Kashima, Tsuyoshi et al.

Patent Trials and Appeals Board

May 26, 2020

12811815 - (D) (P.T.A.B. May. 26, 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.
12/811,815 07/06/2010 Tsuyoshi Kashima 042933/414447 1760
10949 7590 05/26/2020
Nokia Corporation and Alston & Bird LLP
c/o Alston & Bird LLP
Bank of America Plaza, 101 South Tryon Street
Suite 4000
Charlotte, NC 28280-4000
EXAMINER
NGO, NGUYEN HOANG
ART UNIT PAPER NUMBER
2473
NOTIFICATION DATE DELIVERY MODE
05/26/2020 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TSUYOSHI KASHIMA and ESA MALKAMAKI
Appeal 2019-002230
Application 12/811,815
Technology Center 2400

BEFORE KRISTEN L. DROESCH, NORMAN H. BEAMER, and
JAMES W. DEJMEK, Administrative Patent Judges.

DROESCH, 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 rejecting claims 34–36, 40–42, 46–48, 52, and 56. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a) (2017). Appellant identifies the real party in interest as Nokia
Technologies Oy. Appeal Br. 2.
Appeal 2019-002230
Application 12/811,815
2
CLAIMED SUBJECT MATTER
The claims relate to padding a header of a protocol data unit utilized
by radio communications systems. See Spec., Abstract, ¶¶ 1, 13–19. Claim
34, reproduced below, is representative of the claimed subject matter:
34. A method comprising:
generating, by a processor, a protocol data unit;
inserting one padding sub-header at a beginning of a
header of the protocol data unit when padding of one byte is
needed; and
inserting two padding sub-headers at the beginning of the
header of the protocol data unit when padding of two bytes is
needed, wherein each of the one or two padding sub-headers
comprises a logical channel identification field indicating the
sub-header is designated as padding and an extension field
which is set to indicate that another sub-header follows in the
header.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Lieberman US 5,802,064 Sept. 1, 1998
Chun et al. (“Chun”) US 8,634,312 B2 Jan. 21, 2014
Ho US 8,902,927 B2 Dec. 2, 2014
REJECTION ON APPEAL
Claims 34–36, 40–42, 46–48, 52, and 56 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Chun, Lieberman, and Ho.
Final Act. 3–7.
ANALYSIS
Appellant disputes the Examiner’s conclusion that the combined
teachings of Chun, Lieberman, and Ho teach or suggest “each of the one or
two padding sub-headers comprises a logical channel identification field
Appeal 2019-002230
Application 12/811,815
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indicating the sub-header is designated as padding and an extension field
which is set to indicate that another sub-header follows in the header,” as
recited in independent claim 34. See Appeal Br. 4–6. Appellant argues
claims 34–36, 40–42, 46–48, 52, and 56 together as a group. See id.
Consequently, we choose claim 34 as representative of the group. 37 C.F.R.
§ 41.37(c)(1)(iv). We have reviewed the Examiner’s rejections in light of
Appellant’s arguments in the Appeal Brief and the Reply Brief, as well as
the Examiner’s Answer. We are not persuaded by Appellant’s arguments.
We highlight and address specific findings and arguments below for
emphasis.
The Examiner finds that Chun teaches most of the limitations of claim
34 except for two limitations. Specifically, the Examiner relies on Chun for
teaching inserting one padding sub-header and inserting two padding sub-
headers in the header, but does not rely on Chun for teaching that the one
padding sub-header and two padding sub-headers are inserted at the
beginning of the header. See Final Act. 3–4; Ans. 8. The Examiner finds
that the combination of Chun as modified in view of Lieberman teaches
inserting the one padding sub-header and two padding sub-headers at the
beginning of the header. See Final Act. 3–4; Ans. 8. The Examiner further
finds that Chun discloses each of the one or two padding sub-headers
comprises a logical channel identification (LCID) field indicating the sub-
header is designated as padding, and that Chun also discloses an extension
field. See Final Act. 3 (citing Chun 2:25–40, 5:35–6:21); 4–5 (citing Chun
5:45–55); see also Ans. 8 (similar findings). The Examiner further finds that
Chun discloses: (1) the LCID field can indicate padding; (2) the MAC
header can include a plurality of sub-headers and LCID fields; and (3) an
extension field that indicates whether or not another MAC sub-header is
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Application 12/811,815
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subsequent to the current MAC sub-header. See Final Act. 4–5 (citing Chun
2:40–50, Fig. 4). The Examiner acknowledges that the combination of Chun
as modified in view of Lieberman fails to specifically teach that the
extension field is set to indicate that another sub-header follows in the
header, i.e., another sub-header follows the padding sub-headers. See id.
at 4. The Examiner find that Ho teaches MAC header format designs using
an LCID to indicate padding as well as values to indicate control data and
user data, and an extension (E) field to indicate additional fields are
appended. See id. at 5 (citing Ho 7:60–66, 10:1–10, Fig. 4). The Examiner
further finds that Ho discloses:
a combination and permutation of various embodiments are
possible such that the data and header formats include one or
more of control data, user data, padding data, or a combination
of . . . thus providing the motivation to have a combination of
sub headers with LCID values (in which may be used to
indicate padding, control data, user data) and an extension field
to indicate appended and subsequent sub headers.
Final Act. 5 (citing Ho 16:50–66, 17:24–30); see Ans. 9 (similar findings).
The Examiner determined that it would have been obvious to one with
ordinary skill in the art at the time of the invention to incorporate the
concept of having a combination of sub-headers and LCID values for the
sub-headers, in which an extension field indicates that another sub-header is
appended or follows as disclosed by Ho into the method of generating a
PDU involving single byte or two byte padding inserted at the beginning of
the header as taught by the combination of Chun as modified in view of
Lieberman “in order to correctly and efficiently receive and process data at
the receiver such that a receiver may determine appended sub-headers for
processing in which the first sub header and associated LCID is for
padding.” Final Act. 5–6. The Examiner explains, “in other words it would
Appeal 2019-002230
Application 12/811,815
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have been obvious to have an extension field for a beginning padding sub-
header that is used for padding, in instances when a combination of sub
headers may follow a padding sub-header that is at the beginning (as seen in
Lieberman), . . . which is . . . dependent on the system design and structure.”
Id. at 6; see also Ans. 9 (“[I]t would have been obvious to have a
combination of an LCID padding sub header and an extension field
indicating that another sub-header follows when such padding sub-header is
placed at the beginning in order [to] correctly pad header information and
communicate data to a receiver in the correct format.”).
Appellant argues that Ho fails to teach or suggest that “each of the one
or two padding sub-headers comprises a logical channel identification field
indicating the sub-header is designated as padding and an extension field
which is set to indicate that another sub-header follows in the header,” as
recited in claim 34. See Appeal Br. 5–6; Reply Br. 1–2, 4. Appellant
contends that Ho’s MAC header formats 402 and 404 do not provide any
indication regarding padding, but instead these MAC header formats are for
a control data header and user data header, respectively. See Appeal Br. 5
(citing Ho 9:54–10:32, Fig. 4); Reply Br. 2 (citing Ho 9:54–10:32, Fig. 4).
Appellant further asserts that Ho’s MAC header format 406 identifies the
header as a padding header for a MAC protocol data unit, but does not
include an extension (E) field as shown in Figure 4. See Appeal Br. 5 (citing
Ho 9:54–10:32, Fig. 4); Reply Br. 2 (citing Ho 9:54–10:32, Fig. 4).
Appellant contends that MAC header format 406 includes a reserved field
R1, which is not described by Ho as related in any manner to whether or not
another sub-header follows the header. See Appeal Br. 5 (citing Ho 9:54–
10:32, Fig. 4); Reply Br. 3. Appellant argues that the other MAC header
formats that include an extension field (i.e., MAC header formats 402, 404)
Appeal 2019-002230
Application 12/811,815
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are not for use as a padding sub-header, and are specifically designed for
other purposes. See Appeal Br. 5; Reply Br. 3.
Appellant’s arguments are not persuasive of error in the Examiner’s
rejection. Appellant’s arguments address the teachings of Ho alone, instead
of addressing the combined teachings of Chun as modified in view of
Lieberman, and further modified in view of Ho. One cannot show non-
obviousness by attacking references individually where the rejections are
based on combinations of references. In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 426 (CCPA 1981). We
understand the rejection to be based on Chun’s teaching of inserting one and
two padding sub headers into a header, where the padding sub-headers each
include the LCID field indicating padding, as modified in view of
Lieberman’s teachings, such that Chun’s padding sub-headers are inserted at
the beginning of the header, and further modified in view of Ho’s teachings,
such that Chun’s padding sub-headers include an extension field that
includes information indicating that additional sub-headers are appended in
the header. Contrary to Appellant’s arguments, the Examiner does not rely
on Ho for teaching padding headers, or headers including LCID fields
indicating padding.
In response to the Examiner’s finding that Ho teaches that further
combinations and permutations are possible and that the header format may
have any combination of fields, Appellant further argues Ho cannot be
reasonably modified in the manner suggested by the Examiner’s Answer
because it relies on impermissible hindsight relying on the present
application as a blueprint for the combination. See Reply Br. 2–3 (citing
Ans. 8). We are not persuaded by Appellant’s arguments because the
Examiner does not propose modifying the teachings of Ho. We understand
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Application 12/811,815
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the Examiner’s position to be that Ho need not teach both an LCID field
indicating padding and an extension field to indicate an upcoming field (as
argued by Appellant) in order to suggest to one with ordinary skill in the art
at the time of the invention to modify the combined teachings of Chun as
modified in view of Lieberman to include an extension field that indicates a
sub-header is appended in the header. We agree with the Examiner’s
position because Ho’s teachings to use an extension field are not limited to
use with user data headers and control data headers, as suggested by
Appellant. A prior art “reference must be considered for everything it
teaches by way of technology and is not limited to the particular invention it
is describing and attempting to protect.” EWP Corp. v. Reliance Universal
Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (emphasis omitted).
In the Reply Brief, Appellant further argues that Ho teaches away
from modifying Ho’s MAC header format for one type of data, such as
padding, with an element such as an extension field from the MAC header
format disclosed for a different type of data, such as control data or user
data, because Ho discloses the MAC header format for padding does not
include an extension field and because Ho teaches the MAC header formats
can be specialized for a particular type of data included in the PDU. See
Reply Br. 3–4 (quoting Ho 2:19–21). Appellant’s arguments are misplaced
because the Examiner does not propose modifying the teachings of Ho. See
Final Act. 4–6; Ans. 4–10. Appellant’s arguments also do not persuade us
that Ho teaches away from including an extension field in the padding sub-
headers of Chun as modified in view of Lieberman. “[A] reference will
teach away when it suggests that the developments flowing from its
disclosures are unlikely to produce the objective of the applicant's
invention.” Syntex (U.S.A.) v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir.
Appeal 2019-002230
Application 12/811,815
8
2005), citing In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Appellant
does not explain persuasively how developments flowing from Ho’s
teachings of a padding header that does not include an extension field and a
control data header and a user data header that do include an extension field
are unlikely to produce the objectives of Appellant’s invention.
For all of the foregoing reasons, we are not persuaded of error in the
Examiner’s rejection of claims 34–36, 40–42, 46–48, 52, and 56.
CONCLUSION
We affirm the Examiner’s rejection of claims 34–36, 40–42, 46–48,
52, and 56 under 35 U.S.C. § 103(a).
In summary:
Claims
Rejected 35 U.S.C. § References Affirmed Reversed
34–36, 40–
42, 46–48,
52, 56
103(a) Chun, Lieberman, Ho
34–36, 40–
42, 46–48,
52, 56

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)(1)(iv).
AFFIRMED