Yeong-Moon Son et al.

Patent Trials and Appeals Board

Aug 20, 2019

13943265 - (D) (P.T.A.B. Aug. 20, 2019)

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.
13/943,265 07/16/2013 Yeong-Moon SON 0201-0829 7957
68103 7590 08/20/2019
Jefferson IP Law, LLP
1130 Connecticut Ave., NW, Suite 420
Washington, DC 20036
EXAMINER
TRAN, THINH D
ART UNIT PAPER NUMBER
2466
NOTIFICATION DATE DELIVERY MODE
08/20/2019 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):
usdocketing@jeffersonip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE

____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte YEONG-MOON SON, HYUN-JEONG KANG,
RAKESH TAORI, JUNG-SHIN PARK, and YOUNG-BIN CHANG
____________________

Appeal 2018-002550
Application 13/943,2651
Technology Center 3600
____________________

Before DENISE M. POTHIER, JASON J. CHUNG, and
SCOTT B. HOWARD, Administrative Patent Judges.

HOWARD, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 51–72, which constitute all of the claims pending in this
application. Claims 1–50 have been cancelled. App. Br. 12 (Claims App’x).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 Samsung Electronics Co., Ltd. (“Appellant”) is the Applicant under
37 C.F.R. § 1.46 and is identified as the real party in interest. App. Br. 2.
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THE INVENTION
The disclosed and claimed invention is directed to “[a] method for
scheduling data by a new master Base Station (BS).” Abst. According to
the Specification,
The method includes detecting that a master BS for a
specific Mobile Station (MS) is changed from an old master BS
to a new master BS, before a tunnel which is established
between the new master BS and an access gateway is activated,
receiving MS data which the old master BS receives through
the tunnel which is established between the old master BS and
the access gateway and buffers from the old master BS, and
scheduling the received MS data.
Id.
Claims 51 and 59, reproduced below with emphases added, are
illustrative of the claimed subject matter:
51. A method of operating a first base station (BS) in a
communication system, the method comprising:
transmitting, to a second BS, a request message which
requests to allocate resources for a mobile station (MS);
receiving, from the second BS, a response message in
response to the request message;
transmitting, to the MS, a first message including
resource configuration information of the second BS; and
transmitting, to the second BS, a second message
including a serial number (SN) of at least one data unit
processed by the first BS.
59. A method of operating a mobile station (MS) m a
communication system, the method comprising:
receiving, from a first base station (BS), a first message
including resource configuration information of a second BS;
performing a synchronization operation with the second
BS corresponding to the resource configuration information;
and
receiving data through the first BS and the second BS,
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wherein the first BS transmits, to the second BS, a second
message including a serial number (SN) of at least one data
unit of the MS processed by the first BS.

REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Jeon US 2012/0003962 Al Jan. 5, 2012
Xi US 9,007,911 B2 Apr. 14, 2015
Ahluwalia US 9,282,493 B2 Mar. 8, 2016

REJECTIONS
Claims 51–53, 55–57, 59, 60, 62–64, 66–68, 70, and 71 stand rejected
under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Ahluwalia in
view of Jeon. Final Act. 6–11.
Claims 54, 58, 61, 65, 69, and 722 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Ahluwalia in view of Jeon
and Xi. Final Act. 11–13.

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellant. We
are persuaded by Appellant’s arguments regarding claims 51–58 and 62–69

