Ex Parte Wild et al

Patent Trials and Appeals Board

Jun 25, 2019

14392294 - (D) (P.T.A.B. Jun. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/392,294 12/23/2015
48116 7590
FAY SHARPE/NOKIA
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115-1843
06/27/2019
FIRST NAMED INVENTOR
Thorsten Wild
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.
LUTZ 202087US01 3315
EXAMINER
JAHANGIR, KABIR U
ART UNIT PAPER NUMBER
2464
NOTIFICATION DATE DELIVERY MODE
06/27/2019 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):
docketing@faysharpe.com
Nokia.IPR@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THORSTEN WILD,
ANDRE FONSECA DOS SANTOS, and
HUSAIN NIZAMUDDIN
Appeal 2018-008650
Application 14/392,294
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 1-10 and 14, which are all claims pending in
the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 This Decision uses the following abbreviations: "Spec." for the original
specification, filed December 23, 2015, as the national stage entry of
PCT/EP2014/061064 (filed May 28, 2014), which claims the benefit of an
earlier filed European application; "Final Act." for the Final Office Action,
mailed March 15, 2017; "Br." for Appellants' Appeal Brief, filed February
14, 2018; "Claims App'x" for the Claims Appendix, filed March 7, 2018;
"Ans." for Examiner's Answer, mailed July 5, 2018.
2 According to Appellants, the real party in interest is Alcatel Lucent. Br. 2.
Appeal 2018-008650
Application 14/392,294
BACKGROUND
Appellants' disclosed embodiments and claimed invention relate to
cellular communications between a user equipment device and a base
station. Spec. 1 :4-5.
Claims 1 and 2, reproduced below, are representative of the claimed
subject matter:
1. A method for transmitting data in a frame structure performed
in a user equipment, the frame structure comprising at least one
regular frame and at least one reserved frame, the method comprising:
- determining in the user equipment disadvantageous
transmission conditions,
- if no disadvantageous transmission condition is
determined by the user equipment, transmitting data in a regular
frame within the frame structure, and
- if disadvantageous transmission conditions are
determined by the user equipment, transmitting data in a
reserved frame within the frame structure.
2. A method for transmitting data according to claim 1, wherein
disadvantageous transmission conditions are determined if a signal
received from the base station is below a threshold.
Claims App'x 1.
THE REJECTIONS
Rl. Claims 1, 2, 4-10, and 14 stand rejected under 35 U.S.C.
§ 102(a)(l) as anticipated by Khandekar et al. (US 2009/0131065 Al,
published May 21, 2009) ("Khandekar"). Final Act. 6-12.
R2. Claim 3 stands rejected under 35 U.S.C. § 103 as obvious over
Khandekar and Peisa et al. (US 2008/0002617 Al, published Jan. 3, 2008)
("Peisa"). FinalAct. 12-13.
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Application 14/392,294
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. § 41.37(c)(l)(iv).
We have considered all of Appellants' arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Anticipation Rejection RI of Claims 1, 2, 4-10, and 14
The Examiner rejects claims 1, 2, 4-10, and 14 under 35 U.S.C.
§ 102(a)(l) as anticipated by Khandekar. Final Act. 6-12. Appellants argue
independent claim 1 and dependent claim 2. Br. 5-8. For independent
claim 14, Appellants rely on the arguments presented for independent
claim 1 (id. at 7), and Appellants do not argue any other dependent claims
(see id. at 8). Therefore, consistent with the provisions of 37 C.F.R.
§ 41.37(c)(l)(iv), we limit our discussion to claims 1 and 2. Independent
claim 14 and dependent claims 4-10 stand or fall with claim 1.
Claim 1
Claim 1 recites "determining in the user equipment disadvantageous
transmission conditions." Claims App'x 1. The claim also specifies that, "if
no disadvantageous transmission condition is determined by the user
equipment, transmitting data in a regular frame within the frame structure,"
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Application 14/392,294
and otherwise, "transmitting data in a reserved frame within the frame
structure." Id.
The Examiner found Khandekar's user equipment terminal (110)
"determin[ es] ... disadvantageous transmission conditions" because the
terminal measures the received power of base stations and reports an
observed interference condition. Final Act. 7 ( citing Khandekar ,i 70); see
also Khandekar ,i 29 ( explaining terminal 100 may be a user equipment
(UE) ). The Examiner further found that Khandekar' s terminal "transmit[ s]
data in a regular frame" or "transmit[ s] data in a reserved frame" based on
the reported interference condition. Id. at 7-8 ( citing Khandekar ,i,i 54, 70).
Appellants argue that Khandekar fails to disclose "a UE which
performs the method as claimed." Br. 5. Appellants contend that, in the
claimed invention, the user equipment "decides for itself if it is experiencing
disadvantageous transmission conditions and depending on its own decision,
determines for itself to use reserved frames or not." Id. ( emphasis omitted).
Appellants submit that Khandekar fails to anticipate because the serving
base station decides whether a reserved frame should be used. Id. at 5-6.
Finally, Appellants contend that Khandekar's terminal does not perform the
determining step because "merely measuring interference" is insufficient.
Id. at 6.
In the Answer, the Examiner finds Khandekar's interference condition
discloses the claimed "disadvantageous transmission condition." Ans. 11;
see also Final Act. 6-8. The Examiner also finds that Khandekar's terminal
determines this condition and transmits data in a regular frame or a reserved
frame based on that determination. Ans. 11-12 ( citing Khandekar ,i,i 54, 70,
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Application 14/392,294
Fig. 7 (steps 712, 714)). Appellants elected not to file a Reply Brief
responding to the findings presented in the Examiner's Answer.
We are not persuaded of Examiner error. Appellants' arguments are
predicated on the erroneous assumptions that claim 1 : (a) requires the user
equipment to decide for itself which type of frame to use, and (b) prohibits
the base station's involvement in this decision. For example, Appellants
state:
In the present application, unlike Khandekar, the base station
does not determine if disadvantage conditions exist for the UE
nor does the base station determine which type of frame (i.e.,
reserved or regular) the UE is to transmit in. Indeed, according
to claim 1, the UE determines for itself if it is experiencing
disadvantageous conditions, and based on its own
determination, the UE decides for itself whether to transmit in a
regular frame or a reserved frame.
Br. 6 ( emphasis added). However, these arguments are not commensurate
with the broadest reasonable interpretation of claim 1. 3 In particular, claim 1
does not require the user equipment to decide for itself which type of frame
to use; rather, claim 1 requires "determining in the user equipment
disadvantageous transmission conditions." Claims App 'x 1 ( emphasis
added). The remainder of the claim also specifies that, if the condition is not
3 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using "the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant's specification." In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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Application 14/392,294
determined, the user equipment "transmit[ s] data in a regular frame," and
otherwise it "transmit[s] data in a reserved frame." Id. While a condition
may be "determin[ ed]" by selecting the condition, a condition may also be
"determin[ ed]" by merely ascertaining the existence of, or measuring, the
condition. The broadest reasonable interpretation of the claim term
"determining" includes both of these possibilities. See Am. Acad. of Sci.
Tech. Ctr., 367 F.3d at 1364 (broadest reasonable construction applies
during prosecution). Thus, claim 1 includes a method where the user
equipment ascertains that a condition exists and, ultimately, transmits data in
a reserved frame. Further, the claim language neither requires the user
equipment to select the frame type, nor prohibits a base station's
involvement.
Moreover, Appellants identify no basis for imposing the proposed
requirements. See generally Br. 5-7. For example, Appellants do not point
to any language in the claim that supports their interpretation, and
Appellants do not identify any passages in the Specification that would
justify concluding the claim includes either requirement. In fact,
Appellants' Specification expressly describes involvement by a base
station-in particular, after a "disadvantageous transmission condition" is
identified, the user equipment communicates a request to a base station,
seeking permission to transmit in a reserved frame. Spec. 12: 12-13: 12
( describing embodiment disclosed in Figure 5).
Accordingly, we conclude the broadest reasonable interpretation of
claim 1 does not require the user equipment to decide which type of frame to
use and does not prohibit the base station's involvement. Given this
construction, we are not persuaded by Appellants' arguments that
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Application 14/392,294
Khandekar is deficient because its terminal does not decide which type of
frame to use and because its base station is involved. E.g., Khandekar ,i,i 57
("[T]erminal 110 may initiate interlace reservation by sending a message to
selected base station 120 or interfering base station 122."), 70 ("The terminal
may measure received power ... [ and] report interference condition
observed . . . . The terminal may communicate with the serving base station
in time intervals reserved ... based on the reported interference condition.").
Appellants also argue Khandekar's fails to disclose "determining ...
disadvantageous transmission conditions," as required by claim 1. See Br. 6;
Claims App'x 1 (emphasis added). The Examiner found that Khandekar's
interference condition discloses the "disadvantageous transmission
condition" recited by the claim. Ans. 11; see Final Act. 7. Accordingly,
because Khandekar's terminal measures interference (Khandekar ,i 70), the
Examiner found Khandekar discloses this limitation (Final Act. 7; Ans. 11-
12). Appellants allege this finding is in error and explain:
Measuring a quantity such as interference is not the same thing
as making a determination as to the state of a condition (i.e.,
either disadvantageous or not).
