QUALCOMM Incorporated

Patent Trials and Appeals Board

Jan 31, 2022

2020005525 (P.T.A.B. Jan. 31, 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. 15/268,279 09/16/2016 Keiichi KUBOTA QUAL/162119US 5196 15055 7590 01/31/2022 Patterson + Sheridan, L.L.P. Qualcomm 24 Greenway Plaza, Suite 1600 Houston, TX 77046 EXAMINER PATEL, HARDIKKUMAR D ART UNIT PAPER NUMBER 2473 NOTIFICATION DATE DELIVERY MODE 01/31/2022 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): PAIR_eOfficeAction@pattersonsheridan.com ocpat_uspto@qualcomm.com qualcomm@pattersonsheridan.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte KEIICHI KUBOTA, TINGFANG JI, TAO LUO, GAVIN BERNARD HORN, JOHN EDWARD SMEE, RAVI AGARWAL, JOSEPH BINAMIRA SORIAGA, and SAURABHA RANGRAO TAVILDAR ________________ Appeal 2020-005525 Application 15/268,279 Technology Center 2400 ________________ Before JOSEPH L. DIXON, JASON J. CHUNG, and JOYCE CRAIG, Administrative Patent Judges. CHUNG, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection of claims 1-8, 10-16, 18-23, 25-28, and 30-34.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. INVENTION The invention relates to beam selection in uplink-based and downlink- based mobility scenarios. Spec. ¶ 2. Claim 1 is illustrative of the invention 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. According to Appellant, QUALCOMM Incorporated is the real party in interest. Appeal Br. 4. 2 Claims 9, 17, 24, and 29 are cancelled. Appeal Br. 27-29. Appeal 2020-005525 Application 15/268,279 2 and is reproduced below: 1. A method for wireless communication by a user equipment (UE), comprising: transmitting an uplink reference signal, wherein the uplink reference signal indicates a preferred downlink beam; and receiving a handover command based, at least in part, on the uplink reference signal. Appeal Br. 26 (Claims Appendix). REJECTIONS3,4 The Examiner rejects claims 1, 2, 10, 11, 18, 19, 25, and 30 under 35 U.S.C. § 102(a)(2) as being anticipated by Baek (US 2016/0150435 A1; filed Nov. 25, 2015). Final Act. 3-7. The Examiner rejects claims 33 and 34 under 35 U.S.C. § 102(a)(2) as being anticipated by Lee (US 2017/0019930 A1; provisional application No. 61/951,477, filed on Mar. 11, 2014). Final Act. 8. The Examiner rejects claims 3, 4, 12, 13, 20, 21, 26, 27, and 31 under 35 U.S.C. § 103 as being unpatentable over the combination of Baek and Guey (US 2016/0087765 A1; filed May 29, 2015). Final Act. 8-12. The Examiner rejects claims 5, 22, and 32 under 35 U.S.C. § 103 as being unpatentable over the combination of Baek, Guey, and Kakishima 3 The rejection of claims 33 and 34 under 35 U.S.C. § 112(a) has been withdrawn. Ans. 22. 4 In the event of further prosecution, we leave it to the Examiner to reconsider a rejection under 35 U.S.C. § 101. See Manual of Patent Examining Procedure (MPEP) § 2106. Although the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See MPEP §1213.02. Appeal 2020-005525 Application 15/268,279 3 ’348 (US 9,743,348 B2; PCT publication date Sept. 24, 2015). Final Act. 12-14. The Examiner rejects claims 6, 8, 14, 16, and 28 under 35 U.S.C. § 103 as being unpatentable over the combination of Baek and Kakishima ’480 (US 2017/0149480 A1; PCT filed June 29, 2015). Final Act. 15-18. The Examiner rejects claims 7 and 15 under 35 U.S.C. § 103 as being unpatentable over the combination of Baek, Kakishima ’480, and Wennstrom (US 8,634,844 B2; issued Jan. 21, 2014). Final Act. 18-20. The Examiner rejects claim 23 under 35 U.S.C. § 103 as being unpatentable over the combination of Baek, Guey, Kakishima ’348, and Wennstrom. Final Act. 20-21. ANALYSIS I. Claims 1, 10, 18, 19, 25, and 30 Rejected Under 35 U.S.C. § 102(a)(2) The Examiner finds Baek discloses that a mobile station selects and feeds back a best transmission beam of a base station based on a reference signal, which the Examiner maps to the limitation “transmitting an uplink reference