Ex Parte Lee et alDownload PDFPatent Trial and Appeal BoardMay 19, 201612154910 (P.T.A.B. May. 19, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 12/154,910 23990 7590 DOCKET CLERK FILING DATE 05/28/2008 05/23/2016 P.O. DRAWER 800889 DALLAS, TX 75380 FIRST NAMED INVENTOR Ok-SeonLee 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. SP8064-US (SAMS06-08064) CONFIRMATION NO. 1368 EXAMINER JAIN, RAJK ART UNIT PAPER NUMBER 2411 NOTIFICATION DATE DELIVERY MODE 05/23/2016 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): patents@munckwilson.com munckwilson@gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte OK-SEON LEE and JONG-HYUNG KWON Appeal2014-007141 Application 12/154,910 Technology Center 2400 Before CARL W. WHITEHEAD JR, BRUCE R. WINSOR, and ADAM J. PYONIN, Administrative Patent Judges. PYONIN, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) from the Final Rejection of claims 1, 2, 5, 6, 10-21, and 24--34. 1 We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM-IN-PART. 1 Claims 3, 4, 22, and 23 have been canceled. See Appendix, Appeal Brief. Claims 7-9 and 35-38 are objected to, but otherwise are found to contain allowable subject matter. See Final Action 4. Appeal2014-007141 Application 12/154,910 STATEMENT OF THE CASE Introduction Appellants' disclosure is directed to "an apparatus and a method for requesting uplink resources in a wireless communication system." Specification i-f 2. Claims 1, 14, 20, and 29 are independent. Claim 1 is reproduced below for reference: 1. A method for requesting resources at a terminal in a wireless communication system, the method comprising: identifying, by a scheduler in the terminal, a plurality of connection identifiers (CIDs) associated with requests for UpLink (UL) resources; identifying, by the scheduler, an amount of the UL resources associated with the plurality of CIDs; and transmitting a request for the amount of the identified UL resources associated with the plurality of CIDs to a base station at one time. The Examiners Rejection Claims 1, 2, 5, 6, 10-21, and 24--34 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lohr (US 2009/0116434 Al; May 7, 2009) and Bae (US 2008/0267085 Al; Oct. 30, 2008). Final Action 2--4. ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments that the Examiner erred. Except as indicated below with respect to dependent claims 13, 19, 23, and 28, we disagree with Appellants that the Examiner erred and adopt as our own the Examiner's findings and reasoning set forth by the Final Office Action and the Examiner's Answer. We 2 Appeal2014-007141 Application 12/154,910 highlight and address specific findings and arguments for emphasis as follows. A. Independent Claim 1 Appellants argue the Examiner erred in rejecting independent claim 1, because the cited references do not teach or suggest the "transmitting" or the second "identifying" steps as recited by the claim. See Appeal Brief 14; Reply Brief 3--4. Particularly, Appellants contend that, "[w]hile Lohr discloses an amount of required uplink resources, Lohr is silent as to any identification of these required uplink resources being associated with a plurality of CIDs" as claimed. Appeal Brief 17. Appellants further contend that, [ w ]hile Bae does mention the term "CIDs", the Examiner does not establish that the proposed combination of references make any identification of an amount of requested UL resources associated with this plurality of CIDs and therefore do not disclose or suggest requesting such identified UL resources at one time as recited in Claim 1. Id. at 18. We are not persuaded the Examiner erred. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). We agree with the Examiner that Lohr teaches identifying and requesting an amount of UL resources at one time, as claimed, because Lohr discloses "[t]o request resources, the 3 Appeal2014-007141 Application 12/154,910 UE[2] transmits a resource request message to the Node B. This resources request message could for example contain information on the amount of data to transmit, the power status of the UE and some Quality of Services (QoS) related information." Lohr i-f 26; see also Lohr Figs. 6-7, i-f 131 ("the mobile station may indicate the amount of required uplink resources"); Final Act. 1; Answer 5-6. We also agree with the Examiner that one of skill in the art would modify Lohr' s resource request method with Bae' s teaching of a "plurality of CIDs (Fig. 1 ref[.] 116; abstract; paras 3-6)" as claimed, which "provides for basic bandwidth allocations and bandwidth reservations and reduce[s] overhead associated with carrying MAC addresses (see IEEE 802.16)." Final Action 3. We are unable to find on the record before us any evidence that such combination was "uniquely challenging or difficult for one of ordinary skill in the art" or "represented an unobvious step over the prior art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Accordingly, we sustain the Examiner's rejection of independent claim 1 in view of Lohr and Bae, as well as independent claim 20 and dependent claims 2, 5, 6, 10-12, 21, and 24-27, which are not separately argued. See Appeal Brief 18, 24. B. Independent Claim 14 Appellants argue the Examiner erred in rejecting independent claim 14, because "Lohr merely discloses a simple determination of a resource allocation for user data transmission and is silent as to any determination of 2 User Equipment. See Lohr i-f 106. 4 Appeal2014-007141 Application 12/154,910 whether to allocate resources associated with the plurality of CJDs or allocation when it is possible to allocate the resources requested by the plurality of C!Ds" as claimed. Reply Brief 8; see also Appeal Brief 21. We are not persuaded the Examiner erred. Appellants' argument focuses on the recited "possible" and "plurality of CIDs" terms. See, e.g., Appeal Brief 21. As discussed above, we agree with the Examiner that the combination of Bae and Lohr teaches or suggests the "plurality of CIDs" limitations. See Answer 5---6; Appeal Brief 5---6. We further agree with the Examiner that the combination of cited references teaches or suggests allocating the UL resources to the terminal, when it is possible to do so. See Lohr i-fi-f 17-25, 34; Bae i-fi-1 3---6; Answer 5---6. Accordingly, we sustain the Examiner's rejection of independent claim 14 in view of Lohr and Bae, as well as independent claim 29 and dependent claims 15-18, 30-32, and 34, which are not separately argued. See Appeal Brief 22, 24. C Dependent Claims 13 and 28 Appellants argue the Examiner erred in rejecting dependent claims 13 and 28, because "the Examiner appears to quote language from" other dependent claims reciting different limitations, and the references are "silent as to allocation of resources to CIDs" as required by the claims. Appeal Brief 18-19; see also Reply Brief 4--7. We are persuaded by Appellants' arguments. We agree with Appellants that the Examiner's Final Rejection does not discuss the specific limitations recited by claims 13 and 28. See Final Action 3. Further, in the Answer, the Examiner cites to Lohr for teaching the "allocation of resources 5 Appeal2014-007141 Application 12/154,910 to ClDs [(]see paras[.] 121-124, amount of UL resources are preconfigured or known and/or configured by the base station using a resource allocation message 602 see Fig. 6-7)." Answer 7-8. The cited portions of Lohr, however, disclose allocating to the terminal, and the Examiner has not provided some reasoning to show one of skill in the art would allocate to the CIDs themselves, as claimed. 3 See id. (citing Lohr i-f 124 ("Upon having received this second resources allocation message, the mobile terminal may start transmitting 606 the user data on the allocated resources via the scheduled shared channel")); see also KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) ("Rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness") (internal quotations, bracketed alteration, and citation omitted). Accordingly, we do not sustain the Examiner's rejections of claims 13 and 28. D. Dependent Claims 19 and 33 Appellants argue the Examiner erred in rejecting dependent claims 19 and 33, because Lohr does not teach or "inherently disclose cancelation of a resource allocation or a resource request of CIDs" as claimed. Reply Brief 9. 3 Additionally, we note the Examiner has not addressed the remaining limitations of claims 13 and 28 in either the Final Office Action or the Answer. See Final Action 3; Answer 6-8. 6 Appeal2014-007141 Application 12/154,910 We are persuaded by Appellants' arguments. We agree with Appellants that the Examiner's Final Rejection does not discuss the specific limitations recited by claims 19 and 33. See Appeal Brief 22; Final Action 4. Further, we agree with Appellants that "[t]he Examiner has not provided a basis in fact and/or technical reasoning to reasonably support" the inherency finding. Reply Brief 9-10. The Examiner's statement that "Examiner believes scheduling and any modifications to the schedule inherently implies cancellation" (Answer 8, emphasis added) is insufficient to support the rejection. See In re Oelrich, 666 F .2d 578, 581 (CCP A 1981) ("Inherency ... may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient"). Accordingly, we do not sustain the Examiner's rejections of claims 19 and 33. DECISION The Examiner's rejection of claims 1, 2, 5, 6, 10-12, 14--18, 20, 21, 24--27, 29-32, and 34 is affirmed. The Examiner's rejection of claims 13, 19, 28, and 33 is reversed. 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 7 Copy with citationCopy as parenthetical citation