Ex Parte Agin

Patent Trial and Appeal Board

Mar 7, 2013

10250990 (P.T.A.B. Mar. 7, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PASCAL AGIN
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Appeal 2010-008766
Application 10/250,990
Technology Center 2600
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Before ALLEN R. MacDONALD, LARRY J. HUME, and JEREMY J.
CURCURI, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/250,990

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STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 22-25. We have jurisdiction under 35 U.S.C. § 6(b).

Exemplary Claim
Exemplary claim 22 under appeal reads as follows (emphases added):
Claim 22. A method of managing processing resources in a
mobile radio system wherein:
a base station signals to a radio network controller a capacity
credit, and a dedicated channels capacity consumption law giving
processing costs,
the radio network controller updates the capacity credit on the
basis of the capacity dedicated channels consumption law, said
updating comprising:
if a physical downlink shared channel (PDSCH) is allocated in
a radio link set-up procedure, the processing cost
associated with the PDSCH is debited from the capacity
credit, in addition to a radio link processing cost,
if a PDSCH is deleted, the processing cost associated with the
PDSCH is credited to the capacity credit,
if a PDSCH is reconfigured, the difference between the new
cost and the old cost is debited from the capacity credit,
or credited to the capacity credit if the difference is
negative.

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Rejection
The Examiner rejected claims 22-25, under 35 U.S.C. § 103(a) as
being unpatentable over the combination of ESTI (“European
Telecommunications Standards Institute: Technical Specification; ETSI TS
125 433; V3.2.0 (2000-06)”) and Rune (US 2002/0025815 Al).1
Appellant’s Contentions
1. Appellant contends that the Examiner erred in rejecting claim
22 under 35 U.S.C. § 103(a) because:
Appellant respectfully submits that there is no teaching
or suggestion in ETSI that "if a physical downlink shared
channel (PDSCH) is allocated in a radio link set-up procedure,
the processing cost associated with the PDSCH is debited from
the capacity credit, in addition to a radio link processing cost",
as recited in claim 22 and analogously recited in independent
claims 24 and 25.
(App. Br. 9-10)(emphasis omitted).
2. Appellant contends that the Examiner erred in rejecting claim
22 under 35 U.S.C. § 103(a) because “[t]he Examiner does not even address
the physical downlink shared channel (PDSCH) element of the claims, but
instead erroneously misstates the recited element of the claim and states ‘if
the dedicated channel is allocated in a radio link set-up procedure ...[page 3,
Final Office Action]’ .” (App. Br. 10) (full footnote omitted).
3. Appellant contends that the Examiner erred in rejecting claim
22 under 35 U.S.C. § 103(a) because:
The Examiner acknowledges that ETSI does not teach or
suggest "the radio network controller updates the capacity

