the time slots for an uplink (UL)
direction and the number of time slots for a downlink (DL) direction to
provide traffic load balancing" constitutes non-functional descriptive
material, which the majority refers to in the analysis. Neither the Examiner
nor Appellants have stated the above limitation constitutes non-functional
descriptive material. For the reasons stated below, I determine the limitation
does not constitute non-functional descriptive material.
First, the Federal Circuit has "long held that if a limitation claims (a)
printed matter that (b) is not functionally or structurally related to the
physical substrate holding the printed matter, it does not lend any patentable
weight to the patentability analysis." In re Distefano, 808 F.3d 845, 848
(Fed. Cir. 2015). The Federal Circuit has held printed matter must have a
functional relationship to a substrate in order to have patentable weight,
because printed matter by itself is not patentable subject matter. See In re
Miller, 418 F.2d 1392, 1396 (CCPA 1969) ("printed matter by itself is not
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patentable subject matter, because [it is] non-statutory," but the printed
matter at issue (volumetric indicia and a legend) has patentable weight
because it had a "new and unobvious functional relationship" to the claimed
measuring receptacle).
Consistent with Miller, In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004) andin re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) are printed
matter cases. See King Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279
(Fed. Cir. 2010) ("these 'printed matter' cases [Miller, Ngai, and Gulack]
involved the addition of printed matter, such as written instructions, to a
known product"). In King Pharms., the Federal Circuit extended the printed
matter non-functional descriptive material doctrine to a method ("Although
these 'printed matter' cases involved the addition of printed matter ... to a
known product, we see no principled reason for limiting their reasoning to
that specific factual context. See Ngai, 367 F.3d at 1338-39; Gulack, 703
F.2d at 1385-87. Rather, we believe that the rationale underlying these
cases extends to the situation presented in this case, wherein an instructional
limitation is added to a method, as opposed to a product, known in the art").
King Pharms., 616 F.3d 1267 at 1279.
Following Federal Circuit precedents, the Distefano court again
reaffirmed the printer matter doctrine. See Distefano, 808 F .3d at 850
("Only if the limitation in question is determined to be printed matter does
one tum to the question of whether the printed matter nevertheless should be
given patentable weight.").
Here, the record does not have any evidence establishing "an
adjustable link directionality ratio of a number of the time slots for an uplink
(UL) direction and the number of time slots for a downlink (DL) direction to
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provide traffic load balancing" is "printed matter" non-functional descriptive
material. Therefore, the Federal Circuit's printed matter non-functional
descriptive material doctrine does not apply here.
Second, this Board's Ex parte Nehls, 88 USPQ2d 1883 (BP AI 2008)
(precedential) determines
in [Exparte Curry, 84 USPQ2d 1272 (BPAI 2005)], as here, a
computer was used to facilitate manipulating information that
previously would have been manipulated by less efficient means,
for example, manually. In such cases, the nature of the
information being manipulated does not lend patentability to an
otherwise unpatentable computer-implemented product or
process.
Ex parte Nehls, 88 USPQ2d at 1889.
Here, claim 1 recites "[a] method for communicating over a wireless
backhaul channel"-not merely using "a computer ... to facilitate
manipulating information." Nehls, 88 USPQ2d at 18839. Further, "an
adjustable link directionality ratio of a number of the time slots for an uplink
(UL) direction and the number of time slots for a downlink (DL) direction to
provide traffic load balancing" is unlike the nature of information being
manipulated in a computer in Ex parte Nehls. To the contrary, one skilled in
the art would understand the limitation recites an adjustable link
directionality ratio to provide traffic load balancing, and the adjustable link
directionality ratio is of a number of the time slots for an uplink (UL)
direction and the number of time slots for a downlink (DL) direction. In
short, the limitation is not merely information being manipulated in a
computer. Therefore, I determine that limitation does not constitute non-
functional descriptive material and has patentable weight. See In re Gulack,
703 F.2d 1381, 1385 (Fed. Cir. 1983) (When determining a claim's
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patentability, the Board must read the claim as a whole, considering each
and every claim limitation.).
For the reasons discussed above, I determine "wherein the radio frame
comprises an adjustable link directionality ratio of a number of the time slots
for an uplink (UL) direction and the number of time slots for a downlink
(DL) direction to provide traffic load balancing" has patentable weight, and
the Examiner has not shown the cited prior art portions teach the limitation
under the inherency theory advanced by the Examiner. Therefore, I
respectfully disagree with the majority's decision affirming the Examiner's
rejection of independent claim 1under35 U.S.C. § 103(a).
I also respectfully disagree with the majority's decision affirming the
Examiner's rejection of corresponding dependent claims 2-8, 12, 13, and 15
under 35 U.S.C. § 103(a).
10