Ex Parte YAMADA et al

Patent Trials and Appeals Board

Feb 14, 2019

14660587 - (D) (P.T.A.B. Feb. 14, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/660,587 03/17/2015
23117 7590 02/19/2019
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Shohei YAMADA
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
HWB-1035-1319 1453
EXAMINER
TIM ORY, KABIR A
ART UNIT PAPER NUMBER
2631
NOTIFICATION DATE DELIVERY MODE
02/19/2019 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHOHEI YAMADA, JIA SHENG, and
JOHN MICHAEL KOWALSKI
Appeal2018-006487
Application 14/660,587 1
Technology Center 2600
Before MAHSHID D. SAADAT, DAVID M. KOHUT, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 19, 26, and 33-36. Appellants have canceled claims 1-18, 20-25,
and 27-32. App. Br. 28-29. We have jurisdiction over the remaining
pending claims under 35 U.S.C. § 6(b ).
We affirm-in-part.
1 Appellants identify Sharp Kabushiki Kaisha as the real party in interest.
App. Br. 3.
Appeal2018-006487
Application 14/660,587
STATEMENT OF THE CASE
Introduction
Appellants' disclosed and claimed invention generally relates to
"granting radio resources for wireless device-to-device (D2D)
communications." Spec. ,r 1.
Claim 19 is exemplary of the subject matter on appeal and is
reproduced below:
19. A method in a wireless terminal, the method comprising:
generating a radio resource control (RRC) message
including wireless terminal capability information, for each of
one or more band combinations, indicating whether or not the
wireless terminal, which is a user equipment (UE), supports
simultaneous transmission of a plurality of communications
consisting of (i) communication between the wireless terminal
and a base station and (ii) device-to-device (D2D)
communication directly performed between the wireless
terminal and another wireless terminal, wherein the wireless
terminal supports the communication between the wireless
terminal and the base station in the one or more band
combinations; and
transmitting the radio resource control (RRC) message to
the base station.
The Examiner's Rejection
Claims 19, 26, and 33-36 stand rejected under 35 U.S.C. § 103 as
unpatentable over Hakola et al. (US 2014/0106757 Al; Apr. 17, 2014)
("Hakola") and Patil et al. (US 2015/0215981 Al; July 30, 2015) ("Patil").
Final Act. 7-10.
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Application 14/660,587
ANALYSIS 2
Claims 19, 26, 35, and 36
Appellants argue Hakola fails to teach a wireless terminal generating a
radio resource control (RRC) message including wireless terminal capability
information and transmitting the RRC message to a base station. App.
Br. 18-20; Reply Br. 2--4. In particular, Appellants argue Hakola describes
transmitting capabilities of the base station (i.e., an evolved Node B, or
eNB) between eNBs or providing the capabilities of the eNB to the wireless
terminal. App. Br. 18 (citing Hakola, Figs. 6-7). To the extent the
Examiner relies on Hakola's disclosure of a wireless terminal (i.e., the user
equipment, or UE) transmitting an RRC message to the eNB, Appellants
argue the message in Hakola does not include the claimed wireless terminal
capability information-i.e., indicating whether or not the wireless terminal
supports simultaneous transmission of a plurality of communications
consisting of (i) communication between the wireless terminal and a base
station, and (ii) device-to-device communication directly performed between
the wireless terminal and another wireless terminal. Reply Br. 2--4 ( citing
Hakola ,r,r 44--45, and 50). Additionally, Appellants argue Patil fails to
teach an RRC message including wireless terminal capability or an
indication of whether or not the wireless terminal supports simultaneous
transmission of a plurality of communications. App. Br. 21-24; Reply
Br. 4--5.
2 Throughout this Decision, we have considered the Appeal Brief, filed
July 6, 2017 ("App. Br."); the Reply Brief, filed June 7, 2018 ("Reply Br.");
the Examiner's Answer, mailed April 11, 2018 ("Ans."); and the Final
Office Action, mailed April 21, 2017 ("Final Act."), from which this Appeal
is taken.
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Appeal2018-006487
Application 14/660,587
We begin our analysis with a review of claim 19. Claim 19 requires a
wireless terminal to generate a radio resource control (RRC) message and
transmit the message to the base station. Additionally, the claim requires the
wireless terminal to support the communication between the wireless
terminal and the base station in one or more band combinations. Further, the
claim recites the RRC message includes certain content-namely that the
message includes:
wireless terminal capability, for each of one or more band
combinations, indicating whether or not the wireless terminal,
which is a user equipment (UE), supports simultaneous
transmission of a plurality of communications of consisting of
(i) communication between the wireless terminal and a base
station and (ii) device-to-device (D2D) communication directly
performed between the wireless terminal and another wireless
terminal.
However, the claim does not recite using the specific message content, but
instead only recites that the message is transmitted. Additionally, the
message content merely indicates whether the wireless terminal supports the
recited simultaneous transmission of communications.
"Claim limitations directed to printed matter are not entitled to
patentable weight unless the printed matter is functionally related to the
substrate on which the printed matter is applied." Praxair Distribution, Inc.
v. Mallinckrodt Hosp. Prods. IP Ltd., 890 F.3d 1024, 1031 (Fed. Cir. 2018)
( emphasis added). Our reviewing court has also explained that this printed
matter doctrine is not strictly limited to "printed" materials. Mallinckrodt,
890 F.3d at 1032. More specifically, "a claim limitation is directed to
printed matter 'if it claims the content of information.'" Mallinckrodt, 890
F.3d at 1032 (quoting In re DiStefano, 808 F.3d 845,848 (Fed. Cir. 2015)).
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Application 14/660,587
"Where the printed matter is not functionally related to the substrate,
the printed matter will not distinguish the invention from the prior art in
terms ofpatentability." In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983)
(footnote omitted). As a general proposition, we need not give patentable
weight to non-functional descriptive material absent a new and nonobvious
functional relationship between the descriptive material and the substrate.
See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see also King Pharm.,
Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010); and Manual of
Patent Examining Procedure (MPEP) § 2111.05 (9th ed. Rev. 08.2017,
Jan. 2018).
In Ex parte Nehls, 88 USPQ2d 1883, 1888 (BPAI 2008)
(precedential), the Board held that the nature of the information being
manipulated by the computer should not be given patentable weight absent
evidence that the information is functionally related to the process "by
changing the efficiency or accuracy or any other characteristic" of the steps.
See also Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (non-
precedential) (holding "wellness-related" data stored in a database and
communicated over a network was non-functional descriptive material as
claimed because the data "does not functionally change" the system).
We find the content of the RRC message does not change the method
of claim 19 or, similarly, the circuitry of the wireless terminal (see claim 26)
to generate and transmit the message. Moreover, the content of the RRC
message is not functionally related to the generation of an RRC message or
the transmission of such message. Accordingly, the content of the RRC
message is merely non-functional descriptive material.
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Appeal2018-006487
Application 14/660,587
Having determined independent claim 19 recites non-functional
descriptive matter, we are mindful to read the claim as a whole in our
analysis. See Gulack, 703 F.2d at 1385 ("[T]he board cannot dissect a claim,
excise the printed matter from it, and declare the remaining portion of the
mutilated claim to be unpatentable. The claim must be read as a whole.")
(footnote omitted).
Based on the foregoing discussion, claim 19 is interpreted as follows:
19. A method in a wireless terminal, the method comprising:
generating a radio resource control (RRC) message
including [ non-functional descriptive matter]; and
transmitting the radio resource control (RRC) message to
the base station.
As identified by the Examiner, Hakola teaches a wireless terminal
having a radio resource control connection with a base station (i.e., eNB).
Hakola ,r 27, Fig. 1; see also Ans. 2--4; Final Act. 7-8. In particular, the
Examiner finds, and we agree, Hakola expressly teaches the wireless
terminal generating an RRC message and transmitting the RRC message to
the base station. Ans. 4 (citing Hakola ,r 44). Figure 6D of Hakola is
illustrative and is reproduced below:
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Appeal2018-006487
Application 14/660,587
I 204 UE I j 100 SOURCE tNB I 1200 TARGET ms I
608 HO REQUEST & PROSE INFO,
~
610 HO RESPONSE &
- CAPABILITY INFORMATION
606 CAPASILITY INDICATION 615
' ... L!. ..... ... "--~------···· .. """''H•,.••••••''"'~··••••••"''"'""'"''"nn,,• ...... ,. ... " ............ -...................... -..
I 616 DETECTION: NO SIB j
618 MESSAGE
~
~
! 620 ACT!NG BASED ON MESSAGE I
...................... ..1 ....................... ,
/ 611 ACTIVATING PROSE & SIB 1 . ;
j 622DETECTION: SIB i · . ., .............. r .................... ·
....................... r ......................
FIG.6D
Figure 6D of Hakola illustrates a signal flow diagram between, inter alia, a
wireless terminal (204 UE) and a base station (200 Target eNB). Hakola
,r,r 22, and 44--45. As shown in Figure 6D, Hakola describes "the UE 204
may generate an RRC message 618 to the target eNB 200." See Hakola
,r 44. Moreover, Hakola discloses "a message 618 may be sent [i.e.,
transmitted)] to the target node 200 ... [ and] may comprise various
indications." Hakola ,r 45. Thus, we find Hakola teaches a wireless terminal
generating an RRC message and transmitting the RRC message to a base
station.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner's rejection of independent
claim 19. 3 For similar reasons, we also sustain the Examiner's rejection of
3 We note the Examiner relied on the combined teachings of Hakola and
Patil in rejecting claims 19, 26, 35 and 36. See Final Act. 7-10. Although,
based on our construction of the claims, we rely only on the teachings of
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independent claim 26, which recites similar limitations (and non-functional
descriptive matter) and was not argued separately. See App. Br. 25; see also
37 C.F.R. § 4I.37(c)(l)(iv) (2017). Further, we sustain the Examiner's
rejection of claims 35 and 36, which depend therefrom and were not argued
separately with particularity. See App. Br. 37; see also 37 C.F.R.
§ 4I.37(c)(l)(iv)
Claims 33 and 34
Claim 33 depends from claim 19 and recites "wherein the wireless
terminal in RRC_CONNECTED is served in a serving cell in a first carrier
frequency, and the wireless terminal performs the D2D communication in a
second carrier frequency different from the first carrier frequency." Claim
34 depends from claim 26 and recites a similar limitation.
Appellants argue that although Patil, as relied on by the Examiner (see
Final Act. 9), generally describes the system may support operation on
multiple carriers, Patil fails to teach how the different carriers are used.
App. Br. 26. More specifically, Appellants argue Patil does not teach a
wireless terminal in RRC_CONNECTED is served in a serving cell on a
first carrier frequency and that D2D communications involving the wireless
terminal occur on a second, different carrier frequency. App. Br. 26.
The Examiner does not respond to Appellants' arguments. Reviewing
the Examiner's rejection of claims 33 and 34 (see Final Act. 9) and the cited
portions of Patil (i.e., Patil ,r,r 51, 57, and 60-61), we find Patil describes a
wireless communications system that may support operation on multiple
Hakola, this does not constitute a new ground of rejection. See In re Bush,
296 F.2d 491,496 (CCPA 1961).
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frequencies. Patil ,r 51. Additionally, Patil describes that after a wireless
terminal transitions to (D2D) Mode 2 (i.e., a mode wherein the wireless
terminal selects resources from resource pools (see Patil ,r 59)) may operate
in a device-to-device communications mode and continue to monitor for and
receive indications from a base station conveying resource pool information.
Patil ,r 61. However, Patil does not describe that in Mode 2, the wireless
terminal is in RRC_CONNECTED, as required by claims 33 and 34. In
contrast, Appellants explain when the wireless terminal is
RRC_CONNECTED, there is normal RRC connection between the wireless
terminal and the base station, and the wireless terminal may operate in
(D2D) Mode 1. See Spec. ,r,r 87, and 103-104. Additionally, the Examiner
does not provide sufficient technical reasoning or evidence to support the
finding that Patil teaches "wherein the wireless terminal in
RRC_CONNECTED is served in a serving cell in a first carrier frequency,
and the wireless terminal performs the D2D communication in a second
carrier frequency different from the first carrier frequency."
For the reasons discussed supra, we do not sustain the Examiner's
rejection of claims 33 and 34.
DECISION
We affirm the Examiner's decision rejecting claims 19, 26, 35, and
36.
We reverse the Examiner's decision rejecting claims 33 and 34.
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Appeal2018-006487
Application 14/660,587
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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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