Liu, Jin et al.

Patent Trials and Appeals Board

Aug 27, 2019

13817221 - (D) (P.T.A.B. Aug. 27, 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.
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.
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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.
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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
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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
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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