Telefonaktiebolaget LM Ericsson (publ)

Patent Trials and Appeals Board

Oct 15, 2021

2020003260 (P.T.A.B. Oct. 15, 2021)

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.
16/255,518 01/23/2019 Johan Axnäs 1009-3166 / P47835 US2 3668
102721 7590 10/15/2021
Murphy, Bilak & Homiller/Ericsson
PO BOX 1959
Cary, NC 27572-1959
EXAMINER
SEFCHECK, GREGORY B
ART UNIT PAPER NUMBER
2477
NOTIFICATION DATE DELIVERY MODE
10/15/2021 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):
official@mbhiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHAN AXNÄS, KUMAR BALACHANDRAN,
ICARO L.J. DA SILVA, DENNIS HUI, ANDRES REIAL,
JOHAN RUNE, and HENRIK SAHLIN
Appeal 2020-003260
Application 16/255,518
Technology Center 2400
Before MARC S. HOFF, BETH Z. SHAW, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–12, 14, and 15. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as
Telefonaktiebolaget LM Ericsson. Appeal Br. 2.
Appeal 2020-003260
Application 16/255,518

2
RELATED APPEAL
Appeal 2018-006988 for Application No. 14/925,170 is related to the
instant appeal. We decided the Appeal in that case on November 19, 2019,
affirming all rejections.
CLAIMED SUBJECT MATTER
The claims are directed to transmitting synchronization signals.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method for use in a network node, for transmitting
synchronization sequences of a synchronization signal,
transmitted in a beam sweep, to one or more receiving wireless
devices, the method comprising:
determining multiple synchronization sequences, such
that each synchronization sequence comprises a respective
timing indication, wherein the timing indication corresponds to
a synchronization signal index, whereby the synchronization
signal index enables a receiving wireless device to determine a
time of an event, wherein the time of the event comprises a time
when the network node listens for an uplink signal from the
wireless device; and

transmitting the synchronization sequences to the one or
more wireless devices, at different points in time.
Appeal Br. 30 (Claims App.)
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Iacono US 8,265,702 B2 Sept. 11, 2012
Ryu US 2015/0358129 A1 Dec. 10, 2015
Deng US 2018/0176065 A1 June 21, 2018

Appeal 2020-003260
Application 16/255,518

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REJECTIONS
Claims 1–8, 10–12, 14, and 15 stand rejected under 35 U.S.C. § 103
as being unpatentable over Ryu and Deng. Final Act. 2–9.
Claim 9 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Ryu, Deng, and Iacono. Final Act. 10.
OPINION
The Obviousness Rejection Over Ryu and Deng
The Examiner finds that Ryu discloses every recited element of
claim 1 except for “wherein the timing indication corresponds to a
synchronization signal index, whereby the synchronization signal index
enables a receiving wireless device to determine a time of an event, wherein
the time of the event comprises a time when the network node listens for an
uplink signal from the wireless device.” The Examiner cites Deng as
teaching these features in concluding that the claim would have been
obvious. Final Act. 3–4.
Appellant argues that the obviousness rejection is improper because,
among other things, Deng is not prior art to the claimed invention. Appeal
Br. 8–10; Reply Br. 2–8.
We must therefore determine whether, under § 103, the Examiner
erred in rejecting claim 1 as obvious over Ryu and Deng. This issue turns on
whether Deng qualifies as prior art to the claimed invention.
The present application is a continuation of U.S. Application No.
14/925,170, filed October 28, 2015. Deng has a § 371(c)(1) date of
December 11, 2017 and a corresponding PCT filing date of June 24, 2016,
with both dates coming after the effective filing date of the instant
application. Deng claims priority to the U.S. Provisional Application No.
Appeal 2020-003260
Application 16/255,518

