Ex Parte Palanki et al

Patent Trial and Appeal Board

Mar 24, 2016

12783766 (P.T.A.B. Mar. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121783,766 05/20/2010
23696 7590 03/28/2016
QUALCOMM INCORPORATED
5775 MOREHOUSE DR.
SAN DIEGO, CA 92121
FIRST NAMED INVENTOR
Ravi Palanki
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.
092311 7466
EXAMINER
ROSE, DERRICK V
ART UNIT PAPER NUMBER
2462
NOTIFICATION DATE DELIVERY MODE
03/28/2016 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 RA VIP ALANKI and ALEXEI Y. GOROKHOV
Appeal2014-006409
Application 12/783,766
Technology Center 2400
Before JASON V. MORGAN, KARA L. SZPONDOWSKI, and
JOHN R. KENNY, Administrative Patent Judges.
KENNY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-56. (App. Br. 9.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
INVENTION
Appellants' disclosed invention relates generally to communication
systems, and more particularly, to a system and method for joint processing
in a wireless communication. (Spec. i-f 2.) Claim 1, which is representative,
reads as follows:
1. A method of wireless communication, comprising:
[i] receiving signals jointly transmitted from a plurality
of base stations;
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Application 12/783,766
[ii] measuring at least one synchronization parameter
between jointly transmitted signals received from the
plurality of base stations; and
transmitting a signal to at least one of the plurality of
base stations with information about the at least one
synchronization parameter.
REFERENCES
The Examiner relies on the following prior art references in rejecting
the claims on appeal:
Raaf US 7 ,400,654 B2 July 15, 2008
Han US 2010/0054237 Al Mar. 4, 2010
Dick US 7,924,961 B2 Apr. 12, 2011
(filed May 27, 2008)
Yu US 8, 199 ,845 B2 June 12, 2012
(filed May 20, 2009)
REJECTIONS
Claims 1-3, 5-11, 13-19, 21-27, 31-33, 36, 38, 39, 42, 44, 45, 48,
50, 51, 54, and 56 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Han and Raaf. (Ans. 2.)
Claims 4, 12, 20, 28, 34, 35, 40, 41, 46, 47, 52, and 53 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Han, Raaf, and Dick.
(Ans. 26.)
Claims 37, 43, 49, and 55 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Han, Raaf, Dick, and Yu. (Ans. 41.)
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ISSUES
( 1) Does the combination of Han and Raaf teach or suggest
limitations [i] and [ii] recited in claim 1? (App. Br. 10-16.)
(2) Should the Examiner's rejections of claim 51-56 be reversed
for failure to set forth a prima facie case of obviousness of
claim 51 in the Final Action? (App. Br. 10.)
ANALYSIS
Claims 1-3, 5-11, 13-19, 21-27, 31-33, 36, 38,
39, 42, 44, 45, 48, and 50
Appellants argue that the combination of Han and Raaf fails to teach
or suggest the jointly transmitted signals recited in limitations [i] and [ii] in
claim 1. (App. Br. 10-16; Reply Br. 5-7.) The Examiner finds the recited,
jointly transmitted signals are taught or suggested by Han's disclosure that
frames from a femto-cell base station and a macro-cell base station will
reach user equipment (UE) at about the same instant (Ans. 50-51, citing
Han, i-fi-122, 26, 34, Figs. 1 and 2, elements 114, 116) combined with the
disclosure in Raaf claim 1 of "determining the plurality of second
synchronization signals that can be transmitted jointly by a respective code
set" (Ans. 51-52, citing Raafclaim 1, at Raaf8:58---60).
Appellants argue that Han does not disclose base stations jointly
transmitting to a UE. (Reply Br. 6.) Rather, Appellants contend Han shows
a hypothetical case where if the two base stations were to transmit signals at
the same time, their transmissions would arrive at about the same time.
(Reply Br. 6.) Appellants argue that Han's two base stations are in
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Application 12/783,766
uncoordinated networks. (App. Br. 12; Reply Br. 7 .) Appellants also argue
that Raaf s joint transmission is not from two base stations. (App. Br. 14--
16.)
We are not persuaded by these arguments. First, even if we were to
accept Appellants' argument that the pertinent disclosure in Han concerns a
hypothetical embodiment, the hypothetical status of that embodiment does
not preclude Han from teaching or suggesting the disputed limitation.
Second, claim 1 does not require that the networks of the two base stations
be coordinated. All claim 1 requires is that the two base stations jointly
