QUALCOMM Incorporated

Patent Trials and Appeals Board

Oct 19, 2020

14489999 - (D) (P.T.A.B. Oct. 19, 2020)

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.
14/489,999 09/18/2014 Avneesh Agrawal 091021C1 6227
15055 7590 10/19/2020
Patterson + Sheridan, L.L.P.
Qualcomm
24 Greenway Plaza, Suite 1600
Houston, TX 77046
EXAMINER
AHMED, ABDULLAHI
ART UNIT PAPER NUMBER
2472
NOTIFICATION DATE DELIVERY MODE
10/19/2020 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):
PAIR_eOfficeAction@pattersonsheridan.com
ocpat_uspto@qualcomm.com
qualcomm@pattersonsheridan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AVNEESH AGRAWAL, PETER GAAL,
RAVI PALANKI, and ALEXEI YURIEVITCH GOROKHOV
____________

Appeal 2019-003740
Application 14/489,999
Technology Center 2400
____________

Before MARC S. HOFF, CATHERINE SHIANG, and
CARL L. SILVERMAN, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–7, 9–16, and 18–30, which are all the claims pending
and rejected in the application.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.

1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies QUALCOMM Incorporated as the real party in interest.
Appeal Br. 3.
2 Claim 8 has been cancelled. Claim 17 “is objected to as being dependent
upon a rejected base claim, but would be allowable if rewritten in
independent form.” Final Act. 13. Therefore, claim 17 is not before us.

Appeal 2019-003740
Application 14/489,999

2
STATEMENT OF THE CASE
Introduction
The present invention relates to “mitigating downlink interference.”
Spec. ¶ 5.
In one aspect, a method is provided for mitigating
interference in a wireless communication system by receiving a
wireless transmission from an interfering base station,
accessing a constrained set of available parameters used by the
interfering base station to generate the transmission, and
decoding the transmission using a plurality of hypotheses based
upon the constrained set of parameters.

Spec. ¶ 13. Claim 1 is exemplary:
1. A method for mitigating interference in a wireless
communication system, by a user equipment (UE), comprising:
receiving an interfering wireless transmission from an
interfering base station;
accessing a constrained set of available parameters used
by the interfering base station to generate the interfering
wireless transmission, wherein the constrained set of available
parameters includes a reduced first set of UE identities as
compared to a second set of UE identities used by a serving
base station to generate downlink transmissions;
decoding the interfering wireless transmission using the
reduced first set of UE identities; and
mitigating the interfering wireless transmission based on
the decoding.

Appeal 2019-003740
Application 14/489,999

3
References and Rejections3
Claims
Rejected
35 U.S.C.
§
References
1–7, 9–12,
14–16, 19–26
103 Beale (US 2005/0250506 A1, Nov. 10, 2005),
Hagerman (US 2009/0168906 A1,
July 2, 2009)
13, 18, 28–30 103 Beale, Hagerman, Palanki (US 2009/0130980
A1, May 21, 2009)
27 103 Beale, Hagerman, Takase (US 2009/0311967
A1, Dec. 17, 2009)

ANALYSIS
Obviousness4
We have reviewed the Examiner’s rejection in light of Appellant’s
contentions and the evidence of record. We concur with Appellant’s
contentions that the Examiner erred in determining the cited portions of
Beale and Hagerman collectively teach
accessing a constrained set of available parameters used
by the interfering base station to generate the interfering
wireless transmission, wherein the constrained set of available
parameters includes a reduced first set of UE identities as
compared to a second set of UE identities used by a serving
base station to generate downlink transmissions;
as recited in independent claim 1 (emphasis added). See Appeal Br. 8–12;
Reply Br. 2–6.

3 Throughout this opinion, we refer to the (1) Final Office Action dated May
9, 2018 (“Final Act.”); (2) Appeal Brief dated October 19, 2018 (“Appeal
Br.”); (3) Examiner’s Answer dated February 13, 2019 (“Ans.”); and (4)
Reply Brief dated April 10, 2019 (“Reply Br.”).
4 Appellant raises additional arguments. Because the identified issue is
dispositive of the appeal, we do not address the additional arguments.
Appeal 2019-003740
Application 14/489,999

4
The Examiner cites Hagerman’s paragraphs 29 and 30 as teaching the
italicized limitation. Final Act. 4; Advisory Act dated August 6, 2018
(“Advisory Act.”) p. 2. Appellant argues, and we agree, that the cited
Hagerman’s paragraphs do not teach the italicized limitation. See Appeal
Br. 8–12. In particular, the Examiner’s statement that Hagerman’s
paragraph 30 teaches “reduced number of spreading codes (second set of UE
Identities)” (Advisory Act. p. 2.) is not supported by evidence, as paragraph
30 does not describe any reduced number of spreading codes.
In the Answer, the Examiner states:
It would have been obvious to one of ordinary skill in the
art at the time the claimed invention was made to set first set of
UE identities greater than a second set of UE identities. Since
it has been held by the courts that combining prior art elements
according to known methods to yield predictable results, simple
substitution of one known element for another to obtain
predictable results, or choosing from a finite number of
identified, predictable solutions, with a reasonable expectation
of success, is not sufficient to distinguish over the prior art, as it
requires only ordinary skill in the art. KSR International Co. v.
Teleflex Inc., 82 USPQ2d 1385, 1397 (2007). In this case, one
of ordinary skill in the art would have been motivated to able to
mitigate inter-cell interfere using a limited number of UE
identities.
Ans. 14 (emphases added).
We agree with Appellant that the Examiner’s above conclusions are
not supported by adequate rationale, because the Examiner’s reasoning
merely paraphrases a portion of the disputed limitation. See Reply Br. 5–6.
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (“rejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness”); see also KSR,
Appeal 2019-003740
Application 14/489,999

5
550 U.S. at 424 (“[t]he proper question to have asked was whether a . . .
designer of ordinary skill . . . would have seen a benefit to upgrading Asano
with a [feature Asano does not have]”). As a result, the Examiner has not
provided “some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness,” as required by KSR. See KSR,
550 U.S. at 418.
Because the Examiner fails to provide sufficient support for the legal
conclusion of obviousness, we are constrained by the record to reverse the
Examiner’s rejection of independent claim 1, and independent claim 5 for
similar reasons. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (we
will not resort to speculation or assumptions to cure deficiencies in the
Examiner’s fact finding or reasoning).
We also reverse the Examiner’s rejection of corresponding dependent
claims 2–4, 6, 7, 9–16, and 18–30. Although the Examiner cites additional
references for rejecting some dependent claims, the Examiner has not shown
the additional references overcome the deficiency discussed above in the
rejection of claim 1.
CONCLUSION
We reverse the Examiner’s decision rejecting claims 1–7, 9–16, and
18–30 under 35 U.S.C. § 103.

Appeal 2019-003740
Application 14/489,999

6

In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–7, 9–12,
14–16, 19–
26
103 Beale, Hagerman 1–7, 9–12,
14–16, 19–
26
13, 18, 28–
30
103 Beale, Hagerman,
Palanki
13, 18, 28–
30
27 103 Beale, Hagerman,
Takase
27
Overall
Outcome
1–7, 9–16,
18–30

REVERSED