Samsung Electronics Co., Ltd.

Patent Trials and Appeals Board

Jan 20, 2022

2022000251 (P.T.A.B. Jan. 20, 2022)

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. 15/270,636 09/20/2016 Young-Bum KIM 0202-1577 7629 68103 7590 01/20/2022 Jefferson IP Law, LLP 1130 Connecticut Ave., NW, Suite 420 Washington, DC 20036 EXAMINER CASTANEYRA, RICARDO H ART UNIT PAPER NUMBER 2473 NOTIFICATION DATE DELIVERY MODE 01/20/2022 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 YOUNG-BUM KIM, INGALE MANGESH ABHIMANYU, GERT-JAN VAN LIESHOUT, YONG-JUN KWAK, JEONG-HO YEO, and JU-HO LEE Appeal 2022-000251 Application 15/270,636 Technology Center 2400 Before ALLEN R. MacDONALD, ERIC B. CHEN, and MICHAEL J. STRAUSS, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1, 8, 12, 18, 21, 23, 25, 27, and 39-48. 1 In this Decision, we refer to Appellant’s Appeal Brief (“Appeal Br.,” filed June 30, 2021); Reply Brief (“Reply Br.,” filed October 20, 2021), the Final Office Action (“Final Act.,” mailed January 28, 2021), the Examiner’s Answer (“Ans.,” mailed September 23, 2021); and the Specification (“Spec.,” filed September 20, 2016 as amended April 23, 2019). Rather than repeat the Examiner’s findings and Appellant’s contentions in their entirety, we refer to these documents. 2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Samsung Electronics Co., Ltd. Appeal Br. 2. Appeal 2022-000251 Application 15/270,636 2 Final Act. 1. Claims 2-7, 9-11, 13-17, 19, 20, 22, 24, 26, and 28-38 are canceled. Appeal Br. 11-14 (Claims App.) We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER According to Appellant “[t]he present disclosure relates to a pre-5th- generation (5G) or 5G communication system to be provided for supporting higher data rates beyond 4th generation (4G) communication system such as long term evolution (LTE).” Abstr. Appellant describes that “[o]ne of the requirements for 5G radio access technology (RAT) is energy efficiency. Therefore, the design of system information provisioning needs to address the energy efficiency requirement to minimize always ON periodic broadcast.” Appeal Br. 4; cf. Spec. ¶ 9. Appellant describes the overhead burden of 5G RAT as follows. Another aspect related to broadcasting of system information is high signaling overhead in the context of 5G RAT operation in higher frequency bands (above 6 GHz) where DL beam sweeping operation is inevitable to reach the coverage area of the cell. Broadcasting all the system information on the coverage beams which are subject to DL beam sweeping may lead to excessive signaling overhead. See as-filed Specification at paragraphs [0003] and [0009]-[0010]). Therefore, a design criterion for system information provisioning needs to address the signaling overhead aspect. To address some of the above-discussed requirements of advanced wireless communication systems, the present application provides methods and apparatuses for system information acquisition. Appeal Br. 5. Appeal 2022-000251 Application 15/270,636 3 Claim 1, reproduced below with bracketed labels added and disputed limitations emphasized in italics, is illustrative of the claimed subject matter: 1. A method performed by a terminal in a wireless communication system, the method comprising: [(i)] receiving, from a base station, system information (SI) for an initial access, the SI including [(a)] first information associated with one or more preambles, and [(b)] second information associated with a physical random access channel (PRACH) resource; [(ii)] [(a)] selecting a preamble for a SI request [(b)] based on the first information associated with the one or more preambles; [(iii)] transmitting, to the base station, [(a)] the preamble for the SI request based on the second information associated with the PRACH resource, [(b)] the preamble for the SI request being associated with other SI identified based on the SI for the initial access; and [(iv)] receiving, from the base station, a response message associated with the preamble, the response message including the other SI, [(v)] wherein [(a)] the other SI is not received through master information and the SI for the initial access and [(b)] the other SI includes at least one of information associated with an intra frequency cell reselection or information associated with an inter frequency cell reselection. Appeal Br. 11 (Claims App.). REFERENCES AND REJECTIONS The Examiner relies upon the following references: Name3 Reference Published Chun US 2011/0170503 A1 July 14, 2011 Aoyama US 2011/0237218 A1 Sept. 29, 2011 Lee US 2013/0083753 A1 Apr. 4, 2013 3 All reference citations are to the first named inventor only. Appeal 2022-000251 Application 15/270,636 4 Name3 Reference Published Rune US 2015/0256995 A1 Sept. 10, 2015 Cui US 2015/0312805 A1 Oct. 29, 2015 Frenne US 2016/0157267 A1 June 2, 2016 The Examiner rejects: a. claims 1, 8, 12, 18, 41, and 46 under 35 U.S.C. § 103 as obvious over the combined teachings of Rune, Chun, and Cui (Final Act. 6-20); b. claims 21, 23, 25, and 27 under 35 U.S.C. § 103 as obvious over the combined teachings of Rune, Chun, Cui, and Frenne (id. at 20- 24); c. claims 39, 42, 44, and 47 under 35 U.S.C. § 103 as obvious over the combined teachings of Rune, Chun, Cui, and Aoyama (id. at 24-28); and d. claims 40, 43, 45, and 48 under 35 U.S.C. § 103 as obvious over the combined teachings of Rune, Chun, Cui, and Lee (id. at 28- 31). We review the appealed rejections for error based upon the issues identified by Appellant, and in light of the contentions and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). The Examiner and Appellant focus their findings and contentions on claim 1 (see Appeal Br. 5-10; Ans. 30-33); so do we. Arguments not made are forfeited.4 Unless otherwise indicated, we adopt 4 See In re Google Tech. Holdings LLC, 980 F.3d 858, 863 (Fed. Cir. 2020) (“We interpret the Patent Office to be arguing that Google’s failure to raise its lexicography arguments, inadvertent or not, compels a finding of forfeiture.”); 37 C.F.R. § 41.37(c)(1)(iv) (2020) (“Except as provided for in Appeal 2022-000251 Application 15/270,636 5 the Examiner’s findings in the Final Office Action and the Answer as our own and add any additional findings of fact for emphasis. We address the rejections below. ANALYSIS As noted above, the Examiner rejects claim 1 as obvious over the combined teachings of Rune, Chun, and Cui. Final Act. 6-9. In particular, the Examiner finds Rune’s disclosure of a cellular network in which base stations (e.g., evolved Node Base transceiver stations or “eNBs”) that provide wireless terminals (e.g., user equipment or “UEs”) with a system access information table (i.e., SI table) including system access parameters for multiple nodes (i.e., eNBs) teaches the majority of limitations of claim 1. Final Act. 6-7 (citing Rune ¶¶ 21, 32, 37-38, 40, 44, 46-47, 58-60, 64, 66- 67, 93-95, 98, 99, 101-103; Table 1; Figs. 1, 2B, 4B). The Examiner finds that Rune’s disclosure is deficient in that it does not explicitly teach aspects of claim 1 including claim elements (i)(a), (ii)(b) and (v)(b). Id. at 7-8. To remedy the noted deficiencies the Examiner finds Chun’s disclosure of using a physical random access channel (“PRACH”) teaches the PRACH of claim 1’s element (i)(b) and Chun’s UE selection of a preamble appropriate to its system version or capabilities teaches claim 1’s element (ii)(b) of selecting a preamble based on the first information associated with the one or more preambles. Id. at 8 (citing Chun ¶¶ 30-31, 56, 102-105; Fig. 8). The Examiner determines “[i]t would have been obvious . . . to modify the invention of Rune to have the features, as taught §§ 41.41, 41.47 and 41.52, any arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal.”). Appeal 2022-000251 Application 15/270,636 6 by Chun, in order to perform a more effective communication procedure for mobile terminals of different release types that support different standards.” Id. (citing Chun ¶¶ 3, 21-22, 104). Addressing a deficiency of the combined teachings of Rune and Chun, the Examiner finds Cui’s disclosure of transmitting a system information block (“SIB”) with cell reselection parameters to a UE on demand teaches claim 1’s element (v)(b) requiring that the SIs include either information associated with an intra-frequency cell reselection or inter-frequency cell reselection. Id. at 8-9 (citing Cui ¶¶ 34-36, 46-47; Fig. 4). The Examiner reasons it would have been obvious to modify the combined teachings of Rune and Chun to incorporate the teachings of Cui “in order to enhance a cell reselection procedure in communication networks based on utilization of a parameter defined for different categories, improve network efficiency, and avoid the bottlenecks during cell reselection in Heterogeneous Networks (HetNet).” Id. at 9 (citing Cui ¶ 22). Appellant contends the applied references of Rune, Chun, and Cui do not disclose or render obvious claim 1’s elements (iii)(b), (v)(a), and (v)(b). Appeal Br. 5-6. We address Appellant’s contentions of Examiner error as follows. Claim 1’s element (iii)(b) - the preamble for the SI request being associated with other SI identified based on the SI for the initial access The Examiner finds claim 1’s element (iii)(b) is taught by Rune’s disclosure of “based on the preamble used to transmit the SI table request 74, the network node replies with an updated SI table 70’, where the preamble used in the SI table request 74 is based on the information (uplink resources) received in the table SI 70 for the initial access.” Final Act. 6-7 Appeal 2022-000251 Application 15/270,636 7 (citing Rune ¶¶ 37-38, 64, 66-67, 94; Table 1; Fig. 2B; emphasis omitted). Appellant contends the Examiner’s finding is erroneous, arguing as follows. [T]he Examiner cites paragraph [0044] of Rune . . . regarding the recited “other SI” (Office Action at page 7). However, paragraph [0044] of Rune merely describes that “additional information” may be received by a terminal therein after the initial access. However, paragraph [0044] of Rune fails to disclose or suggest that such “additional information” may be requested by the terminal by the use of a particular preamble. Therefore, paragraph [0044] of Rune, and Rune as a whole, fail to disclose the recited “other SI” requested by “the preamble for the SI request being associated with other SI identified based on the SI for the initial access,” as recited in claim 1. Appeal Br. 8. The Examiner responds, explaining as follows: Figure 2B of Rune shows that the SI request 74 (sixth line from top to bottom between the wireless terminal 2 and the network node 1) is transmitted by the wireless terminal to the network node, where the wireless terminal makes the choice to use a kind of preamble to transmit the SI table request 74 (Rune, [0037]- [0038], Table 1, [0040] ln 1-2. Fig. 2B, [0064], [0066]-[0067], “a request transmission may be very simple”, “could be a kind of preamble, similar to the ones used for Random Access transmissions in LTE”, [0094] ln 1-4). Based on the SI table request 74 (sixth line), the network node replies with an updated SI table 70’ (seventh line from top to bottom between the wireless terminal 2 and the network node 1), which indicates that the preamble used to transmit the SI table request 74 (sixth line) is associated with the updated SI table 70’ (seventh line) based on the SI for the initial access, since the preamble used in the SI table request 74 (sixth line) is based on the information received in the table SI 70 for the initial access (second line between the wireless terminal and the network node). The preamble used to transmit the SI table request 74 (sixth line) is associated with the updated SI table 70’ (seventh line), since the updated SI table 70’ is a response to the preamble used to transmit the SI table request 74. Thus, Rune discloses the amended feature “the preamble for Appeal 2022-000251 Application 15/270,636 8 the SI request being associated with other SI identified based on the SI for the initial access”. Furthermore, Rune discloses in paragraph [0059] that the wireless terminal uses a previously stored SI table with random access parameters to transmit the request for the current SI table (Rune, [0059] ln 9-16). Thereby, providing further support that the preamble used for the request is based on the SI table previously stored in an initial access, which includes random access parameters, such as RACH preamble root sequence information. Ans. 31-32. Appellant replies, arguing the Examiner’s explanation fails to address “the context of the recited ‘other SI.’ Instead, the Examiner directs the arguments to the use of a preamble to request SI.” Reply Br. 4. Appellant’s contention is unpersuasive of reversible Examiner error. During examination, pending claims are given their broadest reasonable interpretation consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under the broadest reasonable interpretation standard, claim terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). However, although we interpret claim limitations consistent with the specification, we do not import limitations from the specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)). During examination, when claims can be readily amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed. Zletz, 893 F.2d at 321. Construing claims broadly during prosecution is not unfair to the applicant because the applicant has the Appeal 2022-000251 Application 15/270,636 9 opportunity to amend the claims to obtain more precise claim coverage. Am. Acad. of Sci. Tech Ctr., 367 F.3d at 1364. Claim 1 recites receiving, from a base station, system information (“SI”) for an initial access and transmitting, to the base station, the preamble for the SI request, the preamble for the SI request being associated with other SI identified on the SI for the initial access. Appellant does not provide evidence or persuasive argument that the disputed limitation is entitled to a particular interpretation or that any of the terminology used has any special meaning. For example, Appellant does provide evidence of any special meaning attributable to the recited “being associated with” relationship between the SI request and the other SI or what is meant by the phrase “based on the SI for the initial access.” Thus, Appellant does not explain why the Examiner errs in finding “the preamble used in the SI table request 74 . . . is based on the information received in the table SI 70 for the initial access.” Ans. 31 (emphasis added). Moreover, Appellant fails to explain why Rune’s use of a previously stored SI table that includes system access parameters for multiple network nodes and that is updated based on an SI request for initial access fails to teach or suggest the disputed limitation of claim 1’s element (iii)(b). That is, other than allege Rune fails to teach the disputed limitation, Appellant fails to specifically address and persuasively explain why the Examiner’s explanation and findings presented in the Answer discussed above are erroneous. Therefore, on the record before us, we ascertain no error in the Examiner’s findings that Rune teaches or suggests that the preamble for the SI request is associated with other SI identified based on the SI for the initial access. Claim 1’s element (v)(a) - the other SI is not received through master information and the SI for the initial access Appeal 2022-000251 Application 15/270,636 10 The Examiner finds claim 1’s element (v)(a) is taught by Rune’s disclosure of receiving an updated SI table after an initial access “where the updated SI table 70’ is not received through master