Ex Parte Chen et al

Patent Trial and Appeal Board

May 25, 2017

13532400 (P.T.A.B. May. 25, 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.
13/532,400 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
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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
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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
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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,
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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.
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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.
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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
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