Mitsubishi Electric Corporation

Patent Trials and Appeals Board

May 22, 2020

14846125 - (D) (P.T.A.B. May. 22, 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.
14/846,125 09/04/2015 Keiko TADA 459560US20 DIV 4879
22850 7590 05/22/2020
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
CHOUDHURY, FAISAL
ART UNIT PAPER NUMBER
2478
NOTIFICATION DATE DELIVERY MODE
05/22/2020 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEIKO TADA, MITSURU MOCHIZUKI, MIHO MAEDA, and
YASUSHI IWANE
Appeal 2019-002557
Application 14/846,125
Technology Center 2400
Before JEAN R. HOMERE, MICHAEL J. STRAUSS, and
DAVID J. CUTITTA II, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 4 and 7–12, which are all of the claims
pending in this appeal. See Final Act. 1, Appeal Br. 2. Claims 1–3, 5, and 6

1 We refer to the Specification, filed September 4, 2015 (“Spec.”); Final
Office Action, mailed February 5, 2018 (“Final Act.”); Appeal Brief, filed
September 5, 2018 (“Appeal Br.”); Examiner’s Answer, mailed December
20, 2018 (“Ans.”); and Reply Brief, filed February 6, 2019 (“Reply Br.”).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Mitsubishi Electric
Corporation. Appeal Br. 1.
Appeal 2019-002557
Application 14/846,125
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are canceled. Claims App. We have jurisdiction under 35 U.S.C. § 6(b). An
oral hearing was held in this appeal on May 13, 2020. A transcript of the
oral hearing is being prepared and will be entered into the record in due
course.
We AFFIRM.
Summary of the disclosure
According to Appellant, the claimed subject matter relates to a Long
Term Evolution (LTE) communication system (i.e., cellular
communications). Spec. ¶ 1. Using persistent scheduling, upon detecting
silence, a mobile terminal is allocated to a channel exclusive for the silent
period and previously allocated resources are released. Abstract.
Representative claim
Claim 1, reproduced below, is representative of the claimed subject
matter:
4. A mobile communication system for performing radio
communication, the mobile communication system comprising:
a mobile terminal; and
a base station including circuitry configured to
allocate a radio resource with persistent scheduling to the
mobile terminal by using a control signal of an upper
layer,
wherein the circuitry is configured to perform release of the
radio resource using a control signal of a lower layer.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Wang
Lee
US 2008/0101286 A1
US 2009/0219868 A1
May 1, 2008
Sept. 3, 2009
Appeal 2019-002557
Application 14/846,125
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“Scheduling of LTE UL VoIP”, Nokia, 3GPP TSG-RAN WG2
Meeting #56bis, R2-070020, vol. RAN WG2, No. Sorrento,
Italy, XP 050133137A, January 15–19, 2007, 4 pages (“Nokia”)
The Examiner’s Rejections
The Examiner rejects claims 4 and 7–11 under 35 U.S.C. § 103(a) as
being unpatentable over Nokia and Lee. Final Act. 3–5.
The Examiner rejects claim 12 under 35 U.S.C. § 103(a) as being
unpatentable over Nokia, Lee, and Wang. Final Act. 5–6.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. Arguments Appellant could have made but chose not to make
are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). We disagree
with Appellant that the Examiner erred and adopt as our own the findings
and reasons set forth by the Examiner. We add the following primarily for
emphasis.
The Examiner finds Nokia discloses the limitations recited by claim 4,
including allocating a radio resource using a control signal of an upper layer
(Nokia’s layer 3 (L3) radio resource control (RRC) signaling), but “fails to
explicitly disclose . . . release of the radio resource using a control signal of
a lower layer.” Final Act. 4. The Examiner finds Lee’s disclosure that a
“radio-resource allocation release completion message may be transmitted
via a control signal of the first or second layer” cures the noted deficiency of
Nokia by teaching releasing of the radio resource using a control signal of a
lower layer. Id. (citing Lee ¶¶ 6–7, 87, 90). According to the Examiner, the
reason to combine the references is to release resources using the lower
layer. Id.
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Appellant contends the rejection is improper because:
i) “nothing in Nokia discloses or suggest[s] that the release
request would be transmitted using anything other than [L3]
RRC signaling” (Appeal Br. 5);
ii) “Lee at best only describes release of radio resources using
L1/L2 signaling, and does not disclose or suggest allocating ‘a
radio resource with persistent scheduling to the mobile terminal
by using a control signal of an upper layer,’ and releasing ‘the
radio resource using a control signal of a lower layer’” (id. at 5–
6 (emphasis omitted)); and
iii) Because “Nokia describes using [L3] RRC signaling . . . in
