Ex Parte Wong et al

Patent Trial and Appeal Board

Feb 28, 2018

13639242 (P.T.A.B. Feb. 28, 2018)

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.
13/639,242 01/09/2013 Shin Horng Wong LUTZ 201524US01 3920
48116 7590 03/02/2018
FAY STTARPF/T TTf’F.NT
EXAMINER
1228 Euclid Avenue, 5th Floor LA, PHONG
The Halle Building
Cleveland, OH 44115-1843 ART UNIT PAPER NUMBER
2469
NOTIFICATION DATE DELIVERY MODE
03/02/2018 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 @ faysharpe.com
ipsnarocp @ nokia. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHIN HORNG WONG, NICOLA PUDDLE, and
GRAHAM BREND
Appeal 2017-005940
Application 13/639,2421
Technology Center 2400
Before JOSEPH L. DIXON, JUSTIN BUSCH, and
SCOTT E. BAIN, Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—7 and 10—16, which constitute all claims
pending in the application. Claims 8 and 9 have been cancelled. App.
Br. 21. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify Alcatel Lucent as the real party in interest. App. Br. 1.
Appeal 2017-005940
Application 13/639,242
STATEMENT OF THE CASE
The Claimed Invention
Appellants’ claimed invention relates to “improv[ing] the operation of
a wireless telecommunications network having multi-carrier functionality.”
Spec. 2. Claim 1 is representative of the invention and the subject matter of
the appeal, and reads as follows:
1. A method of controlling communication between a first
network node and a second network node in a multicarrier
wireless communications system in which a predetermined set of
a plurality of carriers are utilized to support communication
between said first network node and said second network node,
said predetermined set of said plurality of carriers comprising a
primary carrier and at least one secondary carrier, said method
comprising:
the second network node warning the first network node
of a possible radio link failure by encoding that a channel quality
information equals zero for the primary carrier even if the
channel quality information for the primary carrier is above zero;
indicating to a third network node that a physical layer
instruction is to be transmitted between the first network node
and the second network node; and
transmitting the physical layer instruction from the first
network node, said physical layer instruction encoding
reselection information to cause said second network node to
select a different carrier from said plurality of carriers as a new
primary carrier;
wherein said physical layer instruction encodes reselection
information to cause said second network node to select a
predetermined carrier from said set of said plurality of carriers as
said new primary carrier.
App. Br. 20 (Claims App.).
2
Appeal 2017-005940
Application 13/639,242
Prior Art
The Examiner relies upon the following prior art:
Ishizaki
Sambhwani et al.
Marinier et al.
Lee et al.
US 2009/0010208 Al
US 2010/0278130 Al
US 2011/0021154 Al
US 2011/0317552 Al
Jan. 8, 2009
Nov. 4, 2010
Jan. 27,2011
Dec. 29, 2011
The Rejections on Appeal
Claims 1—7 and 10-16 stand rejected under pre-AIA 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter regarded as the invention. Final Act. 5—
ll.2
Claims 1—7, 10-13, 15, and 16 stand rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Marinier et al. (“Marinier”),
Sambhwani et al. (“Sambhwani”), and Ishizaki. Final Act. 11—24.3
Claim 14 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Lee et al. (“Lee”) and Ishizaki. Final Act. 24—27.
2 This rejection in the Final Action refers only to claims 1—7 and 10—15,
Final Act. 5, but claim 16 also would necessarily be included in the rejection
(by virtue of depending from claim 1). See also n.3, infra.
3 The Examiner omits claim 16 from the opening paragraph describing the
rejection, but substantively (and specifically) addresses claim 16 in the
rejection. Final Act. 24. Accordingly, we treat claim 16 as included in the
rejection. The Examiner includes claim 9 in the opening paragraph
describing the rejection, but claim 9 is canceled.
3
Appeal 2017-005940
Application 13/639,242
ANALYSIS
We have reviewed the Examiner’s rejections in light of the arguments
raised in the Briefs. On the record before us, we cannot sustain the
Examiner’s rejections.
Rejection Under Pre-AIA 35 U.S.C. § 112, Second Paragraph
The Examiner concludes claim 1 is indefinite because, in the
limitation “indicating to a third network node that a physical layer
instruction is to be transmitted between the first network node and second
network node,” the Examiner finds it is unclear “who” is “indicating to a
third network node.” Final Act. 6. The Examiner further finds the preamble
contributes to this ambiguity, since the preamble only refers to
communication between a “first network node” and “second network node.”
Id. Appellants argue one of ordinary skill in the art would understand, from
reading the Specification, that a “network controller” would perform the
claimed indication. See, e.g., Reply Br. 3-A.
We are persuaded, on the record before us, that the Examiner erred.
Claim 1 is a method claim, reciting steps of “warning the first network
node,” “indicating to a third network node,” and “transmitting . . . from the
first network node.” App. Br. 20. Although the claim specifies which entity
is performing the “warning” step (i.e., the “second network node”), that does
not mean the claim must specify which entity performs all of the other steps
in the claimed method. The fact that the claim leaves open which entity
performs the “indicating” step goes to the claim’s breadth, not
indefmiteness. See, e.g., In re Miller, 441 F.2d 689, 693 (CCPA 1971)
(observing that “breadth [of a claim] is not to be equated with
indefmiteness”). Similarly, the fact that the “third network node” is not
4
Appeal 2017-005940
