Ex Parte Hu et al

Patent Trial and Appeal Board

Nov 28, 2016

13042797 (P.T.A.B. Nov. 28, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/042,797 03/08/2011 Teck Hu 4100-807823-US 7637
114592 7590 11/30/2016
Aloatel-T noent TT.SA Tno
EXAMINER
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NOTIFICATION DATE DELIVERY MODE
11/30/2016 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.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TECK HU, MATTHEW BAKER, and FANG-CHEN CHENG
Appeal 2015-002399
Application 13/042,797
Technology Center 2400
Before ERIC S. FRAHM, JOHN A. EVANS, and JOHN D. HAMANN,
Administrative Patent Judges.
EVANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of Claims 1—3, 5—10, 12—15, 17—19, and 21—24.
App. Br. 9. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.2
1 The Appeal Brief identifies Alcatel-Lucent, USA, Inc., as the real party in
interest. App. Br. 3.
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed Oct. 23, 2014, “App. Br.”), the Reply Brief
(filed Dec. 10, 2014, “Reply Br.”), the Examiner’s Answer (mailed Nov. 19,
2014, “Ans.”), the Final Action (mailed June 13, 2014, “Final Act.”), and the
Specification (filed Mar. 8, 2011, “Spec.”) for their respective details.
Appeal 2015-002399
Application 13/042,797
STATEMENT OF THE CASE3
The claims relate to a method for uplink control channel allocation for
a relay backhaul link. See Abstract.
Invention
Claims 1,9, 14, and 19 are independent. An understanding of the
invention can be derived from a reading of exemplary Claim 1, which is
reproduced below with some formatting and emphasis added:
1. A method, comprising:
allocating, at an access node, resource blocks in a
subframe for a backhaul downlink control channel between the
access node and a relay station,
wherein the resource blocks are allocated from a first portion of
the subframe that is time-division-multiplexed with a second
portion of the subframe allocated to a downlink control channel
between the relay station and at least one access terminal, and
wherein the backhaul downlink control channel is frequency-
division-multiplexed with a downlink shared channel; and
transmitting control information from the access node in
the resource blocks.
Reference and Rejection
Claims 1—3, 5—10, 12—15, 17—19, and 21—24 stand rejected under
35 U.S.C. § 102(e) as anticipated by Palanki, et al., (US 2010/0080139 Al,
filed Sept. 28, 2009).4 Final Act. 2-10.
3 Because we write for the Real Party, familiarity with the background of
this case is assumed and presented herein only to the extent necessary to
provide context for the analysis that follows. See U.S. Ethernet Innovations,
LLCv. Acer, Inc., 2015-1640, 2015-1641, 2016 WL 1622309, at *1 n.l
(Fed. Cir. Apr. 25, 2016).
4 Palanki claims priority from a series of provisional applications filed in
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Appeal 2015-002399
Application 13/042,797
ANALYSIS
We have reviewed the rejections of Claims 1—3, 5—10, 12—15, 17—19,
and 21—24 in light of Appellants’ arguments that the Examiner erred
We consider Appellants’ arguments seriatim, as they are presented in the
Appeal Brief, pages 5—9.
Anticipation
Appellants argue these claims as a group and contend they are each
patentable in view of the limitations of Claim 1. App. Br. 9.
A backhaul downlink control channel is frequency-division-multiplexed
with a downlink shared channel.
Independent Claim 1 recites, inter alia, “wherein the backhaul
downlink control channel is frequency-division-multiplexed with a downlink
shared channel.” Independent Claims 9, 14, and 19 recite commensurate
limitations. The Examiner finds Palanki discloses this limitation in Figure
10 and paragraphs 86 and 87. Final Act. 2—3.
Appellants contend Palanki does not disclose these limitations. App.
Br. 6. Appellants read Palanki as disclosing that control and data symbols
are segregated such that the eNB ‘“may or may not transmit TDM control
symbols in the first M symbol periods’” and “‘may transmit new control
channels as well as data in the remaining symbol periods.’” Id. (citing
Palanki, 1 87).
The Examiner finds that Palanki “does not explicitly disclose that
frequency-division multiplexing is the type of multiplexing that is used.”
2008. Palanki (11).
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Appeal 2015-002399
Application 13/042,797
Ans. 13. However, the Examiner finds Palanki discloses that an eNB
transmits Reference Signals frequency-division multiplexed with downlink
shared data channels in the ‘“Data Portions’” of the subframes. Id. In view
thereof, the Examiner finds a person of ordinary skill in the art “would have
understood” that the combined transmission of the backhaul downlink
control channels together with the downlink shared channels and reference
signals during the data portion of the subframe “could be accomplished by
using frequency-division multiplexing.” Id.
Appellants contend the Examiner does not provide any evidentiary
support for the conclusory finding that one “could” transmit the control
channels, the shared downlink channels, and the reference signals during the
data portion of a subframe. Reply Br. 2. Appellants argue Palanki explicitly
distinguishes between control symbols, data symbols, and reference
symbols. Appellants further argue it is erroneous to conclude the disclosure
of multiplexing techniques for reference symbols implies the same
multiplexing techniques may be used for control symbols. Id. at 2—3.
Appellants contend the Examiner is impermissibly engaging in
hindsight reasoning in order to modify Palanki to conform to the disclosure
of the claims. Id. at 3. We agree.
The Examiner finds Palanki “does not explicitly disclose that
frequency-division multiplexing is the type of multiplexing that is used.”
Ans. 13. To supply the limitation found to be missing, the Examiner finds a
person of ordinary skill in the art “would have understood” that the Palanki
reference might be modified such that the combined transmission of the
backhaul downlink control channels together with the downlink shared
channels and reference signals during the data portion of the subframe
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Appeal 2015-002399
Application 13/042,797
“could be accomplished by using frequency-division multiplexing.” Id.
However, articulating a “teaching, suggestion, or motivation in the prior art
that would have led one of ordinary skill to modify the prior art reference . . .
to arrive at the claimed invention” is a standard for a conclusion of
obviousness under 35 U.S.C. § 103. See MPEP § 2143(G). A finding of
obviousness is inappropriate to the present anticipation rejection under
35 U.S.C. § 102.
“It is well settled that a prior art reference may anticipate when the
claim limitations not expressly found in that reference are nonetheless
inherent in it. Under the principles of inherency, if the prior art necessarily
functions in accordance with, or includes, the claimed limitations, it
anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir.
2002) (citations and internal quotation marks omitted). The Examiner’s
“could be accomplished” finding sounds in inherent anticipation. Where the
Examiner finds a reference inherently discloses a claim element, the
Examiner bears the burden of providing reasonable proof that a claim
limitation is an inherent characteristic of the prior art. In re Best, 562 F.2d
1252, 1254—55 (CCPA 1977); see also Crown Operations Int 7, LTD v.
Solutia Inc., 289 F.3d 1367, 1377 (Fed. Cir. 2002). In relying upon the
theory of inherency, the Examiner must provide a basis in fact and/or
technical reasoning to reasonably support the determination that the
allegedly inherent characteristic necessarily flows from the teachings of the
applied prior art. Ex parte Levy, 17USPQ2d 1461, 1464 (BPAI 1990). The
Examiner has not addressed the required proof.
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Appeal 2015-002399
Application 13/042,797
DECISION
The rejection of Claims 1—3, 5—10, 12—15, 17—19, and 21—24 under
35 U.S.C. § 103 is REVERSED.
REVERSED
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