Ex Parte Khandekar et al

Patent Trial and Appeal Board

Dec 22, 2016

12260868 (P.T.A.B. Dec. 22, 2016)

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.
12/260,868 10/29/2008 Aamod Khandekar 080278U3 3432
23696 7590 12/27/2016
OTTAT mMM TNmRPORATFD
EXAMINER
5775 MOREHOUSE DR.
SAN DIEGO, CA 92121
BEDNASH, JOSEPH A
ART UNIT PAPER NUMBER
2461
NOTIFICATION DATE DELIVERY MODE
12/27/2016 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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
us-docketing@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AAMOD KHANDEKAR, ALEXEI GOROKHOV,
NAGA BHUSHAN, RAVI PALANKI,
ASHWIN SAMPATH, and AVNEESH AGRAWAL
Appeal 2015-005882
Application 12/260,868
Technology Center 2400
Before CARLA M. KRIVAK, CARL W. WHITEHEAD JR., and
MICHAEL M. BARRY, Administrative Patent Judges.
KRIVAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3—12, and 14—50. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2015-005882
Application 12/260,868
STATEMENT OF THE CASE
Appellants’ invention is directed to “preamble design of a wireless
signal facilitating reduced interference for semi-planned or unplanned
wireless access networks” (Spec. 13).
Independent claim 1, reproduced below, is exemplary of the subject
matter on appeal.
1. A method of wireless communication, comprising:
establishing a resource of a wireless signal reserved for a
base station (BS) other than a BS transmitting the wireless
signal;
transmitting information on the wireless signal that
identifies the reserved resource within the wireless signal,
wherein the information that identifies the reserved resource
identifies the type of base station that is transmitting the
wireless signal; and
blanking or transmitting with reduced power on the
reserved resource.
REJECTIONS
The Examiner rejected claims 1, 3, 5—7, 9—12, 14, 16—18, 20-30, 32—
42, and 44—50 under 35 U.S.C. § 103(a) based upon the teachings of Kwun
(US 2007/0064666 Al, pub. Mar. 22, 2007), Mattila (US 5,953,665, iss.
Sept. 14, 1999), and Ore (US 2009/0070694 Al, pub. Mar. 12, 2009).
The Examiner rejected claims 4, 15, and 43 under 35 U.S.C. § 103(a)
based upon the teachings of Kwun, Mattila, Ore, and Sung (US
2008/0057934 Al, pub. Mar. 6, 2008).
The Examiner rejected claims 8 and 19 under 35 U.S.C. § 103(a)
based upon the teachings of Kwun, Mattila, Ore, and Malkamaki (US
2002/0172208 Al, pub. Nov. 21, 2002).
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Appeal 2015-005882
Application 12/260,868
The Examiner rejected claim 31 under 35 U.S.C. § 103(a) based upon
the teachings of Kwun, Mattila, Ore, and Rauscher (US 6,633,762 Bl, iss.
Oct. 14, 2003).
The Examiner rejected claims 1, 3, 5—7, 9-12, 14, 16—18, 20-42, and
44—50 under 35 U.S.C. § 103(a) based upon the teachings of Tominaga (WO
2007/043096 Al, pub. Apr. 19, 2007))1, Haartsen (US 6,351,643 Bl, iss.
Feb. 26, 2002), Ore, and Mattila.
The Examiner rejected claims 4, 15, and 43 under 35 U.S.C. § 103(a)
based upon the teachings of Tominaga, Haartsen, Ore, Mattila, and Sung.
The Examiner rejected claims 8 and 19 under 35 U.S.C. § 103(a)
based upon the teachings of Tominaga, Haartsen, Ore, Mattila, and
Malkamaki.
ANALYSIS
The Examiner sets forth a detailed analysis of how the cited art
teaches and suggests Appellants’ claimed invention, along with a detailed
explanation as to why the claims are rejected as being obvious over the
collective teachings of a combination of references (Final Act. 2—32; Adv.
Act. 2—5; Ans. 2—12).
Appellants state the Examiner’s obviousness determination based on a
combination of the references is “grounded on an imaginary ‘factual’
determination of the difference between the claimed invention and an
imaginary construction” (App. Br. 9). This is based on Appellants’
1 The Examiner indicated that Tominaga (US 2008/0253355 Al, pub. Oct.
16, 2008) “is the National Stage entry of the PCT which serves as the
translation of the WIPO publication” (Final Act. 15—16).
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Appeal 2015-005882
Application 12/260,868
inaccurate contention that Kwun—modified2 (or Tominaga-modified3) “is not
the prior art” {id. at 9, 14). Rather, Appellants state the Examiner uses a
determination “extraneous to 35 USC [§] 103” and not “the statutory
requirement to show that the differences between the prior art and the
claimed invention are such that the claimed invention as a whole would have
been obvious” (App. Br. 10). Appellants further state, “the rejection admits
that the differences between Kwun and the claimed invention are not such
that the claimed invention is obvious, but rather are such that Kwun-
modified is obvious” {id.). Thus, Appellants submit a prima facie case of
obviousness has not been made {id.). We disagree.
Under § 103, a holding of obviousness can be based on a showing that
“there was an apparent reason to combine the known elements in the fashion
claimed.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). “[T]he
examiner bears the initial burden, on review of the prior art or on any other
ground, of presenting a prima facie case of unpatentability.” In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992). Appellants have the burden on appeal
to show reversible error by the Examiner in maintaining the rejection. See
In re Kahn, 441 F.3d 977, 985—86 (Fed. Cir. 2006) (quoting In re Rouffet,
149 F.3d 1350, 1355 (Fed. Cir. 1998) (“On appeal to the Board, an applicant
can overcome a rejection by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”)).
2 Appellants refer to the combination of Kwun and Mantilla as “Kwun-
modified” (App. Br. 9).
3 Appellants refer to the combination of Tominaga, Haartsen, and Ore as
“Tominaga-modified” (App. Br. 14).
4
Appeal 2015-005882
Application 12/260,868
In the present case, the Examiner has made a prima facie case of
obviousness by showing the elements that are missing from Kwun are taught
by the other cited references, and has provided articulated reasoning with a
rational underpinning for combining the references supported by evidence
{see generally Final Act.; Ans.).4
On the other hand, Appellants provide argument without any evidence
as to why the Examiner was incorrect in combining the references. It is well
settled that mere attorney arguments and conclusory statements, which are
unsupported by factual evidence, are entitled to little probative value. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (Mere attorney argument is
“not the kind of factual evidence that is required to rebut a prima facie case
of obviousness”); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974); Meitzner v.
Mindick, 549 F.2d 775, 782 (CCPA 1977) (“Argument of counsel cannot
take the place of evidence lacking in the record”).
DECISION
The Examiner’s decision rejecting claims 1, 3—12, and 14—50 is
affirmed.
4 “[Rejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006)).
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Appeal 2015-005882
Application 12/260,868
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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