14571177 (P.T.A.B. Jan. 28, 2019)

Ex Parte Sayana et al

Patent Trial and Appeal BoardJan 28, 2019

14571177 (P.T.A.B. Jan. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/571,177 106809 7590 Docket Clerk - SAMS P.O. Drawer 800889 Dallas, TX 75380 12/15/2014 01/30/2019 FIRST NAMED INVENTOR Krishna Sayana 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. 2012.06.013.SRl 3947 EXAMINER LINDENBAUM, ALAN LOUIS ART UNIT PAPER NUMBER 2466 NOTIFICATION DATE DELIVERY MODE 01/30/2019 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): patents@munckwilson.com munckwilson@gmail.com patent.srad@samsung.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KRISHNA SAY ANA, BOON LOONG NG, YOUNG-HAN NAM, THOMAS DAVID NOVLAN, JINKYU HAN, JIANZHONG ZHANG, HYOJIN LEE, and YOUN-SUN KIM Appeal2018-006464 Application 14/571, 177 Technology Center 2400 Before: MAHSHID D. SAADAT, BETH Z. SHAW, and SCOTT E. BAIN, Administrative Patent Judges. SHAW, Administrative Patent Judge. DECISION ON APPEAL Appeal2018-006464 Application 14/571, 177 Appellants appeal under 35 U.S.C. Â§ I34(a) from a rejection of claims 65-84, which are all the pending claims. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. INVENTION The claims are directed to reporting channel state information (CSI) in user equipment. Independent claim 65, reproduced below, is illustrative of the claimed subject matter: 65. A method for reporting channel state information (CSI) in a user equipment, the method comprising: acquiring a first CSI configuration associated with a first CSI-reference signal (CSI-RS) resource and a first CSI- interference measurement, and a second CSI configuration associated with a second CSI-RS resource and a second CSI- interference measurement; obtaining a rank indicator (RI) of the first CSI configuration, where the RI of the first CSI configuration is the same as an RI of the second CSI configuration, and wherein the second CSI configuration is configured for an RI report by a higher layer; and reporting the RI for the first CSI configuration. REJECTIONS The Examiner rejected claims 65-84 under pre-AIA 35 U.S.C. Â§ I03(a) as being obvious over Khoshnevis et al. (US 2013/0258874 Al, published Oct. 3, 2013), Xu et al. (US 2013/0286904 Al, published Oct. 31, 2013), and Etemad et al. (US 2013/0301548 Al, published Nov. 14, 2013). 2 Appeal2018-006464 Application 14/571, 177 CONTENTIONS AND ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments that the Examiner has erred. We agree with Appellants' contentions that the Examiner erred for the following reasons. The Examiner determines "Khoshnevis discloses CSl-interference measurement because a person of ordinary skill in the art, at the time of the invention, would have understood state Channel State Information measurements inherently include interference information." Final Act. 4. In the alternative, the Examiner additionally finds Etemad teaches that a CSI configuration is associated with a CSI-reference signal resource and a CSI- interference measurement. Id. We address each of these findings below. Khoshnevis "The inherent teaching of a prior art reference" is a "question of fact." In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995). Inherency may supply a missing claim limitation in an obviousness analysis. See, e.g., Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1354 (Fed. Cir. 2012); Alcon Research, Ltd. v. Apotex Inc., 687 F.3d 1362, 1369; In re Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011); In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009). However, the use of inherency must be carefully circumscribed in the context of obviousness. PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1194--96 (Fed. Cir. 2014). Inherency ... may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. If, however, the disclosure is sufficient to show that the natural result flowing from the operation as taught would result in the performance of the questioned function, it seems to be well settled that the disclosure should be regarded as sufficient. In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (citations omitted). 3 Appeal2018-006464 Application 14/571, 177 Appellants argue the Examiner's finding of inherency is incorrect because CSI measurements as defined by Appellants are affected by interference signals from multiple transmission points. App. Br. 16. In the Answer, the Examiner does not respond with facts to support the legal conclusion of inherency. We cannot, on this record, conclude that the CSI- interference measurements necessari~y are present in Khoshnevis or in the combination of prior art references. There are no findings of fact addressing that question on this record, and we decline to make such findings in the first instance. Etemad In the alternative, the Examiner relies on Etemad to teach that a CSI configuration is associated with a CSI-reference signal resource and a CSI- interference measurement. Final Act. 4; Ans. 15-16. Yet, as Appellants argue in the Appeal Brief, the non-provisional application resulting in Etemad was not filed until December 28, 2012, and is not prior art to the subject application unless the cited content of Etemad is supported in the priority filing for that non-provisional application, U.S. Provisional Patent Application No. 61/626,233, filed May 11, 2012 (the '233 provisional). App. Br. 18-19. Appellants argue the phrase "CSI-interference measurement ... resource" from cited paragraph 27 of Etemad appears nowhere within the 235 pages of the '233 provisional, and therefore, the cited portion of Etemad is not prior art to the claimed invention. Id. The Examiner does not respond to this argument in the Answer, other than to restate the non-provisional and provisional filing dates of Etemad. Thus, on this record, the Examiner has not shown sufficiently that Etemad is entitled to claim priority to the cited subject matter in the '233 provisional. In other 4 Appeal2018-006464 Application 14/571, 177 words, the Examiner has not shown on this record that Etemad teaches that a CSI configuration is associated with a CSI-reference signal resource and a CSI-interference measurement. Therefore, we are persuaded of error in the Examiner's rejection of independent claim 65 under 35 U.S.C. Â§ 103, and we do not sustain the Â§ 103 rejection of claim 65. For the same reasons, we do not sustain the Â§ 103 rejection of independent claims 70, 75, and 80, as well as the pending dependent claims. DECISION For the above reasons, the Examiner's rejection of claims 65-84 is reversed. REVERSED 5