Ex parte Bertrand

• Decision Date: 26 January 2018
• Docket Number: 463,Appeal 2017-006467[1],Application 13/455
• Parties: Ex parte PIERRE BERTRAND, JING JIANG, and MICHAEL LIVSHITZ Technology Center 2400
• Court: Patent Trial and Appeal Board

Ex parte PIERRE BERTRAND, JING JIANG, and MICHAEL LIVSHITZ Appeal 2017-006467^[1] Technology Center 2400

Application 13/455, 463

United States Patent and Trademark Office, Patent Trial and Appeal Board

January 26, 2018

FILING DATE: 04/25/2012

Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and ADAM J. PYONIN Administrative Patent Judges.

DECISION ON APPEAL

PYONIN, Administrative Patent Judge.

This is a decision on appeal under 35 U.S.C. § 134(a) from a final rejection of claims 60 and 62^[2]. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.

STATEMENT OF THE CASE

Appellants' disclosure relates to wireless communication between user equipment and a base station in which "[e]ach user equipment signals the base station a scheduling recommendation" and "[t]he base station schedules downlink transmissions ... in response to the recommendations." Spec 3.4--14.^[3] Claims 60 and 62 are independent, and claim 60 is reproduced below for reference (with emphases added):

60. A base station comprising:

circuitry for scheduling an uplink communication with a user equipment based upon Sounding Reference Signal (SRS) and DeModulation Reference Signal (DMRS) signals received from said user equipment, said scheduling including a 2-step recursive maximum expansion calculation including initial subband allocation and expansion, subband gap filling; and

circuitry for signaling to said user equipment its scheduling grant.

The Examiner's Rejections

Claims 60 and 62 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Ans. 4.

Claims 60 and 62 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Chen (US 2009/0262695 A1; Oct. 22, 2009). Ans. 5.

ANALYSIS

A. 35 U.S.C. § 112, Second Paragraph

The Examiner finds independent claims 60 and 62 are indefinite, because the claims both recite "circuitry for, " but "fail[] to recite the element which performs each step." Ans. 6. The Examiner further finds Appellants' "specification describes at most a single circuitry for symbol processing, but makes no mention of'circuitry' for signaling, " and therefore "[t]he claimed 'circuitry for' improperly groups together two distinct invention elements; thereby, omiting essential subject matter." Id.

Appellants argue the Examiner erred, because the use of the phrase "circuitry for" in claims 60 and 62 does not create a gap between elements in the claims (see Reply Br. 3-5), and "it is not necessary to recite in the claim everything necessary to operate the device." Reply Br. 6, citing Deering v. Winona, 155 U.S. 286 (1894), and Special Equipment v. Coe, 324 U.S. 370 (1945).

We are persuaded by Appellants' arguments. We find one skilled in the art, having reviewed the disclosure, would consider the disclosed hardware as comprising electronic circuitry (see Spec 39:12-30 and Fig. 18) and would not consider the claims as containing gaps or omitting essential subject matter.

Accordingly, we reverse the Examiner's indefiniteness rejection of claims 60 and 62.

B. 35 U.S.C.§ 102(b)

Appellants argue the Examiner erred in rejecting independent claims 60 and 62 as anticipated by Chen, because the cited portions of Chen fail to teach or suggest the "2-step recursive maximum expansion calculation" recited by both claims. See Br. 29-30.

We agree. The Examiner finds that "[t]he claims recite[] 'circuitry for' language, which the Examiner interprets as intended use language and the claim language following the preposition 'for' is given no patentable weight" and further finds that "any 'circuitry' in the prior art that is also capable of performing the recited step discloses the claimed limitation." Ans. 7.

Appellants have successfully shown, however, "that the prior art structure did not inherently possess the functionally defined limitations of [Appellants'] claimed apparatus." In re Schreiber, 128 F.3d 1473, 1478 (Fed Cir. 1997) (emphasis added). We agree with Appellants that the Examiner has not pointed to any portion of Chen to show that Chen explicitly or inherently performs a "2-step recursive maximum expansion calculation" as claimed. Chen, therefore, does not anticipate the limitations of claims 60 and 62. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) ("All words in a claim must be considered in judging the patentability of that claim against the prior art.").

Accordingly, we are constrained by the record to reverse the Examiner's anticipation rejection of claims 60 and 62.

IN THE EVENT OF FURTHER PROSECUTION

Should there be further prosecution of this application, the Examiner may wish to consider whether the "circuitry for" claim language invokes the means plus function analysis under 35U.S.C. § 112, sixth paragraph. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (finding means plus function may apply if the claim limitation "fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function."); see also Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364 (Fed. Cir. 2003) and Linear Technology Corp. v. Impala Linear Corp., 379 F.3d 1311 (Fed. Cir. 2004).

DECISION

We reverse the Examiner's indefiniteness rejection of claims 60 and 62.

We reverse the Examiner's anticipation rejection of claims 60 and 62.

REVERSED.

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Notes:

^[1] Appellants identify Texas Instruments Incorporated as...