Ex Parte Chen et alDownload PDFPatent Trial and Appeal BoardMay 25, 201713532400 (P.T.A.B. May. 25, 2017) Copy Citation 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. 13/532,400 06/25/2012 Wanshi Chen QLXX.P0001US/11207240 1060 15757 7590 05/30/2017 Qualcomm /Norton Rose Fulbright US LLP 2200 Ross Avenue Suite 3600 Dallas, TX 75201-7932 EXAMINER ONAMUTI, GBEMILEKE J ART UNIT PAPER NUMBER 2463 NOTIFICATION DATE DELIVERY MODE 05/30/2017 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): ocpat_uspto@qualcomm.com doipdocket@nortonrosefulbright.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WANSHI CHEN, JUAN MONTOJO and PETER GAAL Appeal 2016-003684 Application 13/532,400 Technology Center 2400 Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and JOHN D. HAMANN, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1—4, 6—16, 18—28, 30-40, and 42^48. Claims 49-52 are objected to as allowable over the prior of record if rewritten in independent form. Claims 5, 17, 29, and 41 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Appellants indicate that QUALCOMM Incorporated is the real party in interest. (App. Br. 2). Appeal 2016-003684 Application 13/532,400 The claims are directed to sounding reference signals in asymmetric carrier aggregation. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of wireless communication, comprising: determining, by a user equipment (UE), whether to transmit a sounding reference signal (SRS) over at least one non- paired component carrier within a plurality of component carriers, the plurality of component carriers including at least one paired component carrier and the at least one non-paired component carrier; transmitting the SRS over the at least one non-paired component carrier based on the determining whether to transmit the SRS over the at least one non-paired component carrier; determining to perform uplink transmission over the at least one paired component carrier in a first subframe; and dropping, in response to the determining to perform the uplink transmission over the at least one paired component carrier, transmission of the SRS over the at least one non-paired component carrier in the first subframe when the uplink transmission is performed over the at least one paired component carrier in the first subframe. The prior art relied upon by the Examiner in rejecting the claims on REFERENCES appeal is: Jen Ahn et al. US 2011/0249639 Al US 2011/0292900 Al Oct. 13,2011 Dec. 1,2011 2 Appeal 2016-003684 Application 13/532,400 REJECTION The Examiner made the following rejection: Claims 1—4, 6—16, 18—28, 30-40, and 42^48 are rejected under pre- AIA 35 U.S.C. § 103(a) as being unpatentable over Jen in view of Anh. ANALYSIS With respect to independent claims 1, 13, 25, and 37, we find the limitations of independent claim 1 and independent claims 13, 25, and 37 to be similar. Each independent claim contains similar limitations argued by Appellants. As a result, we select independent claim 1 as the illustrative claim for the group and address Appellants’ arguments thereto. Appellants contend: claim 1 recites “dropping, in response to the determining to perform the uplink transmission over the at least one paired component carrier, transmission of the SRS over the at least one non-paired component carrier in the first subframe.” (Emphasis added). In rejecting claim 1, the Appellee equates Jen's SRS transmission over the first CC to the claimed uplink transmission over the paired CC, and Jen's SRS transmission over the second CC to the claimed SRS transmission over the non-paired CC. Office Action at 3 and 6. The Appellee then asserts that Jen, at paragraph [0044], discloses a decision “to stop transmitting the SRS on the second component carrier according to a certain purpose, for example, to avoid a collision of the SRS and the PUCCH on the second component carrier. ” (Emphasis added). Office Action at 6. Appellant respectfully submits that the Appellee's assertion is not dispositive because claim 1 requires “dropping, in response to the determining to perform the uplink transmission over the at least one paired component carrier, transmission of the SRS over the at least one non-paired component carrier.” Here, the Appellee merely asserts that Jen discloses stopping SRS transmission over a second CC in order 3 Appeal 2016-003684 Application 13/532,400 to avoid a collision with PUCCH transmitted over the same second CC. (App. Br. 8). Appellants further contend that the Examiner has mischaracterized the meaning of “paired” and “non-paired” as described by the Jen reference and the present Specification. (App. Br. 9). Appellants additionally argue: However, Appellee's new assertions fail to address Appellant's points or otherwise establish that the features of the claim are met. For example, the Appellee merely asserts that multiple component carriers include paired and non-paired component carriers. Even assuming the foregoing were accurate, a point that Appellant disputes, this assertion does not cure the deficiencies of Jen, which merely describes stopping SRS transmissions over a component carrier when PUCCH is also transmitted over the same component carrier. Therefore, Appellee's new assertion does not establish that Jen discloses “dropping . . . transmission of the SRS over the at least one non- paired component carrier in the first subframe when the uplink transmission is performed over the at least one paired component carrier in the first subframe,” as recited in claim 1. Hence, Appellant respectfully submits that the Appellee has not met the burden of establishing a prima facie case of obviousness under 35 U.S.C. § 103 with respect to claim 1. Moreover, the Appellee now asserts that Jen implicitly discloses paired and non-paired component carriers because, as noted above, Appellant's own specification at paragraph [0011] discusses that “multiple component carriers include both paired and non-paired component carriers.” However, Appellant notes that, such an assertion, in addition to evidencing that the Appellee's judgment of obviousness with respect to claim 1 is based on impermissible hindsight as shown below, relies on a flawed assumption that all instances of multiple component carriers include paired and non-paired component carriers. In other words, Appellant's disclosure at paragraph [0011] is an 4 Appeal 2016-003684 Application 13/532,400 example embodiment where the multiple component carriers include both paired and non-paired component carriers. Nonetheless, other instances of multiple component carriers do not include both paired and non-paired component carriers. For example, U.S. Publication No. 2011/0244860 to Wu (hereinafter, Wu) illustrates a schematic diagram of carrier aggregation with five uplink component carriers and five downlink component carriers. See Wu at Figure 4 and paragraph [0027]. In Wu's example, “each UL component carrier is paired [with] a DL component carrier, each UCCn is paired with DCCn . . . , i.e., UCCI is paired with DCCI and so on .... ” Wu at Figure 4 and paragraph [0027]. Thus, Wu shows an example of multiple component carriers in which all component carriers are paired component carriers and in which there are no non-paired component carriers. Therefore, Appellant restates that not all instances of multiple component carriers include both paired and non-paired component carriers, as Appellee now asserts. Hence, the Appellee's assertion is insufficient to refute Appellant's previous arguments and to cure the deficiencies of Jen, which merely describes an instance of paired component carriers but does not contemplate non-paired component carriers. (Reply Br. 4—5). Appellants further argue: Thus, the Appellee admits that the reading of the cited references is based on Appellant's disclosure. This, however, is impermissible hindsight reconstruction. “[I]mpermissible hindsight must be avoided and the legal conclusion must be reached on the basis of the facts gleaned from the prior art,” and any judgment on obviousness must not “include knowledge gleaned only from applicant's disclosure.” See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Simply put, the Appellee's assertion indicates that without Appellant's disclosure, the Appellee could not read the disclosure in the cited references of multiple component carriers as disclosing paired and non-paired component carriers. In light of this, Appellant respectfully submits that Appellee's new reading of the cited references based on Appellant's disclosure is a clear and improper exercise of impermissible hindsight. Accordingly, in light of the foregoing, 5 Appeal 2016-003684 Application 13/532,400 Appellant respectfully requests that the Board reverse the rejection, under 35 U.S.C. § 103 over Jen in view of Ahn, of claim 1. (Reply Br. 6). We agree with Appellants that the Examiner’s rejection is based upon hindsight reconstruction based upon Appellants’ Specification and the Examiner has not shown by a preponderance of the evidence that the claimed invention would have been obvious over the cited combination of the Jen and Ahn references. Additionally, we agree with Appellants that the Examiner has interpreted the claim language in an unreasonable manner by interpreting a statement in the Specification and applying the converse of the statement without further support. The Examiner states “multiple carriers include both paired and non-paired component carriers (Note: This basically implies that the paired and non-paired components carriers are included in the multiple component carriersPl” (Ans. 11 and see generally Ans. 12). Thus, the Examiner interprets all multi-components carriers as necessarily having paired and non-paired components. We disagree with the Examiner’s claim interpretation and extrapolation from Appellants’ disclosure in the Specification. Additionally, the Examiner identifies that the Anh reference discloses paired and non-paired component carriers. (Ans. 12). While we agree with the Examiner that the Anh reference discloses the two types of carriers, the Anh reference merely discusses the two types of carriers with respect to data transmission rather than with regards to the transmission of the SRS signal. Consequently, we are left to speculate as to the Examiner’s factual findings and conclusion of obviousness. We decline to engage in speculation. 6 Appeal 2016-003684 Application 13/532,400 We find the Examiner’s obviousness rejection is not well supported by the express disclosures of the Jen and Ahn references. To the extent the Examiner relies on conjecture, such conjecture would require us to resort to speculation, unfounded assumptions, or hindsight reconstruction. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). We will not resort to such speculation or assumptions to cure the deficiencies in the factual basis of the obviousness rejection. Consequently, we cannot sustain the rejection of illustrative independent claim 1, and its dependent claims 2-4 and 6—12, based upon the combination of the Jen and Ahn references as applied by the Examiner. Independent claims 13, 25, and 37 contain similar limitations and Examiner has applied to the same combination which we found lacking with respect to illustrative independent claim 1. Therefore, we cannot sustain the rejection of independent claims 13, 25, and 37, and their respective dependent claims, for the same reasons. CONCLUSION The Examiner erred in rejecting illustrative independent claim 1 based upon obviousness under 35 U.S.C. § 103(a) and its respective dependent claims. Independent claims 13, 25, and 37 contain similar limitations. As a result, we cannot sustain the obviousness rejection of claims 13, 25, and 37 and their respective dependent claims for the same reasons. 7 Appeal 2016-003684 Application 13/532,400 DECISION For the above reasons, we reverse the Examiner’s rejection of claims 1—4, 6—16, 18—28, 30-40, and 42-48 based upon obviousness under 35 U.S.C. § 103(a). REVERSED 8 Copy with citationCopy as parenthetical citation