signal, wherein the uplink reference signal indicates a preferred downlink beam” recited in claim 1. Ans. 23 (citing Baek ¶ 62); Final Act. 4 (citing Baek ¶ 62). Moreover, the Examiner concludes there is no specific definition for “uplink reference signal” in the Specification. Ans. 23. The Examiner finds Baek discloses the base station evaluates feedback beam specific measurement values from the mobile station and determines whether to perform handover between base stations, which the Examiner maps to the limitation “receiving a handover command based, at least in part, on the uplink reference signal” recited in claim 1. Ans. 23 (citing Baek ¶ 62); Final Act. 4-5 (citing Baek ¶¶ 62, 73, 129). The Examiner determines Appeal 2020-005525 Application 15/268,279 4 that paragraphs 42, 72, 129, 158 of Baek are referring to the same embodiment because these paragraphs all pertain to Figure 21 of Baek. Ans. 24 (citing Baek ¶¶ 42, 72, 129, 158, Fig. 21). Appellant argues that Baek merely discloses transmission beam specific reference signals are downlink signals from a base station to a user equipment that the user equipment measures, but fails to disclose the limitation “transmitting an uplink reference signal, wherein the uplink reference signal indicates a preferred downlink beam” recited in claim 1. Appeal Br. 14-15 (citing Spec. ¶¶ 44-45). Appellant argues because Baek fails to disclose an “uplink reference signal,” Baek also fails to disclose the limitation “receiving a handover command based, at least in part, on the uplink reference signal” recited in claim 1. Appeal Br. 16-17. Appellant argues the Examiner improperly combines from multiple embodiments of Baek. Appeal Br. 17 (citing Baek ¶¶ 62, 72, 129, 158). We disagree with Appellant. As an initial matter, we note that the Federal Circuit has held that the Board may adopt a claim construction of a disputed term that neither party proposes without running afoul of the Administrative Procedure Act, see 5 U.S.C. § 551 et seq. (1946) (“APA”).5 See, e.g., Praxair Distrib., Inc. v. Mallinckrodt Hosp. Prods. IP Ltd., 890 F.3d 1024, 1034 (Fed. Cir. 2018) (rejecting argument that Board violated patent owner’s “procedural rights by adopting a claim construction that neither party proposed”); WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1328 (Fed. Cir. 2018) (“The 5 The Administrative Procedure Act (APA), requires a federal court to hold unlawful and set aside agency action not in accordance with law or without observance of procedure required by law. See 5 U.S.C. § 706(2). Appeal 2020-005525 Application 15/268,279 5 Board is not bound to adopt either party’s preferred articulated construction of a disputed claim term.”). Parties are well aware that the Board may stray from disputed, proposed constructions. See WesternGeco, 889 F.3d at 1328 (“Having put it at issue, WesternGeco was well aware that the Board could alter its construction in the final written decision.”). Additionally, we note that the limitations “uplink reference” and “wherein the uplink reference signal indicates a preferred downlink beam” recite the informational content of data that represents non-functional descriptive material because the claim does not recite a function for these limitations. That is, the informational content of non-functional descriptive material is not entitled to weight in the patentability analysis. See Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) (informative) (Federal Circuit Appeal No. 2006-1003), aff’d, Rule 36 (June 12, 2006)); Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative), aff’d, 191 F. App’x 959 (Fed. Cir. 2006); see also Spec. ¶¶ 28, 30, 36-39, 44-45 (discussing “downlink” and “uplink reference” using open ended terms such as “example,” “may,” “can,” “e.g.,” etc.). As a result, we need not decide whether Baek discloses the limitations “uplink reference” and “wherein the uplink reference signal