Ex Parte Rudolf et alDownload PDFPatent Trial and Appeal BoardAug 2, 201612186657 (P.T.A.B. Aug. 2, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/186,657 08/06/2008 24374 7590 08/04/2016 VOLPE AND KOENIG, P.C. DEPT. ICC UNITED PLAZA 30 SOUTH 17TH STREET PHILADELPHIA, PA 19103 FIRST NAMED INVENTOR Marian Rudolf 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. IPH-2-1814.01.US 1582 EXAMINER TIM ORY, KABIR A ART UNIT PAPER NUMBER 2631 NOTIFICATION DATE DELIVERY MODE 08/04/2016 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): eoffice@volpe-koenig.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARIAN RUDOLF, BEHROUZ AGHILI, STEPHEN G. DICK, PRABHAKAR R. CHITRAPU, and YAN LI Appeal2015-001319 Application 12/186,657 Technology Center 2600 Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and DENISE M. POTHIER, Administrative Patent Judges. POTHIER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's rejection of claims 1, 8-12, 14, and 21-31. Br. 5. 1 Claims 2-7, 13, and 15-20 have been canceled. Id. at 15-16. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Throughout this opinion, we refer to (1) the Final Action (Final Act.) mailed November 7, 2013; (2) the Appeal Brief (Br.) filed June 6, 2014; and (3) the Examiner's Answer (Ans.) mailed September 3, 2014. Appeal2015-001319 Application 12/186,657 INVENTION Appellants' invention uses two or more pulse-shaping filters for wireless transmission. See Spec. i-f 20. In particular, Global System for Mobile communications (GSM) Release (R7) improves throughput in the uplink (UL) and downlink (DL) of communications. Id. i-f 8. The throughput-improvement features are called Reduced Symbol Duration Higher Order Modulation and Turbo Coding (REDHOT) and Higher Uplink performance for GERAN2 Evolution (HUGE). Id. Although using a wideband filter for transmission improves throughput and coverage for REDHOT and HUGE, this wideband-filter creates problems for adjacent GSM channels. Id. i-fi-116-17. To avoid such problems, prior-art approaches took special care when allowing the wireless transmit/receive unit (WTRU) to use a wideband filter for REDHOT and HUGE. Id. i-f 17. The invention uses a pulse-selection indicator to inform a WTRU about the pulse form (e.g., wideband or narrowband) that is to be used or is in use currently. Id. i-f 41. Claim 1, reproduced below, is illustrative: 1. A method implemented in a wireless transmit/receive unit (WTRU), the method comprising: the WTRU receiving, from a network, an assignment message including a plurality of information elements (IEs ), the plurality of IEs including: a pulse form IE indicating a pulse form and a frequency for communicating using the pulse form, wherein the pulse form is a narrowband pulse form or a wideband pulse form, a timeslot IE indicating a timeslot for communicating using the pulse form, and 2 GERAN is an abbreviation for GSM EDGE Radio Access Network. EDGE is an abbreviation for Enhanced Data Rates for GSM Evolution. 2 Appeal2015-001319 Application 12/186,657 a modulation and coding scheme (MCS) IE indicating an MCS for communicating using the pulse form; and the WTRU transmitting data on the frequency and the timeslot using the pulse form and the MCS. The Examiner relies on the following as evidence of unpatentability: Rajala Niemela Helfenstein US 2004/0248575 Al US 2008/0037411 Al US 2008/0095248 Al THE REJECTIONS Dec. 9, 2004 Feb 14, 2008 Apr. 24, 2008 Claims 8 and 21 are rejected under 35 U.S.C. § 112, second paragraph, (pre-AIA3) as being indefinite. Final Act. 5. Claims 1, 11, 14, 24, and 26-30 are rejected under 35 U.S.C. § 103(a) over Niemela and Helfenstein. Final Act. 6-8. Claims 8-10, 12, 21-23, 25,4 and 31 are rejected under 35 U.S.C. § 103(a) over Niemela, Helfenstein, and Rajala. Final Act. 8-10. THE INDEFINITENESS REJECTION Claims 8 and 21 recite, in part, "a Radio Link Control (RLC) I Media Access Control (MAC) message." The Examiner finds that "it is unclear in 3 Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) ("AIA"). 