transmit signals, and we agree with the Examiner that having two signals
arrive at around the same time suggests joint transmission. (Ans. 50-52.)
Third, Raafs disclosed joint transmission can and does, in combination with
Han, suggest the disputed limitations even if Raaf s joint transmission by
itself would not satisfy those limitations. In re Mouttet, 686 F.3d 1322,
1332 (Fed. Cir. 2012) (citing In re Keller, 642 F.2d 413, 425-26 (CCPA
1981)). We, therefore, adopt the Examiner's findings regarding the prior
art's teachings and suggestions of the disputed limitations in claim 1. (Ans.
2-3, 49-52.)
Appellants further dispute the Examiner's construction of the term
"joint transmission," arguing "'joint' implies unity of action." (Reply Br. 7.)
However, Appellants do not persuasively show how this interpretation of the
claim language would affect the Examiner's findings and conclusions.
Therefore, Appellants' argument is unpersuasive of error.
Accordingly, we sustain the rejection of claim 1 and of claims 2, 3, 5-
11, 13-19, 21-27, 31-33, 36, 38, 39, 42, 44, 45, 48, and 50, not separately
argued. (App. Br. 10-16.) Appellants' arguments for claims 4, 12, 20, 28,
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34, 35, 37, 40, 41, 43, 46, 47, and 49 are effectively the same. (App. Br. 16-
17.) Therefore, for the reasons given above, we also sustain the rejection of
these claims.
Claims 51-56
Regarding the merits of the Examiner's prior art rejections, Appellants
do not separately argue claims 51, 54, and 56 from claims 1-3, 5-11, 13-19,
21-27, 31-33, 36, 38, 39, 42, 44, 45, 48, and 50. (App. Br. 10-16.) On the
merits, Appellants do not separately argue claims 52 and 53 from claims 4,
12, 20, 28, 34, 35, 40, 41, 46, 47. (App. Br. 16.) And, on the merits,
Appellants do no separately argue claim 55 from claims 37, 43, and 49.
(App. Br. 17 .) Therefore, for the reasons expressed above, on the merits, we
sustain the Examiner's rejections of claims 51-56.
Appellants argue that the rejection of claims 51-5 6 should not be
sustained for an independent reason. In particular, Appellants argue that the
Examiner failed to set forth a prima facie case of obviousness of claims 51-
56 because, in the Final Action, the Examiner does not expressly identify the
differences between claim 51 and the primary reference (Han) and does not
expressly address how the secondary reference (Raat) overcomes those
differences. (App. Br. 10; Reply Br. 5.) Claims 52-56 depend on claim 51.
In the Answer, the Examiner indicates that the lack of an express discussion
of the differences between claim 51 and the primary reference (Han) and an
express discussion of how the secondary reference (Raat) overcomes those
differences oversight in the Final Action is merely a typographical oversight.
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(Ans. 48--49 1.) The Answer notes that claim 51 differs from Han in a similar
manner as the other independent claims, and that Raaf similarly overcomes
those differences. (Id.) Moreover, the Examiner explicitly sets forth the rest
of the obviousness analysis as it pertains to claim 51 in the Final Action and
the Answer. (Final Act. 23-24; Ans. 24--25). Appellants continue to argue
"the Office Action lacks any mention that reference should be made to a
parallel arguments elsewhere in the Office Action." (Reply Br. 5.)
However, for the reasons discussed below, we sustain the Examiner's
rejection of claims 51-56.
By the time of the Answer, Appellants were fully aware of the reasons
for the Examiner's rejection of claim 51 and had an opportunity to respond
in their Reply Brief. (Final Act. 23-24; Ans. 24--25, 48--49.) In fact,
Appellants were presumably aware of the issues for claims 51-56 when they
filed their Appeal Brief because, for claims 51-56, the Appeal Brief
addresses the differences subsequently confirmed by Examiner for claim 51
and the Examiner's findings concerning Raaf overcoming those differences.
(App. Br. 10-17.) Accordingly, we sustain the Examiner's rejections of
claim 51-56. In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011).
DECISION
The decision of the Examiner to reject claims 1-56 is affirmed.
1 This portion of the Answer refers to an independent claim 55, which, from
context, we interpret to be independent claim 51. (Ans. 49.) Claim 55
depends on claim 51.
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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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