Ex Parte Lucky

Patent Trial and Appeal Board

Aug 5, 2015

12433378 (P.T.A.B. Aug. 5, 2015)

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
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/433,378 04/30/2009 Kundan Kumar LUCKY 678-3699 (P16931) 8969
66547 7590 08/05/2015
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
MILLS, DONALD L
ART UNIT PAPER NUMBER
2462
MAIL DATE DELIVERY MODE
08/05/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KUNDAN KUMAR LUCKY
____________

Appeal 2013-005886
Application 12/433,378
Technology Center 2400
____________

Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and
DENISE M. POTHIER, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 14–17. App. Br. 4–9.1 Claims 1–9 and 11 have been
canceled; claims 10, 12, and 13 have been indicated as being allowable. Id.
at 4, 10. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. We
present a new ground of rejection under 37 C.F.R. § 41.50(b).

1 Throughout this Opinion, we refer to the Appeal Brief (App. Br.) filed
September 6, 2012; (2) the Examiner’s Answer (Ans.) mailed January 24,
2013; (3) the Examiner’s Final Rejection (Final Act.) mailed October 11,
2011; and (4) the Reply Brief (Reply Br.) filed March 21, 2013.
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Invention
Appellant’s invention relates to adapting the size of Radio Link
Control (RLC) Packet Data Units (PDUs) in a communication device. See
Abstract. Generally, Appellant describes the invention as relating “to the
Third Generation Partnership Project (3GPP) Specification for Layer 2
Protocols.” Spec. 1:20–21.
Claims 14 and 16 are relevant to this appeal and are reproduced below
with emphasis added:
14. A method for generating, by a User Equipment (UE),
Radio Link Control (RLC) Packet Data Units (PDUs) for a later
Transmission Time Interval (TTI), the method comprising the
steps of:
determining a size of the RLC PDUs for the later TTI
based on an amount of data allowed in a current TTI, if the size
of the RLC PDUs for the later TTI is flexible; and2
generating the RLC PDUs for the later TTI using the
determined size.

16. A User Equipment (UE) comprising:
a memory for storing a plurality of Radio Link Control
(RLC) Packet Data Units (PDUs);

2 The Specification does not use the recited language “amount of data
allowed in a current TTI” or the term “later TTI,” both of which first
appeared in an amendment filed September 19, 2011. Regarding the
claimed “amount,” the disclosure instead refers to “size ‘S’ adapted . . . by
the UE in the current TTI.” Spec. 12:21–22. The disclosure further
discusses determining a factor at step 304 and variable N at step 306.
Spec. 12:4–10. Regarding the claimed “later TTI,” the disclosure refers to a
“future TTI” (see, e.g., Spec. 8:32), which the Examiner appears to equates
to this limitation (see Ans. 6). Similar language is found in independent
claim 16.
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a processing unit for determining a size of the RLC
PDUs for a later Transmission Time Interval (TTI) based on an
amount of data allowed in a current TTI, if the size of the RLC
PDUs for the later TTI is flexible, and for generating the RLC
PDUs for the later TTI using the determined size.

The Examiner relies on the following as evidence of unpatentability:
Pinheiro US 2008/0069035 A1 Mar. 20, 2008.

The Rejection
Claims 14–17 are rejected under 35 U.S.C. § 102(b) as anticipated by
Pinheiro. Final Act. 2–3.

ANTICIPATION REJECTION OVER PINHEIRO
The Examiner finds claim 14 is anticipated by Figures 8A–8D and
paragraphs 67 and 68 of Pinheiro. Final Act. 2–3; Ans. 4–5. The Examiner
broadly explains, in part, Pinheiro “determines the size of the RLC PDU for
the later TTI based on an amount of data allowed in a current TTI.” Ans. 6.
Among other arguments, Appellant contends
Appellant can find nothing in the Examiner's explanation of
Pinheiro or in any other section of Pinheiro that teaches or
suggests determining a size of the RLC PDUs for the later TTI
based on an amount of data allowed in a current TTI, if the size
of the RLC PDUs for the later TTI is flexible, as recited in
independent Claims 14 and 16.
App. Br. 5 (emphasis in original). Appellant further argues
Merely because the size of the RLC PDUs for a first TTI and a
later TTI are the same, this does not teach or suggest that the
size of the later PDU is based on an amount of data allowed in a
current TTI. Accordingly, there is nothing in Pinheiro that
teaches or suggests “determining a size of the RLC PDUs for
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the later TTI based on an amount of data allowed in a current
TTI.”
Reply Br. 3 (emphasis in original).

