Ex Parte Kashima et al

Patent Trial and Appeal Board

Sep 16, 2016

12811815 (P.T.A.B. Sep. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/811,815 07/06/2010
10949 7590 09/20/2016
Nokia Corporation and Alston & Bird LLP
c/o Alston & Bird LLP
Bank of America Plaza, 101 South Tryon Street
Suite 4000
Charlotte, NC 28280-4000
FIRST NAMED INVENTOR
Tsuyoshi Kashima
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.
042933/414447 1760
EXAMINER
NGO, NGUYEN HOANG
ART UNIT PAPER NUMBER
2473
NOTIFICATION DATE DELIVERY MODE
09/20/2016 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TSUYOSHI KASHIMA and ESA MALKAMAKI 1
Appeal2015-002424
Application 12/811,815
Technology Center 2400
Before KRISTEN L. DROESCH, NORMAN H. BEAMER, and
JAMES W. DEJMEK, Administrative Patent Judges.
DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek review under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 34-56, which constitute all the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
BACKGROUND
The disclosed invention relates to padding a header of a protocol data
unit utilized by radio communications systems. See Spec. Abstract, i-fi-1 1,
1 Appellants indicate the real party-in-interest is Nokia Corporation. App.
Br. 2.
Appeal2015-002424
Application 12/811,815
13-19. Representative claim 34, reproduced from the Claims Appendix of
the Appeal Brief, reads as follows (disputed limitations in italics):
34. A method comprising: generating a protocol data
unit; and inserting, by a processor, at least one padding sub-
header within a header of the protocol data unit, wherein
padding is only within the header of the protocol data unit.
REJECTIONS
Claims 34--36, 38--42, 44--48, 50-52, and 54--56 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Torsner et al. (US 2010/0046405
Al; published Feb. 25, 2010) ("Torsner").
Claims 37, 43, 49, and 53 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Torsner and 3RD GENERATION PARTNERSHIP PROJECT;
TECHNICAL SPECIFICATION GROUP RADIO ACCESS NETWORK; EVOLVED
UNIVERSAL TERRESTRIAL RADIO ACCESS (E-UTRA) MEDIUM ACCESS
CONTROL (MAC) PROTOCOL SPECIFICATION (RELEASE 8), 2007 ("3GPP TS
16 1? 1 ") - ~---~ /"
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments in the Appeal Brief, the Examiner's Answer, and the arguments
in the Reply Brief. We disagree with Appellants' conclusions. We agree
with, and adopt as our own, the Examiner's findings and conclusions of law,
to the extent they are consistent with our below analysis. We highlight the
following findings and arguments below for emphasis.
Claims 34-36, 38--42, 44-48, 50--52, and 54-56
Appellants argue Torsner does not disclose, teach or suggest a
"padding sub-header," as recited in independent claims 34, 40, 48 and 52,
but discloses adding a number of bits, which is not equivalent to, and does
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Application 12/811,815
not suggest a padding sub-header. See App. Br. 6-8. Appellants contend a
sub-header is a combination of header information elements. See id. at 6
(citing Spec. i-fi-126, 39, Figs. 6A---6D). Appellants further assert adding a
number of bits, such as adding 0 to 7 bits as disclosed by Torsner, does not
suggest a sub-header structure which is a combination of header information
elements. See id. at 7-8. Appellants contend "padding sub-header" is
clearly described in the original Specification and cannot be interpreted as
equivalent to padding by adding bits to a transmission. See Reply Br. 3.
Appellants argue the Specification clearly discloses that a padding sub-
header comprises some amount of structure (e.g., fields within the sub-
header), which is more than just adding a number of bits to a transmission.
See id. at 3--4 (citing Spec. i-fi-126, 36, 39, Figs 2, 4, 6A---6D).
Although claims must be given their broadest reasonable
interpretation in light of the Specification, it is improper to read limitations
into the claim from the Specification. See In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993). We are not persuaded that "padding sub-header"
requires a sub-heading structure and/or a combination of header information
elements. Appellants do not direct us to sufficient objective evidence (e.g.,
declaration by one with ordinary skill in the art, an explicit definition for
"padding sub-header" in the Specification) to demonstrate that the
Examiner's interpretation of "padding sub-header" is unreasonable. We
further note:
The "broadest reasonable interpretation" rule recognizes that
"before a patent is granted the claims are readily amended as
part of the examination process." Thus, a patent applicant has
the opportunity and responsibility to remove any ambiguity in
the claim term meaning by amending the application.
Additionally, the broadest reasonable interpretation rule "serves
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Application 12/811,815
the public interest by reducing the possibility that claims,
finally allowed will be given broader scope than is justified."
In re Bigio, 381F.3d1320, 1324 (Fed. Cir. 2004) (citations omitted)
(quoting Burlington Indus. v. Quigg, 822 F.2d 1581, 1583 (Fed. Cir 1987);
In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004);
citing in re Prater, 415 F.2d 1393, 1404---05 (CCPA 1969)).
Appellants also argue Torsner fails to disclose, teach, or suggest the
padding is only within the header of the protocol data unit because Torsner
does not disclose, and is not directed to, any further features of the protocol
data unit (PDU). See App. Br. 6-7; Reply Br. 4--5. At first blush, "wherein
padding is only within the header of the protocol data unit," recited in
independent claims 34, 40, 48, and 52 appears to be a negative limitation.2
We note, however, the scope of each of these claims is open ended due to
the transitional phrase "comprising." Turning to Appellants' Specification,
we observe the Specification discloses embodiments including padding in
the header and the payload. See Spec. i-f 21 (each of the packet generators
include padding logic to perform padding of a MAC PDU either by padding
the MAC header or the payload part or both); i-f 25, Fig. 2 (optional padding
field in the payload); i-f 44 (extra bytes at the end of the MAC PDU not
included in the MAC, header, MAC control PDUS or MAC SDU's are
padding). Due to the open-ended scope of each of claims 34, 40, 48, and 52,
and the Specification disclosing padding in the payload, claim 34 does not
preclude padding in other parts of the PDU such as the payload.
2 Independent claims 1, 9, 20, and 27 filed originally and now cancelled, did
not recite "wherein the padding is only within the header."
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For these reasons, Appellants' arguments are not persuasive of error
in the Examiner's rejection of independent claims 34, 40, 48, and 52, and
claims 35, 38, 41, 44, 46, 47, 50, 54, and 56 dependent therefrom, and not
argued separately (see App. Br. 10-12).
Claims 36 and 42
Claim 36 depends from claim 34 and further recites "wherein a
difference in size of a Medium Access Control protocol data unit and size of
a Radio Link Control protocol data unit is either 2 bytes or 3 bytes." Claim
42, dependent from claim 40, recites identical limitations to claim 36.
Appellants argue Torsner fails to disclose, teach, or suggest the limitations
of claims 36 and 42. See App. Br. 11. Appellants assert Torsner merely
discloses adding bits to the header such that the sum of the bits of the RLC
header, MAC header and added bits is octet aligned (or n-aligned, where n is
a multiple of 8), at most suggesting summing the bits of the RLC header and
the MAC header to determine the number of bits that need to be inserted to
ensure alignment. See id. at 12. Appellants further contend Torsner fails to
provide any suggestion for one to modify Torsner's teachings to include
adding padding sub-headers when the difference in size of a MAC PDU and
a RLC PDU is 2 or 3 bytes. See id. Lastly, Appellants contend there is no
motivation to make the modification because Torsner is directed to ensuring
that a PDU header is n-aligned and has nothing to do with the overall size of
PDU s. See id.
Appellants' argument that T orsner at most suggests summing the bits
of the RLC header and MAC header, and argument that there is no
motivation to modify the teachings of Torsner, do not address sufficiently
the Examiner's following findings and conclusion: (1) Torsner teaches n-bit
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alignment where n may be 8, 16, 32, or any other integer value, and the use
of 32 bit alignment and 64 bit alignment (citing Torsner i-fi-13, 23); (2) it is
well known in the art to use padding in order to align the bytes, by
determining the difference in sizes; and (3) it would have been obvious to
one with ordinary skill in the art to consider the difference in sizes be either
2 bytes or 3 bytes when 32 or 64 bit alignment is used, in order to efficiently
and correctly determine the type of padding needed and how to format the
headers of a PDU. See Final Act. 4--5; Ans. 8. Appellants' argument that
the teachings of Torsner must provide the suggestion for the proposed
modification (see App. Br. 12) is misplaced. It is not necessary to find
precise teachings in the prior art directed to the specific subject matter
claimed because inferences and creative steps that a person of ordinary skill
in the art would employ can be taken into account. See KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007); accord In re Keller, 642 F.2d 413,
425 (CCP A 1981) (the test for obviousness is not that the claimed invention
must be expressly suggested in any or all of the references).
