Ex Parte Kim et al

Patent Trial and Appeal Board

Feb 1, 2017

13266919 (P.T.A.B. Feb. 1, 2017)

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
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/266,919 10/28/2011 Juhee Kim PAN-107NP 3391
23995 7590
Rabin & Berdo, PC
1101 14TH STREET, NW
SUITE 500
WASHINGTON, DC 20005
EXAMINER
CHOWDHURY, HARUN UR R
ART UNIT PAPER NUMBER
2473
NOTIFICATION DATE DELIVERY MODE
02/03/2017 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):
firm @ rabinberdo .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUHEE KIM, EUNKYUNG KIM, SOOJUNG JUNG, JAE SUN
CHA, KWANG JAE LIM, HYUN LEE, and CHUL SIK YOON
Appeal 2016-005722
Application 13/266,919
Technology Center 2400
Before JASON V. MORGAN, NABEEL U. KHAN, and
KAMRAN JIVANI, Administrative Patent Judges.
JIVANI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review, under 35 U.S.C. § 134(a), of the
Examiner’s final decision rejecting claims 44—63. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is the Electronics and
Telecommunications Research Institute of the Republic of Korea. Br. 3.
Appeal 2016-005722
Application 13/266,919
STATEMENT OF THE CASE
The present application “relates to a device and method for managing
a carrier of a base station, a terminal, and a method of managing a carrier of
the terminal.” Spec. 1,11. 7—9.
Claim 44 is illustrative:
44. A method of managing a primary carrier in a terminal
supporting multi-carriers, the method comprising:
receiving a primary carrier change command from a base
station; and
changing the primary carrier from a serving primary
carrier to a target primary carrier,
wherein the primary carrier change command comprises
an indication field indicating whether the serving primary carrier
is kept active or deactivated after the primary carrier changes.
The Rejections2
Claims 44, 47, 51, and 61 stand rejected under 35 U.S.C. § 103(a)
over Chou (US 2009/0310563 Al; Dec. 17, 2009) and IEEE
802.16-09/0010rl, Part 16: Air Interface for Fixed and Mobile Broadband
Wireless Access Systems, March 2008 (work, doc.) (herein “IEEE Air
Interface”). Final Act. 2-6 (Jan. 23, 2015).
Claims 45, 48, 49, and 52 stand rejected under 35 U.S.C. § 103(a)
over Chou, IEEE Air Interface, and IEEE C802.16m-08/949r3, Intra-BS
Carrier Handover for IEEE 802.16m, Sept. 5, 2008 (work, doc.) (herein
“IEEE Intra-BS Carrier Handover”). Final Act. 6-8.
2 The rejections reference two IEEE documents as respectively “IEEE” and
“Zhang.” We reference these documents as “IEEE Air Interface document”
(see first rejection) and “IEEE Intra-BS Carrier Handover document” (see
second rejection).
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Application 13/266,919
Claims 46, 58, 60, and 63 stand rejected under 35 U.S.C. § 103(a)
over Chou, IEEE Air Interface, and Kwon et al. (US 2011/0312326 Al; Dec.
22,2011). Final Act. 9-11.
Claim 50 stands rejected under 35 U.S.C. § 103(a) over Chou, IEEE
Air Interface, IEEE Intra-BS Carrier Handover, and Jung et al. ’912
(US 2011/0149912 Al; June 23, 2011). Final Act. 11-12.
Claims 53—57 stand rejected under 35 U.S.C. § 103(a) over Chou,
IEEE Air Interface, IEEE Intra-BS Carrier Handover, and Jung et al. ’467
(US 2011/0116467 Al; May 19,2011). Final Act. 12-16.
Claim 59 stands rejected under 35 U.S.C. § 103(a) over Chou, IEEE
Air Interface, IEEE Intra-BS Carrier Handover, and Jung ’912. Final Act.
17.
Claim 62 stands rejected under 35 U.S.C. § 103(a) over Chou, IEEE
Air Interface, IEEE Intra-BS Carrier Handover, and Lu et al.
(US 2010/0272067 Al; Oct. 28, 2010). Final Act. 17-18.
ANALYSIS
Claims 43-52 and 57-63
Each independent claim recites, in relevant part, a “primary carrier
change command [that] comprises an indication field indicating whether the
serving primary carrier is kept active or deactivated after the primary carrier
changes” (claims 44 and 47). In rejecting the independent claims, the
Examiner relies on Chou as meeting the claimed indication field. Final Act.
