Ex Parte Blankenship et alDownload PDFPatent Trial and Appeal BoardJul 21, 201612861635 (P.T.A.B. Jul. 21, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/861,635 08/23/2010 74365 7590 07/25/2016 Slater Matsil, LLP 17950 Preston Road, Suite 1000 Dallas, TX 75252 FIRST NAMED INVENTOR Yufei Blankenship 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 ATTORNEY DOCKET NO. CONFIRMATION NO. HW 81358552US02 2420 EXAMINER MARCELO, MEL VIN C ART UNIT PAPER NUMBER 2463 NOTIFICATION DATE DELIVERY MODE 07/25/2016 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): uspatent@huawei.com docketing@slatermatsil.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YUFEI BLANKENSHIP and JIANMIN LU Appeal2015-002098 Application 12/861,635 Technology Center 2400 Before ALLEN R. MacDONALD, HUNG H. BUI, and MICHAEL M. BARRY, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL Appeal2015-002098 Application 12/861,635 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134(a) from an Examiner's rejection of claims 1, 5-14, 16, 19, and 20. Final Act. 1. Claims 2--4, 15, 17, and 18 are cancelled. App. Br. 27-28. We have jurisdiction under 35 U.S.C. § 6(b). Exemplary Claim Exemplary claim 1 under appeal reads as follows (emphasis and formatting added): 1. A method for transmitting data to a user equipment, the method comprising: [(A)] wirelessly transmitting a first data packet from a relay node, the relay node being in a first state; and [(B)] entering the relay node to a second state different from the first state, [(i)] wherein the second state is an idle state and [(ii)] wherein the relay node falls back to a user equipment mode in the second state, [(iii)] wherein the relay node enters the idle state after transmitting a second data packet from the relay node to the user equipment, [ (a)] the second data packet comprising information that the relay node is to enter the idle state and will become active again after a period of time. 2 Appeal2015-002098 Application 12/861,635 Rejections The Examiner rejected claims 1, 5-11, 13, 14, 16, and 19 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Yu et al. (US 2010/0323614 Al, pub. Dec. 23, 2010), Min et al. (US 2009/0036050 Al, pub. Feb. 5, 2009), and Research in Motion ("RIM"), Type-II Relay Reference Signal Transmission and UE Association, publication June 29- July 3, 2009 (hereinafter "Rl-092419"). 1 Final Act. 4--9. The Examiner rejected claims 12 and 20 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Yu, Min, and Senarath et al. (US 2010/0248619 Al, pub. Sept. 30, 2010). 2 Final Act. 9-10. 1 Separate patentability is not argued for claims 5-11, 13, 14, 16, and 19. As to claims 13 and 16, Appellants merely repeat for these claims (App. Br. 11- 24) the arguments directed to claim 1. While repetition of an argument for patentability of a first claim as an argument for a second claim might outwardly appear to be a separate argument, such a repeated argument is not in fact an argument for "separate patentability." See 37 C.F.R. 41.37( c )(1 )(iv) and In re Lovin, 652 F.3d 1349, 1351 (Fed. Cir. 2011) (sustaining the requirement for appellants to articulate substantive arguments for individual claims to be treated separately). Except for our ultimate decision, these claims are not discussed further herein. 2 Separate patentability is not argued for claims 12 and 20. Rather, Appellants address these claims only by referencing the arguments for claims 1and16 from which they depend. Thus, the rejection of these claims turns on our decision as to claim 1. Except for our ultimate decision, these claims are not discussed further herein. 3 Appeal2015-002098 Application 12/861,635 Appellants ; Contentions 1. Appellants contend that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because: [I]n looking at the Examiner's assertions, it appears to Appellants that the Examiner is asserting that the functionalities of Yu's relay node and Min's mobile station are so close that it would be obvious to translate every single other functionality of Min's mobile station (such as Min's idle mode signaling) to Yu's relay node. However, after reviewing the evidence on which the Examiner has assertedly based this conclusion, Appellant [sic] respectfully submits that this overly broad conclusion is simply unwarranted given the actual disclosures of the references and claim 1 is not obvious over Yu in view of Min and Rl-092419. App. Br. 5. 2. Appellants also contend that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because: Looking next at the Examiner's assertion that "Yu's teaching that the RN [relay node] can perform some procedures similar to a mobile station would have led one of ordinary skill to adopt other mobile station functionalities to the RN," Appellant [sic] respectfully submits that, for this to be a basis for an obviousness rejection, then there must be "some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention." M.P.E.P. § 2131.0l(III), emphasis added. App. Br. 9. 4 Appeal2015-002098 Application 12/861,635 Issue on Appeal Did the Examiner err in rejecting claim 1 as being obvious? ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We disagree with Appellants' conclusions. Except as noted below, we adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner's Answer in response to Appellants' Appeal Brief. We concur with the conclusions reached by the Examiner. We highlight the following additional points. As to Appellants' above contention 1, we disagree. Contrary to Appellants' argument, the rejection on appeal does not "translate every single other functionality of Min's mobile station ... to Yu's relay node." App. Br. 5. The Examiner correctly points out: Appellant's [sic] claimed subject matter is not directed to a relay node with every single other functionality of the mobile station. The current rejection is directed to a single functionality (i.e. not every single other functionality) corresponding to Min's mobile station idle mode signaling (i.e. that the MS is to enter idle state and will become active again after a period of time) being adopted by the relay node which addresses the claimed subject matter. Ans. 2. Also, the Examiner correctly points out that it is known (Yu i-f 61) that a relay node (RN) can perform functions similar to a mobile station (MS). Non-Final Act. 4, Ans. 4. Appellants' argument is a nonresponsive straw man argument that addresses an argument not made by the Examiner 5 Appeal2015-002098 Application 12/861,635 in the rejection, and as such it fails to demonstrate error in the Examiner's findings and reasoning. An Examiner error cannot be shown based on such inherently unpersuasive misstatements of the record. As to Appellants' above contention 2, we disagree. As we noted above, the Examiner correctly points out that it is known (Yu i-f 61) that a relay node (RN) can perform functions similar to a mobile station (MS). Non-Final Act. 4, Ans. 4. While Appellants acknowledge the Court's decision in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398 (2007) (App. Br. 9), Appellants cite the venerable teaching-suggestion-motivation test (Id.) as being required, without acknowledging that the Court specifically repudiated that such a "teaching or suggestion" is required to show obviousness. KSR, 550 U.S. at 415 ("We begin by rejecting the rigid approach of the Court of Appeals."). Rather, the requirement is only that the Examiner show "the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." KSR, 550 U.S. at 406 (quoting 35 U.S.C. § 103) (emphasis added); id. at 418 ("[T]he analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ."). We conclude that the Examiner articulates just such a showing in the rejection from which this appeal is taken. Non-Final Act. 4---6. Further, Appellants' argument is at odds with the Court's explicit guidance in KSR: If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and 6 Appeal2015-002098 Application 12/861,635 a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. KSR, 550 U.S. at 417. Additionally, Appellants have not presented evidence sufficient to show that combining the prior art was "uniquely challenging or difficult for one of ordinary skill in the art" or "represented an unobvious step over the prior art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19). Nor have Appellants presented evidence sufficient to show that any of the incorporations yielded more than expected results. CONCLUSIONS (1) The Examiner has not erred in rejecting claims 1, 5-14, 16, 19, and 20 as being unpatentable under 35 U.S.C. § 103(a). (2) Claims 1, 5-14, 16, 19, and 20 are not patentable. DECISION The Examiner's rejections of claims 1, 5-14, 16, 19, and 20 are 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)(l )(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation