Motorola Mobility LLC

Patent Trials and Appeals BoardJun 1, 2021

2020000979 (P.T.A.B. Jun. 1, 2021)

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. 15/675,330 08/11/2017 Ravikiran Nory SMM02135-US-NP2 5387 73635 7590 06/01/2021 Loppnow & Chapa [Motorola] P.O. Box 7588 Libertyville, IL 60048 EXAMINER NGUYEN, DINH ART UNIT PAPER NUMBER 2647 NOTIFICATION DATE DELIVERY MODE 06/01/2021 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): docketing.mobility@motorola.com docketing@loppchap.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RAVIKIRAN NORY, VIJAY NANGIA, ROBERT T. LOVE, and RAVI KUCHIBHOTLA Appeal 2020-000979 Application 15/675,330 Technology Center 2600 Before JOSEPH L. DIXON, ELENI MANTIS MERCADER, and LARRY J. HUME, Administrative Patent Judges. MANTIS MERCADER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 2, and 4–19. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Motorola Mobility LLC, a Delaware corporation, subsidiary of Lenovo Group Ltd., a Chinese corporation. Appeal Br. 2. Appeal 2020-000979 Application 15/675,330 2 CLAIMED SUBJECT MATTER The claims are directed to a method and apparatus including one or more parameters for defining a more flexible radio communication. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method in a device comprising: receiving a resource allocation in a control information message, the resource allocation comprising one or more resource blocks, wherein each of the one or more resource blocks comprises a plurality of subcarriers; receiving an indication in the control information message identifying whether one or more guard subcarriers are present on a respective one or more of the edges of at least one resource block of the resource allocation, wherein the indication in the control information message indicating whether one or more guard subcarriers are present, includes an identification that guard subcarriers are present at one of a top edge of the at least one resource block, a bottom edge of the at least one resource block, or both a top edge of a first resource block of the at least one resource block and a bottom edge of a second resource block of the at least one resource block; and configuring a transceiver of the device in accordance with the received resource allocation and the received indication in the control information message identifying whether one or more guard subcarriers are present, where the transceiver as configured is used during a subsequent receipt of information via the corresponding resource allocation. Appeal 2020-000979 Application 15/675,330 3 REFERENCES The prior art relied upon by the Examiner as evidence is: Name Reference Date Na US 2007/0297540 A1 Dec. 27, 2007 Gorokhov US 2008/0056183 A1 Mar. 6, 2008 Cho US 2009/0232071 A1 Sept. 17, 2009 Palanki US 2009/0247172 A1 Oct. 1, 2009 Chun US 2010/0093384 A1 Apr. 15, 2010 Kim US 2012/0076071 A1 Mar. 29, 2012 Geile US 8,199,632 B2 June 12, 2012 Zhang US 2016/0352551 A1 Dec. 1, 2016 Yi US 2017/0208475 A1 July 20, 2017 REJECTIONS2 Claims 1 and 19 are rejected under 35 U.S.C. § 112(a), as failing to comply with the written description requirement. Final Act. 5.3 Claims 1, 2, 4, 5, 7, and 19 are rejected under 35 U.S.C. § 103 as being unpatentable over Gorokhov in view of Palanki. Final Act. 7. Claim 6 is rejected under 35 U.S.C. § 103 as being unpatentable over Gorokhov and Palanki in view of Chun. Final Act. 15. Claim 8 is rejected under 35 U.S.C. § 103 as being unpatentable over Gorokhov and Palanki in view of Cho. Final Act. 16. Claim 9 is rejected under 35 U.S.C. § 103 as being unpatentable over Gorokhov and Palanki in view of Kim. Final Act. 16. 2 The rejection of claims 1 and 19 under 35 U.S.C. § 112(b) have been withdrawn by the Examiner. Ans. 3. 3 The Examiner made this rejection in the alternative under either pre-AIA 35 U.S.C. § 112, first paragraph, or AIA 35 U.S.C. § 112(a). However, based upon the earliest effective filing date of the provisional application (Aug. 12, 2016), and the Examiner’s additional statement in the Final Action, this application is subject to provisions of the AIA. See Final Act. 2. Appeal 2020-000979 Application 15/675,330 4 Claim 10 is rejected under 35 U.S.C. § 103 as being unpatentable over Gorokhov and Palanki in view of Geile. Final Act. 17. Claims 11–14 and 17 are rejected under 35 U.S.C. § 103 as being unpatentable over Gorokhov and Palanki in view of Zhang. Final Act. 18. Claims 15 and 16 are rejected under 35 U.S.C. § 103 as being unpatentable over Gorokhov, Palanki, and Zhang in view of Yi. Final Act. 22. Claim 18 is rejected under 35 U.S.C. § 103 as being unpatentable over Gorokhov, Palanki, and Zhang in view of Na. Final Act. 24. Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis 1, 19 112(a) Written Description 1, 2, 4, 5, 7, 19 103 Gorokhov, Palanki 6 103 Gorokhov, Palanki, Chun 8 103 Gorokhov, Palanki, Cho 9 103 Gorokhov, Palanki, Kim 10 103 Gorokhov, Palanki, Geile 11–14, 17 103 Gorokhov, Palanki, Zhang, 15, 16 103 Gorokhov, Palanki, Zhang, Yi 18 103 Gorokhov, Palanki, Zhang, Na OPINION Except where indicated, we adopt the Examiner’s findings in the Answer and Final Office Action and we add the following primarily for emphasis. We note that, if Appellant failed to present arguments on a particular rejection, we decline to review unilaterally those uncontested Appeal 2020-000979 Application 15/675,330 5 aspects of the rejection. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential); Hyatt v. Dudas, 551 F.3d 1307, 1313–14 (Fed. Cir. 2008) (the Board may treat arguments Appellant failed to make for a given ground of rejection as waived). Claims 1 and 19 rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. The Examiner rejects claims 1 and 19 as lacking written description in the Specification as originally filed. Final Act. 5. In particular, the Examiner finds that the Specification does not provide a written description support of the limitation “where the transceiver as configured is used during a subsequent receipt of information via the corresponding resource allocation.” Id. at 5–6. Appellant in support of adequate written description cites to the Specification, stating in pertinent part, “a previously established communication connection is reconfigured 508, where the reconfiguration allows for the format to be used as part of the communication connection to be modified.” Appeal Br. 5 (citing Spec. 12, ll. 26–30). Appellant also argues that the Specification discloses that “[i]t may be possible for the location of guard subcarriers to be dynamically signaled, while the number of guard subcarriers being used at each location may be configured at a higher-layer.” Id. (Spec. 10, l. 30–11, l. 1). The Examiner finds that this portion of the Specification does not support “where the transceiver as configured is used during a subsequent receipt of information via the corresponding resource allocation.” Ans. 4. The Examiner also finds that the Specification does not describe in sufficient detail how the function is performed or the result is achieved that one skilled Appeal 2020-000979 Application 15/675,330 6 in the art can reasonably conclude that it is the same as or leading to “where the transceiver as configured is used during a subsequent receipt of information via the corresponding resource allocation” which is a result of configuring a transceiver of the device in accordance with the received resource allocation and the received indication in the control information message identifying whether one or more guard subcarriers are present as claimed. Id. To satisfy the written description requirement, the Specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991). Specifically, the Specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. Id. at 1562–63; Accord Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “[T]he level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Ariad, 598 F.3d at 1351. In particular, the written description requirement does not demand any particular form of disclosure “or that the specification recite the claimed invention in haec verba.” Id. at 1352. The Specification discloses in Figure 6 that a device receives a resource allocation in a control information message wherein the resource allocation comprises one or more resource blocks in box 602 and receiving an indication in the control information message whether one or more guard subcarriers are present in box 606. See Fig. 6. The Specification also Appeal 2020-000979 Application 15/675,330 7 discloses in box 614 “receiving the resource allocation for receiving data on a carrier.” Id. That is, box 614 of the Specification discloses using the control information received by the device wherein this control information comprises an identification of the resource allocation including resource blocks and an identification of guard subcarriers. See Fig. 6. In other words, the device receives the control information (i.e., boxes 602, 606) and uses this control information to configure its transceiver to be used during the receipt of the assigned resource allocation (i.e., box 614). Note that box 614 occurs after the boxes 602 and 604, and thus, the function of 614 is “subsequent” to the functions of 602 and 604. The written description requirement does not demand any particular form of disclosure “or that the specification recite the claimed invention in haec verba.” Ariad at 1352. Thus, we agree with Appellant that the Specification provides written support for the claim limitations of “where the transceiver as configured is used during a subsequent receipt of information via the corresponding resource allocation.” Figure 6 shows that the inventor was in possession of the claimed invention as of the filing date. Accordingly, based on the record before us, we reverse the Examiner’s rejection of claims 1 and 19 under 35 U.S.C. § 112(a) as lacking written description support. Claims 1, 2, and 4–19 rejected under 35 U.S.C. § 103 Appellant argues the combined teachings fail to make known or obvious “an indication in the control information message identifying whether one or more guard subcarriers are present on a respective one or Appeal 2020-000979 Application 15/675,330 8 more of the edges of at least one resource block of the resource allocation.” Appeal Br. 9. In particular, Appellant argues that in Gorokhov, any information regarding guard subcarriers is received separate from and after the resource allocation has been made. Appeal Br. 10. Appellant argues that according to paragraph 90 in Gorokhov, the “information” is received in the portion of the bandwidth that has been assigned to the wireless terminal, where the resource assignment message occurs at step 1104, separate from the discussion of guard subcarrier information. Id. Appellant explains that there is no indication that the guard subcarrier information is included as part of the resource assignment message of Gorokhov. Id. We do not agree with Appellant’s argument. During prosecution, claims must be given their broadest reasonable interpretation while reading claim language in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In construing the meaning of claims terms, caution must be taken not to import limitations from the specification as “[i]t is the claims that measure the invention.” See SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc) (citations omitted). To address Appellant’s argument, we need to construe the meaning of the term “a control information message” recited in claim 1. See claim 1. The Examiner finds that Gorokhov teaches the limitations of independent claims 1 and 19 and specifically the limitation “an indication in the control information message identifying whether one or more guard subcarriers are present.” Final Act. 7–8 (citing Gorokhov Fig. 8, corresponding to Appeal 2020-000979 Application 15/675,330 9 Gorokhov paras. 89–91). Gorokhov teaches a wireless terminal receiving “a resource assignment message” in step 1104 and receiving “guard sub-carrier information indicating at least one of the number and location of guard sub- carriers” in step 1108. See Gorokhov Fig. 8. That is, while Appellant is arguing that the claims require only one control information message which contains the resources allocation and the indication of number and/or location of sub-carriers, the claims, in fact, do not recite the terms “only one.” Under the broadest reasonable interpretation, the claimed term “a control information message” can be broadly but reasonably interpreted as encompassing multiple steps (i.e., subparts of a message that combined make “a” control information message). In other words, the limitation “a control information message” is broadly but reasonably read on steps 1104, 1106, and 1108 of Figure 8 of Gorokhov. Because the claim language does not require that only one control information message is received by the wireless terminal, “a control information message” can be broadly but reasonably read on the step of receiving a control information message having the subparts of “receive a resource assignment message” of step 1104 and “receive guard sub-carrier information indicating at least one of the number and location of guard sub-subcarriers in at least one of discontinuous portion of bandwidth” of step 1108. Our reviewing Court, similar to the current construction of the term “a” not meaning “only” or “single,” determined that the meaning of “integral” is “sufficiently broad to embrace constructions united by such means as fastening and welding.” In re Hotte, 475 F.2d 644, 647 (CCPA 1973). The term “integral” is not limited to a fabrication of the parts from a single piece of metal, but is inclusive of other means for maintaining the Appeal 2020-000979 Application 15/675,330 10 parts fixed together as a single unit. In re Larson, 340 F.2d 965, 967 (CCPA 1965). In particular, appellants argue that the phrase ‘integrally formed as a portion of’ requires the compliance area to be ‘fused together’ with the housing ‘to form a single part–such as by casting them as a molded article, machining a single piece of material to form them, welding them together, or otherwise joining them in a firm and substantially permanent manner.’ . . . . We conclude that the PTO's interpretation is reasonable in light of all the evidence before the Board. As the cases cited above demonstrate, our predecessor court had on several prior occasions interpreted the term ‘integral’ to cover more that a unitary construction. . . . This court has also endorsed that interpretation. In re Morris, 127 F.3d 1048, 1055–56 (Fed. Cir. 1997) (emphases added). Thus, “a control information message” is broadly but reasonably construed as “a resource assignment message” (i.e., Fig. 8, step 1104) and “guard sub-carrier information indicating at least one of the number and location of guard sub-carriers” (i.e., Fig. 8, step 1108) joined by the determination of the node identifier received in the resource assignment message (i.e., Fig. 8, step 1106). Appellant also argues that the combined teachings fail to make obvious an identification that guard subcarriers are present at one of a top edge of the at least one resource block, a bottom edge of the at least one resource block, or both a top edge of a first resource block of the at least one resource block and a bottom edge of a second resource block of the at least one resource block. Appeal Br. 9 (emphasis omitted). Appellant additionally argues that Palanki teaches guard subcarriers that may be used to protect one subset of Appeal 2020-000979 Application 15/675,330 11 subcarriers located at one edge of the system bandwidth, but does not teach an indication in the control information message indicating whether one or more guard subcarriers are present at one of three articulated possible arrangements of claim 1. See Appeal Br. 11. We do not agree with Appellant’s argument. “[O]ne cannot show non-obviousness by attacking references individually where . . . the rejections are based on combinations of references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of [those] references would have suggested to those of ordinary skill in the art.” Id. at 425. The Examiner relies on Gorokhov for teaching the control information message that includes the assignment information and guard sub-carrier information indicating at least one of the number and location of guard sub- carriers in at least one of the discontinuous portion of bandwidth which have been assigned to the wireless terminal. See Final Act. 7 (citing Gorokhov paras. 90, 82). The Examiner further relies on Gorokhov for the teaching of configuring a transceiver of the device in accordance with the received resource allocation and the received indication in the control information message identifying whether one or more guard subcarriers are present. Final Act. 8 (citing paras. 90, 91, and Fig. 8). The Examiner relies on Palanki for teaching the limitation of “includes an identification that guard subcarriers are present at one of a top edge of the at least one resource block, a bottom edge of the at least one resource block . . . ” recited in claim 1. See Final Act. 8–9. The Examiner finds that Palanki teaches that guard Appeal 2020-000979 Application 15/675,330 12 subcarriers are present at one of a top edge of the at least one resource block, a bottom edge of the at least one resource block, or both top edge of a first resource block of the at least one resource block and bottom edge of a second resource block of the at least one resource block. Final Act. 14 (citing Palanki para. 49, Fig. 3C). Palanki teaches that one guard subcarrier may be used to protect one subset of subcarriers located at one edge of the system bandwidth, and another guard subcarrier may be used to protect another subset of subcarriers located at the other edge of the system bandwidth, as shown in Figure 3C. Palanki, para. 49. Thus, we agree with the Examiner that the combined teachings of Gorokhov and Palanki teach or suggest the disputed limitations. Accordingly, Appellant has not shown error in the Examiner’s factual findings or conclusion of obviousness, and we affirm the Examiner’s rejection of claims 1 and 19, and based upon the same reasons the rejections of claims 2 and 4–18 not argued separately. CONCLUSION The Examiner’s decision rejecting claims 1 and 19 based upon written description is REVERSED, and the Examiner’s decision rejecting claims 1, 2, and 4–19 based upon obviousness is AFFIRMED. Appeal 2020-000979 Application 15/675,330 13 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 19 112(a) Written Description 1, 19 1, 2, 4, 5, 7, 19 103 Gorokhov, Palanki 1, 2, 4, 5, 7, 19 6 103 Gorokhov, Palanki, Chun 6 8 103 Gorokhov, Palanki, Cho 8 9 103 Gorokhov, Palanki, Kim 9 10 103 Gorokhov, Palanki, Geile 10 11–14, 17 103 Gorokhov, Palanki, Zhang, 11–14, 17 15, 16 103 Gorokhov, Palanki, Zhang, Yi 15, 16 18 103 Gorokhov, Palanki, Zhang, Na 18 Overall Outcome 1, 2, 4–19 RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED