Ex Parte Tseng et al

Patent Trial and Appeal Board

Dec 9, 2016

12855712 (P.T.A.B. Dec. 9, 2016)

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.
12/855,712 08/13/2010 Li-Chih Tseng 1291-090.101 1504
106622 7590 12/13/2016
Rliie Fanital T aw Firm Pf
EXAMINER
650 Town Center Drive, Suite 1530
Costa Mesa, CA 92626
CHANG, TOM Y
ART UNIT PAPER NUMBER
2456
NOTIFICATION DATE DELIVERY MODE
12/13/2016 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, MENG-HUI OU, and
YU-HSUAN GUO
Appeal 2016-002249
Application 12/855,7121
Technology Center 2400
Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 3—5, 7, 9-11, 19, 21—24, and 26—28.2 Appellants have
previously canceled claims 2, 6, 8, 12—18, 20, and 25. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Innovative Sonic
Corp. App. Br. 2.
2 The Examiner incorrectly includes claims 25 and 29 in the listing of
claims pending in the application. Final Act. 1 ("Office Action Summary").
Appeal 2016-002249
Application 12/855,712
STATEMENT OF THE CASE3
The Invention
Appellants' claimed invention relates to a method and apparatus for
performing buffer status reporting. Title.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphases added to contested limitations):
1. A method for performing Buffer Status Reporting
(BSR) in an user equipment (UE) of a wireless communication
system, the method comprising:
determining if a second BSR is triggered between
cancellation of a first triggered BSR and the transmission of a
first Medium Access Control (MAC) Protocol Data Unit (PDU)
including a first BSR MAC control element;
performing a BSR procedure when the second BSR is
determined triggered;
wherein the first triggered BSR is cancelled because the
first BSR MAC control element corresponding to the first
triggered BSR is included in the first MAC PDU for
transmission; and
wherein the BSR procedure comprises generating a
second BSR MAC control element corresponding to the second
BSR when the UE has a second uplink grant allocated for a new
transmission for the current TTI.
3 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
June 24, 2015); Reply Brief ("Reply Br.," filed Dec. 15, 2015); Examiner's
Answer ("Ans.," mailed Oct. 15, 2015); Final Office Action ("Final Act.,"
mailed Nov. 24, 2014); and the original Specification ("Spec.," filed
Aug. 13,2010).
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Application 12/855,712
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Chun et al. ("Chun") US 2009/0219951 A1 Sept. 3, 2009
Ostergaard et al. ("Ostergaard") US 2010/0284354 Al Nov. 11, 2010
Rejections on Appeal
Claims 1, 3—5, 7, 9-11, 19, 21—24, and 26—28 stand rejected under 35
U.S.C. § 103(a) as being obvious over the combination of Ostergaard and
Chun. Ans. 2.4
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 5—9), we decide the appeal
of the obviousness rejection of claims 1, 3—5, 7, 9-11, 19, 21—24, and 26—28
on the basis of representative independent claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv).
ISSUE
Appellants argue (App. Br. 5—9; Reply Br. 3—5) the Examiner's
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Ostergaard and Chun is in error. These contentions present
us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests "[a] method for performing Buffer Status Reporting (BSR) in an
4 The Examiner incorrectly includes claims 2, 8, 20, 25, and 29 in the
explicit statement of the rejection. Final Act. 2; Ans. 2. However, claims 2,
8, 20, and 25 have been canceled, and claim 29 has never been presented in
this application.
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Application 12/855,712
user equipment (UE) of a wireless communication system," which includes,
inter alia, the conditional limitations of (1) "determining if a second BSR is
triggered," and (2) "performing a BSR procedure when the second BSR is
determined triggered," (3) "wherein the BSR procedure comprises
generating a second BSR MAC control element corresponding to the second
BSR," as recited in claim 1?
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments
which Appellants could have made but chose not to make in the Briefs so
that we deem any such arguments as waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claim 1, and
we incorporate herein and adopt as our own: (1) the findings and reasons set
forth by the Examiner in the action from which this appeal is taken, and
(2) the reasons and rebuttals set forth in the Examiner's Answer in response
to Appellants' arguments. We incorporate such findings, reasons, and
rebuttals herein by reference unless otherwise noted. However, we highlight
and address specific findings and arguments regarding claim 1 for emphasis
as follows.
Appellants contend:
Ostergaard and Chun do not teach or suggest when to generate
a BSR MAC control element. Ostergaard discloses that a
[Scheduling Request] SR may be erroneously cancelled by
modifying the condition to cancel pending SR trigger.
However, the detailed handling of triggered [Buffer Status
Request] BSR is not specified and the problem described above
could occur in Ostergaard.
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Application 12/855,712
App. Br. 6.
"In the patentability context, claims are to be given their broadest
reasonable interpretations . . . limitations are not to be read into the claims
from the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
1993) (citations omitted). Any special meaning assigned to a term "must be
sufficiently clear in the specification that any departure from common usage
would be so understood by a person of experience in the field of the
invention." Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473,
1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick Washroom Equip.,
Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) ("A patentee may act as its own
lexicographer and assign to a term a unique definition that is different from
its ordinary and customary meaning; however, a patentee must clearly
