Ex Parte Kadaba et al

Patent Trial and Appeal Board

Nov 26, 2018

11645608 (P.T.A.B. Nov. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/645,608 12/27/2006
30594 7590 11/28/2018
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 8910
RESTON, VA 20195
FIRST NAMED INVENTOR
Srinivas R. Kadaba
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.
29250-002184/US/COA 7689
EXAMINER
HSU,ALPUS
ART UNIT PAPER NUMBER
2465
NOTIFICATION DATE DELIVERY MODE
11/28/2018 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):
dcmailroom@hdp.com
Nokia.IPR@nokia.com
jhill@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SRINIV AS R. KADABA, F AROOQ ULLAH KHAN,
ESHW AR PITT AMP ALLI, ASH OK N. RUD RAP ATNA,
GANAPATHY SUBRAMANIAN SUNDARAM,
SUBRAMANIAN VASUDEVAN, and YUNSONG YANG
Appeal2018-003610
Application 11/645,608
Technology Center 2400
Before CAROLYN D. THOMAS, JOSEPH P. LENTIVECH, and
SHARON PENICK, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 2-22. Claim 1 has been canceled. App.
Br. 26. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Alcatel-Lucent. App.
Br. 3.
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Application 11/645,608
STATEMENT OF THE CASE
Appellants' Invention
Appellants' invention generally relates to "wireless communications
and, more particularly, to a multiple mode data communication system and
method and a forward and/or reverse link control channel structure to
support various features." Spec. 1: 10-12. Claim 2, which is representative,
reads as follows:
2. A method for communicating in a wireless network, the
method comprising:
selecting, by a mobile station, at least one first scheduling
base station for scheduling reverse link wireless data
transmissions by the mobile station, the at least one first
scheduling base station selected from among an active set of base
stations known to, and in active communication with, the mobile
station.
Rejections
Claims 2, 3, 7, 8, 10, 11, 15, 16, 19, 20, and 22 stand rejected under
35 U.S.C. § I03(a) as being unpatentable over Cudak et al. (US 6,801,512
Bl; issued Oct. 5, 2004) ("Cudak"), and Rezaiifar et al. (US 6,377,809 Bl;
issued Apr. 23, 2002) ("Rezaiifar"). Final Act. 3-5.
Claims 4, 5, 17, and 18 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Cudak, Rezaiifar, and Lundby et al. (US 6,249,683
Bl; issued June 19, 2001) ("Lunbdy"). Final Act. 5-6.
Claims 9, 13, and 21 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Cudak, Rezaiifar, and Holma et al. (US 6,985,471 B 1;
issued Jan. 10, 2006) ("Holma"). Final Act. 6.
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Application 11/645,608
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cudak, Rezaiifar, and Berning et al. (US 6,236,646 B 1;
issued May 22, 2001)("Beming"). Final Act. 6-7.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cudak, Rezaiifar, Berning, and Holma. Final Act. 7.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cudak, Rezaiifar, Lundby, Berning, and Holma. Final
Act. 7-8.
ANALYSIS
Appellants contend the combination of Cudak and Rezaiifar fails to
teach or suggest "selecting, by a mobile station, at least one first scheduling
base station for scheduling reverse link wireless data transmissions by the
mobile station," as recited in claim 2. App. Br. 7-14; Reply Br. 2-3.
Appellants cite to paragraphs 6-14 of the Declaration under 37 C.F.R.
§ 1.132 by Dr. Subramanian Vasudevan, filed January 25, 2017
("Vasudevan Declaration") in which Dr. Vasudevan opines that the cited
references, whether considered alone or in combination, do not teach or
suggest the selection, by a mobile station, of a base station for the purpose of
scheduling reverse link wireless data transmissions by the mobile station, as
required by claim 2. App. Br. 9-12. Appellants argue:
Now that Appellants have provided (by way of the
Vasudevan Declaration) objective evidence refuting the
[Examiner's] interpretation of Cudak and [Rezaiifar], the
[Examiner] is required to credit the asserted evidence or else to
adduce other evidence to contradict it. See MPEP § 716.01.
However, in responding to the evidence provided via the
Vasudevan Declaration, the Office fails to provide any such
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Application 11/645,608
contradictory evidence. The Office merely refutes the statements
by Dr. Vasudevan by making essentially the same arguments
(and directing Appellants' attention to essentially the same
portions of the cited art) as before.
App. Br. 12. Appellants further argue:
Given that the [Examiner] fails to provide any evidence to
contradict the objective evidence provided by way of the
Vasudevan Declaration, Appellants respectfully submit that the
conclusion that Cudak and [Rezaiifar], taken singly or in
combination, as understood by one of ordinary skill in the art,
fail to teach or suggest all features of claim 2 is supported by a
preponderance of the evidence in this case.
App. Br. 14; see also Reply Br. 3.
We do not find Appellants' arguments persuasive. Our reviewing
court has held that "[a]n intended use or purpose usually will not limit the
scope of the claim because such statements usually do no more than define a
context in which the invention operates." Boehringer Ingelheim Vetmedica,
Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003).
Although "[s]uch statements often ... appear in the claim's preamble," In re
Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a statement of intended use or
purpose can appear elsewhere in a claim. Id.
We agree with, and Appellants do not dispute, the Examiner's finding
that Cudak teaches that a mobile station selects a base station for scheduling
wireless data transmissions by the mobile station and that the base station is
selected from among an active set of base stations known to, and in active
communication with, the mobile station. Final Act. 3 ( citing Cudak 2 :44--
52; 4:16-22; 11:37-59). We find that the preferable act "for scheduling
reverse link wireless data transmissions by the mobile station" is merely a
statement of intended use for the selected base station because it only
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Application 11/645,608
defines a context in which the selection is made. Because the claim does not
actually require that the scheduling of the reverse link wireless data
transmissions be performed, we conclude that Appellants' arguments are not
commensurate with the scope of the claim and, therefore, are not persuasive
of error.
Appellants further contend that the combination of Cudak and
Rezaiifar is improper because: ( 1) one of ordinary skill in the art would have
been led away from combining the teachings of the cited references (App.
Br. 14--19 (citing Vasudevan Declaration ,r,r 18, 21, 22, 24); Reply Br. 4--5);
and (2) having a mobile station select a base station for scheduling its own
reverse link communications, as required by claim 2, was contrary to the
accepted wisdom in the art of wireless communications at the time of
Appellants' invention (App. Br. 19-21 (citing Vasudevan Declaration ,r 25);
Reply Br. 5-7). Because, as discussed above, Cudak teaches or suggests the
limitations recited in claim 2 ( minus the intended use), Appellants'
arguments regarding one of ordinary skill in the art having been led away
from combining the teachings of the cited references are unpersuasive of
Examiner error in part because the teachings of Rezaiifar are actually not
needed. As also discussed above, claim 2 does not actually require
scheduling the reverse link wireless data transmissions, therefore,
Appellants' arguments regarding having a mobile station select a base
station for scheduling its own reverse link communications being contrary to
the accepted wisdom in the art of wireless communications at the time of
Appellants' invention are not commensurate with the scope of the claim and,
therefore, are also not persuasive of error.
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For the foregoing reasons, we are not persuaded the Examiner erred in
rejecting claim 2 and claims 2-22, which are not separately argued with
particularity. See App. Br. 22-24.
DECISION
We AFFIRM the Examiner's rejections of claims 2-22 under
35 U.S.C. § I03(a).
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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