QUALCOMM Incorporated

Patent Trials and Appeals BoardOct 19, 2020

2019003740 (P.T.A.B. Oct. 19, 2020)

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. 14/489,999 09/18/2014 Avneesh Agrawal 091021C1 6227 15055 7590 10/19/2020 Patterson + Sheridan, L.L.P. Qualcomm 24 Greenway Plaza, Suite 1600 Houston, TX 77046 EXAMINER AHMED, ABDULLAHI ART UNIT PAPER NUMBER 2472 NOTIFICATION DATE DELIVERY MODE 10/19/2020 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 AVNEESH AGRAWAL, PETER GAAL, RAVI PALANKI, and ALEXEI YURIEVITCH GOROKHOV ____________ Appeal 2019-003740 Application 14/489,999 Technology Center 2400 ____________ Before MARC S. HOFF, CATHERINE SHIANG, and CARL L. SILVERMAN, 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 1–7, 9–16, and 18–30, which are all the claims pending and rejected in the application.2 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 QUALCOMM Incorporated as the real party in interest. Appeal Br. 3. 2 Claim 8 has been cancelled. Claim 17 “is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form.” Final Act. 13. Therefore, claim 17 is not before us. Appeal 2019-003740 Application 14/489,999 2 STATEMENT OF THE CASE Introduction The present invention relates to “mitigating downlink interference.” Spec. ¶ 5. In one aspect, a method is provided for mitigating interference in a wireless communication system by receiving a wireless transmission from an interfering base station, accessing a constrained set of available parameters used by the interfering base station to generate the transmission, and decoding the transmission using a plurality of hypotheses based upon the constrained set of parameters. Spec. ¶ 13. Claim 1 is exemplary: 1. A method for mitigating interference in a wireless communication system, by a user equipment (UE), comprising: receiving an interfering wireless transmission from an interfering base station; accessing a constrained set of available parameters used by the interfering base station to generate the interfering wireless transmission, wherein the constrained set of available parameters includes a reduced first set of UE identities as compared to a second set of UE identities used by a serving base station to generate downlink transmissions; decoding the interfering wireless transmission using the reduced first set of UE identities; and mitigating the interfering wireless transmission based on the decoding. Appeal 2019-003740 Application 14/489,999 3 References and Rejections3 Claims Rejected 35 U.S.C. § References 1–7, 9–12, 14–16, 19–26 103 Beale (US 2005/0250506 A1, Nov. 10, 2005), Hagerman (US 2009/0168906 A1, July 2, 2009) 13, 18, 28–30 103 Beale, Hagerman, Palanki (US 2009/0130980 A1, May 21, 2009) 27 103 Beale, Hagerman, Takase (US 2009/0311967 A1, Dec. 17, 2009) ANALYSIS Obviousness4 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 Beale and Hagerman collectively teach accessing a constrained set of available parameters used by the interfering base station to generate the interfering wireless transmission, wherein the constrained set of available parameters includes a reduced first set of UE identities as compared to a second set of UE identities used by a serving base station to generate downlink transmissions; as recited in independent claim 1 (emphasis added). See Appeal Br. 8–12; Reply Br. 2–6. 3 Throughout this opinion, we refer to the (1) Final Office Action dated May 9, 2018 (“Final Act.”); (2) Appeal Brief dated October 19, 2018 (“Appeal Br.”); (3) Examiner’s Answer dated February 13, 2019 (“Ans.”); and (4) Reply Brief dated April 10, 2019 (“Reply Br.”). 4 Appellant raises additional arguments. Because the identified issue is dispositive of the appeal, we do not address the additional arguments. Appeal 2019-003740 Application 14/489,999 4 The Examiner cites Hagerman’s paragraphs 29 and 30 as teaching the italicized limitation. Final Act. 4; Advisory Act dated August 6, 2018 (“Advisory Act.”) p. 2. Appellant argues, and we agree, that the cited Hagerman’s paragraphs do not teach the italicized limitation. See Appeal Br. 8–12. In particular, the Examiner’s statement that Hagerman’s paragraph 30 teaches “reduced number of spreading codes (second set of UE Identities)” (Advisory Act. p. 2.) is not supported by evidence, as paragraph 30 does not describe any reduced number of spreading codes. In the Answer, the Examiner states: It would have been obvious to one of ordinary skill in the art at the time the claimed invention was made to set first set of UE identities greater than a second set of UE identities. Since it has been held by the courts that combining prior art elements according to known methods to yield predictable results, simple substitution of one known element for another to obtain predictable results, or choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, is not sufficient to distinguish over the prior art, as it requires only ordinary skill in the art. KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385, 1397 (2007). In this case, one of ordinary skill in the art would have been motivated to able to mitigate inter-cell interfere using a limited number of UE identities. Ans. 14 (emphases added). We agree with Appellant that the Examiner’s above conclusions are not supported by adequate rationale, because the Examiner’s reasoning merely paraphrases a portion of the disputed limitation. See Reply Br. 5–6. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (“rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”); see also KSR, Appeal 2019-003740 Application 14/489,999 5 550 U.S. at 424 (“[t]he proper question to have asked was whether a . . . designer of ordinary skill . . . would have seen a benefit to upgrading Asano with a [feature Asano does not have]”). As a result, the Examiner has not provided “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness,” as required by KSR. See KSR, 550 U.S. at 418. Because the Examiner fails to provide sufficient support for the legal conclusion of obviousness, we are constrained by the record to reverse the Examiner’s rejection of independent claim 1, and independent claim 5 for similar reasons. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (we will not resort to speculation or assumptions to cure deficiencies in the Examiner’s fact finding or reasoning). We also reverse the Examiner’s rejection of corresponding dependent claims 2–4, 6, 7, 9–16, and 18–30. Although the Examiner cites additional references for rejecting some dependent claims, the Examiner has not shown the additional references overcome the deficiency discussed above in the rejection of claim 1. CONCLUSION We reverse the Examiner’s decision rejecting claims 1–7, 9–16, and 18–30 under 35 U.S.C. § 103. Appeal 2019-003740 Application 14/489,999 6 In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–7, 9–12, 14–16, 19– 26 103 Beale, Hagerman 1–7, 9–12, 14–16, 19– 26 13, 18, 28– 30 103 Beale, Hagerman, Palanki 13, 18, 28– 30 27 103 Beale, Hagerman, Takase 27 Overall Outcome 1–7, 9–16, 18–30 REVERSED