Ex Parte Dwyer et al

Patent Trial and Appeal Board

Oct 27, 2016

13244761 (P.T.A.B. Oct. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/244,761 09/26/2011
94149 7590 10/28/2016
Fish & Richardson P,C, (Blackberry)
P.O.Box 1022
Minneapolis, MN 55440
FIRST NAMED INVENTOR
Johanna Lisa Dwyer
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.
29717-0559002 1325
EXAMINER
PHAM,TITOQ
ART UNIT PAPER NUMBER
2466
MAILDATE DELIVERY MODE
10/28/2016 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
Ex parte JOHANNA LISA DWYER and PAUL MARCUS CARPENTER
Appeal2015-006453
Application 13/244,761
Technology Center 2400
Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and
DENISE M. POTHIER, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1---6, 12-17, 23, and 24. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
Appeal2015-006453
Application 13/244,761
STATEMENT OF THE CASE
Appellants' invention counts signaling-connection-release-indication
(SCRI) messages and resets a count responsive to receiving packet-switched
(PS) data. Spec. i-f 9. One embodiment resets a counter when the user
equipment has uplink PS data available or the user equipment is paged. See,
e.g., id. i-fi-1 324, 3 60. Claim 1, reproduced below with our emphasis, is
illustrative:
1. A method comprising:
maintammg, at a user equipment (UE), a count of
signaling connection release indication (SCRI) messages sent by
the UE to a network, said count maintained while a SCRI inhibit
timer is not running;
determining whether a current value of the count is equal
to or exceeds a predetermined value;
responsive to the determination, stopping the sending of
further SCRI messages with a cause set;
receiving packet switched (PS) data at the UE; and
resetting the count at the UE responsive to receiving the
PS data.
THE REJECTION
The Examiner rejected claims 1---6, 12-17, 23, and 24 under 35 U.S.C.
§ 103(a) as unpatentable over Young (US 2009/0129339 Al; May 21, 2009),
Kuramoto (US 2010/0046533 Al; Feb. 25, 2010), and 3GPP TS 25.331 ver.
8.7.0, Rel. 8 (2009) ("3GPP"). Ans. 3-7. 1
1 Throughout this opinion, we refer to (1) the Final Rejection mailed June
19, 2014 ("Final Act."); (2) the Appeal Brief filed December 2, 2014
("App. Br."); (3) the Examiner's Answer mailed April 30, 2015 ("Ans.");
and (4) the Reply Brief filed June 18, 2015 ("Reply Br.").
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Application 13/244,761
CONTENTIONS
The Examiner finds that Young discloses every recited element of
claim 1 except for (1) determining whether a current count value is equal to
or exceeds a predetermined value; (2) stopping sending further SCRI
messages responsive to this determination; and (3) resetting the count
responsive to receiving PS data. Ans. 3-7. The Examiner, however, finds
that Kuramoto determines whether a count' s current value is equal to or
exceeds a predetermined value, and stops sending further messages. Id. at 5.
The Examiner also finds that 3GPP resets a V308 counter responsive to
receiving PS data. Id. at 5---6. Based on these collective teachings, the
Examiner concludes that claim 1 would have been obvious. Id.
Appellants argue that 3GPP does not reset a count responsive to
receiving PS data. App. Br. 3; Reply Br. 1-2. According to Appellants,
3GPP resets the V308 counter when sending the first "RRC CONNECTION
RELEASE COMPLETE" message, not in response to receiving PS data.
App. Br. 3; Reply Br. 2.
Appellants further argue that the Examiner has not demonstrated any
teaching, suggestion, or motivation to combine the references. App. Br. 4;
Reply Br. 2. In Appellants' view, 3GPP resets a counter at the beginning of
the connection-release process. App. Br. 4; Reply Br. 2. But according to
Appellants, if Young's UE has data to transmit, the data connection would
need to be available, not released. App. Br. 4; Reply Br. 2. Accordingly,
Appellants argue that combining Young and 3GPP, as the Examiner
proposes, would disrupt network operations. App. Br. 4; Reply Br. 2.
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Application 13/244,761
ISSUES
(1) Under§ 103, has the Examiner erred in rejecting claim 1 by
finding that Young, Kuramoto, and 3GPP collectively would have taught or
suggested resetting a count of SCRI messages at the UE responsive to
receiving the PS data?
(2) Is the Examiner's combining the teachings of these references
supported by articulated reasoning with some rational underpinning to
justify the Examiner's obviousness conclusion?
ANALYSIS
We begin by noting that the Examiner's findings related to
Kuramoto's determination (Ans. 5) are undisputed. Rather, as noted above,
this dispute centers on (1) the Examiner's reliance on Young and 3GPP for
teaching the recited reset, and (2) whether it would have been obvious to
combine Young's process with 3GPP's reset. See App. Br. 2-5;
Reply Br. 1-2.
Regarding the first issue, the key disputed limitation of claim 1
recites, in pertinent part, that the reset is "responsive to receiving" PS data.
The term "responsive to receiving" is undefined in the Specification. For
example, the Specification merely restates this limitation in summarizing the
invention. Spec. i-f 9, cited in App. Br. 1. Elsewhere, the Specification
further discloses that a counter is reset when the UE has uplink PS data
available or the UE is paged. See, e.g., Spec. i-fi-1324, 360. But Appellants
have not defined this limitation to so limit our interpretation. So in light of
this disclosure, we interpret "responsive to receiving" with its plain
meamng.
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Application 13/244,761
The phrase "responsive to" connotes a cause-and-effect relationship
between two events. See Am. Cal car, Inc. v. Am. Honda Motor Co., 651
F.3d 1318, 1339-40 (Fed. Cir. 2011) (affirming the construction of"in
response to" as requiring a first event to cause the second event); see also
Fujitsu Ltd. v. Belkin Int'!, Inc., No. 10-CV-03972-LHK, 2012 WL
4497966, at *29 (N.D. Cal. Sept. 28, 2012) (unpublished) (construing "in
response to" as requiring a cause-and-effect relationship). So a broad, but
reasonable, interpretation of claim 1 requires that the PS-data reception
causes the recited reset.
Given this interpretation, we are unpersuaded that the Examiner erred
in concluding that it would have been obvious to reset a counter, as taught
by 3GPP, responsive to Young's data reception. Ans. 4.
In particular, the Examiner cites Young's paragraphs 40 and 35 for
teaching the recited PS-data reception. Id. In the cited embodiment,
Young's connection manager tracks applications and associated Packet Data
Protocol (PDP) contexts and associated PS radio resources. Young i-f 35,
cited in Ans. 4. For example, the connection manager transitions to idle
mode when applications are not expected to exchange data. Young i-f 36,
cited in Ans. 4. To accomplish this, the connection manager sends a
transition indication---e.g., an SCRI message-for the PS domain to request
a transition. Young i-f 36. The transition indication could simply indicate
that the applications have completed a data exchange or are otherwise not
expected to exchange any more data. Id. i-f 39, cited in Ans. 4. The
transition indication could also report the data buffer's status. Young i-f 40,
cited in Ans. 4. Accordingly, we understand the Examiner to be mapping
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Application 13/244,761
this exchanged data to claim 1 's received PS data. Ans. 4 (explaining that
Young teaches "buffer data/ packet switched (PS) resource at the UE").
The issue, then, is whether it would have been obvious to reset a count
of indication messages (SCRis) "responsive to" receiving this data.
In concluding claim 1 would have been obvious, the Examiner relies
on 3GPP to teach a counter-reset procedure. Ans. 5. 3GPP's V308 counter
resets when sending the first "RRC CONNECTION RELEASE
COMPLETE" message. 3GPP 1424, Table 13.2. As pointed out by
Appellants, this occurs as part of a process to release the connection between
the UE and the network. See Reply Br. 2.
