Ex Parte Chen et alDownload PDFPatent Trial and Appeal BoardApr 30, 201311619833 (P.T.A.B. Apr. 30, 2013) Copy Citation 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. 11/619,833 01/04/2007 Ning Chen WM41392TS 8179 65201 7590 04/30/2013 GAZDZINSKI & ASSOCIATES, P.C. 16644 WEST BERNARDO DRIVE SUITE 201 SAN DIEGO, CA 92127 EXAMINER EISNER, RONALD ART UNIT PAPER NUMBER 2644 MAIL DATE DELIVERY MODE 04/30/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte NING CHEN, NATARAJAN EKAMBARAM, and JEFFREY KEATING ____________ Appeal 2010-011449 Application 11/619,833 Technology Center 2600 ____________ Before MARC S. HOFF, DENISE M. POTHIER, and BRUCE R. WINSOR, Administrative Patent Judges. POTHIER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-20. App. Br. 1.1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Throughout this opinion, we refer to the Appeal Brief (App. Br.) filed May 3, 2010, the Examiner’s Answer (Ans.) mailed May 27, 2010, and the Reply Brief (Reply Br.) filed July 27, 2010. Appeal 2010-011449 Application 11/619,833 2 Invention Appellants’ invention relates to a Multimedia Broadcast Multicast Service (MBMS) user detection system. See Abstract. Claim 1 is reproduced below with certain disputed limitations emphasized: 1. A method for detecting a plurality of Multimedia Broadcast Multicast Service (MBMS) service requests, comprising: sending a user feedback request message in a first polling interval, where the user feedback request message comprises a plurality of available MBMS services and a corresponding plurality of multiplex signaling codes such that a unique multiplex signaling code is assigned to each available MBMS service; and detecting a plurality of user feedback messages in the first polling interval, where each of the plurality of user feedback messages (a) requests an MBMS service and (b) is sent using a multiplex signaling code assigned to the requested MBMS service in the user feedback request message. The Examiner relies on the following as evidence of unpatentability: Boenke US 3,836,888 Sept. 17, 1974 Ishii US 5,058,201 Oct. 15, 1991 Gorsuch US 6,388,999 B1 May 14, 2002 Lee US 2004/0008657 A1 Jan. 15, 2004 Goss US 6,704,766 B1 Mar. 9, 2004 Laroia US 2005/0124344 A1 June 9, 2005 Kyung US 2007/0025350 A1 Feb. 1, 2007 (filed Oct. 6, 2004) Dalsgaard US 2007/0254656 A1 Nov. 1, 2007 (filed May 1, 2007, and claiming priority to Provisional App. No. 60/796,767, filed May 1, 2006) Appeal 2010-011449 Application 11/619,833 3 The Rejections Claims 1, 4-6, 9, and 12-14 are rejected under 35 U.S.C. § 103(a) as unpatentable over Lee, Kyung, and Ishii. Ans. 4-12. Claims 2, 3, 10, 11, 15-17, 19, and 20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Lee, Kyung, Ishii, and Laroia. Ans. 12-21. Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over Lee, Kyung, Ishii, and Gorsuch. Ans. 21-22. Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over Lee, Kyung, Ishii, and Goss. Ans. 22-23. Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable over Lee, Kyung, Ishii, Laroia, Dalsgaard, and Boenke. Ans. 23-25. OBVIOUSNESS REJECTION OVER LEE, ISHII, AND KYUNG Regarding illustrative claim 1, the Examiner maps the recited user feedback request message to Lee’s cell broadcast center (CBC) broadcast at step 303, where the MBMS services are the MBMS service-related information and the multiplex signaling codes are the identifier of the selected MBMS service. Ans. 4-5 (citing (¶ 0045; Fig. 3)), 32. The Examiner further maps the recited user feedback request to the request at step 304, which includes an identifier of the selected MBMS service. Ans. 5. For the “unique” and “polling interval” limitations, the Examiner relies on Kyung (Ans. 5-6) and Ishii (Ans. 6-7), in combination, with Lee respectively. Appellants argue that the combination of cited references fails to teach sending a user feedback request message that includes both a list of available MBMS services and a corresponding list of multiplex signaling codes. App. Appeal 2010-011449 Application 11/619,833 4 Br. 5-10. In Appellants’ view, Kyung teaches sending a flow identifier indicative of the broadcast, multicast service to a mobile terminal and generating a public long code mask, but not broadcasting the multiplex signaling codes in a user feedback request message sent to the users. App. Br. 7 (citing Kyung ¶¶ 0023-27). Appellants also contend that the separately recited first polling interval requirement and multiplex signaling code requirement are not disclosed in Lee, Ishii, or any other reference. App. Br. 9-10. Appellants further argue that there no motivation to combine the cited references, and the Examiner has only presented conclusory statements in this regard. App. Br. 6, 10-11. ISSUES (1) Under § 103, has the Examiner erred in rejecting claim 1 by finding that Lee, Ishii, and Kyung collectively would have taught or suggested sending a user feedback request message in a first polling interval that comprises available MBMS services and multiplex signaling codes such that a unique multiplex signaling code is assigned to each available MBMS service? (2) Has the Examiner provided a reason supported by some rational underpinning to combine Lee, Ishii, and Kyung and explain the Examiner’s obviousness conclusion? ANALYSIS Claims 1, 4-6, 9, and 12-14 We begin by construing a key disputed limitation of claim 1, which calls for a user feedback request message that “comprises a plurality of Appeal 2010-011449 Application 11/619,833 5 available MBMS services and a corresponding plurality of multiplex signaling codes.” This limitation recites what the message comprises or what the data or information within the message represents. Such information generally constitutes non-functional descriptive material as it does not further limit the claimed invention either functionally or structurally. Additionally, the recited MBMS service is not being implemented in claim 1. Rather, a request for a MBMS service is sent by a detected user feedback message using a multiplex signaling code assigned to the requested MBMS service. As such, no functional relationship exists between the MBMS service and the recited method steps such that the claimed steps have been given a property they would not have had if either the steps or the information changed. Non-functional descriptive material does not patentably distinguish over prior art that otherwise renders the claims unpatentable. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see also Ex parte Nehls, 88 USPQ2d 1883, 1887-89 (precedential) (discussing cases pertaining to non-functional descriptive material). However, to the extent that the recitations to the MBMS services and multiplex signaling codes are given patentable weight, we find that Lee and Kyung collectively teach the disputed limitations. To repeat, the Examiner finds that the user feedback request message is taught by Lee as the broadcast at step 303. Ans. 4 (citing ¶ 0045; Fig. 3). The Examiner additionally maps the recited available MBMS services to the described MBMS service-related information and the recited multiplex signaling codes to the identifiers of the selected MBMS service. Ans. 4-5 (citing ¶ 0045; Fig. 3). Appellants do not challenge that Lee teaches a user feedback request message having MBMS services. App. Br. 5-10. Instead, Appeal 2010-011449 Application 11/619,833 6 Appellants contend that none of the references teaches the recited “multiplex signaling codes.” See id.; Reply Br. 2-6. Appellants specifically contend that the identifiers discussed in Lee cannot be “multiplex signaling codes” and that the Examiner’s construction is overly broad, ignoring the “multiplex” feature. Reply Br. 2. For support, Appellants refer to the disclosure, arguing that the recited multiplex signaling codes must be a predetermined frequency and/or code-based signaling scheme used to format or modulate the message and to allow for multiplexing responses. Reply Br. 3-5 (citing Figs. 3-4; ¶¶ 0015, 0017, 0019). We disagree. First, given that dependent claim 2 recites the details of the multiplex signaling codes, such as comprising signaling information defined by frequency/code combinations, claim 1 must be broader in scope. That is, [t]he doctrine of claim differentiation creates a presumption that each claim in a patent has a different scope. The difference in meaning and scope between claims is presumed to be significant to the extent that the absence of such difference in meaning and scope would make a claim superfluous. Free Motion Fitness, Inc. v. Cybex Int’l, Inc., 423 F.3d 1343, 1351 (Fed. Cir. 2005) (citations omitted) (internal quotation marks omitted). Second, the disclosure (see generally Spec.) does not define the phrase, “multiplex signaling codes,” such the recited term has a special meaning. Nor have Appellants demonstrated that such a phrase has a particular meaning to an ordinarily skilled artisan. The cited portions of the disclosure (Reply Br. 3-5) only provide particular embodiments of the multiplex signaling code. While these portions provide us with an understanding of the recited signaling code, we will however not import or read these examples into claim 1, for as discussed above, claim 1 is broader Appeal 2010-011449 Application 11/619,833 7 in scope. See SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Third and concerning the specifically disputed term (Reply Br. 2-5), “multiplex,” we once again find this term merely describes the information within the code and fails to recite actually “multiplexing.” Thus, we find the phrase, “multiplex,” within the recitation “multiplex signaling code,” is either (1) non-functional descriptive material as it does not further limit the claimed invention either functionally or structurally or (2) intended use. Thus, Lee need not demonstrate the code is multiplexed or provide for multiplexing of the user feedback request message. Nonetheless, Lee teaches combining MBMS service-related information into a signal message (Lee ¶ 0045), suggesting the identifiers are also combined in a single message as discussed below in more detail. Given the above discussion, we disagree with Appellants that the recited multiplex signaling code in claim 1 “specifies a predetermined frequency and/or code-based signaling scheme that is used to format or modulate the user feedback message to allow multiplexing of more than one feedback response so that there is no interference with other user feedback messages.” Reply Br. 3-4. We find that a broad, but reasonable construction of the phrase, “multiplex signaling codes” assigned to each available MBMS service, includes MBMS service identifiers or values. The Examiner states, “[t]he presence of a service identifier in service request 304 implicitly discloses that the same identifier is present in CBC Broadcast 303.” Ans. 5 (emphasis omitted). We find this position reasonable. That is, Lee teaches the user entity (e.g., UE 101) selects the desired MBMS service based on the received MBMS service-related Appeal 2010-011449 Application 11/619,833 8 information and the user entity transmits the identifier of the selected MBMS service. See Lee ¶ 0045. This suggests that the MBMS service- related information with the user feedback request message (e.g., broadcast 303) includes service identifiers for each MBMS service broadcasted. As such, Lee teaches or suggests a user feedback request message that includes identifiers, which, given the broadest reasonable construction, corresponds to multiplex signaling codes. Also, contrary to Appellants’ assertion (App. Br. 8), we disagree that the Examiner is confusing the user feedback request messages with the user feedback messages. Claim 1 further recites that each multiplex signaling code is “a unique multiplex signaling code . . . assigned to each available MBMS service.” Appellants contend that neither Lee nor Kyung teaches this feature. This again is considered non-functional descriptive material. Even so, the Examiner relies upon Kyung to teach this “unique” feature. Ans. 5-6. In particular, Kyung teaches flow identifiers indicative of broadcast/multicast services and that each service has its own service identifier (which is also suggested to be a flow identifier). Kyung ¶¶ 0005, 0015, 0029. Given this teaching, Kyung teaches each service has its own or “unique” service identifier (e.g., a multiplex signaling code). See Ans. 6.2 Also, accounting for the creative steps and inferences that an ordinarily skilled artisan would have employed, an artisan would have recognized that each available MBMS service in Lee, when combined with Kyung’s teaching, would be unique so as to be able to identify and distinguish one service from another service. 2 Notably, we do not rely on the Examiner’s discussion of the public long code mask (PLCM) to teach the recited “unique” feature. See Ans. 6, 27. Appeal 2010-011449 Application 11/619,833 9 We thus are not persuaded that the combined references fail to teach the recited “unique” feature. App. Br. 6-7, 15; Reply Br. 2. Moreover, we are not persuaded by Appellants’ assertion that Kyung’s flow identifier is not part of the user feedback request message that is sent to the mobile terminal and teaches away from including it within a user feedback request message. See App. Br. 7-10. Lee is being relied upon to teach the multiplex signaling code is part of the request message (Ans. 4-5), and Kyung is only being relied upon for the limited purpose of teaching the “unique” feature of each service identifier taught by Lee (Ans. 5-6). See Ans. 26-28, 30. Appellants also argue that the separately recited first polling interval requirement and multiplex signaling code requirement are not disclosed in Lee, Ishii, or any other reference. App. Br. 9-10. We disagree. The Examiner relies on Lee, Ishii, and Kyung collectively to teach these features. Ans. 4-7. Attacking references individually (App. Br. 9-10) does not show nonobviousness where the rejection, as is here, is based on combinations of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Also, Appellants have not defined “the polling interval,” and describe the interval as “some predetermined basis . . . .” Spec. 6:14. As such, a broad, but reasonable construction of the phrase, “first polling interval,” can include the entire time period when sending feedback request messages and detecting the user feedback messages. Lee and Ishii, as proposed by the Examiner (Ans. 6-7), teach and suggest such a polling interval. Appellants next argue that there is no motivation to combine the cited references, and the Examiner has only presented conclusory statements in this regard. App. Br. 6, 10-11. Concerning Ishii, Appellants assert that the Examiner has not explained why one skilled in the art would have been Appeal 2010-011449 Application 11/619,833 10 motivated, based on Ishii’s idle channel selection teaching, to use the “first polling interval” to both send the “user feedback request messages” and detect “user feedback messages.” App. Br. 10. As stated above and giving the phrase, “polling interval,” its broadest reasonable claim construction, Lee and Ishii collectively teach and suggest various polling intervals, including defining one that covers the entire time period when sending feedback request message and detecting the user feedback messages. Moreover, the Examiner has articulated some rational basis for combining Lee and Ishii (e.g., to select an idle channel using polling). Ans. 7, 28, 34 (citing Ishii col. 8, ll. 31-35). Similarly, the Examiner provides some reason for combining Kyung with Lee. See Ans. 6-7, 27, 34 (citing Kyung ¶ 0005). Regarding Appellants’ argument presented in the Reply Brief addressing the predetermined frequency and/or code-based signaling scheme for formatting the user feedback message to allow multiplexing (Reply Br. 6), we refer to our previous discussion of our claim construction of the “multiplex signaling codes.” Lastly, Appellants assert the Examiner has not articulated a finding that there was a reasonable expectation of success. App. Br. 11. We disagree. The Examiner illustrates the combined teachings of Lee, Kyung, and Ishii predictably yield no more than an ordinarily skilled artisan would have expected from the combination. See Ans. 34. Also, to meet the notice requirement under 35 U.S.C. § 132, the Examiner need do no more than “set forth the statutory basis of the rejection and the reference or references relied upon in a sufficiently articulate and informative manner.” In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). Appeal 2010-011449 Application 11/619,833 11 For the foregoing reasons, Appellants have not persuaded us of error in the rejection of independent claim 1 and claims 4-6, 9,3 and 12-14 not separately argued with particularity. OBVIOUSNESS REJECTION OVER LEE, KYUNG, ISHII, AND LAROIA Claims 2, 3, 10, and 11 Claims 2, 3, 10, and 11 are rejected under § 103 based on Lee, Kyung, Ishii, and Laroia. Ans. 12-15. Appellants do not argue these claims separately from independent claims 1 and 9 and do not address Laroia’s teaching. See App. Br. 5-17. We are not persuaded for the reasons discussed above and will sustain the rejection of claims 2, 3, 10, and 11. Claims 15-17, 19, and 20 Claims 15-17, 19, and 20 are also rejected under § 103 based on Lee, Kyung, Ishii, and Laroia. Ans. 15-18. Illustrative independent claim 15 is claimed differently from independent claim 1, reciting a communication device comprising a selection module for selecting a MBMS service from a user feedback request message, the message including MBMS services, each assigned a multiplex signaling code constructed from a unique combination of code sequence and frequency band so that the multiplex signaling codes are orthogonal to one another. The Examiner finds Lee, Kyung, and Ishii teach all the recited limitations, except for the multiplex signaling code being constructed from a unique combination of code sequence and 3 Claims 9-14 are separately discussed. App. Br. 11-17. However, the arguments are similar to those presented for claims 1-8. Compare App. Br. 5-11 with App. Br. 11-17. Appeal 2010-011449 Application 11/619,833 12 frequency band as recited. Ans. 15-18. For this limitation, the Examiner relies upon Laroia and articulates a reason to include the combination. Ans. 18. Appellants present many of the same arguments that were discussed for illustrative claim 1. Compare App. Br. 5-11 with App. Br. 17-22. For those contentions, we refer to our previous discussions. Appellants additionally assert that the cited references do not teach a user feedback request message that includes a list of available MBMS services and assigned multiplex signaling codes constructed from a unique combination of code sequence and frequency band so that the signaling codes are orthogonal to each other (App. Br. 17) and does not provide evidence to combine Laroia with the other references (App. Br. 21). See also Reply Br. 8-9. Merely pointing out what a claim recites and then asserting that a reference, including Laroia, fails to teach this limitation is not considered a separate argument for patentability. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). Also, the Examiner has provided some reason (e.g., allowing for transmission of wireless terminals entering a sector) to combine Laroia with the other cited references. Ans. 18, 47. For the foregoing reasons, Appellants have not persuaded us of error in the rejection of independent claim 15 and claims 16, 17, 19, and 20 not separately argued with particularity (App. Br. 17-22). THE REMAINING REJECTIONS Appellants present no additional arguments for the remaining rejections. See App. Br. 5-22. The issues before us, then, are the same as those in connection with illustrative independent claims 1, 9, and 15, and we Appeal 2010-011449 Application 11/619,833 13 refer Appellants to our previous discussion. Accordingly, Appellants have not persuaded us of error in the rejections of claims 7, 8, and 18 not separately argued with particularity. CONCLUSION Appellants have not demonstrated that the Examiner erred in rejecting claims 1-20 under § 103. DECISION The Examiner’s decision rejecting claims 1-20 is 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)(1)(iv). AFFIRMED babc Copy with citationCopy as parenthetical citation