UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`NOKIA OF AMERICA CORPORATION
`Petitioner
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`v.
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`INTELLECTUAL VENTURES II LLC
`Patent Owner
`____________________
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`Case IPR2018-01641
`Patent 8,897,828
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`PATENT OWNER INTELLECTUAL VENTURES II LLC’S
`PRELIMINARY RESPONSE TO PETITION
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`IPR2018-01641
`Patent 8,897,828
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`TABLE OF CONTENTS
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`I. 
`II. 
`
`B. 
`
`C. 
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`Introduction. ..................................................................................................... 1 
`The ’828 Patent Presents a Novel Approach to Transmit Power
`Control In a Wireless Network. ....................................................................... 2 
`A. 
`The Existing Approaches Did Not Provide a Particular Manner
`For Combining an Open Loop Scheme With a Closed Loop
`Scheme. ................................................................................................. 4 
`The ’828 Patent Describes a Combination of an Open Loop and
`Closed Loop Scheme with Control Dependent on Whether
`Accumulation Has Been Enabled. ......................................................... 5 
`The Prosecution History and Resulting Allowance Confirmed
`the Patentability of the ’828 Patent Claims. .......................................... 9 
`III.  Claim Construction. ....................................................................................... 12 
`IV.  The Board Should Deny Institution Under 35 U.S.C. § 325(d)
`Because the Petition Cites to Substantially the Same References
`Considered During Prosecution in Substantially the Same Way. ................. 13 
`A. 
`The Board is Authorized to Exercise its Discretion and Deny
`Institution Under § 325(d) When the Petition Cites to the Same
`References Considered During Prosecution and Fails to Present
`Any New Arguments. .......................................................................... 15 
`The Primary Reference, Zeira Was Extensively Considered
`During Prosecution and Deemed to Not Render Obvious
`Several Elements of the Independent Claims...................................... 17 
`Despite Including Whinnett in Each Ground, the Petition Relies
`Solely on Zeira For the Same Claim Elements Deemed
`Allowable During Prosecution and Fails to Present any New
`Arguments or Indicate That any Error Occurred During the
`Examination of the ’828 Patent. .......................................................... 19 
`Zeira Does Not Teach or Otherwise Render Obvious “receiving…by
`the UE if accumulation is enabled, an allocation of a scheduled uplink
`resource and a TPC command, wherein the TPC command is
`accumulated with other received TPC commands” and “receiving…
`by the UE if accumulation is not enabled, an allocation of a scheduled
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`B. 
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`C. 
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`V. 
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`Patent 8,897,828
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`uplink resource to transmit data at a power level calculated by the UE
`based on the path loss.” ................................................................................. 22 
`A.  Overview of Zeira. .............................................................................. 23 
`B. 
`Overview of Whinnett. ........................................................................ 24 
`C. 
`The Petition Does Not Establish That the Combination of Zeira,
`and Whinnett Renders Obvious Independent Claims 1, 8, 15,
`22, 29, or 36. ........................................................................................ 25 
`1. 
`The Petition Fails to Establish That the Combination of
`Zeira, and Whinnett Renders Obvious “receiving…by the
`UE if accumulation is enabled, an allocation of a
`scheduled uplink resource and a TPC command, wherein
`the TPC command is accumulated with other received
`TPC commands” and “receiving… by the UE if
`accumulation is not enabled, an allocation of a scheduled
`uplink resource to transmit data at a power level
`calculated by the UE based on the path loss.” .......................... 25 
`Zeira Does Not Teach the Specific Control Process
`Recited in the Claims That Depends on Whether
`Accumulation Has Been Enabled. ............................................ 26 
`The Petition Does Not Rely on Any Secondary
`References to Teach the Specific Control Process
`Dependent on Whether Accumulation Has Been Enabled
`as Recited in the Claims. ........................................................... 29 
`The Petition Fails to Explain Why the Combination of
`Zeira and Whinnett Would Disclose an Allocation of a
`Scheduled Uplink Resource and a TPC Command Being
`Received on a “single physical channel.” ................................. 29 
`Zeira Does Not Teach “receiving, by the UE,” or
`“sending, by the wireless network” “an indication of
`whether accumulation of transmit power control (TPC)
`commands is enabled” as recited in Claim 1 and Claim
`15 respectively. ......................................................................... 31 
`VI.  Conclusion. .................................................................................................... 33 
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`2. 
