Ex Parte Patwardhan et al

Patent Trials and Appeals Board

May 17, 2019

13744221 - (D) (P.T.A.B. May. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/744,221 01/17/2013 Ravindra Manohar Patwardhan
109682 7590 05/21/2019
Holland & Hart LLP/Qualcomm
P.O. Box 11583
Salt Lake City, UT 84147
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
PT457.0l (88492.1427) 6199
EXAMINER
CUNNINGHAM, KEVIN M
ART UNIT PAPER NUMBER
2461
NOTIFICATION DATE DELIVERY MODE
05/21/2019 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):
ocpat_uspto@qualcomm.com
patentdocket@hollandhart.com
qualcomm@hollandhart.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RA VINDRA MANOHAR PATWARDHAN and
RASHID AHMED AKBAR ATTAR
Appeal2017-008463
Application 13/744,221
Technology Center 2400
Before JOSEPH P. LENTIVECH, MICHAEL M. BARRY, and
MICHAEL J. ENGLE, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision to reject claims 1, 3, 4, 6-8, 10-12, 15-18, 20-25, 27,
29-34, 36, 39--44, 46, 47, 49, and 51---68. Claims 2, 5, 9, 13, 14, 19, 26, 28,
35, 37, 38, 45, 48, and 50 have been canceled. See App. Br. 26-39 (Claims
Appendix). We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b ).
We affirm.
1 According to Appellants, the real party in interest is Qualcomm
Incorporated. App. Br. 2.
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Application 13/744,221
STATEMENT OF THE CASE
Appellants' Invention
Appellants' invention generally relates to "methods and devices for
modified network performance attributes in response to identifying access
terminal capabilities." Spec. ,r 2. Claim 1, which is illustrative, reads as
follows:
1. An access terminal, comprising:
a communications interface;
a storage medium; and
a processing circuit coupled to the communications
interface and the storage medium, the processing circuit adapted
to:
send, via the communications interface, a capability
indication message adapted to identify the access terminal
as power sensitive; and
employ at least one altered performance attribute
associated with the capability indication message, wherein
the at least one altered performance attribute includes fast
call setup, which includes a set of mechanisms that reduce
the latency involved in access-terminal-terminated call
setup and access-terminal-originated call setup.
Rejections
Claims 61---68 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. Non-Final
Act. 2.
Claims 1, 3, 7, 15, 18, 22, 23, 29, 30, 39, and 42 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Seok et al.
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(US 2012/0320755 Al; published Dec. 20, 2012) ("Seok") and Suzuki et al.
(US 2010/0118752 Al; published May 13, 2010) ("Suzuki"). Non-Final
Act. 4--7.
Claims 4, 6, 8, 10, 11, 16, 17, 20, 21, 24, 25, 27, 31-34, 40, 41, 43,
44, 46, 47, 49, and 51-58 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Seok, Suzuki, and Wang et al. (US
2012/0149383 Al; published June 14, 2012) ("Wang"). Non-Final Act. 7-9.
Claims 12 and 36 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Seok, Suzuki, Wang, and Lenart et al.
(US 2011/0319064 Al; published Dec. 29, 2011) ("Lenart"). Non-Final
Act. 9.
Claims 59 and 60 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Seok, Suzuki, and Vimpari et al. (US
2010/0325306 Al; published Dec. 23, 2010) ("Vimpari"). Non-Final
Act. 10.
Claims 61---68 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Seok, Suzuki, and 3rd Generation
Partnership Project 2, Fast Call Set-up, System Requirements, 3GPP2
S.R0065, Version 1.0 (2002) ("3GPP2"). Non-Final Act. 10.
ANALYSIS
Rejection under 35 U.S. C. § 112, first paragraph
Claim 61 depends from claim 1 and recites that the set of fast call
setup mechanisms comprises:
receiving a channel assignment without previously being
paged;
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rece1vmg an indication included with the channel
assignment to use previously negotiated and stored service
configuration parameters; and
employing a short message that carries the minimally
required fields when reconnecting a dormant packet data call.
App. Br. 37 (Claims Appendix). Claims 62---68 depend from independent
claims 7, 15, 18, 22, 29, 39, and 42, respectively, and recite corresponding
limitations. Id. at 4 7-39. The Examiner finds Appellants' Specification
fails to describe the set of fast call setup mechanisms as including the recited
limitations and, therefore, that these limitations fail to comply with the
written description requirement under 35 U.S.C. § 112, first paragraph.
Non-Final Act. 2, 12; Ans. 5.
Appellants argue the Specification "explicitly describes fast call setup
as it relates to the term of art" and "even uses the same language to
describe[] fast call setup as can be found in [3GPP2]." App. Br. 22.
