Ex Parte ShanDownload PDFPatent Trial and Appeal BoardJun 27, 201711240252 (P.T.A.B. Jun. 27, 2017) Copy Citation 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. 11/240,252 09/30/2005 TieJun Shan ITC-2-1027.01.US 3295 24374 7590 06/29/2017 VOLPE AND KOENIG, P.C. DEPT. ICC UNITED PLAZA 30 SOUTH 17TH STREET PHILADELPHIA, PA 19103 EXAMINER MCKIE, GINA M ART UNIT PAPER NUMBER 2631 NOTIFICATION DATE DELIVERY MODE 06/29/2017 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): eoffice @ volpe-koenig. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TIEJUN SHAN Appeal 2015-006799 Application 11/240,252 Technology Center 2600 Before ST. JOHN COURTENAY III, CARLA M. KRIVAK, and MICHAEL M. BARRY, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 52, 60, and 68. Claims 1—51, 53—59, and 61—67 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was conducted on June 15, 2017. We affirm. Invention The disclosed and claimed invention on appeal “relates to power control in wireless communication systems. More particularly, the present Appeal 2015-006799 Application 11/240,252 invention relates to a method and apparatus for Open Loop Power Control in multiple antenna communication systems.” (Spec. 1 5).1 Representative Claim 52. A wireless transmit/receive unit (WTRU) configured to perform a power control, the WTRU comprising: a plurality of antennas; and circuitry configured to receive information from a base station; wherein the circuitry is further configured to select a first set of subcarriers and first weights from a codebook in response to the received information and to transmit a first signal in a first uplink single carrier frequency division multiple access (FDMA) transmission using the first set of subcarriers and the first weights in a first time interval over the plurality of antennas, [LI] wherein an overall transmission power for the first uplink transmission is determined based on at least an open loop power control factor, and [L2] wherein the overall transmission power is divided over the plurality of antennas', and wherein the circuitry is further configured [L3] in response to not receiving an indication that the first signal was successfully received, to select a second set of subcarriers and second weights and to retransmit the first signal in a second uplink single carrier FDMA transmission using the second set of subcarriers and the second weights in a second time interval over the plurality of antennas; 1 We reference the original Specification paragraphs, and not the paragraphs as designated in corresponding US Patent Application Publication No. US 2006/0262874 Al. 2 Appeal 2015-006799 Application 11/240,252 wherein the first set of subcarriers is different than the second set of subcarriers and the first weights are different than the second weights. (Contested limitations LI, L2, and L3 are emphasized.) Rejections A. Claims 52 and 60 are rejected under pre-AIA 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Whinnett (US 5,999,826, issued Dec. 7, 1999), in view of Frederiksen et al. (US 7,397,861 B2, issued July 8, 2008) (hereinafter “Frederiksen”), Walton et al. (US 7,894,548 B2, issued Feb. 22, 2011) (hereinafter “Walton”), and Shurvinton et al. (US 2005/0130595 Al, published June 16, 2005) (hereinafter “Shurvinton”). B. Claim 68 is rejected under pre-AIA 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Whinnett, Frederiksen, Walton, Shurvinton, and Kim et al. (US 2005/0195912 Al, published Sept. 8, 2005) (hereinafter “Kim”). We separately address the rejections of claims 52, 60, and 68, infra. To the extent Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. See 37 C.F.R. § 41.37(c)(l)(iv). ANALYSIS We have considered all of Appellant’s arguments and any evidence presented. We disagree with Appellant’s arguments, and we adopt as our 3 Appeal 2015-006799 Application 11/240,252 own: (1) the findings and legal conclusions set forth by the Examiner in the Final Action (2—20) from which this appeal is taken, and (2) the findings, legal conclusions, and explanations set forth in the Answer (2—16), in response to Appellant’s arguments (App. Br. 5—9). We highlight and address specific findings and arguments for emphasis in our analysis below. Rejection A of Independent Claim 52 under 35 U.S.C. § 103(a) We decide the following issues presented in this appeal regarding rejected representative claim 52: Issues: Under § 103, did the Examiner err by finding the cited combination of Whinnett, Frederiksen, Walton, and Shurvinton would have taught or suggested contested limitations LI, L2, and L3: [LI] wherein an overall transmission power for the first uplink transmission is determined based on at least an open loop power control factor, and [L2] wherein the overall transmission power is divided over the plurality of antennas', wherein the circuitry is further configured [L3] in response to not receiving an indication that the first signal was successfully received, to select. . . , within the meaning of independent claim 52?2 (Emphasis added). Regarding Whinnett, Appellant contends, inter alia: The transmitting device in Whinnett then receives in response either an acknowledgement (ACK) or an error signal (i.e., non- ACK (NACK) signal) from the receiving device. Only upon receipt of the error signal does the transmitting device adjust the 2 We give the contested claim limitations the broadest reasonable interpretation consistent with the Specification. See In re Morris, 111 F.3d 1048, 1054 (Fed. Cir. 1997). 4 Appeal 2015-006799 Application 11/240,252 antenna weights to new weights. The mechanism of Whinnett, accordingly, cannot be used for performing power control in a similar fashion as in Applicant’s claims 52 and 60. (App. Br. 6). Appellant subsequently recites portions of the claim language, and asserts: “[i]n a power control mechanism, it is perfectly conceivable that no response at all may be received by the transmitting device, meaning an error signal may never be received. The Whinnett reference, therefore, fails to disclose, teach or suggest the elements as recited in claims 52 and 60.” (Id.). However, Appellant fails to traverse the Examiner’s specific findings regarding claim 52 and the teachings and suggestions of Whinnett. See Final Act. 10.3 Nor does Appellant provide any evidence to support the aforementioned assertion.4 We find such mere attorney argument without supporting evidence is conclusory, and therefore unpersuasive. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (attorney argument is not the kind of factual evidence required to rebut a prima facie case of obviousness); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in 3 The Examiner relies on Whinnett, col. 5, lines 54—63: “If an error signal, such as NACK, is received from communication device 101, as detected at block 306, the controller 126 selects new antenna weights Wl, W2, and W3, in block 308.” (Final Act. 10). 4 See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”). 5 Appeal 2015-006799 Application 11/240,252 a brief cannot take the place of evidence”). Moreover, we agree with the Examiner’s broad but reasonable interpretation of contested negative limitation L3:5 One of ordinary skill in the art should recognize that Appellent’s[sic] limitation “in response to not receiving an indication that the first signal was successfully received” is equivalent to Whinnett’s “if an error signal, such as a NACK is received.” It is well known in the art that an ACK signal, or acknowledgment signal, is an indication that a signal is successfully received. The opposite of an ACK is a NACK, or non-acknowledgment signal, which is the indication that a signal is not successfully received. Therefore, it is clear that Whinnett teaches “in response to not receiving an indication that the first signal was successfully received” by disclosing receiving an error or NACK signal. (Ans. 5) (Emphases added). See also n.3, supra. Appellant fails to substantively contest limitations LI and L2. Instead, Appellant continues the pattern of advancing arguments unsupported by evidence. Appellant urges that because the Whinnett reference purportedly fails to disclose, teach or suggest the elements as recited in claims 52 and 60. . . . [T]he Whinnett reference would fail for use as a mechanism directed toward the subject matter of claims 52 and 60. Accordingly, it is not conceivable that a person of ordinary skill in the art would consider combining the Whinnett reference with any other reference even in an attempt to duplicate Applicant’s claims 52 and 60. (App. Br. 6). 5 Because “applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted). 6 Appeal 2015-006799 Application 11/240,252 Similar to our discussion above, Appellant fails to traverse the Examiner’s detailed findings regarding the motivation for combining Whinnett with the other cited references. (Final Act. 11—18). We find Appellant’s unsupported arguments unpersuasive. To the extent that Appellant is contending that combining three (App. Br. 6) or four (App. Br. 7) references is an indication of non-obviousness, we note “[t]he criterion, however, is not the number of references, but what they would have meant to a person of ordinary skill in the field of the invention.” Reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention. In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991). Applying this reasoning here, we do not agree that three (or four, or even five) is a large number of references to support an obviousness rejection. On page 7 of the Appeal Brief, Appellant describes selected portions of the cited Whinnett, Frederiksen, and Walton references. Without traversing the Examiner’s specific findings set forth in the Final Office Action (9-18), Appellant advances three conclusory assertions, each unsupported by specific citations to evidence: (1) “the Walton reference fails to cure the deficiencies of the Whinnett reference with respect to claims 52 and 60 of the present application” (2) “nothing in Frederiksen, which when combined with Whinnett and/or Walton, discloses, teaches or suggests the elements as recited in claims 52 or 60,” and (3) “Shurvinton does not disclose, teach or suggest, inter alia, ‘an overall transmission power for the first uplink transmission is determined based on at least an open loop power control factor, and wherein the overall transmission power is divided over the plurality of antennas’. Accordingly, the Shurvinton reference does 7 Appeal 2015-006799 Application 11/240,252 nothing to cure any deficiencies of the above references.” (App. Br. 7). We find Appellant’s unsupported arguments are unavailing. Appellant additionally urges the Examiner has relied upon impermissible hindsight construction: The Examiner is attempting to piece together 4 unrelated references to recreate, in hindsight, the Applicant's claims after being exposed to the Applicant’s disclosure, which is an impermissible undertaking. “We find no suggestion to combine the teachings and suggestions ... as advanced by the Examiner, except from using Appellants’ invention as a template through a hindsight reconstruction of Appellants’ claims.” Ex Parte Crawford et al, Appeal 20062429, Decided May 30, 2007 (BPAI 2007). (App. Br. 