Ex Parte Paila et al

Board of Patent Appeals and Interferences

Aug 12, 2010

09988241 (B.P.A.I. Aug. 12, 2010)

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.
09/988,241 11/19/2001 Toni Paila 004770.00026 8406
22908 7590 08/13/2010
BANNER & WITCOFF, LTD.
TEN SOUTH WACKER DRIVE
SUITE 3000
CHICAGO, IL 60606
EXAMINER
TRINH, SONNY
ART UNIT PAPER NUMBER
2618
MAIL DATE DELIVERY MODE
08/13/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte TONI PAILA, JANI PAIKELA, LIN XU,
JUHA-PEKKA LUOMA, and ROD WALSH
_____________

Appeal 2009-012730
Application 09/988,241
Technology Center 2600
______________

Before JOHN C. MARTIN, JOSEPH F. RUGGIERO, and
CARLA M. KRIVAK, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-012730
Application 09/988,241

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-47, which are all of the pending claims.
Oral argument was heard on July 21, 2010. 2
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

A. Appellants’ invention
Appellants’ invention relates to performing multicast session
handovers from one cell to another in a wireless system. Specification [01].3

B. The claims
The independent claims before us are claims 1, 9, 12, 23, 34, 37, and
47, of which claim 1 reads:
1. A method for performing multicast session handover,
comprising the steps of:
(i) in a first cell, receiving from a base station corresponding
to the first cell, a broadcast message communicating
multicast session information for a plurality of cells
comprising the first cell and a second cell;

2 “[A]rguments not presented in the brief or reply brief and made for the
first time at the oral hearing are not normally entitled to consideration.”
MPEP § 1205.02 (8th ed., rev. 7, July 2008) (citing In re Chiddix,
209 USPQ 78 (Comm’r Pat. 1980)).
3 References herein to Appellants’ Specification are to the Application as
filed rather than to corresponding Patent Application Publication
2003/0100325 A1.
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Application 09/988,241

3
(ii) tuning to a multicast session in the first cell using the
received multicast session information;
(iii) when a predetermined condition occurs, tuning to the
multicast session in the second cell using the received
multicast session information.
Claims App. (Br. 10).

C. The references
The Examiner’s rejections are based on the following references:
Das et al. (“Das”) US 2001/0036834 A1 Nov. 1, 2001
Leung et al. (“Leung ‘757”) US 2002/0142757 A1 Oct. 3, 2002
McCormick et al. (“McCormick”) US 6,519,455 B1 Feb. 11, 2003
Leung ‘757 corresponds to Application 09/933,914, filed August 20,
2001, now Patent 7,693,508 B2, issued April 6, 2010. The cover page of
Leung ‘757, under the heading “Related U.S. Application Data,” lists
“Provisional application No. 60/279,970, filed on March 28, 2001”
(hereinafter “Leung Provisional Application”). Appellants concede that
“Leung was filed August 20, 2001, claiming priority to provisional
application 60/279,970, filed March 28, 2001.” (Reply Br. 2.)

D. The rejections
1. Claims 1-4, 9, 10, 12-15, 18, 19, 23-26, 29, 30, 34, 37-40, 43, and
47 stand rejected under 35 U.S.C. § 102(e) for anticipation by Leung ‘757.
Final Action 3, para. 3.
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Application 09/988,241

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2. Claims 5, 6, 11, 20-22, 31-33, and 44-46 stand rejected under 35
U.S.C. § 103(a) for obviousness over Leung ‘757 in view of McCormick.
Id. at 9, para 5.
3. Claims 7, 16, 27, 35, and 41 stand rejected under 35 U.S.C.
§ 103(a) for obviousness over Leung ‘757 in view of Official Notice. Id.
at 12, para. 6.
4. Claims 8, 17, 28, 36, and 42 stand rejected under 35 U.S.C.
§ 103(a) for obviousness over Leung in view of Das. Id. at 14, para. 7.

THE ISSUE
The dispositive issue raised by Appellants’ arguments is whether
Appellants are entitled to consideration of their argument that the subject
matter relied on by the Examiner in paragraphs [0087]-[0089] of Leung ‘757
lacks written description support in the Leung Provisional Application.4

ANALYSIS
During prosecution of the Application on appeal, Appellants in June
2004 responded5 to a rejection6 based on Basilier US 2003/0073453 A1

4 See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(“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.”). Designated
as precedential at
http://www.uspto.gov/ip/boards/bpai/decisions/prec/index.jsp.
5 June 2, 2004, Response to Final Office Action, at 2.
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Application 09/988,241

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(filed October 11, 2001) with a “Declaration Under 37 C.F.R. § 1.131,”7
which the Examiner accepted as sufficient to remove Basilier as a reference.8
In October 2004, Appellants responded9 to a rejection10 based on Chen et al.
US Patent 6,731,936 B2 (filed August 20, 2001) by filing a “Second
Declaration Under 37 C.F.R. § 1.131,”11 which the Examiner accepted as
sufficient to remove Chen as a reference.12 In that same Office Action, the
Examiner initially entered the rejections based on Leung ‘757 that are now
before us. As noted above, Leung ‘757 corresponds to Application
09/933,914, filed August 20, 2001. This is the same filing date as the filing
date of the Chen reference that was antedated by the “Second Declaration
Under 37 C.F.R. § 1.131.”
Appellants argue for the first time in the Reply Brief that in view of
the Examiner’s acceptance of the “Second Declaration Under 37 C.F.R.
§ 1.131” as effective to overcome Chen, “Leung . . . is . . . valid as a
reference only insofar as it is supported by the provisional application filed
March 28, 2001,” and that the rejections are improper because the subject
matter relied on in paragraphs [0087]-[0089] of Leung ‘757 lacks written
description support in the Leung Provisional Application (id. at 2).

6 Office Action mailed April 19, 2004, at 2, para. 3.
7 Ex. 1 to Reply Br.
8 June 22, 2004, Final Action, at 2, para. 1.
9 October 1, 2004, Amendment, at 2.
10 June 22, 2004, Final Action, at 2, para. 4.
11 Ex. 2 to Reply Br.
12 Non-final Office Action mailed June 3, 2005, at 2, para. 1.
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Application 09/988,241

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In the absence of any clear indication to the contrary, we assume the
Examiner recognized that the August 20, 2001, filing date of Leung ‘757 has
been antedated by the “Second Declaration Under 37 C.F.R. § 1.131” and
that Leung ‘757 is therefore effective as a reference only to the extent it is
supported by the Leung Provisional Application. See MPEP § 2136.03 (III)
(8th ed., rev. 7, July 2008) (“The 35 U.S.C. 102(e) critical reference date of
a US patent or US application publications and certain international
application publications entitled to the benefit of the filing date of a
provisional application under 35 U.S.C. 119(e) is the filing date of the
provisional application with certain exceptions if the provisional
application(s) properly supports the subject matter relied upon to make the
rejection in compliance with 35 U.S.C. 112, first paragraph.”). Appellants
do not argue in the Brief or the Reply Brief that the Examiner failed to
recognize that the August 20, 2001, filing date of Leung ‘757 has been
antedated by the “Second Declaration Under 37 C.F.R. § 1.131.”
Appellants’ argument that the subject matter relied on in paragraphs
[0087]-[0089] of Leung ‘757 lacks written description support in the Leung
Provisional Application (id. at 2) is entitled to no consideration because it
was not necessitated by a new point in the Answer and thus should have
been made in the opening Brief. See Ex parte Borden, 93 USPQ2d 1473,
1473-74 (BPAI 2010) (“informative”13) (absent a showing of good cause,

13 Designated as an “Informative Opinion” at
http://www.uspto.gov/ip/boards/bpai/decisions/inform/index.jsp.
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Application 09/988,241

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the Board is not required to address an argument newly presented in the
Reply Brief that could have been presented in the principal Brief on Appeal).
Appellants’ assertion that “[p]rior to the Examiner’s Answer, the Office had
not relied on paragraphs [0087]-[0089] of Leung” (Reply Br. 2) overlooks
the Examiner’s reliance on paragraphs “0087-0088” at pages 4-8 of the Final
Action and on paragraph “0089” at pages 2, 4-6, and 8 thereof.
The Examiner’s rejections are therefore affirmed.

DECISION
All of the Examiner’s rejections are 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). See 37 C.F.R.
§ 1.136(a)(1)(v) (2010).

AFFIRMED

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BANNER & WITCOFF, LTD.
TEN SOUTH WACKER DRIVE
SUITE 3000
CHICAGO, IL 60606