SAMSUNG ELECTRONICS CO., LTD.Download PDFPatent Trials and Appeals BoardAug 25, 20212020002126 (P.T.A.B. Aug. 25, 2021) Copy Citation 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. Appeal 2020-002126 Application 13/630,535 2 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. Appeal 2020-002126 Application 13/630,535 3 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 Appeal 2020-002126 Application 13/630,535 4 . . . 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). Appeal 2020-002126 Application 13/630,535 5 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. Appeal 2020-002126 Application 13/630,535 6 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 Appeal 2020-002126 Application 13/630,535 7 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 Appeal 2020-002126 Application 13/630,535 8 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. Appeal 2020-002126 Application 13/630,535 9 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 Appeal 2020-002126 Application 13/630,535 10 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. Appeal 2020-002126 Application 13/630,535 11 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 Copy with citationCopy as parenthetical citation