7-8). In response, we note again that reliance upon a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention. See Gorman, 933 F.2d at 986. Thus the Examiner’s reliance on four references to support rejection A of claims 52 and 60, without more, does not support Appellant’s allegation of hindsight, or weigh against the obviousness of Appellant’s claimed invention. Moreover, Appellant does not provide evidence sufficient to demonstrate that combining the teachings of the cited references would have been “uniquely challenging or difficult for one of ordinary skill in the art,” (LeapfrogEnters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)). Nor has Appellant provided any objective evidence of secondary considerations, which our reviewing court guides “operates as a beneficial 8 Appeal 2015-006799 Application 11/240,252 check on hindsight.” Cheese Systems, Inc. v. Tetra Pak Cheese and Powder Systems, Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).6 Therefore, on this record, we are not persuaded the Examiner erred in finding that combining the respective teachings of Whinnett, Frederiksen, Walton, and Shurvinton would have merely yielded predictable results (Final Act. 11—12), and thus would have been obvious to an artisan possessing an ordinary level of skill at the time of Appellant’s invention. See KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). See Final Act 12 (“Whinnett’s use of an unspecified transmission could have been substituted for the use of single carrier frequency division multiplex transmission of Walton and the results would have been predictable and resulted in a first uplink single carrier frequency domain transmission and a second uplink single carrier frequency domain transmission.”). See also Final Act. 10—18 (i.e., the several “motivation to combine” findings set forth by the Examiner). For at least the aforementioned reasons, and based upon a preponderance of the evidence, we do not find persuasive Appellant’s arguments alleging the Examiner has improperly combined the references under § 103. (App. Br. 7—8). We further find Appellant has not persuasively traversed the Examiner’s specific findings regarding limitations LI, L2, and L3, with substantive argument and/or evidence. 6 See Evidence Appendix: “None.” (App. Br. 12). 9 Appeal 2015-006799 Application 11/240,252 Therefore, on this record, Appellant has not persuaded us the Examiner erred. Accordingly, we sustain rejection A of representative independent claim 52. Rejection A of Independent Claim 60 under § 103(a) Appellant advances no separate, substantive arguments for rejection A of independent claim 60. Arguments not made are waived. See 37 C.F.R. § 41.37(c)(l)(iv). Therefore, we sustain rejection A of claim 60. Rejection B of Dependent 68 under 35 U.S.C. § 103(a) Regarding claim 68, Appellant contends: The Kim et al. reference is added as a fifth reference to the four previous references to reject Claim 68 in an attempt to reconstruct the Applicant’s claims. The Kim et al. reference discloses a method and system for transmitting and receiving data using a plurality of antennas. The Kim reference discloses receiving feedback information from a receiving end that includes group selection information and weight values for the plurality of antennas. The Kim reference teaches grouping the plurality of antennas into a plurality of antenna groups based on the group selection information included in the feedback information, and transmitting, to a receiving end, a plurality of data streams through the plurality of antenna groups, respectively, based on the weight values. (App. Br. 8). In response, we note again that reliance upon a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention. Gorman, 933 F.2d at 986. Thus the Examiner’s reliance on five references to reject claim 68 under rejection B, without more, does not support Appellant’s allegation of hindsight or weigh 10 Appeal 2015-006799 Application 11/240,252 against the obviousness of Appellant’s claimed invention. Without traversing the Examiner’s specific findings regarding claim 68, Appellant concludes: the Kim reference fails to cure the deficiencies of any of the previously cited references with respect to the elements recited in Applicant’s amended independent claim 52. Accordingly, Applicant’s amended independent claim 52 is patentable over any combination of the cited references. Since claim 68 depends from patentable amended independent claim 52, it is therefore patentable for at least the same reasons as patentable amended independent claim 52. (App. Br. 8). Again, Appellant does not traverse the Examiner’s specific findings or provide any evidence to support the conclusory assertions. (Id. ). See n.4, supra. Therefore, on this record, and based upon a preponderance of the evidence, Appellant has not persuaded us the Examiner erred. Accordingly, we sustain the Examiner’s rejection B of dependent claim 68. Reply Brief To the extent Appellant advances new arguments in the Reply Brief not in response to a shift in the Examiner’s position in the Answer, we note arguments raised in a Reply Brief that were not raised in the Appeal Brief or are not responsive to arguments raised in the Examiner’s Answer will not be considered except for good cause. See 37 C.F.R. § 41.41(b)(2). 11 Appeal 2015-006799 Application 11/240,252 DECISION We affirm the Examiner’s rejections of claims 52, 60, and 68 under pre-AIA 35 U.S.C. § 103(a). No time for taking any action connected with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f). AFFIRMED 12 Copy with citationCopy as parenthetical citation