Ex Parte Claussen et al

Patent Trial and Appeal Board

May 31, 2016

11771644 (P.T.A.B. May. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111771,644 0612912007 HOLGER CLAUSSEN
114592 7590 06/02/2016
Alcatel-Lucent USA Inc,
C/O Davidson Sheehan LLP
700 Lavaca St.
Suite 1400-2323
Austin, TX 78701
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.
41 OO-Claussen-25-US 8288
EXAMINER
PHUONG, DAI
ART UNIT PAPER NUMBER
2644
NOTIFICATION DATE DELIVERY MODE
06/02/2016 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):
docketing@ds-patent.com
kasey.larocca@ds-patent.com
ipsnarocp@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HOLGER CLAUSSEN, LESTER TSE WEE HO,
PAUL A. POLAKOS, and LOUIS GWYN SAMUEL
Appeal2014-009139
Application 11/771,644
Technology Center 2600
Before ERIC S. FRAHM, JOHN P. PINKERTON, and
CARLL. SILVERMAN, Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-009139
Application 11/771,644
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-3 and 8-16. Claims 4--7 have been objected to as
being allowable if rewritten in independent form to include all of the
limitations of base independent claim 1 and intervening dependent claim 2
(Ans. 24; App. Br. 14). We reverse.
The Examiner has rejected (i) claims 1-3, 8-11, and 14--16 under 35
U.S.C. § 103(a) as being unpatentable over Nanda (US 2009/0238101 Al;
published Sep. 24, 2009) and Min (US 6,539,206 Bl; published Mar. 25,
2003) (Final Act. 4--8); (ii) claim 12 under 35 U.S.C. § 103(a) as being
unpatentable over Nanda, Min, and Kawai (US 2006/0145051 Al; published
Jul. 6, 2006) (Final Act. 8-9); and (iii) claim 13 under 35 U.S.C. § 103(a) as
being unpatentable over Nanda, Min, and Scheinert (US 2005/0148368 Al;
published Jul. 7, 2005) (Final Act. 9-10).
We have reviewed Appellants' arguments in the Briefs (App. Br. 2-14
and Reply Br. 2-3), the Examiner's rejection (Final Rej. 4--8), and the
Examiner's response (Ans. 2-23) to Appellants' arguments.
The Examiner relies upon Nanda (see i-f 33) as teaching modifying
transmission power for a pilot signal based on the frequency of a mobility-
related procedure (Final Act. 5). However, we find no disclosure in Nanda
of determining a frequency of mobility-related procedures, as recited in
independent claims 1 and 16, and as similarly recited in remaining
dependent claims 2, 3, and 8-16. Although the Examiner determines (Ans.
3, 5, and 11) that "[t]he term 'frequency' is defined as the 'number' of times
a value recurs" (Ans. 3 and 11 ), nothing in the record supports an
interpretation that frequency is the same as a numerical value or sum.
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Appeal2014-009139
Application 11/771,644
Nanda discloses controller 414 controls the power level of a pilot
signal based on a number of registered terminals (i-f 46), not a frequency or
rate at which mobility-related procedure requests are received (see claims 1
and 16). Therefore, we concur with Appellants' arguments (App. Br. 5---6;
Reply Br. 2) that the Examiner erred in finding that Nanda and/or Min, and
thus the combination of the references, teaches or suggests modifying
transmission power based on a frequency of a mobility-related procedure as
recited in claims 1 and 16, as opposed to a number or sum of mobility-
related procedures (as disclosed in Nanda and/or Min). 1 Appellants are
correct that Nanda and Min merely disclose a number of requests, while
independent claims 1 and 16 recite a frequency of requests indicating a rate
at which the requests occur (see App. Br. 5---6; Reply Br. 2).
Accordingly, we will not sustain the Examiner's obviousness
rejections of independent claims 1 and 16, as well as claims 2, 3, and 8-15
depending variously therefrom.
CONCLUSION
Appellants have persuaded us of error in the Examiner's decision to
reject claims 1-3 and 8-16.
1 We recognize that Appellants' arguments present additional issues.
Because we were persuaded of error by this issue concerning the frequency
of mobility-related procedures as set forth in claim 1 and similarly recited in
claim 16, we do not reach the additional issues.
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Appeal2014-009139
Application 11/771,644
DECISION
The decision of the Examiner to reject claims 1-3 and 8-16 is
reversed.
REVERSED
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