ISSUE
Under § 102, has the Examiner erred by finding that Pinheiro
discloses “determining a size of the RLC PDUs for the later TTI based on an
amount of data allowed in a current TTI” as recited in claim 14?

ANALYSIS
Based on the record before us, we find error in the Examiner’s
rejection of independent claim 14. We begin by construing the key disputed
limitation of claim14, which calls for, in pertinent part, “determining a size
of the RLC PDUs for the later TTI based on an amount of data allowed in a
current TTI” (emphasis added). In one embodiment, Appellant discloses
using “the RLC PDU size ‘S’ adapted for the future TTI by the UE in the
current TTI” to calculate the size of the PDUs generated in step 310.
Spec. 12:21–22. Consistent with this disclosure and the plain and ordinary
meaning of “based on,” we find a broad, but reasonable construction of the
recited “determining” step requires that the “amount of data allowed in a
current TTI” be used in the calculation of—or is a basis for—“the size of the
RLC PDUs for the later TTI.” However, as discussed below, the Examiner
has failed to establish that such a calculation exists in the cited portions of
Pinheiro.
“The Examiner interprets the size of the RLC to stay constant at the
maximum size . . . .” Final Act. 2. We agree with Appellant’s contention
that the limitations of the claim are not met by merely showing “the size of
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the RLC PDUs for a first TTI and a later TTI are the same.” Reply Br. 3.
As discussed in the previous paragraph, the plain and ordinary meaning of
“based on” requires that one value be used in the calculation of or is a basis
for the other. However, we do not find this relationship in either the
Examiner’s reasoning (see Final Act. 2–3 and Ans. 5–6) or Pinheiro’s
paragraphs 67 and 68 and Figures 8A–D, which we turn to next.
The paragraphs cited and discussed by the Examiner fail to show that
Pinheiro discloses a determination that is “based on amount of data allowed
in a current TTI” as claimed. In paragraph 67, Pinheiro discloses “the
maximum supported payload, (i.e., maximum MAC-e PDU size), that can be
sent in the next” TTI is based on the selected power output (“PO”). Pinheiro
¶ 67; Fig. 8A (step 806). Even assuming the Examiner intended to equate
the maximum supported payload to the claimed “a size of the RLC PDUs for
the later TTI” (see, e.g., Final Act. 2–3), the Examiner has failed to establish
that Pinheiro’s power output is “an amount of data allowed in current TTI”
as recited in the claim. Likewise, paragraph 68 of Pinheiro fails to mention
determining the size of a RLC PDU as claimed. Instead, this portion
discusses how the system handles a “compressed mode (CM) gap.”
In addition to citing to paragraphs 67 and 68, the Examiner’s rejection
refers to Figs. 8A–8D in general, which collectively illustrate a flow diagram
of Pinheiro’s entire data transmission process 800. Ans. 4. Without any
citation to particular paragraphs other than paragraphs 67–68 in Pinheiro, the
Examiner also seems to quote other portions of Pinheiro. Ans. 4–5. Above,
some of the portions discussed by the Examiner have been addressed. The
Examiner also specifically discusses that Pinheiro teaches determining the
smallest enhanced uplink transport format combination set (E-TFC) that can
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carry the resulting MAC-e PDU. Ans. 5; Pinheiro, Fig. 8D (step 860). The
Examiner provides an insufficient explanation, though, of how this
determination, in turn, determines a RLC PDU size for a later TTI or why
any size determined is based on a data amount allowed in a current TTI as
recited. See id.
As for the Examiner’s remaining discussion (Ans. 5), Pinheiro’s
Figure 8A addresses setting different payloads, including those for
scheduled and non-scheduled grants. See Ans. 5; Pinheiro ¶¶ 67, 69, 74,
Fig. 8A. The discussed payloads differ from the recited packet data unit size
(e.g., RLC PDU size). For example, Pinheiro shows in Figure 3 a MAC-e
size and E-TFC size (e.g., a RLC PDU size) differ from the MAC-d flow
data 304 (e.g., a payload). Pinheiro ¶ 19, Fig. 3. As such, the Examiner has
not explained sufficiently how these passages correlate to determining a
RLC PDU size for later TTI as recited. In particular, we decline to speculate
which of these values (e.g., the remaining available payload, the scheduled
grant payloads, or the non-scheduled payloads) the Examiner regards as the
“amount of data allowed in a current TTI” used to determine the RLC PDU
size. Because Pinheiro does not have similar terminology as claim 14 and
because the correspondence between these different terms is not apparent,
the Examiner fails to establish the factual bases for the anticipation rejection.
Lastly, if the Examiner intended to rely on other portions of Figures
8A–D to disclose the “determining” step, the Examiner has failed to
articulate the steps in these figures that purportedly disclose what is recited.
On this record, the weight of the evidence favors Appellant’s position that
Pinheiro fails to describe the claimed “determining” step of claim 14. See,
e.g., App. Br. 6.
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Based on the record before us, we do not sustain the Examiner’s
rejection of independent claim 14. Independent claim 16 includes the same
or a similar recitation to the disputed limitation in claim 14. For the same
reasons, then, we determine that the Examiner has not established that
Pinheiro anticipates this independent claim. Because we do not sustain the
rejection of independent claims 14 and 16, we will not sustain the rejection
of dependent claims 15 and 17.
For the reasons above, Appellant has persuaded us of error in the
rejection of independent claims 14 and 16 and dependent claims 15 and 17.

NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(B)
We enter a new ground of rejection for claim 14 under
35 U.S.C. § 112, ¶ 1, because the disclosure fails to enable the full scope of
the claim.
Statutory provision, 35 U.S.C. § 112, ¶ 1, reads as follows:
The specification shall contain a written description of
the invention, and of the manner and process of making and
using it, in such full, clear, concise, and exact terms as to enable
any person skilled in the art to which it pertains, or with which
it is most nearly connected, to make and use the same, and shall
set forth the best mode contemplated by the inventor of
carrying out his invention.
For questions of enablement, the Federal Circuit has held that “the
specification of a patent must teach those skilled in the art how to make and
use the full scope of the claimed invention without ‘undue
experimentation’.” In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993)
(emphasis added). Regarding the scope of enablement for purely functional
claims, the Board has held that
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[W]hen the limitation encompasses any and all structures or
acts for performing a recited function, including those which
were not what the applicant had invented, the disclosure fails to
provide a scope of enablement commensurate with the scope of
the claim and the claim would violate the prohibition of
[Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1
(1946)].
Ex parte Miyazaki, 89 USPQ2d 1207, 1217 (BPAI 2008) (precedential).
In the present case, the method of claim 14 contains two steps, and the
execution of both steps is conditioned upon satisfying the “if” clause. In
particular, claim 14 recites, in part, “determining a size . . . , if the size of the
RLC PDUs for the later TTI is flexible” (emphasis added). App. Br. 11. On
the other hand, claim 14 does not set forth any steps to be performed for the
condition where “the size of the RLC PDUs for the later TTI” is not flexible.
Under such condition, the method is not limited to the steps of
“determining” and “generating” PDUs as claimed or to any other acts for
that matter. Without any acts limiting the scope of the method under such
condition, the claim is purely functional. In essence, claim 14 encompasses
any and all processes for achieving the desired result set forth in the
preamble—“for generating, by a User Equipment (UE), Radio Link Control
(RLC) Packet Data Units (PDUs) for a later Transmission Time Interval
(TTI),” including those not contemplated by Appellant or fully enabled by
the instant disclosure.
Accordingly, pursuant to our authority under 37 C.F.R. § 41.50(b), we
reject claim 14 under 35 U.S.C. § 112, ¶ 1.
Although we decline to reject every claim under our discretionary
authority under 37 C.F.R. § 41.50(b), we emphasize that our decision does
not mean that the remaining claims are necessarily patentable. Rather, we
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merely leave the patentability determination of these claims to the Examiner.
See MPEP § 1213.02.

CONCLUSION
The Examiner erred in rejecting claims 14–17 under 35 U.S.C. § 102.
We newly reject claim 14 under 35 U.S.C. § 112, ¶ 1.

DECISION
The Examiner’s decision rejecting claims 14–17 is reversed.
This Decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) for claim 14. This section provides that “[a] new
ground of rejection … shall not be considered final for judicial review.”
Section 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner . . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record . . . .

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).

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REVERSED
37 C.F.R. §41.50b)

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