Ex Parte Deng

Patent Trials and Appeals BoardJun 21, 2019

14385950 - (D) (P.T.A.B. Jun. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/385,950 09/17/2014 48116 7590 06/25/2019 FAY SHARPE/NOKIA 1228 Euclid Avenue, 5th Floor The Halle Building FIRST NAMED INVENTOR Yun Deng 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 ATTORNEY DOCKET NO. CONFIRMATION NO. LUTZ 201898US01 6955 EXAMINER KAO,JUTAI Cleveland, OH 44115-1843 ART UNIT PAPER NUMBER 2473 NOTIFICATION DATE DELIVERY MODE 06/25/2019 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): docketing@faysharpe.com Nokia.IPR@nokia.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YUN DENG Appeal 2018-006991 Application 14/385,9501 Technology Center 2400 Before STEPHEN C. SIU, BETH Z. SHAW, and SCOTT E. BAIN, Administrative Patent Judges. SHAW, Administrative Patent Judge. DECISION ON APPEAL 1 According to Appellant, the real party in interest is Alcatel Lucent. App. Br. 1. Appeal 2018-006991 Application 14/385,950 Appellant appeals under 35 U.S.C. Â§ 134 from a rejection of claims 1, 2, and 4-7.2 We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. STATEMENT OF CASE The claims are directed to a method of randomly accessing a secondary cell and receiving data. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method in a UE used for randomly accessing a secondary cell, wherein the UE has accessed a primary cell, and the primary cell and the secondary cell belong to different timing advance groups, the method comprising: receiving a random access command from a first cell, wherein the first cell comprises any cell of the following: the secondary cell; the primary cell; another cell that cross-carrier schedules the secondary cell, the command being used for instructing the UE to access the secondary cell; transmitting a random access preamble to the secondary cell, according to the random access command, wherein, when the random access command is downlink control information IA instructing random access, which comprises instruction information comprising a carrier indicator configured with specific values, the carrier indicator is used for instructing randomly accessing secondary cells. 2 Claim 8 is objected to, claims 9 and 10 are allowed, while claims 11-13 are withdrawn from consideration. Final Act. 1. 2 Appeal 2018-006991 Application 14/385,950 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Pelletier Kim Bostrom Jeong US 2011/0134774 Al US 2013/0201960 Al US 8,995,352 B2 US 2015/0134838 Al REJECTIONS The Examiner made the following rejections: June 9, 2011 Aug. 8, 2013 Mar. 31, 2015 May 14, 2015 Claims 1, 2, and 4 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Jeong and Pelletier. Claims 5-6 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Jeong, Pelletier, and Kim. Claim 7 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Jeong, Pelletier, and Bostrom. CONTENTIONS AND ANALYSIS Claim 1 recites, in part, "when the random access command is downlink control information IA instructing random access, which comprises instruction information comprising a carrier indicator configured with specific values, the carrier indicator is used for instructing randomly accessing secondary cells." Appellant contends Pelletier, relied on by the Examiner, does not teach this limitation. Instead, Appellant argues, in paragraph 73 of Pelletier the DCI IA is used only in "activating" a secondary cell (SCell), in contrast to "randomly accessing" an SCell, as 3 Appeal 2018-006991 Application 14/385,950 recited in the claims. App. Br. 5. Appellant argues that in the present application, the SCell is already being activated by MAC CE (Medium Access Control Control Element), and after that, the eNB using DCI IA to instruct a random access of the SCell. Id. In the Answer, the Examiner explains that Appellant mischaracterizes Pelletier by only pointing to the first alternative described in paragraph 73. The Examiner explains that later in Pelletier' s paragraph 73, Pelletier explains: Alternatively, the WTRU may determine that the signaling may be used for the purpose of activation ( or not) based on the value of the CCIF. For instance, the signaling may be interpreted as a PDCCH order in the case where the CCIF is set to a specific value ( e.g., 000). Ans. 9 ( emphasis added) ( citing Pelletier ,-J 73). The Examiner also relies on paragraph 60 of Pelletier, which explains that the DCI format may be an extension of "either one or a combination of the following formats: a PDCCH order for random access (RA) with CCIF corresponding to the concerned SCell." Id. at 10 ( citing Pelletier ,-J 60) ( emphasis added). In Reply, Appellant argues "one having ordinary skill in the art would appreciate that Pelletier' s mention of the 'PDCCH order for random access with CCIF corresponding to the concerned SCell' does not mean that Pelletier teaches actual implementation of this feature." Reply Br. 4. Yet, other than stating, without support, that Pelletier does not implement this feature, Appellant does not explain sufficiently why Pelletier' s disclosure is insufficient to teach the claimed limitation. In the absence of sufficient evidence or line of technical reasoning to the contrary, we agree with the Examiner's findings and we find no reversible error. 4 Appeal 2018-006991 Application 14/385,950 For the same reasons, we are not persuaded by the argument that "[a] mere mention of a DCI format should not render the subject claimed features unpatentable." Id. Section 103 forbids issuance of a patent when "the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). "All of the disclosures in a reference must be evaluated for what they fairly teach one of ordinary skill in the art." In re Boe, 355 F.2d 961, 965 (CCPA 1966). Here, the Examiner sufficiently explains how Pelletier, in particular as explained in paragraphs 60 and 73, teaches the claimed limitation. Appellant also argues "Pelletier does not teach that Pelletier' s system implements the claimed 'randomly accessing' a secondary cell. Indeed, the Pelletier system (as relied upon by the Examiner in paragraph [0060] and [0073]) specifically does otherwise and, thus, effectively teaches away from such a concept." As discussed above, we find unavailing Appellant's unsupported, conclusory argument that Pelletier does not teach that Pelletier' s system implements the claimed randomly accessing the secondary cell. Reply Br. 4. We also find unavailing Appellant's argument that Pelletier "teaches away" from the disputed limitation or that it could not be combined with Jeong because Pelletier teaches away from the disputed limitation. Id. While Pelletier may teach alternatives in paragraph 73, the "prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed." In re 5 Appeal 2018-006991 Application 14/385,950 Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). We, therefore, find unavailing Appellant's conclusory statements that Pelletier's teachings are insufficient to teach the disputed limitation. Accordingly, for these reasons and for the reasons stated in the Final Rejection and Answer, from which we adopt the Examiner's findings and conclusions, we sustain the Examiner's rejection of claim 1, and claims 2, and 4-7, which were argued together with claim 1. DECISION For the above reasons, the Examiner's rejection of claims 1, 2, and 4- 7 is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ l.136(a)(l )(iv) (2009). AFFIRMED 6