Ex Parte Sigle et al

Patent Trial and Appeal Board

Feb 28, 2017

13879738 (P.T.A.B. Feb. 28, 2017)

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.
13/879,738 04/16/2013 Rolf Sigle LUTZ 201611US01 4660
48116 7590 03/02/2017
FAY STTARPF/T TTf’F.NT
EXAMINER
1228 Euclid Avenue, 5th Floor LAFONTANT, GARY
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2646
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROLF SIGLE and UWE DOETSCH
Appeal 2016-001333
Application 13/879,73 81
Technology Center 2600
Before ELENI MANTIS MERCADER, JOHN D. HAMANN, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 According to Appellants, the real party in interest is Alcatel Lucent. App.
Br. 1.
Appeal 2016-001333
Application 13/879,738
INVENTION
Appellants’ application relates to operating a base station of a cellular
communications network. Abstract.
Claim 1 is illustrative of the appealed subject matter and reads as
follows, with limitations at issue italicized:
1. A method of operating a base station of a cellular
communications network, comprising:
receiving signaling information from at least one terminal
and/or from a further network element of a cellular
communications network at a base station of said cellular
communications network, wherein the at least one terminal is
served by the base station;
determining the received signaling information includes
an emergency indication indicating an existing or impending
emergency situation;
notifying at least one further terminal served by said base
station and/or a further network element of said emergency
situation, wherein said notifying of said at least one further
terminal served by said base station is performed independently
of a core network and further components of the cellular
communications network, wherein the cellular communications
network is compatible with a 3GPP LTE standard;
using a portion of downlink control information, DCI, to
notify the one or more terminals of a safety message carrying
information related to the emergency situation;
integrating the safety message into a physical downlink
shared channel (PDSCH) at the base station; and
reserving one or more bandwidth subcarriers associated
with the PDSCH from the base station for the safety message
carrying the emergency information.
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REJECTIONS
Claims 1—3, 5—9, 14—17, and 19 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Lauper (US 7,058,385 B2;
issued June 6, 2006) and Chen et al. (US 2011/0076962 Al; published Mar.
31, 2011) (“Chen”).
Claims 4, 13, and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Lauper, Chen, and Ray et al. (US
2010/0003955 Al; published Jan. 7, 2010) (“Ray”).
Claims 10, 11, and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Lauper, Chen, and Noriega et al. (US
2011/0149879 Al; published June 23, 2011) (“Noriega”).
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. We disagree with Appellants’
contentions. Except as noted below, we adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from 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. We concur with the
conclusions reached by the Examiner. We highlight the following additional
points.
In rejecting claim 1, the Examiner found that Lauper teaches or
suggests all of the recited limitations, except “wherein the cellular
communications network is compatible with a 3 GPP LTE standard” and the
“using,” “integrating,” and “reserving” steps (shown in italics above), for
which the Examiner relied on Chen. Final Act. 3—7.
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Appellants contend the cited portions of Chen do not disclose the
“using,” “integrating,” and “reserving” steps of claim 1. App. Br. 7.
Appellants argue that Chen does not teach using a portion of downlink
control information (DCI) to notify a terminal of a safety message, but
merely discloses common functions of DCI. Id. at 7—8. Appellants further
argue that Chen does not teach or suggest integrating a safety message into a
physical downlink shared channel (PDSCH), but merely discloses common
functions of a PDSCH. Id. at 8. Appellants further argue that Chen does not
teach or suggest reserving a bandwidth subcarrier associated with a PDSCH
from a base station for a safety message carrying emergency information,
but merely discloses common functions of a PDSCH. Id.
Appellants’ arguments do not persuade us of Examiner error. We
agree with Appellants that Chen does not explicitly teach using a portion of
downlink control information (DCI) to notify a terminal of a safety message,
but merely discloses common functions of DCI. App. Br. at 7—8. Chen also
does not teach or suggest integrating a safety message into a physical
downlink shared channel (PDSCH), but merely discloses common functions
of a PDSCH. Id. at 8. Nor does Chen teach or suggest reserving a
bandwidth subcarrier associated with a PDSCH from a base station for a
safety message carrying emergency information. Id.
Our reviewing court has held, however, that nonfunctional descriptive
material cannot lend patentability to an invention that would have otherwise
been anticipated by the prior art. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004). Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (noting that
when descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
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Application 13/879,738
terms of patentability). King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267,
1279 (Fed. Cir. 2010) (“[T]he relevant question is whether ‘there exists any
new and unobvious functional relationship between the printed matter and
the substrate.’”) (citations omitted).
