Ex Parte Son et al

Patent Trial and Appeal Board

Jul 22, 2014

10834806 (P.T.A.B. Jul. 22, 2014)

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.
10/834,806 04/29/2004 Yeong-Moon Son 678-1453 6892
66547 7590 07/22/2014
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
PHUONG, DAI
ART UNIT PAPER NUMBER
2644
MAIL DATE DELIVERY MODE
07/22/2014 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
____________

Ex parte YEONG-MOON SON, CHANG-HOI KOO, SO-
HYUN KIM, and JUNG-JE SON
____________

Appeal 2012-000084
Application 10/834,806
Technology Center 2600
____________

Before JEAN R. HOMERE, ELENI MANTIS MERCADER, and
CATHERINE SHIANG, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 41, 43, 46, 48, 51, 53, 56, and 58. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
In reaching the decision, we have considered only the arguments
Appellants actually raised. Arguments Appellants did not make are deemed
to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).

STATEMENT OF THE CASE
The present invention relates to a wireless communication system.
See generally Spec., 1. Claim 41 is exemplary:
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41. A method for controlling a sleep mode by a
subscriber station in a communication system, comprising the
steps of:
transmitting a sleep request message to a base station;
receiving a sleep response message from the base station;
detecting a disapproval of the sleep request message
based on the sleep response message; and
detecting a waiting duration for retransmission of the
sleep request message based on the sleep response message.

THE REJECTIONS
Claims 41, 43, 46, 48, 51, 53, 56, and 58 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the Prior Art Admitted by Appellant
(US 2004/0218556 A1 published Nov. 4, 2004) (AAPA) and Valentine
(US 6,011,973 issued Jan. 4, 2000).1

ISSUE
Under 35 U.S.C. § 103, has the Examiner erred by finding AAPA and
Valentine collectively teaches “detecting a waiting duration for
retransmission of the sleep request message based on the sleep response
message,” as recited in claim 1 (emphasis added)?

ANALYSIS
On this record, we find the Examiner did not err in rejecting claim 41.

1 Although the rejection lists claims 41, 43-46, 48-51, 53-56, and 58-60
(Ans. 4), claims 44, 45, 49, 50, 54, 55, 59, and 60 were cancelled (App. Br.
2, 17-19; Ans. 3).
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Appellants assert one skilled in the art would not have been motivated
to modify AAPA with Valentine to include a waiting duration for
retransmission of a sleep message. See App. Br. 4-9; Reply Br. 3-5.
Appellants contend while the Examiner finds one skilled in the art would
have combined the references to save resources and power, such savings are
merely a consequential effect of Valentine, as Valentine does specify saving
resources and power as its objective. See App. Br. 6-7; see also Reply Br. 4-
5. Appellants assert Valentine does not teach re-transmitting any message
based on a re-transmission parameter (i.e., waiting duration). See Reply Br.
2-3.2
We disagree with Appellants’ arguments (App. Br. 4-9; Reply Br. 1-
5), and agree with and adopt the Examiner’s findings and conclusions on
pages 5-6 and 7-19 of the Answer as our own. Therefore, we limit our
discussion to the following points for emphasis.
It is undisputed AAPA teaches the claim limitations “transmitting a
sleep request message to a base station,” “receiving a sleep response
message from the base station,” and “detecting a disapproval of the sleep
request message based on the sleep response message.” See Ans. 4-5.
Therefore, AAPA teaches the claim element “of the sleep request message
based on the sleep response message.”
Further, the Examiner correctly finds AAPA and Valentine are in the
same field of endeavor. See Ans. 9. Valentine teaches:

2 We disagree with Appellants’ assertion that the Examiner’s Response to
Arguments includes a new ground of rejection (Reply Br. 2), because the
basis for rejection remains the same. Further, because Appellants have
availed themselves of the opportunity to respond in the Reply Brief to the
Examiner’s findings (id. at 2-5), Appellants’ assertion is moot.
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[T]he base station 180 must also transmit a retransmission
parameter indicating when the cellular telephone 100 is
allowed to transmit a new geographical location in order to
receive authorization to operate in the future. The
retransmission parameter can take several forms including, a
period of time which must elapse before the cellular telephone
can retransmit its ascertained geographical coordinates . . . .
Upon receiving the . . . denial signal from base station 180, the
controller 120 of cellular telephone 100 . . . disables the
transceiver 110 from transmitting until the retransmission
parameter allowing transmitting by transceiver 110 has been
met.
Valentine 3:22-40 (emphases added). Thus, the Examiner correctly finds
Valentine teaches detecting a waiting duration (mapped to Valentine’s
“period of time which must elapse”) for retransmission of [a] message
(mapped to Valentine’s “transmit[ting] a new geographical location”). See
Ans. 5, 8-9 (citing Valentine). As a result, the Examiner correctly finds
AAPA and Valentine collectively teaches detecting a waiting duration for
retransmission of the sleep request message based on the sleep response
message, because adding Valentine’s technique to the AAPA method would
have saved resources and power. See Ans. 5-6. Combining the AAPA’s
method with Valentine’s technique of detecting a waiting duration for
retransmission of a message would have predictably used prior art elements
according to their established functions—an obvious improvement. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). The combination “only
unites old elements with no change in their respective functions” and thus is
unpatentable. KSR, 550 U.S. at 416-417. Further, “[i]n determining whether
the subject matter of a patent claim is obvious, neither the particular
motivation nor the avowed purpose of the patentee controls.” KSR, 550 U.S.
at 419 (2007). In any event, the Examiner has articulated a motivation to
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combine because the combination saves resources and power and therefore,
is more efficient (Ans. 5-6). See Dystar Textilfarben GmBH & Co.
Dutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006)
(“[A]n implicit motivation to combine exists . . . when the ‘improvement’ is
technology-independent and the combination of references results in a
product or process that is more desirable . . . because it is . . . more
efficient.”). As a result, the Examiner’s combining the teachings of AAPA
and Valentine is supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion. See Ans. 5-
6, 7-19.
Finally, Appellants’ arguments are unpersuasive because it is well
settled that “a determination of obviousness based on teachings from
multiple references does not require an actual, physical substitution of
elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citations
omitted). Nor is the test for obviousness whether a secondary reference’s
features can be bodily incorporated into the structure of the primary
reference. See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Accordingly, we sustain the Examiner’s rejection of claim 41, and
claims 43, 46, 48, 51, 53, 56, and 58 for same or similar reasons.

DECISION
The Examiner’s decision rejecting claims 41, 43, 46, 48, 51, 53, 56,
and 58 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)(1)(iv).

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AFFIRMED
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