Appellants argue, therefore, because 3GPP2 defines the set of mechanisms
involved in fast call setup to include the recited limitations, these limitations
are inherently described by the Specification's description of fast call setup.
App. Br. 22-23. Appellants further argue "the Examiner inherently admits
that Fast Call Setup defined by the 3GPP2 Document would have been
known to a person of ordinary skill in the art by citing the reference as prior
art against claims 61---68." App. Br. 23.
We do not find Appellants' arguments persuasive.
To establish inherency, the extrinsic evidence must make clear
that the missing descriptive matter is necessarily present in the
thing described in the reference, and that it would be so
recognized by persons of ordinary skill. Inherency, however,
may not be established by probabilities or possibilities. The mere
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fact that a certain thing may result from a given set of
circumstances is not sufficient.
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and quotation
marks omitted). 3GPP2 provides "[t]his document specifies the system
requirements for Fast Call Setup" and "[t]he objective is to define and to
standardize the functionality of this capability that can be incorporated into
the operations of cdma2000 based wireless telecommunications networks."
3GPP2 at 4. Thus, 3GPP2 limits its description of "fast call setup" to
CDMA2000 based wireless telecommunications networks.
In contrast, Appellants' Specification provides:
The various concepts presented throughout this disclosure may
be implemented across a broad variety of telecommunication
systems, network architectures, and communication standards.
Certain aspects of the disclosure are described below for CDMA
and 3rd Generation Partnership Project 2 (3GPP2) lx protocols
and systems, and related terminology may be found in much of
the following description. However, those of ordinary skill in
the art will recognize that one or more aspects of the present
disclosure may be employed and included in one or more other
wireless communication protocols and systems.
Spec. ,r 22 ( emphasis added). The Specification's description of "fast call
setup" also does not limit the term to CDMA2000 based wireless
telecommunications networks but, instead, provides "[f]ast call set up
generally refers to an accelerated process in call set up ( e.g., bearer resource
assignment), including a set of enhancements/mechanisms that reduce
latency involved in access-terminal-terminated and access-terminal-
originated call setup." Spec. ,r 58 (emphasis added). Because neither the
claims nor the Specification limit "fast call setup" to CDMA2000-based
wireless telecommunication networks and because Appellants fail to provide
any evidence of the term's meaning with respect to other types of networks,
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we find the Specification's description of "fast call setup" fails to inherently
describe the limitations recited in claims 61---68. Further, we agree with the
Examiner (Non-Final Act. 2, 12; Ans. 5) that Appellants' Specification fails
to describe the set of fast call setup mechanisms as including the recited
limitations and, therefore, that these limitations fail to comply with the
written description requirement under 35 U.S.C. § 112, first paragraph.
Accordingly, we are not persuaded the Examiner erred in rejecting
claims 61---68 under 35 U.S.C. § 112, first paragraph.
Rejections under 35 U.S. C. § 103 (a)
CLAIMS 1, 3, 7, 15, 18, 22, 23, 29, 30, 39, AND 42
Appellants contend the combination of Seok and Suzuki fails to teach
or suggest that "fast call setup" "includes a set of mechanisms that reduce
the latency involved in access-terminal-terminated call setup and access-
terminal-originated call setup," as required by claim 1. App. Br. 15-16.
According to Appellants, Suzuki teaches "the FD procedure can include
keeping the UE in the RRC connected mode instead of moving the UE to the
idle mode" and that "[a]ccording to Suzuki, it is this one mechanism that can
reduce the time required for call/ session setup latency compared to the idle
mode." App. Br. 15 (citing Suzuki ,r 22). Appellants argue "the use of the
plural 'mechanisms' in the claim language clarifies that the 'set of
mechanisms' includes more than one mechanism." Id. Appellants argue
Suzuki, therefore, fails to teach the disputed limitation because Suzuki
teaches a single mechanism for reducing the time required for call/ session
setup latency and not a set of mechanisms, as required by claim 1. Id.
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We do not find Appellants' arguments persuasive. Suzuki teaches
"[ m ]aintaining the RRC connected mode whilst reducing the required
number of uplink transmissions also enables a reduction in the time required
for call/session setup latency as compared to idle mode." Suzuki ,r 22. We
agree with the Examiner that Suzuki teaches reducing the number of
unnecessary uplink transmission could include: (1) removing the need for
sending the sounding reference signal; or (2) allowing the user equipment
(UE) time alignment timer to expire without providing any update to the UE
time alignment. Ans. 2-3 ( citing Suzuki ,r 22). As such, Suzuki teaches or
suggests a set of mechanisms for enabling a reduction in the time required
for call/session setup latency as compared to idle mode. Accordingly, we
are not persuaded the Examiner erred in finding Suzuki teaches or suggests
the disputed limitation.
Appellants further contend the combination of Seok and Suzuki is
improper. App. Br. 17-18. Appellants argue:
[T]he Examiner provides nothing more than a conclusory
statement without any evidentiary basis for the finding. Further,
because there is no evidentiary basis for the Examiner's
conclusion, it follows that the Examiner also fails to provide any
explanation for the motivation to combine that includes an
express and rational connection to the evidence presented.
Additionally, there are no reasons provided by the Examiner as
to why a person of ordinary skill in the art would be motivated
to make the specific changes to the two references to arrive at the
specific features recited in the current independent claims.
App. Br. 17. Appellants further argue "the Examiner's alleged motivation to
combine the references 'to improve communications by extending battery
life and minimizing energy drain' provides no rational basis to lead a
[person having ordinary skill in the art] to use Suzuki's procedure of keeping
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the UE in RRC [Radio Resource Control] connected mode instead of
moving to the idle mode." App. Br. 17-18. According to Appellants "if a
[person having ordinary skill in the art] is truly motivated to preserve battery
life, they would be likely to use idle mode more, rather than looking to
maintain the RRC connected mode." App. Br. 18.
We do not find Appellants' arguments persuasive. The test for
obviousness is what the combined teachings of the references would have
suggested to one of ordinary skill in the art. See In re Kahn, 441 F .3d 977,
987-88 (Fed. Cir. 2006); In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991); In
re Keller, 642 F.2d 413,425 (CCPA 1981). The Examiner can satisfy this
test by showing some articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness. KSR Int 'l. v. Teleflex Inc.,
550 U.S. 398, 418 (2007). The conclusion of obviousness can be based on
the interrelated teachings of multiple patents, the effects of demands known
to the design community or present in the marketplace, and the background
knowledge possessed by a person having ordinary skill in the art. Id.
Furthermore, "the analysis need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ." Id. In other words, "if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill." Id. at 417.
Here, the Examiner finds "[i]t would have been obvious to incorporate
the teachings of Suzuki into the teachings of Seok in order to improve
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communications by extending battery life and minimizing energy drain."
Non-Final Act. 4. In this regard, the Examiner reasons:
Seok is directed towards a UE [ user equipment] transmitting a
message to the BS [base station] in order to let the BS know the
UE is operated based on a battery (power sensitive), Para [0022]
and the BS will enact measures to support power management,
Para [0083], where a power management scheme is used to
minimize power consumption of the UE operating on a battery,
Para [0079]. Suzuki discloses FD procedures are used to
promote power management or extended battery life, Para
[0022], one operation is to move the UE to an idle mode to
improve power efficiency or it can keep the UE in the RRC
connected mode but reduce the number of unnecessary uplink
transmissions which will reduce call setup latency ( faster call
setup), Para [0022]. There is clear motivation for one with
ordinary skill to combine references because they are both
clearly related to power management for a UE and/or extending
battery life. Suzuki discloses power management techniques for
a UE that are clearly applicable and relevant to Seok' s disclosure.
Ans. 3--4. The Examiner relies on the teachings of Seok and Suzuki to find
that the combination of the familiar elements of the references achieves the
predictable result of extending battery life and minimizing energy drain by
reducing the number of unnecessary uplink transmissions. See Non-Final
Act. 4; Ans. 3--4. As such, the Examiner provides articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.
Appellants have not presented evidence sufficient to show that combining
the prior art was "uniquely challenging or difficult for one of ordinary skill
in the art" or "represented an unobvious step over the prior art." Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
(citing KSR, 550 U.S. at 418-19). Nor have Appellants presented evidence
sufficient to show that incorporating the teachings of Suzuki into the
teachings of Seok yields more than expected results.
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We are not persuaded by Appellants' argument that a person of
ordinary skill in the art, motivated to preserve battery life, would be likely to
use idle mode more, rather than looking to maintain the RRC connected
mode (App. Br. 18) because we agree with the Examiner that "Suzuki
discloses other options besides moving to idle mode such as reducing the
number of uplink transmissions that are unnecessary while staying in the
RRC connected mode" (Ans. 4; see also Suzuki ,r 22).
For the foregoing reasons, we are not persuaded the Examiner erred in
rejecting claim 1. For the same reasons, we are also not persuaded the
Examiner erred in rejecting independent claims 7, 15, 18, 22, 29, 39, and 42,
which recite corresponding limitations; and claims 3, 23, and 30, which
depend from claims 1, 22, and 29, and are not separately argued with
particularity. See App. Br. 16-18.
CLAIMS4,6,8, 10-12, 16, 17,20,21,24,25,27,31-34,40,41,43,44,46,47,
49, AND 51---60
Claims 4, 6, 8, 10-12, 16, 17, 20, 21, 24, 25, 27, 31-34, 40, 41, 43,
44, 46, 47, 49, and 51---60 stand rejected under 35 U.S.C. § 103(a) based on
Seok, Suzuki, and Wang, Lenart, or Vimpari. Non-Final Act. 7-10.
Regarding the rejection of these claims, Appellants reiterate substantially the
same arguments as those discussed supra with respect to claim 1 and state
that the teachings of Wang, Lenart, and Vimpari do not remedy the argued
deficiencies in the teachings of Seok and Suzuki. App. Br. 18-19. Because
we find Appellants' arguments with respect to claim 1 unpersuasive of
Examiner error, we are not persuaded the Examiner erred in rejecting claims
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4,6,8, 10-12, 16, 17,20,21,24,25,27,31-34,40,41,43,44,46,47,49,
and 51---60.
CLAIMS 61---68
Appellants contend the combination of Seok, Suzuki, and 3GPP2 is
improper. App. Br. 20-21. In particular, Appellants argue:
[T]he Examiner provides nothing more than a conclusory
statement about some benefits of fast call setup without any
evidentiary basis for the alleged motivation to combine. Further,
because there is no evidentiary basis for the Examiner's
conclusion, it follows that the Examiner also fails to provide any
explanation for the motivation to combine that includes an
express and rational connection to the evidence presented.
Notably, there are no reasons provided by the Examiner as to
why a person of ordinary skill in the art would be motivated to
make the specific changes to the two references to arrive at the
specific features recited in the current independent claims.
Instead, the Examiner merely states some benefits of fast call
setup.
App. Br. 20.
We do not find Appellants' arguments persuasive. As discussed
above, the Examiner must provide some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness. KSR,
550 U.S. at 418. Furthermore, "the analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." Id.
Here, the Examiner finds "[i]t would have been obvious to one of
ordinary skill in the art, at the time of the invention to incorporate the
teachings of 3GPP2 into the teachings of Seok and Suzuki in order to
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improve network performance and to further reduce latency in call setup."
Non-Final Act. 10. As such, the Examiner provides articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness. Appellants have not presented evidence sufficient to show that
combining the prior art was "uniquely challenging or difficult for one of
ordinary skill in the art" or "represented an unobvious step over the prior
art." Leapfrog Enters., 485 F.3d at 1162. Nor have Appellants presented
evidence sufficient to show that incorporating the teachings of the references
yields more than expected results.
Appellants further argue "without anything actually disclosed in Seok
or Suzuki that would provide its reader with a desire to seek out other
technologies to provide those benefits identified by the Examiner from fast
call setup results in a failure by the Examiner to meet his burden to provide a
motivation or reason to combine the references." App. Br. 21. We disagree.
Appellants' arguments are premised on a rigid insistence on an
explicit teaching, suggestion, or motivation in the prior art to make the
combination. See App. Br. 21. Such a rigid insistence on an explicit
teaching, suggestion, or motivation is improper. KSR, 550 U.S. at 419.
Instead, the relevant inquiry is whether the Examiner has set forth "some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." In re Kahn, 441 F.3d at 988. As discussed
supra, we find the Examiner's reasoning for combining the references
sufficient to meet this standard.
Additionally, Appellants argue:
[I]f the combination of Seok, Suzuki, and the 3GPP2 Document
were obvious and the motivation to combine were accurate, the
question arises as to why the inventors in the Seok and Suzuki
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patent applications did not include the aspects of Past Call Setup
defined by the 3GPP2 Document. In other words, the fact that
Suzuki (priority to 2008) and Seok (priority to 2011) did not
include the features disclosed in the 3GPP2 Document that was
published in 2002 as options "to improve network performance
and to further reduce latency in call setup" suggests that the
combination is not obvious to those having ordinary skill in the
art.
App. Br. 21.
We do not find Appellants' argument persuasive. The relevant
inquiry is not whether the named inventors of Seok and Suzuki actually did
combine the references as of the priority date of Seok and Suzuki. Instead,
the inquiry is whether a person of ordinary skill in the art at the time of
Appellants' invention would find obvious the differences between the
claimed subject matter and the prior art. See 35 U.S.C. § 103.
For the foregoing reasons, we are not persuaded the Examiner erred in
rejecting claims 61---68.
DECISION
We affirm the Examiner's rejection of claims 61---68 under 35 U.S.C.
§ 112, first paragraph.
We affirm the Examiner's rejection of claims 1, 3, 4, 6-8, 10-12, 15-
18, 20-25, 27, 29-34, 36, 39--44, 46, 47, 49, and 51---68 under 35 U.S.C.
§ 103(a).
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).
AFFIRMED
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