On this record, we are unpersuaded by Appellants' argument that
3GPP's reset is not "responsive to" receiving PS data in the proposed
combination. See App. Br. 3; Reply Br. 1-2. Specifically, under the
Examiner's proposed combination (Ans. 3-7), a cause-and-effect
relationship exists between ( 1) Young's above-discussed data exchange
involving the UE receiving PS data (Young i-fi-135--40), and (2) releasing that
connection (id. i136) causing 3GPP's counter-reset procedure. That is, but
for Young's data exchange-i.e., the PS-data receipt-there would be no
connection to release and, therefore, no counter reset. Therefore, the
Examiner's combination satisfies the cause-and-effect relationship required
by the "responsive to" limitation.
Moreover, we note that claim 1 does not preclude resetting responsive
to receiving an earlier reception of PS data that is followed by other
intervening events, in the above-described manner, because the claim
contains "comprising" language in the preamble that does not exclude
additional, unrecited elements. See Genentech, Inc. v. Chiron Corp.,
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112 F.3d 495, 501 (Fed. Cir. 1997) ("'Comprising' is a term of art used in
claim language which means that the named elements are essential, but other
elements may be added and still form a construct within the scope of the
claim.") (citation omitted). That is, the recited reset need not immediately
follow PS-data reception so long as the cause-and-effect relationship is
satisfied.
Furthermore, we are unpersuaded that the proposed combination lacks
articulated reasoning with some rational underpinning to justify the
Examiner's obviousness conclusion. See App. Br. 4; Reply Br. 2. First,
Appellants' contention that the proposed combination would have disrupted
network communications is unsubstantiated attorney argument and,
therefore, has little probative value. See In re Geisler, 116 F .3d 1465, 14 70
(Fed. Cir. 1997). Second, the Examiner does not propose to release the
connection when Young has PS data to transmit, as Appellants seem to
suggest. See App. Br. 4; Reply Br. 2.
Rather, the Examiner reasons that because resetting a counter at the
end of a process to be used again for a subsequent process is known in the
art as suggested by 3 GPP, resetting Young's counter when the system
transitions between different data transmission modes would have been
obvious. See Ans. 5, 11-12 (noting that 3GPP resets a counter when
transitioning to a different state or mode).
Although Appellants characterize 3GPP's reset as occurring when the
connection release process begins-not when it ends (Reply Br. 2}-
Appellants do not persuasively rebut the Examiner's finding that this reset
occurs when transitioning to a different state or mode, and that such a
teaching would have been applicable to Young's transitions from one data
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Application 13/244,761
transmission state to another. Ans. 11-12. Therefore, Appellants do not
persuasively rebut the articulated basis for Examiner's proposed
combination. See App. Br. 4; Reply Br. 2.
Accordingly, we sustain the Examiner's rejection of claim 1, and
claims 2-6, 12-17,2 23, and 24, not argued separately with particularity. See
App. Br. 5; Reply Br. 1-3.
CONCLUSION
The Examiner did not err in rejecting claims 1---6, 12-17, 23, and 24
under§ 103.
DECISION
The Examiner's decision rejecting claims 1---6, 12-17, 23, and 24 is
affirmed.
2 Claim 12 has only one element: a processor configured to perform five
recited functions. It is well settled, however, that the phrase "processor
configured to" can be used as a substitute for "means for," and thus, may
invoke the application of§ 112, sixth paragraph. Ex parte Lakkala, 108
USPQ2d 1392, 1397 (PTAB 2013) (informative). See also Ex parte Ero!,
107 USPQ2d 1963, 1969 (PTAB 2013) (informative) (holding the phrase "a
processor adapted to" was used as a substitute for "means for"); Ex parte
Smith, 108 USPQ2d 1198, 1203---04 (PTAB 2013) (informative) (holding the
phrase "a processor programmed to" was used as a substitute for "means
for"). We leave to the Examiner to determine whether that is the case here.
And if so, we further leave to the Examiner to determine whether the system
is equivalent to a single means to accomplish the recited functions and,
therefore, an improper single-means claim under§ 112, first paragraph. See
In re Hyatt, 708 F.2d 712, 714--15 (Fed. Cir. 1983), cited in Manual of
Patent Examining Procedure (MPEP) § 2164.08(a) (9th ed. Rev. 07.2015,
Nov. 2015).
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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