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62/184,580 filed on June 25, 2015 (“predating provisional”), which is before
the instant application’s filing date, and to U.S. Provisional Application No.
62/307,005 filed on March 11, 2016.
The critical question, then, is whether Deng is entitled to the date of
its predating provisional application, because if it is not, then Deng does not
qualify as prior art because its utility application filing date is after that of
the present application’s parent application (October 28, 2015). In that
circumstance, Deng would not qualify as prior art.
If the Examiner shows that Deng’s predating provisional application
adequately provides (1) support for the subject matter of Deng’s claimed
invention in Deng’s published utility application under 35 U.S.C. §112, first
paragraph, and (2) similar § 112, first paragraph support for the particular
subject matter relied on in the rejection, then Deng would be entitled to the
June 25, 2015 filing date of its predating provisional application. See
Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1380
(Fed. Cir. 2015) (“A reference patent is only entitled to claim the benefit of
the filing date of its provisional application if the disclosure of the
provisional application provides support for the claims in the reference
patent in compliance with § 112, ¶ 1.”) (emphasis added) (citing In re
Wertheim, 646 F.2d 527, 537 (CCPA 1981)); see also id. at 1382 (“A
provisional application’s effectiveness as prior art depends on its written
description support for the claims of the issued patent of which it was a
provisional.”) (emphasis added); Amgen Inc. v. Sanofi, 872 F.3d 1367, 1380
(Fed. Cir. 2017) (no evidence that the claims of the PCT applications were
enabled by the provisional application).
Appeal 2020-003260
Application 16/255,518

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Here, the Examiner asserts in the Answer that Deng supports the term
“synchronization signal index” even though the term is not found in the
predating provisional application. Ans. 11–12. In particular, the Examiner
points to Figures 2–4 and ¶¶ 50, 51, and 63–65 of the predating provisional
application as support for the “synchronization signal indexes.” Id.2 Yet, the
Examiner has not sufficiently explained how these portions in the predating
provisional application, which refer to PSS/SS signals, support signal
indexes. Crucially, therefore, the Examiner does not show that Deng’s
predating provisional application supports the relied-upon subject matter in
the rejection under 35 U.S.C. § 112, first paragraph, let alone also show that
Deng’s predating provisional supports the claimed subject matter of Deng’s
published utility application. See Dynamic Drinkware, 800 F.3d at 1380.
Nor will we presume as much, for we have no basis on this record for doing
so. See id. (“[B]ecause the PTO does not examine priority claims unless
necessary, the Board has no basis to presume that a reference patent is
necessarily entitled to the filing date of its provisional application.”).
On this record, then, the Examiner has not shown that Deng is
necessarily entitled to the date of its predating provisional application.
Absent evidence to the contrary, Deng’s earliest effective filing date is
therefore after the filing date of Appellant’s parent application. Accordingly,

2 Appellant points out in the Reply Brief that the Examiner identifies these
portions of Deng’s predating provisional for the first time in the Answer, and
Appellant argues that this is an improper new ground of rejection. Reply
Br. 3. Rather than by appeal to this Board, however, such an issue should
have been settled by petition to the Director of the U.S. Patent and
Trademark Office. See 37 C.F.R. §§ 1.181, 41.31, 41.40(a); In re
Hengehold, 440 F.2d 1395 (CCPA 1971).
Appeal 2020-003260
Application 16/255,518

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Deng does not qualify as prior art to the claimed invention. Therefore, we
are persuaded that the Examiner erred in rejecting 1–8, 10–12, 14, and 15 as
obvious over Ryu and Deng. Because this issue is dispositive regarding
reversing the Examiner’s rejection of these claims, we need not address
Appellant’s other arguments.
Accordingly, we reverse the rejection of claims 1–8, 10–12, 14, and
15 under 35 U.S.C. § 103 as being unpatentable over Ryu and Deng. We
also reverse the rejection of dependent claim 9, because the Examiner does
not assert that Iacono cures the above-noted deficiencies of Deng.
CONCLUSION
We reverse the rejections.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–8, 10–12,
14, 15
103 Ryu, Deng 1–8, 10–12,
14, 15
9 103 Ryu, Deng, Iacono 9
Overall
Outcome
1–12, 14, 15

REVERSED