Ex Parte RE40077 et al

Patent Trial and Appeal Board

Oct 30, 2015

95002157 (P.T.A.B. Oct. 30, 2015)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/002,157 09/07/2012 RE40077 1291-216.901 1872
106622 7590 11/02/2015
Blue Capital Law Firm, P.C.
611 Anton Blvd., Suite 1050
Costa Mesa, CA 92626
EXAMINER
CORSARO, NICK
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
11/02/2015 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 PATENT TRIAL AND APPEAL BOARD
____________

RESEARCH IN MOTION CORP. and RESEARCH IN MOTION LTD.
Requesters

v.

INNOVATIVE SONIC LTD.
Patent Owner and Appellant
____________

Appeal 2015-007846
Inter partes Reexamination Control 95/002,157
United States Patent US RE40,077 E
Technology Center 3900
____________

Before JOHN A. JEFFERY, MARC S. HOFF, and JEREMY J. CURCURI,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

Appeal 2015-007846
Reexamination Control 95/002,157
Patent US RE40,077 E

2
DECISION ON APPEAL
In an earlier Decision, Appeal Number 2014-007368 mailed August 7,
2014 (“Bd. Dec.”), we reversed the Examiner’s decision rejecting claims 1–
16 in connection with this inter partes reexamination of U.S. Patent
RE40,077 (“’077 patent”). Specifically, we reversed the Examiner’s
rejection of claims 1–16 as obvious over ETSI, Ericsson, and either Lin or
Knuth,
1
but newly rejected (1) claims 1, 3–6, and 8–13 as anticipated by
ETSI Version 3.5.0, and (3) claims 2, 7, and 14–16 as obvious over that
reference. Bd. Dec. 4–14.
Patent Owner elected to reopen prosecution under 37 C.F.R.
§ 41.77(b)(1) in a Request filed September 4, 2014 (“PO Request”) that
included a Declaration of Sam Shiaw-Shiang Jiang (“Jiang Decl.”)—the sole
inventor of the ’077 patent—and accompanying exhibits. No amendment
was filed in connection with that request, nor did Requesters comment on
the request.
The proceeding then returned to the Examiner for consideration under
37 C.F.R. § 41.77(d). In that determination, the Examiner concluded that
Patent Owner’s Request and accompanying evidence overcame our new
grounds of rejection, and that the rejections should be withdrawn. See
Determination Under 37 C.F.R. § 41.77(d) mailed February 23, 2015 (“Ex’r
Det.”). In light of this new evidence, the Examiner found that the cited ETSI
Version 3.5.0 reference does not qualify as prior art under either §§ 102(a)
or (e) because the relied-upon subject matter of that reference is the

1
For brevity, we refer to the full citations of these references on pages 4 and
10 of our earlier decision.
Appeal 2015-007846
Reexamination Control 95/002,157
Patent US RE40,077 E

3
inventor’s own work and, therefore, not “by another” as required by the
statute. Ex’r Det. 4–11. Neither Patent Owner nor Requesters responded to
the Examiner’s Determination. The proceeding then returned to us under 37
C.F.R. § 41.77(f) to reconsider the matter and issue a new decision.
Independent claim 1 is reproduced below:
1. A method for triggering of a polling request in a wireless
communications protocol for a transmitter, the transmitter for transmitting
layer 2 protocol data units (PDUs), each PDU comprising an n-bit sequence
number, the method comprising:
Obtaining a base sequence number VT(A), the base sequence number
VT(A) marking a beginning sequence number of a transmitting window of
the transmitter;
Obtaining a current sequence number VT(S), the current sequence
number VT(S) marking a sequence number of a PDU that is next to be
transmitted by the transmitter;
Obtaining a first value that includes 2
n
added to a difference of the
current sequence number VT(S) and the base sequence number VT(A); and
Obtaining a second value that is modulus of the first value with 2
n
;
[and obtaining a test value that is the second value divided by a size of the
transmitting window; wherein polling is triggered when the test value is
greater than or equal to a polling value.]
Wherein poling is triggered according to the second value and a size
of the transmitting window.

ANALYSIS
In view of the evidence submitted after our decision, we agree with
the Examiner that the cited ETSI Version 3.5.0 reference does not qualify as
prior art under §§ 102(a) or (e)
2
because the relied-upon subject matter of

2
Although our rejection cited pre-AIA § 102(e) as a basis for anticipation
(Dec. 10), that citation was an inadvertent typographical error, for § 102(e)
applies to U.S. patents and patent applications as Patent Owner indicates.
Request 3. Rather, the appropriate subsection is § 102(a) that applies to
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Patent US RE40,077 E

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that reference is the inventor’s own work and, therefore, not “by another” as
required by the statute. Ex’r Det. 4–11.

CONCLUSION
The Examiner did not err in declining to reject (1) claims 1, 3–6, and
8–13 under §§ 102(a) or (e) as anticipated by ETSI Version 3.5.0, and (2)
claims 2, 7, and 14–16 under § 103 as obvious over that reference.

DECISION
The Examiner’s decision declining to reject claims 1–16 is affirmed.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.
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

printed publications. Nevertheless, this error is harmless, for the cited ETSI
Version 3.5.0 reference does not qualify as prior art under either
§§ 102(a) or (e) in light of the new evidence as the Examiner indicates. Ex’r
Det. 4–10.
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Patent Owner:

BLUE CAPITAL LAW FIRM, P.C.
611 ANTON BLVD., SUITE 1050
COSTA MESA, CA 92626

Third Party:

OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, LLP
1940 DUKE STREET
ALEXANDRIA, VA 22314