NTT DOCOMO, INC.

Patent Trials and Appeals Board

Jan 20, 2022

2020006544 (P.T.A.B. Jan. 20, 2022)

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. 15/112,722 07/20/2016 Tooru Uchino 17401/451001 9722 22511 7590 01/20/2022 OSHA BERGMAN WATANABE & BURTON LLP TWO HOUSTON CENTER 909 FANNIN, SUITE 3500 HOUSTON, TX 77010 EXAMINER KRUEGER, KENT K ART UNIT PAPER NUMBER 2474 NOTIFICATION DATE DELIVERY MODE 01/20/2022 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@obwbip.com escobedo@obwbip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TOORU UCHINO, KAZUKI TAKEDA, HIDEAKI TAKAHASHI, and KAZUAKI TAKEDA ____________ Appeal 2020-006544 Application 15/112,722 Technology Center 2400 ____________ Before CATHERINE SHIANG, CARL L. SILVERMAN, and JOYCE CRAIG, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1 and 3-5, which are all the claims pending and rejected in the application. Appeal Br. 4. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies NTT DOCOMO, INC. as the real party in interest. Appeal Br. 4. Appeal 2020-006544 Application 15/112,722 2 STATEMENT OF THE CASE Introduction The invention relates to “a radio communication system using carrier aggregation.” Spec. 1:7-8. In particular, [u]ser equipment for transmitting an uplink control channel in multiple cells simultaneously in a radio communication system where transmission of the uplink control channel in a secondary cell is supported is disclosed. Abstr. Independent claim 1 is exemplary (with emphasis added to denote a disputed limitation): 1. A user equipment comprising: a transceiver that transmits and receives a radio channel to and from a plurality of base stations via multiple cells configured for carrier aggregation; a processor configured to: in response to occurrence of an event where an uplink control channel is to be simultaneously transmitted in the multiple cells, determine whether the uplink control channel can be simultaneously transmitted in the multiple cells, instruct the transceiver to simultaneously transmit the uplink control channel in the multiple cells if the uplink control channel can be simultaneously transmitted in the multiple cells, and control transmission of the uplink control channel in accordance with transmission priorities corresponding to a respective cell type of each of the multiple cells if the uplink control channel cannot be simultaneously transmitted in the multiple cells, wherein the processor is further configured to: determine which of a primary cell or a secondary cell the cell type of each cell is; and control transmission of the uplink control channel in the determined cell corresponding to the Appeal 2020-006544 Application 15/112,722 3 determination in accordance with a transmission priority order of the primary cell and the secondary cell, and wherein the plurality of base stations each independently perform measurements with the user equipment. Appeal Br. 16 (Claims App.). References and Rejection2 Claims Rejected 35 U.S.C. § References 1, 3-5 103 Seo (US 2011/0287804 A1, pub. Nov. 24, 2011), Pelletier (US 2017/0013565 A1, pub. Jan. 12, 2017), Yang (US 2013/0021980 A1, Jan. 24, 2013) ANALYSIS We have reviewed the Examiner’s rejection in light of Appellant’s contentions and the evidence of record. We concur with Appellant’s contentions that the Examiner erred in determining the cited portions of Seo, Pelletier, and Yang collectively teach “wherein the plurality of base stations each independently perform measurements with the user equipment,” as recited in independent claim 1 (emphasis added). See App. Br. 9-15; Reply Br. 2-5. In the Final Action, the Examiner finds: Seo and Pelletier do not specifically disclose wherein the plurality of base stations each independently perform measurements with the user equipment. 2 Throughout this opinion, we refer to the (1) Final Office Action dated Aug. 13, 2019 (“Final Act.”); (2) Appeal Brief dated March 24, 2020 (“Appeal Br.”); (3) Examiner’s Answer dated July 20, 2020 (“Ans.”); and (4) Reply Brief dated Sept. 18, 2020 (“Reply Br.”). Appeal 2020-006544 Application 15/112,722 4 Yang teaches transmitting channel state information relative to one or more serving cells in a carrier-coupled environment (Abstract). He further teaches wherein the plurality of base stations each independently perform measurements with the user equipment (Para. 0256; the processors 2020 and 2030 may measure and report the state of a DL channel for each serving cell activated in a carrier aggregation environment). Final Act. 7 (emphases omitted). Appellant argues, and we agree, Yang’s disclosure of “the processors 2020 and 2030 may measure and report the state of a DL channel for each serving cell activated in a carrier aggregation environment” (Final Act. 7 (citing Yang ¶ 256) (emphasis omitted)) does not teach “wherein the plurality of base stations each independently perform measurements with the user equipment.” See Appeal Br. 11. Contrary to the claim requirement of “the plurality of base stations,” Yang shows processors 2020 and 2030 belong to a user equipment (“UE”) and base station, respectively. See Yang Fig. 20. In response to Appellant’s arguments, the Examiner cites Seo’s paragraph 64 and Pelletier’s paragraphs 3, 4, 94, and asserts such paragraphs “suggest to a person having ordinary skill in the art that a UE independently performs measurements with multiple base stations and/or serving cells.” Ans. 4. Regardless of whether the cited Pelletier and Seo paragraphs indeed “suggest to a person having ordinary skill in the art that a UE independently performs measurements with multiple base stations and/or serving cells” (Ans. 4), that statement is not commensurate with the scope of the disputed limitation, which recites “wherein the plurality of base stations each independently perform measurements with the user equipment.” Appeal 2020-006544 Application 15/112,722 5 The Examiner also cites additional paragraphs from Yang (Ans. 5- 12), but does not adequately explain why the cited reference portions collectively teach the disputed limitation. In short, the Examiner has not sufficiently explained why the cited portions of Seo, Pelletier, and Yang collectively teach “wherein the plurality of base stations each independently perform measurements with the user equipment,” as required by claim 1 (emphasis added). Because the Examiner fails to provide sufficient evidence or explanation to support the rejection, we are constrained by the record to reverse the Examiner’s rejection of independent claim 1, and independent claim 5 for similar reasons. We also reverse the Examiner’s rejection of corresponding dependent claims 3 and 4. We note Appellant raises additional arguments. Because the identified issue is dispositive of the appeal, we do not address the additional arguments. See, e.g., Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (an administrative agency’s “judicious use of a single dispositive issue approach . . . can . . . save . . . unnecessary cost and effort”). CONCLUSION We reverse the Examiner’s decision rejecting claims 1 and 3-5 under 35 U.S.C. § 103. Appeal 2020-006544 Application 15/112,722 6 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3-5 103 Seo, Pelletier, Yang 1, 3-5 REVERSED