Ex Parte Casati et al

Patent Trial and Appeal Board

Apr 10, 2017

13696201 (P.T.A.B. Apr. 10, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/696,201 01/25/2013 Alessio Casati LUTZ 201568US01 4829
48116 7590 04/12/2017
FAY STTARPF/T TTf’F.NT
EXAMINER
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NOTIFICATION DATE DELIVERY MODE
04/12/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALESSIO CAS ATI, DEBORAH BARCLAY, and
BRUNO LANDAIS
Appeal 2016-005056
Application 13/696,2011
Technology Center 2600
Before BRADLEY W. BAUMEISTER, BRUCE R. WINSOR, and
SHARON FENICK, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1—33, which constitute all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse and institute a new ground of rejection within the
provisions of 37 C.F.R. § 41.50(b).
1 The real party in interest identified by Appellants is Alcatel Lucent. App.
Br. 1.
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Application 13/696,201
STATEMENT OF THE CASE
Appellants’ disclosed invention “relates to mobile communication
networks and systems.” Spec. 1:3—4. Claim 1, which is illustrative, reads as
follows:
1. A method for managing the access grant time interval
and/or power consumption of a Machine Type Communication MTC
Device in a mobile communication system, said method comprising:
- performing said management within a detach procedure of the
MTC Device from the mobile communication network.
Claims 1—33 stand rejected under 35 U.S.C. § 112(a) (previously
codified as § 112, first paragraph), as failing to comply with the enablement
requirement. See Final Act. 2—3.
Claims 1—8, 20-27, and 30-33 stand rejected under 35 U.S.C.
§ 103(a)2 as being unpatentable over 3rd Generation Partnership Project,
Technical Specification Group Services and System Aspects; System
Improvements for Machine-Type Communications (Release 10), (Technical
Report 3GPP TR 23.888v0.3.2, Mar. 2010) (hereinafter “3GPP”) and
Kavanaugh et al. (US 2011/0199901 Al; Aug. 18, 2011) (hereinafter
“Kavanaugh”). See Final Act. 4—14.
Claims 9-19, 28, and 29 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over 3GPP, Kavanaugh, and Zhang et al.
(US 2013/0329713 Al; Dec. 12, 2013) (hereinafter “Zhang”). See Final
Act. 14—24.
2 All prior art rejections are under the provisions of 35 U.S.C. in effect prior
to the effective date of the Leahy-Smith America Invents Act of 2011. Final
Act 2.
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Rather than repeat the arguments here, we refer to the Briefs (“App.
Br.” filed Oct. 27, 2015; “Reply Br.” filed Apr. 11, 2016) and the as-filed
and published Specification (“Spec.” filed Nov. 5, 2012; “Publ.”
(US 2013/0122905 Al) published May 16, 2013) for the positions of
Appellants and the Office Actions (“Final Act.” mailed Feb. 25, 2015; “Adv.
Act.” mailed Aug. 4, 2015) and Examiner’s Answer (“Ans.” mailed
Feb. 29, 2016) for the reasoning, findings, and conclusions of the Examiner.
ISSUES
Based on Appellants’ arguments, we discuss the Appeal by reference
to claim 1. The dispositive issues presented by Appellants’ arguments are as
follows:
Does the Examiner err in finding the Specification does not enable
“managing the access grant time interval and/or power consumption
. . . within a detach procedure” (the “argued limitation”), as recited in
claim 1?
Does the Examiner err in finding the combination of 3 GPP and
Kavanaugh teaches or suggests the argued limitation recited in claim 1 ?
ANALYSIS
Rejection under 35 U.S.C. § 112, first paragraph
The Examiner rejects claim 1 for lack of enablement because “[t]he
Examiner is unable to find support for the . . . [argued] limitation[].” Final
Act. 3. The Examiner concedes the Specification discloses access grant time
intervals that are communicated to the MTC by a network, but finds the
“[Specification is extremely silent with respect to — performing said
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Application 13/696,201
management within a detach procedure of the MTC Device from the
mobile communication network.” Final Act. 3 (citing Publ. 25—27); see
also Adv. Act. 2—3 (additionally citing Publ. Tflf 19—21, 37, 48); Ans. 2—3
(additionally citing Publ. 191).
Appellants contend that the argued limitation is supported by the
Specification as illustrated in the following passages from the published
Specification:
[0019] Thus, there is a need to optimise mobile
communication, systems for Machine Type Communication. In
particular, there is a need to manage the operation of MTC
Devices, such as managing their access to the network and/or
their power consumption.
