Ex Parte Cherian et al

Patent Trial and Appeal Board

Aug 1, 2016

13648070 (P.T.A.B. Aug. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/648,070 10/09/2012
23696 7590 08/03/2016
QUALCOMM INCORPORATED
5775 MOREHOUSE DR.
SAN DIEGO, CA 92121
FIRST NAMED INVENTOR
George Cherian
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
120455U2 4492
EXAMINER
KHAN, MEHMOOD B
ART UNIT PAPER NUMBER
2646
NOTIFICATION DATE DELIVERY MODE
08/03/2016 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):
us-docketing@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEORGE CHERIAN and JUN WANG 1
Appeal2015-003482
Application 13/648,070
Technology Center 2600
Before ALLEN R. MacDONALD, JUSTIN BUSCH, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 4--15, 18-22, 24, 25, 27, and 28, which are all of the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
Technology
The application relates to "wireless communications," specifically to
"facilitating modified cell reselection parameters and/ or procedures for
access terminals exhibiting low or no mobility." Spec. i-f 2.
1 Appellants state the real party in interest is Qualcomm Inc. App. Br. 2.
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Application 13/648,070
Illustrative Claim
Claim 1 is illustrative and has the key limitations emphasized below:
1. An access terminal, comprising:
a communications interface;
a storage medium; and
a processing circuit coupled to the communications
interface and the storage medium, the processing circuit adapted
to:
employ one or more mobile thresholds to determine
whether to perform cell reselection when the access
terminal is mobile; and
employ one or more stationary threshold2 to
determine whether to perform cell reselection when the
access terminal is at least substantially stationary, wherein
the one or more stationary thresholds are selected from a
group of stationary thresholds comprising a reduced
threshold value for a level of signal quality associated with
a serving cell that will trigger signal measurements of one
or more other cells for cell reselection, and an increased
threshold value for an amount by which a quality of a new
cell is to be better than a quality of a serving cell before a
reselection to the new cell is performed.
Rejections
Claims 1, 4, 5, 10-12, 18, 21, 22, 24, 25, 27, and 28 stand rejected
under 35 U.S.C. § 103(a) as obvious over the combination of Somasundaram
et al. (US 2008/0220784 Al; Sept. 11, 2008) and Turk (US 2008/0225801
Al; Sept. 18, 2008). Final Act. 4.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as obvious over the
combination of Somasundaram, Turk, and Teasdale et al. (US 2010/0081455
2 Original claim 1 used the plural like "mobile thresholds" above, but the 's'
appears to have been removed in the Amendment dated November 21, 2013.
However, no deletion was indicated, so that may be a typographical mistake.
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Application 13/648,070
Al; Apr. 1, 2010). Final Act. 15.
Claims 7 and 13 stand rejected under 35 U.S.C. § 103(a) as obvious
over the combination of Somasundaram, Turk, and Pecen et al. (US
2005/0233700 Al; Oct. 20, 2005). Final Act. 16.
Claims 8 and 14 stand rejected under 35 U.S.C. § 103(a) as obvious
over the combination of Somasundaram, Turk, and Ma et al. (US
2003/0148765 Al; Aug. 7, 2003). Final Act. 18.
Claims 9 and 15 stand rejected under 35 U.S.C. § 103(a) as obvious
over the combination of Somasundaram, Turk, and Bates et al. (US
2006/0148490 Al; July 6, 2006). Final Act. 20.
Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as obvious
over the combination of Somasundaram, Turk, and Anepu et al. (US
2013/0188503 Al; July 25, 2013). Final Act. 21.
ISSUES
1. uid the Examiner err in finding the combination of
Somasundaram and Turk teaches or suggests "a reduced threshold value for
a level of signal quality associated with a serving cell that will trigger signal
measurements of one or more other cells for cell reselection," as recited in
claim 1?
2. Did the Examiner err in finding the combination of
Somasundaram and Turk teaches or suggests "an increased threshold value
for an amount by which a quality of a new cell is to be better than a quality
of a serving cell before a reselection to the new cell is performed," as recited
in claim 1 ?
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Application 13/648,070
ANALYSIS
Markush Groups in Independent Claims 1, 11, and 22
A Markush group is a style of claim drafting that recites a list of
alternatives, any one of which would suffice for purposes of the claim. 3 For
example, "an element selected from a group consisting of A, B, and C"
would be satisfied by just the element B (which is a listed alternative), but
would not be satisfied by element D (which is not a listed alternative). The
exclusion of element D in the example above stems from the requirement
that a Markush group "should be 'closed,' i.e. it must be characterized with
the transition phrase 'consisting of,' rather than 'comprising' or 'including."'
Abbott Labs. v. Baxter Pharm. Prods., Inc., 334 F.3d 1274, 1280 (Fed. Cir.
2003) (quotation omitted). This is because the term "consists of' is closed
and limits a group to only the recited elements, whereas "comprises" is
open-ended and permits the inclusion of other unrecited elements. In re
Gray, 53 F.2d 520, 521(CCPA1931). An open-ended group (such as "a
group comprising A, B, and C") could also include other unrecited elements
(e.g., element D), which means an item selected from an open-ended group
could literally be anything, even an unrecited element. That is why a
Markush group using "comprising" rather than "consisting of' renders a
