Ex Parte Jami et al

Patent Trial and Appeal Board

Jun 23, 2014

10662917 (P.T.A.B. Jun. 23, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte IQBAL JAMI and PAUL WILLIAM PIGGIN
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Appeal 2011-010201
Application 10/662,917
Technology Center 2600
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Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-010201
Application 10/662,917
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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-3, 5-8, and 10-16. Claims 4 and 9 were previously cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The claims are directed to a method of transfer of a call connection
connecting a telecommunications base station and a mobile user terminal
between dedicated and shared channels, and a corresponding
telecommunications system. Claim 1, reproduced below, is representative of
the claimed subject matter:
1. A method of transfer of a call connection connecting a
telecommunications base station and a mobile user terminal
between dedicated channels in both directions therebetween and
shared channels in both directions therebetween, comprising:

determining amount of data buffered at the base station
and the user terminal for transmission therebetween and/or rate
that data arrives at the base station and the user terminal for
transmission therebetween;

determining a value of a measured parameter of signals
between the base station and the user terminal, the parameter
being signal attenuation or propagation delay; and

determining whether or not the shared channels are in a
mode in which an acknowledgement of receipt is required to be
received back before data is assumed to have been correctly
received;

deciding to make the transfer, dependent upon said value
and upon said amount or rate, and upon said mode determined.

Appeal 2011-010201
Application 10/662,917
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Vialen US 6,978,143 B1 Dec. 20, 2005
Winberg GB 2369003 A May 15, 2002
Helmersson WO 02/067606 A2 Aug. 29, 2002

REJECTION
The Examiner made the following rejection:
Claims 1-3, 5-8, and 10-16 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Winberg in view of Helmersson and further in view
of Vialen.

ANALYSIS
Appellants maintain:
Claim 1 recites, in part, "determining whether or not the
shared channels are in a mode in which an acknowledgement of
receipt is required to be received back before data is assumed to
have been correctly received" and "deciding to make the
transfer, dependent upon said value and upon said amount or
rate, and upon said mode determined. Accordingly, the result
of the determination of whether or not the shared channels are
in mode in which acknowledgement of receipt is required is
utilized in deciding to make the transfer.

(App. Br. 4).
The Examiner maintains that "Vialen teaches the system makes a
decision for uses of common channel or dedicated channel based on
acknowledgement received in common channel FACH/RACH (see Vialen,
col 2 lines 55-67), thus Vialen discloses a shared channel in a mode in which
Appeal 2011-010201
Application 10/662,917
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an acknowledgement is required." (Ans. 4). The Examiner further
maintains in the responsive arguments that the Winberg reference switches
between a common/shared channel and a dedicated channel. (Ans. 8).
Additionally, the Examiner maintains:
Secondly, for the clarification to the claimed limitation in
claim 1 about "determining whether or not the shared channels
are in a mode in which an acknowledgement of receipt is
required[,]" or in the argument "determining whether or not the
shared channels are in a mode requiring acknowledgement of
the data[,]" the examiner would like to bring in paragraphs [8]-
[9], [13] and [26] from the Application Publication US
2004/0082336 . . .

(Ans. 9). We note that the Examiner refers to four paragraphs from
Appellants' Specification (two from the background of the invention, one
from the summary of the invention, and one from the detailed description).
The Examiner then relies upon Appellants' Specification in the analysis of
the prior art rejection. The Examiner states "[i]n this thought, Vialen teaches
decision about whether to use a common channel or a dedicated channel
based on a plurality of channel selection parameters . . ." (Ans. 11). From
our review of the portions of columns 2 and 4 of the Vialen reference
identified by the Examiner, we find no express or implied teaching or
suggestion regarding a decision about whether to use a common channel or a
dedicated channel based on "whether or not the shared channels are in a
mode in which an acknowledgement of receipt is required to be received
back before data is assumed to have been correctly received." Nor has the
Examiner identified how Appellants’ Specification clarifies the teachings or
suggestions relied upon in the Vialen reference or the combination.
Therefore, we find the Examiner’s obviousness rejection to be deficient, and
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Application 10/662,917
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we cannot sustain the rejection of independent claim 1 and its dependent
claims 2, 3, and 5.
Independent claims 6 and 11 and their respective dependent claims 7,
8, 10, and 12-16 contain the same limitations found deficient in the rejection.
Therefore, we cannot sustain the rejection of independent claims 6 and 11
and their respective dependent claims 7, 8, 10, and 12-16.

CONCLUSION
The Examiner erred in rejecting claims 1-3, 5-8, and 10-16 based
upon obviousness.

DECISION
For the above reasons, the Examiner’s rejection of claims 1-3, 5-8,
and 10-16 is reversed.

REVERSED

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