QUALCOMM Incorporated

Patent Trials and Appeals Board

Nov 1, 2021

2020004774 (P.T.A.B. Nov. 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.
15/373,427 12/08/2016 Jing JIANG 161348US 7859
23696 7590 11/01/2021
QUALCOMM INCORPORATED
5775 MOREHOUSE DR.
SAN DIEGO, CA 92121
EXAMINER
ROUDANI, OUSSAMA
ART UNIT PAPER NUMBER
2413
NOTIFICATION DATE DELIVERY MODE
11/01/2021 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):
us-docketing@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JING JIANG, TAO LUO, TINGFANG JI,
PETER PUI LOK ANG, JOSEPH BINAMIRA SORIAGA, and
KRISHNA KIRAN MUKKAVILLI
_____________

Appeal 2020-004774
Application 15/373,427
Technology Center 2400
____________

Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JASON J. CHUNG, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–32. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We Affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). According to Appellant, the real party in interest is
Qualcomm, Inc. See Appeal Br. 3.
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STATEMENT OF THE CASE 2
Introduction
Appellant’s claimed subject matter relates generally to “wireless
communications and, more specifically, to methods and apparatuses for
separately acknowledging time division multiplexed (TDM) data units, in an
effort to achieve low latency for each data unit.” Spec. ¶ 2.

Representative Independent Claim 1
1. A method for wireless communication by a user
equipment (UE), comprising:
[L1] receiving, within a subframe, a first portion of a
downlink control region scheduling at least a first data unit to be
received in the subframe,
[L2] wherein the subframe comprises at least two
transmission time intervals (TTIs) and
[L3] wherein the subframe comprises the downlink control
region, a data region, and an uplink control region;
[L4] receiving the first data unit in a first TTI of the data
region;
[L5] receiving a second data unit in a second TTI of the
data region; and
[L6] separately acknowledging receipt of the first and
second data units,
[L7] wherein the first data unit is acknowledged in the
uplink control region of the subframe.

2 We herein refer to the Final Office Action, mailed May 24, 2019 (“Final
Act.”); Appeal Brief, filed December 2, 2019 (“Appeal Br.”); the
Examiner’s Answer, mailed March 16, 2020 (“Ans.”), and the Reply Brief,
filed May 12, 2020 (“Reply Br.”).
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Appeal Br. 14, Claims App. (limitations L1 through L7 bracketed and
emphasized).
Prior Art Evidence
The Examiner relies upon the following prior art as evidence:
Name Reference Date
Moon et al. (“Moon”) US 2009/0175372 A1 Jul. 9, 2009
Yi et al. (“Yi”) US 2016/0095093 A1 Mar. 31, 2016
Desai et al. (“Desai”) US 2016/0353443 A1 Dec. 1, 2016
Lee et al. (“Lee”) US 2018/0098337 A1 Apr. 5, 2018

Rejections
Rejection Claims
Rejected 35 U.S.C. § Reference(s)/Basis
A 31, 32 101 Non-statutory subject matter
B
1–5, 8–12,
15–19, 22–26,
29–32
103 Lee, Yi, Desai
C 6, 7, 13, 14, 20, 21, 27, 28 103 Lee, Yi, Desai, Moon

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ISSUES AND ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. To the extent Appellant has not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are forfeited
or waived.3 See, e.g., 37 C.F.R. § 41.37(c)(1)(iv). Throughout this opinion,
we give the claim limitations the broadest reasonable interpretation (BRI)
consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997). We highlight and address specific findings and arguments
for emphasis in our analysis below.

