13294630 (P.T.A.B. Mar. 1, 2017)

Ex Parte Virtej et al

Patent Trial and Appeal BoardMar 1, 2017

13294630 (P.T.A.B. Mar. 1, 2017)

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. 13/294,630 11/11/2011 Elena VIRTEJ 059864.01940 5412 11051 7590 03/03/2017 Squire Patton Boggs (US) LLP Nokia Technologies Oy 8000 Towers Crescent Drive, 14th Floor Vienna, VA 22182 EXAMINER ZHU, BO HUI ALVIN ART UNIT PAPER NUMBER 2465 NOTIFICATION DATE DELIVERY MODE 03/03/2017 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): sonia. whitney @ squirepb.com ipgeneralty c @ squirepb .com nokia.ipr@nokia.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ELENA VIRTEJ, JARI PETTERI LUNDEN, and LARS DALSGAARD Appeal 2016-006005 Application 13/294,6301 Technology Center 2400 Before JOSEPH L. DIXON, JOHN A. JEFFERY, 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. Â§ 134(a) of the Final Rejection of claims 1â€”22. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM-IN-PART. 1 According to Appellants, the real party in interest is Nokia Technologies Oy. App. Br. 2. Appeal 2016-006005 Application 13/294,630 STATEMENT OF THE CASE2 The Invention Appellants' disclosed and claimed inventions relate to "configuring a discontinuous reception pattern of a user equipment and adjusting the discontinuous reception pattern at the user equipment autonomously with respect to a base station." Abstract. Exemplary Claims Claims 1, 5, 7, 10, 21, and 22, reproduced below, are representative of the subject matter on appeal (emphases added to contested limitations): 1. A method, comprising: configuring a discontinuous reception pattern of a user equipment by configuring at least a length of an on-duration timer and a length of an inactivity timer, and adjusting the discontinuous reception pattern at the user equipment autonomously with respect to a base station. 5. The method of claim 4, wherein the adjusting based on the at least one known rule comprises adjusting based on at least one of whether the user equipment is scheduled during an on-duration timer, whether the user equipment is scheduled during an inactivity timer, how long an active time was in a previous cycle, how long an active time would have needed to be in the previous cycle, or an effective length of active time in, or how a scheduling pattern was within the previous cycle. 2 Our Decision relies upon Appellants' Appeal Brief ("App. Br.," filed Oct. 21, 2015); Reply Brief ("Reply Br.," filed May 20, 2016); Examiner's Answer ("Ans.," mailed May 6, 2016); Final Office Action ("Final Act.," mailed Apr. 24, 2015); and the original Specification ("Spec.," filed Nov. 11,2011). 2 Appeal 2016-006005 Application 13/294,630 7. The method of claim 1, wherein the adjusting comprises decrementing a timer in first steps and subsequently incrementing the timer in a second step, wherein the first steps are individually smaller than the second step. 10. The method of claim 8, further comprising: sending a reset command configured to reset the discontinuous reception pattern of the user equipment. 21. The method of claim 1, wherein the adjusting comprises incrementing the length of at least one of the on- duration timer and the inactivity timer. 22. The method of claim 1, wherein the adjusting comprises decrementing the length of at least one of the on- duration timer and the inactivity timer. Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Dalsgaard et al. ("Dalsgaard") US 2007/0291729 A1 Dec. 20, 2007 Anderson et al. ("Anderson") US 2012/0120843 Al May 17, 2012 Rejections on Appeal Rl. Claims 1â€”6, 8â€”16, and 18â€”22 stand rejected under 35 U.S.C. Â§ 102(b) as being anticipated by Dalsgaard. Ans. 2; Final Act. 2. R2. Claims 7 and 17 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Dalsgaard and Anderson. Ans. 2; Final Act. 6. 3 Appeal 2016-006005 Application 13/294,630 CLAIM GROUPING3 Based on Appellants' arguments (App. Br. 9â€”28), we decide the appeal of anticipation Rejection R1 of claims 1â€”4, 6, 8, 9, 11â€”14, 16, 18, and 19 on the basis of representative claim 1; we decide the appeal of anticipation Rejection R1 of claims 5 and 15 on the basis of representative claim 5; we decide the appeal of anticipation Rejection R1 of claims 10 and 20 on the basis of representative claim 10; and we decide the appeal of obviousness Rejection R2 of claims 7 and 17 on the basis of representative claim 7. We decide the appeal of anticipation Rejection R1 of claims 21 and 22, each argued separately, infra.4 ISSUES AND ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellants. We do not consider arguments that Appellants could have made but chose not to make in the Briefs, and we deem any such arguments waived. 