Ex Parte Pan et al

Patent Trial and Appeal BoardNov 3, 2016

11746330 (P.T.A.B. Nov. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111746,330 0510912007 14868 7590 11/07/2016 Patent Docketing 200 Bellevue Parkway, Suite 300 Attention: Docketing Wilmington, DE 19809 FIRST NAMED INVENTOR Kyle Jung-Lin Pan 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. 2-1312.01.US 2481 EXAMINER KARIKARI, KW AS! ART UNIT PAPER NUMBER 2641 NOTIFICATION DATE DELIVERY MODE 11/07/2016 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): docketing@interdigital.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KYLE JUNG-LIN PAN, ROVERT LIND OLESEN, and DONALD M. GREICO Appeal 2015-005316 Application 11/7 46,330 Technology Center 2600 Before CATHERINE SHIANG, TERRENCE W. McMILLIN, and NORMAN H. BEAMER, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 41--48, which are all the claims pending and rejected in the application. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm-in- part. Appeal 2015-005316 Application 11/746,330 STATEMENT OF THE CASE Introduction The present invention relates to wireless communications. See generally Spec. 1. Claim 41 is exemplary: 41. A wireless transmit/receive unit (WTRU) compnsmg a processor configured to select a pre-coding codeword from a first codebook, the first codebook comprising a plurality of pre- coding codewords divided into a plurality of subsets of precoding codewords, wherein the selected pre-coding codeword is selected from a selected one of said subsets of pre- coding codewords, wherein the selected subset is selected based on rank. References and Rejections Claims 42, 43, and 47 are rejected under 35 U.S.C. Â§ 112, second paragraph for indefiniteness. Claims 41, 43, 44, and 46-48 are rejected under U.S.C. Â§ 102( e) as being anticipated by Wang (U.S 2007/0174038 Al; July 26, 2007). Claims 42 and 45 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Wang and Li (U.S 2006/0092054 Al; May 4, 2006). ANALYSIS 35 U.S.C. Â§ 112, Second paragraph Claims must "particularly point[] out and distinctly claim[] the subject matter which the applicant regards as his invention." 35 U.S.C. Â§ 112, second paragraph. Because Appellants do not contest the merits of the Examiner's rejection, we summarily affirm the Examiner's rejection of claims 42, 43, and 47 under 35 U.S.C. Â§ 112, second paragraph. 2 Appeal 2015-005316 Application 11/746,330 Anticipation We have reviewed the Examiner's rejection in light of Appellants' contentions and the evidence of record. We concur with Appellants' contention that the Examiner erred in finding Wang discloses "the first codebook comprising a plurality of pre-coding codewords divided into a plurality of subsets of precoding codewords," as recited in independent claim 41 (emphasis added). 1 See App. Br. 4---6; Reply Br. 1-5. The Examiner finds: Wang mentions that original precoding matrices in a codebook could be altered to yield a modified codebook of updated precoding matrices (see, [0043-44]; whereby the precoding matrices are being associated with the "pre-coding codewords" and the modified codebook is being associated with the "subset of precoding codeword''). Thus, the modified codebook of updated precoding matrices is a byproduct/"subset" of the original precoding matrices in the codebook. Ans. 5 (emphases added, original emphases omitted); see also Final Act. 2- Ll -.. During examination, claims are given their broadest reasonable interpretation consistent with the specification and should be read in light of the specification as it would be interpreted by one of ordinary skill in the art, but without importing limitations from the specification. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted); SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). We agree with Appellants that the Examiner's interpretation of "subset" is unreasonable, and the Examiner's finding that "the modified 1 Appellants raise additional arguments. Because the identified issue is dispositive of the appeal, we do not reach the additional arguments. 3 Appeal 2015-005316 Application 11/746,330 codebook of updated precoding matrices is a byproduct/"subset" of the original precoding matrices in the codebook" (Ans. 5) is unsupported by evidence. See App. Br. 4---6; Reply Br. 1-5. Specifically, the Examiner has not shown one skilled in the art would consider Wang's "modified codebook of updated precoding matrices" constitutes a subset of the "original precoding matrices in the codebook." Ans. 5 (emphases added, original emphases omitted). See App. Br. 4---6; Reply Br. 1-5. Therefore, the Examiner has not shown Wang discloses "the first codebook comprising a plurality of pre-coding codewords divided into a plurality of subsets of precoding codewords," as required by claim 41. Because the Examiner fails to provide sufficient evidence or explanation to support the anticipation rejection, we are constrained by the record to reverse the Examiner's rejection of claim 41, and corresponding dependent claims 43 and 47. Independent claim 44 recites a claim limitation that is substantively similar to the disputed limitation of claim 41. See claim 44. Therefore, for similar reasons, we reverse the Examiner's rejection of independent claim 44, and corresponding dependent claims 46 and 48. Obviousness The Examiner cites an additional reference for the obviousness rejection of claims 42 and 45. The Examiner relies on Wang in the same manner discussed above in the context of claim 41, and does not rely on the additional reference in any manner that remedies the deficiencies of the underlying anticipation rejection. See Final Act. 6-7. 4 Appeal 2015-005316 Application 11/746,330 Accordingly, we reverse the Examiner's obviousness rejection of claims 42 and 45. DECISION We reverse the Examiner's decision rejecting claims 41--48 under 35 U.S.C. Â§Â§ 102, 103. We affirm the Examiner's decision rejecting claims 42, 43, and 47 under 35 U.S.C. Â§ 112, second paragraph. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED-IN-PART 5