1 Separate patentability is not argued for claims 23-25. Except for our
ultimate decision, these claims are not discussed further herein.
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credit on the basis of the capacity dedicated channels
consumption law", as recited in claim 22 and analogously
recited in independent claims 24 and 25. The Examiner thus
relies on Rune to allegedly remedy this conceded deficiency,
and cites paragraph [0015] in support of the rejection.
However, the relevance of this cited portion of Rune to
the claimed invention is unclear. Rune teaches that a downlink
shared channel is managed by the network in a similar way as
the dedicated channel. Thus the downlink shared channel is
essentially a dedicated resource. However, nowhere in this
cited portion (or any other portion) of Rune does Rune teach or
suggest "the radio network controller updates the capacity
credit on the basis of the capacity dedicated channels
consumption law", as claimed.
(App. Br. 11-12)(emphasis omitted).
4. Appellant contends that the Examiner erred in rejecting claim
22 under 35 U.S.C. § 103(a) because “the Examiner’s reliance on In re
Keller, [642 F.2d 413] (CCPA 1981) is misplaced.” (Reply. Br. 5).
5. Appellant contends that the Examiner erred in rejecting claim
22 under 35 U.S.C. § 103(a) because “Rune does not teach a physical
downlink shared channel.” (Reply. Br. 6)(emphasis omitted).
6. Appellant contends that the Examiner erred in rejecting claim
22 under 35 U.S.C. § 103(a) because “one skilled in the art would not be
motivated to modify ETSI when it already possesses the alleged benefits of
the proposed modification.” (Reply. Br. 7) and “[t]he mere fact that a
reference can be modified does not render the resultant modification obvious
unless the prior art suggest the desirability of the modification. See In re
Mills, 916 F.2d 680, 16 USPQ2d 1430 (Fed. Cir. 1990).” (Reply. Br. 7,
Footnote 5).
Issue
Did the Examiner err in rejecting claim 22 as being obvious?
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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
We disagree with Appellant’s conclusions as to all rejections. We
adopt as our own (1) the findings and reasons set forth by the Examiner in
the action from which this appeal is taken and (2) the reasons set forth by the
Examiner in the Examiner’s Answer in response to Appellant’s Appeal
Brief. We concur with the conclusions reached by the Examiner. We
highlight the following arguments for emphasis.
Contrary to the allegation in Appellant’s above contention 1, the
Examiner never found that the ETSI reference teaches that “if a physical
downlink shared channel (PDSCH) is allocated in a radio link set-up
procedure, the processing cost associated with the PDSCH is debited from
the capacity credit, in addition to a radio link processing cost.” Rather, the
Examiner quite explicitly found that the ETSI reference teaches “if the
dedicated channel is allocated in a radio link set-up procedure . . .” (Final
Rej. 3) (emphasis added). Attacking findings that were never made does not
persuade us that the Examiner erred in the finding that was actually made.
Contrary to the allegation in Appellant’s above contention 2, the
Examiner did not erroneously misstate the recited elements of the claim.
Rather, the Examiner quite clearly stated the Examiner’s findings as to the
teachings of ESTI. These findings include nearly every limitation in
Appellant’s claim 22, except for the physical downlink shared channel
(PDSCH) dedicated resource which the Examiner relies on Rune to teach.
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Contrary to the allegation in Appellant’s above contention 3, the
Examiner did not rely on Rune to teach “the radio network controller
updates the capacity credit on the basis of the capacity dedicated channels
consumption law.” Rather, the Examiner relied on ESTI.
As to Appellant’s above contention 4, we agree with the Examiner
that Appellant is attacking each reference individually rather than
challenging the conclusion based upon their combined teachings. The fact
that neither ESTI nor Rune disclose or suggest the claimed method does not
rebut the obviousness conclusion reached by the Examiner based upon the
combined teachings of those references. The test for obviousness is what the
combined teachings of the prior art would have suggested to the hypothetical
person of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA
1981). Appellant has not challenged the combinability of the teachings of
ESTI and Rune. In other words, while Appellant contends that ESTI lacks a
teaching, it is our view that such a feature is taught by Rune for the reasons
set forth by the Examiner. Similarly, while Appellant contends that Rune
lacks a teaching, this teaching is clearly provided by ESTI. Contrary to
Appellant’s contention that Keller is in applicable because Appellant
attacked every reference, we find Keller highly applicable because Appellant
only addresses each reference individually without regard to the
combination. Further, the Appellant addresses Examiner findings that were
never made. This form of argument is unavailing to show Examiner error.
Contrary to Appellant’s above contention 5, Rune explicitly teaches a
“physical DSCH” in paragraph [0017].
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As to Appellant’s above contention 6, it does not acknowledge the
impact of the Court’s explicit rejection in KSR of the rigid requirement that
the art suggest a modification. KSR Int'l Inc. v. Teleflex Inc., 550 U.S. 398,
415 (2007)(“We begin by rejecting the rigid approach of the Court of
Appeals.”). For example, Appellant’s Reply Brief presents an argument
based on a reading of In re Mills, 916 F. 2d 680 (Fed. Cir. 1990). We have
reviewed that venerable case, and find that much of its holding must be
updated by further developments in the law guided by the Supreme Court as
expressed in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007). Rather than
expressing obviousness as requiring a suggestion of desirability of a
modification as in Mills, the Supreme Court viewed the prior art as a
combination of teachings from different sources, and the use of those
teachings by a practitioner in the art. Appellant’s reasoning based on Mills
is not consistent with the Court’s reasoning in KSR.

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 22-25 as being
unpatentable under 35 U.S.C. § 103(a).
(2) Claims 22-25 are not patentable.

DECISION
The Examiner’s rejection of claims 22-25 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
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AFFIRMED 2

tj

2 We have decided the appeal before us. However, should there be further
prosecution of these claims; the Examiner’s attention is directed to the
following:
Should there be further prosecution with respect to claims 22-25, we
find no written description support in the Specification as filed for the
limitation “if a PDSCH is deleted, the processing cost associated with the
PDSCH is credited to the capacity credit” (emphases added) added to the
claims by amendment. Rather, Appellant’s Specification states “this cost is
debited from the capacity credit if a PDSCH is deleted” (Spec. 18:5-6)
(emphases added).
Should there be further prosecution with respect to claims 24 and 25,
the Examiner’s attention is directed to Aristocrat Techs. Australia Pty Ltd. v.
Int’l Game Tech., 521 F.3d 1328 (Fed. Cir. 2008), and 76 Fed. Reg. 7162,
7167-68 at Part 1.III. C.1-3. The “means-plus-function” elements of these
claims are themselves disclosed as “means-plus-function” in Appellant’s
Specification, see page 18 for example. Such circular claiming raises
concerns. We also note that Appellant’s Specification at page 19 states:
“The above means can operate in accordance with the method described
above; their specific embodiment representing no particular problem for the
person skilled in the art, such means do not need to be described here in
more detail than by stating their function.” (emphasis added).