Ex Parte LuckyDownload PDFPatent Trial and Appeal BoardAug 5, 201512433378 (P.T.A.B. Aug. 5, 2015) Copy Citation 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. Appeal 2013-005886 Application 12/433,378 2 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. Appeal 2013-005886 Application 12/433,378 3 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 Appeal 2013-005886 Application 12/433,378 4 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 Appeal 2013-005886 Application 12/433,378 5 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 Appeal 2013-005886 Application 12/433,378 6 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. Appeal 2013-005886 Application 12/433,378 7 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 Appeal 2013-005886 Application 12/433,378 8 [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 Appeal 2013-005886 Application 12/433,378 9 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). Appeal 2013-005886 Application 12/433,378 10 REVERSED 37 C.F.R. §41.50b) rwk Copy with citationCopy as parenthetical citation