Hai Jiang et al.Download PDFPatent Trials and Appeals BoardJul 25, 201912996033 - (D) (P.T.A.B. Jul. 25, 2019) 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. 12/996,033 12/03/2010 Hai Jiang 115.0011.U1(US) 5087 29683 7590 07/25/2019 Harrington & Smith, Attorneys At Law, LLC 4 RESEARCH DRIVE, Suite 202 SHELTON, CT 06484-6212 EXAMINER ELPENORD, CANDAL ART UNIT PAPER NUMBER 2473 NOTIFICATION DATE DELIVERY MODE 07/25/2019 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): USPTO@HSPATENT.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HAI JIANG, JIAN FENG KANG, XIAO YI WANG, CHAO WEI, YI WU, and DONG MEI ZHANG ___________ Appeal 2018-006620 Application 12/996,033 Technology Center 2400 ____________ Before ST. JOHN COURTENAY III, JOYCE CRAIG, and JASON M. REPKO, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1, 3–7, 16–18, 22, 23, 26–32, and 34. The Examiner indicates that claims 35–40 are objected to as being dependent from a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. See Final Act. 12. Claims 2, 8–15, 19–21, 24, 25, and 33 are canceled. We have jurisdiction over the rejected claims under 35 U.S.C. § 6(b). We reverse. 1 According to Appellants, the real party in interest is “HMD Global Oy, Karaportti 2, 02610 Espoo, Finland.” App. Br. 2. Appeal 2018-006620 Application 12/996,033 2 STATEMENT OF THE CASE Embodiments of Appellants’ invention relate to “a method and apparatuses for providing access to a wireless network, such as – but not limited to – Universal Mobile Communication System (UMTS) or Long Term Evolution (LTE) networks or Mobile WiMAX (Worldwide Interoperability for Microwave Access).” Spec. 1. Exemplary Claim 1. A method comprising: receiving broadcast signals from a cellular network; checking, based on at least one of a preamble and a header portion of said broadcast signals, whether said broadcast signals are received from different first and second cell types, wherein said first cell type is a femto cell and said second cell type is a macro cell; selecting based on said first cell type a cell having said first cell type for network access, if both broadcast signals from said first and second cell types are received with sufficient strength; and accessing, in response to the selecting, the cell having the first cell type. Claims Appendix, App. Br. 43. Rejections A. Claims 1, 3, 16–18, 22, 23, 30–32, and 34 are rejected under pre-AIA 35 U.S.C. § 103(a) as being obvious over Laroia et al. (US 2005/0250502 A1, published Nov. 10, 2005) (“Laroia”), in view of Horn et al. (US 2009/0132675 A1, published May 21, 2009) (“Horn”), based upon the filing date of Horn’s provisional Application No. 60/988,646, filed on Nov. 16, Appeal 2018-006620 Application 12/996,033 3 2007, See provisional application Appendix). B. Claims 4 and 26 are rejected under pre-AIA 35 U.S.C. § 103(a) as being obvious over Laroia, Horn, and further in view of Parkvall et al. (US 8,169,992 B2, issued May 1, 2012) (“Parkvall”). C. Claims 5–7 and 27–29 are rejected under pre-AIA 35 U.S.C. § 103(a) as being obvious over Laroia, Horn, and further in view of Wiberg et al. (US 6,628,946 B1, issued Sept. 30, 2003) (“Wiberg”). Related Appeals This appeal is related to Appeal 2018-006706, Application No. 14/749,732, PTAB Decision Ex parte Jiang et al., mailed June 20, 2019 (Examiner Reversed). ANALYSIS Rejection A under § 103(a) of Claims 1, 3, 16–18, 22, 23, 30–32, and 34 Issue: Is the Horn patent application publication (US 2009/0132675 A1) available as prior art? In particular, we decide the dispositive question of whether Horn ’675 is entitled to the benefit of its earliest (60/988,646) provisional application’s filing date of November 16, 2007, this date antedating Appellants’ PCT international filing date of June 6, 2008 (WO 2009/146725 Al). Appeal 2018-006620 Application 12/996,033 4 Analysis Appellants contend the obviousness rejections are improper because Horn is not available as prior art. App. Br. 4. We note Appellants’ application 12/996,033 on appeal has a filing date of December 3, 2010, but an effective filing date of June 6, 2008, because it is a national stage entry (pursuant to the provisions of 35 U.S.C. § 371) of PCT/EP2008/004543, having an international filing date of June 6, 2008. Thus, Appellants claim they are entitled to the benefit of their ’543 PCT international filing date of June 6, 2008, under the provisions of pre-AIA 35 U.S.C. § 119(a). Regarding the ’033 application (on appeal) filed under pre-AIA 35 U.S.C. § 120, our reviewing court provides applicable guidance: Under § 120, a patent is entitled to the priority date of an earlier filed application if (1) the written description of the earlier filed application discloses the invention claimed in the later filed application sufficient to satisfy the requirements of § 112; (2) the applications have at least one common inventor; (3) the later application is filed before the issuance or abandonment of the earlier filed application; and (4) the later application contains a reference to the earlier filed application. In addition, if the later filed application claims priority through the heredity of a chain of applications, each application in the chain must satisfy § 112. Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571 (Fed. Cir. 1997). In re NTP, Inc., 654 F.3d 1268, 1277 (Fed. Cir. 2011). Turning to Horn (US 2009/0132675 A1), as relied upon by the Examiner as evidence in support of Rejections A, B, and C, we note Horn’s claim for the benefit of priority under 35 U.S.C. § 119 is applicable to four commonly-owned provisional applications: CLAIM OF PRIORITY UNDER 35 U.S.C. § 119 Appeal 2018-006620 Application 12/996,033 5 This application claims the benefit of and priority to commonly owned U.S. Provisional Patent Application No. 60/988,646, filed Nov. 16, 2007, and assigned Attorney Docket No. 072326P1; U.S. Provisional Patent Application No. 61/059,654, filed Jun. 6, 2008, and assigned Attorney Docket No. 081769P1; U.S. Provisional Patent Application No. 61/074,114, filed Jun. 19, 2008, and assigned Attorney Docket No. 081869P1; U.S. Provisional Patent Application No. 61/074,935, filed Jun. 23, 2008, and assigned Attorney Docket No. 081893P1; the disclosure of each of which is hereby incorporated by reference herein. Horn ¶ 1 (emphasis added). Assuming arguendo that Appellants are entitled under pre-AIA 35 U.S.C. § 119 to the benefit of their June 6, 2008 ’543 PCT international filing date, we find only the earliest-filed Horn provisional application ’646 (filed on Nov. 16, 2007) is relevant to deciding this appeal, because the three remaining Horn provisional applications are filed on or after Appellants’ PCT international filing date of June 6, 2008. Thus, Appellants contend: under pre-AIA 35 U.S.C. § 102(e), only one of [Horn’s] provisional applications, number 60/988,646 (also referred to as “the provisional application” herein), filed on November 16, 2007, is filed before the invention (the earliest priority date of June 6, 2008) by the inventors herein. Therefore, only provisional [application] number 60/988,646, filed on November 16, 2007 can be used to provide the priority date of Horn under 35 U.S.C. § 102(e) for citation against the instant application. App. Br. 7 (emphasis added). For Horn ’675 to be entitled to the benefit of the ’646 provisional filing date of November 16, 2007, Horn ’646 must satisfy 35 U.S.C. § 119(e)(l) (2006), which provides that Appeal 2018-006620 Application 12/996,033 6 An application for patent filed under section 111(a) or section 363 of this title for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in a provisional application filed under section 111 (b) of this title, by an inventor or inventors named in the provisional application, shall have the same effect, as to such invention, as though filed on the date of the provisional application filed under section 111 (b) of this title . . . . 35 U.S.C. § 119(e)(l) (2006) (emphases added). In addition, the specification of the provisional must ‘contain a written description of the invention and the manner and process of making and using it, in such full, clear, concise, and exact terms,’ 35 U.S.C. § 112, ¶ 1, to enable an ordinarily skilled artisan to practice the invention claimed in the non-provisional application. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (quoting New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002)) (emphasis added). Also, Examiners are instructed that “the reference date under pre-AIA 35 U.S.C. 102(e) of a U.S. patent may be the filing date of a relied upon provisional application only if at least one of the claims in the patent is supported by the written description of the provisional application in compliance with pre-AIA 35 U.S.C. 112, first paragraph.” MPEP § 2136.03(III) (emphasis added).2 2 MPEP § 2136.03(III) (“The pre-AIA 35 U.S.C. 102(e) critical reference date of a U.S. patent or U.S. application publications and certain international application publications entitled to the benefit of the filing date of a provisional application under 35 U.S.C. 119(e) is the filing date of the provisional application with certain exceptions if the provisional application(s) properly supports the subject matter relied upon to make the rejection in compliance with 35 U.S.C 112(a) / pre-AIA 35 U.S.C. 112, first paragraph . . . . In addition, the reference date under pre-AIA 35 U.S.C. Appeal 2018-006620 Application 12/996,033 7 In applying the guidance of Dynamic Drinkware here, we do not presume that Horn’s ’646 provisional