37 C.F.R. Â§ 41.37(c)(l)(iv). 3 We note Appellants rely upon the same pattern of argument with respect to claims 2â€”4, 6, 8, 9, 11â€”14, 16, 18, 19, which are allegedly "separately argued," i.e., "Claim 2 depends from and further limits an independent claim and consequently is patentable for at least the reasons the independent claim is patentable, as well as for its further limitations. This claim is being separately argued in order to preserve Appellants' right to have the claims separately considered, particularly if the grounds of rejection shift during the appeal." App. Br. 18. We disagree with Appellants contention that this is a separate, substantive argument, notwithstanding the use of separate headings in the Appeal Brief. 4 "Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately." 37 C.F.R. Â§ 41.37(c)(l)(iv). 4 Appeal 2016-006005 Application 13/294,630 We agree with particular arguments advanced by Appellants with respect to claims 7 and 17 for the specific reasons discussed below. However, we disagree with Appellants' arguments with respect to claims 1â€”6, 8â€”16, and 18â€”22 and, with respect to these claims, 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 claims 1, 5, 7, 10, 21, and 22 for emphasis as follows. 1. $ 102(b) Rejection R1 of Claims 1â€”4, 6, 8, 9, 11â€”14, 16, 18, and 19 Issue 1 Appellants argue (App. Br. 9â€”18; Reply Br. 3 4) the Examiner's rejection of claim 1 under 35 U.S.C. Â§ 102(b) as being anticipated by Dalsgaard is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art discloses a method that includes, inter alia, the step of "configuring a discontinuous reception pattern of a user equipment by configuring at least a length of an on- duration timer and a length of an inactivity timer," as recited in claim 1 (emphasis added)? Analysis Appellants contend "[t]he prior art fails to disclose 'configuring at least a length of an on-duration timer and a length of an inactivity timer,' as 5 Appeal 2016-006005 Application 13/294,630 recited in claim 1." App. Br. 10. Appellants refer to various sections of the Specification and assert, "[h]ence it is directly and unambiguously disclosed that the DRX pattern can be configured using at least these two parameters." Id. Appellants' further allege the Examiner's reliance upon Dalsgaard Figure 4B and paragraph 56 is in error because the "DRX(meas) timer and DRX(ho) timer are not an on-duration timer and an inactivity timer as those terms are used in the art and in the present application." App. Br. 12. In particular, Appellants argue "DRX(ho) is not a length of an on- duration timer, and DRX(meas) is not a length of an inactivity timer . . . [and i]t should be readily apparent that both an on-duration timer and an inactivity timer would not typically be started at the same time," and because "an inactivity timer is used when not in DRX and an on duration timer is used when in DRX, it should be apparent that two timers that both start at the same time cannot possibly be an inactivity timer and an on duration timer." App. Br. 14. Appellants further contend: As best understood, the basis for the rejection was that the DRX period of a UE can be adjusted by configuring two control values that are timers. At least one error in this rejection is that the claims do not merely recite "timers" but specify the particular kind of timers. The prior art timers that are used to adjust the DRX period in Dalsgaard are not the same kind of timers as recited in the claims. They are not the same in name and they are not the same in function. The only similarity seems to be that they are involved with DRX. Still, since the claims specify "on-duration timer" and "inactivity timer" it is error to reject the claims based on prior art that uses different timers. App. Br. 15. 