Hiroyuki Ishii et al.

Patent Trials and Appeals Board

Oct 14, 2020

13579085 - (D) (P.T.A.B. Oct. 14, 2020)

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.
13/579,085 10/24/2012 Hiroyuki Ishii 17470/262001 2528
22511 7590 10/14/2020
Osha Bergman Watanabe & Burton LLP
TWO HOUSTON CENTER
909 FANNIN, SUITE 3500
HOUSTON, TX 77010
EXAMINER
ROSE, DERRICK V
ART UNIT PAPER NUMBER
2462
NOTIFICATION DATE DELIVERY MODE
10/14/2020 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@oshaliang.com
escobedo@oshaliang.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIROYUKI ISHII and MIKIO IWAMURA
Appeal 2020-003151
Application 13/579,085
Technology Center 2400
Before JOHNNY A. KUMAR, CATHERINE SHIANG, and
BETH Z. SHAW, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 46, 47, 50, 52, 54, 56, 57, 61, 63, 64,
66, and 67. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as NTT DOCOMO,
Inc. Appeal Br. 4.
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Exemplary Claim
Exemplary claim 46 under appeal reads as follows:
46. A mobile station configured to communicate with a radio
base station of a serving cell, the mobile station comprising:
a processor, in conjunction with a receiver, configured to:
measure radio quality of the serving cell for at least one
carrier,
measure radio quality of at least one neighboring cell for
the at least one carrier, and
determine if a predetermined event is triggered based on
first measurement results, the first measurement results
comprising at least one of the measured radio quality of the
serving cell and the measured radio quality of the at least one
neighboring cell; and
a transmitter configured to transmit to the radio base station, if
the predetermined event is triggered, a measurement report
including the first measurement results that triggered the
predetermined event and second measurement results
comprising radio quality and a physical cell ID of the at least
one neighboring cell for a carrier other than the at least one
carrier for which the predetermined event is triggered.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Kuroda US 2008/0285477 A1 Nov. 20, 2008
Kazmi US 2010/0041384 A1 Feb. 18, 2010
Sagfors US 2011/0170418 A1 July 14, 2011
Jung US 2012/0076041 A1 Mar. 29, 2012

Rejections on Appeal
Claims 46, 47, 50, 52, 54, 56, 57, 61, 63, 64, 66, and 67 are rejected
under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Sagfors in
view of Kazmi and further in view of Jung. Final Act. 4.
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Claims 54, and 61 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Sagfors in view of Kazmi in view of Jung and
further in view of Kuroda. Final Act. 6.

Appellant’s Contentions
1. Appellant contends the Examiner erred in rejecting independent
claims 46, 47, 56, 57, 63, 64, 66, and 67 because “Sagfors fails to suggest at
least measuring ‘radio quality of at least one neighboring cell for the at least
one carrier. ’” as required by the independent claims. Appeal Br. 15
(hereinafter disputed limitation).
Appellant also contends “[o]ne of ordinary skill in the art would have
no motivation to modify the cited prior art in the manner suggested in the
Examiner’s Answer.” Reply Br. 2. In particular, Appellant further contend:
it is clear that Sagfors considers the measurement configuration
described in par. [0043] problematic and to be avoided under
CA [carrier aggregation]. Accordingly, even assuming
arguendo the cited prior art can be modified based on par.
[0043] of Sagfor[s], one of ordinary skill in the art would not
have the motivation to make the modification given that
Sagfor[s] expressly teaches away from the modification.
Id. at 3. (hereinafter teaching away contention) emphasis added.
2. Appellant also contends the Examiner erred in rejecting
independent claims 46, 47, 56, 57, 63, 64, 66, and 67 because “The
Examiner’s Answer is based on an unreasonable interpretation of claim
limitations” Reply Br. 4. In particular, Appellant further contends
“Contrary to the Examiner’s statement that the two terms [physical layer
identity and physical cell ID] ‘aren't inherently different,’ Appellant has
submitted the declaration as evidence to demonstrate that the two terms are
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inherently different.” Id. at 4, 5. (hereinafter inventor declaration
contention).
3. Appellant contends the Examiner erred in failing “to properly
designate a new ground of rejection” in the Answer. Reply Br. 6. In
particular, Appellant submits that the Examiner’s Answer is defective and
should not be given consideration:
the Examiner has introduced two new references, namely, U.S.
Patent Application Publication No. 2012/0094673 (“Sebire”)
and U.S. Patent Application Publication No. 2009/0061878
(“Fischer”), in support of the mapping between the claimed
“physical cell ID” and the “physical layer identity” allegedly
disclosed in Kazmi. See Examiner’s Answer, pp. 8-9. While
the introduction of new references necessitates a new ground of
rejection, the Examiner has failed to make proper designation
thereof in the Examiner’s Answer.
Id. (hereinafter new ground contention).

ANALYSIS
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made, but chose not to
make, in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(iv).
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We adopt as our own the findings
and reasons set forth in the Examiner’s Answer (see Ans. 7–9). We
highlight and address specific findings and arguments for emphasis as
follows.
As to Appellant’s contention 1, initially we note that Appellant’s
arguments are not commensurate with the scope of the claim because the
claim does not recite “carrier aggregation.”
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The Examiner determines that in Paragraph 20, Sagfors teaches the
disputed limitation (Final Act. 4, citing Fig. 3, ¶ 20), which is not rebutted
by Appellant. Regarding Appellant’s contention about ¶ 43 of Sagfors,
Examiner’s reliance upon ¶ 43 of Sagfors is cumulative to that of ¶ 20—not
teaching away. “A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.” Ricoh Co. v.
Quanta Computer Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (citations and
internal quotation marks omitted). Teaching an alternative or equivalent
method, however, does not teach away from the use of a claimed method.
See In re Dunn, 349 F.2d 433, 438 (CCPA 1965). A reference does not
teach away if it merely expresses a general preference for an alternative
invention from amongst options available to the ordinarily skilled artisan,
and the reference does not discredit or discourage investigation into the
invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Based on the record before us, we find no error in the Examiner’s
rejection of representative claims 46, 47, 56, 57, 63, 64, 66, and 67, for the
reasons indicated by the Examiner, as our interpretation of the disclosure of
Sagfors coincides with that of the Examiner.
As to Appellant’s contention 2, on pages 8 and 9 of the Answer, the
Examiner provides a well-reasoned explanation, which demonstrates that the
claimed “physical cell ID” encompasses Kazmi’s “physical layer identity”
(citing Kazmi, ¶ 42). We concur with the Examiner’s fact finding as it is
supported by Kazmi’s disclosure.
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In particular, the Examiner determines, and we agree:
The Specification of this application doesn't mention a physical
layer identity so there is no distinction between the two (they aren't
inherently different). Also it is evident that Physical cell ID is simply
an identifier of the cell in the broadest reasonable interpretation (See
Specifications ¶0116, ¶0118, and ¶0126). Despite the declaration
under 37 CFR §1.132 filed July 16, 2018, a physical cell ID is
equivalent to a physical layer identity due to the fact that both are
used to distinguish a cell. Also it should be noted that the claims have
not specifically precluded a physical layer identity as described in
Kasmi.
In addition the declaration is insufficient to overcome the
rejection under 35 USC §103(a) based upon the Kazmi reference
because a measurement is identifying new /unknown cells that have
physical layer identifiers and measurements are sent in measurement
reports. The factual findings in TS 36.211 is not enough to overturn
sending the physical layer identifier for new /unknown cells because
in Kazmi the new /unknown cells are identified and measured and
reported based on the physical layer identifier (Kazmi ¶0037 and
¶0042).

Ans. 8.

Further, we are unpersuaded by the inventor declaration, especially
because the Federal Circuit has declared “[t]he testimony of an inventor and
his attorney concerning claim construction is thus entitled to little or no
consideration. The testimony of an inventor often is a self-serving, after-the-
fact attempt to state what should have been part of his or her patent
application.” Bell & Howell Document Mgmt. Prods. v. Altek Sys., 132 F.3d
701, 706 (Fed.Cir.1997).
As to Appellant’s contention 3, we note that the Examiner relied upon
the Sebire and Fischer references to construe the term physical cell ID and
show that it is the same as physical layer identifier. Ans. 8, 9. This is proper
because the references have been provided for the missing limitation only to
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show that the “terms ‘physical cell ID’ and a ‘physical layer identifier’ are
accepted in the art as interchangeable.” Id. at 9.
Further, Appellant’s new ground contention is a petitionable2—not
appealable—matter and is, therefore, not before us. See MPEP § 1002.02(c)
(Petitions and Requests Decided by the Technology Center Directors)
(“Petitions . . . to request review of the primary examiner’s failure to
designate a rejection in the examiner’s answer as a new ground of
rejection”); see also MPEP § 1201 (“The Board will not ordinarily hear a
question that should be decided by the Director on petition . . . .”).
Accordingly, Appellant has not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner’s reading of
the contested limitations on the cited prior art, or in the proper combinability
of the prior art references as suggested by the Examiner. Therefore, we
sustain the Examiner’s obviousness rejection of independent claims 46, 47,
56, 57, 63, 64, 66, and 67; and the dependent claims not argued separately.
Consequently, we conclude there is no reversible error in the
Examiner’s rejections of claims 46–47, 50, 52, 54, 56–57, 61, 63, 64, 66,
and 67.

2 See MPEP §1207.03:
If appellant believes that an examiner’s answer contains a new
ground of rejection not identified as such, appellant may file a
petition under 37 CFR 1.181(a) within two months from the
mailing of the examiner’s answer requesting that a ground of
rejection set forth in the answer be designated as a new ground
of rejection.
MPEP §1207.03, IV (Eighth Edition, August 2001, Revised August 2012).

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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
46, 47, 50,
52, 54, 56,
57, 61–67
103(a) Sagfors, Kazmi,
Jung
46, 47, 50,
52, 54, 56,
57, 61,
63, 64, 66,
67

54, 61 103(a) Sagfors, Kazmi,
Jung, Kuroda
54, 61
Overall
Outcome
46, 47, 50,
52, 54, 56,
57, 61,
63, 64, 66,
67

TIME PERIOD FOR RESPONSE
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.
§ 1.136(a)(1)(iv).
AFFIRMED