application, filed on November 16, 2007, satisfies the statutory requirements of providing written description support and enablement for the claims of Horn’s ’675 utility patent application publication, filed on November 12, 2008. Because there is no presumption of support, the burden falls upon the Examiner seeking to rely upon the Horn ’646 provisional filing date (November 16, 2007) to provide evidence that at least one of the claims of the non-provisional Horn ’675 patent application publication is fully supported and enabled by the specification (including the appendix) of Horn’s ’646 provisional application. See Dynamic Drinkware, 800 F.3d at 1378. Appellants correctly apply the guidance of Dynamic Drinkware and argue: “the specification of [the] provisional application must support the claims of the later-filed and cited utility application in order for the utility application to claim the benefit of the provisional application.” App. Br. 8. We have reviewed Horn’s ’646 provisional application, filed on November 16, 2007, including the appendix to the ’646 provisional. For example, we reproduce claim 1 of Horn ’675 below: 1. A method of communication, comprising: determining a first identifier for establishing communication 102(e) of a U.S. patent may be the filing date of a relied upon provisional application only if at least one of the claims in the patent is supported by the written description of the provisional application in compliance with pre-AIA 35 U.S.C. 112, first paragraph. See Dynamic Drinkware, LLC, v. National Graphics, Inc., 800 F.3d 1375, 116 USPQ2d 1045 (Fed. Cir. 2015).”) (Emphasis added). Appeal 2018-006620 Application 12/996,033 8 with an access point; determining a type of the first identifier; and determining, based on the type of the first identifier, a second identifier for establishing communication with the access point. Appellants refer to page 31 of the Appendix to Horn’s ’646 provisional application (filed on November 16, 2007), and contend: The word “type” is used in in this section, but there is no disclosure of determining a second ID based on a type of a first ID and therefore no disclosure of the subject matter in claim 1 of Horn of “determining, based on the type of the first identifier, a second identifier for establishing communication with the access point”. App. Br. 13 (emphasis added). Based upon our review, we find at best the Horn ’646 provisional application describes the first and second identifier and an access point (AP), but not “determining, based on the type of the first identifier, a second identifier for establishing communication with the access point,” as recited in claim 1 of Horn ’675 supra. (Emphasis added). The closest support we find is at paragraph 16 of the Horn ’646 provisional application: At processing block 320, an AP is selected and a determination is made whether the selected AP is restricted for association or, respectively, unrestricted for association using, in one embodiment, a first type of identification parameter (ID) to identify a restricted AP and/or, in the alternative, a second type of ID to identify an unrestricted AP. Horn ‘646 provisional application, ¶ 16. Horn’s independent claim 58 recites the steps of claim 1 as similar functions performed by various means in an apparatus. Horn’s independent Appeal 2018-006620 Application 12/996,033 9 claim 68 recites similar language in the context of a computer-readable medium, with the code executed by a computer. Horn’s remaining independent claims 12, 23, 34, 38, and 48 recite similar language. All other claims in the Horn ’675 patent application publication depend from one of independent claims 1, 12, 23, 34, 38, 48, 58, and 68. Therefore, Horn’s ’646 provisional application (filed on Nov. 16, 2007) does not support at least one of the Horn ’675 patent application publication claims. See MPEP § 2136.03(III). In the Answer, the Examiner does not address Appellants’ arguments based upon the requirement of Dynamic Drinkware (800 F.3d at 1378), to provide evidence that the claims of the non-provisional Horn ’675 patent application publication are fully supported and enabled by the specification (including the Appendix) of Horn’s ’646 provisional application. The Examiner merely avers: “In response, the Examiner did not cite any of the claims in Horn’s reference in the rejection of the instant claims. Thus the Appellant’s arguments are not deemed persuasive.” Ans. 15 (emphasis omitted). Further, regarding the issue of adequate written-description support purportedly found in Horn’s ’646 provisional (including the Specification and Appendix), the Examiner finds: [P]age[s] 16-27 of the Horn’s Provisional Application does provide adequate support for what is the later filed Application. In particular, the aforementioned pages contemplate the aspect of performing handoff from the macro cell to the femto cell on the basis of the signal quality. Therefore, given what is disclosed in the Provisional Application, one skilled in the art can derive the disclosure of [the] [non-provisional application] from the appendix of the provisional Application. To that end, Appeal 2018-006620 Application 12/996,033 10 the Examiner respectfully [finds] that there is adequate support for citing the specification of the later filed Application. Ans. 15–16 (emphasis added). The Examiner appears to be referring to pages 16–27 of the Appendix to the Horn ’646 provisional application. We reproduce page 16 below: Page 16 of the Appendix to the Horn ’646 provisional application is depicted above, describing cross frequency beacons and inter frequency handoffs. However, contrary to the Examiner’s finding (Ans. 15), written description support cannot be derived from obvious variants of the disclosure: Appeal 2018-006620 Application 12/996,033 11 The question is not whether a claimed invention is an obvious variant of that which is disclosed in the specification. Rather, a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought. See Martin v. Mayer, 823 F.2d 500, 504, 3 USPQ2d 1333, 1337 (Fed. Cir. 1987) (stating that it is “not a question of whether one skilled in the art might be able to construct the patentee’s device from the teachings of the disclosure . . . . Rather, it is a question whether the application necessarily discloses that particular device.”) (quoting Jepson v. Coleman, 50 C.C.P.A. 1051, 314 F.2d 533, 536, 136 USPQ 647, 649–50 (1963)). Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (emphasis added). Nor has the Examiner proffered any objective evidence to support any reason that Appellants might not be entitled to claim the benefit of their own ’543 PCT international filing date of June 6, 2008 (International Publication Number WO 2009/146725 Al). See NTP, 654 F.3d at 1277. We emphasize that we are a Board of review. Because the Examiner has not developed the record in this regard, we decline to do so here in the first instance. See id. “The review authorized by 35 U.S.C. § 134 is not a process whereby the examiner . . . invite[s] the [B]oard to examine the application and resolve patentability in the first instance.” Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999). The Appellants submit detailed arguments that we find are supported by a preponderance of the evidence. App. Br. 4–29. Based upon our review of the record, we find the Examiner has not provided sufficient evidence on appeal to show that Horn’s ’675 patent application publication is available as prior art. “A reference patent is only entitled to claim the benefit of the Appeal 2018-006620 Application 12/996,033 12 filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with [section] 112, [paragraph] 1.” Dynamic Drinkware, 800 F.3d at 1381 (emphasis added) (citation omitted). MPEP § 2136.03(III) clarifies that support is required in the provisional application for at least one claim in the reference patent (here, Horn’s ’675 patent application publication). Therefore, on this record, the Board can only rely upon the non-provisional filing date of Horn ’675, which is November 12, 2008, this date occurring after Appellants’ ’543 PCT international filing date of June 6, 2008. Therefore, for essentially the same reasons argued by Appellants in the Briefs, as further discussed above, we find the Examiner has not shown the Horn ’675 patent application publication is available as prior art by being entitled to the benefit of the November 16, 2007 filing date of Horn’s ’646 provisional application. The Examiner must provide prior art references as evidence in the first instance to establish a prima facie case of obviousness. Without the Horn ’675 patent application publication being properly established as available prior art, all the Examiner’s Rejections A, B, and C under 35 U.S.C. § 103(a) fail due to insufficient evidence. Therefore, on this record, we are persuaded the Examiner erred by improperly relying upon Horn ’675 as prior art. Accordingly, we are constrained on this record to reverse the Examiner’s Rejections A, B, and C under 35 U.S.C. § 103(a), of all claims on appeal, because each rejection improperly relies upon Horn (US 2009/0132675 A1) as prior art. Appeal 2018-006620 Application 12/996,033 13 CONCLUSION Appellants have shown the Examiner erred in rejecting claims 1, 3–7, 16–18, 22, 23, 26–32, and 34 under pre-AIA 35 U.S.C. § 103(a). DECISION We reverse the Examiner’s decision rejecting claims 1, 3–7, 16–18, 22, 23, 26–32, and 34 under pre-AIA 35 U.S.C. § 103(a). REVERSED Copy with citationCopy as parenthetical citation