6 Appeal 2016-006005 Application 13/294,630 In response to Appellants' arguments cited above regarding the disclosure in the Specification allegedly supporting a narrower claim interpretation of the two types of recited timers, the Examiner finds, "the scope of claim 1 is broader than that of Figure 1 of the specification." Ans. 3. The Examiner further finds, Claim 1 merely recites "A method, comprising: configuring a discontinuous reception pattern of a user equipment by configuring at least a length of an on-duration timer and a length of an inactivity timer; and adjusting the discontinuous rejection pattern at the user equipment autonomously with respect to a base station." Thus, claim 1 only requires one pattern and two timers. Further, claim 1 does not require the pattern to be different for each cycle. Id. The Examiner further finds the "features upon which Appellant relies are not recited in the rejected claim." Id. For example, the Examiner finds Appellants' argument regarding the start times of the two recited timers is moot "because the claim does not indicate whether or not the two timers start at the same time." Id. We agree with the Examiner because, as our reviewing court has held, the importation of a narrow disclosed embodiment into a broader claim is improper. See SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) ("For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment"). Additionally, the Examiner finds his "interpretations of 'on-duration timer' and 'inactivity timer' are based on broadest reasonable interpretations . . . [because] the examiner cannot narrow the scope of the claim by 7 Appeal 2016-006005 Application 13/294,630 implicitly adding disclosed limitations which have no express basis in the claim." Ans. 4. We further note Appellants have not cited to definitions of "on-duration timer" and "inactivity timer" in the Specification or in any extrinsic evidence of record that would preclude the Examiner's broader reading.5 Instead, we note Appellants belatedly refer (App. Br. 14) to a website URL,6 which purportedly provides support for their narrow preferred construction. Under the broadest reasonable interpretation standard, we are not persuaded by Appellants' arguments the Examiner erred in rejecting claim 1. We give the claim its broadest reasonable interpretation consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). "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). Therefore, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the disclosure of the cited 5 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"). 6 See http://lteuniversity.eom/ask_the_expert/f/59/t/3432.aspx. We note this "ask the expert" website is related to LTE systems. We find nothing in the claim limits the invention to an LTE environment, and the cited URL does not qualify as a dictionary definition that would preclude the Examiner's broader interpretation. 8 Appeal 2016-006005 Application 13/294,630 prior art to disclose the disputed limitation of claim 1, nor do we find error in the Examiner's resulting finding of anticipation. Therefore, we sustain the Examiner's anticipation rejection of independent claim 1, and grouped claims 2-4, 6, 8, 9, 11â€”14, 16, 18, and 19 which fall therewith. See Claim Grouping, supra. 2. $ 102(b) Rejection R1 of Claims 5 and 15 Issue 2 Appellants argue (App. Br. 19â€”20, 22â€”23; Reply Br. 4â€”5) the Examiner's rejection of claim 5 under 35 U.S.C. Â§ 102(b) as being anticipated by Dalsgaard is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art discloses: The method of claim 4, wherein the adjusting based on the at least one known rule comprises adjusting based on at least one of whether the user equipment is scheduled during an on-duration timer, whether the user equipment is scheduled during an inactivity timer, how long an active time was in a previous cycle, how long an active time would have needed to be in the previous cycle, or an effective length of active time in, or how a scheduling pattern was within the previous cycle[,] as recited in claim 5 (emphasis added)? Analysis Appellants contend paragraphs 39 and 50 of Dalsgaard "do not mention any of [the six alternative conditions recited in claim 5]." App. Br. 19â€”20. We note the claim only requires the adjusting being based upon "at least one of' the recited optional conditions. The Examiner finds, and we agree: 9 Appeal 2016-006005 Application 13/294,630 Dalsgaard teaches that the DRX(mears) [sic] and DRX(ho) timers define the scheduling of a UE when the UE is in the shortened DRX cycle. Therefore, by teaching adjusting the discontinuous reception cycle of an user equipment by applying the DRX(mears) [sic] and DRX(ho) timers, where the two timers defines the scheduling of the UE, Dalsgaard at least teaches adjusting the discontinuous reception pattern of an user equipment based on "whether the user equipment is scheduled during an on-duration timer" and "whether the user equipment is scheduled during an inactivity timer". Ans. 7. We agree with the Examiner because, as the Examiner finds, the Dalsgaard reference discloses at least two of the recited alternatives, thus meeting the recited "based on at least one of. . ." (emphasis added) the alternative limitations. Therefore, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the disclosure of the cited prior art to disclose the disputed limitation of claim 5, nor do we find error in the Examiner's resulting finding of anticipation. Therefore, we sustain the Examiner's anticipation rejection of dependent claim 5, and grouped claim 15, which falls therewith. See Claim Grouping, supra. 3. $ 102(b) Rejection R1 of Claims 10 and 20 Issue 3 Appellants argue (App. Br. 21, 25; Reply Br. 5) the Examiner's rejection of claim 10 under 35 U.S.C. Â§ 102(b) as being anticipated by Dalsgaard is in error. These contentions present us with the following issue: 10 Appeal 2016-006005 Application 13/294,630 Did the Examiner err in finding the cited prior art discloses the method of claim 8, that further includes the step of "sending a reset command configured to reset the discontinuous reception pattern of the user equipment," as recited in dependent claim 10? Analysis Appellants contend (App. Br. 21) paragraph 52 of Dalsgaard, cited by the Examiner in rejecting claims 10 and 20 (Final Act. 5), does not disclose "sending a reset command," as recited in claim 10. We disagree with Appellants. We disagree because, as found by the Examiner, Dalsgaard's disclosure, i.e., "in step S107, the DRX control unit 12 of the UE 10 switches back to the initial normal DRX cycle when the network has responded or when the lifetime 'DRX(ho)' has expired," discloses a reset command, under a broad but reasonable interpretation. Dalsgaard 1 52 (emphasis added). Therefore, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the disclosure of the cited prior art to disclose the disputed limitation of claim 10, nor do we find error in the Examiner's resulting finding of anticipation. Therefore, we sustain the Examiner's anticipation rejection of dependent claim 10, and grouped claim 20, which falls therewith. See Claim Grouping, supra. 11 Appeal 2016-006005 Application 13/294,630 4. $ 102(b) Rejection R1 of Claim 21 Issue 4 Appellants argue (App. Br. 25â€”26; Reply Br. 5â€”6) the Examiner's rejection of claim 21 under 35 U.S.C. Â§ 102(b) as being anticipated by Dalsgaard is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art discloses the method of claim 1, "wherein the adjusting comprises incrementing the length of at least one of the on-duration timer and the inactivity timer," as recited in claim 21? Analysis Appellants contend Dalsgaard's disclosure "that the UE switches back to an initial normal DRX cycle" is indicative of Examiner error because "such a switch does not appear to involve incrementing the length of at least one of the on-duration timer and the inactivity timer." App. Br. 25â€”26 (emphasis added). With reference to Dalsgaard paragraph 52, the Examiner finds, and we agree, "by teaching that the UE has the option to repeat or to end the shortened DRX cycle at the time out of a shortened DRX cycle, Dalsgaard teaches 'incrementing the length of at least one of the on-duration timer and the activity timer'." Ans. 8. Therefore, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the disclosure of the cited prior art to disclose the disputed limitation of claim 21, nor do we find error 12 Appeal 2016-006005 Application 13/294,630 in the Examiner's resulting finding of anticipation. Therefore, we sustain the Examiner's anticipation rejection of dependent claim 21. 