Ex Parte Van Der Velde et al

Patent Trial and Appeal Board

Aug 14, 2013

10552295 (P.T.A.B. Aug. 14, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD

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Ex parte HIMKE VAN DER VELDE and GERT-JAN VAN LIESHOUT
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Appeal 2011-000140
Application 10/552,295
Technology Center 2600
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Before MAHSHID D. SAADAT, BARBARA A. PARVIS, and
STACEY G. WHITE, Administrative Patent Judges.

PARVIS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appellants request rehearing of the June 4, 2013 Decision on Appeal
(“Decision”), wherein we reversed the rejections of: (1) claims 8-10, 15-16,
47, 48, and 51 under 35 U.S.C. § 102(b) as being anticipated by Wiberg; (2)
claims 11-14 and 45 under 35 U.S.C. § 103(a) as being unpatentable over
Wiberg and Numminen; and (3) claims 31-35, 39-46, 49, and 50 under 35
U.S.C. §103(a) as being unpatentable over Wiberg and ETSI UMTS TS.
Appeal 2011-000140
Application 10/552,295

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We also entered a new ground of rejection pursuant to our authority under
37 C.F.R. §41.50(b) rejecting independent claims 8, 15, 47 and 51. Decision
5-7. We have reconsidered the Decision in light of Appellants’ arguments
but, for the reasons given below, we are not persuaded of any error therein.
Appellants assert that the new ground of rejection is improperly based
on a reference that does not qualify as prior art. Req. Reh’g 1-2.
Appellants’ assertion is based on a claim of priority from Swedish Patent
Application Number 0301027-9 filed on April 3, 2003 (“Appellants’ priority
document”). Req. Reh’g 2. However, written description support and an
enabling description of the claimed invention are not readily identifiable in
Appellants’ priority document. Appellants do not provide a mapping
showing support in Appellants’ priority document for each of the limitations
of the independent claims. While page 10 of Appellants’ priority document
refers to a special value indicating an extended SIB type, we do not readily
see a connection or nexus between Appellants’ priority document and at
least the following elements of claim 8:
 “the referencing block being one or both of a master
information block and a scheduling block;”
 “including a first system information block type extension
indicator in the system information block type field of the
referencing block when the system information block type for a
system information block referenced by the referencing block
does not have a system information block type value in a
nominal range of system information block type values;”
 “including a first system information block type extension field
in the referencing block;”
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Application 10/552,295

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 “including in the first system information block type extension
field a system information block type extension value which
indicates a system information block type for the system
information block referenced by the referencing block;” and
 “including a second system information block type extension
indicator in the system information block type field of a
segment of the system information block referenced by the
referencing block.”
Additionally, we observe that there are no claims included in Appellants’ 12
page priority document, whereas Appellants’ October 3, 2005 Specification
includes a 27 page-description and 10 additional pages of claims.
1

Appellants further contend that the Decision entering a new ground of
rejection did not treat all of the claims on the merits. Req. Reh’g 1, 3.
However, in the Decision, all of the claims before the panel were treated on
the merits. Decision 7. We reversed the rejection of claims 8-10, 15-16, 47,
48, and 51 under 35 U.S.C. § 102(b) and we also reversed the rejection of
claims 11-14, 31-35, 39-46, 49, and 50 under 35 U.S.C. § 103(a). Decision
7. However, we entered a new ground of rejection under 37 C.F.R.
§41.50(b) only for independent claims 8, 15, 47, and 51. The panel
indicated that considering the dependent claims and whether a new ground
of rejection for those claims is appropriate are left to the Examiner.
Decision 7.

1
We further observe that during prosecution, the Examiner applied ETSI
UMTS TS dated June 2003, which is after the priority date that Appellants
are now asserting. However, the record does not include a discussion of a
priority claim or mapping of the elements of the independent claims to
Appellants’ priority document.
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Application 10/552,295

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CONCLUSION
Based on the foregoing, we have granted Appellants’ request to the
extent that we have reconsidered our decision, but we deny Appellants’
request to make any changes therein.

DECISION

The request for rehearing is denied.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

REHEARING DENIED

ELD