[0020] In an embodiment, it is proposed to perform
management of the operation of a MTC Device within a detach
o f the MTC Device from the network.
[0021] It is recalled that in a mobile communication
system, a detach is the counterpart of an attach, which in turn
is a process such that a mobile terminal or User Equipment UE
can receive service from the network. For example, for EPS,
a detach procedure is specified in particular in 3GPP TS 23.401.
A detach procedure involves a network entity in charge of said
detach procedure, such as for example Mobility Management
Entity MME (or S4-SGSN) in EPS. A detach procedure, such as
specified for EPS for example, may be an UE-initiated detach
procedure or a MME (or S4-SGSN) initiated detach
procedure.
App. Br. 9 (emphases by Appellants). Appellants further contend “support
for this feature is found in the [as-filed Specification at, for instance,
dependent claims 6 and 7, which relate to including a power down request
and a grant time interval, respectively, in the Detach Request.” Id.', see
Spec. 11:30-12:2.
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Application 13/696,201
Although claim 1 is rejected for lack of enablement, the only evidence
or reasoning provided by the Examiner is that the argued limitation lacks
support in the Specification. See generally Final Act. 2—3; Adv. Act. 2—3;
Ans. 2—3. There is, for example, no finding that undue experimentation
would be required to implement the claimed invention, including the argued
limitation. See MPEP §§ 2164—64.08(c). In other words, the Examiner
finds the claimed invention is not enabled because the argued limitation is
not described in the written description of Appellants’ Specification.
Accordingly, we look to whether the argued limitation is described in the
Specification.
We agree with Appellants. As-filed claim 6, which forms a part of
Appellants’ written description, recite that a “Detach Request includes a
power down request.” Spec. 11:31. One of ordinary skill in the art would
understand a Detach Request to be part of a “detach procedure” (claim 1)
and a “power down request” to be a way to manage power consumption.
See also Publ. H 19-21, 35, 42, Figs. 3, 4. Thus, Appellants’ Specification
discloses “managing . . . power consumption . . . within a detach
procedure.” Similarly, as-filed claim 7 recites that a “Detach Request
includes a next time to access the M2M3 service, or ‘grant time interval.’”
Spec. 12:1—2. One of ordinary skill in the art would understand
“include[ing] a next time to access the M2M service, or ‘grant time
interval’” to be “managing the access grant time interval.” See also Publ.
11 19-21, 35, 42, Figs. 3, 4. Thus, Appellants’ Specification discloses
“managing the access grant time interval. . . within a detach procedure.”
3 Machine to Machine. Publ. 1 5
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In addition, Appellants’ Specification includes details regarding
implementation of the argued limitation, as exemplified by the following
passages:
[0035] 1. When the M2M User determines the
communication with the M2M Device (i.e., UE[4]) is
complete, the M2M User (e.g., M2M Application Server)
may request the M2M Device to detach from the network.
The MTC User may include a power down request to the
M2M Controller. The M2M User may also include the
next time to access the M2M service, or “grant time
interval ”.
[0036] 2. The M2M Controller determines the MME
serving the M2M Device and forwards the request to it.
[0037] 3. When the MME[5] receives the Detach request,
the MME will forward the request to the MTC Device
(i.e., UE). Not specifically illustrated, the MME will also
initiate release of [bearer] resources associated with the
MTC Device (as per 3GPP TS 23.401). Alternately, [if]
the M2M Device has a MTC Time Controlled feature, the
network may initiate the Detach Request when the M2M
Devices grant time interval ends.
[0038] 4. When the MTC Device receives the Detach
Request containing a power off indication, the MTC
Device will release bearer resources, send a
DetachAccept to the MME (via the eNodeB) and power
down until the next power on time.
[0039] 5. The MME will forward the response to the M2M
Controller.
[0040] 6. The M2M Controller will forward the response
to the M2M Server (e.g., M2M Application Server).
4 User Equipment. Publ. 13.
5 Mobility Management Entity. Publ. 121.
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Publ. 35—40 (discussing Fig. 3) (emphases added); see also id. 1142-47
(discussing Fig. 4), Figs. 3, 4.
Accordingly, the Examiner does not establish that the argued
limitation of claim 1 is not supported and enabled by the Specification.
Accordingly, we do not sustain the rejection under 35U.S.C. § 112, first
paragraph, of claim 1 or of claims 2—33, which are rejected together with
claim 1.
