Ex Parte Abraham et al

Patent Trial and Appeal Board

Jan 30, 2017

13247062 (P.T.A.B. Jan. 30, 2017)

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.
13/247,062 09/28/2011 Santosh Paul Abraham 102994U3 2112
23696 7590 02/01/2017
OTTAT mMM TNmRPORATFD
EXAMINER
5775 MOREHOUSE DR.
SAN DIEGO, CA 92121
LIU, JUNG-JEN
ART UNIT PAPER NUMBER
2473
NOTIFICATION DATE DELIVERY MODE
02/01/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SANTOSH PAUL ABRAHAM, SIMONE MERLIN, SAMEER
VERMANI, and HEMANTH SAMPATH
Appeal 2016-0059131
Application 13/247,062
Technology Center 2400
Before JOHN A. JEFFERY, ERIC S. FRAHM, and JENNIFER L.
McKEOWN, Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 21—23, 25, 28—31, 33, 36—39, 41, and 44^46. Claims 1—20 have been
canceled. Claims 24, 26, 27, 32, 34, 35, 40, 42, and 43 have been objected
to as dependent upon rejected claims, but allowable if rewritten in
1 As noted by Appellants in the Appeal Brief (App. Br. 4), this application is
related to U.S. Patent Application Serial No. 13/247,023, which also claims
benefit to U.S. Provisional Patent Application Nos. 61/387,542, 61/389,495,
61/405,283, 61/422,098, 61/432,115, 61/405,194, 61/409,645, and
61/414,651.
Appeal 2016-005913
Application 13/247,062
independent form including all the limitations of the base claims and any
intervening claims (Final Act. 3). We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm-in-part.
Exemplary Claims
Exemplary claims 21 and 22 under appeal, with emphases and
bracketed information added to disputed portions of the claims, read as
follows:
21. An apparatus for wireless communication, comprising:
a receiver configured to receive a message indicating that
channel state information is requested;
a processing system configured to generate a
communication comprising a field for indicating if a first
segment of channel state information [CSI] of a plurality of
segments of channel state information is being transmitted; and
a transmitter configured to transmit the communication.
22. The apparatus of Claim 21, wherein the field comprises
one bit.
The Examiner’s Rejection
The Examiner rejected claims 21, 23, 25, 28—31, 33, 36—39, 41, and
44^46 under 35 U.S.C. § 103(a) over the combination of Basson et al. (US
2007/00195811 Al; published Aug. 23, 2007) and Nayeb Nazar et al. (US
2011/0249578 Al; published Oct. 13, 2011) (hereinafter, “Nazar”). Final
Act. 7-17; Ans. 3-13.
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Application 13/247,062
Issues on Appeal
Based on Appellants’ arguments in the Briefs (App. Br. 7—17; Reply
Br. 2—10),2 the following issues are presented on appeal:
(1) Did the Examiner err in rejecting claims 21, 28, 29, 36, 37, and
44-46 under 35 U.S.C. § 103(a) over the combination of Basson and Nazar
because the combination fails to teach or suggest “a communication
comprising a field for indicating if a first segment of channel state
information of a plurality of segments of channel state information is being
transmitted,” as recited in representative independent claim 21?
(2) Did the Examiner err in rejecting claims 22, 30, and 38 under
35 U.S.C. § 103(a) over the combination of Basson and Nazar because the
combination fails to teach or suggest “wherein the field comprises one bit?”
(3) Did the Examiner err in rejecting claims 23, 31, and 39 under
35 U.S.C. § 103(a) over the combination of Basson and Nazar because the
combination, and specifically Basson, fails to teach or suggest “the bit value
2 Appellants present separate grounds of patentability as to (i) dependent
claim 22 (App. Br. 13—14; Reply Br. 6—7); (ii) dependent claim 23 (App. Br.
14—15; Reply Br. 7—8); and (iii) dependent claim 25 (App. Br. 15; Reply Br.
8). Appellants rely on the arguments presented for (i) claim 22 as to the
patentability of claims 30 and 38; (ii) claim 23 as to the patentability of
claims 31 and 39; and (iii) claim 25 as to the patentability of claims 33 and
41 (App. Br. 16; Reply Br. 9). Appellants do not present arguments
regarding the separate patentability of claims 28, 29, 36, 37, and 44-46
(App. Br. 15—16; Reply Br. 9). Therefore, we select independent claim 21
as representative of the group of claims (claims 21, 28, 29, 36, 37, and 44—
46) rejected as being obvious over the combination of Basson and Nazar,
and we decide the rejection of (i) claims 30 and 38 on the same basis as
claim 22; (ii) claims 31 and 39 on the same basis as claim 23; and (iii) claim
25 on the same basis as claim 25.
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Application 13/247,062
as a value of ‘ 1 ’ if a first segment of channel state information is included in
the communication?”
(4) Did the Examiner err in rejecting claims 25, 33, and 41 under
35 U.S.C. § 103(a) over the combination of Basson and Nazar because the
combination, and specifically Basson, fails to teach or suggest “wherein the
communication comprises a second field for indicating a number of
segments of channel state information remaining to be transmitted?”
ANALYSIS
We have reviewed the Examiner’s rejections (Final Act. 7—17; Ans.
3—13) in light of Appellants’ arguments in the Appeal Brief (App. Br. 7—17)
and the Reply Brief (Reply Br. 2—10) that the Examiner has erred, as well as
the Examiner’s response to Appellants’ arguments in the Appeal Brief (Ans.
13—40). For the reasons that follow, we agree with Appellants’ arguments
regarding the rejection of (i) dependent claim 22 (App. Br. 13—14; Reply Br.
6—7); (ii) dependent claim 23 (App. Br. 14—15; Reply Br. 7—8); and (iii)
dependent claim 25 (App. Br. 15; Reply Br. 8); and we disagree with
Appellants’ arguments as to independent claim 21 (App. Br. 9—13; Reply Br.
2-6).
Claims 21, 28, 29, 36, 37, and 44—46
We disagree with Appellants’ contentions (App. Br. 9—13; Reply Br.
2—6) that the Examiner erred in rejecting independent claim 21 because the
combination of Basson and Nazar fails to teach or suggest “a processing
system configured to generate a communication comprising a field for
indicating if a first segment of channel state information of a plurality of
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Application 13/247,062
segments of channel state information is being transmitted” as recited in
representative independent claim 21.
We agree with the Examiner (Ans. 15—17 and 20) that Basson’s Table
8 (see 138) teaches or suggests a field for indicating a first segment of CSI
(i.e., Basson’s CSI relating to a first data stream) is transmitted as recited in
claim 21. Specifically, Table 8 shows an explicit CSI feedback indicator in
an indicator field (i.e., Basson’s “TxBF Capability field”) having a code of
10, indicating “immediate feedback” (138; Table 8, in “Encoding” column
third line down on right side). We find that Basson’s “immediate feedback”
at least suggests a first segment of CSI “is being transmitted” as recited in
representative independent claim 21. Asa result, we also agree with the
Examiner (Ans. 3—7 and 15—21) that Basson (Figs. 1—5; Tables 2 (| 30), 5(1
34), and 8 (138); H 20, 26—29 and 32—35) discloses an apparatus for
wireless communication including a processing system configured to
generate a communication as recited in independent claim 21.
The Board may rely on less than all of the references applied by the
Examiner in an obviousness rationale without designating it as a new ground
of rejection where, as here, the thrust of the rejection has not changed. See
In re Boyer, 363 F.2d 455, 458 n.2 (CCPA 1966) (citing In re Bush, 296
F.2d 491, 496 (CCPA 1961)); see also MPEP § 1207.03(a)(II).
Accordingly, we sustain the Examiner’s rejection of representative
independent claim 21, as well as claims 28, 29, 36, 37, and 44^46 grouped
therewith, on the basis of Basson alone.
Claims 22, 30, and 38
We concur with Appellants’ contentions (App. Br. 13—14 and 16;
Reply Br. 6—7 and 9) that the combination of Basson and Nazar fails to teach
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or suggest “wherein the field comprises one bit” as recited in claims 22, 30,
and 38. The Examiner relies upon Basson’s paragraphs 29, 33, and 34 as
disclosing a CSI control field comprising one or two bits (Ans. 9).
However, Basson merely discloses “[a]n example format CSI/Steering field
of 2 bits’'' (129) (emphasis added). In the Examiner’s response to
Appellants’ arguments in the Answer (see Ans. 32—34), the Examiner finds
“Nazar discloses about indexing a plurality of CSI (or CQI, channel quality
information) segments” (Ans. 33 citing Nazar 1127). We cannot agree with
the Examiner (Ans. 33) that Nazar’s CQI index meets the limitations recited
in claim 22 of a communication field indicating a segment of CSI (channel
state information) is being transmitted (see claim 21 from which claim 22
depends), where the field contains one bit (see claim 22). Further, Nazar
discloses an ACK/NACK signal 220 and RI signal 230 as being “1-bit or 2-
bit” (| 60), signal 220 is an acknowledgement or handshake signal and
signal 230 is a rank indication signal (| 7) — not channel state information
signals. Therefore, we cannot agree with the Examiner that the combination
of Basson and Nazar teaches or suggests “wherein the [CSI communication]
field comprises one bit” as recited in claim 22.
Accordingly, we do not sustain the Examiner’s rejection of dependent
claims 22, 30, and 38.
Appellants utilize the transitional term “comprises” in claim 22. The
term “comprises” is a conjugate, or another form, of the term “comprising.”
“The transitional term ‘comprising’ ... is inclusive or open-ended and
does not exclude additional, unrecited elements or method steps.” Georgia-
Pacific Corp. v. U.S. Gypsum Co., 195 F.3d 1322, 1327 (Fed. Cir. 1999)
(citing MPEP § 2111.03 (6th ed. 1997)). “A drafter uses the term
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‘comprising’ to mean ‘I claim at least what follows and potentially more.’”
Vehicular Techs. Corp. v. Titan Wheel Int'l, Inc., 212 F.3d 1377, 1383 (Fed.
