Li-Chih Tseng et al.

Patent Trials and Appeals Board

Sep 13, 2021

2020002781 (P.T.A.B. Sep. 13, 2021)

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.
12/128,623 05/29/2008 Li-Chih Tseng 1291-033.101 1674
106622 7590 09/13/2021
Blue Capital Law Firm, P.C.
650 Town Center Drive, Suite 1530
Costa Mesa, CA 92626
EXAMINER
LE, BRIAN T
ART UNIT PAPER NUMBER
2469
NOTIFICATION DATE DELIVERY MODE
09/13/2021 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):
docketing@bluecapitallaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LI-CHIH TSENG and RICHARD LEE-CHEE KUO
Appeal 2020-002781
Application 12/128,623
Technology Center 2400
BEFORE CAROLYN D. THOMAS, ERIC B. CHEN, and
JEREMY J. CURCURI, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4, 6–10, and 12. Claims 5 and 11 are
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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 Innovative Sonic
Limited. Appeal Br. 2.
Appeal 2020-002781
Application 12/128,623

2
CLAIMED SUBJECT MATTER
The claims are directed to “a method and apparatus for improving a
packet header of a packet transmitted when a broadcast control channel is
mapped to a downlink shared transport channel.” Spec. ¶ 3. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method for improving transmission of a
downlink shared transport channel in a wireless
communications system, the method comprising:
mapping a broadcast control channel to a downlink
shared transport channel by a media access control, named
MAC hereinafter, protocol entity for transmission of a system
information broadcast message through the downlink shared
transport channel; and
padding the system information broadcast message to fit
in with a transport block size by an upper layer protocol entity
and forming a MAC protocol data unit, named PDU hereinafter,
according to the system information broadcast message,
wherein the MAC PDU comprises no header fields and is used
for transmission through the downlink shared transport channel.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Sarkkinen US 2005/0063347 A1 Mar. 24, 2005
Kim US 2006/0251099 A1 Nov. 9, 2006
Charpentier EP 1641302 A1 Mar. 29, 2006

REJECTIONS
Claims 1, 3, 4, 6, 7, 9, 10, and 12 are rejected under pre-AIA 35
U.S.C. § 103(a) as obvious over Charpentier and Kim. Final Act. 9–13.
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Application 12/128,623

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Claims 2 and 8 are rejected under pre-AIA 35 U.S.C. § 103(a) as
obvious over Charpentier, Kim, and Sarkkinen. Final Act. 13–14.
OPINION
The Obviousness Rejection of Claims 1, 3, 4, 6, 7, 9, 10, and 12 over
Charpentier and Kim
The Examiner finds Charpentier and Kim teach all limitations of
claim 1. Final Act. 9–10. In particular, the Examiner finds Charpentier
teaches all limitations of claim 1 except “Charpentier does not explicitly
disclose the transport channel is a DSCH [(downlink shared transport
channel)].” Final Act. 10; see also Ans. 5 (“[W]hen Charpentier is viewed
together with the TS 25.301 standard, Charpentier and the TS 25.301
standard actually teach using no MAC header when BCCH [(broadcast
contrrol channel)] is mapped to a transport channel.”), 6 (discussing
Charpentier’s teachings). The Examiner finds Kim teaches “mapping a
broadcast control channel to a downlink shared transport channel by a media
access control, named MAC hereinafter, protocol entity for transmission of a
system information broadcast message through the downlink shared
transport channel” (claim 1). Final Act. 10; see also Ans. 6–8 (discussing
Kim’s teachings). The Examiner reasons
it would have been obvious to one ordinary skill in the art at the
time of the invention was made to provide “the mapping of a
BCCH to a DSCH by a MAC protocol entity for transmission of
a system information broadcast message through the DSCH”, as
taught by Kim, in the system of Charpentier so that the MBMS
[(multimedia broadcast multicast service)] service can be more
efficiently provided and radio resources can be saved.
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Application 12/128,623

