Ex Parte KeskitaloDownload PDFPatent Trial and Appeal BoardNov 16, 201713578510 (P.T.A.B. Nov. 16, 2017) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/578,510 08/10/2012 Ilkka Keskitalo 042933/444909 2643 10949 7590 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 EXAMINER SCOTT, MARK A ART UNIT PAPER NUMBER 2458 NOTIFICATION DATE DELIVERY MODE 11/20/2017 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): u sptomail @ alston .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ILKKA KESKITALO Appeal 2017-004279 Application 13/578,5101 Technology Center 2400 Before ALLEN R. MacDONALD, BETH Z. SHAW and NABEEL U. KHAN, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL 1 Filed Aug. 10, 2012; this application is a 371 of PCT/FI10/50945 filed 11/22/2010 which claims benefit of 61/303,995 filed 02/12/2010. Appeal 2017-004279 Application 13/578,510 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims 59—80. Claims 1—58 have been cancelled. App. Br. 9. We have jurisdiction under 35 U.S.C. § 6(b). Exemplary Claim2 Exemplary claim 59 under appeal reads as follows (emphasis and bracketing added): 59. An apparatus comprising at least one processor and at least one memory including computer program code, the at least one memory and the computer program code configured to, with the at least one processor, cause the apparatus to: [(A)] provide that one or more measurements are to be made during an idle mode at least partially based upon measurement configuration information; [(B)] provide that an indication that measurement data is available is to be sent during or following a transition to an active mode; and [(C)] provide that a report of the measurement data is to be sent in response to a request for the measurement data. 2 Claim 1 contains a typographical error (the verb “is” occurs twice in the second “provide” clause). Consistent with Appellants’ Specification at page 3, lines 1, 9, 22, and 32, and page 18, lines 9—12, we treat “measurement data is available is to be sent” as reading —measurement data is available to be sent—. 2 Appeal 2017-004279 Application 13/578,510 Rejection on Appeal The Examiner rejected claims 59—80 under 35 U.S.C. § 102(e)3 as being anticipated by Lee et al. (US 2011/0183662 Al; pub. July 28, 2011).4 Issues on Appeal Did the Examiner err in rejecting claim 59 as being anticipated? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellant’s arguments that the Examiner has erred. Appellant contends that the Examiner erred in rejecting claim 59 under 35 U.S.C. § 102(b) because: Lee was filed January 28, 2011, after the effective filing date of the present application. However, Lee claims priority to two provisional applications, the first of which was filed on January 28, 2010, prior to the effective filing date of the present application of February 2, 2010, and the second of which was filed on April 12, 2010, subsequent to the effective filing date of the present application. Thus, Lee only qualifies as prior art under 35 USC 102(e) for those portions that were fully supported by the first provisional application filed on January 28, 2010. In this regard, the first provisional application 61/299,317 filed January 28, 2010 contains no disclosure ^/“providing that an indication that measurement data is available [] to be sent during or following a transition to an active mode,” as recited in the pending independent claims. As Lee only qualifies as prior art for those portions that were fully supported by the first 3 Separate patentability is not argued for claims 60—80. Except for our ultimate decision, the rejection of claims 60-80 is not discussed further herein. 4 Filed Jan. 28, 2011; Provisional application No. 61/299,317, filed on Jan. 28, 2010; Provisional application No. 61/323,320, filed on Apr. 12, 2010. 3 Appeal 2017-004279 Application 13/578,510 provisional application and since the first provisional application fails to ... teach . . . “providing that an indication that measurement data is available [] to be sent during or following a transition to an active mode,” as recited in the independent claims, the portions of Lee that qualify as prior art fail to . . . teach . . . each and every feature of the independent claims. App. Br. 6 (Appellant’s emphasis omitted; Panel emphasis added). Examiner responds: The 61/299317 provisional application (hereinafter “Lee '317”) teaches measuring a device during idle mode and transmit the measured data the report to server when the device goes into active mode. In-other-words, the device internal data is measured when in idle mode, then the reporting of the measurement remains on the device until the device goes into active mode, at which point, the result of the report is send over the network to the server. See page 22, 2.1. The more specifically Lee teaches in idle mode measure and suspend reporting. See page 22, 2.1. And, when in the connected mode, immediate report the measuring logging to the network. See page 22, 2.1. That subject matter has support in the provisional application because Lee does teach measuring device while in idle mode, no transition is conducted while the user device is in idle mode, upon active mode, and the report is automatically transmitted to the server over the network. Lee teaches the claim features as appellant claimed. Ans. 3 (emphasis added). We agree with Appellant. Our review of Lee ’317 does not find the teachings set forth in Examiner’s response. We conclude, consistent with Appellant’s argument, the Examiner’s findings are in error. Therefore, we conclude that there is insufficient support for a finding that claim 59 was anticipated at the time of Appellant’s invention. 4 Appeal 2017-004279 Application 13/578,510 CONCLUSIONS (1) Appellant has established that the Examiner erred in rejecting claims 59—80 as being anticipated under 35 U.S.C. § 102(e). (2) Claims 59—80 have not been shown to be unpatentable. DECISION The Examiner’s rejection of claims 59—80 is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation