Ex Parte Dalsgaard

Patent Trial and Appeal Board

Jun 10, 2016

12225585 (P.T.A.B. Jun. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/225,585 10/07/2008
11051 7590 06/14/2016
Squire Patton Boggs (US) LLP
Nokia Technologies Oy
8000 Towers Crescent Drive, 14th Floor
Vienna, VA 22182
FIRST NAMED INVENTOR
Lars Dalsgaard
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.
059864.02052 9466
EXAMINER
ABELSON, RONALD B
ART UNIT PAPER NUMBER
2476
NOTIFICATION DATE DELIVERY MODE
06/14/2016 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):
sonia.whitney@squirepb.com
ipgeneraltyc@squirepb.com
nokia.ipr@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LARS DALSGAARD
Appeal2013-002557
Application 12/225,585
Technology Center 2400
Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and
DAVID M. KOHUT, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2013-002557
Application 12/225,585
SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejections of claims 1, 2, 5, 9, 11, 12, 19, 20, 26, 27, 31, 32, 35, 39, 40, 44,
47, 48, and 51. Ans. 3. 1 These claims stand rejected under 35 U.S.C.
§ 103(a) as obvious over Oh (US 2003/0153275 Al; published Aug. 14,
2003) in view ofHolborow (US 2005/0175040 Al; published Aug. 11,
2005).
Claims 3, 4, 7, 8, 10, 13, 14, 16-18, 21, 22, 24, 25, 28-30, 33, 34, 37,
38, 41, 42, 45, 46, 49, and 50 stand objected to. Final Act. 5.
Claims 6, 15, 23, 36, and 43 are canceled. Claims App.
We have jurisdiction under 3 5 U.S. C. § 6(b ). We review the appealed
rejections for error based upon the issues identified by Appellant, and in
light of the arguments and evidence produced thereon. Ex parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential).
We reverse.
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we
enter a new ground of rejection for claims 19-22, 24--30, and 47-51 under
35 U.S.C. § l 12(b) as being indefinite.
1 Rather than repeat the Examiner's positions and Appellant's arguments in
their entirety, we refer to the following documents for their respective
details: the Final Office Action mailed March 8, 2012 ("Final Act."); the
Appeal Brief filed September 14, 2012 ("App. Br."); the Examiner's Answer
mailed November 14, 2012 ("Ans."); and the Reply Brief filed December 6,
2012 ("Reply Br.").
2
Appeal2013-002557
Application 12/225,585
STATEMENT OF THE CASE
Appellant describes the present invention as follows:
Concluding the validity of an uplink synchronization
parameter, such as a timing advance, in a packet-switched radio
system. The method includes: detecting (802) an uplink
synchronization parameter; measuring (804) an interval from the
detection of the uplink synchronization parameter; and
comparing (806, 808) the measured interval with a
predetermined threshold and, if the measured interval is shorter
than the predetermined threshold, concluding (810) that the
detected uplink synchronization parameter is still valid, or else
concluding (812) that the detected uplink synchronization
parameter is no more valid.
(Abstract).
Independent claim 1, reproduced below (with margins adjusted for
clarity), is illustrative of the appealed claims:
1. An apparatus, comprising:
a processor; and
a memory including computer program code,
the memory and the computer program code configured
to, with the processor, cause the apparatus at least to
receive downlink signaling comprising an uplink
synchronization parameter;
detect the uplink synchronization parameter;
measure an interval from the detection of the uplink
synchronization parameter by the detector; and
compare the measured interval with a
predetermined threshold and, if the measured interval is
shorter than the predetermined threshold, conclude that the
detected uplink synchronization parameter is still valid, or
else conclude that the detected uplink synchronization
parameter is no more valid.
3
Appeal2013-002557
Application 12/225,585
ARGUMENTS
The Examiner finds that Oh teaches receiving downlink signaling
comprising an uplink synchronization parameter (or "timing advance") and
further teaches the user equipment (UE) detecting the received timing
advance and using it to adjust the time of the UE' s transmissions. Final
Act. 2. The Examiner finds that Oh fails to disclose "measure[ing] an
interval from the detection of the uplink synchronization parameter by the
detector," comparing the measured interval with a predetermined threshold,
or reaching any conclusions based upon the length of the interval. Id. at 3.
The Examiner relies on Holborow for teaching these features missing from
Oh. Id. The Examiner concludes that it would have been obvious to add
this feature of Holborow to Oh because "[t]his modification would benefit
the system by ensuring the UE has accurate information to adjust the timing
of the UE's transmissions." Id. at 4.
Appellant contends that Holborow does not cure Oh's deficiencies
because "Holborow does not disclose the claimed steps of 'measuring' and
'comparing."' Reply Br. 4. According to Appellant, Holborow addresses a
problem that allows a television cable to be used for sending
communications from a cable headend unit to a subscribing set-top box, as
well as for serving as a medium for computer data networks. Id.
Holborow describes a method for multiplexing [Data Over
Cable Service Interface Specification ("DOCSIS")] data into [a
Moving Pictures Expert Group ("MPEG")] data stream. The
method includes synchronizing an MPEG system clock and a
DOCSIS system clock, multiplexing a DOCSIS data stream into
an MPEG Transport Stream while preserving the accuracy of a
number of MPEG program clock reference (PCR) values,
transmitting the multiplexed Transport Stream, receiving the
multiplexed Transport Stream in a receiving device, recovering
4
Appeal2013-002557
Application 12/225,585
the MPEG PCR values, and generating a DOCSIS clock based
on the MPEG PCR values.
App. Br. 11. "In effect, instead of transmitting both the MPEG clock and
DOCSIS clock, only the MPEG clock is transmitted, and the DOCSIS clock
is generated from the synchronized MPEG clock." Reply Br. 5.
Appellant urges that "[t]he so-called time-critical synchronization data
(time stamps) in [Holborow's] context has nothing to do with the timing
advance of the present invention." Id. at 5---6. In Holborow's MPEG
system, Appellant continues, the time stamp is used to synchronize the video
decoder in real time (id. at 6), whereas "the timing advance [of the present
invention] is a parameter related to the timing difference between a
downlink radio and an uplink radio" (id.).
In summary, Appellant contends that Holborow uses different
communication protocols and hardware than those of Oh, and accordingly,
"the two systems cannot be properly combined and one of ordinary skill
would not [have been] motivated to make such a combination." Reply Br. 6.
In response to the arguments appearing in Appellant's Appeal Brief,
the Examiner first states in the Answer's GROUNDS OF REJECTION TO BE
REVIEWED ON APPEAL section,
every ground of rejection set forth in the Office action from
which the appeal is taken ... is being maintained by the examiner
except for the grounds of rejection (if any) listed under the
subheading "WITHDRAWN REJECTIONS." New grounds of
rejection (if any) are provided under the subheading "NEW
GROUNDS OF REJECTION."
Ans. 4.
The Answer does not include any sections with the subheadings
"WITHDRAWN REJECTIONS" or "NEW GROUNDS OF REJECTION,"
5
Appeal2013-002557
Application 12/225,585
though. See generally Ans. Instead, the EVIDENCE RELIED UPON section of
the Answer restates that the pending rejection relies only on Oh and
Holborow. Ans. 4. The GROUNDS OF REJECTION section of the Answer
likewise reiterates that the claims are rejected over Oh in view of Holborow.
Ans. 5. However, in the RESPONSE TO ARGUMENT section of the Answer
(Ans. 8-10), the Examiner first addresses the arguments regarding Holborow
(id. at 8-9), but then changes position from the Final Office Action (id. at 9).
Specifically, the Examiner newly explains that "the concept of
comparing the transmission time to a threshold and dropping the packet if
the time is greater than the threshold was well known in the art at the time of
the instant application," and newly cites two additional prior-art references
to support the conclusion that this concept was well known. Ans. 9 (citing
passages from Pignatelli (US 2007/0171909 Al; published July 26, 2007)
and Shimonishi (US 6,173,331 Bl; issued Jan. 9, 2001)).
We view the Examiner's introduction of the new reasoning in the
Answer, as well as the Examiner's new reliance upon Pignatelli and
Shimonishi, to be an untimely and improper attempt to supplement the
rejection with references that were not relied upon in the rejection. See In re
Hoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970) ("Where a reference is relied
on to support a rejection, whether or not in a 'minor capacity,' there would
appear to be no excuse for not positively including that reference in the
statement of the rejection").
Accordingly, we do not consider the additional references or rationale
of the Answer on appeal because they were not relied upon in the Final
Office Action-the action from which the appeal was taken. We instead
6
Appeal2013-002557
Application 12/225,585
base our analysis of the obviousness rejection solely on the evidence
contained in Oh and Holborow and the arguments relating thereto.
ANALYSIS
Holborow supports Appellant's contention that Holborow uses
different communication protocols and hardware than that of Oh. See, e.g.,
Holborow i-f 34 (explaining that "DOCS IS is a standard interface for cable
modems that specifies modulation schemes and the protocol for exchanging
bidirectional signals over cable") and i-fi-135, 36 (explaining that a DOCSIS
time division multiple access return channel can be controlled by
multiplexing the DOCSIS and DigiCipher II System (DCII) data into a
single MPEG Transport Stream and synchronizing the two streams' time
stamps).
As argued by Appellant (see Reply Br. 6), the Examiner's proposed
combination is not supported by articulated reasoning with rational
underpinning to support the obviousness conclusion. The Examiner
provided sufficient explanation as to why the combination would have been
based upon common knowledge or the nature of the problem to be solved.
Nor has the Examiner shown, e.g., that the proposed combination yields a
predictable result, let alone uses prior art elements predictably to achieve a
predictable result. See KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 418
(2007) (setting forth various potential rationales upon which a conclusion of
obviousness may be based).