information and the SI for the initial access since in fact it is received for a subsequent access and for updated SI table information.” Final Act. 7 (citing Rune ¶¶ 44, 58, 60, 64, 94-95, 98, 99, 101-103; Figs. 2B, 4B; emphasis omitted). Appellant argues that “the ‘other SI’ in Rune can be received through SI for the initial access. Therefore, Rune fails to disclose or render obvious that ‘the other SI is not received through master information and the SI for the initial access,’ as is further recited in claim 1.” Appeal Br. 8 (emphasis omitted). The Examiner responds, finding Rune’s SI table update is received during a subsequent session, i.e., not using the SI providing the initial access of claim 1, and therefore is not received though master information and the SI for the initial access. The Examiner explains as follows. As recited in Rune, the wireless terminal returns to a previously used network, which has been accessed before. The wireless terminal requests updates of the SI table from a previous SI table, which the wireless terminal has stored from a previous access to the network (an initial access). In other words, the wireless terminal receives the SI table during an initial access to a network, and when returning to the network that was previously accessed, the wireless terminal requests the updates of the SI table in order to perform a subsequent access to the network, which is not the same as the initial access. Rune further shows in Fig. 4B the steps 39-42 and 47-49 for performing an initial access with the network. When the version information of the SI table changes, the wireless terminal request the updated SI table and performs a subsequent access, which is different from the initial access. Thus, as recited by Rune, the updated SI table is received by the wireless terminal after an initial access, where Appeal 2022-000251 Application 15/270,636 11 the updated SI table is not received through master information and the SI for the initial access, since it is received for a subsequent access and for updated SI table information. Ans. 30-31 (emphasis omitted). Appellant replies, although “acknowledg[ing] that Rune could be reasonably interpreted as describing updating previously-received SI, and thus a change in value for previously-received SI, [that] Rune does not disclose that the other SI is different in that it was ‘not received through master information and the SI for the initial access,’ as recited.” Reply Br. 3 (emphasis omitted). Appellant’s argument is unpersuasive of reversible Examiner error. In particular, Appellant fails to explain persuasively why the Examiner errs in finding Rune’s table update, received during a subsequent access, is not received through the SI of the prior access thereby teaching or suggesting the disputed limitation of claim 1’s element (v)(a). Claim 1’s element (v)(b) - the other SI includes at least one of information associated with an intra frequency cell reselection or information associated with an inter frequency cell reselection The Examiner finds Cui’s disclosure of transmitting cell reselection parameters to a UE on demand using a SIB message teaches the limitations of claim 1’s element (v)(b) including intra-frequency and inter-frequency data. Final Act. 8-9. Appellant argues Rune fails to disclose these limitations. Appeal Br. 8. Appellant’s argument is unpersuasive because it fails to address the Examiner’s finding that Cui, not the argued Rune disclosure, teaches the disputed limitation. See Nat’l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., Appeal 2022-000251 Application 15/270,636 12 357 F.3d 1319, 1336-37 (Fed. Cir. 2004) (rejecting argument directed at the wrong reference). SUMMARY For the reasons discussed above, Appellant’s arguments are unpersuasive of reversible Examiner error. Accordingly, we sustain the rejection of claim 1. We further sustain the rejection of independent claims 8, 12, and 18 which are argued on the basis of claim 1. Appeal Br. 9. We also sustain the rejections of dependent claims 21, 23, 25, 27, and 39-48 which are not argued separately with particularity. See id. at 9-10. CONCLUSION 1. The Examiner does not err in rejecting: a. claims 1, 8, 12, 18, 41, and 46 under 35 U.S.C. § 103 as obvious over the combined teachings of Rune, Chun, and Cui; b. claims 21, 23, 25, and 27 under 35 U.S.C. § 103 as obvious over the combined teachings of Rune, Chun, Cui, and Frenne; c. claims 39, 42, 44, and 47 under 35 U.S.C. § 103 as obvious over the combined teachings of Rune, Chun, Cui, and Aoyama; and d. claims 40, 43, 45, and 48 under 35 U.S.C. § 103 as obvious over the combined teachings of Rune, Chun, Cui, and Lee. 2. Thus, on this record, claims 1, 8, 12, 18, 21, 23, 25, 27, and 39-48 are not patentable. Appeal 2022-000251 Application 15/270,636 13 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 8, 12, 18, 41, 46 103 Rune, Chun, Cui 1, 8, 12, 18, 41, 46 21, 23, 25, 27 103 Rune, Chun, Cui, Frenne 21, 23, 25, 27 39, 42, 44, 47 103 Rune, Chun, Cui, Aoyama 39, 42, 44, 47 40, 43, 45, 48 103 Rune, Chun, Cui, Lee 40, 43, 45, 48 Overall Outcome 1, 8, 12, 18, 21, 23, 25, 27, 39-48 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. § 1.136(a)(1)(iv). AFFIRMED