Ex Parte Tseng

Patent Trial and Appeal Board

Apr 15, 2016

12343501 (P.T.A.B. Apr. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/343,501 12/24/2008 Li-Chih Tseng
106622 7590 04/19/2016
Blue Capital Law Firm, P.C.
611 Anton Blvd., Suite 1050
Costa Mesa, CA 92626
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.
1291-108.101 4532
EXAMINER
AREY ALO, JOSEPH
ART UNIT PAPER NUMBER
2642
NOTIFICATION DATE DELIVERY MODE
04/19/2016 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@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
Appeal2014-006687
Application 12/343,501
Technology Center 2600
Before HUNG H. BUI, KEVIN C. TROCK, and AMBER L. HAGY,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1, 4---6, and 9--12, which constitute all
the claims pending in this application. Claims 2, 3, 7, and 8 are cancelled.
We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE. 2
1 According to Appellant, the real party in interest is Innovative Sonic
Limited. App. Br. 2.
2 Our Decision refers to Appellant's Appeal Brief filed December 30, 2013
("App. Br."); Reply Brief filed May 21, 2014 ("Reply Br."); Examiner's
Answer mailed March 21, 2014 ("Ans."); Final Office Action mailed July
Appeal2014-006687
Application 12/343,501
STATEMENT OF THE CASE
3GPP TS 26.321 3rd Generation Partnership Project (3GPP)
Specification discloses the use of Discontinuous Reception (DRX)
functionality to allow a user equipment (UE) to enter a standby mode during
certain periods of time and stop monitoring Physical Down Link Control
Channel (PDCCH) in order to reduce power consumption of the UE. Spec.
i-f 7. However, Appellant recognizes that:
[A ]ccording to the above operation, when the DRX
Retransmission Timer is running but both of the On Duration
Timer and the DRX Inactivity Timer are not running, if the
PDCCH indicates the UE to receive a new transmission packet,
the DRX Inactivity Timer would not be started or restarted by
the DRX functionality. In such a case, the UE may miss
reception of the following new transmission packets due to
inability of continuously mentoring [sic, monitoring] the
PDCCH."
Id. i-f 12 (emphasis added).
In order to address this problem, Appellant's invention proposes to
improve a start mechanism of a DRX Inactivity Timer, i.e., to start or restart
a DRX Inactivity Timer (1) when the PDCCH indicates the UE a new
transmission and (2) a DRX Retransmission Timer is running, and both
(3) an On Duration Timer and (4) a DRX Inactivity Timer are not running.
Id. i-fi-1 3, 7, 13; Abstract.
Claims 1 and 6 are independent. Claim 1 is illustrative of Appellant's
invention and is reproduced below:
29, 2013 ("Final Act."); and the original Specification filed December 24,
2008 ("Spec.").
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Application 12/343,501
1. A method of improving discontinuous reception
(DRX) functionality for a user equipment (UE) of a wireless
communication system, the method comprising:
monitoring a Physical Downlink Control Channel
(PDCCH);
starting or restarting the DRX Inactivity Timer when the
PDCCH indicates the UE a new transmission and a DRX
Retransmission Timer is running, and both an On Duration
Timer and a DRX Inactivity Timer are not running; and
starting the DRX Retransmission Timer to monitor the
PDCCH for detecting the retransmission of a Hybrid Automatic
Repeat Request (HARQ) process when a HARQ RoundTrip
Time (RTT) Timer expires.
App. Br. 9 (Claims App.) (disputed limitations in italics).
Evidence Considered
3GPP TS 26.321 V8.0.0 (2007-12) 3rd Generation Partnership Project:
Technical Specification Group Radio Access Network; Evolved Universal
Terrestrial Radio Access (E-UTRA) Medium Access Control (MAC)
Protocol Specification (Release 8) (hereinafter referred as "3GPP
Specification."
Examiner's Rejections
(1) Claims 1, 4, 6, 9, 11, and 12 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by 3GPP Specification. Final Act. 2-5.
(2) Claims 5 and 10 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over 3GPP Specification. Final Act. 5---6.
Issue on Appeal
Based on Appellant's arguments, the dispositive issue on appeal is
whether 3GPP Specification discloses the disputed limitation:
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Application 12/343,501
lSJtarting or restarting the DRX Inactivity Timer when the
PDCCH indicates the UE a new transmission and a DRX
Retransmission Timer is running, and both an On Duration
Timer and a DRX Inactivity Timer are not running,
as recited in independent claims 1 and 6. App. Br. 4--7; Reply Br. 4--5.
ANALYSIS
With respect to independent claims 1 and 6, Appellant acknowledges
3GPP Specification discloses in Section 5.7 a discontinuous reception
(DRX) functionality at a user equipment (UE), including the time the UE is
monitoring a Physical Downlink Control Channel (PDCCH) and the use of
various timers such as (1) an On Duration Timer, (2) an DRX Inactivity
Timer, and (3) a DRX Retransmission Timer. App. Br. 4--5 (citing 3GPP
Specification§ 5.7). However, Appellant argues 3GPP Specification does
not disclose "starting or restarting the DRX Inactivity Timer" when all of
these conditions are met: ( 1) when the PDCCH indicates the UE a new
transmission; (2) a DRX Retransmission Timer is running, and both (3) an
On Duration Timer and (4) a DRX Inactivity Timer are not running, as
recited in claims 1 and 6. App. Br. 4--7; Reply Br. 4--5. According to
Appellant, the 3GPP Specification only specifies the condition of "[i]f On
Duration Timer or DRX Inactivity Timer is running and the PDCCH
indicates a new transmission." App. Br. 5 (citing 3GPP Spec§ 5.7:15).
Accordingly, Appellant argues that "the DRX Inactivity Timer is not started
or restarted when an On Duration Timer and a DRX Inactivity Timer are not
running" in the manner recited in claims 1 and 6. Id. at 6.
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Appeal2014-006687
Application 12/343,501
The Examiner acknowledges:
On page 18, 3GPP under 5.7 Discontinuous Reception (DRX)
lines 14-15 discloses the three different conditions "ON
Duration Timer", "DRX Inactivity Timer is running" and "the
PDCCH indicates a new transmission". The "IF" clause, allows
to select between the two first options "ON Duration Timer" or
"DRX Inactivity Timer is running" once the selection of any of
these conditions is met, plus the "PDCCH indicates a new
transmission" indicating that is a new transmission all the times,
the outcome will be "the start or restart the DRX Inactivity
Timer "after all conditions have been met.
Ans. 3 (emphasis added). However, the Examiner relies on different
portions (lines 16 and 19) of Section 5. 7 of 3 GPP Specification to support
the finding that 3GPP Specification also teaches the situation where "a DRX
Retransmission Timer is running, and both an On Duration Timer and a
DRX Inactivity Timer are not running." Id. at 4.
We do not agree with the Examiner. To establish anticipation, each
and every element in a claim, arranged as recited in the claim, must be found
in a single prior art reference. Karsten Mfg. Corp. v. Cleveland Golf Co.,
242 F.3d 1376, 1383 (Fed. Cir. 2001). It is not enough that the 3GPP
Specification discloses part of Appellant's claimed invention, which an
ordinary artisan might supplement to make the whole, or that it includes
multiple, distinct teachings that an artisan might somehow combine to
achieve the claimed invention. Net Moneyin, Inc. v. Verisign, Inc., 545 F.3d
1359, 1369 (Fed. Cir. 2008).
As pointed out by Appellant, "the conditions of lines 16 and 19 [of
3GPP Section 5.7 "describing the expiration of the DRX Inactivity Timer
and the On Duration Timer"] contradict the conditions of line 14" which
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Application 12/343,501
require that 'the PDCCH indicates a new transmission' and either the On
Duration Timer or DRX inactivity Timer has to be running." Ans. 4--5. In
other words, the Examiner has relied on multiple, distinct paragraphs of the
DRX functionality for various (conflicting) conditions disclosed by the
3GPP Specification to describe the present invention.
These conditions were expressly acknowledged by Appellants as the
problem associated with the DRX functionality of the 3PGG Specification,
i.e., "when the DRX Retransmission Timer is running but both of the On
Duration Timer and the DRX Inactivity Timer are not running, if the
PDCCH indicates the UE to receive a new transmission packet, the DRX
Inactivity Timer would not be started or restarted by the DRX functionality."
Spec. i-f 12. In order to address that problem, Appellant's invention proposes
to improve a start mechanism of a DRX Inactivity Timer, i.e., to start or
restart a DRX Inactivity Timer when all those conditions are met, i.e.,
(1) when the PDCCH indicates the UE a new transmission and (2) a DRX
Retransmission Timer is running, and both (3) an On Duration Timer and
( 4) a DRX Inactivity Timer are not running. Id.
Accordingly, based on the record before us we cannot sustain the
Examiner's anticipation rejection of independent claims 1 and 6 and their
respective dependent claims 4, 9, 11, and 12. With respect to dependent
claims 5 and 10, Appellant presents no separate patentability arguments.
App. Br. 7. For the same reasons discussed, we also cannot sustain the
Examiner's obviousness rejection of claims 5 and 10.
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Application 12/343,501
CONCLUSION
On the record before us, we conclude that the Examiner has erred in
rejecting claims 1, 4, 6, 9, 11, and 12 under 35 U.S.C. § 102(e) or in
rejecting claims 5 and 10 under 35 U.S.C. § 103(a).
DECISION
As such, we REVERSE the Examiner's final rejection of claims 1, 4--
6, and 9--12.
REVERSED
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