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`3. 
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`4. 
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`5. 
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`IPR2018-01641
`Patent 8,897,828
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`I.
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`Introduction.
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`The Board should deny institution of this proceeding because Petitioners do
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`not come close to meeting their burden. The Petition does not establish by a
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`preponderance of the evidence that claims 1-2, 5-6, 8-9, 12-13, 15-16, 19-20, 22-
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`23, 26-27, 29-30, 33-34, 36-37, or 40-41 of U.S. Patent 8,897,828 (“the ’828
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`patent”) are obvious over the proposed Grounds. Rather than presenting new art
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`and arguments not previously considered during prosecution, the Petition relies on
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`the exact same reference—Zeira—and rehashes arguments that the Examiner and
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`Board have already heavily considered for the independent claims. Because the
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`Petition presents arguments that are duplicative of those considered during
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`prosecution of the ’828 patent, the Board should deny institution under 35 U.S.C.
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`§ 325(d).
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`The Petition fails for the exact same reasons the claims of the ’828 patent
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`were found allowable—the prior art does not render obvious the claimed power
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`control process that depends on whether accumulation has been enabled for user
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`equipment (UE) transmission power. Simply put, the prior art does not describe
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`performing particular actions in response to whether or not accumulation has been
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`enabled. Nor has the Petition established that a “single physical channel” carrying
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`“an allocation of a scheduled uplink resource and a TPC command” or “receiving,
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`by the UE,” or “sending, by the wireless network” “an indication of whether
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`Patent 8,897,828
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`accumulation of transmit power control (TPC) commands is enabled” are obvious
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`in view of the art presented in the Petition. Thus, in view of the redundant and
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`flawed arguments presented in Petition, the Board should deny institution of an
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`inter partes review against the ’828 patent.
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`II. The ’828 Patent Presents a Novel Approach to Transmit Power Control
`In a Wireless Network.
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`Wireless communication networks require a balancing of signal power to
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`avoid several problems. For example, “radio signals transmitted with increased
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`power result in fewer errors when received than signals transmitted with decreased
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`power. Unfortunately, signals transmitted with excessive power may interfere with
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`the reception of other signals sharing the radio link.” (’828 patent, Ex. 1001, 1:18-
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`22.) In particular, this balancing is important for user equipment (UE) such as a
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`mobile device to communicate with a base station. (See id. at 1:43-49.)
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`One metric for determining a desired transmit power is to determine a target
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`signal to noise-plus-interference ratio (SNIR). (Id. at 1:50-51.) Using the target
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`SNIR, a UE may adjust its transmission power level depending on various factors,
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`such as the path loss detected on a communication channel. In this manner, the UE
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`may increase or decrease the transmit power to compensate for the path loss and to
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`achieve a target SNIR. (See id. at 2:5-32.)
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`Patent 8,897,828
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`Two schemes have been proposed in an attempt to adjust a UE’s
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`transmission power level: an open loop method and a closed loop method. In an
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`open loop scheme, the UE “monitors the received strength of signals it receives to
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`determine a power level at which it will transmit.” (Id. at 2:8-11.) For example,
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`the UE may receive a signal from a base station and determine the degree to which
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`the received signal’s power level has decreased from the transmitted power level
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`from the base station. Using this information, the UE may determine the path loss
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`of the channel and increase the transmission power level to compensate for the
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`decrease.
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`In the closed loop method, the UE may receive commands that “instruct the
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`UE to increase or decrease its transmitted power by a predetermined step dB
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`amount.” (Id. at 2:23-25.) These commands are referred to as transmit power
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`control (TPC) commands. The UE receives TPC commands from a network or a
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`base station and increases or decreases its transmission power level in response to
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`the received command. Traditionally, TPC commands were incremental or
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`decremental values as with a single step magnitude of, for example, 1 decibel (dB).
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`(Id. at 2:23-27, 6:57-60.)