For example, consider an object being supported on a
platform. One may measure the weight of the object without
making any determination whether or not that object is too
heavy to be supported on the platform. Again, simply
measuring a property is not the same thing as determining the
state of a condition.
Br. 6. We are not persuaded by Appellants arguments because they argue
limitations not found in claim 1. In particular, Appellants' analogy is
inapposite because claim 1 determines a condition, but does not require the
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condition to be evaluated.4 Like the Examiner, we find Khandekar discloses
determining a condition because Khandekar measures an interference
condition (see Khandekar ,i 70), and Appellants fail to identify error in this
finding.
Finally, we have reviewed the cited reference, and we perceive no
error in the Examiner's findings. E.g., Khandekar ,i,i 49, 54, 70, 78. We
adopt as our own ( 1) the findings and reasons set forth by the Examiner in
the action from which this appeal is taken (Final Act. 2-4, 6-8); and (2) the
reasons set forth by the Examiner in the Examiner's Answer in response to
Appellants' Appeal Brief (Ans. 10-13).
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on Khandekar to disclose the
disputed limitation of claim 1, nor do we find error in the Examiner's
resulting finding of anticipation. Accordingly, we sustain the Examiner's
anticipation rejection of independent claim 1, and independent claim 14 and
dependent claims 4-10, which fall therewith.
4 In the event of further prosecution, the Examiner may consider a rejection
of independent claims 1 and 14 under 35 U.S.C. § l 12(b) as indefinite
because they include the ambiguous term "disadvantageous transmission
conditions." The meets and bounds of this claim term are unclear, and we
are not aware of an objective standard for determining whether this
limitation is satisfied. See Berkheimer v. HP Inc., 881 F.3d 1360, 1364
(Fed. Cir. 2018) (holding term "minimal redundancy" indefinite because
term lacked objective boundary). Although the Board is authorized to reject
claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the
Board does not elect to do so. See MPEP § 1213.02 (9th ed. 2018).
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Claim 2
Claim 2 recites: "disadvantageous transmission conditions are
determined if a signal received from the base station is below a threshold."
Claims App'x 1.
For this limitation, the Final Office Action pointed to Khandekar's
disclosure that "[t]he terminal may measure received power of base
stations." Final Act. 8 ( quoting Khandekar ,i 7 0) ( emphasis omitted).
Appellants allege the Examiner's rejection is in error because the cited
paragraph fails to disclose a "threshold," or a signal below the threshold, as
required by the claim. Br. 7-8.
In response, the Examiner points to an additional paragraph of
Khandekar, which states: "The terminal may observe high interference if
the received power for the interfering base station at the terminal exceeds a
threshold, which may indicate that the terminal may be desensed by the
interfering base station." Ans. 14 ( quoting Khandekar ,i 78) ( emphasis
added). The Examiner finds this discloses the disputed limitation and
explains:
In other words, when UE observe high interference from
interfering base station, the signal from current base station will
fall below a threshold because the terminal is desensed by the
interfering base station. Therefore, UE measures the
interference condition in response to the signal from current
base station falls below a threshold.
Id. Appellants elected not to file a Reply Brief in response to the
Examiner's factual findings.
We are not persuaded of Examiner error. In particular, the
Examiner's Answer articulates factual findings that are consistent with and
supported by the reference's disclosure. See Ans. 14; Khandekar ,i,i 70, 78.
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Appellants do not identify any error in the findings and explanation provided
by the Examiner in the Answer. Accordingly, we determine the Examiner's
findings regarding the disputed limitation support a prima facie case of
anticipation, and Appellants have not shown error in these findings. See In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (If an examiner presents a
prima facie case, "the burden of coming forward with evidence or argument
shifts to the applicant.").
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on Khandekar to disclose
claim 2, nor do we find error in the Examiner's resulting finding of
anticipation. Accordingly, we sustain the Examiner's anticipation rejection
of claim 2.
Obviousness Rejection R2 of Claim 3
The Examiner rejects dependent claim 3 under 35 U.S.C. § 103 as
obvious over a combination ofKhandekar and Peisa. Final Act. 12-13. For
this claim, Appellants rely on the same arguments made with respect to
claim 1. Br. 8. These arguments, however, are not persuasive for the
reasons discussed above. Consequently, we find Appellants' arguments do
not show error in the Examiner's factual findings or the conclusion of
obviousness of claim 3. Accordingly, we sustain the Examiner's
obviousness rejection of dependent claim 3.
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DECISION
We affirm the Examiner's decision rejecting claims 1-10 and 14.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l)(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED
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