For these reasons, in addition to the reasons discussed above
addressing independent claims 34, 40, 48, and 52, we are not persuaded of
error in the Examiner's rejection of dependent claims 36 and 42
Claims 39, 45, 51, and 55
Claim 39 depends from claim 34 and further recites "wherein one
padding sub-header or two padding sub-headers are inserted within the
header of the protocol data unit for padding of 1 byte or 2 bytes." Claims
45, 51, and 55, dependent respectively from independent claims 40, 48, and
52, recite identical limitations to claim 39. Appellants argue Torsner fails to
disclose, teach, or suggest the limitations of claims 39, 45, 51, and 55. See
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App. Br. 10. Appellants assert Torsner merely teaches octet or n-alignment
of the PDU header by adding 0 to 7 bits to ensure that the payload part of the
PDU begins at an n-aligned position. See id. at 10-11. Appellants contend
inserting padding of one or two bytes would imply that the header was
already octet aligned, and thus Torsner would not need to add padding bits,
would be irrelevant, and contravene the purpose and objective or Torsner's
embodiments. See id. at 11; Reply Br. 6.
Appellants' arguments are not persuasive of Examiner error in the
rejection because, as pointed out by the Examiner, the addition of 0 to 7 bits
of padding in Torsner is merely illustrative with respect to 8-bit alignment,
and Torsner discloses n-bit alignment, including 32 bit or 64 bit alignment.
See Final Act. 4, 6 (citing Torsner i-fi-f l, 3, 23); Ans. 7 (citing Torsner i123).
Appellants' arguments also are predicated on the addition of padding of only
1 to 7 bits, or the addition of padding of only one byte or two bytes in
Torsner to achieve octet alignment. However, we understand the Examiner
to find that Torsner teaches or suggests adding padding of 0 to 7 bits, and
adding padding of one byte or two bytes to achieve n-bit alignment,
including Torsner' s disclosed use of 32 bit or 64 bit alignment.
For these reasons, in addition to the reasons discussed above
addressing independent claims 34, 40, 48, and 52, we are not persuaded of
error in the Examiner's rejection of dependent claims 39, 45, 51, and 55.
Claims 37, 43, 49, and 53
Claim 37 depends from claim 34 and further recites "wherein the
padding subheader includes, a reserved logical channel identifier[(LCID)]
field to indicate padding, and an extension field to specify whether an
additional field is present." Claims 43, 49, and 53 depend respectively from
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Application 12/811,815
independent claims 40, 48, and 52, and recite identical limitations to claim
37. Appellants contend it would not be obvious to modify the adding of bits
to a header as disclosed by Torsner to include using an LCID field and
extension field to indicate byte padding as allegedly disclosed by 3GPP TS
36.21 V8.0.0. See App. Br. 13. Appellants assert Torsner is not directed to
adding byte padding to a PDU, but instead discloses adding a number of bits
to a header to ensure n-alignment so that the payload starts at an n-aligned
position. See id. at 13; Reply Br. 7. Appellants assert that it would not be
possible for the bits added by Torsner to the header to include an LCID field
and extension field. See App. Br. 13-14; Reply Br. 7.
Appellants' arguments are not persuasive of error in the Examiner's
rejection. As discussed above, the Examiner points out that addition of 0 to
7 bits of padding in Torsner is merely illustrative with respect to 8-bit, and
Torsner discloses n-bit alignment including 32 bit or 64 bit alignment. See
Final Act. 6-7 (citing Torsner i-f 23); Ans. 8 (citing Torsner i-f 23).
Appellants also do not provide persuasive argument or sufficient objective
evidence to support the assertion that it would not be possible for Torsner's
padding added to the header to include an LCID field and extension field.
Argument of counsel cannot take the place of evidence lacking in the record.
Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977); see also In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
For these reasons, in addition to the reasons discussed above
addressing independent claims 34, 40, 48, and 52, we are not persuaded of
error in the Examiner's rejection of dependent claims 37, 43, 49, and 53.
DECISION
We AFFIRM the rejections of claims 34--56.
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Application 12/811,815
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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