Rejection A of Independent Claims 31 and 32 under § 101
The Examiner rejects independent claims 31 and 32 under 35 U.S.C.
101 as being directed to non-statutory subject matter. See Final Act. 6. In
particular, the Examiner concludes that “[c]laims 31 and 32 are drawn to a
computer readable medium having computer-executable instructions, i.e. [a]
signal per se.” Final Act. 6. The Examiner finds that “[n]either the

3 See In re Google Technology Holdings LLC, 980 F.3d 858, 862 (Fed. Cir.
2020) (some internal citation omitted):
It is well established that “[w]aiver is different from forfeiture.”
United States v. Olano, 507 U.S. 725, 733 (1993). “Whereas
forfeiture is the failure to make the timely assertion of a right,
waiver is the ‘intentional relinquishment or abandonment of a
known right.’” Id. (quoting Johnson v. Zerbst, 304 U.S. 458, 464
(1938)) (additional citations omitted). The two scenarios can
have different consequences for challenges raised on appeal, id.
at 733–34, and for that reason, it is worth attending to which label
is the right one in a particular case.
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spec[ification] nor the claims limit the interpretation of the computer
readable medium to hardware only.” Id.
In reviewing the record, we find no indication that the Examiner ever
withdrew the rejection under 35 U.S.C. § 101. We find no such indication in
the Advisory Action mailed August 9, 2019, in the Pre-Brief Appeal
Conference Decision, mailed November 5, 2019, nor in the Answer, or in
any other mailed USPTO communication.
After an administrative remand by the Board (mailed May 15, 2020),
the Examiner entered the after-final amendment that was received by the
Examiner on July 9, 2019.4 See Misc. Communication to Applicant, form
PTO-90C, mailed May 20, 2020. However, the Examiner merely indicates
in the PTO-90C that “[f]or purposes of appeal, the amendment filed on
07/09/2019 has been entered.” Id. This PTO-90C communication is silent
regarding any withdrawal of the rejection under 35 U.S.C. § 101. Because
the Examiner has not withdrawn Rejection A under 35 U.S.C. § 101 of
independent claims 31 and 32, this rejection is before us on appeal.
Before entry of the after-final amendment on May 20, 2020, we agree
with the Examiner’s legal conclusion in the Final Action (p. 6) that
independent claims 31 and 32 encompass non-statutory subject matter under
35 U.S.C. § 101, because the broadest reasonable interpretation of these
claims, consistent with the Specification, covers various forms of transitory
propagating signals per se, which are non-statutory subject matter. See 1351

4 See 37 C.F.R. § 1.116(b) (“After a final rejection or other final action
(§ 1.113 ) in an application . . . (1) An amendment may be made canceling
claims or complying with any requirement of form expressly set forth in a
previous Office action;”) (emphasis added).
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Off. Gaz. Pat. Office 212 (Feb. 23, 2010); Subject Matter Eligibility of
Computer Readable Media. See also In re Nuijten, 500 F.3d 1346, 1356–57
(Fed. Cir. 2007) (transitory embodiments are not directed to statutory subject
matter).
Under our jurisprudence, the scope of the recited “computer-readable
medium” (claims 31 and 32) encompasses transitory media such as signals
or carrier waves, where, as here, the Specification (Spec. ¶ 106) does not
limit the “computer-readable medium” to non-transitory forms:
Also, any connection is properly termed a computer-readable
medium For example, if the software/firmware is transmitted
from a website, server, or other remote source using a coaxial
cable, fiber optic cable, twisted pair, digital subscriber line
(DSL), or wireless technologies such as infrared, radio, and
microwave, then the coaxial cable, fiber optic cable, twisted
pair, DSL, or wireless technologies such as infrared, radio, and
microwave are included in the definition of medium.
Spec. ¶ 106 (emphasis added).
We are bound by the controlling holding of Ex parte Mewherter, 107
USPQ2d 1857 (PTAB 2013) (precedential) (holding a recited machine-
readable storage medium ineligible under § 101 since it encompasses
transitory media).
Before entry of the after-final amendment on May 20, 2020, the
recited “computer-readable medium” of independent claims 31 and 32 was
not claimed as “non-transitory,” and the Specification (e.g., ¶ 106) does not
expressly and unambiguously limit that medium to solely non-transitory
forms via a definition or similar limiting language.
We find the Specification expressly describes embodiments of
“computer-readable mediums” that encompass signals: “infrared, radio,
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and microwave are included in the definition of medium.” Spec. ¶ 106
(emphasis added). Therefore, we conclude the “computer-readable
medium” recited in independent claims 31 and 32 at the time the Answer
was mailed encompassed transitory forms and was ineligible under § 101.
However, the belated entry on May 20, 2020 by the Examiner of the
after-final amendment received on July 9, 2019 added the phrase “non-
transitory” immediately before “computer-readable medium” in each of
claims 31 and 32, which we find complies with the requirements set forth
under the section 101 policy statement by former USPTO Director Kappos.5
Accordingly, we reverse the Examiner’s Rejection A of independent
claims 31 and 32 under 35 U.S.C. § 101.

Obviousness Rejection B over Lee, Yi, and Desai
Claim Grouping
Appellant argues Rejection B of claims 1–3, 5, 8–10, 12, 15–17, 19,
22–24, 26, and 29–32 as a first group. See Appeal Br. 8–12. Appellant
argues Rejection B of claims 4, 11, 18, and 25 as a second group. See
Appeal Br. 12. We will, therefore, treat the first group of claims 1–3, 5,
8–10, 12, 15–17, 19, 22–24, 26, and 29–32 as standing or falling together

5 We refer Appellant to the February 23, 2010 “Subject Matter Eligibility of
Computer Readable Media ” policy statement by former PTO Director
David J. Kappos, as published in the Official Gazette of the United States
Patent and Trademark Office (USPTO), 1351 Off. Gaz. Pat. Office 212
(Feb. 23, 2010), available at:
http://www.uspto.gov/web/offices/com/sol/og/2010/week08/TOC.htm#ref20

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with representative independent claim 1. We will treat the second group of
claims 4, 11, 18, and 25, also rejected under Rejection B, as standing or
falling together with representative dependent claim 4. See
37 C.F.R. 41.37(c)(1)(vii) (“Notwithstanding any other provision of this
paragraph, the failure of appellant to separately argue claims which appellant
has grouped together shall constitute a waiver of any argument that the
Board must consider the patentability of any grouped claim separately.”).

Group 1: Obviousness Rejection B of Representative Independent Claim 1
Appellant advances several related arguments regarding Rejection B
of independent claim 1 in the Appeal Brief and in the Reply Brief. Based
upon our review of Appellant’s arguments in the Briefs, we find the
dispositive issue in this appeal is whether the Appellant has advanced any
substantive, persuasive arguments that are commensurate with the scope of
the claims.
Appellant initiates the arguments in the Appeal Brief by merely
reciting all the limitations L1–L7 found in the body of claim 1. See Appeal
Br. 8, last paragraph, and p. 9, first partial paragraph. But a statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellant subsequently references the Examiner’s findings regarding
limitations L1, L5, and L6 of claim 1 in the first full paragraph on page 9 of
the Appeal Brief. Appellant essentially reproduces or describes what Lee
teaches in paragraphs 112, 113, 197 and Figures 23 and 24.

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Appellant then argues:
Lee merely provides a subframe structure having two slots with
two TTIs per slot without any teaching or suggestion of the
scheduling, data transmission, and feedback that occurs within
the subframe structure. Although Lee teaches that a short TTI
may be partitioned into separate time-domain resources for the
reception of a PDCCH and PDSCH (Id, at 11 [0313]-[0320]),
Lee is silent with regard to the PDCCH within a subframe
actually scheduling a downlink data transmission (PDSCH)
within the same subframe and the data transmission being
acknowledged in the same subframe as well.
Appeal Br. 9 (emphasis added).
In response, we find Appellant’s first argument is not commensurate
with the scope the claim language, because claim 1 is silent regarding the
argued “data transmission, and feedback that occurs within the subframe
structure.” (Id.) Instead, representative independent method claim 1
includes three steps of “receiving” (not transmitting) and is silent regarding
any mention of “feedback.”
Similarly regarding Appellant’s second argument, we find claim 1 is
silent regarding the argued “PDCCH” (i.e., Physical Downlink Control
Channel – see Spec. ¶ 54) and “PDSCH” (i.e., Physical Downlink Shared
Channel – see Spec. para. ¶ 54. See Appeal Br. 9 (“Lee is silent with regard
to the PDCCH within a subframe actually scheduling a downlink data
transmission (PDSCH) within the same subframe and the data transmission
being acknowledged in the same subframe as well.”) (emphasis added).
Based upon our review of the record, we agree with the Examiner’s
finding that “the features upon which [A]ppellant relies . . . are not recited in
the appealed claims.” Ans. 4.

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Our reviewing court provides guidance that is applicable here:
“[t]hough understanding the claim language may be aided by the
explanations contained in the written description, it is important not to
import into a claim limitations that are not a part of the claim.” SuperGuide
Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). “We
have cautioned against reading limitations into a claim from the preferred
embodiment described in the specification, even if it is the only embodiment
described, absent clear disclaimer in the specification.” In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004).
Appellant next reproduces Figures 23 and 24 of Lee on page 10 of the
Appeal Brief. In a similar pattern of argument, Appellant merely recites the
claim language and asserts that Lee does not provide a teaching or
suggestion. See Appeal Br. 10–11. As noted above, a statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim. See 37 C.F.R. § 41.37(c)(1)(vii). On
this record, we find that Appellant has failed to rebut the Examiner’s
rejection of claim 1 with any substantive, persuasive analysis.
We are not persuaded by Appellant’s arguments because we find such
attorney argument does not specifically address the Examiner’s findings. It
is well settled that mere attorney arguments and conclusory statements,
which are unsupported by factual evidence, are entitled to little probative
value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney argument is not
evidence). Thus, counsel’s arguments cannot take the place of factually
supported objective evidence. See In re Huang, 100 F.3d 135, 139–40 (Fed.
Cir. 1996). See also Manual of Patent Examining Procedure (MPEP) § 2145
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(I) (“Attorney argument is not evidence unless it is an admission, in which
case, an examiner may use the admission in making a rejection.”) (MPEP
Ninth Edition, Rev. 10.2019, Last Revised June 2020).
We find unavailing Appellant’s repeated pattern of reproducing the
paragraphs and/or figures cited by the Examiner and merely asserting that
such evidence does not teach or suggest what is claimed, without more
substantive traversal of the Examiner’s underlying factual findings and
ultimate legal conclusion of obviousness.
Regarding Appellant’s additional arguments advanced regarding the
Yi and Desai secondary references, we find Appellant is arguing the
references separately. See Appeal Br. 11. And one cannot show non-
obviousness by attacking references individually where the rejections are
based on combinations of references. In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986).
Therefore, on this record, we are not persuaded of error regarding the
Examiner’s ultimate legal conclusion of obviousness for Rejection B of
representative independent claim 1. Grouped claims 2, 3, 5, 8–10, 12,
15–17, 19, 22–24, 26, and 29–32, fall with representative claim 1. See 37
C.F.R. § 41.37(c)(1)(iv).

