Ex Parte KIM et alDownload PDFPatent Trial and Appeal BoardFeb 10, 201612611592 (P.T.A.B. Feb. 10, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/611,592 11103/2009 68103 7590 02/12/2016 Jefferson IP Law, LLP 1130 Connecticut Ave., NW, Suite 420 Washington, DC 20036 FIRST NAMED INVENTOR Soeng Hun KIM 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. 0203-0175 2784 EXAMINER CHUNG, HOON J ART UNIT PAPER NUMBER 2474 NOTIFICATION DATE DELIVERY MODE 02/12/2016 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): usdocketing@jeffersonip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SOENG HUN KIM and JUNG WOONG LEE Appeal2014-003273 Application 12/611,592 1 Technology Center 2400 Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the final rejection of claims 13, 15-21, 23-28. Appellants have previously canceled claims 1-12, 14 and 22. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is Samsung Electronics Co., Ltd. App. Br. 2. Appeal2014-003273 Application 12/611,592 STATEMENT OF THE CASE2 The Invention Appellants' disclosed and claimed invention relates to a method and apparatus for processing a control message which requests retransmitting data to prevent packet losses and unnecessary transmissions. Spec. i-f 2. Exemplary Claim Claim 13, reproduced below, is representative of the subject matter on appeal (emphasis added to disputed limitation): 13. A method for transmitting a control message, the method compnsmg: setting a First Missing Sequence number (PMS) field to be a PMS, wherein the PMS is a sequence number of a first missing data unit; [L 1] generating a bitmap field indicating a reception of plurality of data units if there is at least one out-of-sequence data unit; [L2] generating the control message including the FMS field and the bitmap field; and transmitting the control message. 20ur decision relies upon Appellants' Appeal Brief ("App. Br.," filed Aug. 16, 2013); Reply Brief ("Reply Br.," filed Dec. 30, 2013); Examiner's Answer ("Ans.," mailed Oct. 31, 2013); Final Office Action ("Final Act.," mailed Dec. 14, 2012); and the original Specification ("Spec.," filed Nov. 3, 2009). 2 Appeal2014-003273 Application 12/611,592 Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Buchholz et al. ("Buchholz") Chiu et. al. ("Chiu") us 5,440,545 US 6,505,253 B 1 Aug. 8, 1995 Jan. 7,2003 3rd Generation Partnership Project; Technical Specification Group Radio Access Network; Evolved Universal Terrestrial Radio Access (E- UTRA); Packet Data Convergence Protocol (PDCP) specification (Release 8), 3GPP TS 36.323 V8.1.0, (2008-03) Technical Specification, ©2008, 3GPP Organizational Partners (hereinafter "3GPP"). Rejections on Appeal RI. Claims 13, 15, 16, 21, 23, and 24 stand rejected under 35 U.S. C. § 102(b) as being anticipated by Chiu. Final Act. 4. R2. Claims 17, 18, 25, and 26 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Chiu and Buchholz. Final Act. 7. R3. Claims 19, 20, 27, and 28 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Chiu and 3GPP. Final Act. 12. CLAIM GROUPING Based on Appellants' arguments (App. Br. 3-7), we decide the appeal of rejection RI of claims 13, 15, 16, 21, 23, and 24 on the basis of independent claim 13. 3 Appeal2014-003273 Application 12/611,592 We address remaining claims 17-20 and 25-28 in rejections R2 and R3, not argued separately, infra. ISSUES AND ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellants. We do not consider arguments which Appellants could have made but chose not to make in the Briefs so that we deem any such arguments as waived. 37 C.F.R. § 41.37(c)(l)(iv). We disagree with Appellants' arguments with respect to independent claims 13 and 21, and we incorporate herein and adopt as our own: the findings and reasons set forth by the Examiner in the action from which this appeal is taken. We incorporate such findings, reasons, and rebuttals herein by reference unless otherwise noted. However, we highlight and address specific findings and arguments regarding independent claim 13 for emphasis as follows. § 102(b) Rejection RI of Claims 13, 15, 16, 21, 23 and 24 Issue Appellants argue (App. Br. 3-7; Reply Br. 2-5) the Examiner's rejection of independent claim 13 under 35 U.S.C. § 102(b) as being anticipated by Chiu is in error. These contentions present us with the following issue: Did the Examiner err in finding Chiu discloses a "method for transmitting a control message," which includes, inter alia, the steps of [L 1] "generating a bitmap field indicating a reception of plurality of data units if there is at least one out-of-sequence data unit," and [L2] "generating the 4 Appeal2014-003273 Application 12/611,592 control message including the PMS field and the bitmap field," as recited in claim 13? Analysis Appellants contend: An inventive aspect of the claims 13 and 21 is that a bitmap is generated "if there is at least one out-of-sequence data unit." In contrast, Chiu, at col. 18, lines 38- 40, discloses that "[i]f there are one or more missing packets, the start sequence number indicates the first missing packet. A bit map must follow." The quoted disclosure of Chiu is the basis for the Examiner's assertion that Chiu discloses the above noted feature of claims 13 and 21. However, the quoted disclosure of Chiu does not explicitly disclose the noted feature of claims 13 and 21. App. Br. 4. We view the issue before us as being one of claim construction as to what is a broad but reasonable interpretation of the term "out-of-sequence data unit;" as recited in limitation [L 1]. "In the patentability context, claims are to be given their broadest reasonable interpretations ... limitations are not to be read into the claims from the specification" In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted). Any special meaning assigned to a term "must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention." Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998). Absent an express intent to impart a novel meaning to a claim term, the words take on the ordinary and customary meanings attributed to them by those of ordinary skill in the art. Brookhill- 5 Appeal2014-003273 Application 12/611,592 Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003) (citation omitted). Here, we note the Appellants have not provided an explicit definition of "out-of-sequence data unit" in their Specification that would preclude the Examiner's broad but reasonable interpretation, nor have Appellants shown the Examiner's construction is inconsistent with Appellants' Specification, nor presented any evidence of record to rebut the Examiner's finding that Chiu's missing packets discloses Appellants' "out-of-sequence data unit" under a broad but reasonable interpretation. 3 We agree with the Examiner's finding that Chiu discloses Appellants' disputed limitation [LI]. Final Act. 4--5; Ans. 3. We agree with the Examiner's finding of anticipation because, under a broad but reasonable interpretation, Chiu's first received packet following a missing packet discloses the disputed limitation of an "out-of-sequence data unit," as recited in claim 13. Chiu also discloses "a bit map must follow" if there is "one or more missing packets." Chiu col. 18, 11. 3 8--40. We agree with the Examiner's finding (Ans. 3), that in Chiu (col. 18, 11. 38--40), when there is a missing packet, the subsequent packet following the missing packet is an "out-of-sequence data unit," within the meaning of claim 13. Thus, the packet received after the missing packet is not the expected packet and is therefore out-of-sequence from the expected sequence. Ans. 3. We particularly note claim 1 is silent regarding any point 3 Because "applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted). 6 Appeal2014-003273 Application I2/6I I,592 of reference that specifically defines what the "data unit" is relatively "out- of-sequence" to. Therefore, on this record, we are not persuaded the Examiner's reading is overly broad or unreasonable. Ans. 3. 4 For these reasons, we find disputed limitation [LI] of claim I is disclosed by Chiu. We further agree with the Examiner's finding that Chiu's ACK message, which contains a start sequence number and a bit map length, teaches disputed limitation "a control message," as recited in limitation [L2] ofclaim I3. Final Act. 4; Chiu Col. I8, lines 32--44. We also agree with the Examiner's finding Chiu's start sequence number teaches disputed limitation "First Missing Sequence number (PMS)." Id. Although we have considered Appellants' inherency argument (App. Br. 5---6, Reply Br. 2-5), we do not find such argument dispositive of Rejection RI under § I 02(b) because, even assuming, arguendo, Appellants are correct regarding their inherency argument, we find Chiu describes at least one operation that expressly discloses the disputed [L l] limitation, as discussed above. As an additional