Cir. 2000). Although the transitional term “comprising” indicates that the
claim is open-ended, the term does not render each limitation or phrase
within the claim open-ended. See Dippin’ Dots, Inc. v. Mosey, 476 F.3d
1337, 1343 (Fed. Cir. 2007); Spectrum Int’l, Inc. v. Sterilite Corp., 164
F.3d 1372, 1380 (Fed. Cir. 1998). “Comprising” means that the claim can
be met by a system that contains features over and above those specifically
required by the claim element, but only if the system still satisfies the
specific claim-element requirements', the claim does not cover systems
whose unclaimed features make the claim elements no longer
satisfied. Thus, in the instant case of dependent claim 22, a claim-
covered “ processing system configured to generate a communication” may
have a field (see claim 21 from which claim 22 depends) which in turn may
be composed of one bit (see claim 22), but the field must in particular be
made of one bit as opposed to more than one bit.
Therefore, we interpret the limitation of claim 22, “wherein the field
comprises one bit,” to modify claim 21 (from which claim 22 depends) to
mean that the recited “communication” has one field which in turn has one
bit. “The name of the game is the claim.” In re Hiniker, Co., 150 F.3d
1362, 1369 (Fed. Cir. 1998). In other words, while claim 22 leaves open the
possibility the communication field could contain two or more bits, such has
not been recited in claim 22. Notably, by way of contrast and comparison,
claims 24—27 each recited a “second field,” and claim 24 further specifies “a
second field including three bits” (claim 24) (emphasis added). To say that
the term “comprises” causes claim 22 to encompass a field having more than
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one bit (as taught or suggest by the combination of Basson and Nazar) is
incongruous with the plain meaning of claim 22 when construed in light of
the Specification.
Claims 23, 31, and 39
We concur with Appellants’ contentions (App. Br. 14—16; Reply Br.
9) that the combination of Basson and Nazar, and specifically Basson, fails
to teach or suggest “the bit value as a value of ‘ 1’ if a first segment of
channel state information is included in the communication” as recited in
claims 23, 31, and 39. The Examiner relies upon paragraphs 29, 33, and 34
(Table 5) of Basson as teaching a bit value of 1 for the first CSI segment
(Ans. 10 and 35—36). However, Table 5 shows a CSI feedback signal
frame/field with a value of 2, not 1. And, as stated above with respect to
claim 22, although paragraph 29 of Basson discloses an ACK/NACK signal
220 and RI signal 230 as being “1-bit or 2-bit” (| 60), signal 220 is an
acknowledgement or handshake signal and signal 230 is a rank indication
signal (| 7) — not channel state information signals.
Accordingly, we do not sustain the Examiner’s rejection of dependent
claims 23, 31, and 39.
Claims 25, 33, and 41
We concur with Appellants’ contentions (App. Br. 15—16; Reply
Br. 8—9) that the combination of Basson and Nazar, and specifically Basson,
fails to teach or suggest “wherein the communication comprises a second
field for indicating a number of segments of channel state information
remaining to be transmitted.” The Examiner relies upon paragraphs 31 and
35 of Basson as disclosing a second field as claimed (Ans. 11 and 37).
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Although paragraph 35 discloses a CSI Matrices Report with a specified bit
size, and paragraph 31 describes “a QoS-null with HTC field,” this is not
sufficient to suggest that there are two fields. Instead, we find the Examiner
has failed to show or clearly articulate that the “second field” of claims 25,
33, and 41 are known in the prior art.
Accordingly, we do not sustain the Examiner’s rejection of dependent
claims 25, 33, and 41.
CONCLUSIONS
(1) The Examiner did not err in rejecting claims 21, 28, 29, 36, 37,
and 44^46 under 35 U.S.C. § 103(a) over the combination of Basson and
Nazar because the combination teaches or suggests “a communication
comprising a field for indicating if a first segment of channel state
information of a plurality of segments of channel state information is being
transmitted,” as recited in representative independent claim 21.
(2) The Examiner erred in rejecting claims 22, 30, and 38 under
35 U.S.C. § 103(a) over the combination of Basson and Nazar because the
combination fails to teach or suggest “wherein the field comprises one bit.”
(3) The Examiner erred in rejecting claims 23, 31, and 39 under
35 U.S.C. § 103(a) over the combination of Basson and Nazar (i) due to
dependency on respective ones of claims 22, 30, and 38; and (ii) because the
combination, and specifically Basson, fails to teach or suggest “the bit value
as a value of ‘ 1 ’ if a first segment of channel state information is included in
the communication.”
(4) The Examiner erred in rejecting claims 25, 33, and 41 under
35 U.S.C. § 103(a) over the combination of Basson and Nazar because the
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combination, and specifically Basson, fails to teach or suggest “wherein the
communication comprises a second field for indicating a number of
segments of channel state information remaining to be transmitted.”
DECISION
The Examiner’s obviousness rejection of (i) claims 21, 28, 29, 36, 37,
and 44^46 is affirmed, and (ii) claims 22, 23, 25, 30, 31, 33, 38, 39, and 41
is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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