Hai Jiang et al.

Patent Trials and Appeals Board

Jul 25, 2019

12996033 - (D) (P.T.A.B. Jul. 25, 2019)

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.
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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,
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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).

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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

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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
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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.
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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).
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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
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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,
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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:
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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
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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.
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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