order to ‘reduce the amount of L1/L2 control signaling or even
get rid of it completely,’” the reference teaches away from
incorporating Lee’s use of L1/L2 to release resources, rendering
their combination improper (id. at 6–7).
The Examiner responds, finding Nokia’s stated advantages of using
RRC (i.e., L3) signaling rather than L1/L2 signaling is disclosed in
connection with allocation of resources, not in connection with the release of
resources. Ans. 6. Furthermore, according to the Examiner, although
“Nokia at section 2.3 also discloses . . . releasing [a] resource, [it] does not
expressly disclose whether an upper layer or lower layer signal is also being
used for releasing resource.” Id.
Appellant’s contentions are unpersuasive of reversible Examiner
error. In particular, Appellant’s contention (i) arguing Nokia fails to teach
using a lower layer to release a radio resource (Appeal Br. 5) fails to address
the Examiner’s finding that Lee, not the argued Nokia, teaches the disputed
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limitation. Similarly, Appellant’s contention (ii) that Lee fails to teach
allocating a radio resource using a control signal of an upper layer and
releasing the radio resource using a control signal of a lower layer (id. at 5–
6) fails to address the Examiner’s finding that Nokia teaches the use of L3
(i.e., RRC) signaling to allocate a resource. Thus, Appellant’s arguments
ignore that the rejection is based, not on Nokia or Lee separately, but on the
combination of Nokia and Lee. “Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references.” In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA
1981)).
We are also unpersuaded of error by Appellant’s contention (iii)
alleging “one of ordinary skill is discouraged by Nokia from using the L1/L2
signaling described in Lee in order reduce signaling overhead and simplify
allocation and release of resources, which is described by Nokia to be
beneficial.” See Appeal Br. 6. As explained by the Examiner, Nokia
discloses advantages (and, we note, disadvantages) of using RRC (i.e., L3)
signaling to allocate radio resources, but does not include in the discussion
advantages of using RRC signaling to release radio resources. Ans. 6.
Appellant fails to provide sufficient evidence to persuade us that Nokia’s
preference for using L1/L2 (i.e., lower layer) signaling for resource
allocation would also apply to the release of resources.
Furthermore, Nokia discloses both advantages and disadvantages of
using L3 signaling. For example, while listing the “Pros” (i.e., advantages)
of using L3 RRC signaling for resource allocation to include reduced
signaling overhead and simplicity, Nokia also lists “Cons” (i.e.,
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disadvantages) including wasted resources, the need for a discontinuous
transmission (DTX) detector at the base station (i.e., Node B), transport
block (TB) size requirements, and maximum (i.e., “Max”) VoIP capacity
limitations. Nokia § 2.2. Thus, rather than discouraging the use of L1/L2
signaling, Nokia discloses factors that might result in a qualified preference
for using L3 RRC signaling instead of L1/L2 signaling. Even if Nokia had
disclosed only advantages of L3 RRC signaling, merely “express[ing] a
preference” falls short of discouraging one of ordinary skill in the art from
following a particular path. In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir.
1997). To teach away, the prior art must “criticize, discredit, or otherwise
discourage the solution claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004). Teaching an alternative method does not teach away from the
use of a claimed method. See In re Dunn, 349 F.2d 433, 438 (CCPA 1965);
see also Ex parte Shuping, No. 2008-0394, 2008 WL 336222, at *2 (BPAI
2008) (unpublished) (“‘[T]eaching a way is not teaching away.’” (citation
omitted)). At most, Nokia discloses certain advantages to using L3
signaling for resource allocation that (i) may not be equally applicable to the
release of resources and, in any case (ii) merely expresses a qualified
preference for its use under certain conditions that does not amount to the
argued teaching away.
For the reasons discussed above, Appellant’s contentions are
unpersuasive of reversible Examiner error. Accordingly, we sustain the
rejection of independent claim 4 under 35 U.S.C. § 103(a) and, for the same
reasons, the rejection of independent claims 9 and 10 together with the
rejections of dependent claims 7, 8, 11, and 12 which are not argued
separately with particularity.
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CONCLUSION
The Examiner’s rejections are affirmed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
4, 7–11 103(a) Nokia, Lee 4, 7–11
12 103(a) Nokia, Lee, Wang 12
Overall
Outcome

4, 7–12

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