Ex Parte Chen et al

Patent Trial and Appeal Board

Apr 30, 2013

11619833 (P.T.A.B. Apr. 30, 2013)

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.
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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)

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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.
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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
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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,
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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
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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
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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.
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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
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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).
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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.
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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
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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

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