Ex Parte Wu

Patent Trial and Appeal Board

Dec 26, 2012

11564296 (P.T.A.B. Dec. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CHIH-HSIANG WU
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Appeal 2010-007738
Application 11/564,296
Technology Center 2400
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Before JOSEPH F. RUGGIERO, JEFFREY S. SMITH, and
ANDREW CALDWELL, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-007738
Application 11/564,296

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 and 2, which are the only claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Representative Claim
1. A method for handling a Timer_RST timer in a wireless
communications system, the method comprising:

starting the Timer_RST timer for a Radio Link Control
Acknowledged Mode (RLC AM) entity;

performing a re-establishment procedure for the RLC AM entity; and

stopping the Timer_RST timer during a re-establishment function for
the RLC AM entity.

Examiner’s Rejection
Claims 1 and 2 stand rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement.

ANALYSIS
Claim 1 recites “stopping the Timer_RST timer during a re-
establishment function for the RLC AM entity.” The Examiner finds that
paragraphs 15 and 16 of Appellant’s Specification as originally filed do not
provide written description support for stopping the Timer_RST timer
during a re-establishment function. Ans. 3. The Examiner further finds that
Figure 2 of Appellant’s Specification and the prior art disclosed in paragraph
Appeal 2010-007738
Application 11/564,296

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8 of Appellant’s Specification do not provide written description support for
“stopping the Timer_RST timer during a re-establishment function for the
RLC AM entity.”
Appellant contends that paragraphs 8 and 14 and Figure 2 of
Appellant’s Specification as originally filed provide written description
support for stopping the Timer_RST timer during a re-establishment
function. App. Br. 4-5. Appellant further contends that a reasonable
interpretation of Figure 2 and paragraph 15 of Appellant’s Specification as
originally filed is “stopping the Timer_RST timer during a re-establishment
function for the RLC AM entity.” Reply Br. 5-6.
To comply with the “written description” requirement of 35 U.S.C.
§ 112, first paragraph, an applicant must convey with reasonable clarity to
those skilled in the art that, as of the filing date sought, he or she was in
possession of the invention. The invention is, for purposes of the “written
description” inquiry, whatever is now claimed. Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1563-64 (Fed. Cir. 1991).
The invention claimed does not have to be described in ipsis verbis in
order to satisfy the written description requirement. Union Oil Co. of Cal. v.
Atl. Richfield Co., 208 F.3d 989, 1000 (Fed. Cir. 2000). However, one
skilled in the art, reading the original disclosure, must be able to
immediately discern the limitations now claimed. See Waldemar Link v.
Osteonics Corp., 32 F.3d 556, 558 (Fed. Cir. 1994) (“The fact finder must
determine if one skilled in the art, reading the original specification, would
immediately discern the limitation at issue in the parent.”).
We find that one skilled in the art, reading the original disclosure,
would not immediately discern the limitation “stopping the Timer_RST
Appeal 2010-007738
Application 11/564,296

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timer during a re-establishment function for the RLC AM entity.” Appellant
has not provided persuasive evidence or argument to establish that Appellant
was in possession at the time of filing of “stopping the Timer_RST timer
during a re-establishment function for the RLC AM entity” as recited in
claim 1.

DECISION
The rejection of claims 1 and 2 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement is affirmed.
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. §
41.50(f).

AFFIRMED

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