indicates a preferred downlink beam.” Nonetheless, Baek discloses that a mobile station selects and feeds back (i.e., transmitting) a best transmission beam (i.e., uplink reference signal indicates a preferred downlink beam) of a base station based on a reference signal, which discloses the limitation “transmitting an uplink reference signal, wherein the uplink reference signal indicates a preferred downlink beam” recited in claim 1. Ans. 23 (citing Baek ¶ 62); Final Act. 4 Appeal 2020-005525 Application 15/268,279 6 (citing Baek ¶ 62). Furthermore, we agree with the Examiner’s conclusion there is no specific definition for “uplink reference signal” in the Specification. Ans. 23. In particular, the paragraphs Appellant relies on describe “uplink reference signal” using non-limiting open ended language. Spec. ¶¶ 44, 45 (Using language such as “may,” “can,” “e.g.,” etc.). As noted above, Baek discloses the mobile station selects and feeds back a best transmission beam of a base station based on a reference signal. Baek further discloses the base station evaluates feedback beam specific measurement values (i.e., based, at least in part, on the uplink reference signal) from the mobile station and performing a handover (i.e., receiving a handover command) between base stations, which discloses the limitation “receiving a handover command based, at least in part, on the uplink reference signal” recited in claim 1. Ans. 23 (citing Baek ¶ 62); Final Act. 4-5 (citing Baek ¶¶ 62, 73, 129). We also agree with the Examiner’s determination that paragraphs 42, 72, 129, 158 of Baek are referring to the same embodiment because these paragraphs all pertain to Figure 21 of Baek. Ans. 24 (citing Baek ¶¶ 42, 72, 129, 158, Fig. 21). Appellant does not argue claims 10, 18, 19, 25, and 30 separately with particularity. Appeal Br. 10-24. Accordingly, we sustain the Examiner’s rejection of: (1) independent claims 1, 10, 19, and 25; and (2) dependent claims 18 and 30 under 35 U.S.C. § 102(a)(2). II. Claims 2 and 11 Rejected Under 35 U.S.C. § 102(a)(2) The Examiner finds Baek discloses the limitation “wherein the uplink reference signal includes a UE identification (UE ID)” recited in claim 2. Appeal 2020-005525 Application 15/268,279 7 Ans. 24 (citing Baek ¶ 62); Final Act. 5 (citing Baek ¶ 62). Appellant argues Baek merely discloses the base station transmits to the mobile station using the selected best beam, but this does not require the feedback including a UE ID because the UE could identify itself in a different message. Appeal Br. 17-18. We disagree with Appellant. As noted above, we conclude “uplink reference” is non-functional descriptive material. Furthermore, we note that the limitation “a UE identification (UE ID)” recites non-functional descriptive material because the claim does not recite a function for this limitation. The informational content of non-functional descriptive material is not entitled to weight in the patentability analysis. See Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) (informative) (Federal Circuit Appeal No. 2006-1003), aff’d, Rule 36 (June 12, 2006)); Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative), aff’d, 191 F. App’x 959 (Fed. Cir. 2006). As a result, we need not decide whether Baek discloses the limitation “a UE identification (UE ID).” III. Claims 33 and 34 Rejected Under 35 U.S.C. § 102(a)(2) The Examiner finds Lee discloses user equipment sending a random access procedure message to a mobile station comprising a RACH preamble and a RRC connection request, which the Examiner maps to the limitation “transmitting a first message to a base station (BS), during an initial access procedure with the BS, wherein the first message includes a random access channel (RACH) preamble and a radio resource control (RRC) connection request” recited in claim 33. Ans. 24-25; Final Act. 8 (citing Lee, Fig. 8). Moreover, the Examiner concludes Appellant’s