claim indefinite. E.g., Ex parte Morrell, 100 USPQ 317 (Bd. App. 1954);
MPEP § 2173 .05(h)(I) ("It is improper to use the term 'comprising' instead
of 'consisting of' [in a Markush group]") (citing Ex parte Dotter, 12 USPQ
382 (Bd. App. 1931)).
3 The name comes from one of the early decisions approving this style of
claiming: Ex parte Markush, 1925 C.D. 126, 127 (Comm'r Pat. 1924).
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Application 13/648,070
Here, independent claims 1, 11, and 22 recite thresholds "selected
from a group of stationary thresholds comprising" certain threshold values.
That is prohibited for the reasons discussed above. The Examiner did not
previously address indefiniteness, and we encourage the Examiner to do so
in the first instance if Appellants do not amend the Markush groups to use
"consisting of' instead of "comprising." Solely for purposes of furthering
prosecution of the obviousness rejection on appeal, we treat the Markush
groups of claims 1, 11, and 22 as if they used the narrower "consisting of."
Obviousness: Claims 1, 4-15, 18-22, 24, 25, 27, and 28
All of the independent claims (1, 11, 22, and 25) recite "an increased
threshold value for an amount by which a quality of a new cell is to be better
than a quality of a serving cell before a reselection to the new cell is
[performed or conducted]."
The Examiner relies on Somasundaram for teaching "an increased
threshold value" and Turk for teaching "an increased threshold value for an
amount by which a quality of a new cell is to be better than a quality of a
serving cell before a reselection to the new cell is performed." Ans. 4 (citing
Somasundaram i-f 60; Turk i-fi-176, 83, 105). The Examiner finds that in Turk,
"the received quality of the neighboring cell is compared to the current cell
and is deemed better than the current cell." Id. (emphasis added).
Appellants contend the Examiner erred because "Turk only describes
the neighboring cell having an improved radio signal quality compared to
the current cell, without any discussion about a threshold amount by which it
is better." App. Br. 11; Reply Br. 7. We agree with Appellants. One signal
merely being better than another signal is different than being better by a
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Application 13/648,070
certain amount. E.g., Spec. il 48. Here, the Examiner has not persuaded us
that Turk comparing the two signals teaches or suggests "an amount by
which a quality of a new cell is to be better."
All of the independent claims (1, 11, 22, and 25) also recite "a
reduced threshold value for a level of signal quality associated with a
serving cell that will trigger signal measurements of one or more other cells
for cell reselection." The Examiner finds Somasundaram and Turk each
teach or suggest this limitation. Ans. 3 (relying on Somasundaram); Final
Act. 5---6 (relying on Turk); but see Ans. 6 ("Turk is not relied upon").
Appellants contend the Examiner's findings regarding
Somasundaram' s teachings constitute error because Somasundaram' s cited
thresholds do not "trigger signal measurements of one or more other cells for
cell reselection." Reply Br. 4. We agree with Appellants. The only event
"triggered" by going above or below Somasundaram's thresholds is
changing the values of Qhyst and Tresel· Somasundaram iii! 60---63, 80-89.
Those two variables will be used in later determinations of cell reselection.
Id. iii! 25, 57-59, 79, 85-87; see also Ans. 3. However, the Examiner has
not persuaded us that crossing the threshold "triggers" any signal
measurements. Cf Spec. ii 46.
For Turk, Appellants contend the Examiner erred because even
though Turk discloses a threshold triggering signal measurements, the
threshold value was not "reduced." App. Br. 10. Instead, "Turk discloses
that when the mobile terminal is at least substantially stationary (e.g., very
slow moving or not moving), the mobile terminal uses the 'high' threshold
of -11 dB to determine whether to trigger cell reselection, instead of the
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Application 13/648,070
'low' threshold of -17 dB." Id. Appellants contend this "high" threshold is
"opposite" the claim's recitation of a "reduced" threshold value "when the
access terminal is at least substantially stationary." Id. We agree with
Appellants. Turk expressly discloses using a higher threshold when "the
mobile terminal is not fast moving (i.e. it is slow moving)," which is the
opposite of what the claims recite. Turk i-f 118. Moreover, given the limited
evidence before us, we are not persuaded that Somasundaram teaches or
suggests reversing the threshold in Turk.
Thus, the Examiner has not persuaded us that Somasundaram or Turk
teaches or suggests the claimed reduced threshold value.
Accordingly, we do not sustain the Examiner's rejection of claims 1,
11, 22, and 25, and dependent claims 4--10, 12-15, 18-21, 24, 27, and 28
stand with their respective independent claims.
DECISION
For the reasons above, we reverse the Examiner's decision rejecting
claims 1, 4--15, 18-22, 24, 25, 27, and 28.
However, if Appellants do not change the phrase "thresholds
comprising" to instead be "thresholds consisting of," the Examiner should
consider rejecting at least independent claims 1, 11, and 22 and their
respective dependent claims (4--10, 12-15, 18-21, and 24) as indefinite
under 35 U.S.C. § 112, second paragraph for the reasons discussed above. 4
REVERSED
4 The Examiner should also consider whether it is sufficiently definite what
"reduced" or "increased" are being compared to (e.g., whether "reduced" is
relative to the "increased threshold" or instead the "mobile thresholds").
7