Ex Parte Tanno et al

Patent Trial and Appeal Board

Sep 20, 2016

12299064 (P.T.A.B. Sep. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/299,064 0210612009
22511 7590 09/22/2016
OSHA LIANG LLP,
TWO HOUSTON CENTER
909 FANNIN, SUITE 3500
HOUSTON, TX 77010
FIRST NAMED INVENTOR
Motohiro Tanno
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.
174011093001 4637
EXAMINER
LINDENBAUM, ALAN LOUIS
ART UNIT PAPER NUMBER
2466
NOTIFICATION DATE DELIVERY MODE
09/22/2016 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):
docketing@oshaliang.com
hathaway@oshaliang.com
escobedo@oshaliang.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MOTOHIRO TANNO, YOSHIHISA KISHIY AMA,
KENICHI HIGUCHI, MAMO RU SAW AHASHI, and
MINAMI ISHII
Appeal2015-005544
Application 12/299,064
Technology Center 2400
Before LINZY T. McCARTNEY, NATHAN A. ENGELS, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1, 3-7, 10-12, 14, and 16-29. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2015-005544
Application 12/299,064
STATEMENT OF THE CASE
The present patent application concerns "a base station for generating
and transmitting system information to a mobile station" and "a
communication method of communicating system information in a
communication system including the base station and the mobile station."
Spec. 1 :6-12. Claim 1 illustrates the claimed subject matter:
1. A base station, comprising:
a system information generating unit configured to
generate system information;
a system information categorizing unit configured to
categorize the system information into multiple pieces of system
information; and
a multiplexing unit configured to multiplex the
categorized multiple pieces of system information into multiple
channels or multiple blocks,
wherein the system information categorizing unit
categorizes the system information into first system information
required for establishing a connection bet\~1een a mobile station
and the base station and second system information other than
the first system information,
wherein the multiplexing unit multiplexes the first system
information into a broadcast channel whose frequency block and
timing are predetermined, and multiplexes the second system
information into a shared data channel which is different from
the broadcast channel into which the first system information is
multiplexed,
wherein the multiplexing unit transmits the channel into
which the first system information is multiplexed more
frequently than the channel into which the second system
information is multiplexed, and
wherein the first system information includes a system
bandwidth and a system frame number.
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REJECTIONS
Claims 1, 5, 10, 11, 19, 22, 28, and 29 stand rejected under 35 U.S.C.
§ 112 i-f 1 as failing to comply with the written description requirement.
Claims 1, 3-7, 10-12, 14, and 16-29 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Wiberg et al. (US 6,628,946 Bl; Sept. 30,
2003) ("Wiberg") and Parts et al. (US 2007/0116094 Al; May 24, 2007)
("Parts").
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments. We agree with Appellants that the Examiner erroneously
rejected claims 1, 5, 10, 11, 19, 22, 28, and 29 under 35 U.S.C. § 112 i-f 1.
But we disagree with Appellants that the Examiner erroneously rejected
claims 1, 3-7, 10-12, 14, and 16-29 under 35 U.S.C. § 103(a).
We address Appellants' arguments below. We begin with Appellants'
arguments concerning the Examiner's construction of "shared data channel,"
as these arguments touch both the Examiner's§ 112 and§ 103 rejections.
We then address Appellants' other contentions regarding the Examiner's
§ 112 and§ 103 rejections.
"Shared Data Channel"
Independent claims 1, 5, 10, 11, 19, 22, 28, and 29 each recite "a
shared data channel." App. Br. 18-21, 24--26. The Examiner construed
"shared data channel" as "a broadcast channel that transmits data which is
shared with other cells." Final Act. 4; Ans. 6. Appellants argue the claim
language, their specification, and translations of two Japanese priority
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Application 12/299,064
applications establish that a "shared data channel" is not a "broadcast
channel." See App. Br. 10-12; Reply Br. 10-14.
We find Appellants' arguments unpersuasive. We give claims terms
their broadest reasonable interpretation in light of the specification. See In
re Morris, 127 F.3d 1048, 1053-54 (Fed. Cir. 1997). The claims do not
explicitly define "shared data channel," but the claims do limit the scope of
the term. For example, independent claim 1 recites "wherein the
multiplexing unit ... multiplexes the second system information into a
shared data channel which is different from the broadcast channel into
which the first system information is multiplexed." App. Br. 18 (emphasis
added). Independent claims 5, 10, 11, 19, 22, 28, and 29 each recite similar
limitations. Id. at 19-21, 24--26. The emphasized language makes clear that
the "shared data channel" is "different from" a particular "broadcast
channel"-"the broadcast channel into which the first system information is
multiplexed." Contrary to Appellants' arguments, these claims do not
suggest that the "shared data channel" is not a "broadcast channel" in
general.
By contrast, the specification indicates that a "shared data channel" is
part of a "broadcast channel." The specification does not mention a "shared
data channel" but does reference "shared data channel information" when
describing how Appellants' invention categorizes and transmits "broadcast
channel information." In particular, the specification discloses that
"although broadcast channel information is categorized into primary
broadcast channel information and secondary broadcast channel information
... information to be transmitted on the secondary broadcast channel may be
further categorized into secondary broadcast channel information and shared
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data channel information." Spec. 11:36-12:6 (emphasis added). This
disclosure-the only portion of Appellants' specification cited by Appellants
that addresses a "shared data channel"-suggests that "a shared data
channel" is part of a "secondary broadcast channel." Accordingly,
interpreting the plain language of claim 1 in light of the specification, we
find unpersuasive Appellants' arguments that the specification supports their
preferred interpretation of "shared data channel." See App. Br. 11-12;
Reply Br. 14.
Finally, Appellants assert in their opening brief, without supporting
reasoning or citations, that Appellants' interpretation of "shared data
channel" "is also clear" from Japanese priority applications JP 2006-127992
and JP 2006-169445. App. Br. 12. However, Appellants first provide
translations of these applications with their reply brief. See Reply Br. 11.
Under our rules, subject to exceptions inapplicable here, we do not admit
new evidence-which includes documents that tend to prove or disprove an
alleged fact-after the filing of an appeal. See 37 C.F.R. §§ 41.30, 41.33(d),
41.41 (b )(1 ). Therefore, we will not admit Appellants' translations of the
Japanese applications and these translations are not part of the record before
us on appeal. 1 We find unpersuasive Appellants' conclusory assertion in
1 Even if these translations were part of the record before us, we would
disagree the translations establish that a "shared data channel" is not a
"broadcast channel." Both translations disclose the following concerning a
"shared data channel": "Although broadcast channel is categorized into
primary broadcast channel and secondary broadcast channel in the first
embodiment, system information to be transmitted on the secondary
broadcast channel may be further categorized into secondary broadcast
channel and shared data channel." JP 2006-169445 i-f 32; JP 2006-127922
i-f 29 (emphasis added). These disclosures indicate that information may be
categorized into a shared data channel and also "transmitted on [a]
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their opening brief that these applications support their construction, as this
assertion lacks adequate supporting reasoning and citations. Cf In re Lovin,
652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.").
For the above reasons, we find unpersuasive Appellants' argument
that a "shared data channel" is not a "broadcast channel" under the broadest
reasonable interpretation of the claim language read in light of the
specification. However, we see no support in the sole portion of Appellants'
specification that arguably concerns a "shared data channel" for the
Examiner's requirement that the channel transmit data "which is shared with
other cells." See Spec. 12 :2---6; Final Act. 4--5 (citing Spec. 12 :2-6). This
portion of Appellants' specification simply states "the secondary broadcast
channel may be further categorized into secondary broadcast channel
information and shared data channel information." Spec. 11 :36-12:6.
Accordingly, based on the evidence of record as of this appeal, we conclude
the broadest reasonable interpretation of "shared data channel" includes "a
broadcast channel that transmits shared data channel information."
§ 112 Rejection
The Examiner found Appellants' specification does not provide
adequate written description support for "wherein the multiplexing unit ...
secondary broadcast channel." This disclosure does not preclude a "shared
data channel" from being a "broadcast channel." If anything, this disclosure
also suggests a "shared data channel" is part of a "broadcast channel."
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multiplexes the second system information into a shared data channel" as
recited in claim 1 under Appellants' construction of "shared data channel."
See Final Act. 2-3. Appellants contend the claims, their specification, and
Japanese priority applications JP 2006-127992 and JP 2006-169445 not only
support their construction of "shared data channel" but also provide
adequate written description support for the disputed "wherein" limitation
under Appellants' construction of "shared data control." See App. Br. 11-
12; Reply Br. 10-12.
For the reasons discussed above, we disagree with Appellants that a
"shared data channel" is not a "broadcast channel." However, we find that
Appellants' specification provides written description support for the
"wherein" limitation at issue under the modified construction of "shared data
channel" discussed above.
To satisfy the written description requirement, Appellants'
specification must "reasonably convey[] to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date."
Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en bane). Appellants' specification discloses that Appellants' alleged
invention categorizes "system information into system information required
for the cell search (information to be transmitted on the primary broadcast
channel) and the system information not required for the cell search
(information to be transmitted on the secondary broadcast channel)." Spec.
8: 16-21 (emphases added). Appellants' specification further discloses that
the "system information is multiplexed by the multiplexing unit 109 into the
primary broadcast channel and the secondary broadcast channel." Id. at
8:34--36. And, as discussed above, the specification explains that the
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"secondary broadcast channel may be further categorized into secondary
broadcast channel information and shared data channel information." Id. at
12:3---6. These disclosures establish that Appellants possessed at the relevant
time a "multiplexing unit [multiplexing unit 109] ... that multiplexes the
second system information [shared data channel information] into a shared
data channel [the secondary broadcast channel] which is different from the
broadcast channel [primary broadcast channel] into which the first system
information [primary broadcast channel information] is multiplexed." We
therefore do not sustain the Examiner's rejection of claims 1, 5, 10, 11, 19,
22, 28, and 29 rejected under 35 U.S.C. § 112 i-f 1.
§ 103 Rejection
Appellants contend the Examiner's combination of Wiberg and Parts
fails to teach or suggest "the multiplexing unit ... multiplexes the second
system information into a shared data channel which is different from the
broadcast channel into which the first system information is multiplexed" as
recited in claim 1 and similar limitations recited in the other independent
claims. Appellants argue the Examiner's finding that Wiberg teaches a
"shared data channel" rests on an erroneous construction of "shared data
channel." Reply Br. 13-14. Appellants assert Wiberg discloses transmitting
both master and system information blocks on a broadcast channel, not a
"shared data channel." See App. Br. 15; Reply Br. 15.
We find Appellants' arguments unpersuasive. As discussed above,
we disagree with Appellants' claim construction arguments. Moreover,
Wiberg teaches transmitting master information blocks and system
information blocks on different control channels. Wiberg discloses
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"[e]xemplary control channels include broadcast channels (BCH), Common
Control Channels (CCH), and Dedicated Control Channels (DCCH)."
Wiberg 1 :43--46. With respect to the transmission of master control and
system information blocks, Wiberg discloses that "tags are broadcast in
master control information blocks" and "a base station (BS) transmits ...
currently valid tag values for that cell on a control channel. System
information blocks including the system information parameters themselves
are in tum broadcast by the base station (BS) in each cell on the same or
other control channels." Id. at 3:24--33 (emphases added). Similarly,
Wiberg discloses that "master and slave channels may be used in certain
embodiments described herein to transmits the master block(s) 57 and the
system information block( s) 55, respectively .... " Id. at 7: 62---64 (emphasis
added). Moreover, Wiberg teaches that "base station 28a is continuously
broadcasting on its master control channel that tag value 17 is valid in the
old cell. Base station 28a broadcasts on other control channel(s), e.g., slave
channel(s), at least one system information block 55 ... that includes system
information parameter(s) .... " Id. at 7:52-57 (emphasis added). See also
8:65---67 ("Master and slave channels herein may be different logical,
transport, or even physical channels."); id. Fig. 7 (depicting separate master
and slave control channels).
Appellants also contend Wiberg "merely teaches that system
information blocks include master information blocks and system
information blocks. Wiberg does not disclose how system information is
categorized." App. Br. 15 (citation omitted). Therefore, according to
Appellants, Wiberg does not teach or suggest "categoriz[ing] the system
information into first system information required for establishing a
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connection between a mobile station and the base station and second system
information other than the first system information" as recited in claim 1 or
similar limitations recited in the other independent claims. Id.
We find Appellants' arguments unpersuasive. The Examiner found
(and we agree) that Wiberg teaches categorizing information into master
information blocks and system information blocks, and the system
information blocks include information required to connect to a cellular
network. See, e.g., Ans. 26. Wiberg teaches that a mobile station must
know system information parameters before accessing a cellular network:
"In a cellular communications system or network, system information
parameters are defined ... [ c ]ertain of these parameters must be known by a
mobile station (MS) before a first access attempt can be made by that MS."
Wiberg 1 :54---64. Wiberg teaches that in a prior art system "system
information elements are grouped and change flags are provided." Id. at
2:49-50. Wiberg discloses employing a similar system in which "the system
information may be organized as a tree, including master information
block(s) and underlying system information blocks," where "master
information blocks ... provides ... reference(s) to a number of system
information blocks" and "system information blocks contain actual system
information parameters," among other things. Id. at 3 :9-21; see also id.
Figs. 7, 8. Wiberg also explains "the cellular network operator may decide
how the system information parameters are to be grouped." Id. at 7:33-35.
These disclosures teach that a mobile station must know system information
parameters for the mobile station to connect to a cellular network (as well as
base station within that network). These disclosures also teach that
Wiberg's invention categorizes (that is, separates or groups) the necessary
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system information parameters and other information into system
information blocks and master information blocks.
For the above reasons, we sustain the Examiner's rejection of claims
1, 3-7, 10-12, 14, and 16-29 under 35 U.S.C. § 103(a).
DECISION
We reverse the Examiner's § 112 i-f 1 rejection of claims 1, 5, 10, 11,
19, 22, 28, and 29. We affirm the Examiner's§ 103(a) rejection of claims 1,
3-7, 10-12, 14, and 16-29. Because we have affirmed at least one ground
of rejection with respect to each claim on appeal, the Examiner's decision is
affirmed. See 37 C.F.R. § 41.50(a)(l).
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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