Ex Parte MeylanDownload PDFPatent Trial and Appeal BoardMay 25, 201712500548 (P.T.A.B. May. 25, 2017) 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. 12/500,548 07/09/2009 Arnaud Meylan 082067 2549 23696 7590 05/30/2017 OTTAT mMM TNmRPORATFD EXAMINER 5775 MOREHOUSE DR. SAN DIEGO, CA 92121 ONAMUTI, GBEMILEKE J ART UNIT PAPER NUMBER 2463 NOTIFICATION DATE DELIVERY MODE 05/30/2017 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): us-docketing@qualcomm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ARNAUD MEYLAN Appeal 2016-006330 Application 12/500,5481 Technology Center 2400 Before ST. JOHN COURTENAY III, JUSTIN BUSCH, and SCOTT B. HOWARD, Administrative Patent Judges. HOWARD, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection of claims 1—39, which constitute all of the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. THE INVENTION The disclosed and claimed invention is directed to a method and apparatus for scheduling random access procedures in a wireless network 1 Appellant identifies Qualcomm, Inc. as the real party in interest. App. Br. 1. Appeal 2016-006330 Application 12/500,548 “based on the measurement gap information and the random access procedure information.” Abstract. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for wireless communications, comprising: receiving measurement gap information comprising a time period associated with at least one measurement gap; receiving random access procedure information; and scheduling a random access procedure based on the measurement gap information and the random access procedure information to avoid transmission of a random access message during the at least one measurement gap, wherein scheduling the random access procedure includes scheduling a message transmission window based on a specified time period which is a time between reception of an uplink grant in a random access response message and a corresponding uplink transmission. REFERENCES The prior art relied upon by the Examiner as evidence in rejecting the claims on appeal is: Choi US 2009/0191883 A1 July 30, 2009 Yi US 7,957,298 B2 June 7,2011 Lindstrom US 8,374,600 B2 Feb. 12,2013 REJECTIONS A. Claims 1, 3-13, 15-20, 22, 24, 25, 27, 29-32, 34, 36, and 38 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Choi and Yi. Final Act. 5—17. B. Claims 2, 14, 21, 23, 26, 28, 33, 35, 37, and 39 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Choi, Yi, and Lindstrom. Final Act. 17—19. 2 Appeal 2016-006330 Application 12/500,548 GROUPING OF CLAIMS Based on Appellant’s arguments, we decide the appeal of all claims rejected under rejection A on the basis of representative independent claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). We decide the appeal of all claims rejected under rejection B on the basis of representative dependent claim 2. See id. To the extent Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. See 37 C.F.R. § 41.37(c)(l)(iv). ANALYSIS We have reviewed the Examiner’s rejection in light of Appellant’s arguments that the Examiner erred.2 In reaching this decision, we have considered all evidence presented and all arguments made by Appellant. We are not persuaded by Appellant’s arguments regarding claims 1—39, and we incorporate herein and adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Final Act. 5—19), and (2) the reasons and rebuttals set forth in the Examiner’s Answer in response to Appellant’s arguments (Ans. 16—22). We incorporate such findings, reasons, and rebuttals herein by reference unless otherwise noted. However, we highlight and address specific findings and arguments for emphasis as follows. 2 Rather than reiterate the entirety of the arguments of Appellant and the positions of the Examiner, we refer to the Appeal Brief (filed Oct. 9, 2015); the Reply Brief (filed June 7, 2016); the Final Office Action (mailed Feb. 27, 2015); and the Examiner’s Answer (mailed Apr. 7, 2016) for the respective details. 3 Appeal 2016-006330 Application 12/500,548 Claim Grouping A (Claims 1, 3—13, 15—20, 22, 24, 25, 27, 29—32, 34, 36, and 38) Appellant argues the Examiner erred in finding Choi teaches “scheduling a random access procedure based on the measurement gap information and the random access procedure information to avoid transmission of a random access message during the at least one measurement gap,” as recited in claim 1. App. Br. 8—15; Reply Br. 3—6. Specifically, Appellant argues “Choi does not avoid transmission of random access messages during measurement gaps.” App. Br. 8. Appellant further argues Choi teaches away from the claimed invention because it specifically teaches scheduling random access messages during measurement gaps. Id. at 13—15; Reply Br. 5—6. During prosecution, claims must be given their broadest reasonable construction while reading claim language in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad, of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard, we construe claim terms using “the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Based on the ordinary meaning of the words of the claim, the broadest reasonable construction of the disputed claim limitation is broad enough to encompass the transmission of a random access message that does not occur during a measurement gap. Accord Final Act. 3 (“Note: ‘avoid transmission 4 Appeal 2016-006330 Application 12/500,548 of a random access message during the at least one measurement gap’ (the claim limitation discloses ‘at least one measurement gap’, which denotes the measurement gap could be more than one) is a negative limitation(s) and the prior art meets the negative limitation(s) by not including ‘avoid transmission of a random access message during the at least one measurement gap’ as it’s mentioned in the claim.” (emphasis omitted)); Id. at 7 (same). Because Appellant concedes that at least some of the transmissions of random access messages do not occur during the measurement gap,3 * 5we are not persuaded by Appellant’s argument that the Examiner erred. Moreover, Appellant has not established that Choi teaches away from the claimed invention, because Appellant has not demonstrated that “a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant,” In re Gurley, 27 F.3d 551, 553 (Fed Cir. 1994). The sections cited by Appellant discuss sending transmissions during the measurement gap. See, e.g., Choi 1147, 49. However, that embodiment “does not teach away. . . [as] it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the 3 See, e.g., App. Br. 8 (“[Although Choi describes during DTX, examples of where random access messages may just happen to not be sent during the measurement gap,. . .”), 13 (“Granted, the example provided in FIG. 7 may show that some portions in a DTX cycle over which data transmissions by the mobile may occur in a period (see, e.g., 709 or 711) that is not part of a measurement gap time period.”); Reply Br. 4 (“Appellant agrees there is a scheduling of the random access message transmission that falls outside of the measurement gap disclosed by Choi,. . .”). 5 Appeal 2016-006330 Application 12/500,548 invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). Specifically, Appellant does not point to any teaching against sending a random access message that does not occur during the measurement gap. To the contrary, as Appellant admits, see footnote 3, supra, at least some of the messages are not sent during the measurement gap. Accordingly, the stated preference identified by Appellant of some messages being sent during the measurement gap is insufficient to teach away from the claimed invention. See DePuy, 567 F.3d at 1327; Fulton, 391 F.3d at 1201. Appellant also argues the Examiner erred in finding Yi teaches the wherein clause recited in claim 1. App. Br. 15—16. In doing so, Appellant discusses only the teaching at Yi column 17, lines 7 through 33. Id. Although the Examiner relied on Yi 17:20—34 in the Final Action, in the Answer the Examiner further relies on Figures 5 and 6 and the text at column 9, line 46 through column 10, line 10. Compare Final Act. 3—4, 7—8, with Ans. 20. Appellant did not address the additional evidence in the Reply Brief. We are not persuaded of error based on Appellant’s argument because it does not address the reasoning relied on by the Examiner (Ans. 20) and, thus, does not persuasively address the rejection on appeal. Instead, we agree with the Examiner in finding Yi teaches the wherein clause recited in claim 1. Accordingly, we sustain the Examiner’s rejection of representative claim 1, along with the rejection of claims 3—13, 15—20, 22, 24, 25, 27, 29— 6 Appeal 2016-006330 Application 12/500,548 32, 34, 36, and 38, which are not separately argued. See Claim Grouping, supra. Claim Grouping B (Claims 2, 14, 21, 23, 26, 28, 33, 35, 37, and 39) Appellant argues because Lindstrom does not cure the deficiencies identified in claim 1, the Examiner erred in rejecting claims 2, 14, 21, 23, 26, 28, 33, 35, 37, and 39. App. Br. 16. Because we find no deficiencies associated with claim 1, we are not persuaded by that argument that the Examiner erred. Appellant also “refers the Office back to the remarks previously made in response to the earlier Office Action as to the deficiencies of the Lindstrom reference reviewed alone or in combination with Choi and/or Yi, and will not repeat those remarks here.” App. Br. 16 (emphases omitted). We disagree with and are not persuaded by Appellant’s attempt to incorporate by reference non-specified arguments made in an earlier response. 37 C.F.R. § 41.37(c) provides the appropriate content for an Appeal Brief before this Board. No subsection thereof provides for incorporation by reference. Rather, as subsection (1) states, “[ejxcept as otherwise provided in this paragraph, the brief shall contain the following items under appropriate headings and in the order indicated in paragraphs (c)(l)(i) through (v) of this section.” We conclude that the attempt to incorporate by reference fails to constitute an argument on the merits. See 37 C.F.R. § 41.37(c)(l)(iv) (“Except as provided for in §§ 41.41, 41.47 and 41.52, any arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal.”); see also MPEP 1205.02 (“It is essential that the Board be provided with a brief 7 Appeal 2016-006330 Application 12/500,548 fully stating the position of the appellant with respect to each ground of rejection presented for review in the appeal so that no search of the Record is required in order to determine that position. Thus, the brief should not incorporate or reference previous responses. 37 CFR 41.37(c)(1) requires that the brief contain specific items, as discussed below.” (emphasis added)) “If an appellant fails to present arguments on a particular issue—or, more broadly, on a particular rejection—the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection.” Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). Accordingly, we do not review the Examiner’s rejection of the claims 2, 14, 21, 23, 26, 28, 33, 35, 37, and 39 and summarily affirm the Examiner’s rejection of those claims. DECISION For the above reasons, we affirm the Examiner’s decision rejecting claims 1—39. 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). See 37 C.F.R. § 41.50(f). AFFIRMED 8 Copy with citationCopy as parenthetical citation