Ex Parte Meylan

Patent Trial and Appeal Board

May 25, 2017

12500548 (P.T.A.B. May. 25, 2017)

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
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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.
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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.
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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
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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,. . .”).
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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—
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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
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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
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