QUALCOMM Incorporated

Patent Trials and Appeals Board

Jan 26, 2022

2020002617 (P.T.A.B. Jan. 26, 2022)

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. 14/456,880 08/11/2014 Aleksandar Damnjanovic PQ093.01 (81679.0289) 3484 109682 7590 01/26/2022 Holland & Hart LLP/Qualcomm P.O. Box 11583 Salt Lake City, UT 84147 EXAMINER SCHNELL, RICHARD L ART UNIT PAPER NUMBER 2416 NOTIFICATION DATE DELIVERY MODE 01/26/2022 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): ocpat_uspto@qualcomm.com patentdocket@hollandhart.com qualcomm@hollandhart.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ALEKSANDAR DAMNJANOVIC, NAGA BHUSHAN, WANSHI CHEN, DURGA PRASAD MALLADI, TINGFANG JI, TAO LUO, YONGBIN WEI, and PETER GAAL Appeal 2020-002617 Application 14/456,880 Technology Center 2400 Before CARL W. WHITEHEAD JR., ERIC S. FRAHM, and DAVID M. KOHUT, Administrative Patent Judges. KOHUT, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-3, 5-11, 13-19, 21-26, and 28-34. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter NEW GROUNDS OF REJECTION under 37 C.F.R. § 41.50(B). 1 We use “Appellant” to reference the applicant as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Qualcomm Incorporated.” Appeal Br. 2. Appeal 2020-002617 Application 14/456,880 2 STATEMENT OF THE CASE Appellant’s Invention According to the Specification, the present invention “generally relate[s] to . . . wireless communications” and, “[m]ore particularly, . . . to the transmission of data frames including data subframes, and the transmission of group hybrid automatic repeat request (HARQ) feedback messages for groups of the data subframes (i.e., messages containing HARQ feedback information for groups of data subframes).” Spec. ¶ 5. Claim 1, reproduced below, is illustrative of argued subject matter. 1. A method for wireless communications at a base station, comprising: identifying a transmission period that is synchronized with a radio frame interval for communications over a licensed spectrum, the transmission period comprising a fixed set of subframes for communications over an unlicensed spectrum with a user equipment (UE), the transmission period comprising a downlink portion and an uplink portion subsequent to the downlink portion, the uplink portion comprising at least a last subframe of the transmission period, and the uplink portion spanning a same set of frequency resources as the downlink portion; transmitting, over the unlicensed spectrum to the UE, during the downlink portion of the transmission period, data via a set of data subframes of the downlink portion, wherein the set of data subframes comprises a contiguous set of two or more data subframes designated for downlink communication; transmitting, over the unlicensed spectrum to the UE subsequent to the data via the set of data subframes of the downlink portion, an uplink grant to the UE; receiving, over the unlicensed spectrum from the UE, during a subframe of an uplink portion of a subsequent transmission period, a group hybrid automatic repeat request (HARQ) Appeal 2020-002617 Application 14/456,880 3 feedback message for data associated with the contiguous set of two or more data subframes, the group HARQ feedback message being responsive to the uplink grant. Appeal Br. 15,2 Claims App. Rejections Claims 1-3, 6, 9-11, 14, 17-19, 22-26, 29, and 30 are rejected under 35 U.S.C. § 103 as being unpatentable over Luo (US 2011/0141901 A1, published June 16, 2011), Zou (US 2014/0031054 A1, published Jan. 30, 2014), and Awad (US 2016/0073391 A1, published Mar. 10, 2016). Final Act. 3-18. Claims 5, 13, 21, and 28 are rejected under 35 U.S.C. § 103 as being unpatentable over Luo, Zou, Awad, and Li (US 2013/0148640 A1, published June 13, 2013). Final Act. 19-22. Claims 7, 8, 15, and 16 are rejected under 35 U.S.C. § 103 as being unpatentable over Luo, Zou, Awad, and Kang (US 2012/0327915 A1, published Dec. 27, 2012). Final Act. 22-24. Claims 31-34 are rejected under 35 U.S.C. § 103 as being unpatentable over Luo, Zou, Awad, and Bala (US 2013/0294356 A1, published Nov. 7, 2013). Final Act. 24-27. OPINION Because an argued feature of all claims is unclear, we pro forma reverse the Examiner’s rejections of claims 1-3, 5-11, 13-19, 21-26, and 28-34 under 35 U.S.C. § 103. See In re Steele, 305 F.2d 859, 862-63 2 The Appeal Brief is not paginated. Our reference to a page number of the Appeal Brief indicates the page number that would have resulted if the brief’s first page stating “APPEAL BRIEF” were paginated as the first page “1.” Appeal 2020-002617 Application 14/456,880 4 (CCPA 1962) (reversing the Board’s affirmance of a 35 U.S.C. § 103 rejection because “the claims do not particularly point out and distinctly claim the invention as required by 35 U.S.C. § 112” and the Board’s decision was thus “based on unsupported speculative assumptions”).3 Further, and for the same reason, we enter a new ground of rejection against claims 1-3, 5-11, 13-19, 21-26, and 28-34 under 35 U.S.C. § 112(b) and particularly for indefiniteness. 1. Claimed distinction between a “licensed spectrum” and “unlicensed spectrum” cannot be disregarded. Each independent claim recites a “licensed spectrum” and/or “unlicensed spectrum” in each of the limitations (i.e., the recitations of identifying, receiving (twice), and transmitting separated by semi-colons). For at least the following three reasons, this “license” distinction of the spectrums-this measure of how they differ-cannot be disregarded. First and foremost, the distinction is claimed and has meaning (albeit indefinite). See In re Saether, 492 F.2d 849, 852 (CCPA 1974) (“It is axiomatic . . . that all limitations must be considered.”). “Licensed” and “unlicensed” are not tantamount to ‘placeholders’ labels such as “first” and “second.” See Chi. Bd. Options Exch., Inc. v. Int’l Sec. Exch., LLC, 3 In the event Appellant overcomes the indefiniteness issue raised herein, we recommend that ensuing prosecution (if any) provide a further explanation of the configuration and rationales for the proposed combination of prior art. For example, the Examiner should consider explaining the modification of a “HARQ Process #[n]” within Lou’s Figure 5 that is proposed, in view of Awad’s paragraphs 54 and 56, to achieve the claimed “group hybrid automatic repeat request (HARQ) feedback message for data associated with the contiguous set of two or more data subframes.” See Final Act. 3-5; Ans. 6-7. Appeal 2020-002617 Application 14/456,880 5 677 F.3d 1361, 1369 (Fed. Cir. 2012) (“general presumption that different [claim] terms have different meanings”). Second, the distinction is the focus of Appellant’s contentions. For example, Appellant’s summary of the claimed subject matter states “it may be instructive to generally set forth aspects of the Specification” (Appeal Br. 2) and then describes the disclosed invention’s uses of an “unlicensed spectrum” as opposed to a “licensed spectrum” (id. at 2-5). See also id. at 2 (“The Specification generally describes methods, systems, and apparatuses ‘in which unlicensed spectrum is used for LTE communications.’” (quoting Spec. ¶ 33)). And, Appellant’s principal argument against the prior art is that “Luo and Zou are uninstructive” (Appeal Br. 6) and “Awad does not concern the use of unlicensed spectrum[] but rather concerns licensed spectrum according to LTE standards” (id. at 9). See also, e.g., id. at 10 (“As noted above, Awad does not concern the use of unlicensed spectrum, but rather concerns licensed spectrum according to LTE standards.”), 11 (“The timing diagram in [Lou] FIG. 5 does not relate to HARQ processes in unlicensed spectrum.”), 12-13 (“[The Examiner] has not articulated . . . [a rationale to] modify the receiver in Luo . . . to incorporate a group HARQ feedback message in unlicensed spectrum.”). Third, the distinction is the focus of the application. See, generally, Spec. ¶ 33 (“Methods, systems, and apparatuses are described in which unlicensed spectrum is used for LTE communications.”). For example, the distinction is included within the application’s title-“Group ACK/NACK for LTE in Unlicensed Spectrum.” Spec., title, para. 1. The distinction is the focus of the Specification’s description of the background art. Id. ¶ 4 (“[O]perators are beginning to look at . . . WLANs (or WiFi networks) Appeal 2020-002617 Application 14/456,880 6 . . .because, unlike cellular networks that operate in a licensed spectrum, WiFi networks generally operate in an unlicensed spectrum.”). The distinction is set forth by every statement of the application’s abstract. Spec., abst. And, the invention’s purpose is to “maximize the use of data frames” when “devices have to contend for access to . . . an unlicensed spectrum”-namely “by grouping HARQ feedback messages into a group HARQ feedback message (i.e., a message containing HARQ feedback information for a group of data subframes).” Appeal Br. 3 (summary of the claimed subject matter). 2. Claimed distinction between a “licensed spectrum” and “unlicensed spectrum” is indefinite. A claim is indefinite if its metes and bounds cannot be determined. In re Packard, 751 F.3d 1307, 1323 (Fed. Cir. 2014) (“[I]f one of ordinary skill in the art, after considering the . . . written description[] and after putting [a] disputed term in [that] context . . . , finds the claim to contain words or phrases whose meaning is unclear, then the examiner is to require the applicant to ‘more precisely define the metes and bounds of the claimed invention’ by issuing an indefiniteness rejection.” (quoting Ex Parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)). “Metes and bounds” means the claim defines the scope of the ‘would-be’ right to exclude others from making, using, or selling the invention; the public cannot be burdened to guess the scope of exclusion. See In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1315 (Fed. Cir. 2011) (“[If] the public is left to guess [what] the claims cover . . . [, they ] fail to fulfill the ‘public notice function’ of 35 U.S.C. § 112 ¶ 2.”); London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1538 (Fed. Cir. 1991) (“[C]laims must be ‘particular’ and Appeal 2020-002617 Application 14/456,880 7 ‘distinct,’ as required by 35 U.S.C. § 112, so that the public has fair notice of what . . . constitute[s] the metes and bounds[.]”). Though the Specification provides example distinctions between an “unlicensed spectrum” and “licensed spectrum,” the claims lack (by their plain language and in view of the Specification) a required, clear, objective means of determining the bounds between “unlicensed spectrum” and “licensed spectrum.” That is, the claims lack an objective industry standard for determining whether a spectrum is an “unlicensed spectrum” or “licensed spectrum.” Because the record does not identify such a standard, we conclude the claims lack a measure that the public can use to determine the full respective scopes of spectrums falling within the claimed “unlicensed spectrum” and “licensed spectrum.” OVERALL CONCLUSION We reverse the Examiner’s decision to reject claims 1-3, 5-11, 13- 19, 21-26, and 28-34 under 35 U.S.C. § 103. We enter a new ground of rejection of claims 1-3, 5-11, 13-19, 21- 26, and 28-34 under 35 U.S.C. § 112(b). Appeal 2020-002617 Application 14/456,880 8 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Grounds 1-3, 6, 9-11, 14, 17-19, 22-26, 29, 30 103 Luo, Zou, Awad 1-3, 6, 9-11, 14, 17-19, 22-26, 29, 30 5, 13, 21, 28 103 Luo, Zou, Awad, Li 5, 13, 21, 28 7, 8, 15, 16 103 Luo, Zou, Awad, Kang 7, 8, 15, 16 31-34 103 Luo, Zou, Awad, Bala 31-34 1-3, 6, 9-11, 14, 17-19, 22-26, 29, 30 112(b) Indefiniteness 1-3, 6, 9-11, 14, 17-19, 22-26, 29, 30 Overall Outcome 1-3, 5-11, 13-19, 21-26, 28-34 1-3, 6, 9-11, 14, 17-19, 22-26, 29, 30 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection . . . , shall not be considered Final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: Appeal 2020-002617 Application 14/456,880 9 (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the Examiner.... (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record . . . . REVERSED; 37 C.F.R. § 41.50(B)