APPLE INC.Download PDFPatent Trials and Appeals BoardMay 20, 202014869325 - (D) (P.T.A.B. May. 20, 2020) Copy Citation 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. 14/869,325 09/29/2015 Deepankar Bhattacharjee 30134/19902(P24528US1) 5288 114746 7590 05/20/2020 Apple Inc. -- FKM 150 Broadway Suite 702 New York, NY 10038 EXAMINER RENNER, BRANDON M ART UNIT PAPER NUMBER 2419 NOTIFICATION DATE DELIVERY MODE 05/20/2020 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): fhall@fkmiplaw.com mmarcin@fkmiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DEEPANKAR BHATTACHARJEE, SREEVALSAN VALLATH, and PRATEEK SHARMA Appeal 2019-002133 Application 14/869,325 Technology Center 2400 Before ST. JOHN COURTENAY III, JUSTIN BUSCH, and JASON J. CHUNG, Administrative Patent Judges. BUSCH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–3, 5–14, and 16–20, which are all the claims pending. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and ENTER A NEW GROUND OF REJECTION. See 37 C.F.R. § 41.50(b). 1 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 Apple Inc. Appeal Br. 2. Appeal 2019-002133 Application 14/869,325 2 CLAIMED SUBJECT MATTER The claimed subject matter relates to a UE that is connected to two networks, the UE tuning away from the first network to the second network and, while tuned to the second network, losing synchronization with the first network then, after tuning back to the first network, determining whether to perform a network resynchronization operation based on whether a predetermined condition is met. Spec. ¶¶ 2–4, 12, 22–24, Abstract. By the UE performing the network resynchronization operation only when the predetermined condition is met, the system reduces power and resource consumption at both the UE and the network node. Spec. ¶ 12. Claims 1, 13, and 20 are independent claims, and claim 1 is reproduced below: 1. A method comprising: at a user equipment having a transceiver configured to enable the user equipment to establish a connection with a first network and a second network: establishing a connection to each of the first network and the second network; tuning away from the first network to the second network, wherein the tuning away causes a loss of synchronization with the first network; tuning back to the first network from the second network; after tuning back to the first network, determining whether to perform a network operation to reestablish synchronization with the first network based on whether a predetermined condition is met, wherein the determining whether the predetermined condition is met includes determining an amount of data in an uplink buffer of the user equipment; and performing the network operation to reestablish synchronization with the first network only when the predetermined condition is met. Appeal 2019-002133 Application 14/869,325 3 REJECTIONS Claims 1–3, 7, 12–14, 16, and 20 stand rejected under 35 U.S.C. § 103 as obvious in view of Tabet (US 2013/0315119 A1; Nov. 28, 2013) and Lundén (US 2016/0165642 A1; June 9, 2016). Final Act. 2–5. Claims 5 and 8 stand rejected under 35 U.S.C. § 103 as obvious in view of Tabet, Lundén, and Chang (US 2016/0088681 A1; Mar. 24, 2016). Final Act. 5–7. Claim 6 stands rejected under 35 U.S.C. § 103 as obvious in view of Tabet, Lundén, and Gheorghiu (US 2014/0307623 A1; Oct. 16, 2014). Final Act. 7–8. Claims 9–11, 17, and 19 stand rejected under 35 U.S.C. § 103 as obvious in view of Tabet, Lundén, and Shah (US 2016/0037578 A1; Feb. 4, 2016). Final Act. 8–10. Claim 18 stands rejected under 35 U.S.C. § 103 as obvious in view of Tabet, Lundén, Shah and Bertrand (US 2008/0075036 A1; Mar. 27, 2008). Final Act. 10. OPINION The Examiner rejects independent claims 1, 13, and 20 as obvious in view of Tabet and Lundén. Final Act. 3–4. The Examiner finds Tabet teaches “after tuning back to the first network, determining whether to perform a network operation to reestablish synchronization with the first network based on whether a predetermined condition is met” and “performing the network operation to reestablish synchronization with the first network only when the predetermined condition is met,” as recited in independent claims 1, 13, and 20. Final Act. 3–4 (citing Tabet ¶¶ 36, 41, Fig. 6). Appellant does not contest this finding. At issue on appeal is Appeal 2019-002133 Application 14/869,325 4 whether the combination of Tabet and Lundén teaches or suggests “determining whether the predetermined condition is met includes determining an amount of data in an uplink buffer of the user equipment,” as recited in independent claims 1, 13, and 20. The Examiner concludes Appellant’s claim language is very broad and fails to “tie together when the synchronization occurs with respect to the predetermined condition,” and the claims do not define that “the re- synchronization occurs (or does not occur) when the predetermined condition is met.” Ans. 4. The Examiner concludes the claims do not define the predetermined condition and, therefore, “the claims do not require a cause and effect,” but merely a sequence of events—i.e., receiving buffer information prior to re-establishing synchronization. Ans. 5–6. Appellant argues the Examiner’s interpretation