SAMSUNG ELECTRONICS CO., LTD.

Patent Trials and Appeals Board

Aug 25, 2021

2020002126 (P.T.A.B. Aug. 25, 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.
13/630,535 09/28/2012 Youn-Sun KIM 1398-1253 7625
66547 7590 08/25/2021
THE FARRELL LAW FIRM, P.C.
Paul J Farrell
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
ULYSSE, JAEL M
ART UNIT PAPER NUMBER
2477
NOTIFICATION DATE DELIVERY MODE
08/25/2021 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):
pto@farrelliplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOUN-SUN KIM, HYOUNG-JU JI, HYO-JIN LEE,
YONG-JUN KWAK, YOUNG-BUM KIM, JU-HO LEE,
JOON-YOUNG CHO, SEUNG-HOON CHOI, CHENG SHAN, and
KRISHNA SAYANA
Appeal 2020-002126
Application 13/630,535
Technology Center 2400
Before JOSEPH L. DIXON, MAHSHID D. SAADAT, and JOYCE CRAIG,
Administrative Patent Judges.
DIXON, 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 21–24, 26–29, 31–34, and 36–39. We
have jurisdiction 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) (2018). Appellant identifies the real party in interest as
Samsung Electronics Co. Appeal Br. 1.
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Application 13/630,535

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CLAIMED SUBJECT MATTER
The claims are directed to a method and apparatus for providing
information about available wireless resources and accurately determining
the wireless resources used for data transmission. Spec. 1. Claim 21,
reproduced below, is representative of the claimed subject matter:
21. A method for receiving data by a receiver in wireless
communications, the method comprising:
receiving configuration information comprising a plurality
of values corresponding to a plurality of starting positions of a
physical downlink shared channel (PDSCH) via higher layer
signaling;
receiving downlink control information comprising an
information field indicating a value from among the plurality of
values, on a physical downlink control channel (PDCCH);
determining a starting symbol of the PDSCH based on
the value indicated by the information field; and
receiving data on the PDSCH by using the determined
starting symbol.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Lee et al. US 2011/0194514 A1 Aug. 11, 2011
Damnjanovic et al. US 2012/0045014 A1 Feb. 23, 2012

REJECTION
Claims 21–24, 26–29, 31–34, and 36–39 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Damnjanovic in view of Lee.
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OPINION
35 U.S.C. § 103(a)
PRINCIPLES OF LAW
“[W]hen the prior art teaches away from combining certain known
elements, discovery of a successful means of combining them is more likely
to be nonobvious.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Kahn, 441 F.3d 977, 990
(Fed. Cir. 2006).
“[T]he ‘mere disclosure of alternative designs does not teach away’”
and “just because better alternatives exist in the prior art does not mean that
an inferior combination is inapt for obviousness purposes.” In re Mouttet,
686 F.3d 1322, 1334 (Fed. Cir. 2012).
Although a reference that teaches away is a significant factor to
be considered in determining unobviousness, the nature of the
teaching is highly relevant, and must be weighed in substance.
A known or obvious composition does not become patentable
simply because it has been described as somewhat inferior to
some other product for the same use.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Where “the problem is known, the possible approaches to solving the
problem are known and finite, and the solution is predictable through use of
a known option,” a solution that is obvious to try may indeed be obvious.
Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1351 (Fed. Cir. 2008) (citing
KSR, 550 U.S. at 421). Moreover, a finding of obviousness under the
“obvious to try” standard “does not require absolute predictability of success
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. . . all that is required is a reasonable expectation of success.” In re Kubin,
561 F.3d 1351, 1360 (Fed. Cir. 2009) (emphasis, internal quotation, and
bracketed alteration omitted) (quoting In re O’Farrell, 853 F.2d 894, 903–04
(Fed. Cir. 1988)).
“We must still be careful not to allow hindsight reconstruction of
references to reach the claimed invention without any explanation as to how
or why the references would be combined to produce the claimed
invention.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3
(Fed. Cir. 2008).
[A]n implicit motivation to combine exists not only when a
suggestion may be gleaned from the prior art as a whole, but
when the “improvement” is technology-independent and the
combination of references results in a product or process that is
more desirable, for example because it is stronger, cheaper,
cleaner, faster, lighter, smaller, more durable, or more efficient.
Because the desire to enhance commercial opportunities by
improving a product or process is universal—and even
common-sensical— . . . there exists in these situations a
motivation to combine prior art references even absent any hint
of suggestion in the references themselves. In such situations,
the proper question is whether the ordinary artisan possesses
knowledge and skills rendering him capable of combining the
prior art references.
Dystar Textilfarben Gmbh & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1368 (Fed. Cir. 2006).
“[T]he Board need only establish motivation to combine by a
preponderance of the evidence to make its prima facie case.” In re Kahn,
441 F. 3d 977, 989 (Fed. Cir. 2006).

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Independent Claims 21, 26, 31, and 36
Appellant does not advance separate arguments in support of the
patentability of any particular claim or claim grouping. Appeal Br. 5–6.
Accordingly, we exercise our authority under 37 C.F.R. § 41.37(c)(1)(iv)
and group independent claims 26, 31, and 36 with representative claim 21.
Arguments which Appellant could have made but did not make in the Brief
are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv).
Appellant asserts that the Damnjanovic reference does not teach or
suggest indicating a plurality of starting positions of the PDSCH, either
alone or as combined because the Damnjanovic reference teaches one
starting symbol (i.e., CFI) that is indicated by RRC signaling, and fails to
teach or suggest a “plurality” of starting symbols that are indicated by RRC
signaling, and Damnjanovic in view of Lee does not describe the
information in relation to the starting symbols in the DCI. Appeal Br. 6.
Appellant argues that the Damnjanovic reference discloses a plurality
of starting symbols for indicating by the RRC signaling (Appeal Br. 6), but
the Examiner relied upon the Lee reference to teach the plurality of starting
positions of the PDSCH signal. Appellant repeats the two paragraphs of the
Lee reference that the Examiner relied upon and contends that the Lee
reference teaches or suggests the claimed “determining a starting symbol of
the PDSCH based on the value indicated by the information field.” Appeal
Br. 6–7.
Appellant further asserts that the Lee reference neither provides a
“starting position” nor teaches or suggests anything about such a starting
position based on the value indicated by the information field, anywhere in
the disclosure, either alone or as combined. Appeal Br. 8.
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Appellant argues that the Lee reference teaches a two bit indicator, but
Table 1 of the present application discloses a three bit indicator, and
Appellant argues that although the Lee reference discloses/mentions the
information fields including various DCI formats, the Lee reference does not
teach or suggest an information field indicating one among a plurality of
values which are provided by the configuration information. Appeal Br. 8.
Appellant further argues that it was known in the art that the RRC
message is less impacted by quick decoding compared with the DCI, and can
be transmitted with a larger message size. Appeal Br. 8.
Appellant argues that the DCI (downlink control information) on the
PDCCH (control channel) for scheduling a PDSCH should be designed to be
quickly decoded and that many bits for the DCI are necessary which inhibits
rapid decoding by the user equipment. Appeal Br. 8.
Appellant also argues that in the rejected claims, the UE can receive
and store, in advance, the plurality of starting positions through the
configuration information, and can identify one of the plurality of starting
positions by decoding the information field in the DCI when the PDSCH is
scheduled. Appeal Br. 9
The Examiner responds to Appellant’s arguments and relies upon the
broadest reasonable interpretation of the claimed invention. Ans. 3. The
Examiner relies upon paragraphs 50 and 75 of the Appellant’s Specification
which identifies an example of a starting position. Ans. 4–5. The Examiner
finds that “the UE attributed as the receiver device can use the values
indicated in PCFICH to help determine a starting position or point of
PDSCH.” The Examiner also finds the primary reference, Damnjanovic, as
cited in the Final Office Action discloses in paragraph 53 the initial OFDM
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symbols comprise the physical downlink control channel (PDCCH) that
carries downlink control information (DCI). Ans. 5.
The Examiner further finds that based on the cited portions recited
above in the Damnjanovic reference, it is evident that the UE (attributed as
the receiver) receives multiple values such as symbols 2–5 by the
information carried on PDCCH which are indicated in combination by DCI
and PCFICH, OFDM symbol numbers 1–14 comprises the PDCCH carried
in DCI and the CFI. Ans. 6.
The Examiner also finds in comparing the cited portions of the
Damnjanovic reference above and citations in the Final Office Action to that
of Appellant’s disclosure, the invention of the Damnjanovic reference is
similar to the argued limitations, and the UE of the Damnjanovic reference
can determine the starting position of the PDSCH in order to receive data.
Ans. 6. The Examiner finds the Damnjanovic reference recites in paragraph
53 that the UE decodes the DCI to determine data portion PDSCH allocated
to the UE, and skilled artisans understand that if the UE decodes the DCI,
then the UE reads the information received and can use the information
when operating in a communication system. Ans. 6.
With regards to the arguments that the combination of Damnjanovic
and Lee does not teach or describe “starting symbols in the DCI” and
“determining a starting symbol of the PDSCH based on a value in the
information field,” the Examiner maintains that Appellant’s argument is not
commensurate in scope with the language of representative independent
claim 21. Ans. 7.
The Examiner finds that that the argued claims do not explicitly recite
“starting symbols in the DCI.” Ans. 7. Various recited limitations in the
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claims recite “starting symbol of the PDSCH based on the value indicated by
the information field” and not starting symbols in the DCI. Ans. 7. The
Examiner further compares Appellant’s admitted disclosure to that of Lee
and finds that it is evident that the CIBF of Lee is similar to Appellant’s CIF
and thus the UE (User Equipment) receives a value indicated by the
information field. Ans. 8.
The Examiner finds that the Appellant’s failure to significantly
narrow the definition or scope of the claims and supply arguments
commensurate in scope with the claims implies the Appellant intends a
broad interpretation be given to the claims. Ans. 9.
Appellant further argues that the user equipment can receive
configuration information for example and RRC message in advance
including a plurality of starting positions and can apply it to the PDSCH
before the PDSCH is scheduled such as during an RRC configuration
procedure. Appeal Br. 8–9. Appellant further argues that the RRC message
is less impacted by quick decoding compared to the DCI and again
Appellant argues that the user equipment can receive and store, “in
advance,” a plurality of starting positions. Appeal Br. 8
The Examiner responds to Appellant’s argument regarding the
sequencing of the signaling and showing that “an OFDM symbol where the
PDSCH starts, is a value that is set in advance by higher layer signaling.”
Ans. 8. We disagree with Appellant and also note Appellant’s argument is
not commensurate in scope with the language of independent claim 21
which does not set forth the relative temporal limitation “in advance.” This
argument goes beyond the scope of the claim because it does not recite “in
advance” and “before” scheduling.
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In the Reply Brief, Appellant provides a similar argument advanced in
the Appeal Brief that the combination does not teach or suggest the claimed
“determining a starting symbol of the PDSCH based on the value indicated
by the information field.” Reply Br. 2–3.
The Examiner acknowledges that the Damnjanovic reference does not
provide an indication of a plurality of starting points, which is what the Lee
reference was relied upon to teach. Ans. 8–9.
We also note the Examiner previously acknowledges that the
Damnjanovic reference does not teach the feature of an indication of a
plurality of starting points, and the Examiner then added the teachings of the
Lee reference into the combination. Final Act. 5–6.
Appellant attempts to differentiate the different information fields
where the Lee reference teaches a plurality of OFDM singles used by the
PDCCH transmission while the claimed invention is a plurality of values to
a plurality of starting positions of a PDSCH, and Appellant argues that this
is based upon knowledge gleaned from Appellant’s disclosure. Reply Br. 6
Appellant further contends that a number of symbols of the PDCCH
to be received by a terminal cannot be simultaneously indicated through a
plurality of values, but Appellant does not fully explain this or provide any
support for this argument. Reply Br. 7.
Appellant further argues that with Lee only one value of the CFI is
communicated in the conventional art and that the user equipment only
receives a single value transmitted by the base station which identifies the
starting position. Reply Br. 7.
We disagree with Appellant and find that the prior art teaches and
suggests convey starting point information, and we find that Appellant’s
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claim language does not distinguish the way that the claimed invention
receives the value or that the value that the step of receiving data is different
than in the prior art. Appellant’s argument is just that the data is different
than the prior art data or that the received data will be used differently. See
generally Appeal Br. 5–9; Reply Br. 1–8.
Based upon the totality of the teachings and the broad scope of the
claims, the Examiner has provided sufficient factual findings and some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness. As a result, we find Appellant’s arguments to be
unpersuasive of error in the Examiner’s factual findings or conclusion of
obviousness of representative independent claim 21.
With respect to independent claims 26, 31, and 36, Appellant does not
set forth separate arguments for patentability, and we group these claims as
falling with respect to independent claim 21. See 37 C.F.R.
§ 41.37(c)(1)(iv).

Dependent Claims 22–24, 27–29, 32–34, and 37–39
With regards to the dependent claims, Appellant relies upon the
arguments made with regarding to the respective parent independent claims.
Because we found Appellant’s arguments to be unpersuasive with respect to
the independent claims, we similarly find those arguments unpersuasive with
respect to the dependent claims, and we group these claims as falling with
their parent independent claim. See 37 C.F.R. § 41.37(c)(1)(iv).
CONCLUSION
The Examiner’s obviousness rejection of claims 21–24, 26–29, 31–34,
and 36–39 are affirmed.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
21–24, 26–
29, 31–34,
36–39
103(a) Damnjanovic, Lee 21–24, 26–
29, 31–34,
36–39

TIME PERIOD FOR 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). See 37 C.F.R.
§ 41.50(f).
AFFIRMED