Ex Parte Kim et al

Patent Trial and Appeal Board

Feb 10, 2016

12611592 (P.T.A.B. Feb. 10, 2016)

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).
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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.
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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
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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-
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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).
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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."
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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
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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.
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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
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