Appellant argues that the using a portion of DCI to notify a terminal
of a safety message event, as claimed, patentably distinguishes over the prior
art. App. Br. at 7—8. We disagree because, here, the descriptive material at
issue—a safety message event—is not functionally related to either the claimed
“further terminal served by said base station” or the claimed “further
network element.” Moreover, even if it were functional, the claimed portion
of DCI differs from the prior art only in the content of the DCI, which is not
a patentable distinction. As a result, Appellant’s claimed safety message
event does not distinguish the claimed invention from the prior art.
Appellant further argues that integrating a safety message into a
PDSCH, as claimed, patentably distinguishes over the prior art. Id. at 8. We
disagree because the descriptive material at issue—a safety message—is not
functionally related to either the claimed “further terminal served by said
base station” or the claimed “further network element.” Moreover, even if it
were functional, the claimed PDSCH differs from the prior art only in the
content of the PDSCH, which is not a patentable distinction. As a result,
Appellant’s claimed safety message does not distinguish the claimed
invention from the prior art.
Appellant also argues that reserving a bandwidth subcarrier associated
with a PDSCH from a base station for a safety message carrying emergency
information, as claimed, patentably distinguishes over the prior art. Id. We
again disagree because the descriptive material at issue—a safety message
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carrying emergency information —is not functionally related to either the
claimed “further terminal served by said base station” or the claimed
“further network element.” Moreover, even if it were functional, the
claimed bandwidth subcarrier differs from the prior art only in what the
bandwidth subcarrier is reserved to carry, which is not a patentable
distinction. As a result, Appellant’s claimed safety message carrying
emergency information does not distinguish the claimed invention from the
prior art.
It has been repeatedly held that an applicant cannot create a novel
product by attaching printed matter to it, even if that printed matter itself is
new. See, e.g., Ngai. Thus, adding instructions to a kit that describe a
method of using it does not make the kit patentable over the same kit with a
different set of instructions. There are cases in which the descriptive material
can form a functional relationship with the underlying substrate. For
example, in In re Miller, the addition of printed matter to the outside of a
cup permitted an otherwise ordinary cup to be used like a measuring cup to
half recipes. The printed matter in Miller served as a computing or
mathematical recipe conversion device permitting a cook to perform
calculations automatically with no further thought.
However, the claim before us is more like the claim in Ngai than
Miller. The fact that the particular message is a safety message does not
change the product. It merely describes a new, non-functional feature for a
product that already exists.
To agree with Appellant’s reasoning would mean that each novel
transmission of information using the LTE compatible PDSCH and DCI
standards would be sufficient to warrant a separate a patent even if the
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remainder of the invention is unchanged. This would result not only in
Appellant’s safety message distinguishing over the prior art, but also every
single unique message distinguishing over the prior art. To give effect to
Appellant’s argument, we would need to ignore our reviewing court’s
concerns with repeated patenting. This we decline to do.
The rationale behind this prior art rejection is preventing the repeated
patenting of essentially a known product by the mere inclusion of novel non­
functional descriptive material. King Pharm., Inc. v. Eon Labs, Inc., 616
F.3d 1267, 1279 (Fed. Cir. 2010) (“The rationale behind this line of cases is
preventing the indefinite patenting of known products by the simple
inclusion of novel, yet functionally unrelated limitations.”) Cf. Ngai, 367
F.3d at 1339 (“If we were to adopt Ngai’s position, anyone could continue
patenting a product indefinitely provided that they add a new instruction
sheet to the product.”).
Thus, we agree with the Examiner that “[t]he fact that the data being
used has to do with emergency/safety messages does not change the function
capability of a LTE system where many type of message[s] can be handled
by base station eNB [in Chen] including emergency messages.” Id.
Therefore, the claimed arrangement and informational content of the data
does not distinguish the “base station” of claim 1 from the prior art
component that is the same except for the contents of the data stored in a
portion of the DCI, a PDSCH, and a bandwidth subcarrier associated with
the PDSCH.
For these reasons, we are not persuaded that the Examiner erred in
finding that the combination of Lauper and Chen teaches or suggests the
limitations of claim 1.
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Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of
independent claim 1, as well as the 35 U.S.C. § 103(a) rejection of
independent claims 7 and 15, which Appellants argue are patentable for
similar reasons. App. Br. 9—13. We also sustain the Examiner’s rejection of
dependent claims 2—6, 8—14, and 16—20, for which Appellants make no
additional arguments. Id.
DECISION
We affirm the decision of the Examiner rejecting claims 1—20.
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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