5. $ 102(b) Rejection R1 of Claim 22 Issue 5 Appellants argue (App. Br. 26; Reply Br. 6â€”7) the Examiner's rejection of claim 22 under 35 U.S.C. Â§ 102(b) as being anticipated by Dalsgaard is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art discloses the method of claim 1, "wherein the adjusting comprises decrementing the length of at least one of the on-duration timer and the inactivity timer," as recited in claim 22? Analysis Appellants contend, similar to arguments presented with respect to claim 21, Dalsgaard's disclosure "that the UE switches to a shortened DRX cycle" is indicative of Examiner error because "such a switch does not appear to involve decrementing the length of at least one of the on-duration timer and the inactivity timer." App. Br. 26 (emphasis added). With reference to Dalsgaard paragraph 52, the Examiner finds, and we agree, "by teaching shortening the length of a DRX cycle of a UE after the UE sends a measurement report, which is defined by the DRX(mears) [sic] timer as discussed above, Dalsgaard teaches 'decrementing the length of at least one of the on-duration timer and the activity timer'." Ans. 9. Therefore, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the disclosure of the cited 13 Appeal 2016-006005 Application 13/294,630 prior art to disclose the disputed limitation of claim 22, nor do we find error in the Examiner's resulting finding of anticipation. Therefore, we sustain the Examiner's anticipation rejection of dependent claim 22. 6. $103 Rejection R2 of Claims 7 and 17 Issue 6 Appellants argue (App. Br. 27â€”28; Reply Br. 7â€”8) the Examiner's rejection of claim 7 under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Dalsgaard and Anderson 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 the method of claim 1, "wherein the adjusting comprises decrementing a timer in first steps and subsequently incrementing the timer in a second step, wherein the first steps are individually smaller than the second step," as recited in claim 7 (emphasis added)? Analysis Appellants contend "the Examiner has not identified any particular timer in Anderson whose value changes, much less one that changes in a plurality of 'steps' when decrementing and then a subsequent larger incrementing step. In short, Anderson does not remedy the deficiencies of Dalsgaard with respect to claim 7." App. Br. 27. The Examiner cites Anderson Figure 7 and paragraph 40 as teaching or suggesting the contested limitation of claim 7. We disagree with the Examiner's findings. 14 Appeal 2016-006005 Application 13/294,630 We disagree with the Examiner because we have reviewed both Dalsgaard and Anderson, and are unable to find any pertinent teaching or suggestion of the contested limitation, particularly any disclosure that teaches or suggests "the first steps are individually smaller than the second step," as recited in claim 7. Therefore, based upon the findings above, on this record, we are persuaded of at least one error in the Examiner's reliance on the disclosure of the cited prior art combination to teach or suggest the disputed limitation of claim 7 and claim 17, which recites the contested limitation in commensurate form. Therefore, we cannot sustain the Examiner's obviousness rejection of dependent claims 7 and 17. REPLY BRIEF To the extent Appellants may advance new arguments in the Reply Brief (Reply Br. 2â€”8) 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 Examinerâ€™s Answer will not be considered except for good cause (see 37 C.F.R. Â§ 41.41(b)(2)), which Appellants have not shown. 15 Appeal 2016-006005 Application 13/294,630 CONCLUSIONS (1) The Examiner did not err with respect to anticipation Rejection R1 of claims 1â€”6, 8â€”16, and 18â€”22 under 35 U.S.C. Â§ 102(b) over the cited prior art of record, and we sustain the rejection. (2) The Examiner erred with respect to obviousness Rejection R2 of claims 7 and 17 under 35 U.S.C. Â§ 103(a) over the cited prior art combination of record, and we do not sustain the rejection. DECISION We affirm the Examiner's decision rejecting claims 1â€”6, 8â€”16, and 18-22. We reverse the Examiner's decision rejecting claims 7 and 17. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). See 37 C.F.R. Â§ 41.50(f). AFFIRMED-IN-PART 16