Ex Parte Kitazoe et al

Patent Trial and Appeal Board

Aug 27, 2018

14077783 (P.T.A.B. Aug. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/077,783 11/12/2013
15142 7590 08/29/2018
Arent Fox, LLP and Qualcomm, Incorporated
1717 K Street, NW
Washington, DC 20006-5344
FIRST NAMED INVENTOR
Masato Kitazoe
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.
030284.15152/082014C 1 5517
EXAMINER
MARCELO, MEL VIN C
ART UNIT PAPER NUMBER
2463
NOTIFICATION DATE DELIVERY MODE
08/29/2018 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):
ocpat_uspto@qualcomm.com
patentdocket@arentfox.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASATO KIT AZOE,
NATHAN EDWARD TENNY, and ARNAUD MEYLAN
Appeal2017-004250
Application 14/077, 783 1
Technology Center 2400
Before CARLA M. KRIVAK, BRUCE R. WINSOR, and
IRVINE. BRANCH, Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-8, 13-20, 25, and 26, which are all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Technology
The application relates to user equipment in wireless communication
systems having autonomy with respect to the use of measurement gaps in
frequency handovers. Spec. Abstract.
1 According to Appellants, the real party in interest is QUALCOMM
Incorporated. App. Br. 3.
Appeal2017-004250
Application 14/077, 783
Related Appeals
The Examiner points out that Appeal 2014-001030 (Application
No. 12/500,996 ("the '996 application"), now abandoned) decided by this
panel on June 20, 2016, addressed issues similar to issues raised here (Final
Act. 2-3; Ans. 2). Indeed, the instant case is a continuation of the '996
application (Spec. ,r 1) and was filed after the '996 application was placed on
appeal. See Notice of Appeal in the '996 application filed March 12, 2013.
Appellants acknowledge the prior appeal but contend our Decision there
should have "no impact" on the instant appeal. Reply Br. 2. Even if true,
Appellants' contention does not dismiss the relationship of our prior
Decision to the instant appeal and does not excuse Appellants' failure to cite
it as a related case. See 37 C.F.R. § 4I.37(c)(ii); see also Manual of Patent
Examining Procedure (MPEP) § 706.07(h) XI. A. (9th ed. Rev. 08.2017,
Jan. 2018) ("[A .. ] Board decision in an application is the 'law of the case/
and is thus controlling in that application and any subsequent, related
application."). Appellants are reminded that this requirement is not optional.
Illustrative Claim
Claim 1 is illustrative and reproduced below with the limitations at
issue emphasized:
1. A method for utilizing a measurement gap, comprising:
wirelessly communicating, by a user equipment, on a
source carrier frequency;
receiving, by the user equipment, an assignment for a
measurement gap on the source carrier frequency;
independently determining, by the user equipment, to
remain tuned to the source carrier frequency during a first
portion of the measurement gap, wherein the first portion of the
measurement gap includes one of a reception of a Random
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Appeal2017-004250
Application 14/077, 783
Access Response, transm1ss10n of a random access channel
(RACH) message 3, or reception of a RACH contention
resolution message; and
selectively tuning, by the user equipment, between the
source carrier frequency and a target carrier frequency during
a second portion of the measurement gap in accordance with the
independent determination.
Rejection2, 3
Claims 1-8, 13-20, 25, and 26 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Petrovic (US 2009/0274086 Al, published
Nov. 5, 2009), Grilli (US 2007/0097914 Al, published May 3, 2007), and
Lee (US 2009/0259910 Al, published Oct. 15, 2009). Final Act. 18-33.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
2 Rather than repeat the Examiner's positions and Appellants' arguments in
their entirety, we refer to the above mentioned Appeal Brief filed June 22,
2016 ("App. Br."), as well as the following documents for their respective
details: the Final Action mailed March 7, 2016 ("Final Act."), the
Examiner's Answer mailed November 10, 2016 ("Ans."), and the Reply
Brief filed January 6, 2017 ("Reply Br.").
3 The Examiner rejected claims 1-8, 13-20, 25, and 26 under non-statutory
obviousness-type double patenting over claims 1-12 and 14--27 of Kitazoe
(US 12/500996) and Lee (US 2009/0259910). Final Act. 2-3. This
rejection was withdrawn because co-pending application US 12/500996 was
abandoned. Ans. 2.
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Appeal2017-004250
Application 14/077, 783
Claims 1, 6-8, 13, 18-20, 25, and 26
Claim 1 recites, in pertinent part, "independently determining, by the
user equipment, to remain tuned to the source carrier frequency during a first
portion of the measurement gap" and "selectively tuning, by the user
equipment, between the source carrier frequency and a target carrier
frequency during a second portion of the measurement gap in accordance
with the independent determination" ( collectively "the argued limitations").
The Examiner finds Petrovic teaches the argued limitations, except
that "Petrovic does not [explicitly] disclose 'independently determining',"
which the Examiner finds is taught by Grilli. Final Act. 19-20 ( citing
Petrovic Figs. 1, 8, 9, 28 and ,r,r 204--206, 210, 343-345, 347-349; and Grilli
,r,r 51-53, 55). The Examiner also finds Grilli discloses a mobile device
remaining on the source frequency after having "determine[ d] that a
frequency channel is sufficient for the mobile device" by "monitoring a
characteristic for channel quality within the mobile device" and also "tuning
to different frequencies during measurement gaps based on the CQI falling
below a specific threshold." Ans. 7-9 ( citing Grilli ,r,r 51-53 and 55). The
Examiner finds
it would be obvious for a person having ordinary skill in the art
to incorporate the teachings of "independently determining" as
taught by Grilli in the system of Petrovic in order to allow the
UE to determine if another base station, frequency, or technology
will provide better service than the existing base station.
Final Act. 20 ( citing Grilli ,r 5).
Appellants present a number of arguments alleging that the Examiner
has misinterpreted the teachings of Petrovic. See App. Br. 8-15. Appellants
do not dispute the Examiner's findings with respect to Grilli or the
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Application 14/077, 783
Examiner's reasoning for combining the respective teachings of Petrovic and
Grilli. Id.
Appellants' arguments do not persuade us of error for the reasons
stated by the Examiner. Ans. 3-9. We agree with and adopt the Examiner's
findings and conclusion that claims 1, 6-8, 13, 18-20, 25, and 26 are not
obvious over the collective teachings of the cited references. Final Act. 18-
33. We highlight the following primarily for emphasis.
Appellants' arguments against Petrovic alone (App. Br. 8-15) are
unpersuasive of error in view of the Examiner's findings with respect to
Grilli. "Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references." In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986). We are also not persuaded the Examiner has misinterpreted
Petrovic and agree with the Examiner that one of ordinary skill in the art at
the time of Appellants' invention would have found the argued limitations
obvious in view of the combined teachings of the cited references.
Accordingly, we sustain the Examiner's rejection of claim 1, and
claims 6-8, 13, 18-20, 25, and 26, which Appellants argue are patentable for
similar reasons. See App. Br. 15; 37 C.F.R. § 4I.37(c)(l)(iv).
The Remaining Claims
Appellants argue claims 2, 3, and 5 under separate headings together
with claims that respectively recite commensurate subject matter. See App.
Br. 15-23; Reply Br. 4--10. We are unpersuaded of error in the Examiner's
rejection of these claims (Final Act. 21-33) for the reasons stated by the
Examiner (Ans. 9-14), which Appellants do not persuasively rebut (see
Reply Br. 4--10).
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Appeal2017-004250
Application 14/077, 783
DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 1-8, 13-20, 25, and 26.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
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