Ex Parte Kuo

Patent Trial and Appeal Board

Dec 18, 2014

11898562 (P.T.A.B. Dec. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte RICHARD LEE-CHEE KUO
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Appeal 2012-010446
Application 11/898,562
Technology Center 2400
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Before JEFFREY S. SMITH, JOHNNY A. KUMAR, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2012-010446
Application 11/898,562

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.

According to Appellant, the invention relates to a method of selecting
an operating frequency related to multimedia broadcast multicast service
(MBMS) in a wireless communications system. Spec. para 2.
Claim 1 is illustrative:
1. A method of selecting an operating frequency for a user
equipment, called UE hereinafter, in a wireless communications
system, the method comprising:
switching the operating frequency from a first frequency
to a second frequency when activating to receive an multimedia
broadcast multicast service, called MBMS hereinafter, service
of a service group;
deactivating the MBMS service before session stop of the
MBMS service; and
switching the operating frequency from the second
frequency to the first frequency upon deactivation of the
MBMS service and before session stop of the MBMS service if
determining not to receive any MBMS services provided on the
second frequency.

Rejections
The Examiner rejected claims 1–10 and 12–20 under 35 U.S.C.
§ 103(a) as being unpatentable over Jeong (US 2006/0023664 A1, Feb. 2,
2006), Chao (US 2006/0056396 A1, Mar. 16, 2006), and Barreto (US
2006/0252430 A1, Nov. 9, 2006). Ans. 5–9.
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The Examiner rejected claim 11 under 35 U.S.C. § 103(a) as being
unpatentable over Jeong, Chao, Barreto, and Kim (US 7,535,882 B2, May
19, 2002). Ans. 9–12.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
conclusions.
Appellant did not challenge the Examiner’s factual findings about
Jeong, Chao, Barreto, or Kim on pages 5–16 of the Answer. We take those
findings as being conceded by Appellant.
Appellant contends that the cited Jeong, Chao, and Barreto references
do not teach or suggest “switching the operating frequency from the second
frequency to the first frequency upon deactivation of the MBMS service and
before session stop of the MBMS service if determining not to receive any
MBMS services provided on the second frequency,” as claimed in
independent claims 1 and 11 (App. Br. 4).
We disagree with Appellant’s conclusions.
The Examiner finds, and we agree:
Based upon the arguments provided by the Appellant,
Appellant merely refers back and forth to the cited Paragraphs
[0010], [0027] of appellant's Specification, and 3GPP TS
25.331 v7.1.0, and 3GPP TS 23.246 V6.9.0 (2005-12) standards
for arguing differences between the subject matters of
deactivation service and session stop, instead of
arguing/pointing out which subject matter that the prior art does
not disclose, teach or suggest.
Ans. 15.
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Application 11/898,562

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We begin our analysis by observing that Appellant responds to the
Examiner’s final rejection of claims 1–20 by merely reciting the language
identified supra in the claims and asserting that the aforementioned
limitations are not disclosed in any of the cited art. See App. Br. 4–9. In
addition, we find Appellant has failed to traverse the specific factual
findings the Examiner has set forth in the rejection of claims 1–20. See Ans.
5–16.
We note that Appellant’s arguments amount to no more than reciting
the claim features and generally alleging that the cited prior art references
are deficient. Merely pointing out certain claim features recited in
independent claims 1 and 11 and nakedly asserting that none of the cited
prior art references teach or suggest such features does not amount to a
separate patentability argument. See 37 C.F.R. § 41.37(c)(1)(vii) (“A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.”); see also In
re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.”);
cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is
not the function of this court to examine the claims in greater detail than
argued by an appellant, looking for [patentable] distinctions over the prior
art.”).
Also, our reviewing Court has reaffirmed that the procedural burden
of establishing a prima facie case of obviousness is met, in accordance with
35 U.S.C. § 132, by stating reasons for a rejection together with information
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and references as may be useful to applicant in judging the propriety of
continuing prosecution. See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir.
2011). This the Examiner has done, over the course of many pages in the
Examiner’s Answer.
The Court in Jung also spoke approvingly of the Board’s longstanding
practice of requiring an Appellant to identify the alleged error in an
Examiner’s rejection, with the panel then reviewing the rejection for error
based upon the issues identified by Appellant, and in light of the arguments
and evidence produced thereon. Jung, 637 F.3d at 1365–66 (citing Ex parte
Frye, 94 USPQ2d 1072 (BPAI 2010) (precedential)).
On this record, we find Appellant has failed to present substantive
arguments and supporting evidence persuasive of Examiner error regarding
the aforementioned disputed limitations. It follows that Appellant has failed
to establish the Examiner erred in concluding that the combination of Jeong,
Chao, and Barreto renders independent claims 1 and 11 unpatentable, as
Appellant has failed to rebut the Examiner’s specific factual findings.
Appellant does not provide separate arguments for the obviousness
rejections of the dependent claims. Therefore, we sustain the Examiner’s
obviousness rejections of claims 1–20.
CONCLUSIONS
The Examiner did not err in rejecting claims 1–10 and 12–20 under
35 U.S.C. § 103(a) as unpatentable over Jeong, Chao, and Barreto.
The Examiner did not err in rejecting claim 11 under 35 U.S.C.
§ 103(a) as unpatentable over Jeong, Chao, Barreto, and Kim.
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DECISION
The Examiner’s rejection of claims 1–20 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)(1)(iv).

AFFIRMED

msc