3 (claim 44), 4-5 (claim 47). In particular, the Examiner finds Chou’s
“Disconnect Time” (see Chou Tffl 63-67) meets the limitation because “after
the expiration of the disconnect time, the original primary carrier with S-BS
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Application 13/266,919
(serving BS) is deactivated.” Final Act. 3, 5. In relying on Chou as above,
the Examiner finds the independent claims require the indication field to
present only one of the two indications; that is, require a capability to
indicate the carrier will be kept active and/or capability to indicate the
carrier will be deactivated. Ans. 21. The Examiner elaborates with
reference to claim 44:
Chou discloses that the disconnect time indicates to deactivate
the serving primary carrier after the primary carrier changes.
Claim 44 recites the indication in alternate form such that the
indication field indicates whether the serving primary carrier is
kept active or deactivated. If the indication field indicates one of
the two requirements (keeping the serving primary carrier active,
deactivating the serving primary carrier), it meets the claim
limitation. Contrary to appellant’s arguments [that] “the
disconnect time cannot indicate the possibility that [‘]the serving
primary carrier is kept active[’] . . .”, claim 44 does not require
the disconnect time to indicate both the requirements of keeping
the serving primary carrier active and deactivating the serving
primary carrier. When the disconnect time indicates to
deactivate the serving primary carrier after the primary carrier
changes, it meets the claim limitation.
Id. (emphasis omitted).
Appellants argue that the Examiner fails to address the claim language
as a whole and in light of the Specification. Br. 7-9. Appellants particularly
contend:
[T]he cited references are silent regarding at least the feature of
“wherein the primary carrier change command comprises an
indication field indicating whether the serving primary carrier is
kept active or deactivated after the primary carrier changes.” In
non-limiting embodiments corresponding to this feature, the
state of the serving primary carrier can be indicated to maintain
an activated state or be switched to a deactivated state through an
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Application 13/266,919
indication field included in the primary carrier change command
after a primary carrier change.
However, in clear contrast, Chou only performs (1) maintaining
an activated state, followed by (2) expiration of the disconnect
time, followed by (3) deactivating the state, in this order, when
the terminal performs a multicarrier handover.
Id. at 7. Appellants further contend:
[Chou’s cited] disconnect time can only specify a time at which
“the original primary carrier will be deactivated;” the disconnect
time cannot indicate a range of possibilities, as in [the
independent claims] “indicate whether” (emphasis added) one
of two things happens. Specifically, for example, the disconnect
time cannot indicate the possibility that “the serving primary
carrier is kept active” as recited[.]
Id. at 8.
We agree with Appellants’ claim construction and, in turn, agree the
Examiner erred in finding Chou teaches or suggest the claimed “indication
field indicating whether the serving primary carrier is kept active or
deactivated” (claims 44 and 47). Before turning to Appellants’ construction,
we note the Examiner presents no supporting analysis for finding that the
“indication field . . .” language constitutes two alternative limitations. Ans.
21 (block-quoted supra)', see also Manual of Patent Examining Procedure
§ 2173.05(h) (describing alternative limitations). Rather, the Examiner finds
the included “or” terminology represents alternative limitations. Ans. 21.
Thus, we agree with Appellants that the Examiner construes the “or”
terminology without presenting any supporting discussion of the claim as a
whole and in light of the specification. See, e.g., Trivascular, Inc. v.
Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016) (“While the broadest
reasonable interpretation standard is broad, it does not give the Board an
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Application 13/266,919
unfettered license to interpret the words in a claim without regard for the full
claim language and the written description. . . . Construing individual words
of a claim without considering the context in which those words appear is
simply not ‘reasonable.’” (Citations omitted)).
Returning to Appellants’ construction, we agree that the disputed
claim language presents “or” as modifying “is,” such that the method step
“indicates] whether the serving primary carrier is kept active or [z.v]
deactivated” (emphasis added). The step thus indicates whether something
is A or B, which in common parlance means an indicated determination
between two possible outcomes. The Examiner’s construction unreasonably
characterizes “or” as modifying “indicating,” such that the method step
“indicates] whether the serving primary carrier is kept active or [indicates
whether the serving primary carrier is] deactivated[.]”
Appellants’ construction also is supported by its reading in light of the
disclosed invention. As argued, the Specification describes an indication
field that is set to “1” to indicate the serving primary carrier will sustain an
active state (as a secondary carrier when no longer serving as a primary
carrier) and “0” to indicate the primary carrier will rather be deactivated. Br.
