Liu, Jin et al.Download PDFPatent Trials and Appeals BoardAug 27, 201913817221 - (D) (P.T.A.B. Aug. 27, 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. 13/817,221 02/15/2013 Jin Liu LUTZ 201612US01 1065 48116 7590 08/27/2019 FAY SHARPE/NOKIA 1228 Euclid Avenue, 5th Floor The Halle Building Cleveland, OH 44115-1843 EXAMINER CHOU, ALBERT T ART UNIT PAPER NUMBER 2471 NOTIFICATION DATE DELIVERY MODE 08/27/2019 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): Nokia.IPR@nokia.com docketing@faysharpe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JIN LIU and XUDONG ZHU ____________ Appeal 2019–000474 Application 13/817,221 Technology Center 2400 ____________ Before CARL W. WHITEHEAD JR., JAMES B. ARPIN, and ROBERT J. WEINSCHENK, Administrative Patent Judges. WEINSCHENK, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from a final rejection of claims 34–39, 46–54, and 59. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. STATEMENT OF THE CASE Introduction We refer herein to the Examiner’s Final Office Action mailed February 7, 2018 (“Final Act.”), Appellants’ Appeal Brief filed July 12, 1 According to the Appellants, the real party-in-interest is Alcatel Lucent. App. Br. 1. Appeal 2019-000474 Application 13/817,221 2 2018 (“App. Br.”), the Examiner’s Answer mailed August 27, 2018 (“Ans.”), and Appellants’ Reply Brief filed October 29, 2018 (“Reply Br.”). Appellants’ invention relates to “triggering and reporting methods and apparatuses of aperiodic channel state-related information for a carrier aggregation system.” Spec. 1:8–10. Claim 34, which is illustrative, recites: 34. A triggering method of aperiodic channel state information (CSI) for a carrier aggregation system, comprising: via a processor, pre-assigning a mapping relationship between different values of a CSI request field in an uplink grant and CSI requests for different combinations of downlink component carriers (DL CCs), wherein a number of bits of the CSI request field is limited, being greater than 1 and less than a number of activated or configured DL CCs in the carrier aggregation system, wherein the number of activated or configured DL CCs corresponds to a maximum allowed number of DL CCs in the carrier aggregation system, and wherein the limited bits in the CSI request field have different combination values; via the processor, determining the DL CC for which aperiodic CSI reporting is to be triggered; and via the processor, populating a value of the CSI request field in the uplink grant according to the pre-assigned mapping relationship and the determined DL CC, wherein mapping relationships between different combination values of the CSI request field and different DL CC combinations are preassigned by higher layer signaling, wherein each combination value indicates one combination of DL CCs. Appeal 2019-000474 Application 13/817,221 3 Rejections on Appeal Claims 34–39, 46–54, and 59 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Ekpenyong (US 2011/0305161 A1; Dec. 15, 2011). Final Act. 2–8. Issue on Appeal The dispositive issue presented by Appellants is: Does Ekpenyong teach “wherein a number of bits of the CSI request field is limited, being greater than 1 and less than a number of activated or configured DL CCs in the carrier aggregation system,” as recited in independent claims 34, 36, 38, and 39? ANALYSIS The Examiner cites to paragraphs 25, 49, 53, 70, 71, and 77, and Figure 5 of Ekpenyong as teaching the limitation of the independent claims that recites “wherein a number of bits of the CSI request field is limited, being greater than 1 and less than a number of activated or configured DL CCs in the carrier aggregation system.” Final Act. 3, 6; Ans. 4, 5. Appellants argue that the cited portions of Ekpenyong “simply teach that ‘during CC activation/deactivation the size of the bit map can be set to the number of configured DL CCs.’” App. Br. 8. According to Appellants, “there is no specific mention in the cited paragraphs of Ekpenyong of the CSI request field being greater than 1 and less than a number of activated or configured DL CCs, as claimed.” Id. (emphasis omitted). We find Appellants’ argument persuasive. The cited portions of Ekpenyong teach that a CSI request field “is extended to a bit map” and “[t]o avoid ambiguity, during CC activation/deactivation the size of the bit Appeal 2019-000474 Application 13/817,221 4 map can be set to the number of configured DL CCs.” Ekpenyong ¶¶ 70, 71. For example, if five DL CCs are configured, the CSI request field has five bits. Id. ¶ 77, Fig. 5. Similarly, if two DL CCs are configured, the CSI request field has two bits. Id. ¶ 77. In other words, the cited portions of Ekpenyong teach that the number of bits of the CSI request field is equal to the number of configured DL CCs, not less than the number of configured DL CCs, as required by the independent claims. Id. ¶¶ 70, 71, 77, Fig. 5. Thus, the Examiner has not shown sufficiently that the cited portions of Ekpenyong teach the disputed limitation of the independent claims. We note that the Examiner cites to paragraphs 78–88 of Ekpenyong for other limitations of the independent claims. Final Act. 3, 7. Paragraphs 78–88 of Ekpenyong teach that the number of bits of the CSI request field can be less than the number of configured DL CCs. Ekpenyong ¶ 78 (“The overhead of the bitmap may be reduced . . . For example, a 2-bit CSI triggering field in the UL grant can be used to signal up to three groupings.”). However, Appellants point out that the Examiner has not shown that paragraphs 78–88 of Ekpenyong are prior art. App. Br. 8–10. Specifically, Appellants explain that the present application’s earliest effective filing date is August 17, 2010, whereas Ekpenyong has a later filing date of June 15, 2011. Id. at 8. Appellants acknowledge that Ekpenyong claims priority to several provisional applications that predate the present application, but Appellants contend that the Examiner has not shown that any of those provisional applications provide written description support for Ekpenyong’s paragraphs 78–88. Id. at 8–9. We find Appellants’ argument persuasive. “[F]or a non-provisional application to claim priority to a provisional application for prior art Appeal 2019-000474 Application 13/817,221 5 purposes, ‘the specification of the provisional [application] must contain a written description of the invention . . . in such full, clear, concise, and exact terms, to enable an ordinarily skilled artisan to practice the invention claimed in the non-provisional application.’” Amgen v. Sanofi, 872 F.3d 1367, 1380 (Fed. Cir. 2017). The Examiner does not identify written description support for Ekpenyong’s paragraphs 78–88 in any of Ekpenyong’s provisional applications that predate the present application. Final Act. 3, 7, 11, 12; Ans. 7, 8. Instead, the Examiner states that “it would have been obvious to one skilled in the art to recognize that the example related to paragraphs [0078] – [0088] of Ekpenyong is no more than an extension or variation of the bitmap configuration of Fig. 5 as described in paragraphs [0070] – [0077] of Ekpenyong.” Ans. 7. However, “a description that merely renders the invention obvious does not satisfy the [written description] requirement.” Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010). Thus, the Examiner has not shown sufficiently that paragraphs 78–88 of Ekpenyong are prior art to the present application. For the reasons discussed above, we do not sustain the Examiner’s rejection of independent claims 34, 36, 38, and 39. Because claims 35, 37, 46–54, and 59 depend from claim 34, 36, 38, or 39, we also do not sustain the Examiner’s rejection of claims 35, 37, 46–54, and 59. DECISION The decision of the Examiner rejecting claims 34–39, 46–54, and 59 is reversed. REVERSED Copy with citationCopy as parenthetical citation