Ex Parte Bachl et al

Patent Trial and Appeal Board

Jul 2, 2014

11670092 (P.T.A.B. Jul. 2, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RAINER BACHL, FANG-CHEN CHENG,
JUNG A. LEE, LEI SONG, and SAID TATESH
____________________

Appeal 2012-000841
Application 11/670,092
Technology Center 2600
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Before MICHAEL J. STRAUSS, DANIEL N. FISHMAN, and
CATHERINE SHIANG, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-000841
Application 11/670,092

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

THE INVENTION
The claims are directed to a method of using uplink reference signals
for access grant requests. Claim 1, reproduced below, is representative of
the claimed subject matter:
1. A method, comprising:
determining, at a base station, that at least one mobile
unit is requesting access to at least one uplink channel by
detecting a change in a masking sequence applied to at least one
reference signal transmitted from said at least one mobile unit
to the base station.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Nee
Benedittis
Cho
US 2002/0118635 A1
US 2003/0076812 A1
US 2005/0068931 A1
Aug. 29, 2002
Apr. 24, 2003
Mar. 31, 2005

REJECTIONS
The Examiner made the following rejections:
Claims 1, 2, 7-11, and 16-20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Benedittis and Cho. Ans. 4-7.
Claims 3-6 and 12-15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Benedittis, Cho, and Nee. Ans. 8-10.
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ISSUE ON APPEAL
Based on Appellants’ arguments in the Appeal Brief (App. Br. 5-8),
the issue presented on appeal is whether the Examiner erred in finding the
combination of Benedittis and Cho teaches or suggests the disputed
limitation of detecting a change in a masking sequence applied to at least
one reference signal transmitted from said at least one mobile unit to the
base station.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred in rejecting independent claim 1
under 35 U.S.C. § 103(a) over Benedittis and Cho. We agree with
Appellants’ conclusions as to this rejection of the claim.
Appellants argue Benedittis describes a mobile unit requesting a base
station provide access to an uplink channel by sending a SYNC signature,
not by changing a masking sequence applied to a reference signal as
required by claim 1. App. Br. 6. Appellants further argue that Cho describes
a first code used to spread reference signal over one more subcarrier
bandwidths and a second code used to spread, not the reference signal, but
“a signal other than the reference signal.” App. Br. 7. Appellants conclude
the combination of Benedittis and Cho does not describe or
suggest detecting a request for access to an uplink channel by
detecting a change in a masking sequence so that the change in
the masking sequence signals[] indicates to the base station that
the mobile unit is requesting access, as set forth in claims 1 and
19.
Id. (emphasis omitted).
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The Examiner responds by finding Benedittis’s base station detects a
gold SYNC codes in the received mobile’s uplink pilot time slot. Ans. 11.
Upon detecting a particular mid-amble code, the base station sends a
physical information message to the mole station. Id. The mobile station
responds with another uplink pilot time slot transmission including the
SYNC code, which the base station recognizes as a request by the mobile to
access the network. Id. The Examiner combines Cho’s masking sequences
for different portions of the uplink reference signal with Benedittis’s method
of requesting network access, finding that the combination teaches or
suggests the disputed limitation of determining the mobile unit is requesting
access to the uplink channel by detecting a change in the masking sequence
applied to the reference signal transmitted from the mobile unit to the base
station. Id. According to the Examiner:
Examiner, being one of ordinary skill in the art at the
time of the invention, is aware that changing and/or detecting a
change in a masking sequence to a reference signal are, as
broadly stated, commonplace functions applied in digital signal
processing to, for example, change digital sequences and/or to
compare/correlate portions of digital sequences.
Ans. 12.
We disagree with the Examiner. In particular, based on the record
before us and the portions of Benedittis and Cho cited by the Examiner, we
find insufficient support for the Examiner’s finding that the combination of
Benedittis and Cho teaches or suggests the disputed limitation. In particular,
none of the cited portions of either reference describe detecting a change in
masking sequence applied to the reference signal. While Cho uses different
masking sequences, the Examiner fails to identify where or explain why
Benedittis or Cho teaches or suggests detecting a change in the sequences
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transmitted by the mobile unit as received at the base station. Because we
are unable to find sufficient evidence to support this finding of the
Examiner, we cannot agree that the disputed limitation is taught or suggested
by the combination of Benedittis and Cho. As we agree with at least one of
the arguments advanced by Appellants, we need not reach the merits of
Appellants’ other arguments. Therefore, for the reasons supra, we do not
sustain the rejection of independent claim 1 and, for similar reasons, we do
not sustain the rejection of independent claims 10, 19, and 20, which include
substantially the same limitation, or the rejections of dependent claims 2-9
and 11-18.
We note in passing that what is indicated by the change in masking
sequence is an intended use of detecting the sequence change. Furthermore,
what is determined based on or indicated by detecting the sequence change
does not change the functionality of, or provide an additional function to, the
method. Rather, determining that the mobile unit is requesting access is
merely descriptive of “data” or “information” conveyed by the sequence
change. That is, the method of claim 1 is not affected because the change in
masking sequence (i.e., data) is interpreted as requesting access to at least
one uplink channel.
When descriptive material is not functionally related to the claimed
embodiment, the descriptive material will not distinguish the invention from
the prior art in terms of patentability. See In re Lowry, 32 F.3d 1579, 1582-
1583 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004)
(nonfunctional descriptive material cannot render nonobvious an invention
that would have otherwise been obvious). See also Ex parte Mathias,
84 USPQ2d 1276 (BPAI 2005) (informative), aff'd, 191 F. App’x 959 (Fed.
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Cir. 2006). Therefore, the meaning ascribed to detecting a change is
masking sequences is not entitled to patentable weight.

CONCLUSION
We find the Examiner erred in rejecting independent claims 1, 10, 19,
and 20 under 35 U.S.C. § 103(a) over Benedittis and Cho

DECISION
The Examiner’s decision to reject claims 1-20 is reversed.

REVERSED

msc