Ex Parte Yamaura et alDownload PDFPatent Trial and Appeal BoardFeb 27, 201713862006 (P.T.A.B. Feb. 27, 2017) Copy Citation 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. 13/862,006 04/12/2013 Tomoya YAMAURA 10760/130B 8173 23838 7590 03/01/2017 ANDREWS KURTH KENYON LLP 13501 STREET, N.W. SUITE 1100 WASHINGTON, DC 20005 EXAMINER NGUYEN, DUC M ART UNIT PAPER NUMBER 2647 NOTIFICATION DATE DELIVERY MODE 03/01/2017 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): u spto @ keny on .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SONY CORPORATION1 Appeal 2015-003449 Application 13/862,0062 Patent 6,263,205 B1 Technology Center 2600 Before BRUCE R. WINSOR, LINZY T. McCARTNEY, and MELISSA A. HAAPALA, Administrative Patent Judges. WINSOR, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of claims 1,2, 5—13, 16, and 19-40, which constitute all the claims pending in this reissue application. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). Claims 3, 4, 14, 15, 17, and 18 are cancelled. App. Br. (Claims App.) 16, 18, 19. We affirm. 1 Tomoya Yamaura, Kazuyuki Sakoda, and Mitsuhiro Suzuki are named inventors. 2 Filed April 12, 2013, as a continuation of Application 13/524,238, filed June 15, 2012, seeking to reissue U.S. Patent 6,262,205 Bl, issued July 17, 2001, based on Application 09/296,416, filed April 23, 1999. Application 13/524,238 is now U.S. Patent RE44,322 E, issued June 25, 2015. Appeal 2015-003449 Application 13/862,006 Patent 6,263,205 B1 STATEMENT OF THE CASE Appellant’s disclosed invention relates to a mobile radio communication system of the cellular system wherein a base station and a mobile station are connected to each other, and more particularly to a mobile radio communication system wherein soft hand-off processing is performed with regard to a forward link transmission signal when a mobile station moves between cells. Spec. 1:4—10.3 Representative claim 1 reads as follows: 1. A mobile radio communication system, comprising: a base station system including at least two adjacent base stations; a mobile station movable between cells formed by and connectable to the base stations; and means for performing transmission power control whereby, when the mobile station and the base stations are connected to each other, soft hand-off control is performed for a control signal, and hard hand-off control is performed for signals other than the control signal, wherein the base stations are to transmit communication(s) to the mobile station that put the mobile station in a hand-off state, the hand-off state including the soft hand-off control for the control signal and the hard hand-off control for signals other than the control signal, and wherein the communication(s) identify a selection by the base station system of a base station to transmit the signals other than the control signal for hard hand-off during the hand-off state. 3 Column 1, lines 4—10. 2 Appeal 2015-003449 Application 13/862,006 Patent 6,263,205 B1 Claims 1, 2, 5—13, 16, and 19-404 stand rejected under 35 U.S.C. § 103(a)5 as being unpatentable over Padovani et al. (US 6,574,211 B2; iss. June 3, 2003) and ETSI, Universal Mobile Telecommunications System (UMTS); UMTS Terrestrial Radio Access (UTRA); Concept evaluation (UMTS 30.06 Version 3.0.0), Technical Report TR 101 146 (Dec. 1997) (hereinafter TR’146). See Final Act. 2—12. Claims 1, 2, 5—13, 16, and 19-406 were rejected for nonstatutory double patenting over claims 1, 2, 5—13, and 16—26 of Yamaura et al. (US RE44,322 E; iss. June 25, 2013). See Final Act 12. Appellant submitted a Terminal Disclaimer (filed Jan. 5, 2015, approved Jan. 21, 2015) that renders this rejection moot. See Reply Br. 2. We do not address the nonstatutory double patenting rejection further, as it is not before us. Rather than repeat the arguments here, we refer to the Briefs (“App. Br.” filed Sept. 26, 2014; “Reply Br.” filed Jan. 5, 2015) and the Specification (US 6,263,205 Bl) (“Spec.”) for the positions of Appellant, and the Final Office Action (“Final Act.” mailed April 28, 2014) and the Examiner’s Answer (“Ans.” mailed Nov. 5, 2014) for the reasoning, findings, and conclusions of the Examiner. Only those arguments actually 4 Although claim 5 is not listed in the summary ground of rejection (Final Act. 2), a detailed rejection of claim 5 is articulated (id. at 5). We view the omission of claim 5 from the summary ground of rejection as a clerical or typographical error. 5 All rejections are under the provisions of 35 U.S.C. in effect prior to the effective date of the Feahy-Smith America Invents Act of 2011. Final Act 2. 6 The Examiner identifies claims 17 and 18 as rejected for nonstatutory double patenting (Final Act. 12); however, claims 17 and 18 are cancelled (App. Br. (Claims App.) 19). We view the inclusion of claim 17 and 18 in the rejection as a clerical or typographical error. 3 Appeal 2015-003449 Application 13/862,006 Patent 6,263,205 B1 made by Appellant have been considered in this decision. Arguments that Appellant did not make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2014). In particular, Appellant has waived argument with regard to the interpretation under 35 U.S.C. § 112, sixth paragraph, of the “means for performing” limitation. ISSUE All claims stand rejected under the same ground of rejection (see Final Act. 2—12) and Appellant relies on the arguments made for claim 1 to argue the patentability of the remaining pending claims (see generally App. Br. 7—12; Reply Br. 2—7). Therefore, we select claim 1 as the representative claim, pursuant to our authority under 37 C.F.R. § 41.37(c)(l)(iv). Claims 2, 5—13, 16, and 19-40 stand or fall with claim 1. The issue presented by Appellant’s arguments is as follows: Does the Examiner err in finding the combination of Padovani and TR’146 teaches or suggests “wherein the communication(s) identify a selection by the base station system of a base station to transmit the signals other than the control signal for hard hand-off during the hand-off state,” as recited in claim 1? ANALYSIS Appellant contends Padovani teaches a soft hand-off of the pilot signal, i.e., “control signal” (claim 1), controlled by the base station system and a hard hand-off of data packet delivery, i.e., “signals other than the control signal” {id.), controlled by the mobile station. See Reply Br. 3^4 (citing Padovani 14:36—54, 25:59-66, Fig. 5). Appellant asserts “Padovani's 4 Appeal 2015-003449 Application 13/862,006 Patent 6,263,205 B1 selection process does not disclose hard hand-off control by a base-station as recited in the pending claims.” Reply Br. 3. Appellant further asserts TR’ 146 is merely redundant of Padovani, as it too only teaches soft hand-off control. See Reply Br. 4—5. We are not persuaded of error. As pointed out by the Examiner, Padovani teaches the use of a centralized scheduling scheme using a centralized scheduler located within a base station controller, i.e., within the “base station system” (claim 1), to schedule the delivery of data packets. See Ans. 18 (citing Padovani 10:5—10, 16:48—56). The Examiner explains as follows: [SJince the selection of a base station by the base station system for handoff is well known in the art as disclosed by TR'146 (see [§] 2.6.5.1.1, page 48 and [§] 6.2, pages 212-214), and since Padovani does suggest a centralized scheduling scheme, where the channel scheduler receives the C/I measurements from mobile stations, it would have been obvious to one skilled in the art at the time the invention was made to modify Padovani for providing a network controller to select a base station to handover based on C/I measurements reported from the mobile station as well, thereby provide limitations as claimed, as an alternative of obvious design choice, to coordinate the data transmissions of multiple base stations. . . . [T]he selection a base station by the network to handover based on C/I measurements reported from the mobile station would clearly guarantee that the best base station, as detected by the mobile station, would be selected for transmission of new data packets in the same way as the mobile selects a base station based on C/I measurements because they both select the base station with the best C/I measurement. Therefore, the network selection or the mobile selection is just an obvious design choice. 5 Appeal 2015-003449 Application 13/862,006 Patent 6,263,205 B1 Ans. 19. We agree. Appellant contends the Examiner misinterprets the role of Padovani’s channel scheduler. See Reply Br. 6—7 (citing Padovani 4:26-43, 13:39-45, 16:53—17:3). We are not persuaded. In a passage cited but not reproduced by Appellant, Padovani teaches “[cjhannel scheduler 48 knows that no adjacent base stations 4 transmitted data in the first time slot since none was scheduled by channel scheduler 48. In scheduling data transmission at the second time slot, channel scheduler 48 knows whether one or more adjacent base stations 4 will transmit data.” Padovani 16:61—66 (italics added). We find this passage, which describes a “third embodiment, which corresponds to the scheme wherein an indication of the link quality is transmitted to base station 4 and which uses a centralized scheduling scheme'1'’ {id. at 16:48—51 (italics added)), would have at least suggested to one of ordinary skill in the art at the time of the invention to use the base station system to control the hard hand-off of data packet delivery, i.e., “signals other than the control signal” (claim 1). Appellant contends the Examiner’s findings and conclusions amount to nothing more than an exercise in hindsight. We disagree. The Examiner concludes, and we agree, that in view of Padovani’s and TR’146’s teaching of hard and soft hand-offs, hand-offs controlled by mobile stations and by base station systems, and hand-offs of the control signal and of signals other than the control signal, “the network selection or the mobile selection is just an obvious design choice.” Ans. 19; see also Final Act. 4—5. When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue 6 Appeal 2015-003449 Application 13/862,006 Patent 6,263,205 B1 the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Here we have a design need, to control the hand-off of control signals and signals other than control signals, and a finite number of predictable solutions, one of which is Appellant’s claimed solution. It would have been obvious to the person of ordinary skill in the art at the time of the invention to try the various possibilities, i.e., it would have been a matter of obvious design choice. Appellant contends [t]his is not a simple design choice like choosing a nail or a screw. Wireless cellular technology at this time (-1998) was in its infancy, and this so-called “design choice” would entail restructuring entire system configurations. Therefore, one of ordinary skill in the art would not consider modifying Padovani as alleged by the Examiner without strong teachings in the prior art. App. Br. 12. We are not persuaded. Appellant offers no evidence as to the actual system configurations in use in 1998, or to demonstrate that implementing the claimed configuration would have been “uniquely challenging or difficult for one of ordinary skill in the art.” See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Furthermore, as discussed above, we find that Padovani at least suggests the use of the base station system to control the hard handoff of signals other than the control signal. 7 Appeal 2015-003449 Application 13/862,006 Patent 6,263,205 B1 Accordingly, we sustain the rejection of claim 1 and claims 2, 5—13, 16, and 19-40, which fall with claim 1. DECISION The decision of the Examiner to reject claims 1, 2, 5—13, 16, and 19- 40 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)(1). See 37 C.F.R. §§ 41.50(f), 41.52(b). AFFIRMED 8 Copy with citationCopy as parenthetical citation