Ex Parte Shan

Patent Trial and Appeal Board

Jun 27, 2017

11240252 (P.T.A.B. Jun. 27, 2017)

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.
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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
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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).
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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.”).
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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).
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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
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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
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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).
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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
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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).
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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
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