matter of claim construction, we note "a First Sequence number (PMS)", "a sequence number of a first missing data unit," "a bitmap field indicating a reception of plurality of data units," "the control message including the PMS field and the bitmap field," all recited in limitations [LI] and [L2] of claim I3, represent data that is not recited as imparting functionality to a machine or computer within the broad scope of independent claim I 3. Therefore, we conclude method claim I 3 merely generates and transmits data that is merely descriptive, and is not actually 4 See Ans. 3: "That is, if packet C is missing from packets A-E, then at least packet D is considered out of sequence due to missing packet C having a serial number lower than packet D's serial number." 7 Appeal2014-003273 Application 12/611,592 used to perform any function, within the scope of claim 13. Although the recited "PMS field" and the "bitmap field" are included in the generated "control message" that is transmitted (claim 13), no function is performed with the transmitted data. We need not give patentable weight to descriptive material absent a new and unobvious functional relationship between the descriptive material and the substrate. See Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); see also In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004); In re Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir. 1994); see also Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (informative) (" [N]onfunctional descriptive material cannot lend patentability to an invention that would have otherwise been anticipated by the prior art."), ajfd, 191 Fed. Appx. 959 (Fed. Cir. 2006) (Rule 36); Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (informative) ("Nonfunctional descriptive material cannot render nonobvious an invention that would have otherwise been obvious."), ajfd, No. 06-1003 (Fed. Cir. 2006) (Rule 36). Thus, non-functional descriptive material does not confer patentability to inventions that are otherwise either anticipated or obvious over the prior art. Therefore, on the record before us, based upon the Examiner's findings above, and buttressed by our findings of Appellants' reliance upon non-functional descriptive material to distinguish over the cited prior art, we are not persuaded of error in the Examiner's reliance on Chiu to disclose the disputed limitations [L 1] and [L2] of independent claim 13, nor do we find error in the Examiner's resulting legal finding of anticipation. Accordingly, Appellants have not provided sufficient evidence or argument to persuade us of any reversible error in the Examiner's reading of 8 Appeal2014-003273 Application 12/611,592 the contested limitations on the cited prior art. Therefore, we sustain the Examiner's anticipation rejection of representative independent claim 13, and grouped claims 15, 16, 21, 23, and 24 which fall therewith. See Claim Grouping, supra. § 103 Rejections R2 and R3 of Claims 17-20 and 25-28 In view of the lack of any substantive or separate arguments directed to obviousness rejections R2 and R3 of dependent claims 17-20 and 25-28 under§ 103(a), we sustain the Examiner's rejections of these claims, as they fall with their respective independent claims. We deem arguments not made to be waived. REPLY BRIEF To the extent Appellants may advance new arguments in the Reply Brief (Reply Br. 2-5) not in response to a shift in the Examiner's position in the Answer, we note arguments raised in a Reply Briefthat were not raised in the Appeal Brief or are not responsive to arguments raised in the Examiner's Answer will not be considered except for good cause (see 37 C.F.R. § 41.41(b)(2)), which Appellants have not shown. CONCLUSIONS (1) The Examiner did not err with respect to anticipation Rejection RI ofclaims 13, 15, 16,21,23,and24under35U.S.C. § 102(b)overthe cited prior art of record, and we sustain the rejection. (2) The Examiner did not err with respect to obviousness Rejections R2 and R3 of claims 17-20 and 25-28 under 35 U.S.C. § 103(a) over the cited prior art combinations of record, and we sustain the rejections. 9 Appeal2014-003273 Application 12/611,592 DECISION We affirm the Examiner's decision rejecting claims 13, 15-21, and 23-28. No time period for taking any subsequent action in connection with this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv). AFFIRMED 10 Copy with citationCopy as parenthetical citation