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`As further explained in the ’828 patent, “[b]oth the closed loop scheme and
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`the open loop scheme have their disadvantages. Therefore, an improved method
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`and system are needed that better balances the competing goals of reducing errors
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`Patent 8,897,828
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`in a received signal while also reducing interference imposed on signals received at
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`other receivers. An improved method and system are also needed to better reduce
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`the overall residual SNIR fluctuations experienced by each users signal at a
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`receiver.” (Id. at 2:33-40.)
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`In response to these challenges, the inventors of the ’828 patent developed a
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`novel approach of combining open loop and closed loop control to set a user
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`equipment (UE) transmission power level. In particular, the inventors developed a
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`control scheme dependent on whether accumulation has been enabled. “If
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`accumulation is enabled, the UE may receive on a single physical channel an
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`allocation of a scheduled uplink resource and a TPC command. The TPC command
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`may be accumulated with other received TPC commands. A transmit power for an
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`uplink communication based on both the path loss and the accumulated TPC
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`commands may then be calculated by the UE. If accumulation is not enabled, the
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`UE may receive an allocation of a scheduled uplink resource to transmit data at a
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`calculated power level.” (Id. at Abstract.)
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`A. The Existing Approaches Did Not Provide a Particular Manner
`For Combining an Open Loop Scheme With a Closed Loop
`Scheme.
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`The ’828 patent describes past techniques of using solely open loop or solely
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`closed loop control schemes to determine a UE’s transmit power. The
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`disadvantage of using a solely open loop scheme, however, is that the “open loop
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`Patent 8,897,828
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`method is relatively slow at compensating for changes due to interfering signals
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`from other transmitters.” (Id. at 2:14-16.) Similarly, using a solely closed loop
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`control scheme may “demand a very high command update rate to adequately
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`compensate for fast channel fading because of the single-dB-step commands used.
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`At slower update rates, fast channel fading is not tracked adequately since a large
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`number of iterations and long delays are needed to compensate for a change in
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`power that is substantially larger than the dB-step value.” (Id. at 2:26-32.)
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` The inventors of the ’828 patent addressed these issues by providing a
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`particular method and system for strategically combining “aspects of both an open
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`loop scheme and a closed loop scheme. . .” (Id. at 7:64-66.)
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`B.
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`The ’828 Patent Describes a Combination of an Open Loop and
`Closed Loop Scheme with Control Dependent on Whether
`Accumulation Has Been Enabled.
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`The ’828 patent describes a particular power control scheme that includes
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`aspects from a closed loop system and an open loop system. In particular, the “UE
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`incorporates the TPC structure of a closed loop scheme and the path loss
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`estimation structure of an open loop scheme.” (Id. at 8:5-7.) Depending on the
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`accumulation setting, “[t]he UE accumulates 420 the TPC commands and uses the
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`accumulated TPC commands in part to set 436 the transmit power level for future
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`uplink transmissions 400.” (Id. at 9:58-62.)
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`Patent 8,897,828
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`(’828 Patent, Figure 4.)
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`When accumulation has been enabled, “the UE may calculate the transmit
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`power PTx(k) as shown below where K is the initial frame number determined
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`when the power control process begins; TPCi is −1 for a down TPC command, +1
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`for an up TPC command and 0 if no TPC command is received; and step is the
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`magnitude of the amount added to an accumulator upon receipt of each TPC
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`Patent 8,897,828
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`command. The transmit power PTx(k) may be updated for every frame period.” (Id.
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`at 8:66-9:6.)
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`(’828 Patent, 9:12-17.)
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`The accumulated TPC commands are represented by the factor:
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`(’828 Patent, 10:3-8.)
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`This accumulation aids in efficiently determining the transmit power when
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`“several TPC commands may be necessary to properly bring the UE's transmitted
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`power in line with the SNIR Target value. For example, if a path loss increases
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`from one frame to the next by 15 dB, the system will take 15 TPC commands to
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`compensate for the 15 dB fade. A UE accumulates the increase and decrease TPC
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`commands to determine a proper uplink transmit power level.” (Id. at 6:39-46.)
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`The ’828 patent also describes a scenario for when accumulation may not be
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`enabled. “During a period of inactivity on the uplink 402, TPC commands 418
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`may not have been received by the UE. The UE transmit power level for a
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`subsequent initial transmission 400 may be determined using current updates of the
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`open loop component. That is, the initial transmit power level may be determined
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`Patent 8,897,828
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`based on the beacon power level 428, the measured 432 received power level, and
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`optionally the interference measurements 430. The open loop component does not
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`require feedback, thus may continue to be updated every beacon transmission even
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`during the uplink transmission pause.” (Id. at 11:7-18.)
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`Further, the ’828 patent describes the disabling of accumulation: “The
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`history stored in the TPC accumulator may be stale. In some circumstances the
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`history may be considered useful and is not reset. Alternatively, the accumulated
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`TPC history could be used to set the uplink transmit power level but with some
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`excess power margin added to ensure a clean start to the loop. Alternatively, the
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`UE may decide to discard the accumulated TPC history and to reset it to a default
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`or initial value.” (Id. at 11:19-25.)
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`In this manner, the ’828 patent describes the combination of an open loop
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`and closed loop power scheme that also considered whether accumulation has been
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`enabled. As described in the ’828 patent, the combination aids in balancing the
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`“conflicting goals of reducing errors in a received signal while also reducing
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`interference imposed on signals received at other receivers.” (Id. at 2:35-37.)
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`Further, the ’828 patent describes a particular control scheme dependent on the
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`enablement of accumulation to provide further control in achieving a target power
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`transmission level. This invention is described in the claims. Independent claim 1
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`is representative and reproduced below:
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`Patent 8,897,828
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`1. A method performed by user equipment (UE), the method comprising:
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`receiving, by the UE, an indication of whether accumulation of
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`transmit power control (TPC) commands is enabled;
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`determining, by the UE, a path loss of a downlink channel;
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`receiving, on a single physical channel by the UE if accumulation is
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`enabled, an allocation of a scheduled uplink resource and a TPC command,
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`wherein the TPC command is accumulated with other received TPC
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`commands;
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`calculating, by the UE if accumulation is enabled, transmit power in
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`association with an uplink communication based on both the path loss and
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`the accumulated TPC commands; and
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`receiving, on the single physical channel by the UE if accumulation is
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`not enabled, an allocation of a scheduled uplink resource to transmit data at
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`a power level calculated by the UE based on the path loss.
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`(Id. at 13:36-55 (emphasis added).)
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`C. The Prosecution History and Resulting Allowance Confirmed the
`Patentability of the ’828 Patent Claims.
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`Upon consideration of the subject matter of the ’828 patent, the claims of the
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`’828 patent were deemed allowable by the Examiner. During examination, the
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`Examiner extensively cited to WO 00/57574 to Zeira. As indicated by the Petition,
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`Patent 8,897,828
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`the WO version of Zeira has “nearly an identical specification” to U.S. Patent
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`6,728,292 to Zeira used as the primary reference in the Petition. (Petition, p. 11.)
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`The application first included a first set of claims directed to calculating
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`transmit power level based on a path loss determination and a TPC command. (See
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`’828 Patent File History, Ex. 1002, pp. 1-49.) The Examiner applied Zeira during
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`the examination of the ’828 patent. (See id. at 342-53, 454-74, 513-31, 567-92.) In
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`particular, the Examiner applied Zeira in four Office Action rejections before the
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`Applicant ultimately appealed the rejections. (See id., pp. 629-651.) The Board
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`then considered both Zeira and Chen and affirmed the Examiner. (See id. at 970-
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`78.)
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`In response to the Board’s decision, the Applicant submitted new claims that
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`were ultimately allowed without amendment.1 Upon examining these claims, the
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`Examiner issued a Notice of Allowance. (Id. at 1068-75.) In the Notice of
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`Allowance, the Examiner explicitly stated that:
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`1 The Examiner applied supplied a rejection under § 112(a) and a
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`nonstatutory double patenting rejection after reviewing these new claims. The
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`Applicant provided specification evidence to overcome the § 112(a) rejection and a
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`terminal disclaimer to overcome the double patenting rejection without amending
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`the claims. (See ’828 Patent File History, pp. 1010-1015, 1036-1051.)
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`Patent 8,897,828
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`[N]one of the prior art cited alone or in combination provides
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`the motivation to teach receiving, … by the UE if accumulation
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`is enabled, an allocation of a scheduled uplink resource and a
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`TPC command, wherein the TPC command is accumulated
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`with other received TPC commands;
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`calculating, by the UE if accumulation is enabled,
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`transmit power in association with an uplink communication
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`based on both the path loss and the accumulated TPC
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`commands; and
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`receiving, … by the UE if accumulation is not enabled,
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`an allocation of a scheduled uplink resource to transmit data at
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`a power level calculated by the UE based on the path loss.
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`(Id. at 1074 (emphasis added).)
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`These claim elements are herein referred to as the “Allowed Claim
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`Elements.” Having explicitly considered Zeira during examination, the Examiner
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`allowed the claims in view of the references. The Examiner’s statement in the
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`Notice of Allowance represents the Office’s position that Zeira, either alone or in
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`combination with other considered reference, fail to teach or otherwise render
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`obvious at least the above claim elements.
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`III. Claim Construction.
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` IPR2018-01641
`Patent 8,897,828
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`Petitioner appears to argue that the independent method claims have
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`“mutually exclusive steps,” but ultimately “relies on the ordinary reading of the
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`claims in light of the specification.” (See Petition, pp. 14-16.) Patent Owner agrees
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`that an ordinary reading of the claims is warranted and a specific construction is
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`not necessary. However, the Petition also vaguely cites to Ex parte Schulhauser
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`and appears to mischaracterize the holding stated in the opinion as being allegedly
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`applicable to the analysis of the ’828 patent. Patent Owner disagrees.
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`The Petition cites to Ex parte Schulhauser as allegedly holding that a
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`method claim with mutually exclusive steps “covers at least two methods, one in
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`which the prerequisite condition for the [first] step is met and one in which the
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`prerequisite condition for the [second] step is met.” (Petition, 16 citing Ex parte
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`Schulhauser, 2016 WL 6277792, at *4.) The Petition argues that “under Ex parte
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`Schulhauser, the method claims of the ’828 patent should have never issued.” (Id.,
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`p. 14.) This argument is incorrect. Ex parte Schulhauser stands for the premise
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`that if a method claim can be separated into “two methods,” an Examiner
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`providing evidence showing obviousness of one method is not required to show
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`obviousness of the second method under the broadest reasonable interpretation
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`standard. (Ex parte Schulhauser at 9.) This holding is not relevant here because,
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`during prosecution of the ’828 patent, the Examiner held that both conditional
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`claim elements were missing from the prior art and thus were patentable. (’828
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`Patent File History, pp. 1068-75.) While the Petition argues that the Examiner
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`cited “Zeira for ‘calculating, at the remote transceiver, a transmit power level
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`…based upon the path loss and the TPC command’” (Petition, p. 14.), the Notice
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`of Allowance indicates that the allowed claims were patentable over the citations
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`from Zeira. (’828 Patent File History, pp. 1068-1075.) In this manner, Petitioner is
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`incorrect in stating that “the method claims of the ’828 patent should have never
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`issued.” (Petition, p. 15.)
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`Thus, the holding of Ex parte Schulhauser is inapplicable to the analysis of
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`the ’828 patent because the Examiner did not identify “two methods” or indicate
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`that either “branch” would be obvious. Rather, the Examiner expressly stated that
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`the overall conditional control process was allowable, and further indicated that
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`each branch was also allowable. Thus, the Examiner did nothing inconsistent with
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`Ex parte Schulhauser and committed no error in allowing the claims.
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`IV. The Board Should Deny Institution Under 35 U.S.C. § 325(d) Because
`the Petition Cites to Substantially the Same References Considered
`During Prosecution in Substantially the Same Way.
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`The Board should exercise its discretion under § 325(d) and deny institution
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`because each of the Grounds in the Petition present the same or substantially the
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`same prior art and arguments that were previously considered by the Office.
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`(Hologic, Inc. v. bioMerieux, Inc., IPR2018-00568, Paper 9 at 11 (PTAB Aug. 7,
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`2018) (quoting 35 U.S.C. § 325(d)).)
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`The Petition presents two Grounds that rely on Zeira—a reference
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`extensively considered during prosecution. In each of the Grounds, the Petition
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`fails to set forth any obviousness positions that are substantively different from
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`those already considered by the Office. For example, for Ground 1, the Petition
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`relies on Zeira to teach the elements of independent claims 1, 8, 15, 22, 29, or 36 in
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`substantially the same manner used by the Office. (See Petition, pp. 1, 5; ’828
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`Patent File History, pp. 342-53, 454-74, 513-31, 567-93.) Yet, the independent
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`claims were deemed patentable over Zeira, and the Petition never presents this
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`reference in any new light. While the Petition also relies on another reference,
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`Whinnett, the Petition never relies on this reference to teach the independent claim
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`elements deemed patentable by the Examiner in the Notice of Allowance. (See
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`Petition, pp. 33-42.)
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` Because the petition has relied on the same reference
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`considered during prosecution, has failed to identify any problems with the original
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`prosecution, and fails to raise any new arguments in view of the prosecution
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`history, the Board should deny institution of the Petition on both Grounds.
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`A. The Board is Authorized to Exercise its Discretion and Deny
`Institution Under § 325(d) When the Petition Cites to the Same
`References Considered During Prosecution and Fails to Present
`Any New Arguments.
`Institution of an inter partes review is always discretionary. See Harmonic
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`Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016). When a petition
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`presents “the same or substantially the same prior art or arguments [that]
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`previously were presented to the Office,” § 325(d) provides the Board with
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`“express discretion” to deny it on that basis. Hologic, Inc. v. bioMerieux, Inc.,
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`IPR2018-00568, Paper 9 at 11 (PTAB Aug. 7, 2018); see also Becton, Dickenson
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`and Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17-18 (PTAB,
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`Dec. 15, 2017) (informative). The Board has an interest in “conserving the
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`resources of the Office and granting patent owners repose on issues and prior art
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`that have been considered previously” and may therefore deny the petition when
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`the petition presents the same prior art or arguments previously considered. Dorco
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`Co., Ltd. v. The Gillette Co., LLC, IPR2017-00500, Paper 7 at 14 (PTAB June 21,
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`2017).
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`In Becton, Dickinson & Co. v. B. Braun Melsungen AG, the Board provided
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`informative guidance detailing several factors to consider when denying institution
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`under § 325(d). These factors include:
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` (a) the similarities and material differences between the
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`asserted art and
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`the prior art
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`involved during
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`examination;
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`(b) the cumulative nature of the asserted art and the prior
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`art evaluated during examination;
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`(c) the extent to which the asserted art was evaluated
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`during examination, including whether the prior art was
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`the basis for rejection;
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`(d) the extent of the overlap between the arguments made
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`during examination and the manner in which Petitioner
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`relies on the prior art or Patent Owner distinguishes the
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`prior art;
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`(e) whether Petitioner has pointed out sufficiently how
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`the Examiner erred in its evaluation of the asserted prior
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`art; and
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`(f) the extent to which additional evidence and facts
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`presented in the Petition warrant reconsideration of the
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`prior art or arguments.
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`Becton, Dickinson, IPR2017-01586, Paper 8 at 17-18 (P.T.A.B. Dec. 15,
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`2017) (informative).
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`Here, the Becton, Dickinson factors weigh in favor of denying institution
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`under § 325(d).
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`B.
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`The Primary Reference, Zeira Was Extensively Considered
`During Prosecution and Deemed to Not Render Obvious Several
`Elements of the Independent Claims.
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`Because the Petition relies on the same reference considered during
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`prosecution and fails to present any new arguments, each of the Becton, Dickinson
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`factors weigh in favor of denying institution under § 325(d). The Grounds in the
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`Petition do not purport to offer substantive obviousness positions that were not
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`already addressed during prosecution. Instead, the Petition’s arguments with
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`respect to Zeira and the Allowed Claim Elements directly overlap with those
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`considered during prosecution. Zeira was heavily considered during examination
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`and is used in the Petition to address the same claim elements that were previously
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`deemed patentable. (See Petition, pp. 33-42; ’828 Patent File History, pp. 342-353,
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`454-474, 513-531, 567-592.) While the Grounds in the Petition also rely on
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`Whinnett, the Petition does not rely on Whinnett to address any of the Allowed
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`Claim Elements. (See Petition, pp. 33-42.)
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`As admitted in the Petition, the Examiner and Board exhaustively examined
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`the claims in view of Zeira2—the same reference appearing in four Office Actions
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`and an appeal. (See ’828 Patent File History, pp. 342-353, 454-474, 513-532, 567-
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`592, 970-978.) After this extensive examination and in response to amendments
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`made by the applicant, the Examiner ultimately allowed the patented claims even
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`in view of Zeira. (See id. at 1068-75.) In the Notice of Allowance, the Examiner
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`explicitly noted that :
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`[N]one of the prior art cited alone or in
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`combination provides the motivation to teach receiving,
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`… by the UE if accumulation is enabled, an allocation of
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`a scheduled uplink resource and a TPC command,
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`wherein the TPC command is accumulated with other
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`received TPC commands;
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`calculating, by the UE if accumulation is enabled,
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`transmit power
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`in
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`association with
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`an uplink
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`2 During prosecution, the Examiner applied the WO version of Zeira (WO
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`00/57574) which is substantially identical to U.S. Patent No. 6,728,292 to Zeira as
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`admitted in the Petition. (Petition, p. 11.)
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`communication based on both the path loss and the
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`accumulated TPC commands; and
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`receiving, … by the UE if accumulation is not
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`enabled, an allocation of a scheduled uplink resource to
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`transmit data at a power level calculated by the UE based
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`on the path loss.
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`(Id. at 1074 (emphasis added).).
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`Thus, the Examiner has already considered Zeira and has concluded that the
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`claims are patentable over this references as well as the other references listed on
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`the face of the ’828 patent.
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`C. Despite Including Whinnett in Each Ground, the Petition Relies
`Solely on Zeira For the Same Claim Elements Deemed Allowable
`During Prosecution and Fails to Present any New Arguments or
`Indicate That any Error Occurred During the Examination of the
`’828 Patent.
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`As previously discussed, the claims of the ’828 patent were deemed
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`patentable based on the Allowed Claim Elements in view of Zeira. The Allowed
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`Claim Elements highlight a conditional control process dependent on whether
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`accumulation has been enabled. In view of this allowed control process, the
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`Petition fails to present any new arguments or indicate that any error occurred
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`during the examination of the ’828 patent. Instead, the Petition’s Grounds
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`introduce another reference, Whinnett, on which it never relies to teach the
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`conditional control process in the Allowed Claim Elements, that was deemed
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`allowable over the other cited references during prosecution.3
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`Rather than citing to new references, such as Whinnett, the Petition relies
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`solely on Zeira as allegedly teaching the conditional control process of the
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`Allowed Claim Elements. For example, while Ground 1 of the Petition includes a
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`combination of Zeira and Whinnett, when the Petition addresses claim Element
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`[1.3] and [1.5], the Petition only uses Zeira and advances the same obviousness
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`arguments previously raised and overcome during prosecution. (Petition, pp. 33-
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`42.) The Petition relies on Whinnett only for allegedly teaching “receiving, on a
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`single physical channel by the UE … an allocation of a scheduled uplink
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`resources.” (Petition, pp. 35-36, 41-42.) In this manner, the Petition does not cite
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`to Whinnett to teach the claimed conditional control scheme. This lack of reliance
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`on Whinnett is even more distinctly demonstrated for claim element [1.4]. The
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`Petition again faces the same issue—relying solely on Zeira for the same teachings
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`and in the same manner raised and overcome during prosecution. (Petition, pp. 38-
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`39.)
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`3The Allowed Claim Elements refer to Claim 1 in the Notice of Allowance
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`and correspond to Elements [1.3], [1.4], and [1.5] as referenced in the Petition.
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`(See Petition, pp. 33-42; ’828 Patent File History, p. 1074.)
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`The Petition also fails to present a credible