SHARP KABUSHIKI KAISHA

Patent Trials and Appeals Board

Sep 22, 2020

2019006694 (P.T.A.B. Sep. 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.
14/630,355 02/24/2015 Suguru TOYOKAWA 1152-0351PUS4 4423
2292 7590 09/22/2020
BIRCH STEWART KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
EXAMINER
RIMELL, SAMUEL G
ART UNIT PAPER NUMBER
3992
NOTIFICATION DATE DELIVERY MODE
09/22/2020 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):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SUGURU TOYOKAWA and MASAFUMI ARAMOTO
___________

Appeal 2019-006694
Application 14/630,355
Technology Center 3900
____________

Before JOHN A. JEFFERY, RAE LYNN P. GUEST, and ERIC B. CHEN,
Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 9–14. Original claims 1–8 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
The instant application is a continuation of US RE45,465, based on
Application No. 13/933,081, filed July 1, 2013, issued on April 14, 2015,
which is a reissue of Application No. 12/512,525, filed on July 30, 2009,
now US 8,325,677, issued on December 4, 2012, which is a continuation of
Application No. 12/440,181, filed on Mar. 5, 2009, now abandoned, which
is the national phase of PCT/JP2007/067016, filed on August 31, 2007.

CLAIMED SUBJECT MATTER
The claims are directed to a communication control method used in a
relaying intermediate node at a movement source of a mobile node when a
handover is performed. (Abstract.)
Claim 9, reproduced below, are illustrative of the claimed subject
matter, with disputed limitations in italics:
9. A communication control method used in a
relaying intermediate node at a movement source of a mobile
node in a case that a handover is performed, the communication
control method comprising:
forwarding a user data to a relaying intermediate node at
a movement destination of the mobile node, the user data
having been received from an anchor node, the user data being
addressed to the mobile node, and the user data being stored in

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Sharp
Kabushiki Kaisha. (Appeal Br. 1.)
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a buffer of the relaying intermediate node at the movement
source of the mobile node;
continuing the forwarding of the user data as long as the
buffer has not been emptied; and
sending a transfer cancel notification to the relaying
intermediate node at the movement destination of the mobile
node.

REFERENCES
Name Reference Date
Toyokawa et al. US RE45,465 April 14, 2015
Toyokawa et al. US 2009/0290529 A1 Nov. 26, 2009
O’Neill et al. US 2003/0224758 A1 Dec. 4, 2003

REJECTIONS
Claims 9–14 stand rejection under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over claims 9–12
of commonly owned Toyokawa (US RE45,465).2
Claims 9–14 stand rejected under 35 U.S.C. § 102(a)(1) as being
anticipated by Toyokawa (US 2009/0290529 A1).3
Claims 9–14 stand rejected under 35 U.S.C. § 102(a)(1) as being
anticipated by O’Neill.

2 Appellant has submitted a Terminal Disclaimer on May 3, 2018. (Appeal
Br. 6.) According, the rejection is moot.
3 Appellant has not presented any substantial arguments with respect to the
rejection of claims 9–14 under 35 U.S.C. § 102(a)(1) as being anticipated by
Toyokawa. Instead, Appellant argues that Toyokawa does not qualify as
prior art. (Appeal Br. 15.) Thus, any such arguments are deemed to be
waived.
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OPINION
Toyokawa (US 2009/0290529 A1) as § 102(a)(1) Prior Art—Bauman
Continuation Application
Initially, we note that Appellant has challenged the Examiner’s initial
classification of the instant application as a Bauman type continuing
application, rather than a continuation reissue application, in the form of a
Petition to the Director under 37 C.F.R. § 1.182 three times. The first two
Petitions, filed April 19, 2017, and July 21, 2017, were dismissed on
May 22, 2017, and November 20, 2017, respectively. The most recent
petition, filed January 19, 2018 after the Appeal Brief was filed, was denied
on December 19, 2018. The rationale for not granting the conversion
request has been consistent. In particular, the December 19, 2018 Petition
Decision stated that “[r]equiring indicia of a reissue upon filing is necessary
[pursuant to MPEP § 1451] to ensure that the application is evaluated for
compliance with the appropriate law and regulations, assigned to an
appropriate examiner, and subjected to the appropriate procedures for a
reissue (as opposed to a regular) application” (Petition Dec. 6) and Appellant
provided “no indicia of a reissue were present upon filing of this application
on February 24, 2015, and the application thus did not comply with the
regulations applicable to reissue applications” (id. at 7).
Appellant’s Appeal Brief presents further arguments with respect to
the conversion of the application to continuation reissue application, as
follows:
In the present case, Appellant desires a reissue application with
its earlier effective filing date and is perfectly willing to accept
reissue restrictions. Indeed, Applicant has made every effort
possible to accept such reissue application restrictions as
detailed above. But such efforts have been thwarted by the
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Decisions on Petition and despite Applicants repeated filings all
of which indicate an intention and willingness to accept reissue
restrictions . . . It is only Applicant’s representatives inadvertent
error upon filing, corrected with later filings, that is being used
by the USPTO to confine this application to a “Bauman”
Continuation thus effectively denying Applicants ability to seek
protection under the patent laws for the full measure of
protection there afforded.
(Appeal Br. 12–13.) However, certain procedural decisions made during the
examination proceeding (e.g., compliance with the six reissue indicia
pursuant to MPEP § 1451) are not appealable, and thus, this issue is not
before us and we express no opinion as to its propriety. See In re
Hengehold, 440 F.2d 1395, 1403 (CCPA 1971) (“There are a host of various
kinds of decisions an examiner makes in the examination proceeding—
mostly matters of a discretionary, procedural or nonsubstantive nature—
which have not been and are not now appealable to the board or to this court
when they are not directly connected with the merits of issues involving
rejections of claims, but traditionally have been settled by petition to the
Commissioner.”)
Moreover, MPEP § 1451 lists six such indicia that a continuing
reissue application is filed, namely (1) a 37 C.F.R. § 1.175 oath/declaration,
which is not merely a copy of the parent’s reissue oath/declaration; (2) a
specification and/or claims in proper double column reissue format per 37
C.F.R. § 1.173; (3) amendments in proper format per 37 C.F.R. § 1.173, i.e.,
amending the claims vis-à-vis the claims of the patent seeking to be
reissued; (4) a 37 C.F.R. § 3.73 statement of assignee ownership and
consent; (5) a correct transmittal letter identifying the application as a
reissue filing under 35 U.S.C. § 251; and (6) an identification of the
application as being (a) a reissue continuation of the parent reissue
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application; (b)(i) a continuation of the parent reissue application, and (ii) an
application to reissue the patent; or (c) equivalent language. Notably, indicia
(6) most clearly distinguishes these identifications from merely stating that
the application is a continuation of the parent reissue application, and gives
nine examples of acceptable identifications of reissue continuing
applications as opposed to “Bauman-type” continuation applications. What
all of these indicia have in common is the identification of an attempt to file
a reissue application under 35 U.S.C. § 251 as opposed to a utility
application under 35 U.S.C. § 1.111(a), merely claiming a priority benefit to
a reissue application. Although the MPEP does not specify how many of the
six enumerated indicia must be present to identify a reissue continuation
application, the MPEP nonetheless states explicitly that when there are no
such indicia on filing, a continuing application of a reissue application will
be considered a “Bauman-type” continuing application. MPEP § 1451; see
also Reissue Filing Guide for Applications Filed on/after September 16,
2012.4 We note that Appellant has not identified any error in the Petition
Decisions’ findings that none of the indicia that Appellant was filing a
continuing reissue application enumerated in MPEP § 1451 were present at
the time of filing.5

4www.uspto.gov/sites/default/files/forms/uspto_reissue_ads_guide_Sept201
4.pdf
5 Appellant’s argument that the claim of priority to a great grandparent
application “may only be valid in a reissue application” is not persuasive
because identification of the chain of priority designation would also be
required to properly file a non-reissue, Bauman-type continuation
application claiming priority to a reissue application. Accordingly, reciting
the applications that led to the reissue application being relied upon, without
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Because we decline to disturb the procedural posture set forth in the
Petition Decisions in this case, we also affirm the anticipation rejection
based on the Examiner’s finding that Toyokawa (US 2009/0290529 A1) is
prior art.

§ 102 Rejection—O’Neill
We are persuaded by Appellant’s arguments (Reply Br. 4–5) that
O’Neill does not describe the limitation “sending a transfer cancel
notification to the relaying intermediate node at the movement destination of
the mobile node,” as recited in independent claim 9.
The Examiner found that the absence of tunnel 710, as illustrated in
Figure 8 of O’Neill, in comparison to Figure 7 of O’Neill, corresponds to the
limitation “sending a transfer cancel notification to the relaying intermediate
node at the movement destination of the mobile node.” (Final Act. 10–11;
see also Ans. 20–21.) In particular, the Examiner found that “[t]his
[cancelled tunnel 710] would occur as a result of messaging between home
node 632 and the relaying intermediate node 605,” with a citation to
paragraph 27 of O’Neill. (Final Act. 10–11(emphasis added).) We do not
agree with the Examiner’s findings.
O’Neill relates to “enabling the use of multiple uplinks and a
downlink corresponding to a mobile node at the same time.” (¶ 2.)
Figures 7–9 of O’Neill illustrates “signaling and operations associated with
the establishment of forward and reverse tunnels” (¶¶ 36–38), which
includes mobility agent node 632, access nodes 605, 605', 605", and end

more, is not one of the indicia for demonstrating an intent to file a reissue
application enumerated in MPEP § 1451.
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node 604 (¶ 53). In particular, Figure 7 of O’Neill illustrates both outgoing
tunnel 710 and incoming tunnel 711 from mobility agent node 632 to access
node 605. However, Figure 8 of O’Neill illustrate only tunnel 711 from
mobility agent node 632 to access node 605. In Figure 8, access node 605
represents the relaying intermediate node at the movement source of the
mobile node, not “the relaying intermediate node at the movement
destination of the mobile node” (i.e., node 605') to which the claims recite
the “transfer cancel notification” is sent.
Moreover, O’Neill explains that “[t]unnels between an HA [Home
Agent, i.e. home node] and a CoA [Care-of-Address] corresponding to a
mobile node [can be bidirectional], incoming only, outgoing only or
canceled” and “[t]he modification of the tunnel type indicator flag can be in
response to a registration message used to trigger modification of the tunnel
information, said registration message including tunnel end node addresses
corresponding to the ends of the tunnel which is to have its registration
information modified.” (¶ 27.)
Although the Examiner cited to: (i) the differences between Figures 7
and 8 of O’Neill, including the absence of tunnel 710, and; (ii) the
explanation in O’Neill that tunnels between mobility agent node 632 and end
node 604 can be “canceled,” the Examiner has provided insufficient
evidence to support a finding that O’Neill teaches the limitation “sending a
transfer cancel notification to the relaying intermediate node at the
movement destination of the mobile node.” In particular, paragraph 27 of
O’Neill is silent respect to any “notification” resulting in the cancellation of
tunnel 710, much less any “notification” sent to access node 605' in Figure 8
or node 605" in Figure 9 (i.e., the relaying intermediate nodes at the
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movement destination of the mobile node in each figure, respectively),
resulting in the cancellation of forwarding tunnel 710, as required by
claim 9. Thus, on this record, the Examiner has not demonstrated that
O’Neill teaches the limitation “sending a transfer cancel notification to the
relaying intermediate node at the movement destination of the mobile node.”
While such limitation of “sending a transfer cancel notification to the
relaying intermediate node at the movement destination of the mobile node”
may be obvious over O’Neill under 35 U.S.C. § 103, the issue of
obviousness is not before us.
Accordingly, we are persuaded by Appellant’s arguments as follows:
despite [O’Neill’s] alleged indication that “tunnels may be
cancelled” and the disappearance of tunnels between Fig. 7 and
Fig. 8, O’Neill does not indicate how such cancelation is
achieved. Certainly, O’Neill does not “identically” disclose,
“arranged as in the claims”, a transfer cancel notification to the
relaying intermediate node at the movement destination of the
mobile node. The Examiner's speculation regarding “messaging
between home node 632 and the relaying intermediate node
605” even if shown, would be different from what is claimed.
(Reply Br. 4–5 (footnote omitted).)
Thus, we do not sustain the rejection of independent claim 9 under 35
U.S.C. § 102(a)(1). Claims 10 and 11 depend from claim 9. We do not
sustain the rejection of claims 10 and 11 under 35 U.S.C. § 102(a)(1) for the
same reasons discussed with respect to claim 9.
Independent 12 recites limitations similar to those discussed with
respect to claim 9. We do not sustain the rejection of claim 12, as well as
dependent claims 13 and 14, for the same reasons discussed with respect to
claim 12.

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CONCLUSION
The Examiner’s decision rejecting claims 9–14 under 35 U.S.C.
§ 102(a)(1) is affirmed.

DECISION
In summary:
Claims
Rejected
35 U.S.C.
§
Basis Affirmed Reversed
9–14 102(a)(1) Toyokawa 9–14
9–14 102(a)(1) O’Neill 9–14
Overall
Outcome
9–14

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