2 Although the heading only lists claims 54 and 65, the body of the rejection
also includes claims 58, 61, 69, and 72. Because the body contains the
details of the rejections of those claims, we interpret the heading as a
typographical error.
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that the Examiner erred. However, we are not persuaded by Appellant’s
argument that the Examiner erred in rejecting claims 59–61 and 70–72.
Claims 51–58 and 62–69
The Examiner finds Ahluwalia teaches the first transmitting step
recited in claim 51: a first base station “transmitting, to a second BS, a
request message which requests to allocate resources for a mobile station
(MS).” See Final Act. 2–3 (citing Ahluwalia 4:19–27, 5:6–25), 6 (citing
Ahluwalia, Fig. 4A, 4:19–27); Adv. Act. 2 (citing Ahluwalia 4:36–40,
5:6–25); Ans. 9–10 (citing Ahluwalia 4:19–27, 5:6–25, 5:30–39).
Specifically, the Examiner finds the communication represented by “2.
Context Data” or “Handover Request” in Fig. 4A and 4:19–27 to be the first
transmitting step.3 See Final Act. 6. The Examiner further finds that the
Handover Request includes relevant information—such as “the QoS
[(Quality of Service)] profiles of the SAE [(System Architecture Evolution)]
bearers and AS [(Access Stratum)] configuration (i.e. RLC [(Radio Link
Control)], MAC[(Multiple Access Control)] layer configurations) of these
bearers—which are then used to allocate resources.” Id. 2–3; see also Ans.
9–10.
Appellant argues the communication the Examiner relies on does not
teach a request to allocate resources as recited in the first transmitting step.
See App. Br. 8–9; Reply Br. 3–4. Specifically, Appellant argues the
Handover Request “is not related to the allocated resource, but parameters

3 Figure 4A denotes step 2 as “Context Data” while the description in the
Specification describes it as a “Handover Request.” For simplicity, we will
refer to the communication as the “Handover Request”
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related to the synchronization such as the new C-RNTI, possible starting
time and SIBs, etc.” App. Br. 9. Instead, according to Appellant, “the
request allocating resource for the UE can be performed after receiving the
handover command and performing the synchronization by the UE.” Id.
During prosecution, claims must be given their broadest reasonable
interpretation while reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
Based on the words recited in claim 51, the message must include a
request that the second base station “allocate resources for a mobile station.”
See App. Br. 12 (Claims App’x). This requires more than an indirect,
temporal relationship with the allocation of resources occurring after a
message is sent. Rather, claim 51 requires that the message actually requests
that the second base station to “allocate resources” for a mobile station.
Based on the current record, we agree with Appellant that the
Examiner’s finding is not supported by the cited passages. Specifically, the
Examiner identifies the Handover Request as a transmission from the first
base station to a second base station (Ahluwalia 4:19–27) and that the
second base station allocates resources for a mobile station after it receives a
Handover Request (id. at 5:6–25, 5:30–39). However, this is not sufficient
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to demonstrate that the Handover Request is what requests the allocation of
resources as required by the claim. That is, the mere fact that resources are
allocated at some point in time after the Handover Request message is not
sufficient to demonstrate that the Handover Request is requesting to allocate
resources.
In Ahluwalia, the Handover Request is not described requesting an
allocation of resources or as the proximate cause of the eventual allocation
of resources. Following receipt of the Handover Request, the second base
station begins to prepare for the eventual handover by providing
information. See id. at 4:28–35, Fig. 4A. However, providing information
is not allocating resources.
That is, the second base station does not begin allocating resources
until it receives a Handover Complete message from the mobile station. See
id. at 5:6–48, Fig. 4B. Based on the current record, it is the Handover
Complete Message—which is sent by the user equipment/mobile station—
that causes the second base station to allocate resources.
Because the Handover Complete Message is sent by the mobile
station and not the first base station, we agree with Appellant the Examiner’s
finding that the cited portion of Ahluwalia teaches the disputed limitation is
in error because it is not supported by a preponderance of the evidence. See
In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (Examiner’s burden of
proving non-patentability is by a preponderance of the evidence); see also In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“The Patent Office has the
initial duty of supplying the factual basis for its rejection. It may not,
because it may doubt that the invention is patentable, resort to speculation,
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unfounded assumptions or hindsight reconstruction to supply deficiencies in
its factual basis.”).4
Accordingly, we are constrained on this record to reverse the
Examiner’s rejection of claim 51, along with the rejections of independent
claims 55, 62, and 66, which recite limitations commensurate in scope to the
disputed limitation discussed above, and dependent claims 52, 53, 56, 57,
63, 64, 67, and 68.
Moreover, because the Examiner has not shown that Xi cures the
foregoing deficiencies regarding the rejection of the independent claims, we
will not sustain the obviousness rejection of dependent claims 54, 58, 65,
and 69 for similar reasons.
Claims 59–61 and 70–72
Appellant does not argue independent claims 59 and 70 separately;
instead, Appellant relies on the arguments directed to claim 51 because,
according to Appellant, claims 59 and 70 recites substantially similar
features. App. Br. 10 (“Thus, based at least on the foregoing, Ahluwalia and
Jeon do not teach at least the above noted features of claim 51, and claims
55, 59, 62, 66 and 70 based on substantially similar recited features.”).
However, Appellant does not identify any specific limitations that are
commensurate with the first transmitting step. See id. We have reviewed
claims 59 and 70, which are directed to the mobile station, and do not see
any limitation commensurate in scope with the first transmitting limitation