This is especially true in light of the fact that Oh already teaches a
different protocol for measuring and adjusting timing offsets. See, e.g., Oh
i-f 47 (disclosing that "[a]n adaptive threshold for measuring the timing
7
Appeal2013-002557
Application 12/225,585
deviation is set based on the energy level of received UE signals. UE signal
samples [that] exceed the threshold are evaluated to determine timing
deviation").
Furthermore, even assuming solely for the sake of argument that
Holborow's protocol could be integrated into Oh's process, the Examiner
has not explained why one would have been motivated to include such
additional protocols. Nor has the Examiner set forth any persuasive reasons
for substituting Holborow's protocols for Oh's.
Rather, the rejection appears to be a product of impermissible
hindsight. For the foregoing reasons, then, Appellant has persuaded us of
error in the Examiner's obviousness rejection of independent claim 1. We
likewise are persuaded of error in the obviousness rejection of the other
independent claims-claims 11, 19, 26, 31, 39, 47, and 51, all of which
include similar language for which the Examiner relies upon Holborow.
Accordingly, we will not sustain the Examiner's rejection of those claims or
of claims 2, 5, 9, 12, 20, 27, 32, 35, 40, 44, and 48, which depend from
various ones of the independent claims.
NEW GROUND OF REJECTION
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we
enter a new ground of rejection for claims 19-22, 24--30, and 47-51 under
35 U.S.C. § 112(b) for indefiniteness. Claim 51, reproduced below with
emphasis added, is illustrative of the ambiguity present in each of the above-
listed claims:
51. A processor comprising:
a receiver receiving downlink signaling comprising an
uplink synchronization parameter;
8
Appeal2013-002557
Application 12/225,585
a detector detecting the uplink synchronization parameter;
a time measurement unit measuring an interval from the
detection of the uplink synchronization parameter by the
detector; and
an evaluator comparing the measured interval with a
predetermined threshold and, if the measured interval is shorter
than the predetermined threshold, concluding that the detected
uplink synchronization parameter is still valid, or else concluding
that the detected uplink synchronization parameter is no more
valid.
The preamble of claim 51 sets forth an apparatus-" a processor." The
body of claim 51, though, solely sets forth method steps-a step of receiving
downlink signaling with a receiver, a step of detecting with a detector, a step
of measuring with a time measurement unit, and a step of comparing with an
evaluator. As such, if claim 51 were to issue, it would not be reasonably
clear whether infringement occurs when one initially creates a processor that
allows the four recited steps to be performed, or whether infringement does
not occur until the four recited claim steps actually are performed. As such,
claim 51 reasonably does not apprise a person of ordinary skill in the art of
its scope.
Our reviewing court has agreed that "reciting both an apparatus and a
method of using that apparatus renders a claim indefinite under section 112,
paragraph 2." IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377,
1384 (Fed. Cir. 2005) (citing Ex parte Lyell, 17 USPQ2d 1548
(BPAI 1990)). In Lyell, the Board's predecessor tribunal further noted "the
statutory class of invention is important in determining patentability and
infringement." Id. at 1550 (internal citations omitted). See also Rembrandt
9
Appeal2013-002557
Application 12/225,585
Data Techs., LP, v. AOL, LLC, 641F.3d1331, 1339 (Fed. Cir. 2011) (citing
IPXL and Lyell).
For this reason we reject independent claim 51under35 U.S.C.
§ 112(b) as being indefinite. Independent claims 19, 26, and 47 similarly set
forth preambles that recite apparatuses, followed by method steps that
inconsistently indicate that the claims might be intended to be directed to
methods. Accordingly, we likewise reject these claims under 35 U.S.C.
§ 112(b) as being indefinite, as well as claims 20-22, 24, 25, 27-30, and 48-
50, which depend from these independent claims.
DECISION
The Examiner's decision rejecting claims 1, 2, 5, 9, 11, 12, 19, 20, 26,
27, 31, 32, 35, 39, 40, 44, 47, 48, and 51 is reversed.
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we
enter a new ground of rejection for claims 19-22, 24--30, and 47-51 under
35 U.S.C. § 112(b).
Rule 41.50(b) provides that "[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review." Rule
41.50(b) also provides the following:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
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,
10
Appeal2013-002557
Application 12/225,585
in which event the prosecution will be remanded to
the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or
new Evidence not previously of Record is made
which, in the opinion of the examiner, overcomes
the new ground of rejection designated in the
decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to
this subpart.
(2) Request rehearing. Request that the proceeding
be reheard under § 41.52 by the Board upon the
same Record. The request for rehearing must
address any new ground of rejection and state with
particularity the points believed to have been
misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds
upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure (MPEP) § 1214.01
(9th Ed., Rev. 9, Nov. 2015).
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)(l )(iv).
REVERSED
37 C.F.R. § 41.50(b)
11