Ex Parte TsengDownload PDFPatent Trial and Appeal BoardDec 7, 201712395705 (P.T.A.B. Dec. 7, 2017) Copy Citation 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. 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 650 Town Center Drive, Suite 1530 Costa Mesa, CA 92626 BEHNAMIAN, SHAHRIAR ART UNIT PAPER NUMBER 2641 NOTIFICATION DATE DELIVERY MODE 12/11/2017 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): docketing @bluecapitallaw. com 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). 3 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: 4 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. 5 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 6 Copy with citationCopy as parenthetical citation