Ex Parte 6,879,830 et al

Patent Trials and Appeals Board

Jan 9, 2013

95001192 - (D) (P.T.A.B. Jan. 9, 2013)

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.
95/001,192 05/28/2009 6,879,830 60851-379770 1712
23370 7590 01/10/2013
JOHN S. PRATT, ESQ
KILPATRICK TOWNSEND & STOCKTON LLP
1100 PEACHTREE STREET
SUITE 2800
ATLANTA, GA 30309
EXAMINER
FOSTER, ROLAND G
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
01/10/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

HTC CORPORATION
Requester and Cross-Appellant

v.

IPCOM GMBH
Patent Owner and Appellant
____________

Appeal 2012-007843
Reexamination Control 95/001,192
Patent 6,879,830 B1
Technology Center 3900
____________

Before STEPHEN C. SIU, MICHAEL R. ZECHER, and THOMAS L.
GIANNETTI, and Administrative Patent Judges.

SIU, Administrative Patent Judge

DECISION ON APPEAL
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Reexamination Control 95/001,192
Patent 6,879,830 B1

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Third Party Requester and Cross-Appellant HTC Corporation appeals
under 35 U.S.C. §§ 134(c) and 315(b) the Examiner’s decision not to reject
claims 1 and 5-30. We have jurisdiction under 35 U.S.C. §§ 134(c) and
315(b). An oral hearing was held on October 17, 2012.

STATEMENT OF THE CASE
This proceeding arose from a request by HTC Corporation for an inter
partes reexamination of U.S. Patent 6,879,830, titled “Method for Handover,
Mobile Station for Handover and Base Station for Handover,” and issued to
Vasco Vollmer and Markus Radimirsch on April 12, 2005 (the ‘830 patent).
The ‘830 patent describes handover from a first to a second base
station of a network (col. 1, ll. 10-11).

Claim 1 reads as follows:
1. A mobile station for use with a network including
a first base station and a second base station that achieves a
handover from the first base station to the second base station
by:
storing link data for a link in a first base station,
holding in reserve for the link resources of the first base
station, and
when the link is to be handed over to the second base
station:
initially maintaining a storage of the link data in the first base
station, initially causing the resources of the first base station to
remain held in reserve, and
at a later timepoint determined by a fixed period of time predefined
at a beginning of the handover, deleting the link data from the
first base station and freeing up the resources of the first base
station, the mobile station comprising:
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an arrangement for reactivating the link with the first
base station if the handover is unsuccessful.

Appellant appeals the Examiner’s confirmation of patentability of
claims 1 and 5-30 over the proposed rejection of claims 1 and 5-30 under
§ 103(a) as unpatentable over U.S. Patent No. 6,088,590, July 11, 2000
(“Anderson”) and U.S. Patent No. 5,222,248, June 22, 1993 (“McDonald”).
The Examiner’s decision not to reject claims 30-37 under 35 U.S.C.
§ 305 and the Examiner’s decision not to reject claims 2-4 are not subject to
appeal.
ISSUE

Did the Examiner err in refusing to reject claims 1 and 5-30?

PRINCIPLES OF LAW

The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).

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ANALYSIS

Claim 1 recites “holding in reserve for the link resources of the first
base station.” The Examiner states that “holding in reserve” means that
“reserved resources are (1) not available for assignment and (2) are not
actively transmitting data” (RAN 5) and that the combination of Anderson
and McDonald fails to disclose or suggest this feature. Respondent agrees
with the Examiner (see, e.g., Respondent Br. 4-10).
The Specification discloses that when data is held in reserve at the
first base station, “the information . . . remains stored in [the first base
station] . . . and . . . are initially not reassigned” (col. 5, ll. 12-15). Since the
information held in reserve as disclosed by the Specification is “initially not
reassigned,” such data would “not be available for assignment” (the
information not being reassigned). We therefore agree with the Examiner
that holding data in reserve includes ensuring that the data held in reserve is
“initially not reassigned.” However, the Examiner does not indicate that the
combination of Anderson and McDonald fails to disclose or suggest this
feature.
The Examiner appears to state that the combination of Anderson and
McDonald fails to disclose or suggest holding information in reserve in
which “holding in reserve” includes “not actively transmitting data” (RAN
5). We disagree with the Examiner that holding information in reserve must
include “not actively transmitting data” since neither the Examiner nor
Respondent has indicated such a requirement as recited in the claim or as
disclosed in the Specification.
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Claim 1 recites “holding in reserve” but does not appear to require
that “holding in reserve” must include “not actively transmitting data.”
Therefore, even assuming that the combination of Anderson and McDonald
fails to disclose or suggest “not actively transmitting data,” we cannot agree
with the Examiner’s findings.
In fact, claim 1 recites holding in reserve for the link resource of the
first base station and when the link is to be handed over to the second base
station, causing the resources to remain held in reserve. Hence claim 1
requires that the information be “held in reserve” prior to the handover and
to “maintain” the information “in reserve” when handover begins. One of
ordinary skill in the art would not have understood that no data is transmitted
prior to handover since there would be no communication to handover in the
first place. The Specification also discloses that data is, in fact, being
transmitted over the link prior to handover (e.g., col. 3, ll. 29-30: a link has
“fallen below a certain value”; “[a]fter receiving this message, BS 1 stops
sending data to the MS” – i.e., data is being transmitted prior to receiving the
message (or prior to the handover)).
For at least this reason, we also disagree with the Examiner’s
statement that “holding in reserve” as recited in claim 1, for example, must
include “not actively transmitting data” because “[a]ll independent claims . .
. recite reactivating or re-establishing the link between the first base station
and the mobile station” (RAN 5). Since the link resources are held in
reserve prior to handover at a time when data is being transmitted,
“reactivating the link” would not have indicated that “holding in reserve”
must include discontinuing transmission of data. Otherwise, there would be
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no transmission of data prior to handover, which, as indicated above, would
not make sense and would be contrary to express disclosures in the
Specification.
Even assuming the Examiner’s (and Respondent’s) contention to be
correct that “holding in reserve” as recited in claim 1 must include “not
actively transmitting data,” McDonald appears to disclose this feature. For
example, McDonald discloses that a line is “deallocated” after a “specified
time-out” that allows “the user the option of returning to the old channel”
(i.e., no data is transmitted over the deallocated line until the user chooses to
return to the old channel) (col. 3, ll. 21-25). Neither the Examiner nor the
Respondent indicate how McDonald’s disclosure of deallocating a line (or
resource) differs from the alleged claim requirement of not actively
transmitting data over a resource (assuming such a claim requirement
exists).

CONCLUSION
The Examiner erred in refusing to reject claims 1 and 5-30.
DECISION
We reverse the Examiner’s decision not to maintain the rejection of
claims 1 and 5-30 under 35 U.S.C. § 103(a) as unpatentable over Anderson
and McDonald.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.77(b) which provides that “[a]ny decision which includes a new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review.” Correspondingly, no portion of the decision is final for
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purposes of judicial review. A requester may also request rehearing under
37 C.F.R. § 41.79, if appropriate, however, the Board may elect to defer
issuing any decision on such request for rehearing until such time that a final
decision on appeal has been issued by the Board.
For further guidance on new grounds of rejection, see 37 C.F.R.
§ 41.77(b)-(g). The decision may become final after it has returned to the
Board. 37 C.F.R. § 41.77(f).
37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN
ONE MONTH FROM 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. The owner may file a response requesting
reopening of prosecution before the examiner. Such a response must be
either an amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both.
(2) Request rehearing. The owner may request that the proceeding be
reheard under § 41.79 by the Board upon the same record. …

Any request to reopen prosecution before the examiner under 37
C.F.R. § 41.77(b)(1) shall be limited in scope to the "claims so rejected."
Accordingly, a request to reopen prosecution is limited to issues raised by
the new ground(s) of rejection entered by the Board. A request to reopen
prosecution that includes issues other than those raised by the new ground(s)
is unlikely to be granted. Furthermore, should the patent owner seek to
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substitute claims, there is a presumption that only one substitute claim would
be needed to replace a cancelled claim.
A requester may file comments in reply to a patent owner response.
37 C.F.R. § 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall
be limited in scope to the issues raised by the Board's opinion reflecting its
decision to reject the claims and the patent owner's response under
paragraph 37 C.F.R. § 41.77(b)(1). A newly proposed rejection is not
permitted as a matter of right. A newly proposed rejection may be
appropriate if it is presented to address an amendment and/or new evidence
properly submitted by the patent owner, and is presented with a brief
explanation as to why the newly proposed rejection is now necessary and
why it could not have been presented earlier.
Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for
all patent owner responses and requester comments, is required.
The examiner, after the Board's entry of a patent owner response and
requester comments, will issue a determination under 37 C.F.R. § 41.77(d)
as to whether the Board's rejection is maintained or has been overcome. The
proceeding will then be returned to the Board together with any comments
and reply submitted by the owner and/or requester under 37 C.F.R.
§ 41.77(e) for reconsideration and issuance of a new decision by the Board
as provided by 37 C.F.R. § 41.77(f).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

REVERSED
37 C.F.R. § 41.77(b)
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PATENT OWNER:

JOHN S. PRATT, ESQ.
KILPATRICK TOWNSEND & STOCKTON LLP
1100 PEACHTREE STREET
SUTE 2800
ATLANTA, GA 30309

THIRD PARTY REQUESTER:

PERKINS COIE LLP
PATENT – SEA
PO BOX 1247
SEATTLE, WA 98111-1247