4 Appellant raises additional issues in the Appeal Brief. Because we are
persuaded the Examiner erred with respect to this dispositive issue, we do
not reach the additional issues.
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recited in claim 51. Because Appellant’s argument is not commensurate
with the scope of the claims, it is unpersuasive. See In re Self, 671 F.2d
1344, 1348 (CCPA 1982). Accordingly, we are not persuaded by
Appellant’s argument that the Examiner erred.
Appellant further argues the Examiner erred in finding Ahluwalia
teaches a first base station receiving a response message from the second
base station in response to the request message of the first transmitting step.
App. Br. 9. Specifically, Appellant argues because there is no request
message, there cannot be a response. Id. However, as with the first
transmitting limitation discussed immediately above, Appellant has not
identified the commensurate limitation in claims 59 and 70. Nor, based on
our review of the claim, can we identify any such limitation. Because
Appellant’s argument is not commensurate with the scope of the claims, it is
unpersuasive. See Self, 671 F.2d at 1348. Accordingly, we are not
persuaded by Appellant’s argument that the Examiner erred.
Finally, Appellant argues the Examiner erred in finding the
combination of Ahluwalia and Jeon teaches the third transmitting step
recited in claim 51: the first base station “transmitting, to the second BS, a
second message including a serial number (SN) of at least one data unit
processed by the first BS.” App. Br. 5–8; Reply Br. 2–3. Although
Appellant does not identify a limitation in claims 59 and 70 that has a
commensurate scope, based on the language recited in those claims, it
appears that Appellant is relying on the following limitation recited in claims
59 and 70: “wherein the first BS transmits, to the second BS, a second
message including a serial number (SN) of at least one data unit of the MS
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processed by the first BS” (hereinafter “wherein limitation”). See App. Br
13, 15 (Claims App’x).
Because Appellant fails to dispute that Ahluwalia teaches a
communication between the first base station and the second base station,
the only purported differences between claims 59 and 70 and the
corresponding method/apparatus taught in the prior art turns on content of
the transmission recited within the wherein limitation. To understand the
wherein limitation, we must construe claims 59 and 70.
“[T]he ultimate issue of the proper construction of a claim should be
treated as a question of law.” Id. at 838. As stated supra on page 5 of this
Decision, we interpret claim terms using “the broadest reasonable meaning
of the words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.”
Our reviewing court has held that nonfunctional descriptive material
cannot lend patentability to an invention that would have otherwise been
anticipated by the prior art. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004); In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (noting that when
descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms of patentability); King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267,
1279 (Fed. Cir. 2010) (“[T]he relevant question is whether ‘there exists any
new and unobvious functional relationship between the printed matter and
the substrate.’”) (citations omitted); see also Ex parte Nehls, 88 USPQ2d
1883, 1889 (BPAI 2008) (precedential) (“[T]he nature of the information
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being manipulated does not lend patentability to an otherwise unpatentable
computer-implemented product or process.”); Ex parte Mathias, 84 USPQ2d
1276, 1279 (BPAI 2005) (informative), aff’d, 191 Fed. App’x 959 (Fed. Cir.
2006) (“[N]onfunctional descriptive material cannot lend patentability to an
invention that would have otherwise been anticipated by the prior art.”); Ex
parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (informative), aff’d,
(Federal Circuit 2006-1003) (June 12, 2006) (“Nonfunctional descriptive
material cannot render nonobvious an invention that would have otherwise
been obvious.”). Although we will not disregard any claim limitations and
will assess the claimed invention as a whole, we will follow the Federal
Circuit’s guidance from the Gulack decision and will “not give patentable
weight to printed matter absent a new and unobvious functional relationship
between the printed matter and the substrate.” In re Lowry, 32 F.3d 1579,
1582 (Fed. Cir. 1994) (discussing Gulack).
“The first step of the printed matter analysis is the determination that
the limitation in question is in fact directed toward printed matter.” In re
Distefano, 808 F.3d 845, 848 (Fed. Cir. 2015). Material is printed matter if
it is “claimed for what it communicates.” Id., at 850. Because the wherein
limitation of claims 59 and 70 is directed to the content of the
communication, we conclude the wherein limitation to be directed to printed
material.
If a claim in a patent application claims printed material, “one must
then determine if the matter is functionally or structurally related to the
associated physical substrate, and only if the answer is ‘no’ is the printed
matter owed no patentable weight.” Distefano, 808 F.3d at 851. As recited
in claims 59 and 70, there is no connection between the information
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transmitted between the first and second base stations and the remainder of
the claims. Stated differently, no step in method claim 59 sends or uses that
information. See App. Br. 13. Similarly, the mobile station recited in claim
70 neither sends, receives, nor uses the information recited in the wherein
clause. Id. at 15. This is analogous to Curry, where we found the type of
data to be nonfunctional descriptive material when it “does not functionally
change either the data storage system or communication system used in the
method of claim 81.” 84 USPQ2d at 1274 (BPAI 2005).
As we recognized in Curry, “if the prior art suggests storing a song on
a disk, merely choosing a particular song to store on the disk would be
presumed to be well within the level of ordinary skill in the art at the time
the invention was made.” Id. at 1275. For claims directed to the mobile
station, such as claims 59 and 70, identifying the type of data transmitted
from a first base station to a second base station is no different.
Concluding otherwise would result not only in Appellant’s identified
type of information distinguishing over the prior art, but equally would
distinguish every other unique set of information transmitted between the
two base stations. To give effect to Appellants’ argument, we would need to
ignore our review court’s concerns with repeated patenting. See King
Pharm. Inc. v. Eon Labs., Inc., 616 F3d 1267, 1279 (Fed. Cir. 2010) (“The
rationale behind this line of cases is preventing the indefinite patenting of
known products by the simple inclusion of novel, yet functionally unrelated
limitations.”); cf. Ngai, 367 F.3d at 1339 (“If we were to adopt Ngai’s
position, anyone could continue patenting a product indefinitely provided
that they add a new instruction sheet to the product.”). We decline to do so.
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Because Appellant’s arguments regarding the wherein limitation is
directed to non-functional descriptive material, we are not persuaded by
Appellant’s argument that the Examiner erred. Accordingly, we sustain the
Examiner’s rejection of claims 59 and 70, along with dependent claims 60
and 71.
With respect to dependent claims 61 and 72, Appellants merely
contend that because the additional reference used in the rejection of these
claims (i.e., Xi) does not cure the shortcomings of the other references
applied against the independent claims, the Examiner failed to make a prima
facie case of obviousness for these claims. App. Br. 10. Because we
determine that the rejection of the independent claims are not erroneous for
the reasons discussed above, we sustain the rejections of these claims.

DECISION
For the above reasons, we reverse the Examiner’s decisions rejecting
claims 51–58 and 62–69.
For the above reasons, we affirm the Examiner’s decisions rejecting
claims 59–61 and 70–72.
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). See
37 C.F.R. § 41.50(f).

AFFIRMED-IN-PART