Rejections under 35 U.S.C. § 103(a)
The Examiner finds 3GPP teaches all of the limitations of claim 1, but
make no finding that 3GPP teaches managing power consumption. Final
Act. 4—5 (citing 3GPP §§ 4, 5.8, 5.9, 5.9.1, 5.9.2, 5.10.2, 6.7, 6.17, 6.9.2,
6.20, 6.20.2; Publ. H 25—27). The Examiner further relies on Kavanaugh to
teach “Access-Configuration Messages used to put/force MTC into detach,
power-conserve, power off or other operational state which aids in
preserving power in the MTC device.” Final Act. 5—6 (emphasis omitted)
(citing Kavanaugh || 2, 7, 21, 24, 34, 39-40, 44, 46, 49, 51, 62, 82, Figs. 2,
3).
Appellants contend that nothing in the cited passages of 3 GPP and
Kavanaugh, teaches or suggests “managing the access grant time interval
and/or power consumption . . . within a detach procedure” (emphasis added),
as recited in claim 1. See generally App. Br. 9-10; Reply Br. 4—6. We
agree with Appellants for the reasons stated by Appellants (see id.).
As an initial matter, we note that claim 1 recites “managing the access
grant time interval and/or power consumption” (emphasis added), i.e.,
“access grant time interval” and “power consumption” are recited in the
alternative, so that the Examiner need only show that managing one or the
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Application 13/696,201
other of the alternatives within a detach procedure is taught or suggested by
the cited art.
We give the preposition “within” its ordinary meaning, i.e.,
“1 — used as a function word to indicate enclosure or containment
2 — used as a function word to indicate situation or circumstance in the
limits or compass of.. . 3 : to the inside of.” Merriam-Webster’s
Collegiate Dictionary 1359 (10th ed. 1999). This meaning is consistent
with Appellants’ Specification which describes that when issuing a detach
request a user may include a power down request, and access grant time
interval, or both. See Publ. 20 (“In an embodiment, it is proposed to
perform management of the operation of a MTC Device, within a detach of
the MTC Device from the network.”), 35 (reproduced supra).
We agree with the Examiner that 3 GPP teaches managing an access
time grant interval (see, e.g., 3GPP § 5.9.2 (“the network operator shall be
able to allocate . . . [and] the network shall be able to inform the MTC
Device of time period(s) during which signalling or user plane traffic
to/from the network are allowed”)) and a detach procedure (see, e.g., id.
“enforcement of a detach of an MTC Device from the network at the end of
the of the Device's communication window”)). See Final Act. 4—5. We also
agree with the Examiner that Kavanaugh teaches managing power
consumption (see, e.g., Kavanaugh 139 (“access-configuration messages
may be used to enable putting . . . wireless devices into . . . power-
conserving . . . operational conditions”). See Final Act. 5—6. However, we
find nothing in the cited passages that teaches or suggests that the managing
of access grant time interval or the managing of power consumption is
performed within a detach procedure.
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For example, 3GPP states the following:
If the subscribed periodic timer changes the
SGSN[6]/MME provides the MTC device with the new timer
value during the next RAU/TAU[7] procedure. Alternatively the
SGSN/MME can initiate an SGSN/MME-Initiated Detach
procedure with a re-attach indication to enforce an Attach
procedure and provide the MTC device with the new timer value.
3GPP § 6.20.2. As explained by Appellants “[t]his means that a new timer
value will be provided during an Attach procedure.” App. Br. 9. In other
words, although the new timer value is set by first performing a detach
procedure and then an attach procedure, the actual management of the time
value (i.e., the “access grant time interval”) does not occur within (enclosed
or contained by) the detach procedure; rather it is within the attach
procedure.
Similarly, Kavanaugh teaches “[ajccess configuration messages [that]
can cause one or more of throttle, delay, stop/interrupt, cancel, initiate at
certain times or otherwise control communications with predetermined types
of wireless devices during times of predetermined network traffic levels.”
Kavanaugh 125. Thus, Kavanaugh at least suggests that an access control
message can initiate a detach procedure (“stop/interrupt. . .
communications”) as well as initiate other procedures that would also stop or
interrupt communications. Kavanaugh further states the following:
[AJccess-configuration messages may be used to enable putting
one or more wireless devices into and out of power-conserving
idle, sleep or low power-consumption, disconnected, radio­
power off, device-power off or other operational conditions
6 Serving [General Packet Radio Service] Support Node. Harry Newton et
al., Newton’s Telecom Dictionary 560 &1066 (27th ed. 2013).
7 Routing Area Update/Tracking Area Update.
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Application 13/696,201
associated with restricted communication capabilities, for
example, little, minimal or otherwise characterized
communication capabilities, of the corresponding wireless
devices. The idle, sleep or low-power operational conditions
may aid in preserving power in wireless devices and hence
provide corresponding effects and benefits for predetermined
applications of corresponding wireless devices.
Kavanaugh 139. Although Kavanaugh teaches or suggests access control
messages that can initiate a detach procedure and access control messages
that manage power consumption, we find no teaching or suggestion in
Kavanaugh of a power consumption management message being within a
detach message. Kavanaugh at most suggests that such messages may co­
exist.
We find the Examiner has not established that the combination of
3 GPP and Kavanaugh teaches either “managing the access grant time
interval . . . within a detach procedure” or “managing the . . . power
consumption . . . within a detach procedure,” i.e., the argued limitation, as
recited in claim 1.
Accordingly, we do not sustain the rejections of claim 1 and claims 2—
33, each of which refers to claim 1 thereby incorporating the argued
limitation.
NEW GROUND OF REJECTION WITHIN 37 C.F.R. § 41.50(b)
Claim 1
Claim 1 is rejected on a new ground of rejection under 35 U.S.C.
§112 (a), as being an improper single-step step-plus-fimction claim under
§ 112(f), that is not enabled by the Specification.
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Application 13/696,201
“An element in a claim for a combination may be expressed as a
means or step for performing a specified function without the recital of
structure, material, or acts in support thereof, and such claim shall be
construed to cover the corresponding structure, material, or acts described in
the specification and equivalents thereof.” 35 U.S.C. § 112(f). “It is well
established that this statutory provision can apply not only to a combination
of mechanical elements, but also to ‘a combination of. . . steps in a process
claim.’” Masco Corp. v. United States, 303 F.3d 1316, 1326 (Fed. Cir.
2002).
Claim 1 is a method claim having only a single step, “performing said
management [of the access grant time interval and/or power consumption of
a Machine Type Communication MTC Device in a mobile communication
system] within a detach procedure of the MTC Device from the mobile
communication network.” “[T]he ‘underlying function’ of a method claim
element corresponds to what that element ultimately accomplishes in
relationship to what the other elements of the claim and the claim as a whole
accomplish. ‘Acts,’ on the other hand, correspond to how the function is
accomplished.” Seal—Flex, Inc. v. Athletic Track and Court Construction,
111 F.3d 836, 849—50 (Fed. Cir.1999) (Rader, I. concurring).
The phrase “management [of the access grant time interval and/or
power consumption of a Machine Type Communication MTC Device in a
mobile communication system] within a detach procedure of the MTC
Device from the mobile communication network” (claim 1) is functional
language that does not describe how the function is accomplished. The
gerund “performing” is a generic term that describes no specific act and
serves as a nonce word tantamount to using “step for.” Cf. Williamson v.
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Citrix Online, LLC, 792 F,3d 1339, 1350-51 (Fed, Or, 2015) (“Generic
terms such as ‘mechanism,’ ‘element/ ‘devices and other nonce words that
reflect nothing more than verbal constructs may be used in a claim in a
manner that is tantamount to using the word ‘means5 , , . 7’).
Claim 1, then, is a “single step-for” claim: “a claim drafted in ‘[step]-
plus-fimction’ format yet reciting only a single element instead of a
combination” (see In re Hyatt, 708 F.2d 712 (Fed Circ. 1983)). We
therefore reject claim 1 as non-enabled for undue breadth under 35 U.S.C.
§ 112(a). See Hyatt, 708 F.2d at 714-15 (holding that single means claims
are subject to rejection under 35 U.S.C. § 112,11, for insufficient disclosure
because the claim “covers every conceivable means for achieving the stated
result, while the specification discloses at most only those means known to
the inventor”).
Remaining Claims
We have entered new grounds of rejection for independent claim 1.
We leave to the Examiner to consider the patentability of remaining
claims 2—33 in light of our findings and conclusions supra regarding
claim 1. The fact that we did not enter new grounds of rejection for the
remaining claims should not be construed to mean that we consider any of
claims 2—33 to be patentable.
DECISION
The decision of the Examiner to reject claims 1—33 is reversed.
We enter a new ground of rejection for claim 1 under 35 U.S.C.
§ H2(a).
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This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection . . .
shall not be considered final for judicial review.”
Section 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be remanded
to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record.
37 C.F.R. § 41.50(b).
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). See 37 C.F.R.
§§ 41.50(f), 41.52(b).
REVERSED
37 C.F.R, $ 41.50(b)
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