4 (citing Spec. 13,11. 11-16), 7. An artisan would interpret the claimed
“indicating whether . . . kept active or deactivated” as being directed this
feature of a base station changing a terminal’s “serving primary carrier” and
accordingly indicating whether that carrier remains activated (in another
role) or is deactivated with respect to the terminal.3 Compare Microsoft
3 We are not, in view of the Specification, construing the at-issue claim
terms contrary to their customary meanings. We are rather finding a “plain
meaning” construction, see supra (“claim language presents ‘or’ as
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Corp. Petitioner, IPR2012-00026 (TLG), 2012 WL 10703131, at *10-12
(Dec. 21, 2012) (similarly considering a disclosed embodiment to determine
whether a claims “or” terminology conveyed alternative limitations).
On the record before us, we are not persuaded that one of ordinary
skill in the art would understand Chou’s “Disconnect Time” as teaching or
suggesting the claimed “indication field indicating whether the serving
primary carrier is kept active or deactivated!)]” Accordingly, we do not
sustain the Examiner’s rejection of independent claims 44 and 47, nor the
rejections of their dependent claims 45, 46, 48-52, and 57-63.
Claims 53-56
Appellants additionally argue:
[BJecause as demonstrated above the cited references fail to
disclose or suggest “wherein the primary carrier change
command comprises an indication field indicating whether the
serving primary carrier is kept active or deactivated after the
primary carrier changes” as recited in independent claims 44 and
47, it follows that the cited references are still further deficient
regarding, for example, claim 53’s “The method of claim 52,
wherein when the indication field is set to ‘1’, the serving
primary carrier is kept active after the primary carrier changes,
and when indication field is set to ‘O’, the serving primary carrier
is deactivated after the primary carrier changes.”
Br. 10-11.
The argument is not persuasive; particularly insofar as failing to
address the Examiner’s application of Jung ’467 to claim 53. Final Act.
modifying ‘is,’ such that the method step . . .), and clear intent to claim the
disclosed feature.
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Appeal 2016-005722
Application 13/266,919
12-13. Addressing claim 53 over Chou in view of Jung ’467, the Examiner
elaborates:
Chou teaches to deactivate/disconnect the serving primary
carrier after the change of primary carrier (Fig. 17A, 20A, Par
0063, Par 0066-0067) and also teaches to keep the serving
primary carrier active (switching primary carrier to secondary
carrier as shown in Fig. 22, Fig. 24, Fig. 26-27) after the change
of primary carrier. Therefore, it is needed to indicate the mobile
station when to keep serving primary carrier activated and when
to deactivate the serving primary carrier after the change of
primary carrier. In this regard, Jung teaches to set “1” to indicate
the activation of a carrier and “0” to indicate the deactivation of
a carrier (Table 3, Table 5, Par 0077-0082). ft would have been
obvious to one of ordinary skill in the art at the time of invention
to modify Chou by including the step to set “1” to indicate the
activation of a carrier and “0” to indicate the deactivation of a
carrier as taught by Jung for the purpose of activating or
deactivating multi-carriers allocated to a terminal based on the
status of data traffic to prevent unnecessary power consumption,
as taught by Jung (Par 0001).
Ans. 24 (emphasis omitted). The Examiner’s findings for claim 53 repair
the Examiner’s erroneous findings on the independent claims because these
later findings address the narrower scope correctly presented by Appellants.4
That is, these uncontested findings present a prima facie showing of “an
indication field indicating whether the serving primary carrier is kept active
or deactivated after the primary carrier changes” (claims 44 and 47) by
reaching an indicated determination between the two possible outcomes of
the serving primary carrier being kept active or being deactivated.
4 The Appeal Brief does not address the Examiner’s findings for claim 53 or
Jung ‘467. Appellants have not filed a Reply Brief. Thus, despite
presenting claim 53 for consideration, Appellants do not contest the
Examiner’s presented findings for claim 53 and Jung ‘467.
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Accordingly, we sustain the Examiner’s rejection of claim 53 and claims
54-56 (to which Jung ’467 is likewise applied).
Being a review body, we leave the Examiner to cure the addressed
error for claims 43-52 and 57-63 by applying Jung ‘467 as above (if
deemed appropriate).
DECISION
The Examiner’s rejections of claims 43-52 and 57-63 are reversed.
The Examiner’s rejections of claims 53-56 is affirmed.
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-IN-PART
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