Ex Parte Tseng

Patent Trial and Appeal Board

Dec 7, 2017

12395705 (P.T.A.B. Dec. 7, 2017)

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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/395,705 03/01/2009 Li-Chih Tseng 1291-147.101 4906
106622 7590 12/11/2017
Rlne Fanital T aw Firm Pf
EXAMINER
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2641
NOTIFICATION DATE DELIVERY MODE
12/11/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LI-CHIH TSENG
Appeal 2017-002072
Application 12/395,705
Technology Center 2600
Before ST. JOHN COURTENAY III, KIMBERLY McGRAW, and
SCOTT HOWARD, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Non-
Final Rejection of claims 1—3, 6—8, and 11—16, which are all the claims
pending in this application. Claims 4, 5, 9, and 10 are cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Invention
The disclosed and claimed invention on appeal “relates to a method
and apparatus for performing buffer status reporting (BSR), and more
particularly, to a method and apparatus for deciding a BSR control element
format when performing BSR.” (Spec. 13)
Appeal 2017-002072
Application 12/395,705
Illustrative Claim 1
1. A method for performing buffer status reporting
(BSR) in a user equipment (UE) of a wireless communication
system, the method comprising:
triggering a periodic BSR procedure when a periodic
reporting timer expires; and
[L] using a short-format BSR control element to perform
(rather than cancel) the triggered BSR, when there exist no
buffered data in every logic channel group of the UE, wherein
the UE includes the short-format BSR control element in a Media
Access Control (MAC) Protocol Data Unit (PDU) without data.
(Bracketed material added; contested limitation L emphasized).
Rejection
Claims 1—3, 6—8, and 11—16 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being obvious over the combined teachings and suggestions of
Wu et al. (US 2009/0113086 Al; Apr. 30, 2009) (hereinafter “Wu”) and
Kim et al. (US 2010/0254321 Al; Oct. 7, 2010) (hereinafter “Kim”).
ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
1 We refer to the currently pending claims, last amended on May 29, 2015.
See “Response to Notification of Non-Compliant Appeal Brief’ filed March
1,2016.
2
Appeal 2017-002072
Application 12/395,705
Rejection of Independent Claim 1 under 35 U.S.C. § 103(a)
Issue: Under pre-AIA 35 U.S.C. § 103(a), did the Examiner err by
finding the cited combination of Wu and Kim would have taught or
suggested contested limitation L:
[L] using a short-format BSR control element to perform (rather
than cancel) the triggered BSR, when there exist no buffered data
in every logic channel group of the UE, wherein the UE includes
the short-format BSR control element in a Media Access Control
(MAC) Protocol Data Unit (PDU) without data[,]
within the meaning of representative claim l?2 (Emphasis added).
Appellant points to paragraph 46 and Figure 8 A of Wu, and contends,
inter alia:
Second, as disclosed in Wu, even in the case where a short-
format BSR is used after the BSR is triggered (S802), the UE
would transmit an empty short-format BSR. See Wu, Paragraph
[0046] ("if the remaining space of the PDU to be transmitted is
enough to receive an empty long BSR, the user equipment 61
uses the PDU to be transmitted to transmit the data and the
empty Ions BSR (step S809), and otherwise the data and an
empty short-format BSR (step S810)", emphasis added). In
contrast, claims 1,6, 11, and 14 recite "the UE includes the short-
format BSR control element into a Media Access Control (MAC)
Protocol Data Unit (PDU) without data." Rather than
transmitting the data (steps S801-S804) and one of the
shortformat BSR (step S810), long-format BSR (step S809), and
no BSR (step S808) as disclosed in Wu, the claims recite using
only the short-format BSR without any data in the transmitted
PDU.
2 We give the contested claim limitations the broadest reasonable
interpretation (BRI) consistent with the Specification. See In re Morris, 111
F.3d 1048, 1054 (Fed. Cir. 1997).
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Appeal 2017-002072
Application 12/395,705
As recited in the claims, the BSR procedure is triggered due to a
serving cell change [claims 11 and 14] or expiration of the
periodic BSR timer [claims 1 and 6)], not due to data arrival, so
that no buffered data exists after the BSR is triggered. Thus no
data would need to be transmitted via the PDU. As a result, the
UE would include the short-format BSR control element[,]and
padding bits (if any) into a MAC Protocol Data Unit (PDU)
without any data.
(App. Br. 6).
At the outset, we note the Examiner (Final Act. 3) relies principally on
Wu for teaching or suggesting “using a short-format BSR control element to
perform (rather than cancel) the triggered BSR, when there exist no buffered
data in every logic channel group of the UE.'” (Claim 1) (emphasis added).
The Examiner (Final Act. 3 4) relies principally on the secondary
Kim reference for teaching “triggering a periodic BSR procedure when a
periodic reporting timer expires;” (Kim |43), and for teaching “wherein
the UE includes the short-format BSR control element in a Media Access
Control (MAC) Protocol Data Unit (PDU) ...” See Kim 132,1. 3:
“MAC PDUs” (emphasis added).
However, as persuasively argued by Appellant (App. Br. 6) what is
missing from Wu (and Kim) is the claimed negative limitation: “wherein the
UE includes the short-format BSR control element in a Media Access
Control (MAC) Protocol Data Unit (PDU) without data.” (Claim 1)
(emphasis added).
We find the evidence supports Appellant’s contention (App. Br. 5)
that Wu teaches transmitting the empty short BSR with data, contrary to the
contested negative limitation of claim 1:
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Appeal 2017-002072
Application 12/395,705
when there is no remaining data in the buffers 611-614, if the
remaining space of the PDU to be transmitted is enough to
receive an empty long BSR, the user equipment 61 uses the PDU
to be transmitted to transmit the data and the empty long BSR
(step S809), and otherwise the data and an empty short BSR
(step S810).
We note the next to last sentence of Wu’s paragraph 46 also expressly
describes: “Further, when there is no remaining data in the buffers 611-614,
no BSR is transmitted.”
In reviewing the Examiner’s “Response to Arguments” the Examiner
appears to conflate the claim language (in bold): “when there exist no
buffered data in every logic channel group of the UE ” and “wherein the UE
includes the short-format BSR control element in a Media Access Control
(MAC) Protocol Data Unit (PDU) without data.” (Claim 1) (emphasis
added). Simply put, we find a “short-format BSR control element in a
Media Access Control (MAC) Protocol Data Unit (PDU) without data” (as
contested by Appellant) is not the same as “no buffered data in every logic
channel group of the UE . . . .” (Claim 1) (emphasis added).
Therefore, based upon a preponderance of the evidence, we are
constrained on this record to reverse the Examiner’s § 103 rejection of
independent claim 1.
Because remaining independent claims 6, 11, and 14 each identically
recite the disputed final “wherein clause” (containing the negative limitation
“without data”), we reverse the Examiner’s § 103 rejection of these claims.
Because we have reversed the Examiner’s § 103 rejection of each
independent claim on appeal, we also reverse the Examiner’s §103 rejection
of all respective associated dependent claims on appeal.
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Appeal 2017-002072
Application 12/395,705
DECISION
We reverse the Examiner’s decision rejecting claims 1—3, 6—8, and
11-16 under pre-AIA 35 U.S.C. § 103(a).
REVERSED
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