Ex Parte Singh et al

Patent Trial and Appeal Board

Sep 19, 2018

14327825 (P.T.A.B. Sep. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/327,825 07/10/2014
28004 7590 09/21/2018
SPRINT
6391 SPRINT PARKWAY
KSOPHTOI01-Z2100
OVERLAND PARK, KS 66251-2100
FIRST NAMED INVENTOR
Jasinder Pal Singh
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
10354 1093
EXAMINER
LINDENBAUM, ALAN LOUIS
ART UNIT PAPER NUMBER
2466
NOTIFICATION DATE DELIVERY MODE
09/21/2018 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):
6450patdocs@sprint.com
steven.j.funk@sprint.com
sprint@setterroche.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASINDER PAL SINGH, SIDDHARTH OROSKAR,
and MAULIK K. SHAH
Appeal 2018-001130
Application 14/327 ,825
Technology Center 2400
Before CARL W. WHITEHEAD JR., JOSEPH P. LENTIVECH, and
NABEEL U. KHAN, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision to reject claims 1, 3, 4, 6, 7, 9--11, 13, 14, 16, 17, 19,
and 20, all the claims pending in the application. 2 We have jurisdiction over
the pending claims under 35 U.S.C. § 6(b ).
1 According to Appellants, the real party in interest is Sprint
Communications Company L.P. App. Br. 2.
2 In the Appeal Brief, Appellants state "[ c ]laims 1--4, 6, 7, 9--14, 16, 1 7, 19,
and 20 are pending in the application." App. Br. 2. However, claims 2 and
12 (as well as claims 8, 15, and 18) were cancelled in the Amendment filed
May 24, 2016 ("Amendment"). Amendment 2-11; see also App. Br. 10-17
(Claims App'x).
Appeal 2018-001130
Application 14/327,825
We reverse and enter a new ground of rejection under 37 C.F.R.
§ 4I.50(b).
STATEMENT OF THE CASE
Appellants 'Invention
In describing Appellants' invention, the Specification provides:
A Long Tenn Evolution (LTE) User Equipment (UE)
stores a WiFi over L TE communication priority as a current
communication priority, and in response, wirelessly exchanges
user data through a WiFi access point. The L TE UE also
wirelessly receives and processes L TE service enhancement data
from an L TE access point. In response to processing the L TE
service enhancement data, the L TE UE stores an L TE over WiFi
communication priority as the current communication priority.
In response to the L TE over WiFi communication priority, the
L TE UE wirelessly exchanges additional user data through the
L TE access point using an L TE service enhancement.
Spec. ,r 4. Claim 1, which is illustrative, reads as follows:
1. A method of operating a Long Term Evolution (LTE) User
Equipment (UE) comprising:
storing a WiFi over L TE communication pnonty as a
current communication priority, and in response, wirelessly
exchanging user data through a WiFi access point;
in response to exchanging the user data through the WiFi
access point, wirelessly receiving and processing a carrier
aggregation Quality of Service (QoS) from an LTE System
Information Block responsive to WiFi signal strength being
below an L TE scan threshold;
storing an L TE over WiFi communication priority as the
current communication priority in response to the carrier
aggregation QoS above a WiFi-to-LTE handover threshold; and
in response to storing the L TE over WiFi communication
priority as the current communication priority, wirelessly
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Application 14/327,825
exchanging additional user data through the L TE access point
using a carrier aggregation service.
Rejections
Claims 1, 4, 7, 10, 11, 13, 14, 17, and 20 stand rejected under 35
U.S.C. § I02(a)(2) as being anticipated by Wang et al. (US 2014/0079022
Al; published Mar. 20, 2014) ("Wang"). 3 Final Act. 2-5.
Claims 3, 6, 9, 13, 16, and 19 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the combination of Wang and "Admitted Prior Art
in the Background Section of Applicants published Specification"
("AAP A"). Final Act. 6-8.
Issue on Appeal
Did the Examiner err in finding that Wang discloses the limitations
recited in claim 1?
ANALYSIS
Appellants contend Wang fails to disclose "wirelessly receiving and
processing a carrier aggregation Quality of Service (QoS) from an LTE
System Information Block responsive to WiFi signal strength being below
an LTE scan threshold;" "storing an LTE over WiFi communication priority
as the current communication priority in response to the carrier aggregation
QoS above a WiFi-to-LTE handover threshold;" and "wirelessly exchanging
3 The heading of the rejection lists claims 1, 2, 4, 7, 10-12, 14, 17, and 20.
Final Act. 2. However, as discussed supra, claims 2 and 12 were cancelled
in the Amendment. Amendment filed May 24, 2016.
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Application 14/327,825
additional user data through the L TE access point using a carrier aggregation
service," as recited in claim 1. App. Br. 6-7; Reply Br. 2-3. In particular,
Appellants argue Wang does not disclose "receiving and processing a carrier
aggregation Quality of Service (QoS) from an LTE System Information
Block," as required by claim 1. Id. According to Appellants, "the term
'carrier aggregation QoS' is described in the Specification to mean QoS
information for the available carrier aggregation services" such as intra-
spectrum contiguous-frequency, intra-spectrum non-contiguous frequency,
inter-spectrum non-contiguous frequency. Reply Br. 2 ( citing Spec. ,r 18).
Appellants argue Wang's teaching of determining a quality of service of a
radio access network (RAN) based on received rate thresholds and/or
congestion factors is not equivalent to determining a quality of service based
on available carrier aggregation services. Reply Br. 3. We agree.
Wang relates to implementing wireless offloading. Wang Abstract.
Wang discloses that the wireless offloading "may be achieved by using
carrier aggregation between one or more 3GPP carriers and Wi-Fi carriers."
Wang ,r 81. The Examiner finds Wang discloses that the WTRU (wireless
transmit/receive unit) may determine whether a 3GPP interface is congested
from reception of an indication on a broadcast channel (Wang ,r 107) and,
therefore, that Wang discloses "wirelessly receiving and processing a carrier
aggregation Quality of Service (QoS) from an LTE System Information
Block," as recited in claim 1. Ans. 10. However, even if we assume that
Wang's determination of whether the 3GPP interface is congested also
discloses the claimed carrier aggregation QoS, we agree with Appellants
(App. Br. 6-7) that Wang fails to disclose that the "carrier aggregation QoS"
is received and processed "responsive to WiFi signal strength being below
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Appeal 2018-001130
Application 14/327,825
an LTE scan threshold," as required by claim 1. Instead, Wang discloses
receiving and processing the "carrier aggregation QoS" in association with
determining whether the WTRU should initiate Wi-Fi scanning as part of a
process for connecting to a wireless access point. Wang ,r 107. Although
we agree with the Examiner (Ans. 11), that Wang discloses that the WTRU
transmits a measurement report in response to WiFi signal strength being
below a threshold (Wang ,r 166), Wang does not disclose that the transmitted
measurement report includes a carrier aggregation Quality of Service (QoS),
as required by claim 1. Further, Wang discloses that the measurement report
is transmitted to the network from the WTRU and not an L TE System
Information Block, as also required by claim 1.
Accordingly, we do not sustain the Examiner's rejection of claim 1;
independent claim 11, which recites corresponding limitations; and claims 1,
4, 7, 10, 13, 14, 17, and 20, which depend from claims 1 and 11.
Claims 3, 6, 9, 13, 16, and 19 stand rejected under 35 U.S.C. § 103
based on Wang and AAP A. Final Act. 6-8. The Examiner does not find
AAP A cures the deficiencies in the disclosure of Wang discussed supra
regarding claim 1. Accordingly, we do not sustain the rejection of claims 3,
6, 9, 13, 16, and 19 for the reasons discussed above with respect to claim 1.
NEW GROUND OF REJECTION
Pursuant to our authority under 3 7 C.F .R. § 41.50(b ), we set forth a
new ground of rejection for claims 1, 3, 4, 6, 7, 9--11, 13, 14, 16, 17, 19, and
20 for failing to satisfy the written description requirement under 35 U.S.C.
§ 112(a).
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Appeal 2018-001130
Application 14/327,825
A description adequate to satisfy 35 U.S.C. § 112(a) "must 'clearly
allow persons of ordinary skill in the art to recognize that [the inventor]
invented what is claimed.' In other words, the test for sufficiency is whether
the disclosure of the application relied upon reasonably conveys to those
skilled in the art that the inventor had possession of the claimed subject
matter as of the filing date." Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (en bane) (citation omitted, alteration in
original). The "test requires an objective inquiry into the four comers of the
specification from the perspective of a person of ordinary skill in the art.
Based on that inquiry, the specification must describe an invention
understandable to that skilled artisan and show that the inventor actually
invented the invention claimed." Id. The exact level of detail required
depends upon "the nature and scope of the claims and on the complexity and
predictability of the relevant technology." See id. However, "a description
that merely renders the invention obvious does not satisfy the requirement."
Id. at 1352; see also Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571-
72 (Fed. Cir. 1997).
Claim 1 recites, inter alia:
[i]n response to exchanging the user data through the WiFi
access point, wirelessly receiving and processing a carrier
aggregation Quality of Service (QoS) from an LTE System
Information Block responsive to WiFi signal strength being
below an L TE scan threshold; [ and]
storing an L TE over WiFi communication priority as the
current communication priority in response to the carrier
aggregation QoS above a WiFi-to-LTE handover threshold.
Claims App 'x. Appellants' Specification does not define "carrier
aggregation Quality of Service" or provide any substantive explanation as to
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Application 14/327,825
how the carrier aggregation QoS is determined or processed. Further, the
Specification fails to provide any description or explanation as to how the
carrier aggregation QoS is determined to be below an LTE scan threshold.
As such, we find the Specification fails to reasonably convey to those skilled
in the art that the inventor had possession of the claimed subject matter, as
required under 35 U.S.C. § 112(a).
Accordingly, we reject claim 1; independent claim 11, which recites
corresponding limitations; and claims 3, 4, 6, 7, 9, 10, 13, 14, 16, 17, 19, and
20, which depend from claims 1 and 11, under 35 U.S.C. § 112(a) for failing
to satisfy the written description requirement.
DECISION
We reverse the Examiner's rejection of claims 1, 4, 7, 10, 11, 13, 14,
17, and 20 under 35 U.S.C. § 102(a)(2).
We reverse the Examiner's rejection of claims 3, 6, 9, 13, 16, and 19
under 35 U.S.C. § 103.
We enter a new ground of rejection for claims 1, 3, 4, 6, 7, 9-11, 13,
14, 16, 17, 19, and 20 under 35 U.S.C. § 112(a).
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides that "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides: that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
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Appeal 2018-001130
Application 14/327,825
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be remanded
to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record.
37 C.F.R. § 4I.50(b).
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
REVERSED
37 C.F.R. § 4I.50(b)
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