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Final Act. 10; see also Ans. 8–10 (discussing motivation to combine the
references).
Appellant presents the following principal arguments:
i.
FIG. 2 of Charpentier provides only one category of layer
2 transmission mode combinations discussed in TS 25.301. More
specifically, FIG. 2 of Charpentier illustrates the scenario of data
flow for non-transparent RLC and transparent MAC, which is
illustrated in Figure 8 of TS 25.301. However, Charpentier does
not indicate which mapping between logical channels and
transport channels is applicable.
Appeal Br. 7. “Charpentier references the TS 25.301 standard, and when
Charpentier is viewed together with the TS 25.301 standard, Charpentier and
the TS 25.301 standard actually teach away from using no MAC header
when BCCH is mapped to HS-DSCH” because TS 25.301 teaches “when
DCCH/DTCH is mapped to HS-DSCH, MAC header is required, which
means that MAC header is required when a logical channel is mapped to
HS-DSCH.” Appeal Br. 8.
ii. “Since the TS 25.301 standard also discloses that a MAC
header is required when BCCH is mapped to FACH, it is not justified to
conclude that Charpentier and the TS 25.301 standard actually teach using
no MAC header when BCCH is mapped to a transport channel.” Appeal Br.
9, Reply Br. 3.
iii. “In view of the different scenarios disclosed in the TS 25.301
standard, Applicants respectfully submit that it is not reasonable to conclude
MAC header is not needed if the BCCH is mapped to DSCH. Such
conclusion can only be improperly derived using hindsight.” Appeal Br. 9,
Reply Br. 3.
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We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
We do not see any error in the contested Examiner’s findings. We
concur with the Examiner’s conclusion of obviousness.
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the
art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Regarding Appellant’s argument (i), Appellant’s particularized
arguments are directed only to Charpentier, while the contested findings are
based on the collective teachings of Charpentier and Kim. For this reason
and for reasons further explained below, we do not see any error. In
particular, the Examiner finds Charpentier teaches all limitations of claim 1
except “Charpentier does not explicitly disclose the transport channel is a
DSCH [(downlink shared transport channel)]” and further finds Kim cures
the deficiency of Charpentier. Final Act. 10. The Examiner articulates a
reason to combine the teachings of Charpentier and Kim that is rational on
its face and supported by evidence drawn from the record. Final Act. 10.
Appellant does not present any particularized arguments as to why this
reasoning is incorrect.
Further, although an alternative may be inferior to or less desirable
than another, that alone is insufficient to teach away from the inferior
alternative unless the disclosure criticizes, discredits, or otherwise
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Application 12/128,623

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discourages that alternative. In re Fulton, 391 F.3d 1195, 1200–01 (Fed. Cir.
2004). Here, Charpentier and the TS 25.301 standard disclose a MAC header
is required in certain situations, but this disclosure does not criticize,
discredit, or otherwise discourage other approaches, such as the approach
suggested by the collective teachings of Charpentier and Kim, which has not
been squarely addressed by Appellant because Appellant’s arguments are
directed only to Charpentier.
Regarding Appellant’s argument (ii), this argument is unavailing for
the same reasons explained above regarding Appellant’s argument (i).
Regarding Appellant’s argument (iii), this argument is also unavailing
because, as explained above, the Examiner’s reason to combine the
teachings of the references is rational on its face and supported by evidence
drawn from the record, as opposed to being improperly derived using
hindsight.
We, therefore, sustain the Examiner’s rejection of claim 1. We also
sustain the Examiner’s rejection of claims 3, 4, 6, 7, 9, 10, and 12, which are
not separately argued with particularity. See Appeal Br. 4–10; see also Reply
Br. 2–4.

The Obviousness Rejection of Claims 2 and 8 over Charpentier, Kim, and
Sarkkinen
Appellant does not present separate arguments for this ground of
rejection. See Appeal Br. 4–10; see also Reply Br. 2–4.
We, therefore, sustain the Examiner’s rejection of claims 2 and 8.
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Application 12/128,623

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CONCLUSION
The Examiner’s decision to reject claims 1–4, 6–10, and 12 is
affirmed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3, 4, 6, 7,
9, 10, 12
103(a) Charpentier, Kim 1, 3, 4, 6, 7,
9, 10, 12

2, 8 103(a) Charpentier, Kim,
Sarkkinen
2, 8
Overall
Outcome
1–4, 6–10,
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) (2019).
AFFIRMED