4 The Examiner omits claim 25 from the heading of the §rejection. See Final Act. 8. Because the Examiner addresses claim 25 in the body of the rejection (see id. at 10), and because Appellants treat claim 25 as being rejected as unpatentable over Niemela, Helfenstein, and Rajala (see Br. 5), we treat claim 25 as rejected over Niemela, Helfenstein, and Rajala. We deem the Examiner's clerical error in this regard as harmless. 3 Appeal2015-001319 Application 12/186,657 the claims whether the back-slash '/' refers to 'and' or 'or."' Final Act. 5 (bolding omitted). We begin by noting that claims 8 and 21 do not contain a backslash- i.e., a backward-sloping diagonal line-as the Examiner explains. See id. Rather, these claims use a forward-sloping line, or virgule. We understand this virgule to be the symbol to which the Examiner refers. See id. Further, we agree with Appellants that the Examiner has not explained why the virgule renders the claim indefinite. See Br. 10. Appellants' position that the phrase "RLC/MAC" is well understood in the art (id.) is persuasive on this record. For example, the phrase "Radio Link Control (RLC) I Media Access Control (MAC)" in its entirety refers to a protocol. See the title page of TECHNICAL SPECIFICATION (TS) 44.060 V7.3.0 (2006- 01), 3rd Generation Partnership Project (3GPP) (2006) (referring to the "RLC/MAC protocol"), cited in Br. 10 (referring to an Information Disclosure Statement submission of November 4, 2008). This usage is also reflected in the same manner in the Specification with no deviation from its ordinary usage. See, e.g., Spec. i-fi-133, 38, 44, and 47. For example, the Specification refers to "commands used by the radio link control/medium access control (RLC/MAC)." Id. i-f 33. Likewise, the cited prior art Rajala refers to "RLC/MAC data." Rajala i139. We fail to appreciate how requiring Appellants to add an "and" or an "or" instead of the "/" symbol as the Examiner proposes (Final Act. 5), would clarify claims 8 or 21. Rather, following from the above discussion, doing so would create an inconsistency between the claim and the phrase's ordinary use in the Specification (see, e.g., Spec. i-fi-133, 38, 44, and 47) and the prior art (see, e.g., TS 44.060 and Rajala i139). 4 Appeal2015-001319 Application 12/186,657 Because the Examiner has not provided sufficient basis for rejecting claims 8 and 21 as being indefinite, we do not sustain the rejection of those claims. THE OBVIOUSNESS REJECTION OVER NIEMELA AND HELFENSTEIN Contentions The Examiner finds that Niemela discloses every recited element of claim 1, except for the timeslot and MCS IEs. Final Act. 6-7. The Examiner relies on Helfenstein to teach these features in concluding that claim 1 would have been obvious. Id. at 7. In particular, the Examiner finds that Niemela's shaping-filter switch signal contains the recited message, including a pulse-form IE. Final Act. 6. According to the Examiner, Niemela's network element 12 requests that mobile device 14' s output signal have certain frequency characteristics. ii:\.ns. 2-3. Furthermore, the Examiner finds that 1'-Jiemela's "desired frequency characteristics" are interpreted to be a "frequency for communicating." Id. at 3 (citing Niemela i-f 47); see also id. at 4. Regarding the timeslot and MCS IEs, the Examiner finds Helfenstein uses timeslots and multiple coding schemes for communicating pulse forms. Final Act. 7. According to the Examiner, it would have been obvious to add Helfenstein's timeslot and MCS information to Niemela's message because doing so would have allowed for multi-mode transmission. Id. Appellants argue that Niemela does not send the recited assignment message. Br. 12. According to Appellants, Niemela's shaping-filter switch signal does not contain the frequency characteristics created by filter module 22. Id. Appellants contend that the Examiner has not shown that Niemela's 5 Appeal2015-001319 Application 12/186,657 signal and corresponding characteristics include the recited "frequency for communicating using a pulse form." Id. Furthermore, Appellants argue that Helfenstein also lacks the recited message. Id. at 12-13. According to Appellants, Helfenstein only uses timeslots and modulation-coding schemes, but Helfenstein does not receive an assignment message with the recited timeslot and MCS IEs. Id. at 13. Issue Under§ 103, has the Examiner erred in rejecting claim 1 by finding that Niemela and Helfenstein collectively would have taught or suggested an assignment message including the recited pulse-form, timeslot, and MCS IEs? Analysis Claim 1 recites, in part, "an assignment message including ... a pulse form IE indicating" the recited pulse form and frequency. Notably, the claim does not recite how the pulse-form IE indicates this information. Furthermore, Appellants do not define a pulse-form IE in a way that would limit the IE to a particular description or data set. For example, the Specification describes that a "pulse selection indicator" may be used to inform devices of a specific pulse form. Spec. i-f 41, cited in Br. 7. The Specification further describes that signaling comprises information about a pulse shape to be used. Spec. i-f 41. Although these examples (id.) inform our construction of the recited "pulse form IE," they do not limit our interpretation to a particular data set or description for the IE. 6 Appeal2015-001319 Application 12/186,657 As such, we see no requirement that Niemela' s pulse-form IE contain frequency or transmitter-filter characteristics, as argued (Br. 12}-only that it indicates the recited pulse form and frequency. Given this interpretation, we are unpersuaded that the Examiner erred in finding that Niemela discloses an IE "indicating" the recited information in claim 1 (Final Act. 6-7). Niemela's mobile station 14 has at least two different pulse-shaping- filter capabilities for outputting the desired signal: wideband and narrowband. Niemela i-f 37, cited in Ans. 4. Niemela's network element 12 requests one of those filter capabilities by sending a shaping-filter switch signal. See Niemela i-fi-137, 51. The shaping-filter switch signal (e.g., 32a and 32b) can be a digital bit. Id. i-f 42, cited in Br. 11. The bit's value indicates one of two predetermined sets of the desired characteristics---e.g., narrowband or wideband forms-for the transmitter filter. Niemela i-f 42. So, like the recited assignment message, we agree that Niemela's message indicates a pulse form of either narrowband or wideband. See Final Act. 7. In response to this message, Niemela' s filter module 22 filters the transmitted signals, creates "the desired frequency characteristics of the signal," and the resulting signal is sent. Niemela i-f 47. The Examiner finds that these "desired frequency characteristics" are the recited "frequency for communicating." Ans. 4. The Examiner's finding here (id.) is reasonable. First, Niemela's desired frequency characteristics that are generated as the result of the shaping filter switch signal 32a and 32b are for the purposes of communicating. See Niemela i-f 4 7. The frequency characteristics are "desired" because these frequency characteristics match the network 7 Appeal2015-001319 Application 12/186,657 element's available capabilities. Id. if 37, cited in Ans. 4. That is, these characteristics are selected so that mobile station 14 can communicate with network element 12. See Niemela if 37. Accordingly, we are unpersuaded by Appellants' argument (Br. 12) that Niemela's request (e.g., a message) lacks frequency characteristics information, and thus does not include an information element that indicates the recited "frequency for communicating using the pulse form," as recited. Second, we disagree with Appellants that "there is no disclosure or suggestion in Niemela that the frequency characteristics created by the filter module 22 were signaled by the network element." Br. 12. As noted above, the recited pulse form IE is not required to contain the pulse form and frequency. Rather, the IE need only indicate this information. We agree with the Examiner that Niemela's network element (e.g., 12) requests the output signal's frequency characteristics (Final Act. 7; Ans. 2-3). Like the recited message, Niemela's mobile station 14 receives the shaping-filter switch signal from network element 12. Niemela if 51, cited in Final Act. 7; see also Niemela if 42. In other words, Niemela's signal is "from the network," as recited. Also, Niemela's shaping-filter switch signal indicates to the mobile station 14 the recited information---e.g., pulse form and frequency for communicating using the pulse form-because Niemela's system maps the signal's bit to the appropriate settings (e.g., narrow or wide band signifies both a form and the frequency range of a band). See Niemela if 42 (describing the bit as "indicat[ing] one of two predetermined sets of the desired characteristics"), cited in Br. 11. Thus, to summarize, Niemela' s 8 Appeal2015-001319 Application 12/186,657 digital bit ( 1) is "from the network," as recited, and (2) indicates all the information in the claimed pulse-form. See Niemela i-fi-137, 42, 47, 51. We are also unpersuaded by Appellants' argument (id. at 12-13) that the Niemela-Helfenstein combination lacks the recited timeslot and MCS IEs. Here, the Examiner cites Helfenstein for the limited purpose of showing that timeslots and multiple coding schemes are used for communicating pulse forms. See Final Act. 7 (citing Helfenstein i-fi-13---6, 43, 55, 86, 91, Figs. 1, 3). The Examiner does not rely on Helfenstein alone for teaching messages containing IEs (e.g., pulse-form, timeslot, MCS) indicating the recited information. See Final Act. 7. Rather, the Examiner relies on Niemela and Helfenstein's collective teachings for these features. Id. In particular, Helfenstein uses a multi-mode modulation scheme. Helfenstein i143, cited in Final Act. 7. For example, Helfenstein's modulator switches from GMSK to 8PSK5 modulation (e.g., each using different coding schemes) in consecutive timeslots. Helfenstein i1 43. The Examiner concludes that it would have been obvious to add Helfenstein's timeslot and coding information to Niemela's message because doing so would have allowed for this multi-mode transmission. Final Act. 7. In rebuttal, Appellants focus only on Helfenstein and fail to take into account the collective teachings with Niemela. See Br. 12-13. Such individual attacks do not show non-obviousness where, as here, the rejection is based on the references' collective teachings. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Furthermore, Appellants have not 5 GMSK stands for Gaussian Minimum Shift Keying. 8PSK stands for 8 Phase Shift Keying. Helfenstein i12. 9 Appeal2015-001319 Application 12/186,657 shown, for example, that adding Helfenstein's timeslot and MCS information to Niemela's message would have been uniquely challenging or otherwise beyond the level of ordinarily skilled artisans. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). For at least these reasons, Appellants' arguments (Br. 12-13) are unpersuasive. Furthermore, although not relied upon in the rejection of claim 1 (see Final Act. 6-7), Niemela discloses that the shaping-filter-switch-signal can be included in messages containing a coding field or even a "TIMESLOT RECONFIGURE" message. Niemela i-f 43. Niemela's disclosure that pulse-form, coding, and time-slot data can be transmitted together (see Niemela i-f 43) only bolsters the Examiner's conclusion that claim 1 would have been obvious over the cited prior art. For the foregoing reasons, Appellants have not persuaded us of error in the rejection of independent claim 1, or in claims 11, 14, 24, and 26-30, not separately argued with particularity. See Br. 13-14. THE OBVIOUSNESS REJECTION OVER NIEMELA, HELFENSTEIN, AND RAJALA Claims 8-10, 12, 21-23, 25, and 31 directly or indirectly depend from independent claims 1, 14, or 28. In arguing against the rejection for each of claims 8-10, 12, 21-23, 25, and 31, Appellants discuss their dependency from independent claims 1, 14, or 28 and also state that Rajala does not cure the alleged deficiencies. Id. at 13-14. The issues before us, then, are the same as those in connection with claim 1, and we refer Appellants to our previous discussion. For this reason, we need not address whether Rajala 10 Appeal2015-001319 Application 12/186,657 cures any deficiency, and, therefore, sustain the rejection of claims 8-10, 12, 21-23, 25, and 31. CONCLUSION The Examiner did not err in rejecting claims 1, 8-12, 14, and 21-31 under§ 103, but did err in rejecting claims 8 and 21under§112, second paragraph. DECISION The Examiner's decision rejecting claims 1, 8-12, 14, and 21-31 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)(l )(iv). 11 Copy with citationCopy as parenthetical citation