Samsung Electronics Co., Ltd.

Patent Trials and Appeals Board

May 14, 2021

2021003036 (P.T.A.B. May. 14, 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.
15/664,630 07/31/2017 Sang Soo JEONG 0203-0488-3 9400
68103 7590 05/14/2021
Jefferson IP Law, LLP
1130 Connecticut Ave., NW, Suite 420
Washington, DC 20036
EXAMINER
HU, RUI MENG
ART UNIT PAPER NUMBER
2643
NOTIFICATION DATE DELIVERY MODE
05/14/2021 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):
usdocketing@jeffersonip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SANG SOO JEONG and SOENG HUN KIM
________________

Appeal 2021-003036
Application 15/664,630
Technology Center 2600
____________

Before ST. JOHN COURTENAY, III, CARL L. SILVERMAN, and
MATTHEW J. McNEILL, Administrative Patent Judges.

McNEILL, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 4, 5, 7, 8, 10, 12, 14, 16, 18, 19, 21, and 23‒26, which
are all the claims pending in this application. Claims 2, 3, 6, 9, 11, 13, 15,
17, 20, and 22 are canceled. Appeal Br. 18‒22. 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. Appellant identifies the real party in interest as Samsung
Electronics Co., Ltd. Appeal Br. 2.
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STATEMENT OF THE CASE
Introduction
Appellant’s application relates to mobile communications, and in
particular to a mobile device that reports a maximum transmission power to
a base station to assist in schedule decision making. Spec. ¶ 1. Claim 1 is
illustrative of the appealed subject matter and reads as follows with
emphases added:
1. A method performed by a terminal in a wireless
communication system, the method comprising:
receiving, from a base station, first control information
for configuring a first type power headroom (PH) report (PHR)
format from among the first type PHR format and a second type
PHR format, the first type PHR format including a PH field and
a maximum transmission power (PCMAX) field, and the second
type PHR format including a PH field without a PCMAX field;
identifying a PHR triggering event; and
transmitting, to the base station, the PHR based on the
first type PHR format,
wherein the PHR includes a first PH, a first PCMAX, a
second PH, and a second PCMAX, in case that a simultaneous
transmission of a physical uplink control channel (PUCCH) and
a physical uplink shared channel (PUSCH) is configured,
wherein the first PH is associated with a transmit power
for the PUSCH and the second PH is associated with a transmit
power for the simultaneous transmission of the PUCCH and the
PUSCH, and
wherein the first PH is based on the first PCMAX and the
second PH is based on the second PCMAX.

The Examiner’s Rejections
Claims 1, 4, 5, 7, 8, 10, 12, 14, 16, 18, 19, 21, and 23‒26 stand
rejected under 35 U.S.C. § 112(b) as being indefinite. Final Act. 3‒4.
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Claims 1, 4, 5, 7, 8, 10, 12, 14, 16, 18, 19, 21, and 23‒26 stand
rejected under 35 U.S.C. § 103 as unpatentable over Haim (US
2011/0105173 A1; May 5, 2011) and Kim (US 2012/0044882 A1; Feb. 23,
2012). Final Act. 4‒9.
ANALYSIS
Indefiniteness
The Examiner concludes that claim 1 is indefinite because “a first
type power headroom (PH) report (PHR) format from among the first type
PHR format and a second type PHR format” is unclear. Final Act. 3‒4. In
particular, the Examiner concludes as an issue of claim construction that it is
unclear whether “a first type PHR format” refers to (1) “the first type PHR
format” or (2) either “the first type PHR format” or “a second type PHR
format.” Id.
Appellant argues the Examiner errs because it would be clear to an
ordinarily skilled artisan that claim 1 recites two possible PHR formats, a
first type PHR format including a PH field and a PCMAX field and a second
type PHR format including only a PH field. Appeal Br. 6. Appellant argues
an ordinarily skilled artisan would understand that claim 1 recites receiving
first control information for configuring the first type PHR format. Id. The
additional recitation of a second type PHR format is another potential format
that will not be used for configuring. Id.
Appellant has persuaded us of Examiner error. We agree with
Appellant that an ordinarily skilled artisan would understand the scope of the
claim as written. The Examiner proposes a possible interpretation wherein “a
first type PHR format” may be selected to be “a second type PHR format,”
but this is inconsistent with the plain language of the claims. Instead, an
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ordinarily skilled artisan would understand the claim according to the first
interpretation proposed by the Examiner—specifically, that “a first type
PHR format” is to be used for the PHR.
For these reasons, we agree with Appellant that an ordinarily skilled
artisan would understand the metes and bounds of claim 1. Accordingly, we
do not sustain the indefiniteness rejection of claim 1. We also do not sustain
the indefiniteness rejection of independent claims 8, 12, and 19, which recite
commensurate subject matter, or claims 4, 5, 7, 10, 14, 16, 18, 21, and 23‒
26, which depend therefrom.
Obviousness
We have reviewed the Examiner’s obviousness rejection in light of
Appellant’s contentions that the Examiner has erred. We disagree with
Appellant’s contentions. Except as noted below, we adopt as our own: (1)
the findings and reasons regarding the obviousness rejection set forth by the
Examiner in the action from which this appeal is taken and (2) the reasons
regarding the obviousness rejection set forth by the Examiner in the
Examiner’s Answer in response to Appellant’s Appeal Brief.2 We concur
with the conclusions reached by the Examiner regarding the obviousness
rejection. We highlight the following additional points.
Appellant argues the Examiner errs in rejecting claim 1 as obvious
because neither Haim nor Kim teaches or suggests “receiving, from a base

2 See Icon Health and Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1042 (Fed.
Cir. 2017) (“As an initial matter, the PTAB was authorized to incorporate
the Examiner’s findings.”); see also In re Brana, 51 F.3d 1560, 1564 n.13
(Fed. Cir. 1995) (upholding the PTAB’s findings, although it “did not
expressly make any independent factual determinations or legal
conclusions,” because it had expressly adopted the examiner’s findings).
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station, first control information for configuring a first type power headroom
(PH) report (PHR) format from among the first type PHR format and a
second type PHR format, the first type PHR format including a PH field and
a maximum transmission power (PCMAX) field, and the second type PHR
format including a PH field without a PCMAX field.” Appeal Br. 7‒13; Reply
Br. 4‒5. In particular, Appellant argues the Examiner improperly parses the
language of the claims, finding Haim teaches a second type PHR format and
Kim teaches a first type PHR format. Reply Br. 5. Appellant argues that an
inherent feature of the claimed invention lies in the case of configuring the
use of a first type PHR format from among a first and a second type PHR
format. Id. Appellant argues that a single reference must, therefore, teach
both potential formats. Id.
Appellant has not persuaded us of Examiner error. The Examiner
finds, and we agree, Kim teaches receiving first control information for
configuring a PHR according to a first type PHR format. Ans. 6‒7 (citing
Kim, Fig. 8, pages 3‒5). The Examiner finds, and we agree, Haim teaches
receiving first control information for configuring a PHR according to a
second type PHR format. Id. at 6 (citing Haim ¶¶ 64, 66, 67, 70, 71).
Appellant’s argument that a single reference must teach both formats
is not persuasive. In particular, claim 1 recites “first control information for
configuring a first type power headroom (PH) report (PHR) format.” The
first type PHR format is configured “from among the first type PHR format
and a second type PHR format.” We agree with the Examiner that an
ordinarily skilled artisan would understand from the combined teachings of
Haim and Kim that both a first type PHR format and a second type PHR
format are potential formats for a PHR. Kim teaches configuring a PHR
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according to a first type PHR format and an ordinarily skilled artisan would,
therefore, understand this to be from among the potential first and second
formats. Notably, claim 1 does not recite receiving first control information
for configuring a first or a second type PHR format. Instead, claim 1 recites
receiving first control information for configuring a first type PHR format,
and this is what Kim teaches. Thus, with the additional teachings of Haim,
an ordinarily skilled artisan would understand the second type PHR format
to be another potential option that could have been, but was not, selected for
configuration.
Appellant also argues the Examiner errs because neither Haim nor
Kim teaches or suggests “wherein the PHR includes a first PH, a first PCMAX,
a second PH, and a second PCMAX, in case that a simultaneous transmission
of a physical uplink control channel (PUCCH) and a physical uplink shared
channel (PUSCH) is configured.” Appeal Br. 14‒16; Reply Br. 6‒9. In
particular, Appellant argues that although Kim may teach a PHR including a
first PH, a first PCMAX, a second PH, and a second PCMAX, Kim does not teach
doing so “in case that a simultaneous transmission” of PUCCH and PUSCH
is configured. Reply Br. 6.
Appellant has not persuaded us of Examiner error. The Examiner
finds, and we agree, Kim teaches PCMAX of a PCell and PCMAX of a SCell are
included in a PHR, along with respective PHs. Ans. 8 (citing Kim Tables 1,
2 [Figs. 8 and 9 in US 2012/0044882 A1]). Kim teaches the UE “obtains a
first type power headroom for each of the activated service cells and a
maximum transmission power of the [UE] for each of the activated service
cells from a physical layer.” Kim ¶ 108. Kim further teaches, “[i]n case of
transmitting PUCCH and PUSCH simultaneously, the user equipment
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obtains a second type power headroom for a primary cell and a maximum
transmission power of the user equipment for a second type power
headroom.” Id. Kim teaches Figure 8 is a diagram for one example of these
disclosed transmissions. Id. ¶ 110. Thus, Appellant’s argument is not
persuasive. We also note that Appellant’s Specification describes the
construction of a PHR in essentially the same way. See Spec. ¶¶ 108‒118.
For these reasons, we sustain the obviousness rejection of claim 1. We
also sustain the rejection of independent claims 8, 12, and 19 and dependent
claims 4, 5, 7, 10, 14, 16, 18, 21, and 23‒26, for which Appellant relies on
the same arguments. See Appeal Br. 16.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 4, 5, 7,
8, 10, 12,
14, 16, 18,
19, 21,
23‒26
112(b) Indefiniteness 1, 4, 5, 7, 8,
10, 12, 14,
16, 18, 19,
21, 23‒26
1, 4, 5, 7,
8, 10, 12,
14, 16, 18,
19, 21,
23‒26
103 Haim, Kim 1, 4, 5, 7, 8,
10, 12, 14,
16, 18, 19,
21, 23‒26

Overall
Outcome
1, 4, 5, 7, 8,
10, 12, 14,
16, 18, 19,
21, 23‒26

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CONCLUSION
Because we have sustained at least one ground of rejection with
respect to each claim on appeal, we affirm the decision of the Examiner
rejecting claims 1, 4, 5, 7, 8, 10, 12, 14, 16, 18, 19, 21, and 23‒26. See 37
C.F.R. § 41.50(a)(1).
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)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED