Ex Parte Moon et al

Patent Trial and Appeal Board

Sep 23, 2013

10569067 (P.T.A.B. Sep. 23, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte SUNG UK MOON, MINAMI ISHII, and
TAKEHIRO NAKAMURA
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Appeal 2011-006023
Application 10/569,067
Technology Center 2600
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Before JAMES R. HUGHES, JEFFREY S. SMITH, and
JUSTIN BUSCH Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-006023
Application 10/569,067

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-4, which are all the claims remaining in the
application. Appellants, however, only appeal claims 1 and 2 and do not
appeal claims 3 and 4 – although they note that these claims are pending.
(App. Br. 2.)1 The Patent Appeal and Trial Board has no jurisdiction as to
non-appealed claims and we deem claims 3 and 4 to be canceled and not
before us for review. The Examiner has the authority to cancel non-
appealed claims 3 and 4. See Ex parte Ghuman, 88 USPQ2d 1478, 1480
(BPAI 2008) (precedential)(per curiam). We have jurisdiction of claims 1
and 2 under 35 U.S.C. § 6(b). An Oral Hearing was held on September 5,
2013.
We reverse.
Appellants’ Invention
The invention at issue on appeal concerns a mobile communication
unit (station) capable of receiving broadcast or multicast communication
signals configured to generate and transmit control information to a
controller during idle mode (while the broadcast or multicast signal is being
received) without establishing a dedicated channel. (Spec. 1:7-9; 1:23 to
2:21; 3:3 to 4:10; Abstract.)

1 We refer to Appellants’ Specification (“Spec.”); Appeal Brief (“App. Br.”)
filed August 2, 2010; and Reply Brief (“Reply Br.”) filed January 11, 2011.
We also refer to the Examiner’s Answer (“Ans.”) mailed November 12,
2010.
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Application 10/569,067

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Representative Claim
Independent claim 1, reproduced below with the key disputed
limitations emphasized, further illustrates the invention:
1. A mobile station capable of handling a broadcast
communication or a multicast communication, wherein:
the mobile station is configured to generate control
information including a request to join the broadcast
communication or the multicast communication or a request to
leave the broadcast communication or the multicast
communication, when the mobile station is in an idle mode, to
add, to the control information, a control information identifier
for specifying a type of the control information, and to transmit
the control information to a radio network controller via a
common channel, without establishing a dedicated channel, and
the control information identifier is identification
information for specifying the broadcast communication or
multicast communication or multicast group identification
information in the multicast communication.
Rejections on Appeal
1. The Examiner rejects claims 1, 3, and 4 under 35 U.S.C.
§ 103(a) as unpatentable over U.S. Patent App. Pub. No. 2005/0013326 A1,
published Jan. 20, 2005 (“Vinagre”) and U.S. Patent No. 6,704,576 B1,
issued Mar. 9, 2004 (“Brachman”).2
2. The Examiner rejects claim 2 under 35 U.S.C. § 103(a) as
unpatentable over Vinagre, Brachman, and U.S. Patent App. Pub. No.
2006/0056341 A1, published Mar. 16, 2006 (filed Sep. 12, 2005)
(“Takagi”).

2 Appellants only appeal claims 1 and 2 and do not appeal claims 3 and 4.
See Statement of the Case (supra).
Appeal 2011-006023
Application 10/569,067

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ISSUE
Based upon our review of the administrative record, Appellants’
contentions, and the Examiner’s findings and conclusions, the pivotal issue
before us follows:
Does the Examiner err in concluding that the combination of Vinagre
and Brachman collectively would have taught or suggested a “mobile station
[that] is configured to generate control information” “when the mobile
station is in an idle mode” “and to transmit the control information to a radio
network controller via a common channel, without establishing a dedicated
channel” as recited in claim 1?

ANALYSIS
We agree with Appellants that the portions of Vinagre identified by
the Examiner do not explicitly or inherently disclose the disputed features of
claim 1. Specifically, we agree with Appellants that “Vinagre, . . .
unequivocally describes that a dedicated signaling connection is established
between the radio network controller and the terminal to bring the terminal
in point-to-point mode when exchanging information between the devices”
(App. Br. 4.)
In particular, the portions of Vinagre cited by the Examiner (¶¶
[0005], [0014], [0097]-[0109]; see Ans. 4, 6-7) simply describe a terminal
idle mode, sending information from the terminal over a dedicated channel
(point-to-point), and sending information to the terminal during idle (point-
to-multipoint) mode, but not sending information from the terminal over a
common channel or sending information over a common channel during an
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Application 10/569,067

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idle (point-to-multipoint) mode (see Vinagre, ¶¶ [0005] and [0097]-[0109]).
We find no mention of Vinagre’s terminal (mobile station) utilizing a
common channel (non-dedicated channel) to communicate with the
controller.
We note that Appellants claim recites a device or machine, a mobile
station, and that the disputed features are functional in nature. Thus, we find
the disputed limitations are essentially contained in a statement of intended
use or purpose. Such statements of intended use “usually will not limit the
scope of the claim because such statements usually do no more than define a
context in which the invention operates.” Boehringer Ingelheim Vetmedica,
Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003).
However, the prior art structure must be capable of performing the intended
use in order to render a claim limitation obvious. In re Schreiber, 128 F.3d
1473, 1477-78 (Fed. Cir. 1997) (if a prior art structure is capable of
performing the intended use, it meets the claim limitation). In this instance,
the cited portions of Vinagre do not describe a structure capable of
performing Appellants’ recited functionality.
Consequently, we are constrained by the record before us to conclude
that the combination of Vinagre and Brachman fails to teach or suggest the
recited features of claim 1, and the rejection of claim 1 fails to establish a
prima facie case of obviousness. Dependent claim 2 depends on and stands
with claim 1. Accordingly, we reverse the Examiner’s obviousness
rejections of claims 1 and 2.

Appeal 2011-006023
Application 10/569,067

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CONCLUSION OF LAW
Appellants have shown that the Examiner erred in rejecting claims 1
and 2 under 35 U.S.C. § 103(a).
We deem Appellants’ claims 3 and 4 to be canceled.

DECISION
We reverse the Examiner’s rejections of claims 1 and 2 under 35
U.S.C. § 103(a).

REVERSED

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