claim 33 does not require the entirety of the claimed “first message” to be transmitted all at once. Ans. Appeal 2020-005525 Application 15/268,279 8 24-25. Appellant argues Lee discloses that a user equipment transmits two messages, whereas claim 33 requires one message because of the limitation “transmitting a first message to a base station (BS), during an initial access procedure with the BS, wherein the first message includes a random access channel (RACH) preamble and a radio resource control (RRC) connection request” (emphases added). Appeal Br. 19-20. We disagree with Appellant. Lee discloses user equipment sending a random access procedure message to a mobile station comprising a RACH preamble and RRC connection request (i.e., the combination of Lee’s RACH preamble and a RRC connection discloses the claimed “first message”), which discloses the limitation “transmitting a first message to a base station (BS), during an initial access procedure with the BS, wherein the first message includes a random access channel (RACH) preamble and a radio resource control (RRC) connection request” recited in claim 33. Ans. 24-25; Final Act. 8 (citing Lee, Fig. 8); see also Lee ¶ 55 (Discussing that the term eNB can be used interchangeably with base station.). Also, we agree with the Examiner’s conclusion that Appellant’s claim 33 does not require the entirety of the claimed “first message” to be transmitted all at once. Ans. 24-25. Appellant does not argue claim 34 separately with particularity. Appeal Br. 10-24. Accordingly, we sustain the Examiner’s rejection of: (1) independent claim 33; and (2) dependent claim 34 under 35 U.S.C. § 102(a)(2). Appeal 2020-005525 Application 15/268,279 9 IV. Claims 6, 8, 14, 16, and 28 Rejected Under 35 U.S.C. § 103 The Examiner finds Kakishima ’480 teaches broadcasting information to a user equipment for selecting a cell after the user equipment is in a connected state, which the Examiner maps to the limitation “the preferred downlink beam is selected after a connection establishment procedure” recited in claim 6. Ans. 16 (citing Baek ¶¶ 84, 89); Final Act. 15 (citing Baek ¶¶ 84, 89). Appellant argues Kakishima ’480 merely teaches information indicating a method employed to transmit CRSs, but is silent regarding selecting a preferred downlink beam after a connection establishment procedure and is silent as to an “uplink reference signal” in the connected state. Appeal Br. 22-23. We disagree with Appellant. Kakishima’480 teaches broadcasting information to a user equipment for selecting a cell (i.e., preferred downlink beam is selected) after the user equipment is in a connected state (i.e., after a connection establishment procedure), which teaches the limitation “the preferred downlink beam is selected after a connection establishment procedure” recited in claim 6. Ans. 16 (citing Baek ¶¶ 84, 89); Final Act. 15 (citing Baek ¶¶ 84, 89). Appellant does not argue claims 8, 14, 16, and 28 separately with particularity. Appeal Br. 10-24. Accordingly, we sustain the Examiner’s rejection of claims 6, 8, 14, 16, and 28 under 35 U.S.C. § 103. We have only considered those arguments that Appellant actually raised in the Briefs. Arguments Appellant could have made, but chose not to make, in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2020-005525 Application 15/268,279 10 CONCLUSION 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. § 1.136(a)(1)(iv). AFFIRMED Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 10, 11, 18, 19, 25, 30 102(a)(2) Baek 1, 2, 10, 11, 18, 19, 25, 30 33, 34 102(a)(2) Lee 33, 34 3, 4, 12, 13, 20, 21, 26, 27, 31 103 Baek, Guey 3, 4, 12, 13, 20, 21, 26, 27, 31 5, 22, 32 103 Baek, Guey, Kakishima ’348 5, 22, 32 6, 8, 14, 16, 28 103 Baek, Kakishima ’480 6, 8, 14, 16, 28 7, 15 103 Baek, Kakishima ’480, Wennstrom 7, 15 23 103 Baek, Guey, Kakishima ’348, Wennstrom 23 Overall Outcome 1-8, 10-16, 18-23, 25- 28, 30-34