Ex Parte Norris et al

Patent Trial and Appeal Board

Jun 25, 2014

11808903 (P.T.A.B. Jun. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TIM J. NORRIS and
GRAHAM A. CHARLES
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Appeal 2011-013209
Application 11/808,903
Technology Center 2400
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Before JEFFREY S. SMITH, JOHNNY A. KUMAR, and
LARRY J. HUME, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1 and 3-26. Claim 2 has been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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STATEMENT OF CASE
Invention
Appellant’s invention involves sending a message from a mobile
terminal to a radio access network on a common transport channel (see
Spec. 4, ll. 23-25; 10, ll. 6-8; and Figs. 1 and 2).
Claim 1 is representative of the invention and reproduced below:
1. A method, comprising:
sending a message from a mobile terminal to a radio
access network on a common transport channel, wherein the
message comprises information of one or more measurement
results, each measurement result defining a value of a measured
parameter relating to radio signal transmission between the
mobile terminal and one or more access entities of the radio
access network, and the information which is sent to the radio
access network is based on a default reporting configuration
stored in the mobile terminal.

Rejection at Issue1
The Examiner rejected claims 1, 3-16, and 23 under 35 U.S.C.
§ 102(b) as being anticipated by ETSI (ETSI Tech. Spec. 125 331, Universal
Mobile Telecommunications System (UMTS); Radio Resource Control
(RRC) protocol specification, 3GPP TS 25.331 version 3.21.0 Release
1999). Ans. 4-11.2

1 Throughout this opinion we refer to the Examiner’s Answer (“Ans.”)
mailed on June 9, 2011.
2 We note the Examiner has withdrawn the rejection of claim 1 as being
anticipated by Mikola. Ans. 4.
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The Examiner rejected claims 17-22, 24, and 25 under 35 U.S.C.
§ 103(a) as being unpatentable over ETSI and Charpentier (US
2008/0076359 A1, Mar. 27, 2008). Ans. 11-21.
The Examiner rejected claim 26 under 35 U.S.C. § 103(a) as being
unpatentable over ETSI and well-established teachings in art. Ans. 21-22.

ISSUES3
Did the Examiner err in rejecting claims 1, 3-16, and 23 as being
anticipated by ETSI?
Did the Examiner err in rejecting claims 17-22, 24, and 25 as obvious
over ETSI and Charpentier because the cited references fail to disclose,
teach, or suggest the argued limitations?
Did the Examiner err in rejecting claim 26 as obvious over ETSI and
well-established teachings in the art, i.e., Official Notice?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. Further, we have reviewed the
Examiner’s response to Appellants’ arguments. The Examiner has provided
a comprehensive response to each argument presented by the Appellants on
pages 5 through 30 of the Answer. We have reviewed this response and
concur with the Examiner’s findings and conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
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which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ Appeal Brief. Ans. 5-30.
We have considered Appellants’ Reply Brief but find it unpersuasive to
rebut the Examiner’s findings and legal conclusions.
Anticipation Rejection of Claims 1, 3-16, and 23
We note the disputed “message comprises information of one or more
measurement results” and “a default reporting configuration” limitations
recited in representative claim 14 constitute non-functional descriptive
material for they merely recite different types of data, because “information
of one or more measurement results” and “default reporting configuration”
do not functionally limit the claimed invention. Therefore, the disputed
information of one or more measurement results and default reporting
configuration constitute non-functional descriptive material that does not
patentably distinguish over prior art that otherwise renders the claims
unpatentable.
The Examiner need not give patentable weight to descriptive material
absent a new and unobvious functional relationship between the descriptive
material and the substrate. See In re Lowry, 32 F.3d 1579, 1582-83 (Fed.
Cir. 1994); In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004) (nonfunctional
descriptive material cannot render nonobvious an invention that would have

3 Throughout this opinion we refer to the Appeal Brief (“App. Br.”) dated
May 6, 2011, and Reply Brief (“Reply Br.”) dated July 22, 2011.
4 Independent claims 17, 20, 23, 24, and 25 recite similar subject matter.
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otherwise been obvious); see also Ex parte Mathias, 84 USPQ2d 1276
(BPAI 2005) (informative), aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006).
Unpatentability Rejection of Claims 17-22, 24, and 25
Appellants merely argue the combination of prior art cited by the
Examiner does not teach or suggest the disputed limitations in claim 17, as
argued with respect to claim 1, and that Charpentier does not make up for
the purported deficiencies of ETSI. App. Br. 25-26. While using an
argument for patentability of a first claim as a cut-and-paste argument for a
second claim might outwardly appear to be a separate argument for
patentability of the second claim, such a cut-and-paste argument is not in
fact an argument for “separate patentability.” Appellants make similar
arguments for patentability of independent claims 20, 24 and 25, and claims
depending therefrom. App. Br. 27-34.
Accordingly, on this record, we do not find Appellants’ arguments for
patentability of claims 17-22, 24 and 25 to be persuasive, for the same
reasons discussed above with respect to the anticipation rejection of claim 1.
Unpatentability Rejection of Claim 26
Appellants merely argue claim 26 is patentable for the same reasons
as claim 17, because ETSI does not teach or suggest all the limitations of
claim 17, as well as the additional limitations recited therein. App. Br. 34.
With respect to the Examiner’s taking of Official Notice in finding the
limitation of claim 26 relating to the use of an integrated circuit is well-
known in the art (Ans. 22), Appellants have not properly traversed the
Examiner’s finding. Instead, Appellants argue,
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[T]he elements of the present claims that are not disclosed in
ETSI are also not well known in the art. In particular,
Appellants submit that it is not well known in the art that an
apparatus sends a message that includes “information of one or
more measurement results, each measurement result defining a
value of a measured parameter relating to radio signal
transmission between the apparatus and one or more access
entities of the radio access network, and to send the information
to the radio access network based on a default reporting
configuration stored in the mobile terminal,” as recited in claim
17.
App. Br. 34. We find Appellants have mischaracterized the Examiner’s
finding concerning the taking of Official Notice, and thus their arguments
are therefore misplaced because the Examiner’s taking of Official Notice is
directed to the additional recitation of claim 26, and not the recitations of
claim 17 from which claim 26 depends.
In addition, Appellant’s assertions with respect to claim 26 amount to
unsupported attorney argument and not evidence, and therefore we give
them little weight. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997);
see also In re Huang, 100 F.3d 135, 139-140 (Fed. Cir. 1996). Accordingly,
on this record, we do not find error in the Examiner’s reliance on the
combination of ETSI with well-known teachings in the art to render
claim 26 unpatentable.

CONCLUSION
Consequently, we conclude there is no reversible error in the
Examiner’s rejections of independent claims 1, 17, 20, and 23-25, and
dependent claims 3-16, 18, 19, 21, 22, and 26 not argued separately.

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DECISION
The decision of the Examiner to reject claims 1 and 3-26 is affirmed.
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).

AFFIRMED

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