Application 13/639,242
recited in the preamble along with the “first network node” and “second
network node” simply means it is not subject to the limitations on those
nodes as recited in the preamble.
The Examiner further finds it “unclear whether [claim 1 recites]
warning . . . even if the channel quality information [] is above zero,” or
“encoding . . . even if the channel quality information [] is above zero.”
Final Act. 6. We, however, find no such ambiguity in the claim language.
Claim 1 recites “warning ... by encoding . . . even if the channel quality
information [] is above zero.” App. Br. 20 (emphasis added). Accordingly,
“warning” and “encoding” both occur in the claimed method.
Thus, for the foregoing reasons, we do not sustain the Examiner’s
indefmiteness rejection of claim 1.
The Examiner rejects independent claims 13 and 14 as indefinite, for
the same reasons as claim 1 and also because the Examiner finds them to
recite a “single element machine.” Final Act. 7—8, 10; Ans. 31—32. As
explained above, however, we do not find sufficient support for the claim 1
rejection on the record before us, and we find the Examiner’s reasoning
erroneous for the same reasons as to claims 13 and 14. Further, claims 13
and 14 recite a “network node” (i.e., a machine) that is “configured to”
perform a number of steps. To the extent the Examiner is interpreting these
claims to be “single means” means-plus-fimction claims, the support for
such interpretation is not clearly stated on the record before us. Neither
claim, for example, includes nonce words entitling the claim to a
presumption of means-plus-function, and the Examiner does not explain
how such an interpretation is reached (or even that the Examiner is
definitively interpreting the claims as means-plus-fimction). Id. We are
5
Appeal 2017-005940
Application 13/639,242
simply unable to determine the basis of the Examiner’s rejection of claims
13 and 14.
Accordingly, we also do not sustain the Examiner’s rejection of
claims 13 and 14. The remaining claims were rejected as indefinite because
they depend from independent claims 1, 13, or 14. Because we do not
sustain the rejection of the independent claims, we do not sustain the
rejection of the dependent claims.
Rejections Underpre-AIA 35 U.S.C. § 103(a)
Appellants argue the Examiner erred in finding the prior art teaches or
suggests “transmitting the physical layer instruction from the first network
node, said physical layer instruction encoding reselection information to
cause said second network node to select a different carrier,” as recited in
claim l.4 App. Br. 12 (emphasis added); Reply Br. 7—9. Specifically,
Appellants argue the Examiner’s reliance on Marinier is erroneous because
Marinier lacks any mention of a physical layer instruction “encod[ing]
reselection information.” App. Br. 12. Appellants further argue the
Examiner improperly attempts to correct the error in the Answer, by citing a
Wikipedia entry that is not part of the record and, nevertheless, still fails to
teach the disputed limitation. Reply Br. 8—9. We are persuaded by
Appellants’ arguments that the Examiner erred, and therefore we need not
address arguments related to other limitations.
The Examiner first relies on Marinier as teaching the disputed
limitation. Ans. 37—38 (citing Marinier || 35—36); see also Final Act. 12—13
4 With respect to the obviousness rejections, independent claims 1, 13, and
14 are argued as a group, and we choose claim 1 as representative of the
group. 37 CFR§ 41.37(c)(4).
6
Appeal 2017-005940
Application 13/639,242
(citing Marinier Figs. 3—5, 35—36, 41, 50). As the Examiner finds,
Marinier describes “perform[ing] the detection and recovery of physical
layer problems,” wherein “the physical layer reports in-synch indications
and out-of-synch indications to the RRC layer at least from the DL carrier
monitored for the purpose of radio link failure.” Ans. 38 (citing Marinier
H 35—36). The Examiner, therefore, finds Marinier “discloses the physical
layer instruction of the physical layer reports in-synch indications and out-
of-synch indications of the RRC connection re-establishment message as
encoding reselection information to transmit the RRC measurement report.”
Ans. 38. As Appellants argue, however, the Examiner’s finding regarding
Marinier does not mention the claimed “reselection information.”
In the Answer, the Examiner asserts that a Wikipedia description of
“physical layer” (not part of the rejection) “defines the means of transmitting
raw bits rather than logical data packets over a physical link connecting
network nodes.” Ans. 38. The Examiner finds Wikipedia “specifie[s]” the
“shapes and properties of electrical connectors, the frequencies to broadcast
on, the modulation scheme to use[,] and similar low-level parameters.” Id.
(emphasis omitted). As Appellants argue, however, the Examiner’s findings
regarding the Wikipedia entry amount to little more than “background
information,” and still do not explain how the combination of references
teaches the disputed limitation to one of ordinary skill in the art. Reply Br.
8.
Accordingly, we agree with Appellants that on the record before us,
the Examiner erred in rejecting claim 1. Independent claims 13 and 14 are
not argued separately (and the Examiner does not find Lee, asserted only in
7
Appeal 2017-005940
Application 13/639,242
the claim 14 rejection, cures the deficiencies of Marinier regarding the
disputed limitation).
We, therefore, cannot sustain the obviousness rejections of
independent claims 1, 13, and 14. The remaining claims 2—7, 10-12, 15, and
16 depend from claims 1,13, and 14, and therefore we cannot sustain the
obviousness rejections of those claims as well.
DECISION
We REVERSE the Examiner’s rejections of claims 1—7 and 10—16.
REVERSED
8