express that intent in the written description."). Absent an express intent to
impart a novel meaning to a claim term, the words take on the ordinary and
customary meanings attributed to them by those of ordinary skill in the art.
Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed.
Cir. 2003) (citation omitted).
We note claim 1 specifically recites conditional limitations
"determining if a second BSR is triggered ..." and "generating a second
BSR MAC control element corresponding to the second BSR when the UE
has a second uplink grant allocated for a new transmission for the current
TTL." (Emphasis added).
As a matter of claim construction under the broadest reasonable
interpretation, we conclude if a second BSR is not determined to be
triggered, or if the UE does not have "a second uplink grant allocated for a
new transmission for the current TTI," then the claimed "BSR procedure" is
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Application 12/855,712
not required to be performed. Claim 1. See Ex parte Schulhauser, Appeal
No. 2013-007847, at *9 (PTAB, April 28, 2016) (precedential) (holding
"The Examiner did not need to present evidence of the obviousness of the
remaining method steps of claim 1 that are not required to be performed
under a broadest reasonable interpretation of the claim (e.g., instances in
which the electrocardiac signal data is not within the threshold
electrocardiac criteria such that the condition precedent for the determining
step and the remaining steps of claim 1 has not been met."); see also Ex
parte Katz, 2011 WL 514314, at *A-5 (BPAI Jan. 27, 2011).
In fact, Appellants themselves admit to the possibility of the
conditional limitations of claim 1 not being satisfied:
The Examiner seems to have missed the first if-condition,
which states "If the Buffer Status reporting procedure
determines that at least one BSR has been triggered since the
last transmission of a BSR or if this is the first time that at least
one BSR is triggered". This first if-condition needs to be
fulfilled to generate a BSR MAC control element according to
the 3 GPP LTE specification.
Reply Br. 4 (emphasis omitted). "However, generating a BSR MAC control
element requires taking when the BSR is triggered into account." Reply
Br. 5 (emphasis omitted).
We apply the precedential guidance of Schulhauser and conclude the
Examiner need not present evidence establishing the obviousness of the
conditional performance of a BSR procedure step of claim 1, because it is
not required to be performed under a broadest reasonable interpretation of
the claim (i.e., instances when a second BSR is not "triggered between
cancellation of a first triggered BSR and the transmission of a first Medium
Access Control (MAC) Protocol Data Unit (PDU) including a first BSR
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MAC control element," or "when the UE . . . [does not have] a second uplink
grant allocated for a new transmission for the current TTI.").
Therefore, we consider Appellants' argument that the cited references
fail to teach or suggest the conditional steps of claim 1 unavailing, because it
is not commensurate with the broadest reasonable interpretation of claim 1,
See Schulhauser, Appeal No. 2013-007847, at *9. Accordingly, as a matter
of claim construction, and on this record, we sustain the Examiner's rejection
Assuming, arguendo, our reviewing court were to conclude that the
conditional limitations are required to be performed within the scope of
method claim 1,, we are not persuaded by Appellants' argument stated
above, because Appellants are arguing the references separately.5 The
Examiner cites Chun for the first triggered BSR being cancelled and
performing BSR procedures. Final Act. 3.
We agree with the Examiner's finding that "Chun teaches a system for
performing BSR procedures . . . [by teaching] the first triggered BSR is
cancelled because the first BSR MAC control element corresponding to the
first triggered BSR is included in the first MAC PDU for transmission,"
which teaches or at least suggests "wherein the first triggered BSR is
cancelled" portion of the contested limitation of claim 1. Id.
We also agree with the Examiner that Chun's UE, if it has UL
resources allocated for a new transmission for the TTI, generates a BSR
5 Because the Examiner rejects the claims as obvious over the combined
teachings of Ostergaard and Chun, the test for obviousness is not what the
references show individually but what the combined teachings would have
suggested to one of ordinary skill in the art. See In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986).
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MAC control element which teaches or at least suggests "generating a
second BSR MAC control element corresponding to the second BSR when
the UE has a second uplink grant allocated for a new transmission for the
current TTI," as recited in claim 1. Final Act. 3^4.
Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner's reading of
the contested limitations on the cited prior art. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 1 and claims 3—5, 7,
9-11, 19, 21—24, and 26—28 which fall therewith. See Claim Grouping,
supra.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 3—5) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a reply brief that were not raised in
the appeal brief or are not responsive to arguments raised in the Examiner's
Answer will not be considered except for good cause, which Appellants
have not shown. See 37 C.F.R. § 41.41(b)(2).
CONCLUSION
The Examiner did not err with respect to the obviousness rejection of
claims 1, 3—5, 7, 9-11, 19, 21—24, and 26—28 under 35 U.S.C. § 103(a) over
the cited prior art combination of record, and we sustain the rejection.
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DECISION
We affirm the Examiner's decision rejecting claims 1, 3—5, 7, 9-11,
19,21-24, and 26-28.
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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