of the claims is incorrect because the claims specifically recite that the network operation to resynchronize is performed only when the predetermined condition is met. Reply Br. 3. Appellant asserts the claim language therefore unambiguously recites “when the synchronization occurs with respect to the predetermined condition and the Examiner’s interpretation of [the] claim[s] is simply an inaccurate representation of what is explicitly recited.” Reply Br. 3. Appellant also contends the Examiner’s interpretation that the claims merely require a sequence of events is similarly incorrect because the claims recite that determining an amount of data in a buffer is part of the recited determination of whether to perform the resynchronization operation. Reply Br. 3–4. We agree with the Examiner that the claims are very broad. Specifically, the claims recite resynchronizing only when the predetermined Appeal 2019-002133 Application 14/869,325 5 condition is met, but the recited “predetermined condition” could be anything, as long as the determination includes determining an amount of data in a buffer. For example, the “predetermined condition” could be satisfied regardless of the amount of data in the buffer as long as the process determines the amount of data in an uplink buffer of the user equipment. In other words, although the claim encompasses one condition that resynchronizes only when there is at least some particular amount or minimum threshold of data in the buffer, the claim also broadly encompasses an opposite condition that resynchronizes only when there is no data in the buffer. The claims’ breadth, however, does not mean that we can ignore the recited limitations. The claims explicitly recite performing resynchronization only when the predetermined condition is met, and the claims further recite that determining whether the predetermined condition is met includes determining an amount of data in a buffer. Therefore, we agree with Appellant that the claims recite more than simply a sequence of events—the claims specifically recite that the determining whether a predetermined condition is met step includes determining an amount of data in a buffer. If the Examiner is implicitly construing method claim 1 such that the performing step need not be performed because the performing step occurs only when the predetermined condition is met, the record is not sufficiently clear. See Ex parte Schulhauser, No. 2013-007847, 2016 WL 6277792 (PTAB Apr. 28, 2016) (precedential) (holding that, in a method claim, a step reciting a condition precedent does not need to be performed if the condition precedent is not met); MPEP § 2111.04(II) (citing Schulhauser). Even if Appeal 2019-002133 Application 14/869,325 6 Schulhauser is applied as a controlling authority to method claim 1, we note remaining independent claims 13 and 20 are not method claims; Schulhauser, thus, does not apply to claims 13 and 20. Therefore, the dispositive issue in this Appeal is whether the prior art teaches or suggests that “determining whether the predetermined condition is met includes determining an amount of data in an uplink buffer,” as rectied in claim 1 and commensurately recited in independent claims 13 and 20. Because the conditional performing step is not relevant to our disposition of this appeal, we do not address it. With respect to the disputed limitation, the Examiner finds Tabet teaches “determining an amount of data in an uplink buffer” because Tabet sends a buffer status report (BSR) to the node after sending scheduling requests. Final Act. 4 (citing Tabet ¶ 41). The Examiner finds “Tabet does not expressly disclose the condition includes determining an amount of data in an uplink buffer which is used to determine to reestablish synchronization” but finds “Lunden teaches prior to sending scheduling requests, for the purpose of re-synchronization, a buffer status report is sent to the network node.” Final Act. 4 (citing Lundén ¶ 105). The Examiner concludes it would have been obvious to modify Tabet’s teachings to send the BSR prior to sending a scheduling request so “the system can properly perform re-synchronization as taught by Lunden.” Final Act. 4 (citing Lundén ¶ 105). The Examiner finds Tabet’s UE attempts to resynchronize as quickly as possible after tuning back to a first network from a second network “and sends a scheduling request to the network and awaits a downlink transmission from the network.” Ans. 6 (citing Tabet ¶ 41). The Examiner Appeal 2019-002133 Application 14/869,325 7 finds that the network, in response to the scheduling request, sends the UE an uplink grant, the UE sends a BSR, then the UE determines whether “the connection has been released (determine whether or not to perform resynchronization).” Ans. 6 (citation omitted). The Examiner finds Tabet “teaches sending scheduling requests to indicate that the device has tuned back, and later perform synchronization” and, when combined with Lundén’s teachings, “one can see that the BSR of Lunden would be sent prior to the scheduling requests of Tabet”—i.e., after tuning back but before synchronizing, Tabet would send the BSR and scheduling requests. Ans. 6– 7. Appellant notes the Examiner’s finding that Tabet fails to teach “determining whether the predetermined condition is met includes determining an amount of data in an uplink buffer,” and Appellant argues Lundén fails to cure that deficiency. Appeal Br. 5–7; Reply Br. 2–5. Appellant disputes the Examiner’s characterization of Lundén as teaching sending a BSR prior to a scheduling request for the purpose of resynchronization. Appeal Br. 5; Reply Br. 2, 4–5. Appellant argues Lundén describes resynchronizing and sending a BSR as distinct operations preceding sending a scheduling request, and Lundén fails to teach either (1) basing resynchronization on any particular condition, let alone based on the BSR, or (2) any correlation between a buffer and whether to reestablish synchronization. Appeal Br. 5–6 (citing Lundén ¶¶ 65, 77, 87, 105); Reply Br. 2 (“Lunden, in its entirety, makes no mention of a buffer providing the basis on which a UE determines to perform an operation that reestablishes synchronization”), 4–5. Appeal 2019-002133 Application 14/869,325 8 We find a preponderance of the evidence supports Appellant’s arguments. As Appellant argues, Lundén’s cited paragraph discloses “there is at least one of re-synchronizing the communication link and sending a buffer status report to the network node over the communication link prior to sending the scheduling request.” Lundén ¶ 105 (emphases added). This portion of Lundén merely teaches that, prior to sending a scheduling request, a UE either resynchronizes the link or sends a BSR—i.e., the series of steps is either (1) UE resynchronizes the link then sends a scheduling request or (2) UE sends a BSR to the node, then sends a scheduling request. Lundén ¶ 105. Lundén does not teach that sending the BSR to a node is part of a resynchronization process. Furthermore, we fail to see how combining Lundén’s teaching that a UE either sends a BSR or resynchronizes prior to sending scheduling requests teaches determining whether a predetermined condition is met (upon which the UE bases a determination to resynchronize) includes determining an amount of data in a buffer. The Examiner finds Tabet fails to teach this limitation and, for the reasons discussed, we find Lundén does not teach a determination to resynchronize includes determining an amount of data in a buffer. Therefore, we do not sustain the Examiner’s rejection of independent claims 1, 13, and 20 as obvious in view of Tabet and Lundén. Nor do we sustain the Examiner’s rejections of dependent claims 2, 3, 5–12, 14, and 16–20 as obvious in view of Tabet and Lundén or in view of Tabet and Lundén in further view of one or more of Chang, Gheorghiu, Shah, and Bertrand because the Examiner has not shown how the additionally cited secondary references overcome the aforementioned deficiencies with the base combination of Tabet and Lundén. Appeal 2019-002133 Application 14/869,325 9 NEW GROUND OF REJECTION BY BOARD We enter a new ground of rejection pursuant to our authority under 37 C.F.R. § 41.50(b). In particular, we newly reject independent claims 1, 13, and 20 under 35 U.S.C. § 103 as obvious in view of Tabet. Tabet relates to “coordinating a user equipment’s communication with a network during tune back with C-DRX (connected mode discontinuous receive).” Tabet, Abstract. Tabet teaches that, when a UE tunes away to a second network then tunes back to a first network, the UE may “cause an out of sync situation” either because the time tuned away was long or the connection experienced a long signal fade. Tabet ¶ 41. As quickly as possible after tuning back to the first network, Tabet’s UE sends a scheduling request to the network to indicate it has tuned back. Tabet ¶ 41, Abstract. The UE waits for a downlink (DL) transmission and, if it does not receive a DL transmission, determines whether its connection to the network was released. Tabet ¶ 41, Abstract. The UE coordinates sending scheduling requests based on its C-DRX configuration to maximize power saving and “minimize the latency of the tune back process in case the user equipment has uplink data to send.” Tabet, Abstract; see Tabet ¶¶ 20–22 (describing Figures 6, 7A, 7B, 8A, and 8B, which depict flow charts and time charts of a UE determining when to reestablish a connection after tuning back to a first network and having lost synchronization), Figs. 6–8B. After indicating that it has tuned back to the first network by sending a scheduling request as quickly as possible after, the UE’s next action depends on whether the UE receives a DL transmission. Tabet ¶ 41. If the UE receives a DL transmission (i.e., an uplink grant or downlink data), the UE may send a BSR. Tabet ¶ 41. “The UE determines if the connection Appeal 2019-002133 Application 14/869,325 10 between the UE and the network has been released when the UE does not receive the downlink transmission.” Tabet ¶ 41 (emphasis added). In other words, if the UE receives a DL transmission, the UE does not need to determine if the connection has been released because the fact that it received a DL transmission indicates the connection has not been released. See Tabet ¶ 41. When the UE tunes back, the UE either “has uplink data to upload” or “has no uplink data to upload” and the “UE considers whether the UE has uplink data to send, so as to minimize the latency of the tune back process.” Tabet ¶ 42. In other words, if no DL transmission was received, the UE determines whether there is data in the UE’s uplink buffer, and the UE takes appropriate action to reestablish a connection to the network depending on that determination. Tabet ¶¶ 41–48. More specifically, the UE waits for a certain cycle before sending additional scheduling requests and seeking to reestablish a connection if there is no uplink data to send. Tabet ¶¶ 43–45, 48, Figs. 7A, 8A. The UE follows a different procedure if the UE has uplink data to send. Tabet ¶¶ 46–48, Figs. 7B, 8B. Given this evidence, we find Tabet teaches sending a first scheduling request as quickly as possible after tuning back then, depending on whether there is data in an uplink buffer, evaluating various conditions before eventually determining to reestablish a connection to the network. Tabet ¶¶ 41–48, Figs. 6–7B. Tabet introduces these procedures after describing the problem of an “out of sync situation” resulting when tuning back to a first network. Tabet ¶ 41. Appeal 2019-002133 Application 14/869,325 11 Notably, “the question under 35 U.S.C. § 103 is not merely what the references expressly teach but what they would have suggested to one of ordinary skill in the art at the time the invention was made.” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (emphasis added) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)); see also MPEP § 2123. Thus, although Tabet teaches that the “UE can reestablish the RRC connection with the [network] by sending an RRC re-establishment request,” we find a person of ordinary skill in the art would have understood that this operation teaches, or at least suggests, “performing the network operation to reestablish synchronization with the first network,” as recited in the claims. Furthermore, to the extent Tabet’s re-establishment request is not just an operation to reestablish synchronization, we find a person of ordinary skill in the art would have understood that establishing an RRC connection teaches or suggests performing a network operation that at least includes resynchronization. For the reasons discussed above, we conclude independent claims 1, 13, and 20 are obvious under 35 U.S.C. § 103 in view of the teachings and suggestions of Tabet. The Patent Trial and Appeal Board is a review body rather than a place of initial examination. We have made a new rejection regarding independent claims 1, 13, and 20 under 35 U.S.C. § 103, pursuant to 37 C.F.R. § 41.50(b). However, we have not reviewed the remaining claims to the extent necessary to determine whether these claims are unpatentable over Tabet, or other prior art, either alone or in combination. We leave it to the Examiner to ascertain the appropriateness of any further rejections based on Tabet or other references. Our decision not to enter a new ground of rejection for all claims, however, should not be considered as Appeal 2019-002133 Application 14/869,325 12 an indication regarding the appropriateness of further rejection or allowance of the non-rejected claims. See MPEP§ 1213.02. CONCLUSION The Examiner’s rejections are reversed, and we enter a new ground of rejection. More specifically, we reverse the Examiner’s obviousness rejections of claims 1–3, 5–14, and 16–20 as obvious view of Tabet in combination with one or more of Lundén, Chang, Gheorghiu, Shah, and Bertrand. We enter a new ground of rejection under 35 U.S.C. § 103 of independent claims 1, 13, and 20 as obvious in view of Tabet. DECISION SUMMARY Claims Rejected 35 U.S.C. § References Affirmed Reversed New Ground 1–3, 7, 12– 14, 16, 20 103 Tabet, Lundén 1–3, 7, 12– 14, 16, 20 5, 8 103 Tabet, Lundén, Chang 5, 8 6 103 Tabet, Lundén, Gheorghiu 6 9–11, 17, 19 103 Tabet, Lundén, Shah 9–11, 17, 19 18 103 Tabet, Lundén, Shah, Bertrand 18 1–3, 7, 12– 14, 16, 20 103 Tabet 1–3, 7, 12– 14, 16, 20 Overall Outcome 1–3, 7, 12– 14, 16, 20 1–3, 7, 12– 14, 16, 20 TIME PERIOD FOR RESPONSE Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM Appeal 2019-002133 Application 14/869,325 13 THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds 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 (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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). REVERSED; 37 C.F.R. § 41.50(b) 2 Regarding option (1), “Reopen prosecution,” and particularly regarding the requirement to submit an amendment and/or new evidence, please note MPEP 1214.01(I): “If the appellant submits an argument without either an appropriate amendment or new evidence as to any of the claims rejected by the Board, it will be treated as a request for rehearing under 37 C.F.R. § 41.50(b)(2).” If for any reason Appellant desires to reopen prosecution before the Examiner without submitting an amendment and/or new evidence, a Request for Continued Examination (RCE) that complies with 37 C.F.R. § 114 will remove the application from the jurisdiction of the Board under 37 C.F.R. §41.35, and will reopen prosecution before the Examiner. Copy with citationCopy as parenthetical citation