Ex Parte Gerstenberger et al

Patent Trial and Appeal BoardApr 25, 2018

13163151 (P.T.A.B. Apr. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/163,151 06/17/2011 27045 7590 ERICSSON INC. 6300 LEGACY DRIVE MIS EVR 1-C-11 PLANO, TX 75024 04/27/2018 FIRST NAMED INVENTOR Dirk Gerstenberger 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. P32227-US2 9061 EXAMINER VIDAL CARPIO, MARIELA ART UNIT PAPER NUMBER 2476 NOTIFICATION DATE DELIVERY MODE 04/27/2018 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): michelle.sanderson@ericsson.com pam.ewing@ericsson.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DIRK GERSTENBERGER, DANIEL LARSSON, DAVID HAMMARWALL, and ROBERT BALDEMAIR Appeal 2017-011011 Application 13/163, 151 Technology Center 2400 Before ERIC S. FRAHM, CATHERINE SHIANG, and JASON M. REPKO, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2017-011011 Application 13/163, 151 STATEMENT OF THE CASE 1 This is a decision on appeal under 35 U.S.C. Â§ I34(a) of the final rejection of claims 14, 17, 20, and 35. Claims 1-13, 15, 16, 18, 19, and 21- 34 have been canceled. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. The Examiner rejected claims 14, 17, 20, and 35 under 35 U.S.C. Â§ I03(a) as being unpatentable over Papasakellariou et al., (US 2010/0195575 Al; published Aug. 5, 2010; hereinafter "Papasakellariou") and Nam et al., (US 2011/0274043 Al; published Nov. 10, 2011; hereinafter "Nam") (Final Act. 3-5). We have reviewed Appellants' arguments in the Briefs (App. Br. 3-5; Reply Br. 2--4), the Examiner's rejection (Final Act. 3-5), and the Examiner's response (Ans. 2-9) to Appellants' arguments. The dispositive issue on appeal is whether or not Nam, and thus the combination of Papasakellariou and Nam, teaches or suggests the negative limitation (italicized below) recited in sole independent claim 14: in response to a determination that a physical uplink shared channel (PUSCH) is to be transmitted during a current subframe on an Uplink Secondary cell (UL Scell) and not on an Uplink Primary cell (UL Peel!), transmitting UCI [Uplink Control Information] to the mobile communication node using a first mode of UCI transmission or a second mode of UCI transmission in accordance with the value of the UCI mapping bit. .. Claim 14 ( emphasis added). 1 Appellants name Telefonaktiebolaget LM Ericsson (publ) as the real party in interest. App. Br. 1. 2 Appeal 2017-011011 Application 13/163, 151 "During examination, 'claims ... are to be given their broadest reasonable interpretation consistent with the specification, and ... claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art."' In re Am. Acad. of Sci. Tech. Cir., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Morris, 127 F.3d 1048, 1053-54 (Fed. Cir. 1997). The relevant limitation at issue in claim 14, namely transmitting UCI to a mobile communication node upon determining a PUSCH is to be transmitted on an UL Scell and not on an UL Peel!, is a negative limitation. Regarding the patentable weight given to the negative limitation at issue, Appellants' paragraph 41 and Figure 4 in Appellants' Specification, cited by Appellants as supporting the limitation at issue (App. Br. 2), provide adequate written description support, even though no advantages or disadvantages are explicitly disclosed. Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1355 (Fed. Cir. (2015)) (holding that advantages or disadvantages of each feature can constitute a "reason to exclude" under the standard articulated in Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012) ("Negative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation. Such written description support need not rise to the level of disclaimer. In fact, it is possible for the patentee to support both the inclusion and exclusion of the same material.")); see also MPEP Â§ 2173.05(i) ("If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims."); In re Johnson, 558 F.2d 1008, 1018 (CCPA 1977) ("It is for the inventor to decide what bounds of protection he will seek."). A negative limitation is 3 Appeal 2017-011011 Application 13/163, 151 accorded the broadest reasonable construction in light of the Specification and the "evidence before the Board" (In re Morris, 127 F.3d at 1055), therefore, we consider the extent that Appellants have provided support in the Specification for the negative limitation of claim 14 in concluding that Nam fails to meet this negative limitation. Appellants disclose, and claim, 2 transmitting UCI to a mobile communication node upon determining a PUSCH is to be transmitted on an UL Scell and not on an UL Peel! (see Spec. ,r,r 41(1-C), (I-C)(a), (I-C)(b), 41(II-C); Fig. 4, steps 52, 54, 56, 58). Spec. ,r 41, pp. 15-17; see also App. Br. 2. Figure 4 shows a dual UCI transmission mode of Appellants' disclosed invention, where it is first determined whether or not a PUSCH is transmitted in step 48, and then it is determined whether or not UCI is to be transmitted on a UL Pcell of the PUSCH in step 52. If so, the UCI is transmitted on the UL Pcell on the PUSCH in step 54 (see Spec. ,r,r 41(1-B), (II-B), and if not, the UCI is transmitted to the mobile communication node using either a first or second mode of UCI transmission in steps 56 (Spec. ,r,r 41(1-C), (I-C)(a), (I-C)(b)) and/or 58 (Spec. i141(II-C)). Paragraph 41 of Appellants' Specification positively describes the recited condition that when PUSCH is transmitted in the current subframe on any other UL CC associated with the UE 32 (e.g., any UL secondary CC or Secondary cell (Scell) associated with the UE 32) except the UL Peel!, then the UE 32 may 2 Claim 14 ( emphasis added) recites, in pertinent part, "transmitting UCI to the mobile communication node" upon determining "that a physical uplink shared channel (PUSCH) is to be transmitted during a current subframe on an Uplink Secondary cell (UL Scell) and not on an Uplink Primary cell (UL Peel!)." 4 Appeal 2017-011011 Application 13/163, 151 follow" one of several options: in step 56 two options transmit UCI on an UL Scell and not on an UL Pcell (Spec. ,r,r 41(I-C)(a), (b) ("except the UL Pcell"), and in step 58 another option transmits UCI on an UL Pcell (Spec. ,r 41(I-C)). In this light, Appellants have provided adequate support for the negative limitation in claim 14, which is at issue in the case before us, and it is incumbent upon the Examiner to articulate sufficient findings and reasoning in this regard in making any conclusion of obviousness. The Examiner finds that Papasakellariou does not explicitly disclose the disputed negative limitation (Final Act. 4; Ans. 5), and Nam discloses the disputed negative limitation in the Abstract and in paragraphs 227 and 241 (Final Act. 4). However, in supporting this finding, the Examiner broadly states that the cited portions of Nam disclose that "when PUSCH is to be transmitted to the UL SCCs to carry the PUSCH in the subframe, transmit UCI in the PUSCH" (Final Act. 4; italics omitted), without making any specific finding regarding how/why transmitting UCI in the PUSCH includes "that a physical uplink shared channel (PUSCH) is to be transmitted during a current subframe on an Uplink Secondary cell (UL Scell) and not on an Uplink Primary cell (UL Peel!)" as recited in claim 14 ( emphasis added). In the Answer, the Examiner explains these findings regarding Nam with the following conclusory reasoning: Herein, it is Examiner's broadest reasonable interpretation that Nam's determination that the UE needs to piggyback UCI in the PUSCH as result of the UE not receiving a UL grant scheduling a PUSCH in the UL PCC is sufficient to properly reject the claimed but [sic ][in] unspecified 5 Appeal 2017-011011 Application 13/163, 151 "determination that a PUSCH is to be transmitted during a current subframe on an UL Scell and not on an UL Pcell." Consequently, Examiner believes that Nam discloses in response to a determination that a physical uplink shared channel (PUSCH) is to be transmitted during a current subframe on an Uplink Secondary cell (UL Scell) and not on an Uplink Primary cell (UL Pcell) (if the UE receives (i.e., in response to determining that) neither any UL grants with CQI request=l nor an UL grant scheduling a PUSCH in the UL PCC, the UE piggybacks (i.e., the UE determines that it needs to piggyback) UCI in the PUSCH in one of the UL SCCs to carry the PUSCH in the subframe; [0241 ]), transmitting UCI to the mobile communication node ( transmit UCI by piggyback; [0241 ]; Abstract). Ans. 6 (italicized emphases deleted and underlining added). However, our reading of Nam (specifically ,r,r 227,241) reveals Nam is silent as to not transmitting UCI on an UL Pcell ( and instead doing so on an UL Scell). Because the Examiner paints with a broad brush in making the obviousness rejection, 3 and fails to point out how/why Nam's disclosure of piggybacking in paragraph 241 teaches or suggests transmitting a PUSCH during an UL Scell and not on an UL Peel!, we are left to speculate as to the precise details of how the argued claim limitation is taught or suggested by Nam, and thus the combination of Papasakellariou and Nam. 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 in order to support the Examiner's rejection. 3 See Final Act. 4; Ans. 6 (relying on Nam as disclosing the disputed negative limitation). 6 Appeal 2017-011011 Application 13/163, 151 "The review authorized by 35 U.S.C. Section 134 is not a process whereby the examiner ... invite[ s] the [B]oard to examine the application and resolve patentability in the first instance." Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999). "The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not ... resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis." Warner, 379 F.2d at 1017. In this light, the Examiner has not adequately shown how/why this meets the requirements of claim 14 of transmitting UCI to a mobile communication node in two different modes in response to a determination that a PUSCH is to be transmitted on an UL Scell and not on an UL Peel!, 4 in response to determining a PUSCH Therefore, the Examiner has not made a sufficient prima case of obviousness with respect to the disputed negative limitation of independent claim 14. As such, based on the record before us, we find that the Examiner improperly relies upon Nam to teach or suggest the disputed negative claim limitation. See Warner at 1017. Therefore, we concur with Appellants' arguments (App. Br. 4--5) that the Examiner erred in finding that Nam, and thus the combination of the references, teaches or suggests determining that a PUSCH is to be transmitted on an Uplink Secondary cell and not on an Uplink Primary cell, as recited in claim 14. 5 4 As described by Appellants' Specification in paragraphs 41 (I-C), (I-C)( a), and (I-C)(b), and shown in Figure 4. 5 We recognize that Appellants' arguments present additional issues. Because we were persuaded of error by this issue concerning the negative 7 Appeal 2017-011011 Application 13/163, 151 Because we find that the Examiner improperly relies upon Nam to teach or suggest the disputed negative claim limitation, and Papasakellariou does not remedy the above-noted deficiencies in Nam, it follows that the Examiner has erred in concluding that the combination of Papasakellariou and Nam renders independent claim 14 unpatentable. Accordingly, we do not sustain the Examiner's obviousness rejections of independent claim 14, as well as claims 17, 20, and 35 depending respectively therefrom. CONCLUSION Appellants have persuaded us of error in the Examiner's decision to reject claims 14, 17, 20, and 35. DECISION The decision of the Examiner to reject claims 14, 17, 20, and 35 is reversed. REVERSED limitation ("not on an Uplink Primary cell (UL Pcell)"), as set forth in claim 14, we do not reach the additional issues. 8