Ex Parte Baldemair et al

Patent Trial and Appeal BoardNov 22, 2016

13514063 (P.T.A.B. Nov. 22, 2016)

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. 13/514,063 09/05/2012 Robert Baldemair 4015-8151 / P30749-US2 2438 24112 7590 11/22/2016 COATS & BENNETT, PLLC 1400 Crescent Green, Suite 300 Cary, NC 27518 EXAMINER GANGULY, SUMITRA ART UNIT PAPER NUMBER 2411 MAIL DATE DELIVERY MODE 11/22/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROBERT BALDEMAIR, DIRK GERSTENBERGER, DANIEL LARSSON, and HENNING WIEMANN ____________ Appeal 2016-000997 Application 13/514,063 Technology Center 2400 ____________ Before BRUCE R. WINSOR, NABEEL U. KHAN, and AARON W. MOORE, Administrative Patent Judges. MOORE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2016-000997 Application 13/514,063 2 STATEMENT OF THE CASE Appellants1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 16–18, 20–23, and 25–27, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter a new ground of rejection. THE INVENTION The application is directed to “methods for data transmission via a plurality of carriers.” (Spec. 8.) Claim 16, reproduced below, is representative: 16. A method of data transmission via a plurality of carriers, the method being implemented by a user equipment and comprising: determining a control element of a Media Access Control protocol, the control element being associated with a plurality of the carriers; providing the control element with a respective identifier for each of the associated carriers; and sending the control element with the plurality of identifiers on one of the carriers; wherein the control element comprises a respective power headroom report for each of the associated carriers. 1 Appellants identify Telefonaktiebolaget LM Ericsson (publ) as the real party in interest. (See App. Br. 2.) Appeal 2016-000997 Application 13/514,063 3 THE REFERENCES AND THE REJECTION Claims 16–18, 20–23, and 25–27 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Kim et al. (US 2011/0092217 Al; published Apr. 21, 2011) and Guo et al. (US 2010/0238863 Al; published Sept. 23, 2010). (See Final Act. 3–15.) ANALYSIS The Examiner relies primarily on Kim, but finds that “Kim is silent about the control element with the plurality of the carriers, control element with a respective identifier for each of the carriers, and control element comprises a respective power headroom report for each of the carriers.” (Final Act. 6.) The Examiner further finds, however, that such an arrangement was known from Guo, which discloses the following: [T]he PHR values of the configured uplink carriers can be together transmitted in a pre-defined uplink carrier, or can be individually transmitted in its corresponding uplink carrier. For the case that the PHR values are all transmitted in the pre-defined uplink carrier, the UE may generate a plurality of PHR Control Elements carried by a same MAC PDU according to the PHR values of each configured uplink carrier. Each PHR Control Element may have an identification field, for identifying which uplink carrier the carried PHR value is corresponding to. The identification field can be included either in the PHR Control Element, or in a MAC sub-header corresponding to the PHR Control Element. (Guo ¶ 36; see Final Act. 6.) Appellants argue the Examiner’s findings are “erroneous because ¶ [0036] clearly teaches that only one PHR is included per CE.” (App. Br. 5–6, emphasis omitted.) In support of their argument, Appellants offer the figure below, said to “depict what is taught by ¶ [0036] of Guo”: Appeal 2016-000997 Application 13/514,063 4 Appellants’ Illustration of ¶ 36 of Guo (App. Br. 6.) The Examiner responds by equating the drawing in Appellants’ brief with Figure 6 of Appellants’ application, concluding that, from a comparison of the respective figures, “it can be easily seen that a control element comprises a respective PHR and identifier for each of its associated carriers.” (Ans. 12.) We agree with Appellants. The Examiner’s analysis is flawed because, as Appellants point out (see Reply Br. 3), Figure 6 of the application represents a single MAC control element,2 including a plurality of carriers, whereas the figure from the brief represents Guo’s MAC PDU, which includes a plurality of MAC control elements, each including a single carrier identifier. Although paragraph 36 of Guo does teach identifiers and PHRs for a plurality of carriers in a MAC PDU, it does not teach identifiers and PHRs for a plurality of carriers in a MAC control element. For these reasons, we do not sustain the rejection of claim 16, or the rejections of claims 17–18, 20–23, and 25–27, each of which requires a control element with a headroom report and identifier for a plurality of carriers. 2 See Spec. 10:35–11:2 (“In some embodiments, in order to reduce overhead it may be more efficient though to generate only one MAC CE with multiple PH and CCI fields as shown in Fig. 6.”). Appeal 2016-000997 Application 13/514,063 5 NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(B) Claims 16–18, 20–23, and 25–27 are rejected under 35 U.S.C. § 103(a) as unpatentable over Kim and Guo. We adopt the Examiner’s findings and explanations regarding the teachings of Kim and Guo and their combination (see Final Act. 3–15), except for the Examiner’s reliance on paragraph 36 of Guo. Regarding the requirement of the claims that a control element include an identifier and power headroom report for each of a plurality of carriers, we find that, although such an arrangement is not disclosed in paragraph 36 of Guo, it is taught or suggested in paragraph 37, which states that “the PHR values of the configured uplink carriers can be all carried by one PHR Control Element” and that “the PHR Control Element may have an identification field, for identifying which uplink carrier the carried PHR value is corresponding to.” (Guo ¶ 37.) Appellants’ argument that “[t]here is no disclosure in ¶ [0037], or any other portion of Guo that a single MAC CE includes a respective identifier for each of a plurality of carriers” (App. Br. 8) is unpersuasive because we do not read the disclosure so narrowly, concluding one of skill in the art would understand that, in teaching multiple PHR values in one control element and identification fields for PHR values that may be in control elements, it contemplates an identification field in the control element for each of the multiple PHR values in that control element. Moreover, even if that were not the case (or if these concepts were aspects of different Appeal 2016-000997 Application 13/514,063 6 embodiments3), we find that it would have been obvious to include the multiple identification fields in the control element with the multiple PHR values because the skilled artisan would have been “able to fit the[se] teachings . . . together like pieces of a puzzle” and the combination does no more “than yield a predictable result.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416, 420 (2007). NEW GROUND This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review” and 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: (1) reopen prosecution by submitting 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; or 3 We do not agree with Appellants’ “different embodiments” arguments, as paragraph 37 of Guo describes both features as options “in other embodiments,” which would include an embodiment with both features, and the provisional lists them as possible features for “Option 1” of “Invention 2.” (See ’863 Provisional at 3.) Appeal 2016-000997 Application 13/514,063 7 (2) request that the proceeding be reheard under § 41.52 by the Board upon the same Record. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). REVERSED 37 C.F.R. § 41.50(b)