Group 2: Obviousness Rejection B of Representative Dependent Claim 4
Regarding claims 4, 11, 18, and 25, Appellant contends:
Lee combined with Yi and Desai also fail to teach or suggest
receiving or transmitting, “within the subframe, a second control
portion of the downlink control region scheduling the second
data unit,” as recited in claims 4, 11, 18, and 25. In the Final
Office Action, the Examiner continues to interpret Figures 23
and 24 of Lee as teaching “receiving, within the subframe, a
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second control portion of the downlink control region scheduling
the second data unit.” FOA, 9-10. As discussed above, Lee
merely provides a frame structure in Figures 23 and 24 without
any teaching or suggestion of low latency transmissions within
the same subframe, such as receiving or transmitting, “within the
subframe, a second control portion of the downlink control
region scheduling the second data unit,” as specified in the
claims. For at least these reasons, Appellant contends that claims
4, 11, 18, and 25 are allowable over Lee in view of Yi, and further
in view of Desai.
Appeal Br. 12.
But Appellant’s contention that “Lee merely provides a frame
structure in Figures 23 and 24 without any teaching or suggestion of low
latency transmissions within the same subframe” (id.) is not persuasive,
because claim 4 (and claims 11, 18, and 25) are silent regarding any mention
of the argued “low latency transmission.” Again, we find Appellant’s
arguments are not commensurate with the scope of the claim.
Therefore, on this record, we are not persuaded of error regarding the
Examiner’s ultimate legal conclusion of obviousness for Rejection B of
representative dependent claim 4. Grouped claims 11, 18, and 25 (also
rejected under Rejection B) fall with representative claim 4. See 37 C.F.R.
§ 41.37(c)(1)(iv).

Rejection C under § 103 of the Remaining Dependent Claims
Appellant urges that remaining claims 6, 7, 13, 14, 20, 21, 27, and 28
are patentable over Lee in view of Yi, Desai, and Moon under Rejection C
because “Moon fails to remedy the deficiencies of Lee combined with Yi and
Desai described above.” Appeal Br. 13. However, Appellant has shown no
such deficiencies, for the reasons we have detailed above regarding the
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claims rejected under obviousness Rejection B. Therefore, on this record,
we are not persuaded of error regarding the Examiner’s ultimate legal
conclusion of obviousness for Rejection C of remaining dependent claims 6,
7, 13, 14, 20, 21, 27, and 28. Accordingly, we sustain the Examiner’s
Rejection C of these claims.
Regarding all claims 1–32 rejected under obviousness Rejections B
and C, to the extent that the scope of any claims on appeal is being construed
broader by the Examiner or the Board than the interpretation imputed by
Appellant’s arguments in the Briefs, we emphasize that, because “applicants
may amend claims to narrow their scope, a broad construction during
prosecution creates no unfairness to the applicant or patentee.” In re ICON
Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation
omitted).
With respect to the obviousness of all claims 1–32 before us on
appeal, we additionally emphasize that “the question under 35 USC 103 is
not merely what the references expressly teach but what they would have
suggested to one of ordinary skill in the art at the time the invention was
made.” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir.
1989) (emphasis added) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA
1976)). See also MPEP § 2123.
Accordingly, on this record, and based upon a preponderance of the
evidence, we are not persuaded of error regarding the Examiner’s underlying
factual findings and ultimate legal conclusion of obviousness for all claims
1–32 on appeal.

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CONCLUSIONS
Appellant has overcome Rejection A of claims 31 and 32 under 35
U.S.C. § 101 as being directed to non-statutory subject matter. See July 9,
2019 after-final Amendment entered by the Examiner on May 20, 2020,
subsequent to an administrative remand from the Board.
However, Appellant has not shown that the Examiner erred in
rejecting claims 1–32 under 35 U.S.C. § 103 over the collective teachings
and suggestions of the cited references.

DECISION SUMMARY

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
31, 32 101 Non-statutory
subject matter
31, 32
1–5, 8–12,
15–19,
22–26,
29–32
103 Lee, Yi, Desai 1–5, 8–12,
15–19,
22–26,
29–32

6, 7, 13, 14,
20, 21, 27,
28
103 Lee, Yi, Desai,
Moon
6, 7, 13, 14,
20, 21, 27,
28

Overall
Outcome
1–32

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FINALITY AND RESPONSE
Because we have sustained at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner’s decision to reject
all claims on appeal. See 37 C.F.R. § 41.50(a)(1).
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